Creative Protection

In re Shinnecock Smoke Shop

In June 2006, Jonathan K. Smith (Applicant), a U.S. citizen and member of the Shinnecock Indian Nation and sole proprietor of Shinnecock Smoke Shop, filed two trademark applications with the United States Patent and Trademark Office (USPTO), seeking to register the marks SHINNECOCK BRAND FULL FLAVOR and SHINNECOCK BRAND LIGHTS (Serial Nos. 78/918,061 and 78/918,500 respectively) for cigarettes. Both marks also included the wording "MADE UNDER SOVEREIGN AUTHORITY."

The Trademark Examining Attorney (Examining Attorney) refused to register the proposed marks, citing Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a), which generally protects against registering marks that falsely suggest a connection to a non- sponsoring entity. Applicant appealed to the Trademark Trial and Appeal Board (Board) which affirmed because it agreed that the marks falsely suggested a connection with the non-sponsoring Shinnecock Indian Nation. The Board also rejected Applicant's constitutional and treaty-based claims that pertained to his allegations of racial discrimination. Applicant timely appealed the Board's decision to this court. We have jurisdiction over the appeal pursuant to 28 U.S.C. § 1295(a)(4)(B). We affirm.

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Marilyn Nutraceuticals, Inc. v. Mucos Pharma GBMH & Co.

This appeal presents the question, among others, as to the appropriate criteria that a district court should apply in considering a motion to enter a preliminary injunction requiring a product recall in a trademark infringement case. We join the Third Circuit in requiring that a district court must find a substantial risk of danger to the public or other special circumstances in order to enter an interlocutory order recalling a product in a trademark infringement case.

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Marshak v. Treadwell

The case now before us focuses on the breadth of the injunction and efficacy of the remedies that were issued along with Judge Politan’s ruling. Judge Po litan enjoined Marshak and his company from marketing The Drifters anywhere – not On Broadway, not Up On the Roof, and not Under the Boardwalk – and ordered a full accounting of profits. In the years that followed, however, various family members and associates of Marshak picked up where Marshak left off, and began again promoting The Drifte rs, just as Marshak had. Treadwell, thinking that these actions were not Some Kind of Wonderful, thus brought the instant motion for contempt, arguing that the Politan injunc tion applied to Marshak’s associates as well as to Marshak. After a lengthy hearing, the District Court found that Marshak and his associates were in contempt of the Politan injunction, but limited Treadwell’s remedies to an award of attorneys’ fees. Bo th s ides then appealed: Marshak and his associates appealed the merits of the dec ision, while Treadwell challenged the paucity of the remedies.

For the reasons that follow, we affirm in part and reverse and remand in part.

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Court takes case over licensing of NFL apparel

Frederic J. Frommer
Associated Press  —  6/30/2009 6:49 am

WASHINGTON -- In taking a case involving the National Football League's exclusive licensing deal for sports merchandise, the Supreme Court could go beyond caps and give leagues more leeway in areas such as team relocation, legal scholars said Monday.

"A broad ruling in favor of the NFL could rewrite almost all of sports antitrust law," said Gabe Feldman, associate law professor and director of the Sports Law Program at Tulane University in New Orleans.

The court will hear an appeal from American Needle Inc., of Buffalo Grove, Ill., which filed an antitrust challenge to an agreement the NFL struck with Reebok International Ltd. American Needle had been one of many firms that manufactured NFL headwear until the league granted an exclusive contract to Reebok in 2001.

The NFL won the case in the federal appeals court in Chicago. But it also asked the Supreme Court to hear the case in a quest for a more sweeping decision that could put an end to what the league considers costly, frivolous antitrust lawsuits.

Full story.

Zino Davidoff SA v. CVS Corp.

Defendant appeals from a preliminary injunction ordered by the United States District Court for the Southern District of New York (Karas, J.), which enjoined defendant, inter alia, from selling plaintiff’s trademarked products with the unique production code removed. The Court of Appeals (Leval, J.) affirms. Because the production codes play an important role in helping the trademark owner to guard against counterfeits and protect the reputation of the mark, the district court properly found that its unauthorized removal by a seller could justify a finding of trademark infringement.

