Starbucks Corp. v. Wolfe's Borough Coffee, Inc.

This is an appeal by the plaintiffs from a decision of the United States District Court for the Southern District of New York (Swain, J.) following a second remand from this Court. The District Court concluded that plaintiffs have failed to prove that defendant’s use of its “Mister Charbucks” and “Charbucks Blend” marks is likely to dilute plaintiffs’ famous “Starbucks” marks, and denied injunctive relief. We hold that the District Court did not clearly err in any of its factual determinations, including its evaluation of the six non‐exclusive factors bearing on whether a mark is likely to cause dilution by blurring, enumerated in the Federal Trademark Dilution Act of 1995, as amended by the Trademark Dilution 1 Revision Act of 2006. See 15 U.S.C. § 1125(c)(2)(B)(i)–(vi). Balancing those factors de novo, we agree with the District Court that plaintiffs have failed to demonstrate a likelihood of dilution by blurring. Accordingly, we AFFIRM.

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Apple, Inv. v. Samsung Elecs. Co.

Apple Inc. appeals from an order of the U.S. District Court for the Northern District of California denying Apple’s request for a permanent injunction against Samsung Electronics Company, Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC (collectively, “Samsung”). See Apple Inc. v. Samsung Elecs. Co., 909 F. Supp. 2d 1147 (N.D. Cal. 2012) (“Injunction Order”). Apple sought to enjoin Samsung’s infringement of several of Apple’s design and utility patents, as well as Samsung’s dilution of Apple’s iPhone trade dress. We affirm the denial of injunctive relief with respect to Apple’s design patents and trade dress. However, we vacate the denial of injunctive relief with respect to Apple’s utility patents and remand for further proceedings.

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Kelly-Brown v. Winfrey

On appeal from judgment entered pursuant to an Order dated March 6, 2012 by the United States District Court for the Southern District of New York (Paul A. Crotty, Judge) granting Defendants-Appellees’ motion to dismiss. Plaintiff is the owner of a motivational services business named “Own Your Power Communications, Inc.,” and has a registered service mark in “Own Your Power.” Defendants published a magazine cover, hosted an event, and built a section of a website all utilizing the phrase “Own Your Power.” Plaintiffs bring suit alleging trademark infringement under the Lanham Act. The District Court held that the defendants’ use of the phrase “Own Your Power” constituted fair use and also held that plaintiffs’ claims failed because she failed to meet the threshold requirement of showing use as a mark. We disagree with the District Court’s holding that the defendants have demonstrated fair use and also with its holding that plaintiffs are required to make a threshold showing that defendants’ used “Own Your Power” as a mark in order to state a claim for trademark infringement. We therefore VACATE the judgment of the District Court with respect to plaintiffs’ trademark infringement, false designation of origin, and reverse confusion claims and REMAND for further proceedings not inconsistent with this opinion. The District Court granted defendants’ motion to dismiss plaintiffs’ counterfeiting, vicarious infringement, and contributory infringement claims on separate grounds, and we AFFIRM with respect to these claims.

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State trademark laws have no bearing on federal trademarks

Andrea J. Cook Journal staff | Posted: Monday, December 12, 2011 3:01 am

South Dakota's trademark laws have no bearing on the trademark dispute between Sturgis Motorcycle Rally Inc., and Rushmore Photo & Gifts that is working its way slowly through the federal court system, according to South Dakota Secretary of State Jason Gant.

"South Dakota law does not allow persons to simply trademark a name or a location to deny its use to others. Any trademark registration with a name or location can only be used in connection with additionally descriptive terms distinctive of the applicant's goods or services," Gant said. "In other words, I couldn't trademark the name "Jason Gant" in South Dakota, but I could trademark "Jason Gant Widgets."

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Feds Set to Launch Campaign to Crack Down on Sellers of Fake Goods

WASHINGTON –  The knockoff designer bags look close enough to the real thing that few would notice at a casual glance. Same goes for the imitation replica football jerseys or popular boots. And the online prices seem too good to pass up.

 

But the products are fake and the websites selling them are breaking federal law by selling copies of high-end merchandise without giving credit or money to the real designers and creators. And while the products can look as good as the real thing, federal authorities warn that buying fake merchandise can be dangerous.

