shadow

Search Essays by Category

businessaffairs

Corporate and business forms, state law compliance,employment and labor issues.

copyright

Protects original artistic works (e.g., images, patterns, etc.)

counterfeit

Preventing imitation, knockoffs, and unauthorized use of branded marks

design patent

Protects new, original, and ornamental designs (e.g., shoes)

patent

Protects new products processes, machines, compositions of matter, or improvement thereof

social media

Interactive communications and the internet (e.g., Twitter, blogs, and Facebook)

trade dress

A form of trademark including the visual appearance and packaging of a product

trademark

Words, logos, and symbols that identify and distinguish your brand's products.

other

Import/export regulations, real estate, e-commerce, retail laws, and misc



Recent Essays

Diamonds by the Yard, Silver Teardrops, and Open Hearts

By Sara Alexandre [November 24th, 2012] ADD A COMMENT

Window Shopping at Tiffany's

For some of us, window shopping was the extent of our purchase power at Tiffany’s.  But when some of Elsa Peretti’s elegant and fluid jewelry became part of Tiffany’s collection at $250 and under, even modest incomes could afford to take part in the Tiffany tradition and bring home a magnificently crafted piece in a smart robin’s egg blue box.  Alas, recent reports have revealed that Peretti and Tiffany may be parting ways, eliciting many a frustrated sigh from aspiring plebeians everywhere.  

Elsa Peretti, whose acclaimed pieces have been featured at Tiffany & Co., for nearly four decades, is attempting to end her relationship with the luxury retail jeweler, according to an U.S. Securities and Exchange Commission.

The two sides cannot agree on a price concerning Tiffany’s recent bid to purchase the intellectual property rights of Peretti, according to the 8k report filed by Tiffany in advance of its first quarter earnings report this past Thursday. In the report, Tiffany stated, “If Tiffany ceases to have an exclusive license to use the Peretti Intellectual Property…operating results may be adversely affected.”  According to the filing, Tiffany stated it, “made a firm offer to Ms. Peretti in an amount that is based upon the value of the Peretti Intellectual Property to Tiffany.”

Peretti’s jewelry accounted for a significant portion in Tiffany’s net sales, 10 percent in 2009, 2010 and 2011. Since 1974, Tiffany has been the sole licensee for the intellectual property rights (Peretti Intellectual Property); and Peretti, 72, receives a royalty for Tiffany’s use of her property rights.

Both Peretti and Tiffany & Co., can terminate the agreement with written notice, and Peretti’s counsel have intimated that the artisan may consider exercising her right to do so if both sides cannot come to an agreement.  If Peretti terminates the license agreement, Tiffany’s rights would include use of Peretti Intellectual Property rights for six months; and after the 6-month period, an additional year to sell Peretti-designed pieces it has on hand or on order.

Burberry’s Bogie Bogy

By Sara Alexandre [November 22nd, 2012] ADD A COMMENT

Burberry's Bogie Bogy

“Of all the gin joints in all the towns in all the world, she walks into mine”. No, that isn’t Rick about Ilsa, it’s Burberry about the Bogart Estate. Of all the, say, 800 million Facebook accounts in existence, a pair of peepers from the Bogart Estate happened to land on Burberry’s Facebook page, and, surprise, surprise, didn’t like what it saw. The dispute between the British mega-brand and the estate of whom the American Film Institute has called the greatest male star in the history of American Cinema, is centered on a single photo of Humphrey Bogart wearing a Burberry trench coat in the final scene of Casablanca.

On the one hand, Burberry claims that its use of the picture is legitimate, since it licensed the image from photo agency Corbis. Additionally, Burberry asserts that the picture was not used to sell merchandise, but used as part of its Facebook “timeline”, and “…intended to reflect on the long history, significance and influence of Burberry fashion in society…Burberry’s use of the image… was not directly connected to the sale of any merchandise, but rather was a historical positioning of the image within an educational project along with numerous other photographs…” (Don’t tell me you’ve never heard of Burberry University.) Therefore, Burberry maintains, its use of the Bogart picture is protected under the First Amendment to the U.S. Constitution.

