Dunnington Litigation Team Wins Complete Dismissal in SDNY Against Notorious TM Troll
On September 10, Judge Laura Taylor Swain dismissed trademark infringement claims brought by Michael Gleissner, one of the world’s most infamous trademark trolls, against a Hong Kong-based satellite operator in the U.S. District Court for the Southern District of New York.
Gleissner alleged that the satellite company engaged in contributory and vicarious trademark infringement for the marks FASHIONTV and FASHION TELEVISION by disseminating an allegedly infringing television channel, “Fashion TV,” through its satellite. Dunnington’s motion to dismiss filed by Raymond J. Dowd, Samuel A. Blaustein, and Hardin P. Rowley on behalf of the satellite operator, was granted for lack of personal jurisdiction.
“LOL”: Procter & Gamble Files TM Applications for Popular Textspeak Acronyms
Multi-national consumer goods corporation, The Procter & Gamble Company, has filed intent to use trademark applications for LOL, WTF, NBD, and FML for laundry detergents, liquid soap, cleaning products, and air fresheners. On July 26, the USPTO issued an Office action requesting more information about the significance of the LOL mark – specifically whether “LOL” refers to the words “laugh out loud.” P&G must respond to the Office action by late January 2019.
Hershey Creamery Claims Insurance Policy Covers Claims Based on Use of Advertising Slogans
On September 14, Hershey Creamery Co. filed a motion for summary judgment against its insurers, two Liberty Mutual companies, to defend and indemnify it in a 2014 action pending in Delaware federal court. Hershey claims that its general liability and umbrella policies cover the claims brought against it by competitor ice-cream maker F’Real Foods LLC asserting that Hershey ripped off several of F’Real’s advertising ideas, including its registered slogan “REAL MILKSHAKES ARE REAL BETTER.” The insurance policies exclude coverage for trademark infringement, except claims involving advertisements and slogans. The case is pending in the U.S. District Court for the Middle District of Pennsylvania.
Federal District Judge Rules “Ugg” is Not Generic Trademark
According to an Illinois federal judge’s ruling on September 13, Deckers Outdoor Corp., the U.S. owner of the popular Uggs brand, may sue its competitor Australian Leather Pty Ltd. for marketing its boots as “ugg boots.” The Australian company defended its use by arguing that the word “ugg” had become generic decades ago when American surfers used it to describe ugg-style sheepskin boots. In the opinion, Judge Manish S. Shah wrote that “generic usage in Australia (of the word “ugg”) is not enough on its own to infer generic meaning in the United States.”
Jacques Cousteau’s Granddaughter Sued for Using His Name and Signature Red Cap
On September 14, The Cousteau Society filed a complaint against Celine Cousteau, the granddaughter of the late world-famous oceanic explorer Jacques Cousteau, for her unauthorized use of his name, image, and iconic red cap to promote her television program, “Celine Cousteau, The Adventure Continues,” in which she revisits places her grandfather explored during his lifetime. According to the complaint, the Society, run by Cousteau’s second wife, owns Cousteau’s worldwide IP portfolio including his registered and unregistered trademarks, rights of publicity, and copyright interests. The complaint alleges trademark infringement, false association, false designation of origin, and unfair competition, and seeks a declaratory judgment that Ms. Cousteau infringed on and violated the Society’s rights. It also seeks an injunction preventing Ms. Cousteau from using his name, image, and iconic red cap, and damages. The case is pending in the U.S. District Court for the Southern District of New York.
Federal Circuit Affirms TTAB’s Decision that Sports Gear Store and Social Club Are Similar
On September 10, the Federal Circuit affirmed a TTAB decision that Detroit Athletic Co., a small sports gear retailer, could not register its name for trademark protection for sports team-related apparel because it would likely be confused with the mark DETROIT ATHLETIC CLUB registered for clothing goods. Since 1887, the Detroit Athletic Club has been operating in downtown Detroit as a private social and athletic club. Detroit Athletic Co. argued that the TTAB erred in balancing the relevant DuPont factors to determine that there would be a likelihood of confusion. According to Detroit Athletic Co., the Board “failed to consider the marks in their entireties and instead emphasized the similarity between the marks’ first two words while downplaying the differences between their terminal words.” The Federal Circuit disagreed finding that the Board did assess the marks in their entireties, and that while the words “Co.” and “Club” do differentiate the marks, the addition of those words would likely do little to prevent consumer confusion.
Former Jacksonville NFL Player Files Opposition to Team’s TM Application for “#Sacksonville”
On May 4, Yeti, LLC, the company owned by former Jacksonville Jaguar football player, Dan Skuta, filed an opposition to the team’s trademark application for the mark “#Sacksonville.” The opposition claims that Skuta created the Sacksonville name in 2015 in reference to the team’s strong defense that often tackled or “sacked” the opposing quarterback. The opposition further claims that Skuta developed exposure for the mark on social media and commercially exploited the mark in connection with selling Sacksonville branded merchandise from his website www.sacksonville.org. The Jacksonville Jaguars’ answer is due on October 12.