In some trademark cases, the plaintiff sues the defendant for trademark infringement based on what is considered to be a reverse-confusion theory. This means that the plaintiff believes that consumers will mistakenly believe that the defendant is the source, affiliate or sponsor of the plaintiff’s product or service.
I thought that one of the better Super Bowl XLIII advertisements was delivered by Expensify, because it simply demonstrated the value of its service in an effective manner. It appears that a competitor is trying to benefit from Expensify’s Super Bowl exposure, which has led to the filing of a lawsuit by Expensify for trademark infringement, unfair competition and unjust enrichment.
Lululemon Athletica is suing Under Armour under claims of patent and trademark infringement, for allegedly copying a sports bra design. The “$52 Energy Bra – which has four straps that crisscross in the back – does it all,” according to Lululemon. Four of Under Armour’s sports bras, including “Under Armour’s Armour Eclipse Low Impact”, “Armour Shape Low Impact,” “Under Armour On the Move”, and “Under Armour Printed Scrappy Bra” sports bras, ranging from 20 to 40 dollars, are at issue.
Trademark suits can be quite complex for either side and Heitner Legal can help navigate you through that complexity. Heitner Legal has a great deal of experience when it comes to trademark lawsuits, having represented both Defendants who were being sued for trademark infringement, and having represented Plaintiffs who were suing someone else for the same, as well as transactional trademark work.
For Lululemon to succeed on trademark infringement, Lululemon will need to show that there is a likelihood of consumer confusion as a result of Under Armour’s use.
Lululemon claims the similarities “may cause irreparable damage” to its reputation. Lululemon also added that the infringement in dispute was conducted knowingly, willfully, and in bad faith, and with knowledge of Lululemon’s rights, and marketed to the identical group of consumers as Lululemon via the same channels of trade.”
Moving to the other side, Under Armour’s strongest defense may be the fact that there is not a strong likelihood of consumer confusion, as a result of their own use of the design because of the Under Armour Logo being printed on the back. With the well-known Under Armour logo right on the sports bra, how are customers likely to confuse the designs?
An online golf apparel company called I Made Bogey is being sued by Tltleist. As Deadspin stated in its report, I Made Bogey “sells products with slogans you’d expect to see on the Wildwood boardwalk.” The majority of products on the site are parodies of Titleist, with the name “Titties.” Titleist, through its parent company, Acushnet, has filed suit against I Made Bogey for unfair competition, trademark infringement, and dilution, according to Bloomberg.
I Made Bogey sold hats, golf towels, sunglasses, ball markers, tees, and other products with “Titties” printed thereon. An Instagram post sponsored by I Made Bogey, using the hashtag “golf porn,” and also including a picture of the “Tittie’s hat” next to a naked woman’s torso was another issue in dispute.
Trademark suits can be quite complex, and Heitner Legal can help guide you through those legal issues. Heitner Legal has a great deal of experience when it comes to trademark lawsuits. That experience includes having represented both Plaintiffs who are suing someone else for trademark infringement and/or dilution, and having represented Defendants who were being sued for the same, as well as transactional trademark work.
In the aforementioned Titleist lawsuit against I Made Bogey, Titleist claims both trademark infringement and dilution. To prevail on trademark infringement, Titleist will need to demonstrate that there is a likelihood of consumer confusion as a result of I Made Bogey’s use of the mark. To also succeed on dilution, Titleist needs to show that either its reputation its tarnished or its brand name identity is blurred as a result of the “Titties” products from I Made Bogey.
As Acushnet, the parent company of Titleist, has pointed out “I Made Bogey intentionally creates an unwholesome and undesirable association—one involving a patently offensive and obscene reference to sexual organs and sexual activity,” and that I Made Bogey “tarnishes plaintiff’s Titleist brand identity and reputation.” Acushnet also said that “I Made Bogey’s actions are offensive not only to women, but to consumers in general.” In addition to Acushnet’s statements, “Titties” is also written in a scripted font on I Made Bogey’s products just like “Titleist.”
On the other side, I Made Bogey’s defenses consist primarily of the parody and free speech defense. By definition, a parody is “a humorous or satirical imitation.” Under the First Amendment of the U.S. Constitution, individuals are afforded free speech, and such free speech might include expression in a manner that may poke fun at something else. I Made Bogey’s argument is that there is not a likelihood of confusion as a result of their own use of the mark, and basically that the joke is obvious to consumers.
