Recent Developments in Various Pending Trademark Cases

Back in the good ole days of 2009-2010 when I actually had time to blog, I posted about three particular lawsuits filed in the District of Nevada – each of which had significant developments this week (all reported on by VegasInc’s Steve Green).

Arrow Productions Ltd. v. V.C.X., Ltd. et al, Case No. 09-cv-00737 (D. Nev.) (previous blog post here)

The copyright and trademark dispute over “Deep Throat.” As reported by VegasInc., the parties reached a settlement whereby VCX agreed to stop selling “Deep Throat” (the copyright to which Arrow claimed) and Arrow agreed to stop selling “Debbie Does Dallas” (the copyright to which VCX claimed). As part of the court’s order and judgment (copy here), there are stipulated facts regarding the chain of title for the copyright to the film “Deep Throat” (including addressing the issue of how copies of the film were distributed without a copyright notice, and yet how that did not put the film in the public domain because the copyright owner technically leased the theaters when the film was shown (so-called “four walling”) and retained control over the prints – with any other copies being unauthorized prints).

Mine O'Mine, Inc. v. Michael Calmese, True Fan Logo, Inc. and Dan Mortense, Case No. 10-cv-00043 (D. Nev.) (previous blog post here)

The trademark lawsuit filed by Shaquille O’Neal over Defendants’ use of the mark SHAQTUS. As reported by VegasInc., the court issued a detailed summary judgment ruling earlier this year (copy here) that found the Defendants only started using the mark SHAQTUS after sportswriters gave O’Neal that name when he began playing for the Phoenix Suns and that there was a likelihood of consumer confusion arising between shirts sold by O’Neal’s company and SHAQTUS shirts sold by Defendants. This week, the court entered judgment against the Defendants (copy here) which terminated the litigation because of O’Neal’s willingness to drop the cybersquatting and dilution claims that remained following the court’s summary judgment order.

Caesars World, Inc. v. July et al, Case No. 11-cv-00536 (D. Nev.) (previous blog post here)

The cybersquatting action filed by Caesars Palace against Marcel July and his use of the mark OCTAVIUS TOWER. As reported by VegasInc., the court denied July’s motion for preliminary injunction (copy here) finding that July failed to meet the necessary burden to merit injunctive relief. July’s only argument was his PTO registration for the name OCTAVIUS TOWER for entertainment services (along with some state registrations). The court noted that while the registration served as prima facie evidence of July’s exclusive rights to use the mark for entertainment services, such evidence can be rebutted – and in this case, the court found that Caesars had made “strong arguments” against July’s use of the mark that “extinguishes” July’s prima facie case. July did not respond to Caesar’s arguments. Moreover, July also failed to demonstrate irreparable harm, balance of hardships favoring him, or that that injunction would be in the public interest.

Another Epic Trademark Battle Prematurely Ends With Amicable, Reasonable Settlement

Tropicana Las Vegas

In one of my longer blog posts last year (link here), I detailed the convoluted and complicated history of the TROPICANA Hotel/Casino trademark – a fascinating look at how trademark rights are handled in the course of multiple large scale corporate transactions (including bankruptcy proceedings) and how certain things can (and indeed do) fall through the cracks.

What started out as a simple declaratory judgment action in Nevada state court by the new owners of the Tropicana Hotel & Casino in Las Vegas regarding their long-time right to use the name Tropicana in connection with that specific hotel/casino located at the intersection of Las Vegas Blvd. and Tropicana Avenue blew up into an epic lawsuit filed in Delaware Bankruptcy Court by a group of companies lead by Carl Icahn's Tropicana Entertainment Inc. The matters had been fully briefed by both sides and were awaiting a court hearing.

But alas, now we’ll never know how exactly the bankruptcy court would’ve unraveled the convoluted trademark issues raised by Tropicana Entertainment’s adversary proceeding (we know how the Clark County District Court decided those issues, but that is in part what led to Tropicana Entertainment to file the adversary proceeding it did in bankruptcy court).

As reported by VegasInc’s Steve Green (link here), the parties announced in mid-August that they had reached a Settlement that resolves the outstanding trademark disputes and which provides for an agreement regarding concurrent use by both parties of the mark TROPICANA. A copy of the Settlement Agreement, with all of its provisions regarding concurrent use of the Tropicana name by the respective parties, can be viewed here.