On the other hand, Stephen Bogart, son of the Hollywood legend, isn’t buying it, stating “This is such an incredibly disappointing and disrespectful action by Burberry…Apparently they believe a shoe company can advertise the fact that Brad Pitt wore its brand while jogging down the street, or a beverage company can claim George Clooney drank its product in one of his movies — all without even asking, much less obtaining, the actors’ permission…Wouldn’t that be a nice, clever way to get Hollywood icons to endorse or advertise products without paying compensation or, more importantly, obtaining permission? What’s next, a cigarette company can start an advertising program claiming Bogie smoked its brand, and there’s nothing our family can do about it?”

And, just in case Stephen Bogart missed anything, the estate’s lawyer, Michael O. Crain, elaborated further on the their position,”Just as Burberry needed to obtain Emma Watson’s consent before using her name and image to promote Burberry’s brand and products, it needed to obtain permission from the Bogart Estate to use Humphrey Bogart’s name…Burberry’s business hinges on respect for its own intellectual property rights, so it is quite surprising to see that it apparently has so little respect for the clear rights of others.” Yikes.

After the Bogart Estate sent Burberry a cease and desist letter, in early May, Burberry sought a declaratory judgment from a New York federal court, which would assure that Burberry’s use of Bogart’s name and image was legal and not infringing Bogart LLC’s trademark rights or rights of publicity. Meanwhile, Bogart LLC filed a trademark infringement lawsuit in California state court in Los Angeles.

View Complaint here:

http://www.scribd.com/doc/92146247/Burberry-v-Bogart

Burberry Takes All

By Sara Alexandre [November 27th, 2012] ADD A COMMENT

Burberry Takes All

Burberry Awarded $100 Million in Fight Against Counterfeit Websites

A Manhattan Federal Court recently granted Burberry a $100 million award, ruling that a collusion between Chinese internet counterfeiters infringed upon the brand’s trademarkWWD reports, the group was found to have sold at least 22 products bearing counterfeited Burberry trademarks, including imitations of the brand’s check and its equestrian knight design. Additionally, the online stores use sophisticated technology to make the sites appear as though they were authorized retailers of Burberry.

The defendants – who ran websites including YESBURBERRYVISION.COM and BUYBURBERRY.COM – failed to answer the complaint or appear in court when summoned, resulting in the substantial damages in the complainant’s favor. The judge also granted a permanent injunction against the sites, and transferred control of the offending domain names to Burberry, which will allow Burberry to shut down the entire group of counterfeiters. Burberry won the $100 million award by default, after the counterfeiters didn’t answer Burberry’s complaint, which was filed in the US District Court for the Southern District of New York in January, and didn’t show up in court when summoned. In a statement, Burberry said it was pleased with the outcome: “Counterfeit goods area a major industry issue, impacting brands and customers alike, and we appreciate that the Court understands the importance of protecting brands against such infringements.”

Burberry, in its efforts to disable websites offering counterfeit goods, launched a website litigation program in December 2010. Burberry’s statement added, “While we have seen significant success to date, we will continue to take action against, and press for the maximum penalties to be imposed on, those engaged in this illegal criminal activity.”

Counterfeiters beware, you are In Our Sites…

By Tyler Davis [November 27th, 2012] ADD A COMMENT

Top Level Domains

The Department of Justice (DOJ) seized over $1.5 million in proceeds from the distribution and sale of counterfeit sports apparel on illegal commercial websites. In addition to this seized capital, the DOJ seized three domain names. Counterfeit apparel plagues any brand owner and robs the purchaser of quality goods. The online policing necessary to protect a brand and its purchasers is costly and time consuming. US law enforcement has risen to the challenge to assist brand owners and authorized producers of these goods. In-house methods are not always sufficient, and counsel should take advantage of government initiatives to combat this counterfeit and online infringement.

This most recent seizure is a result of the continued and successful efforts by the Immigration and Customs Enforcement, Office of Homeland Security Investigations, operation dubbed “In Our Sites.”  To date, this operation has taken down over 750 domain names used in the sale and distribution of illegal copyright and counterfeit goods.

