Gibbons Law Alert
The upcoming Super Bowl, pitting San Francisco 49ers Head Coach Jim Harbaugh against his older brother, Baltimore Ravens Head Coach John Harbaugh, has been dubbed “Harbowl” by some. An individual in Rockville, Maryland is attempting to take this name to a new level, by filing a federal trademark application for use of the mark “HarBowl” on athletic apparel.
Trademark holders no longer have to worry about not being able to dismiss a case by entering into a properly drafted covenant not to sue. In Already, LLC, dba Yums v. Nike, Inc., the Supreme Court unanimously affirmed the Second Circuit’s opinion by ruling that Nike’s covenant not to sue Yums for trademark infringement was sufficiently broad to render moot Yums’ challenge to the validity of Nike’s asserted registration. Yums had no reasonable apprehension of litigation and Nike met its burden of showing that Yums could not be sued later. Chief Justice Roberts delivered the opinion, which required a high standard for parties issuing the covenant, as they bear a “formidable burden” to establish that it is “absolutely clear” that the allegedly wrongful conduct cannot reasonably be expected to reoccur. Remand was not necessary under the circumstances, because the Court found that it “cannot conceive” of any shoe that Yums could make “that would potentially infringe Nike’s trademark and yet not fall under the Covenant.” Arguably, the Court construed the covenant so broadly as to exclude a claim of infringement based on Yums’ sale of the exact shoe covered by Nike’s challenged registration.
The U.S. Patent and Trademark Office (“PTO”) recently published for opposition the mark TIM TEBOW. The applicant for the mark in these various goods and services is XV Enterprises LLC of Denver, Colorado, who has indicated that Tim Tebow, the two-time Heisman Trophy winner and New York Jets quarterback (formerly with the Denver Broncos), has consented to the applications.
D’Artagnan Trademarks LLC, (“DT”) recently sued the Saul Zaentz Company (“SZ”) in the District of New Jersey regarding the trademark ROHAN. In December 2011, DT filed a trademark application for ROHAN in connection with the sale of poultry, namely, duck. The PTO approved the application and SZ opposed its registration when it published for opposition in late March. SZ alleged that it has exclusive rights to certain trademarks (the “Marks”) derived from the trilogy of books known as “The Lord of the Rings,” by J.R.R. Tolkien. Readers might recall that in the books, “Rohan” is a fictional realm within the fantasy world of the stories. SZ alleges it owns federal trademark registrations for ROHAN, RIDERS OF ROHAN and ROHAN NUTRITION, relating to animal feed and feed supplements for horses, plastic figurines for use with table top hobby battle games, and website services about computer games. SZ has a number of licensees using these marks.
Ben & Jerry’s Homemade, Inc. (“Ben & Jerry’s”), the Vermont-based ice cream maker, recently filed a lawsuit in SDNY against adult video company Rodax Distributors, Inc. d/b/a Caballero Video, et al (“Defendants”). The complaint alleged trademark and trade dress dilution and infringement, and related claims arising from Defendants’ production and distribution of a series of hardcore pornographic DVDs whose titles and packaging play upon the names and trade dress of some of Ben & Jerry’s federally registered and famous marks.
Last week, in a prior blog, we reported that Petitioner Already, LLC d/b/a Yums (“Yums”) filed its opening brief with the Supreme Court, arguing that a trademark registrant’s post-suit covenant not to sue does not divest a Federal District Court of standing to review a challenge to the validity of the underlying trademark registration.
Earlier today, the United States Court of Appeals for the Second Circuit issued its long-awaited decision in Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc.. The Appellate Court decision reversed the lower court’s finding that a single color can never serve as a trademark for fashion. It also found that Louboutin’s red, lacquered shoe outsole had acquired distinctiveness and is protectable as a trademark. However, the Court went on to state that the trademark is “limited to uses where the red outsole contrasts with the color of the remainder of the shoe.” The case has now been remanded to the District Court for further proceedings.
In a prior blog, we reported that the Supreme Court had granted certiorari in Already, LLC dba Yums v. Nike, Inc., No. 11-982, to an appeal from the Second Circuit’s decision affirming the Southern District of New York’s holding that a covenant not to sue entered in a trademark dispute ended the case and controversy between the parties.
Today, ICANN, the Internet’s domain name registration watch dog, will publish a listing of nearly 1,900 new generic Top-Level Domains (“gTLDs”) that may be approved for use as early as March 2013. We previously wrote about ICANN’s expansion program and suggested safeguards that companies could implement to protect themselves.
For brand owners facing the challenges posed by counterfeiting, U.S. Customs and Border Patrol (“CBP”) recently adopted a new temporary rule which has the potential to make it much easier to combat the import of counterfeit goods into the United States (“Interim Rule”). The Interim Rule provides that in instances where the CBP has suspicions regarding the authenticity of goods being imported, and the importer fails to provide proof of genuineness, the CBP is permitted to share detailed information about the suspect goods and importer with brand owners. This represents a welcome sea change in CBP policy for brand owners who have long been frustrated by CBP’s policy regarding limited information sharing.