Jay Z's Trademark Battle with Volcom

Apparently, Orange County-based surf/skate company Volcom finds Jay Z’s Roc Nation label’s logo a little too close for comfort. The clothing designer recently filed a trademark infringement suit (Volcom Inc. (VLCM), v. Roc Nation LLC, 8:11-cv-00489-JST-FFM, U.S. District Court, Central District of California).

The suit arises over the use of an inverted “double diamond” design common to both logos. While it’s true that Volcom, Inc. has priority of use with the logo (since 1991), Roc Nation claims its logo is unique and not an infringement. According the article on Bloomberg.com, Volcom has asked Beverly Hills-based Roc Nation to cease and desist use of the logo on several occasions. One of the main issues, according to Volcom, is that its subsidiary, Volcom Entertainment, uses the logo to market music-related merchandise, and sponsor bands. Volcom, Inc. has asked to be awarded triple damages from Roc Nation, LLC

Twitter Alleges Trademark Infringement

Recently, Twitter suspended two of its affiliates Twidroid and Uber Twitter for alleged trademark infringement and privacy violations. The interesting thing is that it appears that UberMedia, the owner and operator of the third-party Twitter applications Twidroid and Uber Twitter, is buying up a roster of apps that may possibly compete with Twitter in the future. The company started as a client of Twitter that provided applications to enhance Twitter’s functions.
Carolyn Penner, official spokesperson for Twitter issued this statement, which seems to downplay the suspension:

“We ask all developers in Twitter ecosystem to abide by a simple set of rules that are in the interests of our users, as well as the health and vitality of the platform as a whole.

We often take actions to enforce these rules; in fact, on an average day we turn off more than one hundred services that violate our API rules of the road. This keeps the ecosystem fair for everyone.

Today we suspended several applications, including UberTwitter, twidroyd and UberCurrent, which have violated Twitter policies and trademarks in a variety of ways. These violations include, but aren’t limited to, a privacy issue with private Direct Messages longer than 140 characters, trademark infringement, and changing the content of users’ Tweets in order to make money.

We’ve had conversations with UberMedia, the developer of these applications, about policy violations since April 2010, when they first launched under the name TweetUp – a term commonly used by Twitter users and a trademark violation. We continue to be in contact with UberMedia and hope that they will bring the suspended applications into compliance with our policies soon.”

Social Web sites such as Twitter and Facebook will probably become increasingly aggressive in their protection of trademarks, as the market for social networking applications and services continues to diversify.

Gibson Guitar sues Paper Jamz for Trademark Infringement

In the last few years, games such as Rock Band and Guitar Hero have turned everyday Joe’s into rock stars. Following this trend, the new toy guitars called “Paper Jamz” feature pre-programmed songs that can be played with ease by pretty much anyone with two hands. Apparently some ‘real’ guitar makers aren’t too crazy about all this competition. Gibson Guitar Corp. sued Wowwee U.S.A, Inc. (makers of Paper Jamz) last month in the U.S. District Court for the Central District of California, for Trademark Infringement (Case No. 2:10-cv-08884-RGK RZ).

The toy guitars were already being sold around the country at Target, Wal-Mart, Toys-R-Us, and pretty much anywhere else toys were being sold. Gibson sued the toy makers because the shape and design of some of the toy guitars mimicked their classic designs. A temporary restraining order was filed with the suit which the court granted, and most stores actually had to remove the toy guitars from their shelves at the height of the holiday shopping season

Hard Rock Cafe Trademark Issues: Not Too Happy About Free Publicity

Among the already-raunchy assortment of reality TV shows, the new “Rehab: Party at the Hard Rock Hotel” is pushing the envelope. And the Hard Rock Cafe International, Inc. chain (a different company than Las Vegas Hard Rock Hotel & Casino) doesn’t find the debauchery very entertaining. The Hard Rock Café recently filed a law suit for trademark infringement, trademark dilution, and a variety of other charges regarding the tarnishing of Hard Rock’s image. Hard Rock Hotel is a licensee of the Hard Rock brand. But Hard Rock Café now wants to revoke that license agreement.

