The Lion's Tap restaurant settled its trademark infringement lawsuit against McDonald's over the mega giant's use of the slogan "Who's Your Patty?"
"It's our trademark," said Bonnie Notermann, co-owner of the Eden Prairie restaurant, and "we will be using it."
Lion's Tap filed the lawsuit in federal court in August, claiming the slogan it had used since 2005 had been used by the company to launch its Angus burger.
A notice was filed today in Minneapolis federal court stating that the suit had been settled. "We reached a mutually satisfactory resolution," said Michael Lafeber, attorney for Lion's Tap. "I won't go into the details."
"The matter has been resolved," McDonald's said in an e-mailed statement. "Both parties reached a mutual satisfactory agreement. The terms of that agreement are considered confidential."
Notermann said she also could not go into details, other than to say that Lion's Tap -- which has a single location on Flying Cloud Drive in Eden Prairie -- is keeping the slogan and that it is not lending it or leasing it to McDonald's, the world's largest food-service retailer with more than 31,000 restaurants worldwide.
Does that mean McDonald's will stop using the slogan? "Draw your own conclusions," said Notermann.
Although neither side disclosed how much, if any, money changed hands, Lion's Tap was seeking exclusive use of the phrase and also monetary damages from McDonald's.
However, the stipulation of dismissal filed in federal court indicates the victory might not have been a roaring success financially for Lion's Tap.
"All claims ... are dismissed with prejudice and without costs and disbursements of attorney's fees to either party," Thursday's filing stated.
Lion's Tap, a Twin Cities institution among food aficionados, filed the lawsuit after its owners noticed that McDonald's was using "Who's Your Patty?" in billboards and ads in Minnesota and around the country.
The Trademark Company
Thursday, November 5, 2009
Get Up, Stand Up, Defend Your Trademark Rights
Bob Marley's heirs are waging a global war on trademark pirates.
Heirs of the Jamaican reggae legend are plunging into the global trademark wars, seeking to enforce their exclusive rights to an image that has grown steadily in scope and appeal since the Jamaican superstar died of brain cancer in 1981 at age 36.
The Marley name, look and sound are estimated to generate an estimated $600 million a year in sales of unlicensed wares. Legal sales are much smaller - just $4 million for his descendants in 2007, according to Forbes magazine. The Marleys refuse to give a figure.
Now the family has hired Toronto-based Hilco Consumer Capital to protect their rights to the brand. Hilco CEO Jamie Salter believes Marley products could be a $1 billion business in a few years.
"The family managed all the rights before Hilco was brought on board," said Marley's fourth son, Rohan - a former linebacker for the University of Miami. "We didn't have a real good grasp on the international scope prior to Hilco, nor the proper management."
The turn to big business has stirred some grousing from die-hard fans in Internet chat rooms, who say it goes against the grain of a singer who preached nonmaterialism and popularized the Rastafarian credo of oneness with nature and marijuana consumption as a sacrament. But it is doubtful that this crew will be vocal for long, after all, they need to go to the store soon to get cookie dough.
Lorna Wainwright, who manages a Kingston studio and music shop called Tuff Gong, Marley's nickname during his boyhood in a nearby slum, backed the move, saying "the world needs the Bob Marley police."
"It's a free-for-all out there with all the fakes, all the piracy," she said. "It's important to continue getting his real message out like when he was alive because the world is in a crisis and Bob Marley's lyrics provide a solution." Translation - pay the man.
Rather than focusing on street vendors, who hawk everything from Bob Marley T-shirts to beach towels, the partnership is creating a new line of products dubbed "House of Marley" and will police the trademark vigilantly.
"You're never going to stop the guys in the streets, flea markets ... but you try as much as you can," said Salter.
Snowboards and tropical Jamaica may seem an odd pairing, but they're among a wide variety of planned merchandise featuring the dreadlocked musician's image, name or message - backpacks, stationery, headphones, musical instruments, restaurants. What no, err, pipes?
Items are expected to hit the market in mid-2010.
