Whiskey Maker Has Exclusive Rights to Wax Seal Mark

Bourbon whiskey producer Maker’s Mark (“Maker’s”) has been granted a permanent injunction by the federal district court in Louisville, Kentucky, barring tequila producer Cuervo from using a red dripping wax seal on its bottles of high-end Reserva tequila sold within the United States. The wax seal mark was valid under the Lanham Act, and Cuervo’s […]

ISPs Enjoined from Hosting Counterfeiters' Websites

Internet service providers (ISPs) were liable for willful contributory trademark infringement for providing hosting services to websites that allegedly sold counterfeit goods bearing marks owned by luxury goods distributor Louis Vuitton Malletier (Vuitton), the federal district court in San Jose, California has ruled. A jury’s award of $10.5 million in statutory damages was allowed to […]

KHORAN for Wine Disparaging to Muslims, Not Registrable

An application to register the mark KHORAN for wine has been refused by a divided, augmented five-judge panel of the Trademark Trial and Appeal Board. The mark was held to be disparaging to Muslims. KHORAN was an Armenian word that was translated into English as ALTAR. The mark was the phonetic equivalent of “Koran,” the […]

University of South Carolina Cannot Register "SC" Logo

The successful opposition by University of Southern California (“Southern California”) of an application by the University of South Carolina (“South Carolina”) to register a design mark consisting of a stylized, interlocking representation of the letters “SC,” for clothing, including baseball uniforms, has been affirmed by the U.S. Court of Appeals for the Federal Circuit. The […]

Foreign Ads for Cuban Cigars Were Not Mark "Use" in U.S.

A Cuban cigar maker’s alleged advertising activities in connection with the mark GUANTANAMERA did not constitute unfair competition under Sec. 43(a) of the Lanham Act, according to the federal district court in Washington, D.C. A U.S. cigar maker seeking to register its own GUANTANAMERA mark failed to provide sufficient evidence that the Cuban company’s actions […]

Software File Extension Was Functional, Could Not Be Mark

A software company could not assert common-law trademark rights in the software file extension “.dwg” because the file extension was functional, the federal district court in San Francisco has ruled. In a prior summary judgment hearing, the company had disavowed any claims to ownership of a “.dwg” mark when used as a file extension and […]

Injunction Limits Clothing Maker's Use of ROXY Marks

The issuance of a permanent injunction barring a clothing manufacturer and wholesaler from certain uses of trademarks that were confusingly similar to a surfwear manufacturer’s QUICKSILVER ROXY and ROXY trademarks has been affirmed by the U.S. Court of Appeals in San Francisco. In a not-for-publication decision, the court limited the scope of the injunction to […]

French Court Fines Google for Digitizing French Books

After ruling that Internet giant, Google, was breaking French law with its policy of digitizing books, a Paris court on December 18 imposed a $14,300-a-day fine until Google removes the literary extracts from its search engine. Google was also ordered to pay $430,000 in damages and interest to the French publisher that brought the case […]