Category Archives: Infringement

Indians Acting Like Cowboys

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An interesting suit was filed on October 27 in the Norther District of Ohio by the Guardians Roller Derby team against the Cleveland Guardians Baseball Company f/k/a the Cleveland Indians. The Cleveland Indians after 105 years decided to change their name the Cleveland Guardians, and if the Complaint is to be believed, did so with full knowledge of another Cleveland sports team already using the name, the Cleveland Guardians roller derby team.

As the Complaint (Para. 20) alleges,”it is inconceivable that an organization worth more than $1B and estimated to have annual revenues of $290M+ would not at least have performed a Google search for “Cleveland Guardians” before settling on the name.”

The Complaint lays out the history of events:

While the strategy of filing in a remote jurisdiction to hide interest in a mark from prying eyes is a common one, employed by many large companies, including Apple, and not as sinister as the Complaint implies, the Indians conduct in the face of a party with superior rights seems rather cavalier — wait, no, that’s a different Cleveland team.

The Complaint alleged that “Two sports teams in the same city cannot have identical names. Major League Baseball would never permit “Chicago Cubs” lacrosse or “New York Yankees” rugby teams to operate alongside its storied baseball clubs and rightly so. Confusion would otherwise result. Imagine seeing a “New York Yankees” shirt for sale and buying it. Which team did you just support?” There are certainly problems in such a scenario, although it worked for years in St. Louis, which had both a Cardinals baseball team and a Cardinals football team. This was a special circumstance where similarly named teams, with long histories, found themselves in the same city.

No doubt this will be settled, and there will plenty of branded baseball merchandise to buy in the Forest City, and the city’s newly renamed roller derby team will be the best funded roller derby team in the country. The lesson, if there is one, is to not fall in love with a new name until after it is properly cleared.

Endless Litigation

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Bruce Brown Films, LLC, producer of the 1966 classic surfer film Endless Summer has sued Nike and assorted others for Federal Trademark Infringement, Federal Unfair Competition, Federal Trademark Dilution, Common Law Trademark for using the term Endless Summer in a marketing campaign.

Say . . . are those the new shoes from that movie from 1966?

The Nike display certainly uses the phrase “endless summer” but is not as a brand for its shoes. It is difficult to believe that anyone seeing the display believes that the shoes are somehow connected to the 1966 movie.

Nike did not do itself any favors by selecting artwork “inspired” buy the movie poster:

Section of Nike’s marketing materials (left) compared to a section of the Endless Summer movie poster (right).

However while someone might confuse the source of Nike’s artwork, would someone really going to confuse the source of Nike’s shoes?

Bruce Brown Films, LLC holds a trademark registration on ENDLESS SUMMER for athletic shoes:

But Nike’s use of endless summer is to evoke a common feeling, not identify the source of Nike shoes. it will be interesting to see how the case develops.

Use in Commerce for Infringement is Different than Use in Commerce for Registration

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In Versatop Support Systems, LLC v. Georgia Expo, Inc., [2018-1208](April 19, 2019), the Federal Circuit reversed the district court’s finding that defendant’s advertising using plaintiff’s PIPE & DRAPE 2.0™ and 2.0™ trademarks did not constitute an infringement because advertising did not constitute a use in commerce.

Federal trademark infringement requires that the infringing mark be used in commerce. Relying on the definition of use in commerce in 15 USC 1127, which requires that the mark be placed on goods or containers, the district court concluded that defendant’s use of plaintiff’s marks in these advertisements:

did not constitute infringement because the plaintiff’s marks were not actually applied to products.

The Federal Circuit made quick work of this, first pointing out that the legislative history for the use in commerce definition expressly contemplated that it did not apply to infringement: “Clearly, how-ever, use of any type will continue to be considered in an infringement action.” The Federal Circuit noted that the Ninth Circuit has recognized the distinction between “use in commerce” as a requirement for federal trademark registration—as defined in Section 1127—and infringing uses of a mark. Treatises, such as McCarthy on Trademarks and Unfair Competition likewise recognizes that Section 1127 “defines the kinds of ‘use’ needed to acquire registerable trademark rights—not to infringe them.”

The Federal Circuit concluded that contrary to this precedent, the district court in this case incorrectly applied the definition of “use in commerce” that is included in the statute for purposes of trademark registration, instructing “[t]his definition does not apply to trademark infringement.”

Turning to the likelihood of confusion, the Federal Circuit found ample evidence infringement, so it not only reversed summary judgment, but entered judgment in favor of plaintiff.

Wipe that Smile Off Your Face, Cookie

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On February 6, 2019, Eat’n Park Hospitality Group, Inc. sued Eleni’s NYC, Inc., in the Western District of Pennsylvania for infringing Eat’n Park’s registered smiley face trademark [Civil Action No. 2:19-cv-00131-MJH].



Eleni had previously licensed the smiley face from Eat’n Park, and the cookies on its website carry the registered design:

According to the Wikipedia and the Smithsonian Institution, the smiley face was created in 1963 by graphic artist Harvey Ross Ball, as a morale booster for the employees of State Mutual Life Assurance Company of Worcester, Massachusetts. The smiley, with a bright yellow background, dark oval eyes, full smile, and creases at the sides of the mouth, was imprinted on more than fifty million buttons and became familiar around the world.

While Eleni’s cookies appear to bear the registered mark, the question is whether consumers are likely to be confused. Eat’n Park has a federal trademark registration — several in fact — but they still have to prove a likelihood of confusion. Even though Eleni’s cookies use that design the answer may not be so clear, Given the ubiquity of the smilely as a decoration, and the fact that many cookies are decorated, would consumers perceive the smiley as trademark identifying the source or will they simply think it is a pretty cookie?

Given the popularity of the smiley, one would expect that Eat’n Park’s mark is very valuable, but like all trademark owners Eat’n Park needs to make sure that its mark is perceived as a mark and not merely a decoration. For this reason it is good idea for trademark owners to advertise their trademarks in addition to advertising their trademarked products.

The Eagles Sue the Hotel California (Baja) Will No Doubt Take it to the Limit

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The Eagles have sued Hotel California Baja, LLC, in the Central District of California [2:17-cv-03276] for trademark infringement.  Hotel California Baja owns a small hotel in Todos Santos, Mexico that opened in 1950 under the name Hotel California, but subsequently went through a number of name changes over the years.  The Eagles allege that to revitalize the hotel and create a reputation for it,the hotel has promoted a reputed, but false, connection to the Hotel in the famous Eagles song.  The Eagles complain that defendant runs a merchandising operation that manufactures and sells a wide variety of clothing and other merchandise featuring their HOTEL CALIFORNIA mark.  There’s not much chance that the Eagle will Take it Easy on this one.

Studios Fire Back: Fictional Publication Depicted in a Movie is Privileged Expressive Use

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Following up a previous post about the February 2017 lawsuit filed by the Sporting Times against Orion Pictures for depicting a fictional magazine title Sporting Times of the same title in a movie about the life of Bill “Spaceman” Lee, MGM has responded with a Motion to Dismiss.  Defendants argue that the use in the movie was not a trademark use, and in any even any theory of a likelihood of confusion was “too implausible to support costly litigation.”  The defendants also affirmative asserted a First Amendment bar to the Sporting Times claims, and arguing that the test from Rogers v. Grimaldi applies and the Sporting Times claims should be dismissed unless the use of the mark has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.

The Motion pointed out the burden of getting permission from every brand potentially appearing in a expressive work, such as defendants movies, and concluded:

Happily for filmmakers and their audiences (and for the creators of other expressive works), the Lanham Act does not grant trademark owners such veto power over the content of expressive works.