Posted On: February 29, 2012

Can LA Clippers Use Trademark Law To Stop Clipper Darrell?

los-angeles-clippers-trademark-clipper-darrel-laches.jpgClipper Darrell has been a fixture at Clippers’ basketball games for the last decade, even when the team was horrible and I would go watch them solely because my friend would give me his season tickets. In fact, Staples Center was so empty during Clippers games that Clipper Darrell was the only person cheering. But now that the Clippers are winning, my friend has stopped giving away his tickets and the Clippers have apparently told Clipper Darrell he can no longer use “Clipper” in his name or sell merchandise that allegedly infringes the “Clippers” trademark.

Although the Clippers will surely resort to the canned response of “we have a duty to enforce and protect our trademark or risk losing our trademark”, some trademark professors believe the risk to be overstated. But to Clipper Darrell’s advantage, when he and I were at past Clippers games, the only other “fan” in attendance was team owner Donald Sterling, who was actually and inexplicably heckling his own players. There is no doubt that Mr. Sterling saw and/or heard his counterpart, Clipper Darrell in his trademark half-blue/half-red suit, actually cheering for the Clippers. Thus, it appears that Clipper Darrell may have a laches defense against the Clippers’ trademark infringement claim if he can show that the Clippers knew or should have known of his infringing activity and they unreasonably delayed in filing a lawsuit. Miller v. Glenn Miller Prods., 454 F.3d 975, 980 (9th Cir. Cal. 2006).

The practical approach from both a legal and PR perspective would be to license Clipper Darrell to use the trademark and not alienate Clippers’ fans that have been loyal during the lean years. The trademark license would allow Mr. Sterling to increase revenue and thereby extend Blake Griffin the maximum contract allowed under the new collective bargaining agreement. But that assumes the Clippers are now practical.

Posted On: February 20, 2012

TechnoMarine Sues Unauthorized Watch Retailers Costco and Overstock.com for Trademark Infringement

trademark-infringement-retailer-technomarine-costco-overstock-authorized.jpgTechnoMarine is suing both Costco and Overstock.com for trademark infringement because neither is an authorized retailer of its watches, which it alleges are “either counterfeit or were obtained in bad faith from TechnoMarine’s authorized retailers/distributors, who are expressly prohibited from distributing” the watches to other retailers. TechnoMarine has been selling its watches since 1997 and owns several USPTO registered trademarks for the word TechnoMarine and its T and M logo. TechnoMarine alleges hundreds of millions in watch sales by high end retailers and tens of millions of dollars in advertising through numerous renowned magazines.

TechnoMarine alleges that the sale of its watches are strictly controlled and “contractually permitted only through authorized dealers, most of which are not authorized to sell the products on the internet. All of TechnoMarine’s authorized retailers/distributors have entered into agreements in which they are expressly prohibited from transshipping and selling TechnoMarine branded products to unauthorized third party retailers and online retailers.” TechnoMarine’s warranties are inapplicable to watches obtained through unauthorized retailers thereby reducing the quality of unauthorized products. Because Costco and Overstock are not authorized TechnoMarine watch distributors, the warranties are void and render the goods not genuine in violation of TechnoMarine’s trademark rights.

This isn’t Costco’s first rodeo in the unauthorized watch sales arena. Costco was previously sued by Omega for copyright infringement for selling gray market watches in the U.S., meaning that Costco bought legitimate Omega watches abroad and imported them into the U.S. for resale. The Omega watch had a copyrighted glove image and Costco’s sales in the U.S. constituted copyright infringement because it violated Omega’s rights to distribute the work. The District Court agreed with Costco that Section 109’s first sale doctrine trumped Omega’s exclusive rights. The Ninth Circuit Court of Appeals disagreed, holding that the first sale doctrine does not apply to copies not authorized for resale in the United States. The U.S. Supreme Court tied 4-4, thus allowing the Ninth Circuit’s decision to stand, but not resolving the split between the circuits.

Trademark law prohibits importation of gray market goods that are materially different from goods intended for the U.S. market. Material differences have been found in labeling, packaging and marketing methods, caloric content, container volume, and warranty. See Societe Des Produits Nestle, SA v. Casa Helvetia, Inc., 982 F.2d 633, 638 (1st Cir. 1992).

The cases are Technomarine SA v. Costco Wholesale, CV12-00930 JFW (C.D. Cal. 2012); and Technomarine SA v. Overstock.com, Inc., CV12-00932 MMM (C.D. Cal. 2012).

Posted On: February 13, 2012

Knicks’ Jeremy Lin Should Block Unauthorized Linsantity Trademark Filing At USPTO

jeremy-lin-chinese-american-nba-knicks-trademark-linsanity-unauthorized.jpgThis NBA season’s “LIN-derella” feel good story is New York Knicks’ Jeremy Lin’s fast-break rise from bench warmer to player of the week award recipient in a week. With his success, the nicknames have started pouring in faster than the 38 points he scored against the Lakers: LINsanity, LINcredible, LINvincible, LINsational, Super LINtendo, and my favorite, Duhhh LINning (à la Charlie Sheen). Lin is so popular right now that even the Knicks’ page on nba.com is dedicated to Lin and his new iPhone app. Lin’s popularity cannot be contested because I’m even writing about him. Well, I got carried away with all the hype.