 

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Looking to protect brand abroad, companies tap lobbyists on trademark infringement

By Catherine Ho, Published: August 14

When True Religion Brand Jeans applied to register its trademark in China last year, that country’s trademark authorities rejected the denimmaker’s request. But two months later, they gave the green light to an unaffiliated Chinese applicant whose trademark, Zhenshi xingyang, means “true faith” in Mandarin.

So the fashion retailer turned up the heat in Washington, hiring K Street powerhouse Akin Gump to lobby on its behalf on China-related counterfeiting and trademark issues. The retailer has paid Akin Gump $220,000 in lobbying fees since March 2010, according to lobbying disclosure records. The firm is also working with True Religion’s in-house lawyers to appeal the decision denying the English version of the trademark, and to fight the Chinese applicant’s exclusive rights to Zhenshi xingyang — which could open the door for True Religion to claim the Chinese version of the trademark for itself.

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Entire Apple stores being faked in China

Louise Watt, Associated Press

BEIJING (AP) -- At first, it looks like a sleek Apple store. Sales assistants in blue T-shirts with the company's logo chat to customers. Signs advertising the iPad 2 hang from the white walls. Outside, the famous logo sits next to the words "Apple Store."

And that's the clue it's fake.

China, long known for producing counterfeit consumer gadgets, software and brand name clothing, has reached a new piracy milestone -- fake Apple stores.

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EBay May Be Liable for Counterfeit Goods

By LAURENCE NORMAN

BRUSSELS—EBay Inc. and similar online marketplaces may be liable if their users sell counterfeit goods through their websites, Europe’s highest court said Tuesday, in a ruling on a case brought by cosmetics company L’Oreal SA.

The European Court of Justice said the operators of online marketplaces aren’t exempt from liability if they have knowledge of, or control over, information about items for sale on their websites. They also could be liable if they have information to suggest any online sales are unlawful but fail to act promptly in removing the items or blocking the sale from their websites.

In a mixed ruling that responded to the U.K. High Court’s request for clarification on issues concerned with the obligations of Internet marketplace operators, the European court also ruled that European Union trademark rules apply to items for sale from non-EU countries when these are clearly targeted at EU consumers.

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Now That Everyone Wants to Be a Geek, Lawyers Have Been Called

Retailer Fights to Protect Squad's Trademark; Putting Rivals—and a Priest—on Notice

By MIGUEL BUSTILLO

Just a few decades ago, a geek was a carnival freak who bit the heads off of chickens and rats.

Then geek became a catchall word for socially maladjusted individuals who loved Commodore 64 computers more than fresh air.

Now geek is a term of endearment among acolytes of technology, imbued with golden marketing potential. Just how cool is geek? Any dweeb who dares to use the word in the computer business just might hear from Best Buy's lawyers.

The world's largest electronics chain recently threatened online rival Newegg.com with legal action, arguing that its Geek On advertising slogan sounded too similar to Best Buy's cartoonishly nerdy tech support service, Geek Squad.

Newegg responded by posting the cease-and-desist letter on Facebook this month—and self-described geeks everywhere blasted Best Buy for trying to commandeer a common word that has enjoyed a bigger metamorphosis than the ugly duckling.

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Apple iBooks trademark under fire from independent book publisher

By Chris Foresman

A small book publisher from New York is suing Apple over its use of the term "iBooks" for its e-book store and e-reader app for iOS. John T. Colby, Jr., owner of several small independent publishing imprints, filed a federal lawsuit in the Eastern District of New York on Wednesday for trademark infringement.

Colby is the owner and founder of Brick Tower Press and J. Boylston & Company. According to the lawsuit, between 2006 and 2007, Colby bought the assets of publisher Byron Preiss, which included an entire library of sci-fi and fantasy books published under the "ibooks" imprint. Those books date back as far as 1999.

Apple originally owned the "iBook" trademark for its line of colorful consumer laptops, which eventually morphed into the white unibody MacBook that Apple still sells today. However, the company didn't use the term to refer to e-books until it unveiled the feature for the first iPad in the spring of 2010.

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