The case is No. 1:10cv07244-UA, filed in the United States District Court for the Southern District of New York.

According to the suit, Hard Rock Café was founded as a celebration of Rock and Roll, good times, and fun. But sexual harassment, violence and crime are not part of its credo. Apparently, TruTV has no plans for canceling, or altering the show, which it hails as a main revenue source. If Hard Rock Café wins, Hard Rock Hotel may have to change its name.

Trademark Infringement Pancakes v. Prayer

The International House of Prayer in Pasadena, along with another house of prayer in Kansas City, MO are attracting some attention – unwanted attention. International House of Pancakes, Inc. (IHOP) filed suit last week for trademark infringement. The case is No. 2:10-cv-06622-SJO, filed in the U.S. District Court for the Central District of California.

This might be a tough case for the pancake people, for a couple of reasons. First is the issue of likelihood of confusion. One organization is a light n’ fluffy breakfast food chain. The other is a small, aesthetically different house of worship. Additionally, the house of prayer in Pasadena actually uses the acronym PIHOP.

The Kansas City organization may have a tougher time, however. According to the complaint, the International House of Prayer “intended to misappropriate the fame and notoriety of the household name IHOP to help promote and make recognizable their religious organization.”

Facebook Trademark Infringement with Teachbook

You can bet social media megalith Facebook is actively scanning the horizon for would be intellectual property infringers. And a few weeks ago it found one. A new online community for teachers, called “Teachbook,” is using a similar networking platform to Facebook. Facebook fears that adding the “–book” suffix to words could create a whole plethora of networking Websites for different societal groups. This, in turn, would dilute the trademark brand.

Facebook sued for cybersquatting, trademark infringement, unfair competition, and trademark dilution in the US District Court for the Northern District of California (Case No. 5:2010cv03654). According to the complaint:

"The 'book' component of the Facebook mark has no descriptive meaning and is arbitrary and highly distinctive in the context of online communities and networking Web sites," the complaint explains. "If others could freely use 'generic plus BOOK' marks for online networking services targeted to that particular generic category of individuals, the suffix 'book' could become a generic term for 'online community/networking services' or 'social networking services.' That would dilute the distinctiveness of the Facebook marks, impairing their ability to function as unique and distinctive identifiers of Facebook's goods and services."

If the past is any indication of how this suit will go, Teachbook will may change its name. A startup online travel company called Placebook recently changed its name to TripTrace after a run-in with Facebook.

Black Sabbath Trademark Dispute: Ozzy vs. Iommi

Last year, Anthony “Tommy” Iommi, long-time guitarist for Black Sabbath, and Ozzy Osbourne got in contact with each other about the band. However, this new Black Sabbath collaboration didn’t involve any music. John “Ozzy” Osbourne sued Iommi for trademark infringement in the U.S. District Court (case no. 1:09-cv-04947)

Apparently, in 2000, Iommi filed a trademark application with the USPTO, to register the Black Sabbath trademark in his name only. Ozzy’s attorneys caught wind of this trademark hijacking, and filed suit in May of last year. According to the suit Ozzy was “the driving force behind the Black Sabbath band.” But Iommi referenced a 1980 agreement (when Ozzy originally left the band) in which Ozzy had surrendered his right to the band name. But in 1997, as part of the “Ozzfest” tour, Black Sabbath had reunited, and played for a couple years. Ozzy claimed this new arrangement superseded the 1980 agreement.

Fortunately, last week Ozzy and Iommi were able to settle the case on good terms. In the new agreement, all four original members of the band (including Geezer Butler and Bill Ward) are to share the trademark equally.

