Trademark Law

Nonlawyer Bests Toyota’s Counsel in 9th Circuit Trademark Case

Lisa Tabari is not a lawyer. But she took on an auto giant’s corporate lawyers in a trademark dispute and won. A federal appeals court Thursday lifted an injunction barring Tabari and her husband, Farzad, from using the word Lexus in a family-owned business that specializes in connecting would-be Lexus…

Jul 9, 2010 5:00 PM CDT

The Value of Strategic Counsel

Regarding “We the Pauper,” May: It is not only private online providers that pose a problem. Even the U.S. Patent and Trademark Office website makes it appear very easy to file your own application for a trademark. It is even posting a video that purports to assist filers by explaining…

Jul 1, 2010 10:10 AM CDT

Gucci’s Perceptions About Inactive-Status GC Don’t Help Privilege Claim

Gucci America’s mistaken belief that its former top lawyer had an active license to practice law isn’t enough to shield documents from discovery based on attorney-client privilege, a magistrate judge has ruled. Magistrate Judge James Cott of New York City denied Gucci’s motion for a protective order Tuesday, the New…

Jun 30, 2010 12:09 PM CDT

What’s In a Name? Big Legal Fees for Small Cos. That Don’t Do Due Diligence

A small entrepreneur may not give much thought, before starting a small business, to legal issues concerning its name. But selecting one that’s already in use, or even too similar to another company’s moniker, can be costly. Defending a trademark case can easily cost tens of thousands of dollars. Avoiding…

Jun 25, 2010 9:35 PM CDT

Pork Producers Send Cease-and-Desist Letter Over Unicorn Meat Offer

Pork producers have no sense of humor when it comes to a claim that unicorn is “the other white meat.” A tongue-in-cheek April 1 online ThinkGeek ad for the fictitious product elicited a cease-and-desist letter from the National Pork Board over the use of its trademarked slogan, as multiple observers,…

Jun 22, 2010 5:32 PM CDT

WSJ to NYT on IP Claim: We Thought You Had Better Things to Worry About

The Wall Street Journal has sent a flippant reply to the New York Times over its claim that the Journal stole the Times’ tagline, “Not Just Wall Street. Every Street.” The Times had sent the Wall Street Journal a cease-and-desist letter after the Dow Jones publication used the tagline to…

Jun 8, 2010 10:30 AM CDT

No Permission, No Problem: Gary, Ind., Plans Michael Jackson Museum

You might think Indiana officials would have learned a lawsuit lesson from the Dillinger Museum. After a seven-year litigation saga, tourism officials in Hammond reached an undisclosed settlement with the great-nephew of notorious gangster John Dillinger that permitted the facility to reopen to the public. But now their Gary counterparts…

Jun 3, 2010 10:57 PM CDT

6th Circuit Rules Against Victor’s Little Secret in Trademark Case

A federal appeals court has upheld an injunction barring the owner of a lingerie and sex-toy shop from calling his business “Victor’s Secret” or “Victor’s Little Secret.” The 2-1 ruling (PDF) by the Cincinnati-based 6th U.S. Circuit Court of Appeals is one of the first tests of a new law…

May 20, 2010 2:54 PM CDT

In Rush to Create New ‘48 HR’ Mag in a Weekend, No One Focused on Legal Issues

In an impressive demonstration of the power of online social media and journalists’ devotion to their work, a conversation among three friends in a San Francisco bar earlier this month morphed into an actual 60-page magazine created over the weekend after a call for help was put out on Twitter.…

May 19, 2010 6:31 PM CDT

Hershey Sues, Says Williams-Sonoma Brownie Pan Copied Iconic Chocolate Bar

Hershey Co. has filed a Lanham Act claim against a well-known supplier of upscale kitchen accoutrements, contending that a brownie pan being marketed by Williams-Sonoma Inc. violates trademark law by copying the design of its iconic chocolate bar. The brownie pan is shaped in twelve rectangles, just like a Hershey…

May 18, 2010 8:58 PM CDT

Manatt Phelps Is Back on Hot Seat in Big Bucks Malicious Prosecution Suit

A divided California appeals court has revived a malicious prosecution lawsuit against Manatt Phelps & Phillips concerning a 1998 federal trademark dilution and false advertising complaint it filed against the Franklin Mint Co. on behalf of the Diana, Princess of Wales Memorial Fund. That underlying federal case resulted in a…

May 4, 2010 6:39 PM CDT

Report: O’Melveny Lawyer Sparked Probe of iPhone Prototype Loss by Reporting It Stolen

An aggressive law enforcement probe of an Apple iPhone prototype that reportedly was forgotten by a company employee at a California bar was sparked by a complaint from an O’Melveny & Myers attorney that it had been stolen. “They said there was a belief that this had been stolen and…

Apr 29, 2010 11:25 PM CDT

Former Gucci GC Questions the Fuss over His Inactive Status

The former general counsel for Gucci doesn’t think he deserved to be fired for working at the company while on inactive status, and he explains why in an affidavit filed in a battle over privileged communications in a trademark case. Jonathan Moss says he didn’t think his inactive status affected…

Apr 20, 2010 4:44 PM CDT

The North Face and The South Butt Settle Trademark Suit

The North Face Apparel Co. has settled its trademark infringement suit against The South Butt, a clothing line with the tagline “never stop relaxing.” Lawyers refused to reveal details of the settlement, but The South Butt website is still selling its wares, according to the American Lawyer and the St.…

Apr 5, 2010 11:42 AM CDT

2nd Cir. OKs eBay Use of Tiffany’s Trademark, But Revives False Advertising Claim

The New York City-based 2nd U.S. Circuit Court of Appeals sided with eBay today in a trademark infringement and dilution case brought by Tiffany & Co., finding that a lower court had correctly permitted eBay to list for sale on its website used items from the renowned retailer. However, its…

Apr 1, 2010 11:28 PM CDT