Category Archives: Likelihood of Confusion

Eastland Music v. Lionsgate: Can a movie title infringe the name of music group?

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fifty-fiftyEastland Music Group owns the registered trademark Phifty-50, the name of a rap duo.  Eastland also claims a  trademark in 50/50.  Lionsgate released a dark comedy in 2011 titled 50/50 starring Seth Rogen and Joseph Gordon Levitt. The title of the movie refers to one of main characters fifty-fifty chance of survival after he learns he has a malignant tumor in his spine.

The district court dismissed Eastland Music’s complaint for failure to state a claim holding that that the movie’s title was descriptive of the plot.  Eastland appealed to the United States Court of Appeals for the Seventh Circuit.  On appeal, the Seventh Circuit focused on whether the title of the movie has actually caused confusion as to its source, rather than whether the title was descriptive.

this complaint fails at the threshold: it does not allege that the use of “50/50” as a title has caused any confusion about the film’s source—and any such allegation would be too implausible to support costly litigation. See Ashcroft v. Iqbal, 556 U.S. 662 (2009); Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007).

During oral argument the court questioned Eastland’s counsel about the lack of confusion.  The attorney admitted that no one ever contacted Eastland claiming confusion about the source of the film.

At oral argument, plaintiffs’ counsel conceded that not a single person has ever contacted Eastland or its web site to seek a copy of the film or complain about the film’s contents or quality. Nor does the complaint allege that any potential customer has turned to Lionsgate or Summit in quest of the rap duo’s products.

The court further noted that 50/50 has been used as a title for numerous films, many of which pre-date Eastland’s use of the mark Phifty-50.

The phrase 50/50 or a sound-alike variant (50-50, fiftyfifty, fifty/fifty) has been in use as the title of intellectual property for a long time. Wikipedia lists eight films with that title, opening in 1916, 1925, 1972, 1981, 1982, 1992, 2004, and 2011. See http://en.wikipedia.org/wiki/ 50/50. Six of these movies predate Eastland Music’s use. The 1982 film is by and about a rock band. Wikipedia lists three TV shows with that title, plus an episode of a fourth show. It also lists three songs whose titles contain the phrase 50/50. One of these is Frank Zappa’s 1973 song “50/50”. Then there’s “50/50 Luv” released in 1995 by the rap group B.G. Knocc Out & Dresta. And Wikipedia’s list is not comprehensive, for it omits anything by the rap duo Phifty-50; doubtless other examples also are missing. If there is any prospect of intellectual property in the phrase 50/50, Eastland Music is a very junior user and in no position to complain about the 2011 film.

Phifty-50 entered a crowded field, and its rights are correspondingly weak and narrow. See 2 McCarthy on Trademarks and Unfair Competition §§ 11.85–.87 (4th ed. 2012).

The court concluded that the title of work can only infringe a trademark if there is source confusion.

The title of a work of intellectual property can infringe another author’s mark only if the title falsely implies that the latter author is its origin. Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003). The titles of Truman Capote’s novella Breakfast at Tiffany’s, and the movie of the same name, do not infringe the rights of Tiffany & Co. because no reasonable reader or moviegoer thinks that the jeweler is the source of the book or the movie.

The Seventh Circuit therefore affirmed the district court’s dismissal.

Maker’s Mark Locks Up Dripping Red Wax as a Trade Dress for Alcohol

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In Maker’s Mark Distillery, Inc. v. Diageo North America, Inc.,  ___ F.3d. ___ (6th Cir. 2012), Marker’s Mark sued Jose Cuervo for trade dress infringement for including a red wax seal on its Reserva de la Familia tequila bottles.  The Sixth Circuit affirmed the district court’s ruling that Maker’s Mark’s registered trademark consisting of  a red dripping wax seal was infringed by Jose Cuervo.

Maker’s Mark has used its distinctive red dripping wax trade dress since 1958.  In 2001, Jose Cuervo decided to follow suit and began using a similar red dripping wax to accent its Reserva de la Famalia premium brand tequila.  In 2003 Maker’s Mark sued Cuevro.  After a bench trial, the district court found the red dripping wax of Maker’s Mark a valid trademark and held that Cuevero had infringed the trademark.

