Brand BattlesSM
Trademark Disputes of Interest
By: DEAN R. KARAU
August 2008
Trademark disputes pit brand against brand, and can be some of the most contentious litigation.
Here are snapshots of some cases which piqued our interest, not necessarily because they will illuminate great legal principles, but because they just seem darn interesting.
Buy Me Some Peanuts And . . . Uh, A Lawsuit?
On July, 9, 2008, the New York Mets and ARAMARK announced a partnership with Union Square Hospitality Group to feature USHG’s vendor talent and expertise at Citi Field, the new Mets home opening in 2009.
The press release announcing the partnership touted that at Citi Field’s outfield concourse, USHG would feature a variety of specialty restaurants, including Pop Fries, featuring freshly-cut, Belgian-style fries with a variety of dipping sauces.
It didn’t take long, however, for someone to call this Pop Fries foul.
On July 10, the owner and operator of Pop Burger restaurants in New York City filed a complaint in federal district court, alleging trademark infringement and unfair competition.
Pop Burgers is a burger joint by day, a fashionista lounge/pool hall by night. Decorated with original Jean-Michel Basquiat paintings, it draws the likes of Joe Pesci, Janet Jackson, and Woody Harrelson for its late night ambience.
In the lawsuit, Pop Burger is seeking an injunction to halt the opening of Pop Fries, as well as damages and attorneys’ fees.
Pop II, LLC v. Union Square Hospitality Group, LLC, 08 CV 6269 (GEL) (S.D.N.Y. July 10, 2008).
Losing A Trademark Lawsuit In China May Mean Having To Say You’re Sorry
Japanese cosmetics giant Shiseido Co. Ltd. filed a trademark infringement suit against alleged copycats in China. Shiseido alleged that the defendants “used a similar logo, Shidoas, with the same font and the same Chinese characters as Shiseido’s Chinese trademark on cosmetic packages, adverts and Website without its permission.”
In addition to damages and an injunction enjoining further infringing behavior, Shiseido also wants the defendants to “publish an apology in newspapers.” When is the last time you saw a request for an apology in a lawsuit – or a U.S. court awarding one?
Shiseido Co Ltd v. Shanghai Jingdian Cosmetic Co Ltd, Shanghai Runmei Bio-tech Development Co Ltd and Shanghai Xiaoxian Meiye Bio-tech Co Ltd., Pudong New Area People’s Court.
Mister Softee No Softie When It Comes To Trade Dress Infringement
I love my Ben & Jerry’s Chunky Monkey or Cherry Garcia. But there’s no replacing those great childhood memories of that loud, happy jingle from the ice cream man coming down the street on a hot summer day. Racing first to the house for some change from mom, and then a sprint to the truck for that tasty treat. Mmmmm. Wasn’t it Mark Twain who said that too much ice cream is just enough – or something like that?
But for Mister Softee, too much of someone copying its truck’s look and feel is, well, too much.
Founded by two brothers, William and James Conway, in 1956, New Jersey-based Mister Softee has become the largest franchisor of soft ice cream trucks in the United States. Mister Softee has approximately 350 franchise dealers operating 600 trucks in 15 states.
Thus, Mister Softee didn’t take kindly to what it perceived as look-a-like ice cream trucks playing the Pied Piper to young ice cream lovers around New York City, Long Island, and elsewhere on the east coast. (See photo on the right.)
After hiring investigators to take pictures and gather other evidence of its competitors (whose investigation was captured by New York Times photographer Robert Caplin, right), Mister Softee filed suit against multiple defendants in federal district court in Manhattan.
The complaint alleges that the defendants infringe the trade dress and copyrights in the Mister Softee trucks.
See Guishan, Inc. and Mister Softee, Inc. v. Faith Ice, Inc., Petes Ice Cream Truck Rental Corp., Tommy Dalageorgos, Demetrius Konstantakakos, Best Ice, Inc., George L. Adekoya, Juan Jaramillo, Piedad M. Arevalo, Shyne Rims Creamy, Inc. and Flints Rubble, Inc. (Case Number: 1:2008cv02407 (EDNY June 16 2008).
Naked Cowboy Update: Right To Privacy Claim Stripped From Lawsuit, But Trademark Infringement Claim Survives For A Blue M&M Wearing A Look-A-Like Outfit
In the February 2008 edition of Brand BattlesSM, we reported that Robert Burck, who bills himself as the “Naked Cowboy” and claims to be a top New York Times Square tourist attraction, sued Mars, Incorporated for creating a blue M&M allegedly mimicking his persona. (See Naked Cowboy Sues An M&M Made Up To Look Like, Um, A Naked Cowboy.)