This past week, Under Armour and Nike Inc. reached a settlement agreement regarding the trademark infringement lawsuit initiated by Under Armour for Nike’s alleged illegal use of the “I Will” slogan. As a result, Under Armour’s complaint was dismissed Monday, February 10, pursuant to an approved court order by a Baltimore U.S. District Judge—almost one year to the date Under Armour filed its original lawsuit, February 21.
In the lawsuit, Under Armour alleged that Nike infringed upon its trademark phrase “I will” by using the slogan in social media ads such as “I will finish what I started” and “I will sweat while they sleep.” With the lawsuit, Under Armour sought damages and injunctive relief, hoping to prevent Nike from continuing to use the phrase or a substantially similar slogan in relation to its products. While the terms of the settlement agreement were undisclosed, it can be assumed that Under Armour was able to achieve at least the latter part of the remedies it sought with its claim.
The crux of Under Armour’s lawsuit rests on its belief that the average consumer would be confused as to whose products they were purchasing if both companies were to utilize slogans incorporating “I will.” For such a determination on this issue, courts typically look at a distinct set of seven factors to help decide it the moving party has a claim for asserting likelihood of confusion. These seven factors are: (1) the strength of the mark allegedly being infringed; (2) the similarity between the infringed and infringing marks; (3) the similarity between the goods and services offered under the two marks; (4) the similarity of the sales methods used by the holders of the marks, such as their sales outlets and customer base; (5) the similarity between the holders advertising methods; (6) the intent of the alleged infringer to benefit off the infringed party’s established good will; and (7) the existence of actual confusion in the consuming public.
However, another claim that Under Armour could have possibly utilized in its lawsuit against Nike is that the company’s use of the “I will” slogan was effectively diluting Under Armour’s use of the slogan in commerce. Within trademark law, there are two main theories of dilution: (1) tarnishment; and (2) blurring. By pleading dilution, Under Armour does not have to prove that a likelihood of confusion exists among its customers as it relates to the purchase of products utilizing “I will.” Under the first category, dilution by tarnishment occurs when a famous mark is improperly associated with an inferior or offensive product or service. Courts typically find tarnishment when a famous trademark—and the mark must be famous—is wrongfully associated with another mark that pertains to nudity, pornographic material, or drugs. Because Nike, as an athletic apparel merchandising factory, unquestionably does not fall within any of these categories, it is more likely that Under Armour would have pursued a dilution claim under the second category. In order to determine dilution by blurring, federal law specifies six non-exhaustive factors for the courts to consider: (1) the degree of similarity between the mark or trade name and the famous mark; (2) the degree of inherent of acquired distinctiveness of the famous mark; (3) the extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark; (4) the degree of recognition of the famous mark; (5) whether the user of the mark or trade name intended to create an association with the famous mark; and (6) any actual association between the mark or trade name and the famous mark. While these elements, viewed on its face, seem similar to the likelihood of confusion factors, it is important that a likelihood of confusion is not need in order to prove a dilution claim.
By claiming the “I will” slogan as one of the “cornerstone symbols” of the company, Under Armour essentially stakes its claim that the phrase is widely recognized as famous enough to warrant protection. Consequently, looking at the factors, Under Armour could make a claim that all except the fifth element would be found in its favor. Any use by Nike of the “I will” slogan will undoubtedly be similar to any use by Under Armour, simply because the respective slogans utilize similar language. For example, compare Nike’s “I will protect my home court” to Under Armour’s “Protect This House: I will.” Additionally, Under Armour has a legit claim to assert that its slogan has acquired distinctiveness with relation to the company and its products due to the amount of advertising dollars put into promoting the slogan, the litany of merchandise it appears on, and the many years the phrase has been in public eye and ear. Also by bringing this claim, the company, for all intents and purposes, states that only it alone can use the phrase throughout commerce, effectively using this litigation as a way to claim substantial exclusivity with the phrase. As for element six, it is within the realm of possibility that Under Armour could produce surveys or questionnaires that, if presented to consumers, would serve as evidence of actual association. One way this could be achieved is by placing both previously mentioned examples side by side, and having consumers attempt to place either example with its respective company. If a substantial amount of consumers were to link Nike’s use of the phrase with Under Armour, actual association would be proved in Under Armour’s favor.
However, proving Nike’s intent in using the “I will” phrase will be a tough task because it requires digging into the company’s mindset for why it decided to use the phrase. If Nike sought to benefit on the goodwill established through Under Armour’s use of “I will”, it will be enjoined under dilution through blurring. However, if this element proves difficult to establish, as long as Under Armour sufficiently shows the other five elements weigh in its favor, it would still likely succeed on its blurring claim due to the fact that none of the six factors are dispositive.