On appeal, Jose Cuervo argued that the red dripping wax was “aesthetically functional” and therefore not protectable as a trademark.

Cuervo appeals only the district court’s ruling as to aesthetic functionality, arguing that the red dripping wax seal is aesthetically functional, and therefore the mark is not enforceable. The Supreme Court has discussed the concept of aesthetic functionality in dicta, noting that “[i]t is proper to inquire into a significant non-reputation-related disadvantage in cases of [aesthetic] functionality.” TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 33 (2001) (internal quotation marks omitted). We have interpreted this dicta to propose that, “where an aesthetic feature (like color), serves a significant function . . . courts should examine whether the exclusive use of that feature by one supplier would interfere with legitimate competition.” Antioch Co. v. W. Tramming Corp., 347 F.3d 150, 155 (6th Cir. 2003).

The Court noted that in the Sixth Circuit there are two different tests for aesthetic functionality, “comparable alternatives” and “effective competition.”

The test for comparable alternatives asks whether trade-dress protection of certain features would nevertheless leave a variety of comparable alternative features that competitors may use to compete in the market. If such alternatives do not exist, the feature is functional; but if such alternatives do exist, then the feature is not functional . . . . The effective competition test asks . . . whether trade dress protection for a product’s feature would hinder the ability of another manufacturer to compete effectively in the market for the product. If such hindrance is probable, then the feature is functional and unsuitable for protection. If the feature is not a likely impediment to market competition, then the feature is nonfunctional and may receive trademark protection.

The Court held that under either test Cuervo’s appeal failed.  Regarding the “comparable alternatives” test, the court noted the district court’s finding that there is more than one way to seal a bottle with wax to make it look appealing.  Regarding the “effective competition” test, the Court noted the District Court’s finding that “red wax is not the only pleasing color of wax.”  The Court of Appeals held that the District Court’s findings were not clearly erroneous and therefore upheld the appeal.

The Court seemed to have a fondness for bourbon, spending considerable time in the opinion discussing its history which began with Dr. James Crow’s original formulation and the history of the name ‘bourbon.”

The name “bourbon” itself is easier to trace: one of the original nine counties of Kentucky was Bourbon County, WILLKIE, supra, at 20, named in honor of the French royal family. Charles K. Cowdery, How Bourbon Whiskey Really Got Its Famous Name, BOURBON COUNTRY READER, July 1996. “[Kentucky] whiskey was shipped from Limestone, a riverside port in Bourbon County,” down the Ohio river to the Mississippi, bound for New Orleans. REGAN &REGAN, supra, at 14. Whiskey shipped from the port in Bourbon County came to be known as “Old Bourbon,” and later, simply “Bourbon,” to distinguish it from Pennsylvania Rye or other whiskeys. Cowdery, How Bourbon Whiskey Really Got Its Famous Name, supra. The name “bourbon” at that time meant whiskey made from mostly corn in Kentucky or points west. But it was likely not until “sometime between 1823 and . . . 1845” that Dr. James Crow “perfect[ed] the sour-mash method of whiskey-making”—the dominant process in use today that, when coupled with aging in charred new oak barrels, produces modern bourbon’s familiar caramel color and distinctive taste. REGAN & REGAN, supra, at 15.

While in the early years “[w]hiskey was whiskey, as everybody knew,” some bourbon distillers began to brand their bourbons to capitalize on the differences between “[g]ood Kentucky Bourbon” and all the rest. WILLKIE, supra, at 22. Dr. Crow, a Kentuckian by way of Scotland, “insist[ed] upon strict sanitation in his manufacture,” and branded his bourbon with his name; other Kentucky families followed suit in an effort to differentiate their products. Id. Crow’s branding tactics seem to have worked, as his bourbon accumulated prominent fans. For example, bourbon drinker Ulysses S. Grant preferred Old Crow over other bourbons, Julia Reed, Bourbon’s Beauty, NEWSWEEK, Dec. 21, 2008, as did all three of Congress’s “Great Triumvirate,” Henry Clay, John C. Calhoun, and Daniel Webster. GERALD CARSON & MIKE VEACH, THE SOCIAL HISTORY OF BOURBON 47 (2010).