In short, Tropicana Las Vegas can continue to use the mark TROPICANA LAS VEGAS (or TROP LAS VEGAS) or TROPICANA LV (or TROP LV) in the city of Las Vegas, Nevada and within a 50 mile radius from the present location of the Tropicana Las Vegas Hotel and Casino. Tropicana Las Vegas can promote itself worldwide so long as it always mentions the property location. Tropicana Las Vegas does not get any other rights to use the mark TROPICANA, TROP, or any variation thereof apart from its rights to use the mark in reference to its Las Vegas property (although a small exception is made for on-property signage and certain marketing campaigns such as “Trop ‘Til You Drop” and “Trop Party Pass” so long as there is also a reference to the Las Vegas location). The agreement expressly consents to Tropicana Las Vegas’s use of the following logo

and clarifies that in any other logos used by Tropicana Las Vegas, the Las Vegas (or LV) portion of the mark shall not be smaller or less prominent in proportion to TROPICANA or TROP than as reflected in the above logo.

As for what Tropicana Entertainment gets out the deal, it gets the exclusive rights to use TROPICANA and TROP, but provided that it also is accompanied by some other mark indicating either a geographic location (other than Las Vegas obviously) or some other mark to identify services currently offered by Tropicana Entertainment (e.g., Tropicana Advantage).

The Agreement also deals with how the parties will handle present and future trademark registrations for marks using TROPICANA, use of their respective marks on the Internet, and issues relating to enforcement of rights in their respective territories.

By entering into this Settlement Agreement (with concurrent use provision regarding the trademark rights), the parties certainly ended up doing the smart thing in reaching an amicable settlement – bringing to a halt a dispute that had likely cost the parties millions of dollars in attorney fees and costs (fees that would have continued to be incurred given the high stakes) and doing so in a way that brings certainty to the rights of the parties moving forward. And it was probably the fair outcome given the long-time association that the world does have with the name Tropicana in connection with that particular hotel in Las Vegas while at the same time recognizing Tropicana Entertainment's investment in the name outside of Las Vegas.

Of course, at the same time, it would’ve been interesting to see which way the bankruptcy court would have sided in this dispute (and the legal rationale for such decision).

Internal Business Dispute Over “The Cupcakery” Trademark Reignites

The Cupcakery is a specialty bakery specializing in baking and selling gourmet cupcakes with locations in Las Vegas and Texas.

On January 14, 2011, Texas resident Ricky Perritt (along with several of his wholly-owned LLCs) filed a lawsuit in the U.S. District Court for the Eastern Distirct of Texas against his niece, Pamela Jenkins, and her Nevada-based company The Cupcakery, LLC (“Cupcakery NV”). See Perritt et al v. The Cupcakery, LLC, et al, Case No. 11-cv-00023 (E.D. Tex. January 14, 2011). A copy of the complaint (with exhibits) can be downloaded here.

The new lawsuit is actually a continuation of an earlier dispute over ownership of “The Cupcakery” that originally arose between Perritt and Jenkins back in September 2009, but which was resolved at that time by a written settlement agreement (attached to the complaint as Exhibit A).

According to the complaint, Cupcakery NV was originally formed by three individuals – Pamela Jenkins, Laura Santo Pietro, and Dawn Kalman – in July 2005 with each owning 1/3 of Cupcakery NV. Jenkins, in order to contribute capital to the new business, purportedly received a $95,000 loan from her uncle, Perrit. Jenkins later sought to borrow additional money from Perritt in order to allow Jenkins to buy-out the interests in Pietro and Kalman. Perritt agreed to pay the funds but only if Jenkins assigned over the 2/3 combined interests of Pietro and Kalman to Perritt. Perritt and Jenkins entered into an Agreement on April 20, 2007, which assigned over Pietro’s and Kalman’s 2/3 interests in Cupcakery NV to Perritt.

When Jenkins later proposed opening a second store in Las Vegas, Perritt loaned an additional $187,500 to Cupcakery NV. That stored opened in January 2008. Thereafter, Perritt, with the full knowledge of Jenkins, decided to open up his own “The Cupcakery” stores – first in Frisco, Texas (owned by the Texas based, and co-Plaintiff ,The Cupcakery, LLC), and then a second store in Dallas, Texas (owned by co-Plaintiff Buster Baking, LLC), and later a third store in The Woodlands, Texas (owned by co-Plaintiff The Woodlands Baking, LLC). Perritt’s Texas stores used the same name, recipes and other intellectual property used by Cupcakery NV.