By filing its trademark infringement lawsuit against Nike, Under Armour followed the advice of its own slogan and proclaimed it will protect its trademarks at all costs. Assuming Under Armour also included a dilution claim, it effectively protected its house with double sided protection against Nike, and other potential infringers.
You may notice that at the beginning of the video, Christie Rampone is wearing what looks to be a U.S. Soccer Women’s National Team uniform. Christie Rampone is featured in such a uniform much more clearly in a few print advertisements, which the United States Soccer Federation is not happy about.
On July 27, 2011, the United States Soccer Federation filed a Complaint in the U.S. District Court for the Northern District of Illinois Eastern Division and named The FRS Company as the defendant. At issue is whether FRS’ use of the Rampone U.S. Soccer Women’s National Team uniform was impermissible. The U.S. Soccer Federation has a deal with Gatorade, which grants Gatorade the exclusive right, in the sports performance drinks category, to use U.S. Soccer marks. Further, the U.S. Soccer Federation claims that even if Rampone wished to personally contract with The FRS Company to allow it to use her image or likeness while in the uniform, she would have first had to get prior written consent and approval from U.S. Soccer. Apparently, approval was never granted.
Take a look at the advertisements in the Complaint embedded below. The ads start on page 10 of the Complaint. There are claims for trademark infringement, unfair competition, tortious interference with contractual relations, and unjust enrichment. The U.S. Soccer Federation is seeking a permanent injunction prohibiting FRS from using any U.S. Soccer Marks and the National Team uniform or any other confusingly similar marks, damages (including treble and punitive damages), attorneys’ fees, and costs.
Roughly a month ago, I discussed the announcement that starting in 2012, there will be many new top-level domains (TLDs) available for the public. Whereas now you can buy domain names with a restricted number of top-level domain tags such as .com, .net, .org, in the near future, you will be able to customize your top-level domain to your liking, as long as you have about $185,000 to spend on the application fee.
When I wrote about the new top-level domains, I focused on potential future legal battles centering around squatting on others’ protected trademarks. I mentioned that cybersquatting on another’s TLD could open up the door to a Uniform Domain Name Dispute Resolution Policy (UDRP) action and/or Anti-Cybersquatting Consumer Protection Act (ACPA) action.
One group that is particularly concerned about trademark infringement is the recording industry. One question is who will get the right to own the .music TLD? But the concern reaches beyond trademark disputes. The industry is worried that those involved in the spread of copyright infringing files will be able make their enterprises seem more legitimate with the new TLDs. Remember, though, that these infringers will have to pay out a heavy fee just to apply for the new TLDs and are not guaranteed to earn the right to attain a custom TLD. From what I hear, there will be quite a background check on applicants prior to any custom TLD approval.
In the meantime, the recording industry is working very closely with the Internet Corporation for Assigned Names and Numbers (ICANN) to develop a system that protects the industry from increased copyright infringement due to the release of new TLDs.
Generic top-level domains (gTLDs) include .com, .net, .org, .edu, and other variations in what is considered to be the back-end of a domain name. In 2000, the Internet Corporation for Assigned Names and Numbers (ICANN) introduced .aero, .biz, .coop, .inof, .museum, .name, and .pro. Then, in 2005, .cat, .jobs, .mobi, .tel, and .travel were added to the list of available gTLDs. Further, there is now the option to create a country code top-level domain (ccTLD). For the United States, the ccTLD is .us.
Starting in 2012, there will be many new TLDs, and they will be far from generic and have absolutely nothing to do with any particular country. Basically, any person or company will be entitled to apply for its own TLD. The variations are limitless, but the most valuable TLDs will be the more generic ones. Think about it this way – Grey Goose could buy .greygoose, but what if they won the right to .vodka? These TLDs will come at a hefty price, though. As Mashable.com reports, the application fee is $185,000 and the annual fee is $25,000.
What I find to be the most pressing concern is the future legal battles that will result from the grabbing of others protected trademarks. Cybersquatting on another’s TLD could open up the door to a Uniform Domain Name Dispute Resolution Policy (UDRP) action and/or Anti-Cybersquatting Consumer Protection Act (ACPA) action. The UDRP method is offered around the world and allows for the cancelling or transfer of an infringing domain. ACPA is restricted to the United States and allows for the trademark owner to also recover damages and attorney’s fees.
If you are an individual/company looking to purchase one of the new TLDs, you should first consult an attorney, who will be able to help you through the process of applying for the TLD(s) you are interested in owning and run a trademark search to see if you have a strong chance of being protected from future litigation based on potential trademark infringement.