The court, however, did not discuss the history of red wax used to seal liquor bottles, instead it focused on the reality of today’s liquor market where something once common is now uncommon and therefore protectable as a trademark.

Where the Rubber Meets the Road: Tire Trademarks

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The Federal Circuit in Bridgestone v. Federal Corp., 10-01376, 2012 BL 61825 (Fed. Cir. Mar. 16, 2012) found Federal’s mark MILANZA for tires likely to be confused with Bridgestone’s marks for POTENZA and TURANZA for tires.

Would you be confused into thinking MILANZA was the same tire as either POTENZA or TURANZA?  Do you even know the name of the tire on your car?

Bridgestone owns the marks POTENZA and TURANZA for tires.  In March 2004, a competing tire manufacturer, Federal, filed an intent to use trademark application for the mark MILANZA for tires.

Bridgestone filed an opposition to Federal’s trademark application with the Trademark Trial and Appeal Board (“TTAB”) arguing that MILANZA was likely to be confused with its marks ending in NZA.  The TTAB found the marks not likely to be confused with each other and denied the opposition.  The TTAB held:

Based on the record before us, opposers have failed to establish that the “NZA” suffix is recognized by the purchasing public as exclusively identifying opposers in connection with tires. Opposers’ advertising emphasizes the BRIDGESTONE mark and identifies sub-brands such as POTENZA, TURANZA, DUELER and BLIZZAK.  In fact, the vast majority of advertising by opposers feature the BRIDGESTONE mark in connection with a specific sub-brand. By highlighting the BRIDGESTONE mark and using POTENZA and TURANZA with DUELER and/or BLIZZAK with the BRIDGESTONE mark, opposers do not draw attention to the purported “NZA” family.

Bridgestone then appealed to the United States Court of Appeals for the Federal Circuit.

Bridgestone argued that POTENZA and TURANZA are strong marks consisting of coined terms and that the  marks are heavily advertised and widely sold.  Bridgestone argued the market strength and  public familiarity with the POTENZA and TURANZA means that the public is likely to be confused when it encounters a mark such as MILANZA which has a similar sounding suffix and an Italian connotation.

Federal argued that the marks have obvious differences and different connotations.  Federal argued that its mark MILANZA is suggestive of Milan, while the Bridgestone mark POTENZA is Italian for power and the Bridgestone mark TURANZA suggests a touring tire.  Moreover, Federal states that it chose the ZA ending because it is a Taiwanese company and the ending ZA in Chinese imparts emphasis.  Federal also argued that marks with a ZA or NZA ending are common in the automotive industry, citing the Suzuki FORENZA, the Toyota VENZA and the mark MONZA for various automotive products.

The Federal Circuit reversed the TTAB finding MILANZA likely to be confused with POTENZA and TURANZA.  The Federal Circuit found that Bridgestone’s prolonged exclusive use of its marks, the extensive promotion and marketing, and the billions of dollars of sales showed the commercial strength of the marks.  The Federal Circuit also noted that,

When the goods are identical, the appearance of a mark of similar sound, appearance, or connotation is more likely to cause confusion than if the goods are significantly differ-ent. See Century 21 Real Estate v. Century Life of Am., 970 F.2d 874, 877 (Fed. Cir.1992) (“When marks would appear on virtually identical goods or services, the degree of simi-larity necessary to support a conclusion of likely confusion declines.”). Exact identity is not necessary to generate confusion as to source of similarly-marked products. See Saxlehner v. Eisner & Mendelson Co., 179 U.S. 19, 33 (1900) (“It is not necessary to constitute an infringement that every word of a trademark would be appropriated. It is sufficient that enough be taken to deceive the public in the purchase of a protected article.”).

The Federal Circuit concluded that the TTAB’s ruling should be reversed.

In light of the identity of the goods, the lengthy prior use of POTENZA and TURANZA, the market strength of the POTENZA and TURANZA marks, and the similarities of words, sounds, and connotation with MILANZA, suffi-cient similarity has been shown as would be likely to cause consumer confusion, deception, or mistake. We conclude that the Board erred in denying Bridgestone’s opposition to the registration of MILANZA for intended use with tires. The Board’s decision is reversed.

