Knobbe/Martens: Intellectual Property Law

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Where's the Beef? Establishing Fame in Trademark Disputes

August 14, 2019 Ryan S. Furtado and Peter Law

A decision from the Federal Circuit clarified how the USPTO should analyze evidence of fame under the fifth DuPont factor.  The decision sheds light on how fashion brands can establish that their marks are famous through advertising, advertising channels, and references to the brand in popular culture.

On April 8, 2013, Greater Omaha Packing Co., Inc. (“GOP”) filed an application to register the mark “GREATER OMAHA PROVIDING THE HIGHEST QUALITY BEEF” and design shown below, having Serial No. 85/897,951.

 

NBA MVP Giannis Antetokounmpo Euro-Steps into Federal Court

On July 8, 2019, NBA player Giannis Antetokounmpo filed suit in the Southern District of New York for trademark infringement and counterfeiting of his GREEK FREAK trademarks in connection with clothing bearing his likeness.  Antetokounmpo plays for the Milwaukee Bucks and was recently voted the NBA’s 2019 MVP. He is a household name to basketball fans and has adopted the nickname “GREEK FREAK,” an homage to Antetokounmpo’s home country of Greece. 

 

11th Circuit Decides Dispute on Kardashian’s Beauty Mark

June 4, 2019 Loni Morrow and Lynda Zadra-Symes

A lawsuit was filed in the U.S. Central District of California regarding the likelihood of confusion between the Khroma and KROMA brands.  On March 11, 2013, the California district court issued a preliminary injunction prohibiting Boldface from using the “Khroma” mark.  

Which Supreme Will Reign Supreme: "Legal Counterfeits" in China

April 24, 2019 Alexander D. Zeng and Jonathan Hyman

Supreme, the popular New York-based American streetwear brand, known by its iconic logo, was created by founder/CEO James Jebbia.  Despite its highly successful brand recognition, the company (which operates under the corporate entity Chapter 4 Corp.), has encountered difficulties in establishing its trademark rights overseas.  As Chapter 4 Corp. began to file applications to register its SUPREME trademark overseas, an unrelated company doing business as Supreme Italia, which was launched in 2015 by International Brand Firm (“IBF”), also began filing applications to register the SUPREME trademark in multiple countries.  IBF is a limited company in the UK which operates as a holding company that licenses the rights in the SUPREME trademark for use on garments and accessories sold in countries across the globe.

 

Misleading Ads are Not a Jeweler's Best Friend: The FTC's Crackdown on Diamond Ads

It’s been 70 years since Carol Channing first sang “Diamonds Are a Girl’s Best Friend” on Broadway, with Marilyn Monroe singing the more famous rendition four years later on the silver screen.  Around the same time as Monroe’s performance, a research group under the direction of General Electric created the first commercially successful synthetic diamond.  Fast forward several decades and there are now several methods by which “lab-created diamonds” or “synthetic diamonds,” as they are called in the industry, can be produced.

https://www.knobbe.com/attorneys/charlene-azema

Van Cleef & Arpels v. Nice Ice Fine Jewelers

March 13, 2019 Benjamin Ho and Curtiss Dosier

On January 30, 2019, the luxury jewelry suppliers Van Cleef & Arpels filed suit in the United States District Court for the Southern District of New York against Nice Ice Fine Jewelers, LLC (“Defendant”). Van Cleef & Arpels’ complaint alleges trade dress infringement and unfair competition under the Lanham Act and related claims of trademark infringement and unfair competition under New York common law.

 

A Different Shade of Gray: The Scope and Limits of Gray Market Goods and Recent Developments in the Cosmetics Space

Under the first sale doctrine, once a trademark owner first authorizes its branded product to be sold to a consumer, the trademark owner’s right to control the further re-sale of that product is generally said to be “exhausted”, so long as the product is not “materially different” from the origin

No Apologies: Nirvana v. Marc Jacobs

February 22, 2019 Bita Kianian and Ian W. Gillies

On December 28, 2018, Nirvana LLC filed a lawsuit against designer Marc Jacobs in the Central District of California, alleging copyright and trademark infringement. Nirvana LLC is the legal entity which controls the band Nirvana’s financial, legal, and business affairs.  Nirvana LLC was formed in September 1997 by the band’s two surviving members, Dave Grohl and Krist Novoselic, along with the Cobain Estate, controlled by Courtney Love. The lawsuit was triggered by Jacobs’ new “Bootleg Redux Grunge” Collection, and alleges infringement of Nirvana’s satirical smiley face design, created by Nirvana front man Kurt Cobain in 1991. The design was first introduced in 1992, and has since been licensed for use on numerous items, often appearing in yellow against a black background.

 

Skechers and Eliya Fight Over Shoe Design Patents Again

February 19, 2019 Brian M.Z. Reece and Jeff Van Hoosear

Eliya Inc., known for its BERNIE MEV® shoes, filed a declaratory judgment action against Skechers on January 29, 2019 in the U.S. District Court for the Southern District of New York.  Skechers had sent a cease and desist letter to Eliya accusing Eliya of infringing on two of Skechers’ shoe design patents, U.S. Pat. No. D821,724 (the “ ‘724 patent”) and U.S. Pat. No. D810,412 (the “ ‘412 patent”):

 

Burlesque Designs for the Eye: Makeup Designs in Dispute

February 15, 2019 Shuchen Gong and Jonathan Hyman

On December 13, 2018, Face Lace Ltd., founded by makeup artist Phyllis Cohen to provide ready-to-wear makeup designs, filed suit in the Central District of California against Bare Escentuals Inc. d/b/a Buxom Cosmetics. Face Lace’s complaint alleged copyright infringement and trade dress infringement under the Lanham Act.

 

 

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