Trademark Tussle: When Elves Land on the Naughty List; Holland & Knight IP/Decode Blog, December 23, 2024

Holland & Knight IP/Decode Blog ; Trademark Tussle: When Elves Land on the Naughty List

"CCA and B LLC, the company behind the "Elf on the Shelf" book, merchandise and the joy (or angst) of children everywhere, has found itself in a legal kerfuffle with Elena Jenkins (aka Elena Popova). The complaint, filed in the U.S. District Court for the Northern District of Ohio, accuses Ms. Jenkins of willfully infringing CCA and B's ELF ON THE SHELF® trademarks and the copyrighted images of those mischievous elves without permission. On its wish list, CCA and B is asking for an injunction, monetary damages and destruction of all of Ms. Jenkins' rogue elves."

Smiley Face Cookie Company, served with cease and desist letter, fights to keep its name and design; KSDK, December 18, 2024

Tracy Hinson (KSDK), Hunter Bassler, Kelsi Anderson, KSDK; Smiley Face Cookie Company, served with cease and desist letter, fights to keep its name and design

"The bakery received a cease and desist letter from Pennsylvania in early 2016, but it was disregarded. A smiley face cookie they started baking in the 70s became the icon for the bakery's adults with disabilities job program in 2021.

"We pretty much kind of ignored that letter and just thought, 'Hey, we have precedence, so we can keep making these cookies,'" Rinaberger said. "We received a second one in 2022, never heard from the trademark owners until recently when we received an email following up from their attorneys asking what our action plans were to stop calling them smiley cookies."

In a statement to 5 On Your Side, Pennsylvania's Eat'nPark management said they own the federally registered trademarks for Smiley as it relates to cookies, and for the iconic Smiley Face design they've been using on cookies since the 1980s.

What the St. Louis company is worried about most is losing the recognition of seeing Smiley Face Cookie Company in local stores.

"One of the areas that we think we have precedence, besides us doing it before they had their trademark, is it's becoming quite generic and there are hundreds of bakeries around the United States making smile cookies and calling them either smiley face cookies or smile cookies," Rinaberger said.

And for those reasons, they aren't going to let Smiley Face Cookie Company crumble. There is a GoFundMe set up to help with the Smiley Face Cookie Company's legal expenses.

An Eat'nPark spokesperson sent the following statement to 5 On Your Side:

"McArthur’s Bakery is doing important and meaningful work, and we respect their mission. For some time, however, we had reached out to McArthur’s Bakery to engage in a conversation about our trademarks. Unfortunately, they ignored our outreach and our efforts to initiate good-faith conversations."

Buc-ee's is suing this Missouri-based liquor store for trademark infringement; Springfield News-Leader, December 3, 2024

Marta Mieze, Springfield News-Leader; Buc-ee's is suing this Missouri-based liquor store for trademark infringement

"In the lawsuit, Buc-ee's accuses Duckees of violating company's rights protected by the trademarks by adopting an allegedly similar logo and using it on clothing and retail store services featuring convenience store items. The Duckees logo includes a cartoon sunglasses-wearing duck in a green shirt and red bowtie inside of a yellow circle that appears to be printed on a bottle cap. Buc-ee's claims this logo uses "the most important aspects of the iconic Buc-ee's logo" by including a cartoon animal, a yellow circle as the background and prominent black edges for the mascot."

Starbucks just sued this weed business for copying its logo; Fast Company, July 2, 2024

 GRACE SNELLING, Fast Company; Starbucks just sued this weed business for copying its logo

"On the outside of its repurposed food truck, the NYC-based mobile marijuana retailer Starbuds Flowers features a logo that’s hard to miss. The familiar graphic shows a woman with a pointy crown and long wavy hair descending over her chest, surrounded by a green ring that contains the business name. In her right hand, the woman is puffing on what appears to be a lit blunt, while marijuana leaves frame the whole composition. The logo is clearly a parody of Starbucks’ Siren mascot—but the coffee giant isn’t laughing. 

On June 28, Starbucks filed a copyright and trademark infringement lawsuit against Starbuds in the U.S. District Court for the Southern District of New York."

DC Dubliner sues Boston pub with same name for trademark infringement, report says; Mass Live, March 17, 2023

Ryan Mancini, Mass Live; DC Dubliner sues Boston pub with same name for trademark infringement, report says

"In the tale of two Dubliners, the almost-half-century-old Washington, D.C., Dubliner pub is suing a newly opened Boston pub of the same name over trademark infringement and claiming that another pub with the same name would cause confusion, according to Universal Hub’s reporting. 

The Washington Dubliner’s suit against the East Coast Tavern Group requests that it change the Boston pub’s name and transfer its profits made under the Dubliner name to the D.C. establishment."

