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Court orders production of defendant’s entire business database in contentious trademark infringement case

Though the Federal Rules of Civil Procedure are “not meant to create a routine right of direct access to a party’s electronic information system,” a federal district court recently held that the benefits of allowing the plaintiff direct access to the defendant’s entire business database outweighed the burden of producing it. [See Advanced Tactical Ordnance Systems LLC v. Real Action Paintball Inc., No. 1:12-CV-296, Doc. 222, 2013 U.S. Dist. LEXIS 25022 (N.D. Ind. Feb. 25, 2013).] The court reasoned that the information in the database was highly relevant to the plaintiff’s claims — including the plaintiff’s contention that the defendant was using hidden “metatags” referencing the plaintiff’s trademark to drive higher search engine results for the defendant’s website and thus draw the plaintiff’s potential customers to the defendant — and that the defendant failed to demonstrate how the information in its database constituted a trade secret or how its disclosure would harm the defendant’s competitive advantage.

Plaintiff’s Claims The plaintiff, Advanced Tactical Ordnance Systems LLC (“ATO”), markets and sells irritant powder filled projectiles under the mark PepperBall®. ATO acquired the mark when it acquired all of the assets of PepperBall Technologies Inc. ATO alleges that the former Chief Operating Officer of PepperBall Technologies misappropriated the trade secrets that ATO had acquired (including powder formulas, projectile shell designs and customer lists), then conspired with another defendant, Real Action Paintball Inc. (“RAP4”), to start selling counterfeit PepperBall® projectiles around the world. ATO also alleges that the defendants misrepresented to ATO’s …

Sixth Circuit decides trademark rights in dispute arising after two asset sales involving an unregistered trademark

Stating that it “will not presume the creation of jointly owned or non-exclusively licensed trademark rights,” the Sixth Circuit Court of Appeals recently held that an individual defendant and his company did not retain any ownership rights in an unregistered trademark his company had acquired in an asset sale and then transferred in another asset sale. [See Yellowbook Inc. v. Brandeberry, No. 11-4267 (6th Cir. Feb. 27, 2013).] The Sixth Circuit reversed the district court’s finding of no trademark infringement and remanded the case to the district court to enter appropriate injunctive relief and determine damages for trademark infringement.

The Sixth Circuit’s holding reinforces the importance of:

  1. Identifying all the trademark rights being purchased and by whom in a purchase agreement
  2. Purchasing the goodwill associated with the trademark rights being purchased
  3. Researching the chain of title of the trademarks being purchased and potential claims of ownership of those marks

It also illustrates why it is recommended that businesses register their trademarks with the U.S. Patent and Trademark Office and/or at the state level to secure a presumption of ownership of a mark.…

IP Translator: The EU Trademark Case Decision’s Affect on Applications

On June 19, 2012, the Court of Justice of the European Union issued a decision in a trademark case where the applicant sought registration for IP TRANSLATOR, using a class heading of “educational services” to identify the services.  Prior to this decision, an applicant for trademark protection in the European Union could use a class heading under the Nice Agreement – which sets out classes for goods/services, each of which are designated by a class headings that covers an alphabetical list of goods or services – rather than listing each good or service in the application.…


Co-Authored By: Robert J. Morgan For those businesses that might be tempted to enjoin another’s use of a common name, be advised: you might be inviting unexpected grief.  In a “where the rubber hits the road decision,” the Cuyahoga County (Ohio) Court of Appeals ruled recently in the case of Bedford Auto Dealers Ass’n v. Mercedes Benz of North Olmsted, 2012-Ohio-927, 2012 WL 760626 (Cuyahoga App. March 8, 2012), that the relatively common term “automile” is generic and not entitled to trademark protection.…

WAGO v. Rockwell; When is a Gerund not a Gerund; Pass on Twombly/Iqbal Mandate

Think choice of grammar or poor word choice is not relevant in patent claims? Think again. Indifferent word selection nearly sunk this infringement action as well as the patent. Judge Christopher A. Boyko of the Northern District of Ohio recently tackled the difficult issue of patent indefiniteness following IPXL Holdings, L.L.C. v. Amazon. com, Inc., 430 F.3d 1377 (Fed. Circ. 2005), in the case of WAGO Verwaltungsgesellschaft MBH v. Rockwell Automation, No. 1:11-cv-00756, 2012 WL 775683 (N.D. Ohio March 7, 2012). The WAGO decision, however, is notable as much for what it didn’t address as for what it did. …

Michael Jordan Shoots in China

Remember to register transliterations as well as English versions of your trademarks in China and elsewhere.  NBA legend Michael Jordan initiated a suit in China alleging the unauthorized use of  his name by a Chinese sportswear and footwear manufacturer.  Michael Jordan became a worldwide basketball star in the 1980s and 1990s.  Qiaodan Sports Company Ltd., changed its name to "Qiaodon", the transliteration of "Jordan", in 2000.  Not only does Qiaodon use the name Jordan, it often has used Michael Jordan’s iconic number 23 and a logo which greatly resembles Nike’s “Jumpman” logo (which Nike uses on Michael Jordan related products) on its products and advertisements.

Nike registered the trademark "Jordan" (in English) in China in 1993 but failed to register the Chinese version allowing Qiaodon to register the Chinese version in 1998.  Jordan appears to have acted after all of these years because other NBA players (such as Yao Ming) have had recent victories under similar circumstances.  Things appear to be looking brighter on the intellectual property front in China.  However, you should still take Michael Jordan’s situation as a lesson/reminder to register transliterations as well as English versions of your trademarks in China and elsewhere.…

Starbucks Makes News with Logo and Mobile Payment Option

When Starbucks recently announced a change to their iconic logo, I took interest not only as an attorney specializing in trademark and advertising law, but also as a fairly regular consumer of Starbucks coffee (and, I confess, a Starbucks "Gold Level" card holder).

This article discusses issues pertinent to both and addresses some interesting theories behind the reasons and implications of logo revisions generally, as well as some thoughtful observations on the Starbucks logo change and the advantages of a wordless logo for a global marketplace.

Also, Starbucks has launched a mobile application allowing users to track the funds in their Starbucks stored value cards and to use their phones for payment—with the phone essentially taking the place of the card.  It’s a cool and useful application, and seems to be perfectly suited for its targeted audience.  I have the application downloaded and use it to track or reload my own card balance, which I am starting to find surprisingly useful.  I’ve had a mixed experience with baristas who either handle my phone or refuse to handle my phone citing company policy.  While the latter makes for a somewhat awkward counter transaction, I find it preferable.  There is something very personal about handing over my phone (as compared to a credit card or Starbucks card), and given the amount of information we carry around on our phones, it seems like a security concern—especially  if that phone is going in through a drive-through window.  In any case, this functionality perhaps brings …

Opening of .co ccTLD Draws Interest as .com Typo Variant

A country code top-level domain (ccTLD) is an Internet top-level domain generally used or reserved for a sovereign state or territory. There are currently over 270 such domain extensions— from the Ascension Island (.ac) to Zimbabwe (.zw)—delegated by the Internet Assigned Numbers Authority (IANA). A number of the world’s countries have licensed their TLDs for worldwide commercial use—usually when the TLD has coincidental alternative meanings making it especially marketable. Examples include Tuvalu and the Federated States of Micronesia, small island-states in the Pacific, sell domain names using the .tv and .fm TLDs respectively.

The .co top level domain extension is the latest ccTLD to draw interests from domain registrants not located in the country indicated by the domain extension. The .co extension, the country code top-level domain assigned to the nation of Colombia, is significant to brand owners because Internet users searching for brand owners’ Web sites frequently mistype ".com” as ".co."…