“The seizures we are announcing today are another step forward in our efforts to disrupt and disable those engaged in intellectual property crime,” said Assistant Attorney General Breuer.  “By seizing the domain names and profits of online counterfeit goods operations, we are protecting consumers and sending a message to criminals that we will use every tool at our disposal to stop them.”

After the goods were purchased, to authenticate them as counterfeit, a US Magistrate Judge in the US District Court for the District of Columbia authorized warrants for the three domain names used to distribute the apparel.

ICE Director Morton stated “Operation In Our Sites and the tireless work of the National Intellectual Property Rights Coordination Center protect consumers from fraud on the Internet and combat intellectual property theft which exacts a toll on our economy and industries.” This is one of the efforts by a DOJ task force on intellectual property protection. Brand managers can rest assured that the burden will not fall completely on them to police the internet for infringing goods and counterfeits.

According to the DOJ website, the “The IP Task Force seeks to strengthen intellectual property rights protection through heightened criminal and civil enforcement, greater coordination among federal, state and local law enforcement partners, and increased focus on international enforcement efforts, including reinforcing relationships with key foreign partners and U.S. industry leaders.”

We all need a little help from our friends, and in this case, it is a joint task force of government agencies, protecting both consumers and brand owners. Operation “In Our Sites” is now in our sites, and we thank you.

The Fashion Industry Underutilizes Design Patents

By Khalil El Assaad [January 30th, 2012] ADD A COMMENT

Deisgn Patent

Design Patents are underutilized in the Fashion Industry. While many in the Industry intellectually understand that Design Patents protect unique fashion designs (e.g. for clothing and accessories), they nevertheless seem to prefer Intellectual Property protection based on copyright, trademark, and trade dress, leaving Design Patents underutilized. This is because, like Urban Myths, there lingers in some corners of the Fashion Industry three outdated beliefs about Design Patents, i.e.: (i) Design Patent applications take so long to process they aren’t useful by the time they issue; (ii) Design Patents are expensive; and (iii) Design Patents are difficult to enforce. This blog note will demonstrate why the three (3) preceding beliefs are no longer true, state three (3) up-to-date beliefs that are true, and end by encouraging use of Design Patents.

Here are three up-to-date truths about Design Patents:

(1) Design Patents are often quickly obtainable

While Utility Patents usually take two, three or more years to be obtained, Design Patents can be obtained relatively quickly. Indeed, for the last two years, over half of Design Patent applications issued as Design Patents within one year of the application filing date. What’s more, techniques exist which enable knowledgeable patent counsel to have some Design Patent applications allowed more quickly than average.

(2) Design Patents are relatively inexpensive, and can be quite cost-effective

The average initial cost of preparing and filing a simple Design Patent is estimated to be between two and five thousand dollars (depending on design complexity); this is inexpensive relative to many common necessary business expenditures. While the investment in a Design Patent may not be warranted for every item, a consultation with qualified Patent Counsel will show that a Design Patent application is a worthwhile investment for many, if not all, items. And once the investment is made, and a Design Patent has been obtained, no further payments are necessary; unlike Utility Patents, Design Patents don’t require periodic payment post-issuance “maintenance fees” to remain in effect.

(3) Design Patents are straightforwardly enforceable. (‘Now more than ever’).

In the not-so-distant past (before 2008’s “Egyptian Goddess” decision) (Egyptian Goddess, Inc. v. Swisa, Inc., (Fed. Cir. 2008), proving Design Patent Infringement was more difficult than it is today. Suffice it to say that, nowadays, proving Design Patent Infringement essentially requires only proving that the two designs (i.e. the design covered by the Design Patent and the design accused of infringing the Design Patent), taken as a whole, are substantially similar such that an ordinary observer (e.g., the consumer) would be deceived to purchase one design believing it to be the other. Thus, nowadays, an issued Design Patent is less of an abstract threat, and more of a practical deterrent to would-be copiers, than it was in the not-so-distant past. (Indeed, even before the Design Patent issues, merely applying for it enables one to mark items as “Patent Pending”; this marking alone has a deterrent effect on would-becopiers).