The Trademark Company
Heirs of the Jamaican reggae legend are plunging into the global trademark wars, seeking to enforce their exclusive rights to an image that has grown steadily in scope and appeal since the Jamaican superstar died of brain cancer in 1981 at age 36.
The Marley name, look and sound are estimated to generate an estimated $600 million a year in sales of unlicensed wares. Legal sales are much smaller - just $4 million for his descendants in 2007, according to Forbes magazine. The Marleys refuse to give a figure.
Now the family has hired Toronto-based Hilco Consumer Capital to protect their rights to the brand. Hilco CEO Jamie Salter believes Marley products could be a $1 billion business in a few years.
"The family managed all the rights before Hilco was brought on board," said Marley's fourth son, Rohan - a former linebacker for the University of Miami. "We didn't have a real good grasp on the international scope prior to Hilco, nor the proper management."
The turn to big business has stirred some grousing from die-hard fans in Internet chat rooms, who say it goes against the grain of a singer who preached nonmaterialism and popularized the Rastafarian credo of oneness with nature and marijuana consumption as a sacrament. But it is doubtful that this crew will be vocal for long, after all, they need to go to the store soon to get cookie dough.
Lorna Wainwright, who manages a Kingston studio and music shop called Tuff Gong, Marley's nickname during his boyhood in a nearby slum, backed the move, saying "the world needs the Bob Marley police."
"It's a free-for-all out there with all the fakes, all the piracy," she said. "It's important to continue getting his real message out like when he was alive because the world is in a crisis and Bob Marley's lyrics provide a solution." Translation - pay the man.
Rather than focusing on street vendors, who hawk everything from Bob Marley T-shirts to beach towels, the partnership is creating a new line of products dubbed "House of Marley" and will police the trademark vigilantly.
"You're never going to stop the guys in the streets, flea markets ... but you try as much as you can," said Salter.
Snowboards and tropical Jamaica may seem an odd pairing, but they're among a wide variety of planned merchandise featuring the dreadlocked musician's image, name or message - backpacks, stationery, headphones, musical instruments, restaurants. What no, err, pipes?
Items are expected to hit the market in mid-2010.
The Trademark Company
Wednesday, October 21, 2009
Rosetta Stone: Can It Unlock the Secrets of Trademark Infringement?
Language education company Rosetta Stone Inc. and rival Topics Entertainment Inc. sued each other this week alleging trademark infringement and seeking a declaration of non-infringement over use of yellow boxes with black lettering.
Renton, Washington-based Topics Entertainment Inc. filed suit Monday in U.S. District Court for the Western District of Washington. Topics wants the court to declare its use of yellow boxes with black lettering on its language software, along with images of blue icons and smiling people, does not violate any rights held by Rosetta. It also wants the judge to declare that its use of the phrase ''As effective as Rosetta Stone for a fraction of the cost!'' is not false advertising. It also asks for attorney's fees and other costs of the suit.
The following day, Arlington, Virginia-based Rosetta filed suit in the U.S. District Court for the Eastern District of Virginia. Rosetta Stone, in turn, wants the court to hold Topics liable for infringing on its yellow-and-black boxes and for the alleged false advertising. The company wants Topics to be barred from those practices and is asking for unspecified damages.
Topics said it began using the coloring scheme on its products in 1999, five years before Rosetta began using it in 2004. Rosetta said in its suit that it began using the colors in 2004, and consumers now associate the packaging with Rosetta Stone. The company said the coloring is ''an exceptionally valuable asset'' because consumers rely upon it to identify Rosetta's products. Topics' Instant Immersion product packaging is ''confusingly similar'' to Rosetta's, it said in the suit.
Both sides said they had tried to settle the issue earlier this summer, but when that failed, they decided to file suits.
Topics Entertainment tried to explain it was first and that other companies in the same category use similar packaging, company president Greg James said in a statement. The Instant Immersion language software makes up about 25 percent of Topics' total revenue.
''We finally decided that we weren't getting anywhere and that's when we went to court to get some help,'' he said.