Bad Spaniel's: barking the line between permitted parody and trademark infringement; Reuters, February 15, 2023

Deirdre M. Wells, William H. Milliken, and Kristina Caggiano Kelly, Reuters; Bad Spaniel's: barking the line between permitted parody and trademark infringement

"The 9th Circuit ultimately vacated the district court's judgment on trademark infringement, based on the two-part Rogers test. The Rogers test was established in the 1989 2nd U.S. Circuit Court of Appeals decision in Rogers v. Grimaldi, and balances trademark and free speech rights. Under this test, a trademark can be used without authorization as long as it meets a minimal level of artistic expression and does not explicitly mislead consumers.

To overcome VIP's First Amendment right to humorous expression, Jack Daniel's was required to show that VIP's use of its trademarks is either (1) not artistically relevant to the underlying work, or (2) explicitly misleads consumers as to the source or content of the work. The trial court did not apply the Rogers test as part of its analysis...

The 9th Circuit's application of the Rogers test — which has traditionally been used for expressive works like movies, music, and books — to the commercial setting has garnered the attention of attorneys and brand owners alike. The outcome of this case has far-reaching implications for gag gifts, novelty T-shirts, and even subtler fashion products."

Adidas loses stripes row trademark battle with luxury designer Thom Browne; BBC News, January 13, 2023

Alex Binley, BBC News; Adidas loses stripes row trademark battle with luxury designer Thom Browne

"While Adidas launched legal action in 2021, the battle between the two companies dates back more than 15 years. 

In 2007, Adidas complained that Thom Browne was using a three-stripe design on jackets. Browne agreed to stop using it and added a fourth stripe.

Since then Thom Browne Inc has expanded rapidly and is now sold in more than 300 locations worldwide, and in recent years has been creating more athletics wear...

A spokesperson for Adidas said the company was disappointed but will "continue to vigilantly enforce our intellectual property, including filing any appropriate appeals".

A spokesperson for Thom Browne Inc said the company was pleased with the outcome. Speaking to the Associated Press, the designer said he hoped the case would inspire others whose work is challenged by larger companies.

"It was important to fight and tell my story," he said.

Documents used in the case showed that Adidas has launched more than 90 court battles and signed more than 200 settlement agreements since 2008 related to its trademark." 

Guns N' Roses sue online Texas gun and flower shop for trademark infringement; Entertainment Weekly, December 5, 2022

Jessica Wang, Entertainment Weekly; Guns N' Roses sue online Texas gun and flower shop for trademark infringement

"An online gun and floral shop in Texas might soon be knockin' on a courtroom door over a trademark infringement lawsuit filed on behalf of Guns N' Roses.

The rock band comprised of Axl Rose, Saul "Slash" Hudson, and Michael "Duff" McKagan filed a lawsuit Thursday against Jersey Village Florist, which operates the online shop Texas Guns and Roses, for wholesale appropriation and infringement of the Guns N' Roses name without the band's approval, license, or consent.

In the complaint obtained by EW, the band argues that the store's name is "likely to cause confusion" with the Guns N' Roses mark. It also, per the suit, "falsely suggested a connection" with the band that could "dilute" the name. The online shop has capitalized on the band's "goodwill, prestige, and fame" without permission, Guns N' Roses alleges, which has been "particularly damaging" given the nature of the business."

Hey, those are our Kisses! Hershey Co. files trademark lawsuit against cookie maker; Penn Live, September 29, 2021

  Matt Miller | mmiller@pennlive.com, Penn Live; Hey, those are our Kisses! Hershey Co. files trademark lawsuit against cookie maker

"The Hershey Company is known for ferociously defending its trademarks, especially its iconic Kisses logo.

It just launched another trademark infringement lawsuit in U.S. Middle District Court targeting a California firm it accuses of misappropriating the visage of its familiar and somewhat conical Kisses.

The defendant in the case is The Cookie Department Inc. Hershey claims that bakery is using Kisses-like images to promote products that Hershey contends are just not as sweet as its own."

'The Terrible Towel' trademark owners sue Indiana county store over 'The Terrible Mask'; WTAE, August 23, 2020

WTAE; 'The Terrible Towel' trademark owners sue Indiana county store over 'The Terrible Mask'

"The owner of The Terrible Towel's trademark is suing an Indiana County store for selling a face covering called, The Terrible Mask...

Pittsburgh sports broadcaster, Myron Cope, created the Terrible Towel. 

After Cope's death in 2008, the rights were gifted to the Allegheny Valley School Foundation, now known as the Eamon Foundation."

