Wiggin and Dana's Franchise Law Blog

Rudy's Puts The Wood to Woody's

In a battle over barbecue trade dress, Rudy's Country Store and Bar-B-Q resaturants sued Woody's, a Missouri-based competitor and the architect/contractor responsible for building a restaurant that Rudy's claimed was a "virtual copy" of its restaurants. The parties' settlement, recently announced according to this article, requires Woody's and its architect/contractor to change the design of that restaurant, and to forgo their plans to construct other units too reminiscent of Rudy's.

Papa John's Alleges Racketeering

Kentucky-based Papa John’s International, Inc. has sued a group of Chicago pizza makers, alleging that they operate as "fronts" for a terminated Papa John’s franchisee. Papa John’s terminated its franchise agreement with Antoine "Tony" Rezko in 2004. AR Pizza (alleged by Papa John’s to stand for "Antoine Rezko") and Newco Pizza (yes, somebody actually named their new company "Newco") were incorporated shortly after the Rezko termination.

Papa John’s alleges that AR Pizza, Newco Pizza and another entity, LayaZia, LLC and certain of their principals use Papa John’s intellectual property while operating under names including "Papa Tony’s" and "Pizzeria Zia." The federal court complaint alleges, among other things, racketeering, trademark infringement and unfair competition. Mr. Rezko is not a defendant in the suit. An attorney for Mr. Rezko, Gene Murphy, stated, "This is a squeeze play on Papa John’s part to eliminate the competition."

Yamoto Distributor and Yamaha Working Towards Settling Infringement Lawsuit

Patriot Motorcycles Corporation, the U.S. distributor of Yamoto motorcycles and ATVs, is trying to settle a lawsuit filed against it by Yamaha Motor Corporation and its parent, Yamaha Motor Co., Inc., the world's second largest manufacturer of motorcycles and ATVs. Plaintiffs filed the complaint in California federal court in October claiming that Patriot and the manufacturer and dealer of Yamoto products infringed on the Yamaha marks by importing and selling "knock-offs" of Yamaha products, adopting a similar brand name and decorating Yamoto goods with graphics similar to Yamaha's. At the center of the dispute are Yamaha's Raptor line of ATVs and its model TT-R125 off-road motorcycles. Yamaha seeks to permanently enjoin defendants from selling the infringing products and treble and punitives damages for trademark infringement, trademark dilution, false designation of origin, false advertising, copyright infringement and unfair competition. Click here for photos comparing the Yamaha and Yamoto products at issue.

Marriott International Implements New Policies To Protect Trademarks

Marriott International recently announced new guidelines for online travel companies marketing and selling Marriott hotel rooms. The "Standards & Guidelines for Online Marketing Using Marriott Trademarks" are intended to curb abuse of the Marriott trademarks and prohibit travel companies from using Marriott marks in the text or title of any paid ads or on a website without the company's permission. Under the guidelines, Marriott will provide notice to violators before pulling authorization to sell Marriott accommodations, withholding commissions and/or filing infringement lawsuits. The guidelines apply to the Marriott, JW Marriott, Renaissance, Courtyard, Residence Inn, Fairfield Inn, TownePlace Suites, Springhill Suites, Marriott Vacation Club, Ritz-Carlton, ExecuStay and Marriott Executive Apartments brands.

Jimmy John's Settles Menu Copyright Suit

Jimmy John's, which owns, manages or franchises 335 gourmet sandwich shops, settled a copyright and trade dress infringement lawsuit against TM Foods of Avon, Inc., which operates a House of Sandwich shop in Avon, Indiana. Jimmy John's filed suit in the Southern District of Indiana alleging that the House of Sandwich's menu and menu boards infringed on Jimmy John's copyrights. Jimmy John's claimed that the overall selection, arrangement and grouping of sandwiches and the use of a unitary price for each sandwich group on the House of Sandwich menu resembled the copyrighted menus used by Jimmy John's. As part of the settlement, TM Foods agreed to pay Jimmy John's $50,000 and to destroy its menus and menu boards. Additionally, the parties entered into a consent judgment which permanently enjoins the owners, officers, directors and shareholders of the House of Sandwich from copying or using aspects of its menus.