Future blog posts will further elaborate on the advantages provided by Design Patents. For now, however, the author trusts that this post has achieved its goal of convincing the reader that: (1) Design Patents are often quickly obtainable; (2) Design Patents are relatively inexpensive, and can be quite cost-effective; and (3) Design Patents are straightforwardly enforceable, and deter others from copying, thereby preventing the holder of the Design Patent from losing revenue to those who would have engaged in copying but for the existence of the Design Patent. Thus, Design Patents increase the bottom line of their owners.


Joseph F. Murphy, Jr. is currently a Registered Patent Attorney, and Chairs the Fashion Law Subcommittee of the New York County Lawyers Association (NYCLA). He is a 1992 graduate of the IP-focused Franklin Pierce Law Center, which has since become the Law School of the University of New Hampshire. He is a 1987 graduate of Marquette University, where he obtained a B.S. in Electrical Engineering. His past academic work includes guest lecturing on Fashion Law at the Fashion Institute of Technology, and teaching “Valuation of Intellectual Property” at NYU as an adjunct Professor. He is the Managing Editor at www.fashionlawcenter.com ; his law practice is described at www.joemurphy.com.

Paris Hilton Has Another Lawsuit On Her Hands- Or Shall We Say “Wrist”

By Melanie Perez [December 1st, 2011] ADD A COMMENT

Paris Hilton

Some will say Paris Hilton is a trademark-licensing phenomenon by lending her name to a wide range of products from perfumes to shoes to her most recent endeavor-watches. However, this latest endeavor has become very problematic for the heiress. According to Perez Hilton, fine jewelry and watch designer de Grisogono has filed suit against Paris Hilton Entertainment alleging patent infringement of one of their watch designs. The particular watch has been sold by the company since 2007 and is named “Novantatre” which is Italian for “93” referring to the prominently seen “9” and “3” on the watch’s face. According to IPtrademarkattorney.com, de Grisogono applied for and was granted U.S. Patent Nos. D596,052 (“the ‘052 patent”) and D627,673 (“the ‘673 patent”) to protect their design. The ‘673 patent relates to the ornamental design of the watch dial, including the particular positioning of the “9” and “3” on the face of the watch. The ‘052 patent on the other hand, covers the square-shaped design of the watch. De Grisogono is accusing the Paris Hilton-branded “Coussin” watch of copying those same protected design elements that are covered by the two patents.

Paris Hilton Entertainment is not the only named defendant in the case. In addition, de Grisogono is suing the manufacturer Parlux as the exclusive licensee of the Paris Hilton trademark used on the watch, and Crossbow International and Mr. Pascal Savoy because they have possession and/or control of the websites where the “Coussin” watches are sold. In the 9th Circuit’s recent Louis Vuitton v. Akanoc Solutions case, the Court reaffirmed a web host’s liability for failing to close down websites that were selling counterfeit goods. The web hosts were held to be jointly liable with the website operators selling counterfeit goods that infringed Louis Vuitton’s trademarks and copyrights which could possibly be extended to cover the particulars of this case.

According to de Grisogono, several cease and desist letters sent to the defendants were ignored and they therefore allege that the infringement is willful and intentional. They are not only seeking disgorgement of defendant’s profits under 35 U.S.C. § 289 but also for the court to triple the award under 35 U.S.C. § 284. We will have to wait and see what the court makes of this new lawsuit Paris Hilton has on her hands- or should we say “wrist!”

 

Ready or Not: 3-D Printing

By Tracy Weinstein [October 7th, 2013] ADD A COMMENT

3-D Printing Picture

Technology, technology, technology. It is all we hear and read about, and whether we like it or not, technology is rapidly altering the world around us. Some are completely intrigued by it and some begrudgingly adapt to it in fear of falling behind the rest of society. Now you are probably wondering what technology advancement has to do with fashion law, and on the surface it may seem that technology does not directly affect the fashion industry. However, technology developments such as 3-D printing do affect retail products in ways that lie deeper than the surface of the finished products.

