MN Trademark Lawyer

Speicman Fail – A speciman of a mark in actual use is required for trademark applicaitons, but this one only shows the mark superimposed on the goods.

Since February 7th the Trademark office has received eight trademark applications for the term LINSANITY. The products identified in applications range from clothing, jewelry, and sport drinks, to eyeglasses and cell phone covers. The only problem is only one of these applications is on behalf of the Knicks Jeremy Lin (Serial 85541426); and it is a basic premise of trademark law that you can not register the name of a living person without that persons written consent. Perhaps more concerning, however, is the attempt of people who know him to cash in on his name one of the applications is by Roger Montgomery for the purpose of Business management of sports people (Serial 85542514) and who the Washington Post identifies as Lins own agent.

While some of the applicants may try to argue that it is purely coincidental that they want to register the name in the middle of Mr. Lins hot streak (by Linsanity, I mean LENS -Anity for eyeglass lens really I did!), presumably, the trademark examiners will call them out on this blatant attempt to cash in on Mr. Lins new found celebrity; but if they dont, Mr. Lins attorney will be able to oppose the registration on his behalf.

Article source: http://legal-muse.com/ip/trademarks/linsane-trademarks/

Earlier this year shoe icon Christian Louboutin sued Yves St. Laurent (YSL). They were seeing red (pun intended) over the recent Yves St. Laurent 2011 Resort collection, which included red-soled shoes, the Louboutin signature brand detail. In 1992 Louboutin began using the red lacquer sole. In 2008, the red soles were registered as mark in the US Patent and Trademark Office, and on January 1, 2008, number 3, 361,597, the red sole mark came to life.

Louboutin filed a trademark action against YSL, which YSL prominently countered with a counter-suit seeking cancellation of the Louboutin trademark registration. Louboutin responded with a request for a preliminary injunction temporarily preventing YSL from selling the shoes until the dispute was settled. In August the court flatly denied Loboutins request. The Court stated, Because in the fashion industry color serves ornamental and aesthetic functions vital to robust competition, the Court finds that Louboutin is unlikely to be able to prove that its red outsole brand is entitled to trademark protection, even if it has gained enough public recognition in the market to have acquired secondary meaning. The Court therefore concludes that Louboutin has not established a likelihood that it will succeed on its claims that YSL infringed the Red Sole Mark to warrant the relief that it seeks. However, Color alone sometimes may be protectable as a trademark, where that color has attained secondary meaning and therefore identifies and distinguishes a particular brand (and thus indicates its source). Conversely, color may not be protectable where it is functional, meaning that the color is essential to the use or purpose of the product, or affects the cost or quality of the product.

In short, the Court argued that clothes are inherently aesthetic, the addition of an aesthetic feature like the color is merely a function of the design and therefore not protectable as a trademark. I would imagine the same outcome had the designer claimed a specific cut of a dress or pant, or use of a specific material. A finding converse to this would open the flood-gates to claims that new designs or aesthetics are trademarks and preventing any others from their use. Taking this argument to an extreme, the little black dress is largely credited to Coco Chanel if she had elected to trademark the aesthetics that make up this classic design, one would be hard pressed to recognize todays fashion. While the red sole has become synonymous with Louboutin, with women paying $595- $1000 for a pair of these status symbol shoes, the ability to take an entire color off of the pallet of future designers would be far reaching and stifle the creativity contained in future catalogs and runways.

Thanks to Sara Harrison for her assistance with this post.

Article source: http://legal-muse.com/ip/trademarks/limitation-on-color-trademarks-in-the-fashion-industry/

Earlier this month, the U.S. District Court, Southern District of New York awarded a default judgment to clothing designer Tory Burch LLC in its trademark counterfeiting and cyber-squatting case against 232 websites which sold copies of Burchs handbags, flats, and accessories. After none of the 232 defendants answered the complaint, the Court awarded damages of $164 million and ordered that the counterfeit websites be turned over to Burch. The $164 million is the largest settlement of this type. Additionally, the Court used the process provided in similar cases involving The North Face and Ralph Lauren which ordered third-party payment facilitators, such as PayPal, to disgorge any money in Defendants accounts. While it is not expected that Burch will ever recover the full judgment in this case, the ability to take possession of the infringing domain names, along with the ability to freeze related financial accounts, gives the plaintiff a great tool in combating future infringement and sends a strong warning on the repercussions of counterfeiting goods.

Websites selling counterfeit designs are a huge problem for the fashion industry because of the damage to their profits and brand integrity. While some argue that the consumers who buy the knock-off are not the same as those who will buy the real-deal, this argument avoids the fact that exclusivity of the designs is one aspect of what give the marks of these designers value. When thousands of sub-par handbags are suddenly available, not only is the quality of the product related to the counterfeited goods put into question, but so is the exclusive aura surrounding the product.

While the actual designs of most manufacturers are not protected by copyright (clothing is not protectable subject matter), holding the product out as being sourced from the original designer violates their trademark rights. Counterfeiters be aware the courts are looking at new and more aggressive ways of taking you down and preventing you from profiting from harming the trademark rights of the designers you are ripping off.

Thanks to Sara Harrison for her assistance with this post.

Article source: http://legal-muse.com/ip/trademarks/options-when-taking-down-counterfeiters/

Posted on | December 27, 2010 | No Comments

When thinking about whether or not to enforce a trademark, keep in mind the purpose of having the mark is to serve as an identifier of the source of the good or service for consumers. With this in mind, in order to preserve your own rights to a mark you have to try to maintain its strength as an identifier for your product.

In the event you have adopted a mark, an important part of maintaining it is to monitor the marketplace for others using identical or similar marks for the same or similar services. In the event you locate someone using the mark in a way that might cause consumer confusion, steps should be taken to eliminate potentially weakening of the mark. Consideration should be given to sending a letter advising the infringing user of your prior use and demanding that they stop using the mark (sometime referred to as a cease and desist letter). Before sending such a letter, you should consider discussing the matter with an attorney for their help in evaluating the mark you are seeking to protect there is nothing worse than demanding someone else stop using a mark, only to find out that they have a greater right to use the mark than you do. If the infringer fails to heed your warning, you will need to evaluate how widespread the infringement is and make a business decision about whether to proceed to litigation.

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Article source: http://legal-muse.com/trademarks/trademark-enforcement/

Posted on | December 9, 2010 | No Comments

Consideration

While it may seem like a simple question, sometimes its worth reviewing just the same when is a contract a contract? General speaking it is when two or more parties exchange mutual promises. Often the determining factor is whether the mutual promises of the parties are supported by consideration. Consideration involves the giving of something of value, rather than a mere promise. The reason that the courts and legislatures generally require some form of consideration is to insure that the promises being made are not merely a casual statement, an accident, or gratuitous in short to make sure the people making the agreement really mean it. Consideration looks at whether the parties have assumed an obligation on the condition of an act or forbearance of another. Except in cases of employment matters, Minnesota courts generally do not look at the adequacy of the consideration being offered only whether some consideration has been exchanged. For written agreements, the court presumes valid consideration.

In contracts related to intellectual property rights this means that things like royalties might be subject to discontinuance even if the only thing the licensor does is grant a right to use the IP and it turns out the licensor in fact does not have the rights in the first place (assuming the licensor did not know that the rights were invalid). However, if the contract also goes on to provide that the licensor will discontinue use of the rights for their own use, this forbearance may be viewed as adequate consideration.

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Article source: http://legal-muse.com/copyright/considerate-contracts/