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Pro Football, Inc. v. Harjo

At bottom, this case concerns whether various trademarks related to the Washington Redskins football team disparage Native Americans within the meaning of the Lanham Trademark Act, § 2, 15 U.S.C. § 1052(a). But that question has since been overshadowed by the defense of laches, the basis on which the district court first entered judgment for the Redskins six years ago. We reversed that decision, finding that the district court had misapplied the law of laches to the particular facts of the case. Pro-Football, Inc. v. Harjo (Harjo II), 415 F.3d 44, 50 (D.C. Cir. 2005). On remand, the district court reconsidered the evidence in light of our instructions and again ruled for the team. Pro-Football, Inc. v. Harjo (Harjo III), 567 F. Supp. 2d 46, 62 (D.D.C. 2008). Now appealing that decision, plaintiffs argue only that the district court improperly assessed evidence of prejudice in applying laches to the facts at issue. Limited to that question, we see no error and affirm.

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OBX-Stock, Inc. v. Bicast

James Douglas, the founder of OBX-Stock, Inc., cleverly invented "OBX" as an abbreviation for the "Outer Banks" of North Carolina. OBX-Stock began using the letters OBX on oval stickers for automobiles to indicate that the automobile was from or had visited the Outer Banks. The letters were also attached to souvenirs and other sundries to indicate that they were sold at the Outer Banks. OBX-Stock has been successful in making money selling products with the OBX letters affixed to them, and it obtained trademark registrations from the Patent and Trademark Office for "OBX" for use in connection with a range of goods and services. Nonetheless, today, virtually every kind of business advertising at the Outer Banks identifies the Outer Banks geographical area with the "OBX" abbreviation. When Bicast, Inc., began selling stickers with the text "OB Xtreme," OBX-Stock commenced this trademark infringement action, requesting an injunction prohibiting the defendant from using "OB Xtreme" and demanding damages. The district court granted summary judgment in favor of Bicast, finding that "OBX" was either generic or a descriptive mark without secondary meaning and therefore was not a valid trademark, but the court declined to order cancellation of the trademark registrations. We affirm.

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Comedy Club, Inc. v. Improv West

On June 13, 1999, Comedy Club, Inc. and Al Copeland Investments, Inc. (collectively “CCI”) executed a Trademark License Agreement (“Trademark Agreement”) with Improv West Associates (“Improv West”) that granted CCI an exclusive nationwide license to use Improv West’s trademarks. A few years later, CCI breached the agreement and sought to protect its interests in the trademarks in federal district court by filing a declaratory judgment action. After a complex procedural history, the parties were left with an arbitration award and two district court orders, one order compelling the parties to arbitrate, and another order confirming the arbitration award. CCI appealed both district court orders. We have jurisdiction under 28 U.S.C. § 1291.

In a prior opinion, published at 514 F.3d 883, we determined that we lacked jurisdiction to review the district court’s order compelling arbitration. We affirmed in part and vacated in part the district court’s order confirming the arbitration award. The Supreme Court vacated that opinion and remanded this case to us for reconsideration in light of Hall Street Associates L.L.C. v. Matel, Inc., 128 S. Ct. 1396 (2008). We determine that Hall Street Associates does not undermine our prior precedent, Kyocera Corp. v. Prudential- Bache T. Servs., 341 F.3d 987 (9th Cir. 2003) (en banc). As a result, in this circuit, an arbitrator’s manifest disregard of the law remains a valid ground for vacatur of an arbitration award under § 10(a)(4) of the Federal Arbitration Act. Therefore, we adhere to the outcome in our prior decision.

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Barbie vs. Bratz battle rages on to the end

By Debra Alban
CNN

ATLANTA, Georgia (CNN) -- Look at a Bratz doll. What do you see? Ask that of random shoppers and you might hear it's an empowering role model, a degrading caricature or a harmless piece of plastic.

Nine-year-old Ashley Gibbs of Cumming, Georgia, is a fan of the edgy dolls, so it came as an unpleasant surprise that they would soon leave store shelves.

"Ever, ever, ever?" she asked her mother, Kathryn Adams, after Adams said stores weren't going to sell Bratz after the end of this year.

But after a moment of reflection, Ashley seemed relieved. "Good [thing] I have lots."

Ashley didn't know it, but Bratz are the target of allegations that their creator came up with the concept when he was working for Mattel, the maker of Bratz rival Barbie.

Mattel sued Bratz manufacturer MGA Entertainment Inc., and last week a federal judge ordered MGA to cease making the dolls immediately and to stop selling them after the holiday shopping season ends.

Full story.

Apple wins trademark suit against Chinese company

Apple this week has won a trademark infringement lawsuit against a Chinese electronics company. New Apple Concept Digital Technology Co. was ordered to pay 400,000 yuan (~$58,000 USD), completing a battle between the two companies that began in 2006 when the Shenzhen-based manufacturer was ordered to stop using its trademark, according to China Central Television. New Apple Concept had used a logo that featured an apple with the characteristic missing bite.

Full story.