According to an article posted on BEVNET, a federal magistrate judge recently ruled that a South Florida company does not yet have the right to take the deposition of Dietrich Mateschitz, an Austrian marketing whiz behind the wildly successful energy drink, Red Bull. The trademark infringement dispute began when attorneys for Austrian energy drink Red Bull sent a cease-and-desist letter to South Florida Vital Pharmaceuticals, which does business under the moniker, VPX Sports. Red Bull claimed VPX’s product was too similar to the popular caffeinated drink. The hearing was the latest development in an ongoing dispute dating back to October 14, 2005. U.S. Magistrate William Turnoff in Miami made this decision, dismissing a motion to compel Mateschitz’ testimony without prejudice, telling attorney’s for VPX Sports to depose other Red Bull executives first, and then make a specific re-request to depose Mateschitz, if necessary. Turnoff’s decision was not fruitful. Within five minutes of attempting to schedule depostions, negotiations from both parties […]
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Trademark Issues for Martha Stewart
An article on postcrescent.com reports that Martha Stewart, who recently spent several months in jail, is currently using her name to sell furniture from her Katonah Collection, which include a four-poster bed and a tailored English sofa. As a result, Martha and her company, Martha Stewart Living Omnimeida, Inc., are applying for trademark protection for the Katonah Collection, named after her new hometown, Katonah, in upstate New York. Stewart moved to Katonah after having lived in Westport,Connecticut for more than 30 years. Katonah is named after a 17th-century Indian chief. Not only are the residents of Katonah not excited that Stewart, an ex-con, has moved in, they are even less excited that she is planning on trademarking the name of their town. It is common for manufacturers to trademark the name of their own town to market their goods or services to distinguish them from products manufactured elsewhere. These types of trademarks are known as "geographical indication," as defined in the World […]
Florida Trademark Dispute Over MyFlorida.com
According to an article in the Miami Herald, the state of Florida is trying to protect its trademark in court from a domain name publisher that bought MyFlorida.mobi. Thomas Rask, Florida-based Logical Sites chief executive, bought the name for two years at $70. Shortly after that, a Florida Department of Management Services contacted Rask requesting that he hand the website over, since the state owns the MyFlorida.com trademark. The World Intellectual Property Organization ruled last month that Rask must give up the site. However, Rask has hired a Florida trademark attorney to file a complaint with a district court in Tampa. His argument is that the words "my" and "Florida" are too generic to enforce a trademark. He also says that since businesses with trademarks have to register their names before the public, the state should have done so then. Rask plans to turn MyFlorida.mobi into a destination for mobile users to get tourism information on the go. 30% of Logical Sites’ income […]
Trademark Infringement Case is High Steaks
The Nashville Post reports that Orlando Florida-based Darden Restaurants, the owner of Red Lobster and Olive Garden, is being sued for trademark infringement by Nashville-based O’Charley’s owner of the Stoney River chain. The dispute stems over Darden Restaurant’s new concept for a steakhouse, Rocky River Grillhouse, a lodge type eatery serving grilled steaks and seafood. O’Charley’s find this concept too similar to its Stoney River Legendary Steaks, which opened last year in Nashville’s West End. According to the lawsuit, the word ‘rocky’ is synonymous with ‘stoney,’ no to mention the fact that the decor and menu for both establishments is strikingly similar. The first Rocky River opened in Cuyahoga Falls, Ohio, last November as a test location. There are reportedly more on the way. There have been earlier clashes of restaurant copycatiing, including the dispute between ‘Wendy’s‘ and ‘Judy’s’ and Kentucky Fried Chicken and Minnie Pearl’s Chicken. There are currently 10 Stoney River restaurants owned by O’Charley’s in Tennessee, Georgia, Illinois, […]
Florida Trademark Infringement Litigation
Florida trademark infringement lawsuits can be brought under either the Florida trademark statute (Chapter 495) or under federal law (Lanham Act) depending upon whether or not a federal trademark registration has been obtained. If you are not sure if you or someone else has obtained a Florida trademark registration, you may want to do a search on the Florida trademark database. Many general practitioners in Florida only occassionally see intellectual property litigation of any type, much less, Florida trademark litigation, and are not aware of the benefits of Florida’s trademark statute. At one time, state law was seen as providing the primary venue for protection of trademarks. All of this changed, however, when federal trademark laws were enacted by Congress. The main federal statute is the Lanham Act and it was enacted in 1946 and amended numerous times since then. Federal law has since provided the most extensive protection of trademarks. However, it would be a mistake to dismiss Florida state law remedies for trademark infringement, particularly […]
Trademark Infringement Takes a Bite out of Apple
The Orlando Sentinel reports that Apple, Inc. has been sued by Cisco Systems, Inc. over the use of the iPhone name, prompting a traddmark infringement battle the day after Apple introduced its new mobile device under the same name. Cisco filed suit Wednesday, January 10, 2007 in the United States District Court for the Northern District of California, trying to prevent the iPhone name from being utilized by Apple. The iPhone trademark has been owned for six years by Cisco and both companies have been negotiating over the rights to the name for the past several years without an agreement being reached. Less than a month before the suit was filed, Cisco released a cordless internet-based phone under the same name.