This case seemed to turn on the strength of Bridgestone’s sales and marketing evidence.  It is unlikely that the average consumer pays much attention to tire sub-brands like the POTENZA and TURANZA.  It is therefore certainly conceivable that a consumer could see an ad for Bridgestone TURANZA, go into a non-Bridgestone the tire shop and be confused when encountering MILANZA.  In addition, although not cited in the opinion, during oral argument at the Federal Circuit the questions from the judges seem to indicate that they suspected that Federal chose the name MILANZA because it is confusingly similar to POTENZA and TURANZA.  This may have tipped the balance in an otherwise close case.

Eating Popcorn Naked – a Trademarked Way to Snack

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Does NAKED POPCORN infringe HALF NAKED POPCORN?  Good Health Natural Products, Inc. (“Good Health”) the makers of Half Naked Popcorn think so.  Good Health has sued The Mediterranean Snack Food Company, LLC (“Mediterranean Snack Food”) for trademark infringement in federal court in North Carolina.

The complaint alleges that “Mediterranean recently launched a product that is directly competitive to Good Health’s HALF NAKED POPCORN brand of popcorn under a mark – NAKED POPCORN– that is a colorable imitation of, and is confusingly similar to, Good Health’s well-known HALF NAKED POPCORN trademark, as shown below.”  Would you confuse one of these bags of popcorn for the other?

The complaint further alleges that “by virtue of his prior business relationship with Good Health, Vincent James, one of Mediterranean’s members, became familiar with Good Health’s product line, including its HALF NAKED POPCORN brand of popcorn.”  (Of course Mr. James could have also become “familiar” with this product by buying it, opening the package, and chowing down.)
Although the names of the products are certainly similar, Good Health does not have a federal registration for “HALF NAKED” despite claiming to have sold the product since 2004.  Although there are other brands with registrations for “NAKED” products, the only pending registration for a “Half Naked” product is a pending application for Half Naked Texas Hold’em filed by Las Vegas resident Sam Chinkes (which—based on my experience in Las Vegas poker rooms – hopefully has nothing to do with the players undressing…)
In reviewing the pending applications and existing registrations at the U.S. Trademark Office, most likely, Good Health chose not to file an application for the mark due to the crowded “naked” landscape.  There currently exists multiple registrations for BEAR NAKED for various food items.  In addition, Bear Naked, Inc. the owner of the Bear Naked marks currently has an opposition proceeding pending against an applicant who filed for the mark NAKED for various products (including popcorn) back in 2005.
In addition there are registrations for Naked Wings, Naked Scallops, Naked Burgers, Naked Shrimp, Naked Tenders, Naked Nuggets, and the ever popular Naked Jerky.  All of these naked trademarks really begs the question as to whether the word “naked” is merely descriptive of plain food items without anything added.
Mediterranean Snack Food has not yet answered the complaint, but will most likely deny that its naked popcorn could possibly be confused with Good Health’s half naked variety.  No matter which way this case goes, this case is ripe for a final order filled with hilarious nude puns from the judge.

 

Directional Arrow or Trademark Infringment? In-N-Out Burgers v. Pappas Burger

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On November 15, 2011, In-N-Out Burger sued the Houston franchise Pappas Burger for trademark infringement in a Texas federal court.  The complaint claims that the Pappas Burger’s sign in the Houston airport (pictured below) infringes In-N-Out’s distinctive boomerang arrow logo (pictured above).  In-N-Out Burger currently has ten locations in Texas, all in the Dallas – Fort Worth area.  All three Pappas Burger locations are in Houston.

In-N-Out’s complaint alleges that,

13.  The use by Defendant of In-N-Out’s mark is likely to cause confusion, mistake or deception, as those encountering Defendant’s signage may mistakenly assume, at least initially, that its restaurant is in some way sponsored, endorsed, approved by or connected with In-N-Out when in fact it is not.