Subway Sends Cease and Desist Letter to Connecticut Sandwich Shop

Subway has asked Steakways Famous Philly Cheese Steaks, a sandwich shop located two miles from the company's headquarters in Milford, Connecticut, to cease and desist using the name "Steakways," which Subway claims is confusingly similar to its own. According to one local news source, Subway's letter to Steakways stated that Steakways must change its name within two weeks or Subway will bring trademark infringement claims. Kevin Kane, spokesperson for Subway, said that Subway has always supported small business owners, but the company must protect its name if it appears that there may be an infringement. Steakways, which specializes in Philly cheesesteaks and other hot sandwiches, has been open for one year and plans to open a second store in nearby Bridgeport.

Federal Judge Annuls Windshield Doctor Trademark in Glass Doctor's Trademark Infringement Action

A judge in the United States District Court for the Eastern District of Virginia entered summary judgment yesterday against Virginia businesswoman Jody Korman, finding that her 2003 "Windshield Doctor" trademark violated Texas-based Synergistic International LLC's "Glass Doctor" trademark. Synergistic, which owns the "Glass Doctor" trademark affixed to over 1100 glass repair and replacement stores in the United States and 24 foreign countries, sued Korman in January for trademark violation. According to one local news source, Synergistic also claimed that Korman was unjustly enriched by "riding the coattails" of the company's success. Finding that there was a likelihood of confusion between "Glass Doctor" and "Windshield Doctor," the court annulled Korman's 2003 trademark and ordered the parties to reach an agreement on payment arrangements for damages.

In & Out House More or Less Out

This article updates the September 8 blog entry below. In & Out House has tentatively agreed to change its name in an agreement with California franchisor, In-N-Out Burger.

Is That Near the In-N-Out Burger?

An Aspen restaurant called the In & Out House may soon be faced with a name change (which might be a blessing given that the word outhouse is part of the restaurant's name) based on pressure from California-based In-N-Out Burger, a burger franchise with units in California, Nevada and Arizona. In-N-Out Burger was founded in 1948, while the In & Out House has operated in Aspen for two decades. The parties are presently negotiating over the name although In-N-Out Burger has no plans to expand into Colorada at present. And yes, Donnie, it's near the In-N-Out Burger.

Mister Softee Investigates "Rip-Off Trucks"

Policing your marks can be difficult and expensive, particularly when the infringers are on wheels. This New York Times report follows the efforts of Mister Softee, the largest franchisor of soft ice cream trucks in the United States, to shut down infringing trucks. The company hired private investigators to identify independent ice cream trucks that resemble the Mister Softee vehicles in their color scheme, logos or jingle. The investigation turned up hundreds of operators who paint their ice cream trucks blue and white and create menu boards and logos identical to Mister Softee's, including the company's famous cone-head trademark. According to the investigators, they have gathered enough evidence against 30 operators of "rip-off trucks" in New York City and on Long Island for Mister Softee to bring trademark and copyright infringement lawsuits against them.

Mo's Files Trademark Infringement Suit Against Moe's

Mo's Restaurants, an Oregon-based restaurant chain famous for its clam chowder, filed a trademark infringement lawsuit on June 28, 2005 in the United States District Court in Portland, Oregon against Moe's Southwest Grill, a restaurant chain based in Atlanta Georgia. According to Mo's, "[n]o matter how you spell it, there is only one Mo’s." Mo's decision to sue came after Moe’s Southwest Grill's aggressive expansion into Oregon and the opening of its first restaurant in Oregon in April 2005. Founded in 1952 by Mohava “Mo” Niemi, Mo’s operates six restaurants on the Oregon coast and has owned a federally-registered trademark for Mo's since 1986. The company employs approximately 350 people and serves 1.3 million customers a year. Moe's Southwest Grill, established in 2000 and has 229 restaurants across the country, plans to open 20 more restaurants in Oregon through its Pacific Northwest franchise holder, Wraps of the Northwest. Clam chowder, however, is not currently on Moe's menu.

