Brief Roundup of Three Keyword Advertising Lawsuit Developments
1) Xymogen, Inc. v. Digitalev, LLC, 2018 WL 659723 (M.D. Fla. Feb. 1, 2018). This appears to be a typical competitive keyword advertising case, with the twist that the plaintiff also alleges counterfeiting. The defendant moved to dismiss. First, the court finds jurisdiction…
Online Marketplace Not Enjoined Over Gray Market Goods Sales–Dentsply v. Net32
Dentsply Sirona is a dental supply company. They use a chain of distributors and engage in international price discrimination (i.e., goods in the US market are priced higher than in international markets). Net32 runs an e-commerce site for dental supplies that relies…
Interesting Tidbits From FTC’s Antitrust Win Against 1-800 Contacts’ Keyword Ad Restrictions
Over the course of about a decade starting in 2004, 1-800 Contacts entered into over a dozen settlement agreements with competitors, most of which mutually restricted both parties from buying keyword ads triggered to their competitor’s trademarks and sometimes requiring…
Doubling (& Tripling) Down on Trademark Protection For Secret Menu Items–In-N-Out v. Smashburger (Guest Blog Post)
by guest blogger Alexandra Jane Roberts Last week, California-based burger chain In-N-Out sued Denver-based Smashburger, alleging infringement and dilution of trademarks including DOUBLE-DOUBLE and TRIPLE TRIPLE (for, among other things, “hamburger sandwiches and cheeseburger sandwiches”). Smashburger recently applied to register…
White-on-White Trademark Usage Might Constitute Initial Interest Confusion–Agdia v. Xia
Are we really litigating trademark references in white-on-white text in 2017??? Yes, we are, and yes, the whole case is a throwback to the mid-2000s (e.g., the 2008 Venture Tape case)–with effects that would be comical if they weren’t so…
Trademark Injunction Issued Against Print-on-Demand Website–Harley Davidson v. SunFrog
The print-on-demand business is a legally risky one. As I recently blogged, in June a court ruled that Zazzle did not qualify for the DMCA 512 safe harbor. This ruling is even more troubling. Are the days of print-on-demand services…
1H 2017 Quick Links, Part 1 (Trademarks, Keyword Ads)
Trademark * 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 Registrations for Emojis
[This is another excerpt from my Emojis and the Law paper.] The Trademark Office has registered emoji trademarks. On January 20, 2017, I conducted a search in the TESS database for “emoji” and identified 385 records. At that time, most…
Google Gets Big Ninth Circuit Win That Its Eponymous Trademark Isn’t Generic–Elliott v. Google
The Ninth Circuit ruled that “Google” isn’t a generic trademark. This isn’t a surprise because a district court already reached this conclusion in 2014. See my prior blog post, “Google Successfully Defends Its Most Valuable Asset In Court.” Still, the…
1-800 Contacts Charges Higher Prices Than Its Online Competitors, But They Are OK With That–FTC v. 1-800 Contacts
As you recall, the FTC has taken the position that 1-800 Contacts’ agreement with competitors, via settlement agreements, not to bid on each other trademarks as keywords violates antitrust laws. Prior blog posts: * FTC Sues 1-800 Contacts For Restricting…