In September 2009, Perritt and Jenkins became embroiled in a dispute over ownership of “The Cupcakery,” which led to Perritt filing a lawsuit against Jenkins in Texas. Jenkins never answered the suit, but through counsel, a settlement agreement was reached in late October 2009 whereby Perritt transferred of his interests in Cupcakery NV to Jenkins in return for receiving an undivided 50% interest in all trademarks, tradenames, and intellectual property owned by the Jenkins and Cupcakery NV with respect to the cupcake business. Jenkins also gave up any interests she might in the Perritt-owned LLCs. Perritt also had the exclusive right for four years to develop additional “Cupcakery” stores in all states except Nevada. The settlement agreement also established that, with respect to the website thecupcakery.com, all inquiries outside of Nevada would go to Perritt and all inquiries inside of Nevada would go to Jenkins.

The end result of the settlement agreement was that Jenkins received 100% of the stores in Nevada and Perritt received 100% of the stores in Texas (along with the exclusive right for four years to develop additional “Cupcakery” stores in all states except Nevada). Perritt and Jenkins individually would own an undivided 50% interest in all THE CUPCAKERY trademarks, tradenames and intellectual property and both agreed to conduct business in a manner consisting with protecting the marks and to work together to maintain the website for The Cupcakery.

According to the latest complaint, Jenkins has become dissatisfied with the settlement agreement and has acted in a manner in breach of the settlement agreement. Specifically, Perritt alleges that Jenkins has supposedly refused to pay her share of legal expenses advanced by Perritt (approx. $8000) that were incurred by the business in pursuing a lawsuit against a third party regarding the “Cupcakery” name (perhaps referring to the “Sift: A Cupcakery” dispute previously blogged about here and here and here?). Perritt also claims that Perkins has stated that she will “not pay any monies or take any measures necessary” to protect the intellectual property and “will give the right to use the name to third parties without consideration of any sort” [ed.—probably a little bit of an exaggeration].

The complaint also alleges that Jenkins, claiming ownership and control over the website “TheCupcakery.com,” told Perritt on January 12, 2011, that she is going to pull down the website on January 17, 2011, and that Perritt must create his own website. Perritt’s position is that he owns a 50% undivided interest in all the intellectual property of “The Cupcakery” including the website and that to switch websites from the one website that gets the most hits when “Cupcakery” is entered on any search engine would cause substantial and irreparable harm to his business. Perritt also maintains that since website inquiries outside the State of Nevada are directed to him, he will be unable to communicate with potential investors, franchisees, or licensees if the website is down for any length of time.

Perritt seeks a temporary restraining order enjoining Jenkins from changing or interfering with the current website pending a hearing on Perritt’s motion for preliminary injunction. Perritt also seeks a declaratory judgment that he owns an undivided 50% interest in the intellectual property of The Cupcakery, that Jenkins is obligated to pay 50% of the attorneys fees and costs associated with protecting The Cupcakery’s intellectual property rights, and that Jenkins cannot modify the website without Perritt’s consent. Finally, Perritt sets forth causes of action for breach of contract, breach of duty of loyalty, and breach of fiduciary duty.

Comment: One wonders if the parties genuinely thought that the co-ownership of the “The Cupcakery” intellectual property rights worked out as part of their 2009 settlement agreement was really going to work in the long term.

UPDATES:

Las Vegas Sun coverage: Website at center of The Cupcakery legal dispute (Steve Green, January 18, 2011).

In a very interesting and surprising twist, on January 19, 2011, Pamela Jenkins, the public face for The Cupcakery (at least in Las Vegas) issued her own press release which seems to announce that she is no longer claiming any exclusive trademark rights to the term CUPCAKERY in connection with a cupcake bakery:

Through research, I've found that the word cupcakery existed before I opened The Cupcakery. I believe the use of cupcakery as a noun can only maximize the exposure for myself and others who believe in the delicious spirit of cupcakes and cupcakeries. It is not, and never has been, my intent to limit the use of the word cupcakery or purport to own the word, as my former partner is attempting to do. As I have received numerous requests nationwide regarding the phenomenon of cupcakes, the word cupcakery and other cupcake-related questions of late, I felt it was the right time to share the glory of The Cupcakery and all cupcakeries freely.

