Seattle Trademark Lawyer

Abercrombie & Fitch beat the rap.

It made fun of Jersey Shore star Michael “The Situation” Sorrentino by selling shirts that used the phrase “The Fitchuation.”

Sorrentino and his company, MPS Entertainment, sued Abercrombie for trademark infringement. Abercrombie responded that its t-shirts were not likely to cause confusion with MPS’ alleged trademark because they constituted parody.

Legally, a parody must simultaneously do two things: it must conjure up the original; and it must communicate that it is not the original. If it succeeds in doing both, it will avoid a likelihood of consumer confusion.

The U.S. District Court for the Southern District of Florida found Abercrombie met this test. It wrote: ”The undersigned agrees that A&F’s ‘The Fitchuation’ t-shirt constitutes a parody that is a play on words of a public figure — Sorrentino’s nickname, ‘The Situation,’ and ‘Fitch’… The shirt contains the defendants’ mark, ‘Fitch’ and bears the A&F brand label.” These facts, the court found, pointed against a likelihood of confusion.

The court similarly found Abercrombie wasn’t trying to profit from consumer confusion. “The target of A&F’s parody is ‘The Situation.’ The t-shirt expresses ‘The Fitchuation’ visually and phonetically different than ‘The Situation.’ There is no evidence of A&F ‘palming off’ its t-shirt as that of the plaintiffs where, as here, the t-shirt has the A&F inside label and prominently uses A&F’s own famous trademark ‘Fitch’ as part of the parody.”

Given these findings, it’s not surprising the court granted Abercrombie’s motion for summary judgment dismissing the plaintiffs’ claim for trademark infringement.

News coverage here.

Again from the New York Times, a good look at trademark infringement lawsuits involving Ivy League schools.

The article features a lawsuit Yale University recently filed against Yale Academy, a SAT test prep school. Yale Academy said it chose its name by combining the names of its owners, Mr. Yang and Ms. Lee. Oh, and the academy also used Yale University’s blue-and-white color scheme because, as Mr. Yang explained, blue was his favorite color. 

The academy will soon be known as Y2 Academy.

The article quotes a Harvard University spokesman who said the university “actively protects its name and trademarks from unauthorized use around the world, especially in those areas most important to, and most identifiable with, Harvard, such as education research.”

The reporter thought that meant Harvard Maintenance was in the clear, since its janitorial services are sufficiently different from the educational services that Harvard University provides. But not Korea’s Harvard Academy or India’s Harvard International School of Management, both of which received cease-and-desist letters from the university and agreed to change their names.

Interestingly, the article points out that no one trademark owner can have a monopoly over geographically descriptive trademarks, which limits what Princeton University (located in Princeton, New Jersey) or Columbia University (which shares its name with many cities) can do to enforce their rights.

The takeaways? If you develop a unique brand — one that points back to you alone — you can broadly assert your trademark rights against third parties that mimic your brand and your offerings. However, pick a weaker brand — like one that is descriptive — and your efforts to enforce your trademark will be much more limited.

In other words, be Yale or Harvard, not Princeton or Columbia.

NEWSBOYS and NEW BOYZ:
Similar marks for bands, but no likelihood of confusion  

Newsboys, Inc. v. Warner Music Inc., illustrates that similar marks paired with similar goods or services may not create a likelihood of confusion.

The secret is enough of a difference in the goods or services.

Plaintiff’s mark is NEWSBOYS.  Defendants’ mark is NEW BOYZ. Both marks look and sound a lot alike. And both are used in connection with live musical performances.

But plaintiff uses its mark in connection with Christian rock. And defendants use their mark in connection with hip-hop. What’s more, according to plaintiff’s complaint, defendants’ group sings “‘sexually-charged,’ ‘sexually-explicit’ lyrics.”

The Middle District of Tennessee found this difference was enough to grant the defendants’ motion to dismiss plaintiff’s complaint. The services were just too different as a matter of law for confusion to be likely.

“[G]iven the stark differences in Plaintiff’s ‘Christian-based music’ versus New Boyz’s ‘sexually-charged’ hip-hop music,” the court wrote, it is “implausible that ‘Newsboys’ and ‘New Boyz’ are likely to cause confusion in the marketplace” — despite plaintiff’s claimed evidence of actual confusion.

This finding is unusual. The court itself acknowledged that “dismissal for failure to state a claim upon which relief can be granted is appropriate in only the most extreme trademark infringement cases….”

The case cite is Newsboys, Inc. v. Warner Music Inc., No. 12-0678 (M.D. Tenn. April 19, 2013).

It’s always fun to find examples of trademark infringement when traveling. (See the last installments from China here, here, and here.)

It was harder than usual when I was in Spain. Only two examples come to mind: a knockoff of a Starbucks logo and the fairly ubiquitous “Women’Secret” lingerie stores.

Starbucks is in Spain (like everywhere else), but I’m not sure I saw any Victoria’s Secret stores. Not that I was looking.

The prize for most descriptive trademark goes to WEFIX for computer repair services.

If Spain has a trademark, it’s probably ham. Spaniards really love their ham.

I ate it every day — and I’m a vegetarian. (Ok, not much of a vegetarian when I’m overseas.) Gotta love that they keep the hooves on, so there’s no doubt where the meat came from.

Last but not least, this has nothing to do with trademark law, but certainly was memorable. Asian Tex-Mex?

I almost regret not giving it a try. Almost.

Photos by STL.

I’m not much of an insurance guy, but these cases don’t come along too often, so they’re interesting when they do: courts interpreting insurance policies as they relate to coverage for trademark infringement.

The underlying dispute arose out of a trademark infringement complaint that AcademyOne, Inc., filed against CollegeSource, Inc. AcademyOne claimed that CollegeSource had registered AcademyOne’s trademark as its domain name, which was likely to divert AcademyOne’s customers to CollegeSource’s Web site.

CollegeSource tendered a claim to its insurer, Travelers Indemnity. When Travelers denied the claim, CollegeSource sued for breach of contract.

Travelers moved for judgment on the pleadings, and the Southern District of California granted the motion. It found the underlying trademark infringement claim fell within the policy’s exclusion for “‘personal injury,’ ‘advertising injury,’ and ‘web site injury’ arising out of the unauthorized use of another’s name or product in your email address, domain name or metatag, or any other similar activities that mislead another’s potential customers.”

On appeal, the Ninth Circuit agreed. It found that “[e]ven construing the exclusion narrowly, the phrase ‘any other similar activities that mislead another’s potential customers’ can be read only as referring to activities similar to ‘unauthorized uses of another’s name or product in your e-mail address, domain name, or metatag,’ because ‘use’ is the only word in the clause which constitutes an ‘activity.’”

It also rejected CollegeSource’s contrary interpretation. “The only reasonable reading of the complaint’s allegation (that CollegeSource used AcademyOne’s domain name in its own domain name in a way likely to cause confusion in the marketplace) is that it claims injury from an activity that (1) is ‘similar to’ the unauthorized use of another’s name or product in one’s domain name, and (2) would mislead customers. We also reject CollegeSource’s argument that Travelers’s removal of a trademark infringement exclusion from the policy shows an intent to provide coverage for domain name infringement. Because the language of the Unauthorized Use exclusion is unambiguous, we do not consider drafting history or other extrinsic sources to determine the parties’ intent.”

The case cite is CollegeSource, Inc. v. Travelers Indem. Co. of Connecticut, No. 11-55708, 2013 WL 492462 (9th Cir. Feb. 11, 2013).