Lawsuit: Target's Good & Gather line infringes trademark of Georgia woman's business; USA Today, November 22, 2019

Nicquel Terry Ellis, USA Today; Lawsuit: Target's Good & Gather line infringes trademark of Georgia woman's business

"A Georgia woman has filed a federal lawsuit against Target claiming the retail giant stole her trademark when it launched its Good & Gather flagship food brand in September.

Emily Golub, founder of the Atlanta-based Garnish & Gather, said the name, logo and products sold in Target's Good & Gather line are too similar to the business name she trademarked in 2014 and could create confusion in the market."

New York Bar Sues Image Comics and Forbidden Planet For $2 Million Over Dead Rabbit Trademark; Bleeding Cool, November 20, 2018

Rich Johnston, Bleeding Cool; New York Bar Sues Image Comics and Forbidden Planet For $2 Million Over Dead Rabbit Trademark

"In May of this year, Bleeding Cool pointed out that there may be a possible problem regarding the trademark of a bar in New York, Dead Rabbit, which published its own comic books/menus, and the then-upcoming comic book Dead Rabbit, by Gerry Duggan and John McCrea, published by Image Comics, and both named after an infamous New York gang."

Honey Badger may not care, but the ‘creative genius’ who took him viral just won a big victory; The Washington Post, August 1, 2018

Antonia Farzan, The Washington Post; Honey Badger may not care, but the ‘creative genius’ who took him viral just won a big victory

"In June 2015, Gordon filed a lawsuit alleging trademark infringement. The U.S. District Court for the Central District of California granted summary judgment to the greeting card company, saying that the cards were expressive works protected by the First Amendment. Gordon appealed.

On Monday, the appeals court reversed the lower court’s decision, allowing his lawsuit to continue.

In an opinion published Monday, the three-judge panel said that Gordon’s lawsuit against Drape Creative, Inc. and Papyrus-Recycled Greetings, Inc. presents a question that should be tried before a jury: Did the greeting cards add any artistic value that would be protected by the First Amendment, or did they simply appropriate the goodwill associated with Gordon’s trademark?"

A Midwestern chain told Hawaiians to stop using ‘Aloha’ with ‘Poke,’ igniting a heated debate; The Washington Post, July 30, 2018

Eli Rosenberg, The Washington Post; A Midwestern chain told Hawaiians to stop using ‘Aloha’ with ‘Poke,’ igniting a heated debate

"The lawyers with the firm represented a company from the city, the Aloha Poke Co., that had jumped on one of the latest food trends — selling the Hawaiian staple poke, made from raw marinated ahi tuna — in 2016 and quickly expanded their reach to more than a dozen locations in Chicago and cities such as Milwaukee, Denver, and Washington, D.C.

[Jeffrey] Sampson also operated a poke shop, a luncheonette of 20 seats that he had opened with three friends in downtown Honolulu that shared little in common with the Chicago chain besides the dish and, coincidentally or not, given the commonality of the Hawaiian word, the name. When Sampson and friends opened the luncheonette about a year and a half ago, they had named it the Aloha Poke Shop, using the traditional Hawaiian greeting and word of welcoming.

Now the lawyers, with the firm Olson and Cepuritis, Ltd., were demanding that he change the business’s name, website, logo and materials to cease using the words “Aloha” and “Aloha Poke” immediately...

In a statement posted on social media, the company said that it had two federal trademarks for its logo and the words “Aloha Poke,” for any use connected to restaurants, catering and take out. It took aim at what it said was misinformation being spread about its intent, and said it was only trying to stop “trademark infringers” in the restaurant industry who used the words “aloha” and “poke” in conjunction with one another."

After trademark dispute, Voodoo Brewery relaunches Pitt-themed beer with tongue-in-cheek name; The Pittsburgh Post-Gazette, June 12, 2018

Adam Bittner, The Pittsburgh Post-Gazette; After trademark dispute, Voodoo Brewery relaunches Pitt-themed beer with tongue-in-cheek name

"The West Coast-style India Pale Ale’s original branding was scuttled just days after its seasonal distribution to coincide with football season began last fall. Pitt attorneys contacted the brewery to contest the use of university-owned marks including the Cathedral of Learning and script lettering on the packaging, and Meadville-based Voodoo promptly began stripping labels off of cans to comply."

Sweet settlement: Cookie shop trademark suit resolved; RichmondBizSense, March 29, 2018

Mike Platania, RichmondBizSense; Sweet settlement: Cookie shop trademark suit resolved

"Richmond-based Red Eye Cookie Co. earlier this month reached a settlement in trademark infringement case filed against it last year by Insomnia Cookies. Terms of the agreement were not disclosed.

