Jaguar Land Rover Files Trademark Applications to Protect Appearance of Vehicles

By Joseph Mandour on September 27, 2017

Los Angeles – Jaguar Land Rover filed five trademark applications between April and September 2016 in hopes to protect the shape of its vehicles. The design most recently called in to question is the Land Rover Defender after Jim Ratcliffe, billionaire owner of Ineos, is looking to release a similar vehicle.

Ineos is a company chiefly focused on chemicals, so it seems questionable that they are attempting to wedge their way into the extremely competitive automotive industry. This is especially true considering that product design and development costs can exceed a billion dollars for a single vehicle.

Jaguar and Land Rover became a single company in 2002 during an acquisition by Ford. The entity has since been acquired by Tata Motors which is based in India. Jaguar Land Rover stopped production of the Defender in January 2016 because it did not meet safety or environmental standards. This may be partly due to its distinctively vertical stature compared to other SUV’s which may contribute to roll-overs. However, Jaguar Land Rover had plans to release the replacement Defender in the year 2020.

A year after Jaguar Land Rover’s Defender replacement announcement, Ratcliffe vowed to create a “spiritual successor” of the iconic Defender. As a matter of fact, Ratcliffe approached Jaguar Land Rover cordially asking to buy intellectual property from Jaguar Land Rover, if possible, to help with the project. It is unclear whether Jaguar Land Rover filed its trademark applications before or after Ratcliffe’s approach.

European trademark law has a history of being reluctant to protect the shape and design of entire vehicles or parts of the vehicle unless the shape is genuinely distinctive. Generally consumers must truly identify the shape of the vehicle with a brand, and must be likely to be confused as to source when seeing a similar vehicle shape or design.

Jaguar Land Rover claims that the Defender will always be instantly recognizable as a Land Rover all over the world and that the Defender remains relevant in its... Read the rest

Federal Judge Refuses to Dismiss San Diego Comic-Con Trademark Case

By Joseph Mandour on September 19, 2017

San Diego – The Trademark case between San Diego Comic-Con and Salt Lake Comic Con is now moving toward trial. After Salt Lake Comic Con filed a Motion for Summary Judgment claiming that Comic Con was a generic term, U.S. District Judge Anthony Battaglia refused to dismiss the trademark case citing lackluster evidence to support such a claim.

San Diego Comic-Con is claiming that the two defendants and operators of Salt Lake Comic Con, Daniel Farr and Bryan Brandenburg, chose to capitalize on the goodwill and success of San Diego Comic-Con’s brand. Beginning in 2013, Farr advertised the Salt Lake Comic Con announcing “Comic-Con is coming to Utah” which San Diego Comic-Con claims is implying affiliation to San Diego Comic-Con.

Farr’s argument is that “Comic-Con” has been a generic word to refer to all conventions for comic fans. The claim is that it was also used regularly and generically prior to the first Comic-Con in San Diego held in 1970. However, San Diego Comic-Con conducted a survey that showed 80% of consumers thought that “Comic-Con” is a brand, and not a generic name.

Through Farr’s evidence it became apparent to Judge Battaglia that San Diego Comic-Con’s trademark is a potential victim to “genericide.” Indeed, it appears that San Diego Comic-Con may have been lax about policing its trademark and also always using it as a trademark rather than a descriptive term. Genericide occurs when a brand becomes so successful that its formerly trademarked name becomes interchangeable with the product or service itself rather than being seen by consumers as a brand. Escalator and Aspirin are notable examples of formerly trademarked words that became generic.

As part of the reason for using Salt Lake Comic Con, Farr claimed that he relied on the many other Comic Con’s in use and a settlement between San Diego Comic-Con and another comic convention which appeared to allow the similar use. In other words, Farr believed that San Diego Com... Read the rest

Starbucks Unicorn Drink Trademark Lawsuit Is Amicably Resolved

By Joseph Mandour on September 11, 2017

Los Angeles – Starbucks, the largest coffee chain in the world, released a unicorn themed Frappuccino for a limited time between April 19th and 23rd of this year. Unicorn themed foods and products have been trending across social media the last couple of years so it is no wonder Starbucks took the opportunity to jump into the fray. However, Starbucks was not the first to create a commercially sold unicorn themed beverage. v

Unicorn themed foods are colored with cotton candy type colors including pink, blue, purple and edible glitter. They are bright and playful. The End is a small café located in New York City that created and kicked off the unicorn latte social media sensation. The End began selling its Unicorn Latte in December 2016, and the company applied for a trademark in January 2017.