U.S. Patent & Trademark Office Announces Re-examination of Patent in Lawsuit
Business Wire reports that the United States Patent & Trademark Office will reexamine U.S. Patent No. 6,725,438. This patent is one of three at issue in a lawsuit between Magma Design Automation, Inc. and Synopsys, Inc., pending in the U.S. District Court in the Northern DIstrict of California. In light of this decision, the USPTO is currently in the process of reexamining two of the three patents in the lawsuit and will soon render a decision as to whether a rexamination of the third will occur. The USPTO is already reexamining U.S. Patent 6,376,114, and rejected all 15 claims in that patent last August. The USPTO was asked to reexamine the third patent, U.S. Patent 6,453,446, along with Patent 6,725,238 to determine whether or not it will continue with the reexamination of Patent 6,453,446 by February 10, 2007. The ownership of all three patents was the subject of a trial in 2006 in the U.S. District Court for the Northern […]
Florida Trademark Litigation Avoided by Coral Gables and Orlando Via Joint-use Agreement
Florida trademark litigation avoided. Two Florida Cities (Coral Gables & Orlando) have agreed to avoid potential trademark litigation by working together for shared use of the name "City Beautiful" according to an article (reproduced below) in Miami Today: Orlando Close to Getting Trademark for "City Beautiful" By Risa Polansky Orlando’s application to federally trademark longtime slogan The City Beautiful is in the initial stages of approval, leaving Coral Gables, which also uses the name, about a month to negotiate shared usage before a formal objection period begins. Coral Gables, which has called itself The City Beautiful since the 1930s, also was seeking the trademark but applied almost two months after Orlando filed its application. The cities, officials say, will work together for shared use of the name. "We’re now negotiating a joint-use agreement so everybody wins," said David Brown, Coral Gables city manager. City attorney Elizabeth Hernandez said lodging an official objection is Plan B. "The cities are working to get the […]
United States Patent & Trademark Office Rejects Hexagon Patent Claims
According to an article in Antara news, the United States Patent & Trademark Office has rejected key claims in the Hexagon ‘148 patent. The rejection was made during a Reexamination Proceeding that was originally initiated by FARO Technologies, Inc. Included in the rejected claims are all the claims involved in the ongoing Hexagon ‘148 patent infringement case filed by Romer-CimCore, a subsidiary of Hexagon, AB, and also FARO’s largest competitor. If this rejection of claims is finalized, the patent claims asserted against the Company in the Hexagon litigation will be invalidated, and FARO will prevail in its litigation. The Hexagon ‘148 patent claims encompass a four-jointed arm construction with a mechanically unlimited rotation of certain joints. In its rejection, The United States Patent & Trademark Office has determined that this feature was already found in a number of prior patents and so determined that the ‘148 claims were "obvious" in view of this prior art. Hexagon will be entitled to […]
Trademark Tips
Jon Fredkove over at Named Development has posted an interesting and humorous article regarding applying for trademark protection with the United States Patent & Trademark Office. I urge you to visit his blog for the complete article. You will find it under the November 6, 2006 Links Du Jour entitled “Trademarks and Superstitions.”