The Electric Kool-Aid Burrito Test, or Moe Ain't Exactly Cassidy

Moe's Southwestern Grill, one of 2004's hot concepts from Nation's Restaurant News, has been sued by an unlikely plaintiff, Jerry Garcia's estate. Moe's name is apparently an acronym for Musicians, Outlaws and Entertainers, and its restaurants feature dishes named after dead celebrities, including Jim Morrison, Janis Joplin and Elvis. The Alfredo Garcia, a fajita dish, is a Moe's staple. According to a lawsuit filed on December 8, Jerry Garcia's estate says that paintings of the late Grateful Dead star have been hung in 130 franchises and that Moe's used Jerry Garcia's image in advertising without the estate's permission. The suit also alleges that Moe's changed the words to "Casey Jones" resulting in "Trouble ahead, Trouble behind/Just have my taco ready on time," and posts the words under the Garcia likenesses.

The estate's complaint, filed in the Northern District of Georgia, said, "The idea that a sizable corporation would use his name and image without permission to sell burritos (and, more to the point, make money) is obscene; it turns Jerry into a little more than a taco huckster." The battle appears to be heating up already as Moe's VP of Finance countered (in a rather non-settlement oriented way) that Garcia's estate is only "about the money."

Garcia's name and likeness have been officially licensed to companies in connection with a line of neckties, wine and Ben & Jerry's ice cream. As the estate sees it (and many courts see it), Moe's unauthorized use of the name and image of Jerry Garcia and the words to a Grateful Dead song, affects the authorized licensees of the Garcia name by diminishing the value of their investment.

A copy of the complaint filed by Jerry Garcia's estate can be accessed here: Garcia Complaint
Moe's is required to file an answer on January 17.

The Google Keyword Battle Continues

In intellectual property news, companies continue to charge that Google is misappropriating or infringing their trademarks by selling advertising to their competitors on Google searches. Google allows companies to buy advertising on a search page if a consumer plugs in a search for one of their competitors. According to this article, several companies are suing the search engine powerhouse for trademark infringement. Geico, however, recently lost its claim that Google's advertising practice would cause confusion among consumers based on a lack of evidence.

Not Happy Together

In Los Angeles, two of the members of the 1960’s pop group “The Turtles” filed suit against Applebee’s International, Inc. for the company's parody of the group's 1967 hit “Happy Together.” According to this article from Reuters, the ads, in which the words to “Happy Together” are changed to “Imagine steak and shrimp, or shrimp and steak/ Imagine both of these on just one plate,” have compromised The Turtles' reputation. Applebee’s claims that it contacted the song's publisher for permission, but did not contact The Turtles, who own the master recording.

Here's another look at the Krispy Kreme Trademark Debate

The Pennsylvania couple that bought an ice cream stand called Krispy Kream (no real explanation for why ice cream would be crispy) is getting worried now that the publicly-traded doughnut giant, Krispy Kreme, will sue them for trademark infringement. The couple has raised some fairly weak arguments -- like the names are spelled differently and Krispy Kream does not sell doughnuts, and it seems unlikely that the little ice cream stand in Belsano, PA will be allowed to continue using the name unfettered.

Skillet Sensations Belongs to Applebee's

Ending a hard-fought battle over a trademark, Nestle S.A. announced that it will stop using the name "Skillet Sensations" as part of its frozen food offerings. After the parties first began disputing ownership of the "Skillet Sensation" trademark, the U.S. Patent and Trademark Office ruled in Applebee's favor in September 2003 saying that Applebee's had prior rights to the name, having used it for a year before Nestle's subsidiary. Applebee's then filed its lawsuit against Nestle in federal court in Missouri. Last week, Nestle's subsidiary Stouffer's agreed to rename the products "Stouffer's Skillets" and "Lean Cuisine Skillets" beginning in the spring of 2005. Based on this agreement, the parties filed a joint motion to dismiss the case and the court granted the motion.