The End’s unicorn latte was formulated in conjunction with Montauk Juice Factory. The two invested more than six months into development of the beverage. The End’s Unicorn Latte is made with healthy and natural ingredients to appeal to its hipster clientele. The End’s unicorn beverage includes ingredients such as cold-pressed ginger, lemon juice, dates and cashews, and some blue-green algae harvested from an Oregon lake.

As for Starbuck’s Unicorn Frappuccino, it lacked any healthy ingredients and was made with a sweet dusting of pink powder, mango syrup, and layered with sour blue syrup.

The End café claims that Starbucks released its unicorn themed drink to overshadow its own unicorn latte. Because Starbucks is such a larger chain, The End feels that Starbucks misled consumers to believe The End was copying Starbucks, damaging its claim to fame for the unique drink and creating consumer confusion. As a result, Montauk Juice Factory which is the cocreator and the parent company of The End café, sued Starbucks for trademark infringement. The End was asking for $10 million in damages from Starbucks.

The lawsuit was recently settled, but court documents do not specify a settlement amount. However, per the terms of the agreement The E... Read the rest

In-N-Out Sues Smashburger for Trademark Infringement

By Joseph Mandour on August 30, 2017

Orange County, California – Infamous burger joint In-n-Out Burger, which originated in Baldwin Park, California in 1948, is suing its new lead competitor Smashburger for a trademark infringement. In-N-Out is currently headquartered in Irvine, California and has 326 locations. Smashburger is a gourmet burger restaurant that started in Denver, Colorado in 2007 and has quickly grown to over 300 locations as well.

While Smashburger is still a new chain, it has gained popularity quite rapidly due to its gourmet and regionally diverse burgers. To date, Smashburger already has more than 370 locations in 37 states and 9 countries.

In-N-Out has used its registered trademarks for DOUBLE-DOUBLE and TRIPLE TRIPLE since 1963 and 1966, respectively. Smashburger debuted its Triple Double burger in July of 2017. The Smashburger Triple Double features two burger patties and three slices of cheese. In-N-Out claims that Smashburger’s use of “triple-double” is too much like its own DOUBLE-DOUBLE and TRIPLE TRIPLE trademarks and that is it intended to mislead the public into thinking Smashburger products are related to or authorized by In-N-Out burger.

Despite this alleged trademark infringement, In-N-Out will no doubt continue to be successful partly due to its iconic secret menu. In-N-Out has gained notoriety for secret menu items such as Animal Style fries which are French fries topped with cheese, grilled onions, and In-N-Out’s special sauce.

Smashbuger’s claim to fame is its unique cooking method of “smashing” burgers. Smashburger puts a steady press on the fresh and never frozen angus beef patties and uses butter in its oil to both evenly cook the meat as well as lock in moisture. In additional to these methods, Smashburger dresses burgers with gourmet toppings such as goat cheese, truffle mayonnaise, and mini portabella mushrooms. These toppings also vary by region to offer a new Smashburger experience at various locations across the U.S. while still remaining under eight dollars per meal in a ten-minute prep-time.

In-N-Out has a history of protecting its brand from copycats and in the past has sued restaurants for similar décor, uniforms and logos. It may not be a coincidence in that other restaurants are likely tempte... Read the rest

New Balance Wins $1.5 Million Trademark Case in China

By Joseph Mandour on August 25, 2017

San Diego – New Balance won a trademark infringement case in China against three Chinese shoemakers that were held to be infringing on New Balance’s signature slanting N logo. The case is notable because this is the largest trademark infringement award ever granted to a foreign business in China.

This is not only a win for New Balance, but the decision paves the way for other foreign companies in China who continue to face the same struggles with intellectual property infringement. Many are frustrated that courts in Beijing have not done enough to protect foreign brands from trademark infringement. The $1.5 million compensation may be small via international standards, but is significant since it occurred in China.

New Boom, New Barlun and New Bunren are the Chinese shoe wear companies that were held to be infringing. The New Balance look alikes were copying everything about the brand aside from the name, but were still protected under China’s trademark laws. China’s trademark laws allow companies to file for a trademark on a “first come first serve” basis. New Boom and the other defendants were held to be relying on “free-riding” and creating consumer confusion.

The Chinese government is said to be determined to confront and take action on the nationwide counterfeit and piracy problem. New Balance has been selling shoes in China since 1995 and has continually faced struggles with infringements. In 2015, New Balance was not as successful when it lost a lawsuit to someone who registered the trademark for the Chinese name of ‘New Balance’. New Balance was fined $16 million, which was later reduced to $700,000.