Las Vegas Sun coverage: Cupcakery owner hoping for an end to trademark disputes (Steve Green, January 20, 2011).

Jenkins’ statement then prompted her uncle to seek another TRO to stop her from talking, which was promptly denied (link to amended TRO application and court denial here).

Las Vegas Sun coverage: Cupcakery legal battle escalates with request for gag order (Steve Green, January 27, 2011).

Ozzy Osbourne and Tony Iommi Settle Dispute Over BLACK SABBATH trademark

Multiple sources (Blabbermouth.net, Musicnewsnet.com, Toronto Sun) reported on the joint statement issued by Ozzy Osbourne and Black Sabbath band partner Anthony Iommi announcing that the two had reached a settlement of the ongoing trademark litigation between the two over the ownership of the BLACK SABBATH mark (see John Osbourne (p/k/a Ozzy Osbourne) v. Anthony Iommi, Case No. 09-cv-04947 (S.D.N.Y. Filed May 26, 2009) (previously blog posts on the dispute here and here):

Ozzy Osbourne and Tony Iommi of the legendary heavy metal band BLACK SABBATH have amicably resolved their problems over the ownership of the BLACK SABBATH name and court proceedings in New York have been discontinued. Both parties are glad to put this behind them and to cooperate together for the future and would like it to be known that the issue was never personal, it was always business.

According to the reports, Ozzy became interested in resolving the dispute after the death of their mutual friend Ronnie James Dio back in May. As usual, the terms of the settlement have not been disclosed.

Two more high profile trademark infringement lawsuits end with confidential settlements

McDonald’s reached a confidential settlement with the Lion's Tap – an Eden Prarie, Minnesota restaurant which claimed trademark rights to the mark WHO’S YOUR PATTY in connection with restaurant services (registration application applied for on August 25, 2009) – over McDonald’s Angus burger marketing campaign which used WHO’S YOUR PATTY as a tagline (see billboard below). Original complaint here. Articles on the settlement from NYTimes and AmLawDaily. Duetsblog comments here.

Yahoo also settled on confidential terms the lawsuit filed against it by Mary Kay Cosmetics back in July (blogged here) over pop-up ads appearing from supposedly unauthorized resellers of Mary Kay cosmetics that would appear in the “Yahoo Shortcut” feature of Yahoo’s e-mail services (pictured above). Article on the settlement from Bloomberg.

Incorp and Legalzoom Settle Trade Libel Lawsuit

I previous wrote (link here) about the lawsuit filed by Incorp Services, Inc., (“Incorp”), a company that helps parties form corporations and other business entities throughout the United States and which also offers registered agent services for business entities nationwide, filed a lawsuit against Legalzoom.com, Inc. (“Legalzoom”), the “document preparation” company that also helps interested parties form corporations and other business entities. See Incorp Services, Inc., v. Legalzoom.com, Inc., Case No. 09-cv-00273 (D. Nev.).

Incorp alleged that customers who formed business entities through Legalzoom and who wanted to use Incorp as their registered agent had been told by LegalZoom’s representatives that Incorp “is not in good standing” with several states, that Incorp “cannot be used” as a registered agent; that InCorp is “not licensed to do business in” certain states: that Incorp “cannot legally do business in” certain states; that InCorp is “not legal” in certain states; and other similar statements – all of which Incorp maintained are false given its good standing status in all fifty states and the District of Columbia.

On May 27, 2009, the parties notified the court that the dispute had been resolved. A stipulation for dismissal with prejudice was filed with the court on June 2, 2009. No terms of the settlement were disclosed. Both sides will bear their own attorneys fees and costs.

Psion Agrees to Surrender NETBOOK Registered Trademark

Back in February, Intel Corp. filed a declaratory judgment action against Psion Teklogix, Inc. seeking a declaration that Psion’s registered trademark NETBOOK is generic for laptop computers (previously blogged here). The action was filed after Intel (along with numerous other well-known names like Dell, HP, and Best Buy) received a cease and desist letter from Psion.

Intel was challenging Psion’s trademark registration on the grounds that while Psion may indeed have used the term NETBOOK in connection with small portable computers at one time, it abandoned the name in 2003 (making its 2006 Section 8 Declaration of Use fraudulent). Dell had also filed its own cancellation proceeding with the Trademark Trial and Appeal Board against Psion. That action was stayed pending the outcome of Intel’s declaratory judgment action.