Rosetta Stone denies that Topics began using the yellow coloring as far back as 1999, said general counsel Michael Wu. He said the company feels Topics is trying to confuse consumers.
''Consumers have come to identify us and purchase the Rosetta Stone brand based on the style of our box and we think they're trying to free ride on the goodwill we've earned through our recognition,'' he said.
The Trademark Company
Renton, Washington-based Topics Entertainment Inc. filed suit Monday in U.S. District Court for the Western District of Washington. Topics wants the court to declare its use of yellow boxes with black lettering on its language software, along with images of blue icons and smiling people, does not violate any rights held by Rosetta. It also wants the judge to declare that its use of the phrase ''As effective as Rosetta Stone for a fraction of the cost!'' is not false advertising. It also asks for attorney's fees and other costs of the suit.
The following day, Arlington, Virginia-based Rosetta filed suit in the U.S. District Court for the Eastern District of Virginia. Rosetta Stone, in turn, wants the court to hold Topics liable for infringing on its yellow-and-black boxes and for the alleged false advertising. The company wants Topics to be barred from those practices and is asking for unspecified damages.
Topics said it began using the coloring scheme on its products in 1999, five years before Rosetta began using it in 2004. Rosetta said in its suit that it began using the colors in 2004, and consumers now associate the packaging with Rosetta Stone. The company said the coloring is ''an exceptionally valuable asset'' because consumers rely upon it to identify Rosetta's products. Topics' Instant Immersion product packaging is ''confusingly similar'' to Rosetta's, it said in the suit.
Both sides said they had tried to settle the issue earlier this summer, but when that failed, they decided to file suits.
Topics Entertainment tried to explain it was first and that other companies in the same category use similar packaging, company president Greg James said in a statement. The Instant Immersion language software makes up about 25 percent of Topics' total revenue.
''We finally decided that we weren't getting anywhere and that's when we went to court to get some help,'' he said.
Rosetta Stone denies that Topics began using the yellow coloring as far back as 1999, said general counsel Michael Wu. He said the company feels Topics is trying to confuse consumers.
''Consumers have come to identify us and purchase the Rosetta Stone brand based on the style of our box and we think they're trying to free ride on the goodwill we've earned through our recognition,'' he said.
The Trademark Company
Mischa Barton in Trademark Battle
SYDNEY, AUSTRALIA - U.S. actress Mischa Barton is reportedly embroiled in a trademark battle over the use of her name by an Australian handbag maker.
According to a report in the Daily Telegraph, Barton is attempting to trademark her name, signature and logo in Australia but Mischa Accessories in the state of Queensland is disputing her right.
Lawyers say that the Gold Coast-based handbag company opposing Barton is a reversal of the legal fight between US singer Katy Perry and Sydney fashion designer Katie Perry earlier this year.
The Sydneysider won the case but lawyers said the Gold Coast handbag firm might not be able to stop Barton's claims.
Neither Mischa Accessories manager Mervill Allen nor Barton's Melbourne-based trademark lawyers would comment on the case.
The Trademark Company
According to a report in the Daily Telegraph, Barton is attempting to trademark her name, signature and logo in Australia but Mischa Accessories in the state of Queensland is disputing her right.
Lawyers say that the Gold Coast-based handbag company opposing Barton is a reversal of the legal fight between US singer Katy Perry and Sydney fashion designer Katie Perry earlier this year.
The Sydneysider won the case but lawyers said the Gold Coast handbag firm might not be able to stop Barton's claims.
Neither Mischa Accessories manager Mervill Allen nor Barton's Melbourne-based trademark lawyers would comment on the case.
The Trademark Company
Politics as Unusual: Democrat Owens Accused of Trademark Violation
The Democrat running for New York's 23rd Congressional district is accused violating trademark rights in one of his ads.
Several media outlets are reporting that the California Milk Processor Board is taking legal action against Bill Owens' campaign for using their "Got Milk?" trademark.
In an ad Owens appeals to New York dairy farmers by asking "who's got milk money?" Owens says he'll work in Congress to rid the price manipulation of milk.