Mars subsequently filed a motion to dismiss Burck’s claims.
The court held that state law only protects the privacy of a “living person” but not a character created or a role performed by a living person, and dismissed the right to privacy claim.
However, the court found that it was plausible that “consumers seeing defendants’ advertisements would conclude – incorrectly – that he had endorsed M&M candy.” Thus, Mr. Burck’s trademark infringement claim survived.
That means that, in all likelihood, the Naked Cowboy is in for a big payday, as this case now will most likely settle.
However, that doesn’t mean that the Naked Cowboy will be able to recover everything he has lost.
In the court of popular opinion – a People Magazine poll conducted shortly after his lawyers filed suit – the blue M&M has been found to be sexier than Mr. Burck’s character, by a whopping 67% to 33%.
You can hear the Naked Cowboy explain the nuances of trademark law at http://today.msnbc.msn.com/id/21134540/vp/23163027#25363451.
Burck v. Mars, Incorporated et al, Case No. 08 Civ. 01330 (S.D.N.Y., Filed February 11, 2008).
Words Are Key To Learning New Languages But Using Competitor’s Trademarks As Keywords To Redirect Internet Traffic May Not Be
Rosetta Stone Ltd. sells the Rosetta Stone line of interactive computer software for learning foreign languages. Founded in 1992, Rosetta believes that the natural way people learn languages as children remains the most successful method for learning new languages; and that interactive CD-ROM and online technology can replicate and activate the immersion method powerfully for learners of any age. Rosetta owns the U.S. registered mark ROSETTA STONE for computer software for teaching and learning foreign languages.
Rocket sells its own line of foreign language tutorial computer software. According to the Rocket website, a Rocket interactive audio course prompts the learner to speak the target language in a conversational and friendly way so that “the words just stick in your mind!”
Rosetta’s complaint describes “piggybacking” – the use of a company’s trademark by competitors as a keyword or in the text of internet ads in order to direct internet traffic searching for such trademarks to their own site. Rosetta asserts that the defendants purchased the words “Rosetta Stone” as an advertising keyword in Google’s AdWords program and Yahoo’s Marketing Solutions program so that when an internet user performs a search for “Rosetta Stone” or similar variation, the defendants’ websites appear at the top as sponsored links offering Rocket’s language software or as websites purporting to offer information and reviews about foreign language software products.
Rosetta seeks injunctive relief along with damages.
Rosetta Stone Ltd v. Rocket Languages Ltd. et al, Case No. 08-cv-04402 (C.D. Cal. July 2, 2008).
Hearts on Fire Diamond All Lit Up About Use of Keyword Hearts on Fire
Hearts on Fire Company, LLC makes the HEARTS ON FIRE® diamond, which it touts as “The World’s Most Perfectly Cut Diamond.” In June 2008, it filed a trademark infringement lawsuit against Blue Nile, Inc., an online jewelry retailer, alleging infringement of its various HEARTS ON FIRE trademarks.
Hearts on Fire claims that Blue Nile purchased the keyword term “hearts of fire” from webcrawler.com, so that when Internet users search for “hearts on fire,” Blue Nile’s website appears as a “sponsored link.” According to the complaint, Blue Nile’s sponsored link ad states “Ideal Cut Diamonds at Blue Nile. Find hearts on fire diamonds at Forbes Favorite Online Jeweler.” Hearts on Fire also alleges that when Internet users key in “hearts on fire” on Blue Nile’s own website search engine, the user is directed to a web page on which no HEARTS ON FIRE® diamonds appear. The complaint alleges that because Blue Nile is not an authorized Hearts on Fire retailer, its use of the HEARTS ON FIRE® trademark infringes Hearts on Fire’s trademark rights.
This is another in a line of recent cases on one of the hottest topics in trademark law today – does the act of purchasing someone else’s trademark as a keyword constitute “use in commerce” under federal trademark statutes. Courts in the Second Circuit, notably in New York, have consistently answered “no,” while most other courts have found such purchases a “use in commerce.”
We will explore the keyword issue in depth in an upcoming issue of Trademark TopicsSM In the meantime, the take away from this and other keyword issue cases is to tread carefully when purchasing keywords, and understand the risk associated with keywords that are identical or similar to your competitors’ trademarks.
Hearts on Fire Company, LLC v. Blue Nile, Inc., Case No. 08-cv-11053 (D. Mass. June 20, 2008)