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Monday, February 05, 2007

Quality of Evidence Necessary for Preliminary Injunctions

When a plaintiff sues a defendant for misuse of its trademarks, there is often a request for a temporary protection order (immediately stopping the defendant from its use, such order is often issued ex parte, meaning that the defendant does get to be present to argue the matter, so long as the other side gets a hearing within the next few days) and a request for a preliminary injunction (banning the defendant from its use of the mark during the pendency of the litigation).

The evidence at these hearings does not have to strictly comport with the rules of evidence generally, and so hearsay evidence is sometimes admissible to show that the plaintiff should get its sought-after preliminary injunction. Hearsay (with some exceptions) is testimony about what you heard another person say and is inadmissible under the rules of evidence.

Often in preliminary injunction hearings, the plaintiff will produce evidence from its own employees. These employees will give testimony which closely serves the interest of the corporation. Judges and Magistrates who hear such cases often view such evidence with a jaundiced eye, knowing that the employee is going to be doing everything he or she can to get the preliminary injunction. Judges and Magistrates know the bias inherent in such testimony, especially since the boss is likely to be sitting there watching them testify.

The best evidence comes from persons unrelated to the plaintiff, and who could not care less about the outcome of the preliminary injunction hearing. So if you are thinking about trying to get a preliminary injunction against someone you feel is misusing your trademark, and all you have is testimony from your own employees, you might want to get a bit more juice behind you before you go into court.
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Policing Trademarks

There are times when you may hear of a trademark owner going after a very sympathetic group of people who are using the mark without authorization to raise money for a good cause. Many will shake their heads at what they conceive as the temerity of the owner of the mark to hassle such good people. Let's look at a hypothetical example.

The NFL owns the trademark to the name "Super Bowl" and learns of a few church groups advertising "Super Bowl" parties for $20.00 per person, with the proceeds going to aid the homeless. The NFL sends these church groups cease and desist letters regarding the parties, and takes action in court to prevent the parties when the church groups ignore the letters.

While some might argue that this is an example of a big corporation being heartless, it is really a legitimate attempt by the NFL to police its marks. It could be argued by future infringers upon the NFL's trademark that since the NFL did not enforce its rights against the church groups, that the future infringers thought that it was okay to misuse the NFL's marks. By policing its marks, the NFL would protect its marks from this sort of attack.

So just because you see a big corporation going after someone misappropriating the mark, this does not mean that the big corporation is being greedy or unsympathetic to the possibly worthy aims of the infringer. It could just mean that the big corporation is doing everything it can to protect its marks from future attack.
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Nike and Apple sued for recent combo of iPod and Nike shoes

Nike and Apple have teamed up by coupling their products together to make a more satisfying running experience. With an iPod Nano, some Nike+ shoes, and a Nike + iPod sport kit, you can do much more than listen to music on your run. Nike and Apple claim that the little device becomes your coach, your personal trainer and your workout companion. The combination of products allows you to see your elapsed time, current pace and distance covered. When you have finished your workout and our back home in front of a computer, you can upload your training data to, view your stats online, challenge other runners to virtual races, map out your running routes, and soon you will be able to download music specifically designed to accompany workouts.

This all sounds great until a company called PhatRat Technologies heard about it and filed suit against both Apple and Nike claiming patent infringement. PhatRat's patent is entitled, ""shoes employing monitoring devices, and associated methods."

It will be interesting to see the outcome of this suit. Stay tuned.
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Tuesday, January 30, 2007

Royal Tiger Publishing loses bid for preliminary injunction

In a case defended by Alvin Borromeo and Eric Willison (authors of this website), Plaintiff Royal Tiger Publishing dba C - The Columbus Magazine sought to enjoin Defendant, C-BUS, from developing, marketing, selling or using "C-BUS" and other trade dress, trade marks, or trade names that are allegedly confusingly similar to Plaintiff's ("C - The Columbus Magazine") in connection with the Defendant's arts and entertainment magazine.

