Apple Lightning Harley Davidson Trademark Deal

The LIGHTNING trademark, OHIM Reg. Nos. 011399821 and 011399862, were first issued to Harley Davidson in 2005. Recently, “Lightning” has also become the preferred moniker for Apple’s smaller, 8-pin dock connector. On or around November 22, 2012, Harley Davidson allegedly “partially transferred” trademark rights to Apple with respect to the LIGHTNING mark.

That’s great. But, what does this really mean? Well, according to the OHIM Trade Mark search database, Harley Davidson still owns trademark rights over the international classes 25, 26 and 18, while Apple now owns the rights over international classes 9 and 28. Cool. So what does this mean? Apple has exclusive rights to use the LIGHTNING mark in connection with such things as eyeglasses, eyeglass frames, goggles, audio and video equipment, recorded computer software, electric signs, toy vehicles, pinball machines, computer game programs, and “games and playthings” in general. On the other hand, Harley Davidson retains exclusive rights to use it in connection with leather and imitation leather goods, travel bags, clothing, footwear, lace, and embroidery.

All in all, this sounds like Apple took appropriate measures by seeking a partial assignment of rights over the LIGHTNING trademark. They reached out to Harley Davidson and came to an agreement as to how they could co-exist in the marketplace rather than rely on the fact that Apple and Harley Davidson would likely use the mark with respect to “different goods.”

Smart decision, Apple! Ultimately, this will avoid costly litigation and retain a good professional relationship with another well-known brand (in regards to trademark usage against Harley Davidson anyway).

Kardashian Khroma Chroma Trademark Infringement

The Kardashians already had to deal with being accused of copyright infringement with their purse line, Kardashian Kollection. Now, just last week, Chroma Makeup Studios publicly denounced the Kardashians’ upcoming makeup line “Khroma Beauty by Kourtney, Kim & Khloe.” The Chroma Makeup Studios website’s home page is currently a long letter to its loyal fans declaring that it is in no way, shape, or form associated with the Kardashians. Further, it states a little blurb about the Federal trademark law and how the founders, Lisa Casino and Michael Rey III are “taking all appropriate steps to defend its reputation and the 12 years of goodwill [they] have built under the CHROMA MAKEUP STUDIO trademark.” But are these statements enough?

Oddly, after searching the USPTO, we were unable to find any registered or currently pending applications for Chroma Makeup Studio, under its business name or its other marks in which they claim trademark rights for including Chroma Colour, Croma Makeup Studio, Colour-Purity-You. But not surprisingly, the Kardashians have filed multiple applications for variations of KHROMA BEAUTY BY KOURTNEY, KIM, & KHLOE incorporating the “Khroma” mark.

We’re not clear why Chroma has not filed any applications as far as we can tell, and we won’t speculate either. However, without a registered trademark enforcement of their mark will be a bit trickery against the Kardashian’s. With that said, the question still remains – is the Kardashian’s “KHROMA” mark likely to confuse consumers or otherwise infringe upon the “CHROMA” mark? Maybe, maybe not, that would be up to a jury to decide. But even without a registered trademark, if the Chroma Makeup Studio’s letter to its fans were true, in that their customers are already confused, it could provide a strong basis for Chroma.

But another sticky issue that Chroma may have to deal with are the other companies like Revlon that have used the term Chroma, such as, “Revlon Chroma Chameleon” and “Chroma Luminescent” (Mana Products, Inc.). Why do so many cosmetic companies use the word “chroma”? Not sure, maybe, “chroma” has to do with the quality of a color or the “saturation” of a hue? With that said, it then seems appropriate that “chroma” has been used in connection with cosmetics, hair color, and paints. So, perhaps, the Kardashians may have a defense there.

Beverly Hills Bar Association Event: Dressing Up IP: Copyright, Trademark, and Licensing Issues in the Fashion Industry

Great event at the Beverly Hills Bar Association, the program is titled: “Dressing Up IP: Copyright, Trademark, and Licensing Issues in the Fashion Industry.” The program will be on October 11, 2012 and may be attended in person, streamed live online, or viewed via the internet at a later date.

Additionally, the program offers MCLE credit: “MCLE CREDIT: This activity has been approved for Minimum Continuing Legal Education credit by the State Bar of California in the amount of 1.5 HOURS and the Beverly Hills Bar Association certifies that this activity conforms to the standards for approved prescribed by the rules and regulations of the State Bar of California governing minimum continuing legal education. “

Letter of Protest to Oppose Trademark Application

We love filing letters of protest. The Cohen IP Law Group frequently uses this lesser known trademark procedure prior to the publication period to oppose a pending trademark application that my go to issuance without having to file an actual opposition proceeding. So what is a Letter or Protest? Essentially it allows a third party to bring forth evidence ex parte that was not known to the examining attorney assigned to a particular trademark application, to let him become aware that the pending application he is reviewing should not be issued. The Letter of Protest must be filed before Publication, although in some cases you may be able to submit after publication, but it is much more difficult, and typically you would need to file an Opposition by that time.

