Tagged: Trademark Infringement

Trademark Parody? Ben & Jerry’s Doesn’t Think It’s So Funny ….

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.

ICANN Releases Listing of gTLD Applications

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.

Newly-Adopted U.S. Customs Rule Provides Brand Owners with Critical Information to Combat the Import of Counterfeit Goods

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.

gTLDs Pose New Threats in Cyberspace

On January 12, 2012, ICANN, the Internet’s domain name registration watch dog, began accepting applications for new generic Top-Level Domains (gTLDs) to add to those already in existence, including .com, .net, .biz and others. Under the new scheme, any company can apply for a gTLD, thereby expanding the domain name system (DNS). Ultimately, this expansion will change the Internet forever. Each new gTLD poses an incremental risk for trademark owners who are already under heavy assault in cyberspace from cybersquatting (registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark owner), brandjacking (assuming the online identity of another entity for the purposes of trading on another’s brand equity), and typosquatting (registering URLs with common misspellings) by those seeking to generate illicit profits. According to the Coalition Against Domain Name Abuse (CADNA), cybersquatting already costs trademark owners more than $1 billion each year due to lost sales, lost goodwill, and increased enforcement costs. However, with a major increase in gTLDs, many corporations fear an expansion in expensive litigation to enforce their brands and trademarks.

Protecting Your Company – Trademark Basics You Need to Know

The Gibbons Women’s Initiative is hosting an upcoming program for in-house counsel entitled, “Protecting Your Company – Trademark Basics You Need to Know,” on Thursday, March 8 from 8:30 – 10:15 am at Gibbons Newark Office. This program will feature Catherine M. Clayton, a Director in the Gibbons Intellectual Property Department, who leads the firm’s trademark practice. Ms. Clayton has a broad range of experience in trademark and copyright law, and her practice encompasses litigation, licensing and prosecution.

The “Linsanity” Continues …..

The New York Knicks’ rising superstar point guard, Jeremy Lin, continues to wow fans around the world. Lin’s NBA ascent also has prompted a rush to the Trademark Office. Over 20 applications for word marks that bear the letters L-I-N already have been filed. These include LIN-SATIONAL; ALL LIN; LINSPIRATION; I’M A LINNER; LINSOMNIA: LINCREDIBLE; and other derivations using the star’s last name. The frenzy began with applications for the seemingly ubiquitous LINSANITY catch phrase, which were filed on February 7 and February 9, as the star’s career took off. Most of the applications to date have been filed on an intent to use basis, that is, the applicant has expressed a bona fide intent to use the mark in interstate commerce.

Clock Ticking for Trademark Registrants Seeking to Block Registration of Their Marks on .XXX Domain

As has been widely reported by the mainstream press and most legal publications, the Internet Corporation for Assigned Names and Numbers (ICANN) has approved a new “.XXX” top-level domain expected to be utilized by the adult entertainment industry. Given the connotation of the .XXX domain, companies and individuals around the globe are considering how best to protect their trademarks from the potential harms of registry misuse, including cyber squatters targeting this new domain to register well known trademarks. Although the creation of the .XXX domain will be a boon to those in the adult entertainment industry and domain registrars, it raises serious threats of infringement, brand dilution or tarnishing for trademarks uninvolved in those industries. If they have not already, all trademark owners should be considering the potential impact of the .XXX domain to their marks and determining whether to take the necessary steps to “opt-out” of .XXX domain registration by the October 28, 2011 deadline for doing so.

A Challenge to Color Trademarks in the Field of Fashion: Christian Louboutin v. Yves Saint Laurent America

The U.S. District Court for the Southern District of New York’s August 10, 2011 decision in Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., questions whether a single color may serve as a trademark for fashion. That case arises from an action for trademark infringement brought by luxury shoe designer, Christian Louboutin, against Yves Saint Laurent America (“YSL”). Louboutin is well-known for his collection of high end women’s shoes, which have bright red glossy soles. He also owns U.S. Trademark Registration No. 3,361,597 for “a lacquered red sole on footwear.”

Supreme Court Denies Certiorari in Tiffany v. eBay Appeal

Earlier today, the Supreme Court denied certiorari in the Tiffany v. eBay action, permitting a ruling to stand that places the burden on trademark owners to police infringements taking place on on-line auction sites. The Supreme Court’s denial of cert was without comment. Critical to the underlying decisions of the Second Circuit Court of Appeals and the U.S. District Court for the Southern District of New York was that eBay was not itself the seller of the infringing goods, and that it acted promptly to take down auctions when it received notice that the goods were not legitimate. eBay reportedly has made investments of up to $20 million per year to stop fraud and infringements occurring via its site.

Farouk Systems Wins $300 Million Damages Award Against On-Line Chinese Counterfeiting Ring

On October 14, 2010, the U.S. District Court for the Southern District of Texas granted what is reportedly the largest judgment ever awarded in an action involving on-line counterfeiting. In Farouk Systems, Inc. v. Eyou Int’l Trading Co., Judge Kenneth M. Hoyt entered a default judgment and permanent injunction against more than seventy defendants, who were operating an Internet counterfeiting ring out of China. The judgment required that each of the defendants pay Farouk statutory damages of $4 million, resulting in an award of approximately $300 million. In addition to being significant because of the amount of the damages awarded, this decision is noteworthy for the pragmatic approach that the court took to ensure that the relief awarded to the plaintiff would be meaningful.