The court ruled against Royal Tiger in its bid for a preliminary injunction. Some of the court's reasoning - "Plaintiff does not have a protectable trademark for the name C- BUS. One acquires the right to a trademark by appropriation and actual use. The use must be "deliberate and continuous, not sporadic, casual or transitory." Circuit City Stores, Inc. v. CarMax, Inc. (C.A.6 1999), 165 F.3d 1047, 1055. Plaintiff presented no evidence that it actually used the name C-BUS in the publication of its magazine. The mere fact that Plaintiff owned the URLs for INCBUS.COM, CBUSMAG.COM, and CBUSONLINE.COM does not grant it protection of those names of variations of them. There was no evidence that any of Plaintiff's readers or advertisers associated the C-BUS name with Plaintiffs magazine."

continue reading Magistrate's decision

read the entire court transcript of the preliminary injunction hearing
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Tuesday, December 26, 2006

Marketing to Kids

If you don't know the value of a powerful brand, then you don't have kids. My daughter is just now learning to read, but way before knowing what words an arrangement of letters spells out, she recognized brands and their trademarks. My wife sells occasionally for Discovery Toys. My daughter knows what their logo looks like. She also knows that the brown truck that delivers the toys is the UPS truck. She also knows the UPS logo. We'll be driving past a UPS Store and immediately she'll yell out "UPS!"

My daughter also knows the Pizza Hut logo and Taco Bell logo by name. Of course she knows the McDonald's golden arches.

And marketers recognize the power of the brand and the influence kids have on a family's purchases. The Economist recently wrote about the trillion-dollar kids. The second headline says that "children exert a surprising influence over the purchase of grown-up goods." From a parents perspective, I agree.

Parting quote:

Companies have discovered that it is often more effective to recruit a child as an in-home marketer than to try to convince a parent to buy their products. That may explain why Nickelodeon is Viacom's most profitable division—advertisers are lining up to pay a premium for access to their most valuable targets. Furthermore, every child represents a new chance to build cradle-to-grave brand loyalty.

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Monday, December 18, 2006

Secretary of State Links

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Life Cycle of a Trademark

It's been a while since my last post. Sorry about that.

Thomson & Thomson has a nice page listing the Life Cycle of a Trademark:

Stage 1 - Creation

Stage 2 - Screening

Stage 3 - Clearance

Stage 4 - Investigation

Stage 5 - Opinion

Stage 6 - Filing and Registration

Stage 7 - Protection

Stage 8 - Maintenance

Stage 9 - Commercial Exploitation

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Friday, October 13, 2006

Trademarks and Native Americans has an interesting article (by Jeremy T. Elman of McDermott Will & Emery) on a group of Native American activists using trademark law to try and cancel the trademark registrations of the Washington Redskins.  The activists argue that the Redskins trademark was disparaging to Native Americans under 15 U.S.C. §1052(a).  Under § 1052(a), a trademark can be cancelled if it "may be disparaging" because it brings a group into "contempt or disrepute."

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Tuesday, October 10, 2006

SMT Blog listed as one of the "Best Blogs and Forums" by has named the Search-My-Trademark blog as one of the "Best Blogs and Forums" in its "Guide to Protecting a Business Name."

Given the amount of quality blogs out there on trademark law, we are truly honored to be listed on the site.  Please checkout the site.  It appears to be an excellent source for information.

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Thursday, September 21, 2006

Hard Rock Cafe forces the Hard Lox Cafe festival to change name to Shalom Y'all

According to this article, "for 17 years thousands have gathered every fall in Forsyth Park to be served corned beef and plenty of other Jewish delicacies at the Hard Lox Cafe."  But no longer.  The festival is changing its name to Shalom Y'all because the Hard Rock Cafe sent it a cease and desist letter that the festival's attorney says "Basically what they are saying is by us using  Hard Lox Cafe, even though it's innocent and not for profit, was still infringing on their trademark rights."

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