Creative Protection

US v. Lam

A jury convicted appellants Chong Lam and Siu Yung Chan (collectively "Appellants") of conspiracy to traffic in counterfeit goods, trafficking in counterfeit goods, and smuggling goods into the United States. The counterfeiting convictions were based on the jury’s determination that a mark displayed on goods Appellants imported into the United States was a counterfeit of a trademark registered to fashion designer Burberry Ltd. ("Burberry"), depicting its signature plaid pattern (the "Burberry Check mark"). On appeal, Appellants advance various challenges to their convictions for trafficking in counterfeit goods under 18 U.S.C. § 2320(a). They also assert that certain comments made by prosecutors at trial necessitate a retrial. Because we find these arguments lacking in merit, we affirm.

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Old Brands Get a Second Shot

By ANGUS LOTEN And EMILY MALTBY

. . .

Using an old brand or product gives entrepreneurs at least one important advantage over start-ups: The amount they have to spend on marketing is often less than the cost of creating a new brand or concept, says George T. Haley, who teaches marketing at the University of New Haven's College of Business.

If a trademarked brand hasn't been used for three or more consecutive years, the law presumes it has been abandoned and it becomes available for others to register and use, according to Lawrence J. Siskind, a founding partner at the law firm Harvey Siskind LLP in San Francisco who specializes in intellectual-property law.

Other entrepreneurs say they are actively seeking the owners of old products and concepts that may have fallen by the wayside in order to buy the rights. "It's pretty much open season for older brands," says Garland Pollard, a former travel writer from Sarasota, Fla., who started BrandlandUSA, a Web site for posts about classic American brands, five years ago.

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In re The Chamber of Commerce of the United States of America

The Chamber of Commerce of the United States of America (“COC”) appeals the decision of the Trademark Trial and Appeal Board (“TTAB”) finding that COC’s service mark, NATIONAL CHAMBER, was correctly refused registration for being merely descriptive under 15 U.S.C. § 1052(e)(1). Because we find that substantial evidence supports the TTAB’s finding of descriptiveness, we affirm.

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LMFAO Clarifies Meaning of Name in Trademark Application

It's perhaps not as dirty as people imagine.

by Eriq Gardner

LMFAO, the Los Angeles-based electronic pop duo of Stefan Kendal Gordy (RedFoo) and Skyler Austen Gordy (SkyBlu), enjoy a bit of culture cachet, no doubt based in part on their unique name. The legend goes that the band name was negotiated with the pair's grandmother, and since popping up as a favorite act of Paris Hilton and others, a lot of parents have no doubt searched the Internet to find out the meaning of the acronym their kids love. Some realize quickly the dirty connotation; others stumble upon the alternative, "Loving my friends and others."

The band, though, might have made things official in an application to the U.S. Trademark Office last month. What does LMFAO really stand for?

"Laughing my freaking ass off."

If the F-word disappoints, there may be an explanation for that. The band first applied for a trademark in 2008. It was rejected by a trademark examiner on the basis that the mark "consists of or comprises immoral, deceptive or scandalous matter."

The trademark application was then abandoned.

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Louis Vuitton Malletier S.A. v. LY USA, Inc.

Appeal from a judgment of the United States District Court for the Southern District of New York, Alvin K. Hellerstein, Judge, granting summary judgment to the plaintiff on its claims of trademark counterfeiting and infringement, and awarding the plaintiff statutory damages in the amount of $3 million, and more than $500,000 in attorney's fees and costs. The defendants base their appeal of the judgment on the counterfeiting and infringement claims primarily on the district court's denial of a stay of the action pending the resolution of a related criminal proceeding. They also appeal from the award of attorney's fees to the plaintiff under 15 U.S.C. § 1117. Weconclude that the district court did not abuse its discretion in declining to stay the proceedings; that, as the district court concluded, an award of attorney's fees under 15 U.S.C. § 1117(a) may accompany an award of statutory damages pursuant to 15 U.S.C. § 1117(c); and that the district court did not abuse its discretion in awarding such fees or in setting their amount.

The judgment of the district court is affirmed.

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Facebook asserts trademark on word "book" in new user agreement

By Jon Brodkin

Facebook is trying to expand its trademark rights over the word "book" by adding the claim to a newly revised version of its "Statement of Rights and Responsibilities," the agreement all users implicitly consent to by using or accessing Facebook.

You may recall that Facebook has launched multiple lawsuits against websites incorporating the word "book" into their names. Facebook, as far as we can tell, doesn't have a registered trademark on "book." But trademark rights can be asserted based on use of a term, even if the trademark isn't registered, and adding the claim to Facebook's user agreement could boost the company's standing in future lawsuits filed against sites that use the word.

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The Red-Sole Case

Can the color red be trademarked? Two luxury brands took to open court Tuesday to battle over the hue.

By ASHBY JONES

When it comes to corporate colors, brown belongs to United Parcel Service Inc., Owens Corning protects its own shade of pink, and Tiffany & Co. has domain over robin's-egg blue.

On Tuesday, the famed French shoemaker Christian Louboutin SA stepped into the U.S. 2nd Circuit Court of Appeals in Manhattan to make the case that it should effectively own the exclusive right to use red—it calls the shade "China Red"—to coat the bottoms of its popular, pricey high-heeled shoes.

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Two local chocolate makers battle over use of 'fairy food'

Quality Candy claims trademark; another shop claims longtime use of term

By Rick Romell of the Journal Sentinel

Until she died last April at 91, Richard Koenings' Aunt Bunnie loved fairy food, and when the dutiful nephew visited his elderly relative, he always brought some.

It was crunchy, honeycombed and chocolate-covered, and, of course, it was Quality Candy fairy food.

"Absolutely," Koenings said with mock theatricality as he stood in the St. Francis headquarters of Quality Candy's parent company, where he is president and an owner.

"Is there any other?"

Well, yes. For now, anyway.

In a battle that could pit the sworn, candy-buying recollections of a 77-year-old customer against the contents of a newspaper article from 1966, two venerable area chocolate makers are digging in over the rights to use the term "fairy food."

It's small vs. tiny, old vs. even older.

On one side stands Buddy Squirrel LLC, the 75-employee outfit that owns Quality Candy and such delicacies as Cheddar Cheezzzy Cheese Corn, Tads Pecan Caramel Clusters and chocolate covered marshmallow Santas. The company dates to 1916.

On the other side: Freese's Candy Shoppe, founded in 1928 on Greenfield Ave. in West Allis and still planted there, run by owners Wendy and Michael Matel with help from four employees.

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Warner Bros. Sued by Louis Vuitton Over 'Hangover II' Handbag

by Matthew Belloni

The Hangover Part II is making a strong case for being named most-litigated movie of 2011. Even as Warner Bros. has moved in recent weeks to settle a rash of litigation stemming from the blockbuster comedy sequel, a new lawsuit has been filed over a handbag featured in the film.

Luxury fashion brand Louis Vuitton filed suit in federal court in New York on Thursday alleging that a handbag featured in the movie is a fakery. In the scene, the character played by Zach Galifianakis carries a bag marked LVM and admonishes another character: “Careful, that is.. that is a Louis Vuitton.”

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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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