News reports out yesterday (here and here) reported that Psion has agreed to settle the Intel lawsuit.

Psion stated in a press release that as part of its “amicable agreement” with Intel, it would surrender (i.e. voluntarily cancel) its NETBOOK trademark registration and will no longer pursue against trademark enforcement actions against any third parties using the term:

The litigation has been settled through an amicable agreement under which Psion will voluntarily withdraw all of its trademark registrations for ‘Netbook’. Neither party accepted any liability. In light of this amicable agreement, Psion has agreed to waive all its rights against third parties in respect of past, current or future use of the ‘Netbook’ term.

Think Computer Agrees to Drop Cancellation Petitions Against FACEBOOK

WebProNews reported that the dispute between Facebook, Inc. (“Facebook”) and Think Computer Corporation (“Think Computer”) over the trademark FACEBOOK had been resolved with a confidential settlement agreement.

In April 2008, Think Computer filed a cancellation petition with the Trademark Trial and Appeal Board to cancel Facebook’s trademark registration for the mark FACEBOOK. See Think Computer Corporation v. Facebook, Inc., Cancellation No. 92049206 (T.T.A.B. Filed April 15, 2008). A second cancellation proceeding was instituted in March 2009 over a second registration for FACEBOOK. See Think Computer Corporation v. Facebook, Inc., Cancellation No. 92050675 (T.T.A.B. Filed March 12, 2009).

Think Computer’s founder, Aaron Greenspan, attended Harvard along with Facebook’s cofounder Mark Zuckerberg in 2002-2004. In August 2003, Think Computer put out a web-based student portal called houseSYSTEM, which contained a section called "The Universal Face Book."

In both cancellation petitions (here and here), Think Computer claimed 1) priority of use (using the marks “FACEBOOK,” “FACE BOOK,” “UNIVERSAL FACE BOOK,” and “FACENET” at least as early as September 19, 2003 in connection with “on-line information services featuring information regarding, and in the nature of, collegiate life, classifieds, virtual communities and social networking)”; 2) genericness (the terms “FACEBOOK” and “FACE BOOK” have been used for decades to describe books displaying faces of students or other individuals); and 3) fraud on the PTO.

Regarding the allegations of fraud, Think Computer claimed that Facebook’s initial application declaration or “no other person. . . has the right to use the mark” was false because the Facebook founders were aware of Think Computer’s use of the Facebook mark. Interestingly, the fraud allegations also make reference to Facebook’s Petition to Make Special (under T.M.E.P. §1710) its two pending FACEBOOK applications in order to expedite their examinations. Facebook filed its petitions because it was in the midst of litigation with ConnectU, which had threatened a bidding war over the facebook.com domain name. Think Computer alleged that the rushed examination allowed Facebook to rush through its applications, and thereby preventing the PTO from considering a possible genericness refusal or other similar marks that had been used in the marketplace.

Of course, like so many trademark disputes, the veracity of Think Computer’s allegations will never be tried as the parties announced that all outstanding claims between the parties, including the issue regarding the FACEBOOK trademarks, have been amicably resolved.

Rosetta Stone Announces Settlement of Search Engine Keyword Trademark Infringement Lawsuit

A blogging two-for-Tuesday . . .

I previously wrote (link here) about the trademark infringement lawsuit filed last year by Rosetta Stone Ltd. (“Rosetta Stone”), the publisher of the Rosetta Stone line of interactive computer software for learning foreign languages, against two New Zealand companies, Rocket Languages Ltd. and Libros Media Ltd. (together “Rocket”) along with two specifically named individuals (Ishmael Lopez and Matthew Weidner) who each operated various “language review” websites (through which they supposedly were paid a 75% commission by Rocket for every Rocket Languages product sold through their websites) and who made the unfortunate mistake of promoting their websites by purchasing “Rosetta Stone” as advertising keywords in Google's AdWords program and Yahoo's Marketing Solutions program.

Rosetta Stone issued a press release today proclaiming victory in this particular lawsuit by announcing that it had “successfully settled” its trademark infringement lawsuit against Ishmael Lopez and Matthew Weidner.

Under the terms of settlement, Lopez and Weidner will “each cease using Rosetta Stone trademarks in online paid search advertising campaigns and on their online websites and operations.” The press release also notes that Lopez and Weidner “will provide Rosetta Stone with monetary compensation.” In other words, Lopez and Weidner will stop purchasing the Rosetta Stone name as a keyword and Rosetta Stone was able to get some money out of them to pay its attorneys fees.