14.  Upon information and belief, Defendant has performed the aforesaid acts with wrongful purposes and knowledge to inappropriately trade upon In-N-Out’s extensive goodwill including using In-N-Out’s mark to draw attention to their restaurant.

While In-N-Out’s logo is certainly distinctive, it seems unlikely that the Pappas Burger sign (which is dominated by the words “Pappas Burger”) would be confused for an In-N-Out Burger (whose sign is dominated by the words “In-N-Out”).

Is it possible that someone looking at the sign from a distance might be confused?  That seems more likely.  The fact that the arrow is yellow, uses similar lights, and has as a slight bend in the middle does not help either.

Prior to this lawsuit being filed, In-N-Out sent letter to Pappas Burger, but could not reach a resolution to the dispute.

Pappas Burger has not yet answered the complaint.  However, my guess is that this case will quickly settle since the directional arrow is only used by Pappas Burger at its Houston airport location (and is not part of the Pappas Burger logo at other locations).

Facebook “Like” Trademark Applications in Thumb War with TiVo and Searchteq, Blocked by “iLike”

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On April 21, 2010 Facebook filed fourteen applications with the United States Patent and Trademark Office trying to corner the word mark “like” as well as the stylized version of the mark with the now famous thumbs up.

The applications were filed by Facebook for all manner of services, including “dating services,” “self-fulfillment,” “bill payment services” and a “virtual currency.”  (So be careful when you click that “Like” button…)

Facebook’s seven design mark applications for the stylized version of the word “like” alongside a thumbs up are being blocked by earlier registrations for different thumbs from the likes of TiVo and Searchteq, a German search engine.

(TiVo Thumb)

(Serchteq Thumb)

 

 

 

 

To add insult to injury, Searchteq is using it’s registered thumb trademark to ask its users to like it on Facebook.

The fact that there are multiple thumbs-up registrations for similar services is actually helpful to Facebook. Arguably its thumbs up is at least as different from TiVo’s and Searchteq’s as those two marks are from each other.  It would be inconsistent to allow TiVo’s and Searchteq’s marks to co-exist on the trademark registry but block Facebook’s differently styled thumb.

This thumb war seems easily resolved with a well written office action response and if that fails, a co-existence agreement with TiVo and SearchTeq.  Maybe Facebook can work out a deal to get its thumbs up on TiVo boxes allowing users to “like” TV Shows while sitting on the couch.

Thus far only Facebook’s application for using the stylized like button for financial transactions, bill payment services and virtual currency has been approved.  The remaining six applications remain suspended.

The applications for just the word “like” by itself are a little trickier.  Those seven applications are currently being blocked by a 2010 registration for the word “iLike” which has been in use since 2006.  That registration is for a number of services some of which are right in Facebook’s wheelhouse, including, “customized web pages featuring user-defined information, personal profiles and information” and “Internet based introduction and social networking services.”

Currently all seven of Facebook’s word mark applications face a non-final office action.  While Like and iLike are admittedly similar, they are not identical.  If Facebook is unable to convince the examining attorney of the differences between Like and iLike, however, it could appeal to the Trademark Trial and Appeal Board and then to the United States Court of Appeals for the Federal Circuit.  As a second alternative, Facebook could simply work out a co-existence agreement with iLike possibly in exchange for some promotion on Facebook or some other compensation.

There is little doubt, however, that one way or the other Facebook will get its “like” trademarks registered.  The word “like” and the famous like button with the thumbs-up are just too valuable to the company.

Own Your Power – Did Oprah Winfrey Steal this Trademark?

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Author, speaker, coach, and radio show personality Simone Kelly-Brown has sued television host, actress, producer, and philanthropist Oprah Winfrey over the trademark Own Your Power.

Kelly-Brown has had the mark Own Your Power registered in the United States since 2008 and claims a date of first use back to 2006.  In the complaint filed against Oprah and others, Kelly-Brown and her company Own Your Power Communications, Inc. accuses Oprah of the “brazenly unlawful disregard for the existence and use of [her] Company’s Trademark” as well as being at the helm of a “Partnership and Campaign to destroy [the] Company’s goodwill.”  Kelly-Brown further states that it was “unconscionable commercial practice, deception, fraud, false pretense, false promise, and misrepresentation” for Oprah to use the mark Own Your Power without her permission.