But along with the upside of fame comes unauthorized, third-party trademark applicants. A search of the USPTO’s trademark database shows an application filed only six days ago by an unrelated party, Yenchin Chang, to register the “LINsanity” trademark for use on a slew of goods including athletic uniforms, t-shirts, baseball caps and hats, etc. I hope that Mr. Chang does not expect to LIN (yes, that was bad). Trademark law prevents registration of a mark that “consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent.” 15 U.S.C. § 1052(c).

For example, the USPTO’s Trademark Trial and Appeal Board affirmed the trademark examining attorney’s refusal to register the trademarks “Obama Pajama” and “Barack’s Jocks Dress To The Left” because applicant failed to provide President Barack Obama’s written consent. In re Richard M. Hoefflin, 97 USPQ2d 1174 (TTAB 2010) [precedential]. To determine “whether a particular living person bearing the “name” would be associated with the mark as being used on the goods, we must consider (1) if the person is so well known that the public would reasonably assume the connection, or (2) if the individual is publicly connected with the business in which the mark is being used.” The trademark examining attorney – unless she’s been hiding under a rock this past week or is a Nets fan – should refuse registration because trademark law prevents even nicknames that identify a particular living individual from being registered without their consent.

Assuming that the trademark examining attorney is a Nets fan and does not refuse registration, all is not lost for number 17. In the trademark application process, following the examining attorney's review and approval, it is published for thirty days and any party that believes he or she may be harmed by the registration can file an opposition to prevent registration. Further assuming that Jeremy Lin misses the opposition period and the trademark registers, which is unlikely for the Harvard grad, he can still file a proceeding at the USPTO or a lawsuit in federal court seeking cancellation of the unauthorized registration.

Posted On: February 11, 2012

Court Shoots Down Strip Club’s Rhino Trademark Lawsuit Against Gun Company

trademark-dismiss-confusion-spearmint-rhino-chiappa-firearms-gun.jpgIn an opinion that shocked no one except Spearmint Rhino, the Court dismissed WITH PREJUDICE – a rarity at such an early stage in litigation – the strip club operator’s trademark infringement case against Chiappa Firearms. Spearmint sued Chiappa for using a rhino outline as a trademark on its guns alleging that its use is “likely to cause confusion, or to cause mistake, or to deceive because, among other reasons, consumers are likely to believe that there is an affiliation, connection, or association between” Spearmint and Chiappa. As predicted, the Court disagreed with Spearmint because consumers are unlikely to confuse its G-strings with guns.

Chiappa filed a motion to dismiss the complaint, wherein the court is requested to decide whether, assuming all the allegations in the complaint are true, the plaintiff has still failed to present a case entitling it to damages. The Court, however, must consider whether the claim is plausible on its face based on alleged facts. Thus, a complaint which alleges only labels and conclusions to meet the elements of the cause of action will not survive dismissal. Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007).

To prevail on its trademark infringement claim, Spearmint had to show that it had a protectable trademark and that a “reasonably prudent consumer” is likely to be confused as to the origin of a good or service. DreamWerks Production Group, Inc. v. SKG Studio, 142 F.3d 1127 (9th Cir. 1992). To evaluate likelihood of confusion, Courts analyze the following non-exhaustive factors including: (1) strength of the mark; (2) relatedness to the goods; (3) similarity of sight, sound, and meaning; (4) evidence of actual confusion; (5) marketing channels; (6) type of goods and purchaser care; (7) intent; and (8) likelihood of expansion. AMF, Inc. v. Sleekcraft Boats, 559 F.2d 341 (9th Cir. 1979).

Courts, as here, do not have to blindly believe the infringement allegations because a plaintiff has to show that likelihood of confusion must “be probable, not simply a possibility.” Murray v. Cable NBC, 82 F.3d 861 (9th Cir. 1996). If not shown, the Court may determine that likelihood of confusion does not exist as a matter of law. Toho Co. v. Sears, Roebuck & Co., 645 F.2d 788 (9th Cir. 1981).

The Court determined that Spearmint could not establish likelihood of confusion because “Plaintiff has not been able to demonstrate a single instance of actual consumer confusion, and indeed cannot show that any reasonable consumer is likely to be confused as to the relationship between these two companies. Plaintiff mainly provides services in the form of adult entertainment, while Defendants mainly provide goods in the form of handguns. It is highly unlikely that a consumer would accidentally purchase one when he intended to purchase the other.” In other words, because consumers are unlikely to be confused and shoot each other with G-strings, Spearmint’s trademark infringement claim failed as a matter of law. So, like clay pigeons, fell Spearmint’s false designation of origin and §17200 unfair competition claims.

Spearmint’s trademark dilution claim also fell in the Court’s crosshairs because although Rhino introduced evidence that its mark was “at least somewhat well known, it fails to assert sufficient facts to support a finding that the Rhino mark is famous under the Trademark Dilution Revision Act of 2006. Courts have consistently held that only the most truly prominent brands, such as Kodak, Coca Cola, Budweiser, or Barbie count as famous under the statute.”

The case is Spearmint Rhino Companies Worldwide, Inc. v. Chiappa Firearms, Ltd., et al., CV11-05682 R (C.D. Cal. 2011).