Trademark Law Briefs

Innospan Corp.  v. Intuit, Inc., 2011 USDist LEXIS 29122 (N.D. Cal. 2011)

You know, I usually wouldn’t bother posting on a case like this, but 9th cir. trademark related cases have been a little light lately…

So in brief, you can’t plead that your trademark was conversion of property under state law.  Conversion covers tangible goods.  Trademarks are intangible.  That means the Lanham Act is the appropriate law.

The Gerson Institute v. Huntington, 2011 U.S.Dist. LEXIS 25403

This opinion is the result of a 12(b)6 motion for failure to state a claim.  Gerson hired Huntington to market its books.  Gerson became dissatisfied with Huntington and fire him, alleging that he set up websites that misdirected funds to his own account using the Gerson trademarks.  The court said this might be a claim for embezzelment, but not for trademark infringement because he was authorized to use the marks to promote sales.  Whether he misdirected the profits of those sales isn’t relevant to an infringement analysis.

However, the court did agree that a claim for trademark infringement was appropriate if Huntington continued to use the marks to obtain misdirected sales after he was fired.  Therefore, that allegation was allowed to stand (though the court was skeptical whether Gerson had any factual backing for this allegation and indicated they should come up with something quickly).

Spin Master, Ltd. v. Zobmondo Entertainment, LLC, 2011 U.S.Dist. LEXIS 25261

This is an exciting sequel to the Would You Rather… 9th Cir. decision I wrote about last year.  In that case, the 9th Cir. said the district court erred in granting a cancellation based on descriptiveness.  This meant defendant’s other grounds for summary judgment- fraud on the PTO- needed to be considered after all.

This decision illustrates just how difficult it is to prove a subjective intent to mislead the PTO in an application (though, to be fair, this didn’t appear to be a particularly close case based on the facts the district court lays out). 

No Doubt v. Activision Publishing, Inc. (2011) 192 Cal.App.4th 1018

No Doubt, a famous band, entered into a licensing agreement with Activision, publisher of the Band Hero video games, to use No Doubt’s likeness with up to three of its songs.  Activision allowed players to “unlock” the No Doubt band members to be used with other songs as well.  No Doubt sued for violation of publichity rights and unfair competition.  Activision filed an anti-slapp motion based on its alleged First Amendment right to use their personas.  (more…)

Bauer Bros. LLC v. Nike, Inc., 2011 U.S.Dist. LEXIS 23025 (S.D. Cal. 2011)

Bauer Bros. sued Nike for infringement based on the phrase “Don’t Tread on Me” on various clothing items.  Nike counter-claimed that Bauer fraudulently obtained its registration by claiming use on a number of items it hadn’t actually sold with the mark and for claiming Bauer had exclusive right to use the mark while knowing the mark had historical significance and had been used by third-parties.  Bauer sought to dismiss the fraud based counter-claims based on failure to specifically plead facts showing fraud.

Because Nike claimed it had done an investigation on the items and named several that it believed were not actually in use, the claim was plead sufficiently.

However, not so the claims about the exclusive right to use the mark.  Nike said, rather generically, “Bauer was fully aware of the historical significance and origin of the phrase,” and “Bauer was fully wawre that third parties had used and were using the phrase… on apparel.”  First, the Nike faile to offer any authority for the proposition that a trademark with historical signficance is not subject to registration (further more, it didn’t allege with particularity what that historical signficance was).  Second, Nike failed to specifically naem any specific person or entity who previously used the prhase on apparel or that the other user had rights superio to Bauer that Bauer knew of.