The 3-D printing process, originally developed in 1984, is used in architecture, construction, civil engineering, the military, dental and medical industries, biotech, and fashion. The jist of the process goes like this: the printer reads the design from an .stl file and lays down successive layers of liquid, powder, paper, or sheet material and builds the model from a series of cross sections.

So what implications does 3-D printing have on the fashion industry? For companies such as Nike and Adidas this printing has reduced the amount of technicians and time it takes to create prototypes (the preliminary models used to test and develop the final product). These models, which used to take 4-6 weeks to complete, now take about 48 hours. The Vapor Leash Talon is Nike’s upcoming cleat, created specifically for football players competing and training for the 40-yard dash. It only took Nike six months to go through 12 rounds of prototype iterations and make significant improvements.[1] Of course this is a great way to save time and money for the companies, but not so good for employees who are now more easily replaced by the printers.

Jewelers are beginning to reap the benefits of 3-D printing in another way. Carter Lee, a jeweler in Chicago knows that the jewelry business has never been an easy undertaking since most customers are loyal to their own jewelers, which makes it hard to expand a customer base unless you offer something unique. However, he can now create rare charms using 3-D printing. This new method outshines the previous subtractive manufacturing methods used to make charms because it can create a single, unbroken object in one pass, which saves time, material, and labor. For example, a fellow jeweler’s wish of a fortune cookie charm was easily granted despite the folded geometry intricacies of such a design.

The fashion industry’s most immediate problem that has arisen from 3-D printing’s growing popularity is undoubtedly patent infringement. The ability to print objects or tools gives rivals the capability to capitalize on exploding trends while they are still hot. For instance, this summer you may have noticed children all over (and adults – myself included) wearing colorfully patterned bracelets made from small rubber bands. Kids use a loom to create the designs and a special C-shaped clasp connects the final product. The original creator of this craft has recently sued another company for trade dress infringement of the C clasp. Besides trade dress infringement other patent owners of fad products have expressed similar fears that 3-D printing will create a fast and easy way for others to illegally get in the game. The printing process would allow them to create the protected intellectual property used to produce the final product. The efficiency of the printing would allow them to get in the business while the trend is still popular, taking much business away from those who honestly worked to design, create, and produce the item.

Since 3-D printing is just recently starting to get popular, we will have to wait and see how it all plays out. With the pace of technology’s growth, my guess is that we should not be waiting too long.



[1] Actual cleats and shoes have yet to be produced by 3-D printing.

Commerce Report Focuses on IP and US Economy

By Catherine Kim [June 6th, 2012] ADD A COMMENT

On April 11, 2012, the Department of Commerce released a report that focused on the broad range of industries that benefit from IP, both directly and indirectly. According to Law of Fashion, ‘the report will be used as a tool to help press for intellectual protections in trade negotiations and provide supporting data for the administration’s new International Trade Enforcement Agency, which could bring cases against countries where counterfeiting and digital piracy is rampant.” IP is a key component in our economic growth. It comes as no surprise that IP-intensive industries support the jobs of approximately 40 million workers because the impact of copyright, trademark, and patent protection is inevitably enormous. The Obama Administration’s focus on promoting innovation can trigger a successful, competitive, international market, and by enforcing and protecting IP rights, these IP related industries can continue to support these jobs and contribute to about $5 trillion to U.S. domestic product. The report summary stated, “Without this framework, the creators of intellectual property would tend to lose the economic fruits of their own work, thereby undermining the incentives to undertake the investments necessary to develop the IP in the first place.” Within our Case Clothesed blog, we have seen countless numbers of lawsuits in the fashion industry where creators of IP fight to protect their work so that others cannot benefit off a work that isn’t theirs.