Spelling Lessons in Infringement

Nobody's doing any favors for our nation's beginning readers. Reaching out to another cleverly misspelled business, Krispy Kreme recently sent a cease and desist letter to the "Krispy Kream" ice cream stand owners in Belsano, Pennsylvania. As the letter's moniker suggests, the North Carolina doughnut shop franchisor asked the Krispy Kream operators to cease using its name in the operation of their ice cream stand. The ice cream stand owners claim that the name Krispy Kream has been used at the stand since 1961. Krispy Kreme, however, registered its federal trademark in 1951.

A Cautionary Tale

Pizza Inn has sued its formal legal counsel Akin, Gump, Strauss, Hauer & Feld, for its role in rewriting employment agreements for the company's former General Counsel, the CEO, the CFO and the senior vice president of franchise operations. According to the lawsuit, Akin, Gump breached its fiduciary duties in amending the employee agreements, which provided that if the officers left for “good reason” or were removed from their board positions, they would receive payouts of $7.4 million. Pizza Inn also alleged that Akin, Gump conspired with the officers to amend the bylaws to restrict the shareholders' ability to change the Board of Directors or to call special meetings. Although Pizza Inn has not specified damages, it seeks a broad range, including penalties and interest and a disgorgement of all fees paid to all Akin, Gump during its representation.

“Eatin’ Right” Never Caused So Many Problems

In a lawsuit filed last week in Kansas, Applebee’s International, Inc. accused the franchisor of Subway sandwich shops, Doctor’s Associates, Inc., of trademark infringement. Applebee’s claimed that Subway is infringing Applebee’s slogan “Eatin’ Right Never Tasted So Good.” According to the lawsuit, Applebee’s has been using the slogan since January 5 to market healthy menu options under a joint program with Weight Watchers. According to United States Patent and Trademark Office records, Applebee’s filed two trademark applications for the slogan in May 2004. Subway has not commented on the pending litigation, and the lawsuit does not indicate when Subway began using the slogan to promote its own menu.

Trademark Dilution brought to you by Starbucks

After the Supreme Court handed down the Victoria's Secret decision in March 2003, many trademark experts and lawyers were left scrambling to figure out how to prove trademark dilution. Starbucks, however, may have a new case to test the requirements of the Federal Trademark Dilution Act -- Starbucks v. Starbock Beer. In Galveston, Texas, the case between Starbucks U.S. Brands Corp. and Rex Wayne Bell continues. Bell owns a bar in Galveston and attempted to register "Starbock Beer" as a trademark in 2003. Starbucks opposed the registration and Bell filed this declaratory judgment action asking the court to find that his use of the name Starbock Beer in connection with alcoholic beverages is not confusingly similar to or in conflict with Starbucks' marks. Starbucks suggests that the mark "is both derivative of and dilutive of their trademark rights." Now that mediation between the parties has failed, the case has been scheduled for a March 2005 trial date.

Splitting the Steakburger in Two

Declining to enjoin Burger King from identifying its new product as "Angus Steak Burger,"
Judge Catherine Perry denied Steak n Shake's motion for preliminary injunction. Steak n Shake argued that it owned the trademark "steakburger" and that Burger King's planned marketing roll-out of Angus Steak Burgers would infringe its mark and cause irreparable harm to Steak n Shake. After reviewing a number of trademark registrations for steakburger (and the requirement that the registrant disclaim "steakburger"), the Court held that "steakburger" should be considered a generic term under trademark law. The Court even cited the A-1 Steak Sauce slogan "A-1 makes a hamburger taste like steakburger" for the proposition that the term has been used by a number of companies to describe premium hamburgers.

The Court also held that even if "steakburger" was not generic, Steak n Shake failed to show the second element of trademark infringement -- likelihood of consumer confusion between the products. In an interesting discussion of expert witness surveys, the Court agreed with Burger King's expert that the Steak n Shake survey may have established that people associate steakburgers with Steak n Shake (or baby back ribs with Chili's) but it did not show that people believe that the product is only available from one source. In other words, although Steak n Shake may be "Famous for Steakburgers," it did not show that the mark has taken on a secondary meaning.