Lady Gaga Protects Her Trademark and Sues Knockoff Merchandisers

Lady Gaga started her 2010 “Monster Ball” tour with a pre-emptive trademark infringement lawsuit. In the past, non-licensed merchandise vendors were tolerated outside large concerts, so long as they didn’t interfere too much with legitimate merchandise sales. But lately, the music industry is taking greater measures to remain profitable. These cases, known as “John Doe” cases (because of the hundreds of “John Doe’s” named as defendants), are becoming more and more frequent.
Lady Gaga’s merchandise company is Bravado International, a division of Universal Music Group. The case was filed under trademark infringement, citing the Lanham Act, unfair competition, and right to publicity (Bravado International Group Merchandising Services Inc., v. John Does 1-100, 1:10-cv-04942-RJH, U.S. District Court, Southern District of New York).

The Monster Ball tour is running from July 1 until sometime next April. Bravado International is asking the court to grant permission for law enforcement to confiscate any unauthorized merchandise at any show during the tour.

Mike Tyson Trademark Fight with Michael Landrum for the Title

Most people recognize “Iron Mike” as a long-standing nickname for Mike Tyson. Apparently, there may have been a previous “Iron Mike.” Michael Wayne Landrum, a small-time L.A. boxer is suing Mike Tyson for trademark infringement to the tune of $115,000,000. The complaint was filed June 28, 2010 in the U.S. District Court, Central District of California (case no. 2:2010-cv-04795).

Michael Landrum last boxed in 1985, and included with the complaint is a document from 1996, a letter from the California State Athletic Commission, stating that his “professional ring name was Iron Mike Landrum.” Landrum is suing for Trademark Infringement, and claims to have a registered trademark with the USPTO. It’s number 66404, which doesn’t appear to be a valid trademark number.

Is Mike Tyson still using the phrase "Iron Mike"? Are there any abandonment issues. How will priority be be duked out? All questions that will likely be issues in the litigation.

Rick Ross Trademark Infringement Suit Against Def Jam and Jay-Z

Ricky Donnell Ross (or ‘Freeway’ Ricky Ross) was an L.A. drug kingpin who was arrested in 1996, and released from federal prison in May 2009. But most people know Rick Ross (sometimes Rick Ro$$) as a rapper from Miami who’s sold millions of records over the past five years or so. Both men have made fortunes, but ‘Freeway’ Ricky’s fortune was short lived – and now he wants it back. He is suing Rick Ro$$ for trademark infringement in the U.S. District Court, Central District of California (case no. 2:10-cv-04528).

Rapper Rick Ro$$’s real name is William Leonard Roberts II. He adopted his stage name after learning about Freeway Ricky’s drug empire in the eighties. According to some reports, Freeway Ricky was making as much as $3 million a day, selling cocaine in L.A. and across the country. He got his nickname after purchasing several properties along the Harbor Freeway. Freeway Ricky was arrested after he was turned in by his cocaine source, Danilo Blandon. Blandon, incidentally, was also the CIA’s contact to the contras in the Iran-Contra scandal. This connection is referenced in several contemporary rap lyrics.

Freeway Ricky is going after the whole Def Jam records group, not just William Roberts (Ro$$). The complaint names Sean Carter (Jay-Z) as former president of Def Jam, Maybach Music Group (Ro$$’s label), UMG Recordings, Inc., and Slip-n-Slide Records, among others. Adding to the spectacle, a reality TV production company, Sacred Cow Productions, Inc. (Deadliest Catch, Ice Road Truckers, etc…) announced a new 2010 show “A Year with Freeway Ricky Ross.” The show will chronicle Ricky’s attempts to regain some of his former fortune through legal means.

Freeway Ricky doesn’t actually have any registered trademarks on his name, but he claims that William Roberts’ moniker capitalized on his fame, and now he has a hard time distinguishing himself as the “real” Ricky Ross.

Dr. Dre's Trademark Cause of Action Gets Dismissed

When hip-hop label Death Row was acquired by WIDEawake in 2009, they promptly decided to re-issue some Death Row greats, most notably Dr. Dre’s 1992 album ‘The Chronic’ in the 'Re-Lit' album/DVD set. Dr. Dre was not part of the re-issue process, and quickly sued WIDEawake Entertainment Group, Inc.

In the United States District Court for the Central District of California (case no. 10cv01019), Dr. Dre sued for royalties owed, but also for trademark infringement, trademark dilution and false advertising, citing the Lanham Act, among other statutes.

