Seventh Circuit Describes Test for Attorney's Fee Awards

A manufacturer of infrared light therapy devices was entitled to an award of its attorney’s fees incurred in successfully defending against a Lanham Act false advertising claim brought by a provider of home health care services, the U.S. Court of Appeals in Chicago has decided. The case was “exceptional” for purposes of the fee-shifting provision […]

Nonprofit Abandoned Marks via "Naked License" to Member

An umbrella nonprofit corporation devoted to facilitating the recycling of goods (“The Freecycle Network,” or “TFN”) engaged in “naked licensing” of its trademarks by failing to establish and maintain adequate quality control standards over its licensees’ services and use of the trademarks, according to the U.S. Court of Appeals in San Francisco. TFN was deemed […]

Employee Acted in Bad Faith by Holding Domain "for Ransom"

A designer, manufacturer, and importer of men’s clothing was entitled to an award of $152,000 in damages from a former employee for violating the Anticybersquatting Consumer Protection Act, the U.S. Court of Appeals in San Francisco has held. The domain name for the designer’s website –www.eq-Italy.com –had been registered under the employee’s name. The site […]

"Satisfied Customer" Claims Could Be False Endorsements

Famous Horse, the operator of brand-name retail clothing chain V.I.M., had standing to pursue Lanham Act false endorsement, trademark infringement, and false advertising claims against wholesalers of counterfeit Rocawear jeans for falsely stating, in the course of marketing products to other clothing sellers, that the store operator was a satisfied customer, the U.S. Court of […]

Spanish Winery Barred from Using CRISTALINO on Cava

The mark CRISTALINO, as used on sparkling wine (cava) produced by a Spanish winemaker and imported into the United States by a consortium of Spanish wineries, was likely to be confused with a French winemaker’s CRISTAL marks for champagne, the federal district court in Minneapolis has determined. The Spanish winery was permanently enjoined from further […]

"Delicious" Tank Top Could Infringe Shoe Designer's Mark

A designer of footwear for young women under the mark DELICIOUS could pursue trademark infringement claims against intimate apparel retailer Victoria’s Secret in connection with a promotion in which Victoria’s Secret sold or gave away a hot pink tank top with the word “Delicious” written across the chest in a silver typescript, the U.S. Court […]

Paper Towel Supplier Could Infringe Dispenser Maker's Brands

A manufacturer of paper towels and touchless paper towel dispensers under the brand name “enMotion” could go forward with claims that a competitor engaged in contributory trademark infringement by marketing and selling to distributors an inferior paper towel product that was specifically manufactured for use in enMotion dispensers, the U.S. Court of Appeals in Richmond […]

Transfer of "Bratz" Dolls Mark Portfolio to Mattel Vacated

A federal district court erred by imposing a constructive trust over all trademarks related to the “Bratz” line of collectible dolls, essentially transferring the Bratz trademark portfolio to toy company Mattel from competitor MGA, the U.S. Court of Appeals in San Francisco has held. The transfer prohibited MGA from marketing any Bratz-related product. A designer […]

IP and Computer Law – August 2010

From the editors of Wolters Kluwer Law & Business, this update describes important developments from CCH and Aspen Publishers intellectual property and computer law publications. If you have any comments or suggestions concerning the information provided or the format used, we’d like to hear from you. Please send your comments to john.arden@wolterskluwer.com. COPYRIGHTS Restoring Copyright […]

EVISA Software Mark Likely to Dilute Famous VISA Brand

Use by a seller of language-instruction and other multilingual software of the mark EVISA and the domain name evisa.com was likely to cause dilution by blurring of credit card processor Visa International’s famous VISA mark, the U.S. Court of Appeals in San Francisco has held. Visa International was not required to produce expert testimony or […]