The beauty of the Letter of Protest is that if your evidence and reasoning is convincing, the examining attorney could base an Office Action (rejection) on it that he initially would not have. As a result, time and money is saved by avoiding a tougher Opposition or Cancellation filing.

Facebook's Patent Gets Approved

One of the features that attract people to Facebook is the ability to “block” certain individuals like bosses, coworkers, and family from being able to view possibly incriminating or humiliating photos and status updates. These privacy settings are unique to Facebook and CEO Mark Zuckerberg filed a patent application back in 2006 for the function– titled as “”Dynamically generating a privacy summary.” The application said: “As social networking has grown more popular, users have realized a need for a certain amount of privacy…not every particular user wants all the other users to be able to access the information about the particular user.” So true.

After a six-year wait and multiple rejections, the U.S. Patent and Trademark Office finally approved the patent for Facebook’s privacy settings. (U.S. patent 8,225,376) The patent summarizes how the privacy setting works: “One or more privacy setting selections are received from the user associated with the profile. The profile associated with the user is updated to incorporate the one or more privacy setting selections. A privacy summary is then generated for the profile based on the one or more privacy setting selections.”

Even though Facebook now has a patent for its complex privacy setting (the patent was reportedly rejected multiple times for its Section 103 “obviousness”), you should still be careful about what you post on Facebook. There are apps such as Stalkbook, which have tried to get around Facebook’s privacy settings to allow a user to view ALL of another individual’s profile, including hidden content.

We Buy Ugly Houses Trademark Dispute

“We Buy Ugly Houses” is the trademark that HomeVestors of America, Inc. registered back in 2001. The company specializes in training franchisees to buy homes, “flip,” and resell the homes. HomeVestors has in subsequent years also registered variations on “We Buy Ugly Houses” such as “We Buy Ugly Houses And Make Them Nice Again” and a Spanish translation “Compramos Casas Feas.”

Since popularizing its slogan, HomeVestors has stayed active in enforcing protection of its federally registered trademark. This includes preventing other real-estate companies from using “We Buy Ugly Houses” or something of that sort on their websites and as a part of their domain names. In the past, HomeVestors, Inc. has succeeded in lawsuits against defendants using domain names such as www.webuyuglyhousesphoenix.com.

Most recently, HomeVestors filed a lawsuit against the House Buyer Network and its CEO Duane LeGate, Inc., which provides a similar service as HomeVestors, Inc. The complaint states that HomeVestors “is known as the WE BUY UGLY HOUSES® people and is the number one buyer of houses in the United States.”

Apparently, the dispute between the two parties stems from a settlement agreement that they entered into in 2006 “whereby LeGate transferred a number of domain names to Plaintiff and whereby LeGate agreed to stop purchasing keywords incorporating the HomeVestors” trademarks. In the lawsuit, HomeVestors claims that LeGate and House Buyers Inc. violated the agreement and infringed on its trademark by continuing to buy Internet advertising keywords that included words similar to HomeVestors’ registered trademarks.

New Boyz Trademark Infringement Lawsuit

The American rap group, New Boyz, has experienced large success in a short period of time. The New Boyz music capitalizes on catchy beats and lyrics like:

“You’re a jerk! Jerk Jerk Jerk!” and “Tell all the homies she got bunz, bunz, bunz.” Surprisingly, the group has yet to trademark its name “New Boyz.”

In the polar opposite genre of music–Christian music, an Australian band called Newsboys has been around since 1985 and remains popular with Christian music listeners. The band registered the trademark “Newsboys” in 1994. The band recently filed a trademark infringement lawsuit against the New Boyz for allegedly infringing on their trademark.

The Newsboys claim that the name “New Boyz” confuses consumers because of the similarity in sound between the two names and since the rap group also uses the name in relation to entertainment/music. Additionally, Newsboys says that the confusion created by the similar name damages the band’s reputation. The New Boyz use explicit lyrics while the Newsboys obviously use wholesome lyrics in songs such as “He Reigns” and “In Christ Alone.”

The lawsuit states that: “Plaintiff has already documented several instances of actual confusion among its customers, prospective customers and other outside observers who mistakenly assume a connection between Plaintiff and Defendant and the respective music they offer.” If a court agrees that using the name “New Boyz” creates a likelihood of confusion with the registered trademark “Newsboys,” then the rap group will have to find a new name, which may affect their recognition with fans. Then again, maybe the New Boyz are just “too cool to care.”