But a federal judge threw out the trademark-related portions of the claim last week (with leave to amend). Judge Christina A. Snyder decided that since the original picture of Dr. Dre from the 1992 album was also used on the re-issue, no affiliation was implied. More specifically, the Order states the following:

"As to plaintiff’s allegation that defendants have used his name and likeness, including the original photograph from the jacket cover of “The Chronic,” the Court finds that these allegations fail to state a claim that defendants have over-represented plaintiff’s contribution to “Re-Lit,” given that defendants accurately identify plaintiff as the author of the original masters and that defendant used a substantially same photograph from the original album jacket cover, and did not use a current picture so to imply that plaintiff recently contributed to the re-issued album."

Dr. Dre will continue pursuing the claim for royalties owed.

Tommy Burger Trademark Infringement Family Affair

Trademarks are valuable property. Business partners, friends, and even family members can be split over trademark rights. Take the case of Original Tommy’s World Famous Hamburgers here in L.A. When the original Tommy Koulax died in 1992, he left the franchise in the hands of some of his children and relatives. According to an article in today’s Los Angeles Business Journal, one of his children is trying to start up a Tommy’s-inspired company, and apparently breaking some family ties doing it.

What made Tommy’s world famous was arguably its chili, not hamburgers. In fact, Tommy’s chili recipe is protected by a trade secret. In 2008, Tommy’s son, Tommy Koulax Jr., started an online business selling chili. “Tommy’s Original Chili Factory” received a cease and desist letter from Original Tommy’s (jointly owned by other siblings and relatives). Since then, the name has been changed to “Tommy Jr’s Chili Factory,” but the Tommy Jr. crew is still under attack. They have been sued in California Central District Court for trademark infringement and unfair competition, Tomdan Enterprises, Inc. v. Tommy’s Original Chili Factory, Inc. et al., CV 09-3960 JSL (C.D. Cal. 2009).


It may be a tough case for Tommy Jr. to win. His logo is very similar in style and color to the Original Tommy’s logo, and on his products he claims to be the “son of the originator and founder of Tommy’s World Famous Hamburgers.”

Dental Design Patent and Trademark Infringement: Discus v. Biolase

Discus Dental and Zap Lasers, makers of surgical laser instruments, and cofounded by Dr. Dorfman, notable from his ABC's Extreme Makeover show, filed a complaint in the U.S. District Court for the Central District of California against a company called Biolase, which makes an “iLase” cordless medical laser. The claims were made against Biolase after it began to market its iLase product for sale in the U.S. in March.

According to the Complaint, the issue involves Discus' product the Styla, which is a hand-held cordless soft-tissue laser device, U.S. Patent No. D587,803. Discus claims patent infringement of the design of the Styla in view of a hand-held laser device that Biolase has. The claim for trademark infringement is a bit unclear because we believe that Biolase's product is simply called "iLase".

Biolase CEO David M. Mulder recently stated that "we are very confident in the breadth of our intellectual property portfolio, and in the strength of our laser technology, and we intend to vigorously defend the Company against these allegations levied by Discus and Zap."

Biolase asserts that the suit is being made merely for the design of the unit, and not its functionality or technology.

True Blood Wine Stirring Trademark Trouble

In 2008, HBO created the hit show True Blood, which has since become the most watched show on HBO since the Sopranos. Years before the show, in 2002, TI Beverage Group created True Blood wine, and registered the trademark. TI beverage group must have found it interesting that the HBO program featured a fictional drink called Tru Blood. They weren’t amused, however, when HBO and Hot Topic paired up in 2009 to produce a drink called Tru Blood, based on the show and made from blood oranges. TI’s trademark infringement lawsuit against HBO and Hot Topic was dropped though, after the product was removed from the shelves. The suit was filed again last week, when True Blood began appearing once more at Hot Topic.