If you are an individual/company who believes that your trademark is being infringed upon, you should consult an attorney to see if you should engage in litigation. The attorney will be able to advise you as to whether you should file a UDRP or ACPA action and will handle the drafting of necessary documents along with the actual litigating of your claim.
Ever since domain names have been open for public registration, domain owners have been guilty of cybersquatting on other peoples’/companies names. Some cybersquatting cases are more clear than others. If I register the domain name BurgerKing.com, it is unlikely that I can defend it by showing a legitimate use for owning the URL. However, if I own burgers.com, it is likely that I am not squatting on any particular company’s name, and instead will be able to retain it without having to pay any fine to its supposed rightful owner.
While cybersquatting originally dealt strictly with sitting on another person/company’s URL, it is shifting to a new arena – social networking sites. Specifically, celebrities and companies are finding their names/marks taken by others when they go to register on sites like Twitter.com. Squatting on peoples Twitter usernames has become so rampant that it has picked up its own term – twittersquatting.
Recently, Coventry First, a global financial services firm, filed a Complaint in the U.S. District Court for the Eastern District of Pennsylvania based on someone creating the Twitter account @coventryfirst. The “About” description for the Twitter name is, (Parody Site) Coventry Firsts Profits of the early death of its Clients. The sooner they die the more $ they make! 1st Amendment. As of writing this post, @coventryfirst has only Tweeted a total of 19 times and has a mere 15 followers. The first thing I think to myself is how exactly has Coventry First been damaged to this point, and how hard it would be to prove those damages.
Within the Complaint, Coventry First includes counts for:
- Federal Trademark Infringement
- Federal Unfair Competition
- False Designation of Origin
- Violations of the Anti-Cybersquatting Consumer Protection Act
- Trademark Dilution
- Unjust Enrichment
Count 4 has no shot and will likely be eliminated in a motion to dismiss. The Anti-Cybersquatting Consumer Protection Act (ACPA) only applies to second-level domain names (i.e. “BurgerKing” in “BurgerKing.com”). A Twitter name is not a second-level domain name.
In order for Coventry First to have a shot at winning Count 1, it will have to show that @coventryfirst creates consumer confusion. Are you confused as to who is the owner of @coventryfirst when you go to Twitter.com/coventryfirst? I doubt it!
Is it even necessary to discuss Count 2? Defendant is obviously not a competitor of Coventry First. As with Count 1, there is no real likelihood of confusion as to who is authoring the Tweets, either.
How exactly has the owner of @coventryfirst been unjustly enriched? He/she has a whopping total of 15 followers and there is no indication that this person wants to or can make any money off of owning the account. Throw Count 6 out.
Defendant did establish @coventryfirst, but is Tweeting 19 times even considered actively using it? Even if the account was pumping out 5 Tweets a day, again, how could a reasonable reader think that the Tweets are coming from someone with authority at Coventry First? Throw Count 3 out for the same reasons that Count 1 and Count 2 do not apply.
Last we are left with Count 5. Perhaps Coventry First’s best arguments are with regards to this Count, but I still think that the company fails with proving trademark dilution as well. Coventry First will have to prove that there has been some blurring or tarnishment of its trademark based on the existence of @coventryfirst. Maybe there have been some damages based on the press resulting from Coventry First’s filing of its Complaint, but certainly not from prior to its filing. Thus, if anything, the company brought the dilution upon itself. This is not something the creator of @coventryfirst should be liable for.
While it does not seem that Coventry First has solid grounds for winning its twittersquatting case, this is an area of law to keep a close eye on. Many people are squatting on others’ trademarks/tradenames and may find themselves in trouble in different circumstances.
If you have an idea (a great idea) to create a website that allows visitors to watch and share YouTube videos together with their friends, you should consult an attorney to figure out how to embark on the venture without stepping on anyone’s toes. The last thing you want to worry about in a start-up phase are potential lawsuits, especially based on trademark infringement. It could end up costing you a lot of money to correct, multiple headaches, and complete loss of any brand awareness/image/loyalty.
As you may have guessed, Google, on behalf of YouTube, has sent multiple requests that the aforementioned website be turned over. The URL is YouTubeSocial.com. The founders of the service should have been presented with a huge caution prior to ordering the domain name and subsequently developing and marketing the website.
There is absolutely no argument that YouTube has valid protectable trademarks. I also do not think it will be tough for Google to prove that the use of YouTubeSocial.com creates a likelihood of consumer confusion in commerce. TechCrunch reports that Google has made the following demands: Read more “Google Not Pleased With YouTubeSocial.com”