Not surprisingly, Rosetta Stone is painting this as a large victory against “the illegal use of Rosetta Stone’s trademarks and confusingly similar variations as keywords in search engine advertising programs and in the header and text of the resulting sponsored links.”

Or perhaps it’s just another case where it simply did not make economic sense for these two guys to fight a legal battle against a large company like Rosetta Stone in order to continue using Rosetta Stone’s trademarks as keywords.

Mélange of Trademark Stories

Gummy Bears Battle
The owner of the registered mark GUMMY BEARS (for Bracelets, Charm Danglers, General Jewelry as well as Toys and playthings, namely, board games, stuffed animals, infant toys, and musical toys) which also has a variety of other pending trademark applications filed a lawsuit against New Jersey-based Gummy Bear International (“GBI”) for using the mark in connection with the sale of music videos, animation, ringtones, mp3s, posters, stickers, and other goods (and which has its own pending applications for GUMMIBÄR and GUMMY BEAR). Of course, don’t be confused – this has nothing to do with the GUMMI BEARS candy made by Haribo of America, Inc., which owns the registered mark THE ORIGINAL GUMMI-BEARS).


Intel Attacks NETBOOK
Intel is seeking a declaratory judgment (complaint here) that the registered mark NETBOOK (registered by a Canadian company) is generic for laptop computers. Intel received a cease and desist letter from the registrant (Psion Teklogix, Inc.) on December 22, 2008 (a letter which allegedly was sent out to numerous other well-known names like Dell, HP, and Best Buy).

Intel currently owns the domain name http://www.netbook.com/, which is directed to a page for Intel’s ATOM processor for notebook computers. Intel alleges that the Section 8 Declaration filed in 2006 by Psion was fraudulent because it claimed continued use of the mark in commerce by submitting a specimen of a notebook computer that had been discontinued in 2003. Intel also cites numerous other third party uses of the term “netbook” in connection with laptop computers. Psion also apparently filed Google Adword complaints with Google regarding any purchase of the adword “network” including ads purchased by Google using the term.

Nordstrom Seeks to Resolve BECKONS dispute
The press surrounding the efforts by Nordstrom to seek cancellation of the mark BECKONS and the subsequent roar of outrage from the legal blogosphere could have sparked an actual resolution. Nordstrom VP of corporate communications Brooke White, in an e-mail to Information Week’s Global CIO Weblog, stated

Our intention from the beginning was to co-exist with Beckons in a manner that would enable Beckons to use their trademark on yoga merchandise, while we used the Beckon name for fashion apparel and accessories. We never intended to adversely affect Ms. Prater's business and we are sorry if this has happened. We are reaching out again to Ms. Prater's attorneys to reach a settlement that we are hoping she will find acceptable.

The Global CIO Weblog postings can be read here. (HT: Michael Atkins for his coverage).

Of course, unlike what happened in the case of MONSTER GOLF (blogged here), there does not seem to be any kind of outreach (yet) to help pay for Ms. Prater’s legal fees arising from this mess. However, given Nordstrom’s willingness to work out a coexistence agreement, if Ms Prater is unwilling to coexist in the way described by Nordsrom, is Nordstrom still the bad guy should it decide to proceed with its cancellation proceeding?

Blockshopper and Jones Day Settle

Several media stories and bloggers (here, here, here and here) reported on the unfortunate settlement by Blockshopper of the frivolous Jones Day trademark infringement lawsuit (previously blogged here, here, and here) – after accumulating over $100,000 in legal fees fighting the lawsuit.

Jones Day is apparently ok with BlockShopper publishing links to Jones Day as long as they are not “embedded links” and instead place the full web address next to references to the firm. For example, instead of writing something like “Jones Day’s frivolous and abusive lawsuit was brought by Paul W. Schroeder, Irene S. Fiorentinos, Meredith M. Wilkes, Robert P. Ducatman, and James W. Walworth Jr”, Blockshopper would instead have to write it as “Jones Day’s (http://www.jonesday.com/) frivolous and abusive lawsuit was brought by Paul W. Schroeder (http://jonesday.com/pwschroeder/), Irene S. Fiorentinos (http://jonesday.com/ifiorentinos/), Meredith M. Wilkes (http://jonesday.com/mwilkes/), Robert P. Ducatman (http://jonesday.com/rducatman/), and James W. Walworth Jr (http://jonesday.com/jwwalworthjr/).” Blockshopper has restored the links to the condos purchased by the Jones Day associates at issue. Blockshopper will now also have a page which explains why Jones Day gets treated so special and which describes the lawsuit.