The case is reminiscent of recurring trademark litigation involving Duff beer, Homer’s beer of choice on The Simpsons. Over the years, a few different breweries, both in the states and abroad have tried to produce Duff beer, with varying degrees of success. 20th Century Fox and Matt Groening (creator of The Simpsons) have never agreed to license Duff beer, mainly because of concerns that it would encourage underage drinking. All companies that have tried to market Duff have been promptly sued for trademark infringement. The most notable case involves a brewery from Australia that produced about 10,000 cans of Duff before being shut down by 20th Century Fox. From time to time, unopened cans of Australian Duff beer sell for thousands of dollars on Ebay.

Ebay Trademark Infringment of Tiffany

New York based jeweler Tiffany & Co. have been hard hit by a ruling from last week, in a case against Ebay for trademark infringement. A district appellate court ruled that Ebay “did not engage in trademark infringement, false advertising or trademark dilution.” Apparently, Tiffany conducted research that indicated around 70% of Tiffany’s merchandise on Ebay was fake. This led to the current legal dispute, and Tiffany & Co. wants Ebay to assume responsibility for selling counterfeit merchandise.

But Ebay says they’re doing all they reasonably can to deter the sale of counterfeit goods. Selling counterfeit merchandise on Ebay is officially against the rules, but enforcing the rules is mainly up to Ebay buyers who can report suspected counterfeits. And, according to last week’s decision, it’s the individual sellers who are guilty of trademark infringement, not Ebay itself. For the last few years, rulings have been back and forth on the issue. For example, France ruled against Ebay in a similar suit last year.

Tiffany & Co chairman and chief executive officer Michael Kowalski commented:
“As an e-commerce leader, eBay has a responsibility to protect consumers and promote trust in its marketplace. eBay knew that counterfeit merchandise was being sold on its site – and eBay took no effective steps to stop it. eBay deliberately misled consumers for profit, and unfortunately, the court has justified its actions. The consumer is the real loser today."

However, Lake Forest, California-based National Trademark Investigations (NTI), offers a practical solution for consumers affected by trademark infringement. NTI recently launched the Web site “isitfake.org” as a collaborative tool for buyers to combat counterfeits. Visitors to the site can report suspected counterfeit goods anonymously on the “fake finder” and view a gallery of reported fakes.

According to Mike Santoni, president of NTI,
“Isitfake.org has been created to help combat the problem of counterfeiting in three ways. First, consumers can reach out for help determining whether an item they have purchased is legitimate branded merchandise, or a knock-off. Secondly, each time isitfake.org is able to conclusively identify and report on a counterfeit, it adds to the searchable gallery on the site as a resource for the public. And finally, it provides brand owners with a new source of information about knock-offs that they can use in their anti-counterfeiting efforts.”

M&M Trademark Infringement with Zorro

From time to time, the Mars candy company teams up with entertainment execs to market M&M’s dressed as iconic Hollywood characters. Apparently, they didn’t team up with Zorro Productions, Inc ("Zorro"). Zorro is suing Mars (and ad agency BBDO Worldwide) in the U.S. District Court of Northern California for trademark infringement, unfair business practices, and dilution under the Lanham Act.

Last fall, Mars used the famous masked character in its Halloween advertising, with a “Zorro M&M.” But Zorro, Inc., alleges that the Zorro character is protected under trademark and trade dress law, and that Zorro is famous, whether for movies, costumes, or M&M’s. It’s another reminder that when involved in the creative process, if you’re using someone else’s intellectual property, you still need their permission. Even if you’re using said property in a new and creative way.

Although, it seems that BBDO doesn’t care too much about the threat of litigation. They’ve been sued before (and lost) for the exact same thing – and M&M representation of the Times Square “Naked Cowboy.”

T.I.'s Clothingline Sued by Akoo for Trademark Infringement

Recently, Akoo Clothing, launched by rapper T.I. (real name Clifford Harris, Jr.), received considerable media attention for a sexually explicit billboard in New Jersey that was protested and subsequently taken down. The publicity stunt may have backfired though, as the billboard also got some unwanted attention from Akoo International, a social music television network.

Akoo International filed suit for trademark infringement against the clothing label Akoo, stating that they own the registered trademark and have used the name for years. Both parties operate in the music industry, and Akoo International was concerned that consumers could easily confuse the brands.

