Entries from July 1, 2012 - July 31, 2012

"You Misappropriated My Criminal Persona!" Claim Upheld as Not Actionable

Here’s a new one.

My name is my trademark. You infringed it, because I’m an ex-drug dealing rapper. You? You’re no criminal. You even went to college! By adopting my name as your rap persona, you deceive the public into believing that you’re a criminal when you’re not. That’s infringement!

From plaintiff Ricky D. Ross’ complaint: “Plaintiff’s common law, federal trademark and ‘Rick Ross’ trade name, was infringed upon and violated by Defendant William Leonard Roberts II, who trades as, did business as and performed as the ex-drug dealing rapper named Rick Ross, fraudulently with intent to knowingly deceive the public about his true non-drug correctional and law enforcement background, and Defendants joined the scheme by bankrolling him using Roberts’ false Rick Ross name and image in commerce, which was well known in criminal, drug and law enforcement circles that Defendant Roberts either knew of, worked in, or could have learned about while in college, in the rap music culture that emulates and idolizes urban criminals and dealers, in the Black community, or from his correctional officer employment in 1996, or any time thereafter when Plaintiff was in prison, but his name was in the news.”

The Central District of California granted defendants’ motion to dismiss.

Here’s the Ninth Circuit’s July 11 holding: “Ricky D. Ross appeals pro se from the district court’s order dismissing with prejudice his federal trademark causes of action under the Lanham Act for failure to state a claim, and declining to exercise supplemental jurisdiction over Ross’s various state law claims. We have jurisdiction under 28 U.S.C. § 1291. We review de novo, and we affirm. The district court properly dismissed Ross’s trademark claims because Ross failed to state viable grounds for relief. Further, the district court properly decided the motion to dismiss without oral argument. Ross’s remaining contentions are unpersuasive.”

Ross v. Roberts, No. 10-56874, 2012 WL 2832477 (9th Cir. July 11, 2012).

Seattle's "Olympic Cab" Lucky Festivities are in London

Seattle’s “Olympic” Cab (Photo by STL) 

This time around, the Olympics are in London, not Vancouver.

Now, we caught our share of Olympic guff here in Seattle two years ago (see STL posts here and here). But here’s one trademark that wouldn’t have made the grade here in 2010, even with the festivities 100 miles away. There’s just no call for the Olympic rings, notwithstanding our proud tradition in these parts of calling most everything “Olympic” (in honor of our majestic Olympic Mountains, of course). Just ask Terri Welles (not perfectly on point, but you get the idea).

But then again, the United States Olympic Committee probably isn’t focused on these parts right about now.

Preview of "Introduction to U.S. Trademark Law" Presentation

Next Friday, I’m giving my annual “Introduction to U.S. Trademark Law” presentation to foreign patent lawyers attending the Center for the Advanced Study and Research on Intellectual Property’s Intellectual Property Summer Institute at the University of Washington School of Law.

It’s pretty basic, but that’s the point. If you’re a trademark newbie, this is a good place to get a nuts-and-bolts idea of what U.S. trademark law is all about. Now, you won’t get the benefit of my scintillating and extremely entertaining commentary (unless you attend the program), but hopefully these slides will point you in the right direction.

Note that the upload process caused some minor irregularities in formatting. No need to be distracted!

Ninth Circuit Vacates Trademark Infringement Dismissal

The Ninth Circuit decided a trademark infringement lawsuit while I was in China. It came down on June 27, but here’s a quick summary. Sorry for the delay!

Rearden LLC sued Rearden Commerce, Inc., for trademark infringement in the U.S. District Court for the Northern District of California. Rearden LLC owns technology start-up incubators and artistic production companies. Rearden Commerce is a “concierge” company that links buyers and sellers of business and travel-related services. The beef, obviously, was over the parties’ competing uses of REARDEN.

The district court granted summary judgment for Rearden Commerce.

Citing the factual nature of trademark infringement claims, the Ninth Circuit vacated the order. It’s a pretty fact-specific decision, but the court concluded that genuine issues of material fact existed with respect to both “use in commerce” and likelihood of confusion. Therefore, it found the district court’s dismissal on summary judgment was a mistake.

The court held: “There, nevertheless, are genuine issues of material fact present in this case with respect to at least some of the factors as well as the overall Sleekcraft [v. AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir.1979)] inquiry itself. The District Court acknowledged that two factors — namely the ‘strength of the mark’ and ‘similarity of the marks’ factors — weigh ‘somewhat’ in favor of Appellants. Indeed, a reasonable jury could give great weight to these two factors, especially when viewed together. We also determine that there are genuine issues of material fact with respect to the ‘proximity of the goods,’ ‘evidence of actual confusion,’ ‘marketing channels used,’ and ‘likelihood of expansion of the product lines’ factors.”

The court remanded the case to the district court for further proceedings consistent with these findings.

The case cite is Rearden LLC v. Rearden Commerce, Inc., __ F.3d __, No. 10-16665, 2012 WL 2402012 (9th Cir. June 27, 2012).

China Trademark Safari: The Final Installment

Forget about the iPad settlement.

The real news in China is KHZ’s infringement of KFC:

KHZ (top) and the original: Tongli’s new spin on fast chicken

KFC is all over China, so it’s not like another chicken joint’s calling itself “KHZ” was a coincidence. Nor was its choice of a red-and-white color scheme or use of a Colonel Sanders stand-in.

But even then, it probably wasn’t the most brazen example of infringement I saw. Anyone up for Thomas the Train Pizza?

Thomas the Train Pizza, Beijing-style

And who needs Tommy Hilfiger when you’ve got Tommy Welai? I’m sure the clothes are the same either way.

Beijing’s Tommy: Tommy Welai

Last but not least, a fake “Cheers” bar. Where everybody knows your name — assuming it’s Wong, Lee, or Cheung. Ni hao!

Cheers - Suzhou: Miles from Boston, but everyone still knows your name

It was an awesome trip. By highlighting some of the crazier instances of trademark infringement I found, I’m in no way trying to take anything away from this wonderful country. China rocks. The people are friendly, the food is good, and the subway (in Beijing, at least) costs 30 cents to ride. Who can beat that?! I plan to return as soon as possible.

Photos by STL.