Insomnia, which filed suit in Charlottesville federal court in January 2017, claimed Red Eye’s business model, logo and brand were too similar to its own. Each company offers late-night cookie delivery and their logos both feature a crescent circle."

Super Bowl Legal Blitz: Inside The NFL's Legendary Trademark Defense; Forbes, January 30, 2018

Michelle Fabio, Forbes; Super Bowl Legal Blitz: Inside The NFL's Legendary Trademark Defense

"A trademark is a "word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services." Generally, courts use a "likelihood of confusion" test to determine whether trademark infringement has occurred, i.e., whether a consumer is likely to be confused as to the source of the goods or services by the allegedly infringing usage.

Legally speaking, defending a mark is an important aspect of being a trademark owner. Besides the potential weakening and loss of distinctiveness ("dilution" in trademark speak), the failure to enforce a trademark could even lead to the forfeiture of some of the available remedies for infringement.

For this reason, multimillion-dollar companies hire professional watch services to monitor trademark use and possible infringement. And with the NFL, nothing seems to escape its notice—or legal wrath—which goes far beyond just counterfeiters.

In 2007, the NFL sent a warning letter to an Indianapolis church that had advertised a “Super Bowl” party and planned to charge admission for a viewing on a screen larger than 55-inches. The league has since loosened its policies regarding gatherings—the word “Super Bowl” and team names can be used—but still no admission fees are allowed. For churches, the event must be held in the usual place of worship as opposed to a rented space.

Notably, the logos of the NFL, the Super Bowl and the participating teams may not be used, which has led to rather hilarious if legally sound results. Take, for example, this promotional image by a Bethlehem, Pennsylvania arts campus, which features clip art, "Birds" and "Big Game," instead of official NFL logos, "Philadelphia Eagles" and "Super Bowl"..."

OUT FOR A SIP - FRIGGIN' BUDDY v COKE - OFFICIAL VIDEO; YouTube, July 11, 2017

Brendan (B.Rich) Richmond, YouTube; OUT FOR A SIP - FRIGGIN' BUDDY v COKE - OFFICIAL VIDEO 

[Kip Currier: A former student in my Copyright course at Pitt a few years ago alerted me to this Man versus Coke trademark dust-up, which BuzzFeedNews reports here.

Click here to see Friggin' Buddy's "Out For A Sip" rap "Cease-and-Desist-video-letter" to Coca-Cola Inc. FB's attorney Rob Kittredge gets in on the (civil) action too, busting out some best supporting barrister moves.]

A legal victory for the kickstarted Star Trek mashup censored by Dr Seuss's estate; BoingBoing, June 12, 2017

Cory Doctorow, BoingBoing; A legal victory for the kickstarted Star Trek mashup censored by Dr Seuss's estate

"Last October, the Dr Seuss estate used legal threats to halt a wildly successful crowdfunded Seuss/Star Trek mashup called "Oh, The Places You'll Boldly Go," whose contributors included comics legend Ty Templeton and Tribbles creator David Gerrold.

The Seuss estate argued that the book infringed its trademarks and copyrights. Now, the United States District Court for the Southern District of California court has ruled on the trademark question and found that there is no valid trademark claim thanks to "nominative fair use," and also indicated that it would be favorably disposed to fair use defenses on the copyright question.

The estate has two weeks to prove copyright damages and to amend its trademark claims."

Richmond-based Red Eye Cookie Co. gets sued over trademark issue by national cookie delivery chain; Richmond Times-Dispatch, March 1, 2017

Dean Seal, Richmond Times-Dispatch; 

Richmond-based Red Eye Cookie Co. gets sued over trademark issue by national cookie delivery chain

"Started by a University of Pennsylvania undergraduate out of his dorm room in 2003, Insomnia Cookies maintains more than 100 stores throughout the country, including locations in Richmond and Charlottesville, among others in Virginia.

According to the suit, Insomnia has used a distinctive design mark since its early days, which prominently features a crescent moon dotted with what appears to be chocolate chips, giving the impression of a cookie with a bite taken out of it.

Red Eye began in March 2014 on West Grace Street near Virginia Commonwealth University’s academic campus. It moved in August 2015 to its current location at 935 W. Grace St., roughly 240 feet from Insomnia Cookies’ own Richmond location, which opened in January 2015.

Red Eye’s logo also features a crescent moon, which is colored dark red.

Each company sells freshly baked cookies, baked goods, milk, coffee and ice cream, and both offer late-night delivery — typically to college students.

The lawsuit states that Insomnia and Red Eye “are very similar, if not identical” and continues that “the companies operate in the same markets; the companies target the same customers; the companies advertise and promote their goods and services in the same or similar media; and Red Eye is using one or more marks that feature a crescent moon design as the dominant design element of those marks.”