Months prior to filing the lawsuit, Kelly-Brown’s attorney, well-known intellectual property attorney Patricia Lawrence-Kolaras sent Oprah a detailed twelve (12) page letter setting out Kelly-Brown’s claims of trademark infringement.  According to the complaint, after receipt of this letter “On April 20, 2011 Harpo attorney David Fleming, Esq. of Brinks Hoffer Gilson & Lione acknowledged representation of members of the OYP Partnership and refused to direct his clients to halt the infringement of Kelly-Brown’s registered OYP Trademark.”  Translation: go pound sand.

WHO IS IN THE CASE AND WHO CAN GET OUT

The defendants named in the lawsuit are:  Oprah Winfrey, Harpo Productions, Inc., Harpo, Inc., Hearst Corporation, Hearst Communications, Inc., Wells Fargo & Company, Estee Lauder Companies, Inc., Clinique Laboratories, LLC, and Chico’s Fas, Inc.

Since the complaint was only recently filed, none of the defendants have responded.

According to the complaint, the basis for including Wells Fargo, Estee Lauder, Clinique and Chico’s is  an alleged “partnership” with those sponsors and Oprah’s company.  As evidence, attached to the complaint is an advertisement where these sponsors of the event are listed under the heading “IN PARTNERSHIP WITH.”

Needless to say, this evidence is a bit flimsy.  We will see shortly whether this evidence is enough to survive an anticipated motion to dismiss by these entities.  It is difficult to image that there is actually a “partnership” among Oprah Winfrey’s company and its advertisers and that this “partnership” collectively infringed Kelly-Brown’s trademark.

Oprah Winfrey should also be able to personally get out of the case.  To keep Oprah in the case Kelly-Brown will need to show that Oprah actively and knowingly participated in furtherance of the alleged trademark infringement.  Considering that most of the alleged infringement occurred prior to the notice letter sent by Kelly-Brown’s attorney, it is doubtful that Oprah even knew about Kelly-Brown’s alleged trademark rights until recently.  Moreover, it is unlikely Oprah was directly involved in what amounts to an event name and/or catch phrase.

As for Harpo Productions, Inc., Harpo, Inc., Hearst Corporation, Hearst Communications, Inc., at least one of these entities will be stuck in the case.  The other entities will likely be dismissed for being too far removed from any alleged trademark infringement.

BUT WHAT’S THE HARM?

While it appears that Kelly-Brown has legitimate trademark rights and that those trademark rights may have been infringed, her biggest hurdle will be proving damages.  In fact, it is possible that Kelly-Brown’s “Own Your Power” event which purportedly took place two days after Oprah’s “Own Your Power” event had an increased attendance from persons believing they were going to see Oprah’s event.  While that type of consumer confusion is possibly trademark infringement, Kelly-Brown did not exactly loose any money because of it.

The best argument for damages Kelly-Brown has is for money to cover “corrective advertising” so the public no longer associates “Own Your Power” with Oprah.  Based on the market reach of Oprah, an expert witness will certainly be able to come up with a sizable sum.

Stay tuned.  This one is just getting started.

DJ Paulie vs. DJ Pauly D

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Long time disc jockey DJ Paulie has sued Jersey Shore star DJ Pauly D for trademark infringement.   Also caught up in the lawsuit is the Palms where defendant DJ Pauly D is a resident DJ for Moon, Rain, and the Palms Pool in Las Vegas.

Although not nearly as famous as DJ Pauly D, the older DJ Paulie claims to have used his trademark in interstate commerce as early as 1973.  DJ Paulie’s biggest claim to notoriety stems from his claim in his complaint that,

After the attack on 9-11 in New York City, [DJ Paulie] was hired by the United States Post Office to write the music and produce their official 9-11 Memorial Fundraising Song, “September Mourn”, for the benefit of the victims’ families.

(While it appears that DJ Paulie did produce “September Mourn” based on the exhibits attached to the complaint, I was unable to locate anything to indicate that DJ Paulie was hired by the U.S. Post Office or that the Post Office ever had and “official 9-11 Memorial Fundraising Song.”)