“Our primary obligation and goal is to prevent confusion among our consumers,” said Akoo International CEO Niko Drakoulis, “which is among the most basic objectives of trademark law.”

Interestingly, this is T.I.’s second suit of 2010 for intellectual property offenses. He was sued for copyright infringement in January for allegedly stealing parts of his hit song “Why You Wanna” from the 2004 song “Reverance” by Motoe Blizzid.

GM Trademark Infringement

For years, private manufacturers that made replicas of classic sports cars have been tolerated by the auto industry. They create interest and foster goodwill towards automobile brands by idolizing certain models of cars.

But according to an article in the Detroit News, GM is cracking down on one small time replica manufacturer, alleging trademark infringement. GM filed suit against Mongoose Motorsports LLC, an Ohio-based auto parts retailer and part-time manufacturer of the 1963 Corvette Grand Sport. The Grand Sport is one of the rarest and most valuable sports cars ever; only five were built. Mongoose Motorsports sells a replica Grand Sport for $90,000, while the authentic car goes for several millions at auction. But Mongoose is in no way licensed to sell the cars, and apparently enough of them are being produced to dilute the market. “This is not an homage,” said GM spokesman Tom Wilkinson.

The problem is that Mongoose is marketing exact replicas of the 1963 car, complete with trademarked Corvette logos.

AMEX Black Card Trademark Infringement

American Express’s Centurion Card, also known as the “black card” has become an iconic status symbol in American pop culture. The card has no limit and a whopping 2,500 annual fee. Introduced in 1999, the card quickly gained attention in books, rap songs, and TV shows. American Express really had a hit on their hands. But they didn’t trademark it. Visa actually owns www.blackcard.com, more recently in mid 2009, granted issuance of a registered trademark for Black Card.

Last month, Amex filed a complaint with the New York district court, alleging that Visa has:
“perpetrated a scheme to confuse the public and misappropriate for itself the enormous goodwill of the Centurion Card by launching its own, imitation “Black Card” that not only rips off the Centurion Card’s “Black Card” alias, but also, as shown below, copies the trade dress of the unique, distinctive Centurion Card. Even more brazenly, defendant (which audaciously incorporated under the name Black Card LLC and promotes its card at the website www.blackcard.com), is seeking to register a family of BLACK CARD trademarks so that it can claim the exclusive right to use that mark, which the public long has associated exclusively with the Centurion Card and American Express.”

American Express is going to be fighting an uphill battle. The term “black card” was widely used to refer to the card almost from its inception. It’s unthinkable that Amex didn’t immediately slap a trademark on it. Through the power of 1B intent to use applications, Visa was able to lock in an application in 2005 even though they didn't start using "Black Card" until 2009. AMEX will have to prove its priority of use and association of the term "black card” in the mind of consumers.

Baseball Trademark Infringement Slugout with Major League and Upper Deck Trading Cards

Last week, Major League Baseball settled a trademark infringement case against the Carlsbad, CA based trading card company, Upper Deck. Upper Deck failed to completely eliminate the MLB logo from some lines of their 2010 baseball cards.

Although Upper Deck’s 2010 baseball cards did not display MLB’s logo on any of its packaging or cards, the logo was visible in certain photos, on several of the players’ uniforms and hats. Upper Deck failed to airbrush off the logos. And yes, even a minuscule MLB logo on a player’s hat is still a trademark. Exclusive rights to a trademark mean exclusive rights.

In October of last year, rights to the MLB name and logo were given to Topps Company, Inc., Upper Deck’s main competitor.

The settlement wasn’t for small change, either. Just one specific part of the settlement, for certain 2009 misuses of the logo, was for $2.4 million dollars. In addition to that, Upper Deck must pay MLB an amount for the unlicensed cards it sold in 2010. Further, Upper Deck must get MLB's approval for any future use of baseball jerseys, pants, jackets, caps, helmets or catcher’s equipment in products featuring players.

Should’a double checked, before they hit the print button…