The report identified some of the most IP-intensive industries that use copyright, trademark, and patent protections the most extensively. Electronic shopping & mail-order houses, footwear manufacturing, and clothing stores were among the top trademark-intensive industries with top 100 global brands in 2011. It is clear that the fashion industry thrives off of innovation and incentives to invent and create. While the fashion world is only a mere portion of the IP market, this report puts into perspective just how much IP protection affects commerce throughout the economy.

The full report can be found here.

War of the…Trade Secrets?

By Ariana Lo Giudice [March 26th, 2013] ADD A COMMENT

Burches

The four-month legal saga between fashion mogul Tory Burch and her ex-husband Christopher Burch ended in early January with settlement talks. Although we will not get a chance to see this fashion-inspired “war of the roses” play out in court, there is certainly a legal lesson or two to be learned from this battle of the brands.

Women’s Wear Daily (WWD) followed the Burch Battle quite closely, beginning in early October 2012 when Christopher filed suit against his ex-wife for breach of contract and tortious interference. However, WWD hinted back in February 2012 that Tory Burch was contemplating a lawsuit against her ex-husband for either “…trade dress infringement or usurpation of corporate opportunity” over the opening launch of Chris’ new retail store, C. Wonder. WWD “Christopher Burch Files Suit Against Tory Burch,” 10/03/2012. Even though Tory did not wind up filing suit, it certainly seems like she was concerned with trade dress infringement.

Interestingly, Tory’s counterclaim does not directly mention “trade dress” as an outlined cause of action, whereas “misappropriation of trade secrets” forms the basis of her suit against Chris Burch and his new retail stores, C. Wonder. Tory claims that Chris, being a member of the board of directors for Tory Burch LLC, was privy to information concerning “…highly confidential data compilations, business methods, techniques and processes” that are economically valuable because they are not known to the general public—essentially, trade secrets. (Tory Burch Counterclaim, 46-47).

According to Tory, the C. Wonder brand was developed and selected based on the confidential information that Chris learned in the course of his duties as a Board member. However, it would seem that any products sold in C. Wonder or the “look and feel” of the store, such as its décor and product packaging, could have easily been copied from simply looking at the Tory Burch stores and did not require Chris being privy to the trade secrets that Tory Burch and her company own.

The counterclaim discussed the “look and feel” of the C. Wonder stores and how they closely resemble that of the Tory Burch stores, including testimonies from bloggers, customers, and the media commenting that both stores seemed to be “connected” and how many are “confused” as to whether the two stores are associated with each other. But why is it that Tory did not directly assert a trade dress infringement claim?

To assert a trade dress claim, Tory Burch would have had to establish her trade dress rights—since trade dress rights are not registered, such rights are not presumed and it is up to the party alleging infringement to establish that there in fact exists trade dress rights. If Tory was unable to produce enough evidence to support trade dress rights, then her trade dress arguments would not only fail against Chris, but would open her brand to possible worldwide dilution and tarnishment. It may be that she did not want to take the chance that the court could deny her all trade dress rights, which would certainly harm her brand.

Tory does assert an unfair competition claim at common law, but such claim does not necessarily translate to a trade dress infringement claim. In fact, Tory indicates in the unfair competition claim that Chris’ misappropriation of her company’s trade secrets is what led to the public being confused and the possible dilution of her Brand. Even under the “indirect” trade dress claim, misappropriation of trade secrets plays a prominent role.

If the Burch Battle has taught us anything, it may be that lawyers have added another weapon to their arsenal when fighting trade dress infringement—the weapon of trade secret misappropriation. It will be interesting to see in the future if trade secret misappropriation claims start playing a larger role in fashion suits and trade dress claims in general. The Battle of the Burch Brands may be over, but the war against trade dress infringement and trade secret misappropriation certainly is not.

 

Wave Goodbye to that Mark

By Tommas Balducci [March 19th, 2013] ADD A COMMENT

Lulugirlanddesign

In early January, Lululemon Athletica lost their appeal to the TTAB over the registration of the wave design shown below.