The Trademark Company
Several media outlets are reporting that the California Milk Processor Board is taking legal action against Bill Owens' campaign for using their "Got Milk?" trademark.
In an ad Owens appeals to New York dairy farmers by asking "who's got milk money?" Owens says he'll work in Congress to rid the price manipulation of milk.
The Trademark Company
Saturday, October 17, 2009
For Immediate Release: Case Update: Domainers Beware
The U.S. District Court for the Central District of California (Los Angeles) recently entered an order concerning domain names that is very important for ALL domain name holders.
In short, where a domain name holder was sued for cybersquatting and failed to respond (some report because he could not afford counsel) the judge held the domain name holder in default. Here is where it gets interesting (scary). The plaintiff could locate no other property owned by the defendant domain holder but for roughly 800 domain names by looking it up through WHOIS.
In a case we believe to be the first of its kind the judge awarded all 800 domain names to the plaintiff as part of a damages award for the defaulting defendant. In short, the judge held that the domain names, without viewing their individual worth, if any, were personal property of the defendant and thus attachable with the ability to be taken by a plaintiff even if the defendant did not show up and have his day at trial.
There is no word as to whether ICANN will weigh in on this. We believe this to be the furthest we have ever seen a judge go to assess a remedy against a domain name holder. In the past judgments had been limited to the transfer of the actual domain name at issue. Now this sets an interesting and possibly dangerous precedent for domainers throughout the world – loose one – you could loose them all!
In the past we have helped domainers to structure ownership of their domains to avoid such a possible catastrophe. While we will be reviewing our strategies in doing this we will undoubtedly keep an eye on this case and have plans in place to make sure this cannot happen to anyone who uses one of our recommended plans.
As always, if you have any questions please do not hesitate to contact us. But we just wanted to post this to let you all know to be aware!
To read more about the case see Christopher Bosh vs. Luis Zavala et al., Case 2:08-cv-04851-FMC-MAN.
The Trademark Company
In short, where a domain name holder was sued for cybersquatting and failed to respond (some report because he could not afford counsel) the judge held the domain name holder in default. Here is where it gets interesting (scary). The plaintiff could locate no other property owned by the defendant domain holder but for roughly 800 domain names by looking it up through WHOIS.
In a case we believe to be the first of its kind the judge awarded all 800 domain names to the plaintiff as part of a damages award for the defaulting defendant. In short, the judge held that the domain names, without viewing their individual worth, if any, were personal property of the defendant and thus attachable with the ability to be taken by a plaintiff even if the defendant did not show up and have his day at trial.
There is no word as to whether ICANN will weigh in on this. We believe this to be the furthest we have ever seen a judge go to assess a remedy against a domain name holder. In the past judgments had been limited to the transfer of the actual domain name at issue. Now this sets an interesting and possibly dangerous precedent for domainers throughout the world – loose one – you could loose them all!
In the past we have helped domainers to structure ownership of their domains to avoid such a possible catastrophe. While we will be reviewing our strategies in doing this we will undoubtedly keep an eye on this case and have plans in place to make sure this cannot happen to anyone who uses one of our recommended plans.
As always, if you have any questions please do not hesitate to contact us. But we just wanted to post this to let you all know to be aware!
To read more about the case see Christopher Bosh vs. Luis Zavala et al., Case 2:08-cv-04851-FMC-MAN.
The Trademark Company
Wednesday, October 14, 2009
Coach Hits the Target
Upscale bag manufacturer Coach, Inc. has sued Target alleging the mass retailer is selling handbags that infringe upon its designs.
The suit claims Target is selling handbags that are “confusingly similar” to Coach’s Ergo and Signature Patchwork lines.
Target confirmed that they are looking into the allegations. We’ll keep our eyes on this one.
The Trademark Company
The suit claims Target is selling handbags that are “confusingly similar” to Coach’s Ergo and Signature Patchwork lines.
Target confirmed that they are looking into the allegations. We’ll keep our eyes on this one.
The Trademark Company
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