So given the end result and the negative publicity that has been brought to the precious “Jones Day” name, one must really ask -- was it really worth bringing in the first place?

Trader Joe’s Reaches Settlement Over “Trader John’s”

Looks like the trademark dispute between Trader Joe’s Co. and Gristedes Foods Inc. (previously blogged here) over the latter company’s planned use of the name “Trader John’s” in connection with a chain of grocery stores appears to have been settled.

On January 22, 2009, the parties sent a joint letter to the court requesting that the temporary restraining order entered by the court on January 14, 2009, be extended an additional 10 days while the parties work out the details of a settlement agreement which apparently had been reached in principle on January 15, 2009. The letter was endorsed by the court on January 23, 2009.

So I guess John Catsimatidis, the billionaire CEO of Gristede’s Foods, had second thoughts about the viability of his “fair use” defense of the name “Trader John’s” because his name is John and he is a trader.

Monster Cable and Monster Mini Golf Reach Amicable Resolution to Trademark Battle

Like many other blogs, I previously wrote (link here) about the trademark infringement battle between Monster Mini Golf and Monster Cable Products, Inc.

Yesterday, the “Stop the Bully” webpage created by Monster Mini Golf after being embroiled in a trademark dispute with Monster Cable reported that the parties reached an amicable resolution to their dispute – with Monster Cable dropping the lawsuit and the opposition against Monster Mini Golf thereby allowing Monster Mini Golf to proceed with registering its mark MONSTER MINI GOLF. WebProNews had an article about the settlement. If you want to get Monster Cable’s own perspective of the ongoing events surrounding the case, you can read their own webpage “Monster Truth on Monster Mini Golf.”

Noel Lee, president of Monster Cable Products (or as he likes to call himself, “The Head Monster”), apparently spoke with Christina and Patrick Vitagliano, the owners of Monster Mini Golf, about the situation and followed-up with a letter to them (which you can read in its entirety here).

Noel Lee

(not such a Monster after all)

While I’m always happy to see a small business owner faced with the costly prospect of having to litigate a specious trademark infringement lawsuit brough by a goliath corporation reach an amicable resolution – and even more impressed by the fact that Mr. Lee has apparently agreed to reimburse the Vitaglianos for their attorneys fees – I get the impression that Mr. Lee settled only because of the public backlash and not because he recognized the overreaching nature of his claims of infringement and dilution. His letter reads:

I will say that this is a landmark kind of situation, as public opinion wins over what is the right thing to do for trademark protection of a famous mark. We have made the decision that public opinion, and that of our valued customers is more important than the letter of the law that requires us to prevent the dilution of our mark risk losing it.

The “right thing” to do for trademark protection of a famous mark? Lee is acknowledging that in his opinion the “right thing” to do would be for a company like Monster Mini Golf to be prevented from using the word MONSTER in connection with a mini-golf course. Lee honestly believes that allowing a company like Monster Mini Golf to operate under that name diminishes Monster Cable’s claims to protection of its MONSTER mark under federal trademark dilution law (which protects “famous” marks from even non-confusing use by others where such use dilutes the value of such famous mark). So why hasn’t Lee and Monster Cable gone after drink maker Monster Energy or job hunting website Monster.com? These would seem to diminish Monster Cable’s claim to fame as much as (if not more than) Monster Mini Golf. What is it about these two companies’ use of the word MONSTER in connection with their goods and services that did not “require” Monster Cable to take action “to prevent the dilution of our mark risk losing it”?

Finally, its disingenuous for Lee to assert that the law requires Monster to prevent dilution of Monster’s mark “or risk losing it.” At most, Monster Cable, by not going after every single company in the world using the word MONSTER in connection with there business (regardless of the goods or services sold), weakens its ability to rely upon federal dilution law to attack companies using the word MONSTER in a non-confusing way on non-competing goods. But Monster Cable is not going to “risk losing” its trademark rights to the MONSTER mark in connection with cables and other similar goods sold by Monster Cable merely by allowing some mini-golf course to go by the name Monster Mini Golf.