The TTAB, affirming the decision of the Examining Attorney, held that the wave design was merely an ornamental decoration and that the public would not perceive the applicant’s mark as an indicator of source. The TTAB stated that such a mark could only warrant trademark registration if the applicant could show the mark had inherent or acquired distinctiveness, or that the applicant has used or registered the design in a non-ornamental manner for other goods or services.

The Examining Attorney argued that the wave design is not distinctive, “due to its large size, consumers will not perceive it as a mark when used on the ‘hooded sweat shirts; jackets; coats’ for which applicant seeks registration.” The TTAB, in this precedential decision, declared that there, “is no per-se rule regarding registrability based on the size of a mark on clothing. Rather, in considering the commercial impression of marks of this nature, the size of the mark is one consideration along with others”. In this instance the TTAB found that the wave mark is “rather simple and looks like piping” and unlike other large scale designs discussed in the opinion, which were highly stylized and serve as source identifiers warranting protection.

Lulu LogoLululemon additionally argued that the wave design has acquired distinctiveness based on the company’s use of the mark on related products and services. The TTAB rejected this argument noting that the registration Lululemon attempted to tack the subject application to is a much more stylized wave tapering and varying in thickness throughout, and highlighted by contrasting circle. Though many consumers familiar with the brand may recognize the above sweatshirt as a Lululemon product, the TTAB found that the general public is likely to perceive the subject mark as merely ornamental, and refused to grant it registration.

Polo Ralph Lauren Score Goal in Trademark Match Against the U.S. Polo Association

By Annie Lindenhovius [April 2nd, 2013] ADD A COMMENT

Polo Polo

For years, Polo Ralph Lauren and the U.S. Polo Association have been hooking mallets over the use of their polo player trademarks.

In 1984, the long battle between the U.S. Polo Association and Polo Ralph Lauren began. At the time, a Manhattan federal court granted the USPA permission to use the “double horseman” logo on their merchandise, as long as it would not cause consumer confusion. The USPA’s double jockey logo bears a marked resemblance to Ralph Lauren’s mounted polo player.

Over two decades later, a jury refined the decision; if the double horseman logo were used in conjunction with text identifying it as a USPA product, it would not be infringing. However, the horsemen used without text would constitute infringement.

This past February, the 2nd Circuit U.S. Court of Appeals continued to limit the USPA’s ability to use their logo; the Court upheld a previous ruling that the USPA cannot use the “double horseman” logo on its fragrances. Ralph Lauren had introduced its Polo Blue fragrance in 2002, and seven years later, the USPA designed its own fragrance, with a similar packaging.

The Court determined that by using the logo on fragrances, USPA was not acting in good faith, and had attempted to exploit the good will of Ralph Lauren’s mark. The Court of Appeals agreed that by using the confusingly similar mark on its fragrances, the USPA had acted with the “intention of capitalizing” on Ralph Lauren’s reputation and products.

And the point goes to Ralph Lauren.

Lindsay “Lawsuit” Lohan

By Allison Tenenbaum [March 29th, 2013] ADD A COMMENT

Lohan

Remember that time Lindsay Lohan had trouble with the law?  Bet you’re thinking “which time?” Besides other stints with the law (she was sentenced to rehab on March 20, 2013 in order to avoid a six-month jail sentence), she recently filed a lawsuit against her clothing company, 6126. As sad as it is that she keeps having legal issues, it is nice to see Lindsay as a plaintiff, for a change.

Lindsay filed a $1.1 million lawsuit against the clothing manufacturer of her company, 6126. The manufacturer is D.N.A.M. Apparel Industries, who licensed the “6126” trademark to manufacture clothing and agreed to pay Lindsay royalties. According to Lindsay’s rep, the license was revoked due to several breaches, including failure to pay royalties and using Lindsay’s designs for other labels. The causes of actions listed in the lawsuit were breach of contract based on a written agreement, fraud based on promise without intent to perform, and federal trademark infringement.  Further, the complaint held that Lohan should have received $200,000, which would be 10% of net sales in excess of $100,000, and also that she never received an additional $900,000 in “guaranteed royalties” during the last three years.

With all of the lack of job prospects, and the plethora of attorney’s fees that Lindsay has been racking up, it is understandable that she is looking to legal action as a source of income.

