Trademark Dispute USC vs. USC

The University of Southern California recently emerged victorious in an off-the-field battle with the University of South Carolina. The trademark dispute was over the use of the interlocking “SC” logo, used by both schools. A federal appeals court ruled that Southern California still has the legal ownership of the trademark logo. The two schools have locked horns over the logo since 2002, when South Carolina attempted to federally register their logo. Southern California already had a registered trademark on the interlocking letters, and asserted that the logos were too similar. The Trademark Trial and Appeal Board (TTAB) agreed, and South Carolina made a counterclaim, which it also lost.

Since that time, South Carolina has been trying to appeal the ruling. On January 19 it lost yet another round. Although the school can take legal action against certain unauthorized reproduction of the logo, trademark registration would grant them indisputable protection. The fact that they have been actively seeking a trademark for over 8 years demonstrates the importance of this legal safeguard.

University Trademarks Versus Small Business Trademark: Dakota Micro's AgCam

Dakota Micro, Inc. is a Geneseo, North Dakota manufacturer of a product called the “AgCam,” a camera that allows farmers to easily monitor farm equipment. By coincidence, students at the University of North Dakota (UND) built a camera to monitor rangeland and crops from space, and also called it the AgCam. As it turns out, UND’s camera didn’t work after it was fired into space with the shuttle Endeavor. Farmers began to doubt the quality of Dakota Micro’s cameras, thinking UND’s “Agcam” was also made by Dakota Micro.

When Dakota Micro confronted UND, and asked them to change the name of their satellite cameras, they responded by having their trademark attorneys file for their own Agcam trademark with the USPTO. But they didn’t stop there. UND is also seeking to cancel Dakota Micro’s trademark. Fortunately for Dakota Micro, they had their trademark lawyer file and obtain their trademark early on. Although Dakota Micro will have to defend itself in court, they had the foresight to register Agcam way back in 2003. Now, seven years later, as Dakota micro is hitting its stride, UND wants to put an end to them over a trademark. Many a successful business has been trounced by a trademark dispute with a bigger fish. This is another story that illustrates why it's so important for small business to regsiter their trademarks as soon as possible.

Trademarks for 2010: Clear your Trademark with a Trademark Search First

Why is it so important for you to have your trademark attorney apply for a trademark application? There are many reasons, but before I answer that question, it is even more important to conduct a trademark search first, prior to the adoption of the name you wish to use for your brand or business. Why?

Imagine you did not have your trademark lawyer conduct a search, and you just decided to use a name for your new product. Let’s say you have commenced manufacturing the product and packaging for it, so the name you picked is all over the packaging and on the product itself. Months may go by and sales may be good until one day you receive a cease and desist letter from another company that sells a similar product with the same or similar name. They are threatening you with a trademark infringement lawsuit seeking an injunction and $500,000.00 in damages. Now what? Conducting a simple inexpensive trademark search first can avoid that scenario.

Further, it should be YOU who obtains a federal trademark registrations so if necessary, YOUR attorney can send out similar cease and desist letter to enforce you brand if necessary.

Our firm conducts comprehensive and common law trademark searches all interpreted by Mr. Cohen at the standard of likelihood of confusion. He will provide you with a search report and a follow-up consultation to thoroughly explain the search results and any problematic trademark registrations and applications that already exists.

Los Angeles Trademark Lawyers for Sublime File Ex Parte Temporary Restraining Order

Looks like the long-awaited comeback of the remaining Sublime band members isn’t going to go as expected. In a preliminary injunction early this month, on November 3, 2009, Judge A. Howard Matz of the US District Court of the Central District of California granted an injunction against surviving band members, Bud Gaugh and Eric Wilson, to play publically with a new singer under the well-recognized name, “Sublime.” The Plaintiff is the estate of Bradley Nowell, the band’s now deceased lead-singer, objected to the use of “Sublime,” arguing that Wilson and Gaugh aren’t the rightful owners of the name. Judge Matz agreed with Nowell’s lawyers that Gaugh and Wilson didn’t have the right to use the name without permission from Nowell’s estate – at least until the breach-of-contract/trademark infringement civil case between the parties reaches a settlement.

The injunction arose after the surviving band members performed as “Sublime” at the Cypress Hill Smokeout festival. Both parties claim their actions are motivated as part of an effort to preserve Nowell’s legacy. It remains to be seen how the rest of this dispute will unfold.

