1H 2017 Quick Links, Part 1 (Trademarks, Keyword Ads)


* Viacom Int’l Inc v. IJR Capital Investments LLC, 2017 WL 107141 (S.D. Tex. Jan. 11, 2017): “Because “The Krusty Krab” is a recurring element of the “SpongeBob SquarePants” show, the court finds that the mark is eligible for trademark protection.” Yet Viacom apparently never marketed any actual goods or services under the “Krusty Krab” mark. Viacom did market goods and services associated with the SpongeBob Squarepants marks, but this seems like an incorrect ruling if Krusty Krabb was never promoted separately.

*  In re Driven Innovations, Inc., 2017 WL 33574 (Fed. Cir. Jan. 4, 2017): “Considering DOTBLOG as a single mark, the evidence of the definitions and the proposed existence of “.blog” generic top-level domains merely shows, at most, that the mark DOTBLOG likely would have some relation to online blogs. Mere relation, however, does not mean that a mark is descriptive.”

* Kassa v. Detroit Metro Convention & Visitors Bureau,  2017 WL 117534 (6th Cir. Jan. 12, 2017)

In his complaint, he alleges that the Detroit Metro Convention & Visitors Bureau (the “Bureau”) and the Detroit Sports Commission (the “Commission”) infringed on his trademark by using the phrase “Welcome to the D” on banners and signs hung around Detroit “to promote” the 2012 World Series and again for the 2015 Volleyball Open National Championships. This alleged infringement, he claims, caused confusion to customers and diluted the distinctiveness of his trademark. Applying our case law, the district court found that the Bureau and the Commission did not use the phrase in a trademark way, because it was a greeting and because “The D” is a common nickname for Detroit. The district court correctly applied the law, so we affirm its order.

*  Prominent GmbH v. Prominent Systems, Inc., 2017 WL 1316362 (W.D. Pa. April 10, 2017):

Plaintiffs attempt to get around this infirmity by arguing that Defendants employ metatags and search engine optimization techniques to specifically target Pennsylvania consumers searching for PROMINENT on Google or other search engines to lure them to Defendants’ websites. However, Liedtke’s declaration and supporting documentation do not show that the use of metatags and search engine optimization techniques specifically targeted Pennsylvania consumers. Rather, Liedtke states that metatags are designed to induce internet search engines to display a website more prominently than others. This statement only supports the conclusion that any consumers (nationally or globally) who enter a search inquiry containing the word “PROMINENT” will likely see Defendants’ websites listed more prominently in their search results. Exhibit 3 to Liedtke’s declaration does not support the conclusion that the use of metatags targets consumers in Pennsylvania.

* Reuters: Amazon to expand counterfeit removal program in overture to sellers

* Bloomberg: EBay Gets Hands-On in Fighting Fake Handbags With New Service. “EBay Inc. will begin authenticating luxury handbags, footwear and other commonly counterfeited fashion items this year, looking to gain an edge as shoppers become more wary of the abundance of fake goods posted to online marketplaces. The company will use a network of brand experts to verify that a Chanel handbag listed on the marketplace, for instance, is real. Sellers can pay for the authentication service to win the confidence of shoppers, or shoppers can pay for the service with EBay’s pledge that the sale will be nullified if the item is fake.”

* Reuters: Alibaba accuses IP firms of filing fake counterfeit claims

* Reuters: Grey market has become a necessary evil for luxury watchmakers

* Quartz: A Brooklyn ice cream brand increased sales by 50% after it redesigned its packaging. Trade dress FTW!

* Quartz: The secret taxonomy behind IKEA’s product names, from Billy to Poäng

Keyword Advertising

* American Cruise Lines, Inc v. HMS American Queen Steamboat Co. LLC, 2016 WL 7410781 (D. Del. Dec. 22, 2016):

Defendants’ allegation that Plaintiff used paid search terms, if proven to be true, would still fall short of establishing that Plaintiff deliberately and blatantly represented its services as coming from Defendants. There is no allegation that Plaintiff used its mark in such a way that suggests, much less represents, that Plaintiff’s services come from Defendants.

* Complaint in Schiff v Exclusive Legal Marketing, 2:17-cv-00237-MHW-KAJ (S.D. Ohio). More lawyers bring trademark and publicity rights lawsuit over keyword ads. See my article on keyword ads and lawyers.

* Travelers Property Casualty Co. v. Cannon & Dunphy, 2014 WL 12663385 (E.D. Wis. Nov. 14, 2014) (another latecomer from Westlaw). Keyword advertising defendant denied insurer’s duty to defend because the plaintiff didn’t seek compensatory damages and the insurance policy only covered “damages.” Furthermore:

Even if the underlying complaint could be considered a suit for damages because of an advertising injury, Travelers did not breach its duty to defend because the complaint falls within the “Knowing Violation” exclusion.4 This exclusion provides that there is no coverage for an advertising injury “caused by or at the direction of the insured with the knowledge that the act would violate the rights of another and would inflict ‘personal injury’ or ‘advertising injury.’ ” The underlying complaint alleges that Cannon & Dunphy’s actions were intentional, with the specific purpose of using the names Habush and Rottier for Cannon & Dunphy’s “benefit and commercial gain.” Thus, the exclusion applies because Cannon & Dunphy was attempting to lure potential customers from Habush Habush and Rottier.

Prior blog post. Related article.

Personal Names

* Cracked: How Legally Changing My Name To ‘Spider Mann’ Ruined My Life

* WSJ: It’s Really Hard to Fill in a Web Form When Your Name Is Mr. Sample