Lindsay has become quite familiar with the law. Unfortunately, since 2007, she is more familiar with the defendant side of criminal court. The last time Lindsay was a plaintiff she was suing Etrade, where she insisted that the “milkaholic” baby named Lindsay was named after her. In that case, she sued for pain and suffering for using her name as a parody of her life. She also threatened to sue Pitbull for using her name in his song, Give Me Everything, in which the lyrics stated “I got it locked up like Lindsay Lohan.”

Lindsay and her business partner, Kristy Kaylor, are still in business and are currently working on a licensing deal with another company.

Polo Ralph Lauren Score Goal in Trademark Match Against the U.S. Polo Association

By Annie Lindenhovius [April 2nd, 2013] ADD A COMMENT

Polo Polo

For years, Polo Ralph Lauren and the U.S. Polo Association have been hooking mallets over the use of their polo player trademarks.

In 1984, the long battle between the U.S. Polo Association and Polo Ralph Lauren began. At the time, a Manhattan federal court granted the USPA permission to use the “double horseman” logo on their merchandise, as long as it would not cause consumer confusion. The USPA’s double jockey logo bears a marked resemblance to Ralph Lauren’s mounted polo player.

Over two decades later, a jury refined the decision; if the double horseman logo were used in conjunction with text identifying it as a USPA product, it would not be infringing. However, the horsemen used without text would constitute infringement.

This past February, the 2nd Circuit U.S. Court of Appeals continued to limit the USPA’s ability to use their logo; the Court upheld a previous ruling that the USPA cannot use the “double horseman” logo on its fragrances. Ralph Lauren had introduced its Polo Blue fragrance in 2002, and seven years later, the USPA designed its own fragrance, with a similar packaging.

The Court determined that by using the logo on fragrances, USPA was not acting in good faith, and had attempted to exploit the good will of Ralph Lauren’s mark. The Court of Appeals agreed that by using the confusingly similar mark on its fragrances, the USPA had acted with the “intention of capitalizing” on Ralph Lauren’s reputation and products.

And the point goes to Ralph Lauren.

Lindsay “Lawsuit” Lohan

By Allison Tenenbaum [March 29th, 2013] ADD A COMMENT

Lohan

Remember that time Lindsay Lohan had trouble with the law?  Bet you’re thinking “which time?” Besides other stints with the law (she was sentenced to rehab on March 20, 2013 in order to avoid a six-month jail sentence), she recently filed a lawsuit against her clothing company, 6126. As sad as it is that she keeps having legal issues, it is nice to see Lindsay as a plaintiff, for a change.

Lindsay filed a $1.1 million lawsuit against the clothing manufacturer of her company, 6126. The manufacturer is D.N.A.M. Apparel Industries, who licensed the “6126” trademark to manufacture clothing and agreed to pay Lindsay royalties. According to Lindsay’s rep, the license was revoked due to several breaches, including failure to pay royalties and using Lindsay’s designs for other labels. The causes of actions listed in the lawsuit were breach of contract based on a written agreement, fraud based on promise without intent to perform, and federal trademark infringement.  Further, the complaint held that Lohan should have received $200,000, which would be 10% of net sales in excess of $100,000, and also that she never received an additional $900,000 in “guaranteed royalties” during the last three years.

With all of the lack of job prospects, and the plethora of attorney’s fees that Lindsay has been racking up, it is understandable that she is looking to legal action as a source of income.

Lindsay has become quite familiar with the law. Unfortunately, since 2007, she is more familiar with the defendant side of criminal court. The last time Lindsay was a plaintiff she was suing Etrade, where she insisted that the “milkaholic” baby named Lindsay was named after her. In that case, she sued for pain and suffering for using her name as a parody of her life. She also threatened to sue Pitbull for using her name in his song, Give Me Everything, in which the lyrics stated “I got it locked up like Lindsay Lohan.”

Lindsay and her business partner, Kristy Kaylor, are still in business and are currently working on a licensing deal with another company.