China passed a new trademark law in 2014 that increased the penalty for trademark infringement. Prior to the new law, infringement cases were insignificant and statutory damages seldom reached $75,000. Under the new law the amount increased to $450,000 which led to the New Balance award being so substantial. With the New Balance case leading the way it appears that China is not all talk and that w... Read the rest

Pierogi Fest Trademark Battle Heats Up

By Joseph Mandour on August 3, 2017

San Diego – A pierogi is a delicious savory dumpling part of Polish heritage. It’s also the center of a trademark dispute between a Chamber of Commerce and Hometown committee separated by 700 miles in Pennsylvania.

The pierogi takes center stage in the names of two Polish cultural festivals complete with parades, vendors, games, and other activities. There’s the Pierogi Fest in Whiting, Pennsylvania and the Edwardsville Pierogi Festival in Edwardsville, Pennsylvania. The Pierogi Fest in Whiting alleges that it began use of the trademark in 1994. Each year, the festival brings in almost 300,000 people. They argue the Edwardsville Pierogi Festival is engaging in trademark infringement.

The Edwardsville Pierogi Festival, which began in 2014, brings in less than 5,000 people to its small town. With a population of only 4,7000 it’s the only county in the United States where the most common ancestry is Polish.

The Whiting Chamber of Commerce sent two cease and desist letters stating its intention to take legal action if necessary. The first, sent on May 13, 2015, claims the services offered at the Edwardsville festival are in direct competition with their own festival. The Whiting Chamber of Commerce believes there is likelihood for customer confusion. The letter requested that Edwardsville cease use of all trademark similar to Pierogi Fest.

The second letter, sent in June 2017, repeated those trademark infringement claims and stated that Edwardsville’s sponsors could also be liable for trademark infringement. The Chamber indicated that it is open to discussion about trademark licensing, as it currently does with other festivals. The letter said the Chamber would postpone filing a federal complaint in order to give enough time to resolve the issue out of court. This letter was also sent to sponsors of the Edwardsville festival, which Edwardsville claims made the sponsors apprehensive about continued participation.

In response, the Edwardsville Hometown Committee filed a federal complaint. The Committe argued that the Whiting Ch... Read the rest

Kroger’s Trademark Injunction Request Against Lidl Is Denied

By Joseph Mandour on July 27, 2017

Los Angeles – The Private Selection versus Preferred Selection trademark battle between grocery giants Kroger and Lidl will proceed, as a federal judge in Richmond Virginia has denied Kroger’s preliminary injunction request.

The issue at play is over alleged trademark infringement over the company’s logos for a sub-set of their products. Kroger has a logo for its “Private Selection” brand, found on more than 1,000 of its products. Lidl has a logo for its “Preferred Selection” products, found on about 160 out of 3,000 products.

Kroger is headquartered in Cincinnati, Ohio and operates more than 2,800 grocery stores. It is the largest US-based grocery chain.

Lidl is a company based in Germany with more than 10,000 stores in Europe. The company is slowly entering the U.S. market, currently operating 17 stores. There are four in the works to launch in the Richmond Virginia area, where the case was heard. Their goal is to have more than 100 stores open in the United States by mid-2018.

While Lidl filed the trademark for its Preferred Selection logo last September and Kroger was made aware of it at least by November, Kroger waited to file a lawsuit until June 30 of this year. This was less than two weeks after Lidl opened its first store in the United States.

Kroger claims the similarity in the trademarks will lead consumers to falsely believe the companies are related, giving Lidl an unfair advantage in trading of Kroger’s goodwill. When the case went before a judge, both companies presented expert witnesses who gathered consumer data trying to make a case for or against the likelihood of consumer confusion.

U.S. District Judge John A. Gibney Jr. denied the request for a preliminary injunction, saying that while the logos look “somewhat alike,” they lack identical or similar meanings. The case is set for trial on January 11.

Lidl has argued that Kroger is using the lawsuit to try to damage its emergence into the American market. The lawsuit is meant to “distract from the positive reviews garnered by Lid... Read the rest

Nike Opposes Rob Gronkowski’s Trademark Application

By Joseph Mandour on July 12, 2017

San Diego – Last year New England Patriot TE Rob Gronkowski’s company, Gronk Nation L.L.C, filed a trademark application of a silhouette of the NFL star doing his signature “end zone spike.” In response, Nike has filed a formal opposition with the US Patent and Trademark Office Trial and Appeal Board requesting that Gronk’s application be denied.

Nike claims that the Gronk Spike trademark is too similar to its own very popular design trademark of the silhouette of Michael Jordan flying through the air with a basketball commonly known as the “Jumpman.” When the two trademarks are put next to each other, there are obvious similarities. First of all, both trademarks feature popular athletes in silhouette. Both trademarks depict an athlete with legs apart and one arm raised with a ball in hand. Nike claims that consumers will be confused by the similarities of the trademarks and likely feels the need to protect it because it is prominently used on products that generate enormous amounts of revenue for Nike.