Trademark Suit Over Am Trust Name
The St. Petersburg Times reports that Ohio Savings Bank, which trademarked the name “Am Trust” in 1987 and formed a Boca Raton, Florida subsidiary, AmTrust Bank, in 1999, is taking legal action against Dan Hicks, who formed AmTrust Funding Services in 2002. After giving Hicks multiple warnings, Ohio Savings recently filed suit in federal court in Tampa, demanding that Hick’s company not only stop using the name “AmTrust,” but also pay related damages and legal fees incurred. The trademark lawsuit alleges that Hicks’ use of the name AmTrust capitalizes on Ohio Savings marketing efforts, misleading consumers into believing that both companies are related. Hicks was sent three cease-and-desist letters starting in August 2005 that went unanswered. The three letters, unlike the present lawsuit, only requested the name change, not damages or attorney’s fees. The two parties are in the process of discussing a resolution, with Hicks considering a name change, despite the cost estimated at tens of thousands of dollars.
Trademark Lawsuit Goes “Bongos”
Canada.com reports that latin singer Gloria Estefan and her husband Emilio are trying to prevent a Florida club owner from utilizing the word “bongos,” even though the Estefan’s previously argued that the word cannot be trademark protected. The Estefans have tried forcing West Palm Beach bar owner, Christopher Marrero, to change the name of his har, Cocobongos. The Estefan’s position is that this name is too similar to the name of their own business, “Bongo’s Cuban Cafe,” in Miami and Orlando. Gloria and Emilio also plan on pursuing legal action against other U.S. businesses using similar names. Marrero’s lawyer has pointed out to the federal court that the Estefans successfully defended themselves in 1998 against a lawsuit from Bongos Jeans, by arguing that the word “bongos” cannot be trademarked.
Trademark Dispute Settled Between Florida Newspapers
The Associated Press reported that a trademark dispute over the right to use the name “Tampa Bay Times” has been settled between the newspapers St. Petersburg Times and The Tampa Tribune. The trademark dispute commenced last February when the Tribune sued the Times in federal court for trademark infringement. The Times countersued, claiming that the Tribune had abandoned the mark “Tampa Times.” The Tampa Tribune uses “Tampa Bay Times” in small type on its nameplate, while the St. Petersburg Times uses it on a free publication launched in 2004. Times Publishing Company, the parent company of the St. Petersburg Times, will be allowed to continue to call its free publication “tbt/Tampa Bay Times,” under the settlement. However, it must continue to use the acronym “tbt” in type seven times larger and increase the size of the words on the publication saying “pubished by the St. Petersburg Times” or “published by the St. Pete Times.” “Tbt” must accompany “Tampa Bay Times” […]
Trademark Infringement Lawsuit filed by Singer Jimmy Buffett
According to an article in Reuters, a trademark infringement lawsuit was filed by singer Jimmy Buffett on November 13, 2006, asking a U.S. Federal Judge to put an end to a Web site operator’s infringing actions. The lawsuit was filed in United States District Court in Galveston, Texas. According to the complaint, Robert Akard is accused of operating the web site “underonehut.com,” which sells unauthorized Jimmy Buffett trademarked items. Singer Buffett had prevailed in a previous court order in Nevada that apparently was not “comprehensive enough.” Accused Akard has since surfaced in New York, Florida, and Texas. In the lawsuit, Buffett alleges that Akard advertises as “Jimmy Buffett’s Online Store for Merchandise,” selling T-shirts, music CDs, and other items that have not been authorized. The lawsuit requests that the Judge issue an order to Akard to cease and desist using Buffett’s name and likeness, account for his profits, and turn them over to Buffett and pay for unspecified damages.
Trademark Infringement Lead to Eye Injury
First Coast News reports on a Florida Intellectual Property litigation issue involving Joseph Pellegrino, a Jacksonville, Florida resident. Several years ago, Pellegrino was at a gas station on Blanding Boulevard in Orange Country Park. When he went inside to pay for his gas, he came across a pair of Oakley sunglasses retailing for $15, as opposed to the normal $200. When he tried on the sunglasses, a part of the glasses shot right into his eye, damaging his cornea. His eye bled, necessitating surgery. Pellegrino is now at risk for eye disease. Oakley has raided a number of stores in Florida to get rid of the counterfeit glasses. However, they are still out there. At one convenience store, the sunglasses retailed for only $7.99. Pellegrino is suing for fraud, deceptive and unfair trade, as well a negligence. It is a crime to sell knock-offs, which violate trademark and copyright laws. Oakley claims it has taken more than 2.8 million pairs […]