DJ Paulie complains that DJ Pauly D’s success has negatively affected his search rankings. Indeed when performing a search for DJ Paulie, Google inquires whether you really meant DJ Pauly D (which is probably who most people are actually searching for).  It is unknown when DJ Paulie’s website became completely swamped by the Jersey Shore actor, but many Google and Bing algorithm tweaks in recent years  seem to favor “big brands” and Goggle’s algorithm clearly recognizes DJ Pauly D as the more prominent “brand.”

DJ Pauly D’s attorneys have not yet responded to the complaint, but I suspect that they will argue that the older DJ Paulie abandoned the mark at some point in his long carrier and did not begin using it again until 1999 or 2000 when DJPaulie.com was launched.  DJ Pauly D could then argue that he is actually the senior trademark user.   According to DJ Pauly D’s bio he has been a DJ since the age of 16 (1996).

Over at the trademark office, DJ Pauly D’s pending applications for the mark DJ Pauly D have been rejected by the trademark office based on a likelihood of confusion with DJ Paulie’s mark.  DJ Pauly D is in a tough spot at the trademark office as there is little chance of convincing the examining attorney who (rightly) has identified this likelihood of confusion issue.  DJ Pauly D’s trademark office options at this point are: (i) appeal the matter to the trademark trial and appeal board; (ii) settle with DJ Paulie and enter into a co-existence agreement; or (iii) start a cancellation proceeding at the trademark office against DJ Paulie arguing that DJ Pauly D is actually the senior trademark user.

 

 

Geek Trademark Infringement: Best Buy vs. Newegg

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Back before anyone could remember, a “geek” was a carnival performer who entertained and disgusted his audience with morbid and gross stunts.  Today, the carnival stunts are left to modern day performers such has superstar Johnny Knoxville and his Jackass crew who no one would refer to as “geeks.”

Today, geeks distinguish themselves by being able to read binary and hexadecimal numbers as well as trace the origins of the movie Blade Runner to the book “Do Androids Dream of Electric Sheep?”

So it is natural to use the work “geek” in conjunction with the sale and service of computers, right?  That’s what Newegg believes, rebuking a cease and desist letter from Best Buy which demanded that Newegg cease its use of the trademark GEEK ON.  According to Best Buy, its rights in its various GEEK SQUAD marks are being damaged by Newegg’s GEEK ON mark.

As the old adage goes, a good sketch is better than a long speech.  Compare the logos for yourself:

 

Does Best Buy own the word “geek.” Does it own the work “geek” when used as part of a black and orange logo? Does it own the work “geek” when used to advertise computers and computer repair AND a black and orange logo is used stylized with an “on” button?

When Best Buy sent its cease and desist letter on May 26, 2011 it stated:

Given Best Buy’s long-standing prior use of the GEEK SQUAD mark, Geek Squad Trade Dress, and Tie and Power Button Design, Best Buy is concerned that Newegg’s use of the Geek On Logo is likely to create confusion among consumers and to dilute the distinctive quality of the GEEK SQUAD mark in violation of Best Buy’s trademark rights.  Best Buy is particularly concerned because the Geek On Logo features the GEEK-component of Best Buy’s GEEK SQUAD mark, is depicted in the same orange-and-black color scheme as Best Buy’s Geek Squad Trade Dress, features a power button design that is very similar to the Geek Squad Tie and Power Button Design, and is used to promote Newegg’s competing consumer electronics retail services.

On June 6, 2011, Newegg responded by telling Best Buy to go pound sand.  Newegg’s response letter stated:

First, we respectfully disagree with your assertion that Newegg’s “Geeek On” promotions constitute trademark infringement.  Best Buy Neither owners nor has exclusive rights to the word “Geek”, and best Buy neither owns nor has exclusive rights to use a general, unstylized computer power button icon.

No mention was made by Newegg of the combination of Geek, the power button, and a black and orange color scheme.   Thus far Best Buy has not filed suit and Newegg continues to use its Geek On logo.  It will be interesting to see if either company decides to geek out and take further action.