Critics of Nike’s opposition have argued that Nike does not have much of a case. While there are similarities between the design trademarks, there are also differences. Gronk’s trademark shows him clearly holding a football while Nike’s is a basketball. The poses are also different. Regardless, the primary question is whether consumers will be confused as to source or wonder if the trademarks are somehow related.

In an interesting twist, Gronkowski is already endorsed by Nike. The star athlete has been featured in several of Nike’s national commercials. He even wears Nike cleats during NFL games. At some point Gronk may want to make a business decision since he will likely not want to jeopardize his relationship with the sports apparel giant.

Thus, it is expected that Nike and Gronkowski will work to settle this dispute outside of court. Troy Carnrite, Gronkowski’s trademark attorney, stated that Rob Gronkowski has created one ... Read the rest

Forever 21 Sues Gucci, Attempts to Have Trademarks Cancelled

By Joseph Mandour on July 6, 2017

Los Angeles – Los Angeles based fast-fashion company Forever 21, filed a lawsuit against the internationally famous Italian design house Gucci last week. This lawsuit is the latest development in a series of lawsuits by and against Forever 21.

The dispute between Gucci and Forever 21 began in October of 2016, when the Italian company sent a cease and desist letter to Forever 21. In the letter, Gucci demanded that Forever 21 cease all sales of certain garments, specifically any products that features a blue-red-blue stripe or green-red-green stripe. Gucci currently holds numerous trademark protections on garment stripe combinations. Some of those trademarks have been in place since 1988. The specific articles in question are three bomber jackets, a choker neckless, and a sweater. Gucci sent two more subsequent letters, one in January and another in February of 2017.

Forever 21 responded to the letters by filing a lawsuit against Gucci in U.S. District Court for the Central District of California in Los Angeles. In the lawsuit, Forever 21 has taken two courses of action against Gucci. First, Forever 21 is seeking declaratory relief which is basically a judgment of a court which determines the rights of parties without ordering anything be done or awarding damages. It is typically used to settle legal controversies in a favorable venue and allows a company to have certainty that its action are authorized rather than have a litigation cloud hang over the business. In so doing, Forever 21 is hoping a federal court in Los Angeles will rule that they are not infringing on Gucci’s trademarks. Such a ruling would eliminate Gucci’s case against Forever 21.

Furthermore, Forever 21 is suing to have Gucci’s nine trademark registrations in question cancelled, as well as cancelling any pending applications for related trademarks. Forever 21 argues that stripes and particular color patterns are enormously popular and that they do not designate the source of goods. Many garments and accessories are decorated with stripes and as such Gucci should not be a... Read the rest

PayPal Claims Trademark Infringement Over the Pandora App Logo

By Joseph Mandour on May 25, 2017

San Diego – The famous online payment app, PayPal, is suing the famous online music streaming app, Pandora, for trademark infringement and trademark diffusion. The lawsuit, which was filed in Manhattan federal court, is in reaction to Pandora’s change of its logo late last year.

Trademark dilution varies from standard trademark infringement in that it focuses on famous trademarks. The law forbids the use of trademarks that are similar enough to a famous trademark such that it would lessen the uniqueness of the famous trademark.

When Pandora changed its logo in October of 2016, the streaming music service launched a logo that was drastically simplified, featuring a blue capital ‘P’ with a white background. PayPal claims that the logo is so similar to PayPal’s long established logo, which features two blue capital ‘Ps’ on white background, that it is causing customer confusion. In the lawsuit, PayPal included many examples of posts on social media from customers who admitted to being confused between the two apps. One tweet from a customer stated that they were confused when they clicked on the PayPal app and “The Bare Naked Ladies” started playing.

PayPal claims that the infringement is damaging the company in several ways. First, PayPal claims to have invested considerable amounts of time and energy into creating an “iconic” logo. In a statement they made regarding their logo, PayPal outlined how every piece of the logo was meticulously crafted. Every aspect of the logo, from the shape of the Ps, their proximity to each other, the color scheme, the shading, and even the placement on the app tile was designed to give the customer a sense of convenience, simplicity, and security. Since Pandora’s trademark is so similar, PayPal is concerned that the confusion will erode the customer confidence PayPal has built over the years.

Also, PayPal prides itself on customer convenience. If clients are mistakenly clicking on Pandora instead of PayPal, it adds an extra step to the purchasing process. This, they feel,... Read the rest

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