Of course, I don’t want to come off too critical of Mr. Lee because, by settling this matter in the way he did and reimbursing the couple for their attorney’s fees, he did indeed do something very good and worthy of praise – even if he may have done it for the wrong reasons.

SCRABULOUS case S E T T L E D

The lawsuit filed by Hasbro, Inc. against the makers of the widely popular Facebook game SCRABULOUS (previously blogged here and here) has been voluntarily dismissed by Hasbro. See Hasbro, Inc. v. RJ Softwares, Rajat Agarwalla, and Jayant Agarwalla, Case No. 08-cv-6567 (S.D.N.Y. July 23, 2008). News reports on the settlement can be found here, here, and here.

Scrabulous screenshot

As usual, the parties are silent on the terms of settlement, but RJ Softwares issued a press release on its LEXULOUS site (the new name given to the SCRABULOUS game soon after the lawsuit was filed) stating:

RJ Softwares has agreed not to use the term Scrabulous and has made changes to the Lexulous and Wordscraper games (in the U.S. and Canada) to distinguish them from the SCRABBLE crossword game. Based on these modifications Hasbro has agreed to withdraw the litigation filed against RJ Softwares in federal court in New York in July of this year. As modified, the Wordscraper application will continue to be available on Facebook and Lexulous will be available on the Lexulous.com website.

Lexulous screenshot

The Wordscraper game is similar to Scrabulous except that players could devise their own scrabble-type board rather than having a board with the “trademark” look of the original Scrabble board (shown above).

Wordscraper screenshot

The Naked Cowboy Settles Trademark Infringement Lawsuit with Mars Incorporated

I’ve previously written (here and here) about the trademark infringement lawsuit filed by Robert Burck, better known as “The Naked Cowboy,” against Mars Incorporated, the maker of M&Ms candies, over an M&M ad featuring a cartoon M&M guitar-playing street performer wearing a cowboy hat, boots, and underwear – all reminiscent of Burck’s alter ego. See Burck v. Mars, Incorporated et al, Case No. 08 Civ. 01330 (S.D.N.Y. June 23, 2008

As reported by the New York Post today, the parties stipulated to dismiss the lawsuit with prejudice (a copy of the dismissal can be read here). Naturally, the terms of the settlement were not disclosed and Burck’s only comment was that the “matter had been resolved.”

UW settles its trademark infringement lawsuit with Washburn over “Motion W” mark

I previously wrote (link here) about the trademark infringement lawsuit by the Board of Regents of the University of Wisconsin System (the “UW”) against Washburn University (“Washburn”) over the latter’s use of a W logo (pictured below) which UW claimed infringed on its so-called Motion “W” registered trademark (pictured above). See Board of Regents of the University of Wisconsin System v. Washburn University, Case No. 3:2007cv00672 (W.D. Wis.).



According to news reports (here and here), the parties reached a settlement agreement whereby Washburn can continue to use its logo so long as the university’s name, mascot name, or mascot symbol is transposed on it. No money reportedly changed hands. Washburn officials also report that they are currently working on developing a new logo for the future.

Nuvio and Garmin settle trademark dispute over NÜVIFONE

I previously wrote (link here) about the lawsuit between internet telephone company Nuvio Corp. (“Nuvio”) and GPS maker Garmin Ltd. (“Garmin”) over Garmin’s planned sale of the NÜVIFONE phone.

The parties apparently reached a confidential settlement and the lawsuit was dismissed earlier this week (Forbes.com story). Garmin’s spokesman said, “We can't discuss the financial terms, but we are pleased with the settlement.” Nuvio’s CEO said, “We both came to terms that protected our respected intellectual property. That’s what we were concerned about.”

So, reading between the carefully crafted lawyer statements, Garmin probably paid a “relatively” small price to Nuvio so that it could move forward with its NÜVIFONE phone as well as its Section 1(b) intent-to-use trademark application for the mark NÜVIFONE. And Nuvio, along with a little bit of money (enough to pay the lawyer fees) and an agreement that sets some limits on Garmin’s use of the NUVI prefix, can proclaim to the world that it aggressively protects its intellectual property.

Garmin had planned to release the Nuvifone later this year, but announced that the rollout has been pushed back to sometime in the first half of 2009. A spokesman for Garmin said the decision to push off the release had more to do with ongoing negotiations with wireless carriers and not the lawsuit.