LOS ANGELES COPYRIGHT ATTORNEY FILED LAWSUIT AGAINST CHRIS ROCK

A complaint and later filed Ex Parte Application for Temporary Restraining Order (TRO) was filed against Chris Rock and HBO to prevent the release of Rock’s film, Good Hair, in the Central District of Los Angeles. Plaintiff Regina Kimbell, has already written and produced a documentary entitled My Nappy Roots, which explores the social and cultural issues surround black hair care.

Kimbell claims that Rock invited her to the Paramount lot and asked her to bring a copy of her film with the intention helping her with it. But rather, Rock was really looking for research and help himself with his own film. Kimbell’s copyright lawyers claim copyright infringement of the work. The TRO describes a side by side analysis of the similarities of the two works, namely, the similarity of the people interviewed, and the places visited in both movies.

On October 8, 2009, the Judge denied the TRO on the basis that Kimbell’s motion was untimely and in any event lacks merit. It seem that the deciding factor was that Rock’s version was comedic and not a serious documentary. The Judge’s order states “My Nappy Roots, in contrast, takes a serious and holistic view of Black hair care throughout its history…This is nothing in the record to suggest the world of academia has accorded Rock similar status.” The Judge did however, allow Kimbell’s request for expedited discovery. So it appears for now, that Kimbell will not get her preliminary injunction, but the case will proceed on, so she is not out of the game yet. Rock’s Good Hair is slated to be released nationwide on October 23, 2009.

Annie Leibovitz Is Having Copyright Issues

Celebrity photographer Annie Leibovitz nearly lost the copyrights to her famous photography as a result of her default on a $24 million loan. Art Capital Group (“ACG”), the lender, sued Leibovitz back in July due to breach of contract of their agreement. As collateral, Leibovitz used her real estate assets and the copyright to every photograph she has ever taken.

ACG estimated that the value of her intellectual property is approximately at $40 million in addition to $40 million in her real estate.

Luckily for her, she was granted an extension to repay the $24 million and ACG seems to be in agreement and is cooperating with Ms. Leibovitz.

However, her intellectual property issues don’t stop there, earlier this month she was sued in the US Southern District of New York for copyright infringement. An Italian photographer named Paolo Pizzetti, claims that Leibovitz took the same or similar photographs as he. As the complaint states “…the water falling from the rocks is falling in exactly the same place and in the same manner in both. It is clear that the Leibovitz Defendants copies the Trevi work authored by Pizzetti and edited it by superimposing models in post production, creating an infringing derivative work.”

Hopefully she will get herself out this one so we can see more of her great work.

OPRAH TRADEMARK POWER

We have all heard the power of an Oprah Winfrey product endorsement, or the financial windfall that occurs when Oprah puts you on her booklist. So of course having Ms. Winfrey endorse or even review your product, book, or service is a coveted position by any entrepreneur. Oprah is fully aware of the power of her endorsements, so she is making sure that who she endorses must be accurate, protected, and not diluted by fakes claiming that their products were endorsed by her when they were in fact not.

So Oprah is getting tough and has filed a federal complaint against 50 firms for false association, misrepresentation, trademark infringement, and other claims. After Dr. Memhet Oz touted the benefits of acai berry products, many firms used Oprah and Dr. Oz’s name and image in their advisement creating the impression that Oprah and Dr. Oz endorsed their products when the actually did not.

The lawsuit is Oz. v. FWM Laboratories, Inc. 1:09-cv-07297-DAB; was filed in the Southern District of New York, on August 19, 2009. The complaint states "[t]hese defendants are willfully capitalizing on plaintiffs' valuable reputation and intellectual property rights to lure consumers into ordering their infringing products on the false premise that they have been tested or recommended by Ms. Winfrey and/or Dr. Oz when they have not.”

Oprah is also assisting the Illinois Attorney General in a larger array of investigations which is cracking down on acai berries dietary supplement makers. So far the Attorney General has filed three other lawsuits. Oprah’s lawsuit shows her power of branding and trademark influence.

As a Los Angeles trademark lawyer, I see also several state claims that could be included. As such, Oprah’s New York attorney included claims of trademark infringement, false endorsement, dilution, rights of privacy and publicity under New York and Illinois law, copyright infringement, false advertising under New York and Illinois Uniform Deceptive Trade Practices Act, cybersquatting (to get back various domain names that includes Oprah’s trademarks), unfair competition, and unjust enrichment. So essentially they threw in the kitchen sink of claims, and rightfully so. Oprah is keeping her name and trademarks strong by zealous and diligent enforcement.