Although the decision appears to be a victory for Burger King, Judge Perry denied Burger King's motion to dismiss because she was not convinced that there were no facts under which Steak n Shake could prevail. The parties were referred to mediation. A copy of Judge Perry's opinion is available here: Steak n Shake Memorandum and Order.

Smart Ones Battle

Weight Watchers International Inc. is preparing to battle over the use of its name with former licensee Cool Brands International, Inc. Last week, Cool Brands announced that its contract to use the Weight Watchers brand on Smart Ones products had not been renewed. The company also said, however, that although the license agreement expires in September, it had the right to continue using the name for a year after the expiration date. Weight Watchers has filed a complaint in New York state court claiming anticipatory breach by Cool Brands. Cool Brands says that it plans to vigorously defend the suit.

Et tu Brute?

Little Caesars has filed suit against forty franchisees for using non-conforming ingredients at their Little Caesars restaurants. The complaint alleges trademark infringement, trademark infringement and breach of contract. The franchisee association claims that the lawsuit is nothing more than Little Caesars retaliation against franchisees who refuse to purchase product from the franchisor's distributorship. A copy of the complaint is available here.

Burger King's "Angus Steak Burger" Draws Lawsuit from Steak 'n Shake

In a lawsuit filed in St. Louis last month, Indianapolis-based franchisor Steak 'n Shake alleged that Burger King's new marketing campaign for the "Angus Steak Burger" infringes on Steak 'n Shake trademark "Steakburger." While a TRO has been denied because Burger King represented that it would not immediately launch the ad campaign, a hearing on Steak 'n Shake's motion for preliminary injunction is set for June 15. Burger King claims that the terms "steak" and "burger" are generic and, therefore, not protected by trademark law. A copy of the Steak 'n Shake complaint is available here: Download file">Steak 'n Shake Company v. Burger King Corp.

Pillsbury Doughboy Throws Down

Well, not really. A Canadian doughnut company - called Dough Boyz - sought to trademark its name and in the interest of keeping the peace, sent General Mills a letter on the subject. General Mills advised the company that it would protect its mark and has sent Dough Boyz out looking for a new name for the company and its stores, which it intends to franchise.

What's in a Name?

After losing a trademark dispute in February, Capri Coffee franchises are facing a name change beginning on Monday. The Colorado-based franchisor learned late last year that its trademark application was refused because the trademark was owned by another company, Caffe D'Arte LLC. Caffe D'Arte, a Seattle-based coffee roaster, then filed a federal trademark infringement against Capri. Capri's franchisees have been given options to convert to Saxby's Coffee (a different concept launched by the former Capri president) or to remain Capri and address the name change. At least eleven franchisees have abandoned the franchise altogether and operate independent shops in a deal negotiated by the group's lawyer.

Venti, Vidi, Vici

Starbucks recently sent a cease and desist letter to the Indian River Coffee Co. because the shop uses the word "venti" to describe its largest coffee. Indian River, which is planning a franchise expansion in Florida, questioned Starbucks' ability to trademark "venti" which is Italian for twenty. The owners of Indian River claim that they arrived at the name at around the time Starbucks filed its trademark application -- with the assistance of the owner of an Italian restaurant a few doors down from their shop. A spokeswoman for the U.S. Patent and Trademark Office did not see any problem with the trademark.

Texas Franchisor Whataburger (Potentially) Ends

Texas Franchisor Whataburger (Potentially) Ends 30-Year Argument. The Trademarkblog.com has an interesting discussion of two Whataburgers -- only one can come first. The Texas franchisor has apparently been successful in claiming priority over its Virginia doppelganger for the name WHATABURGER. However, the Fourth Circuit also ruled (and Texas Whataburger acknowledged) that the Virginia company did not infringe the Texas company's marks.

Is 'Never-Ending' a Protectible Term?

Is 'Never-Ending' a Protectible Term? Darden Corporation, the parent company of Olive Garden and Red Lobster, thinks it is. Darden has sued IHOP in Orlando federal court because IHOP is running a campaign for never-ending pancakes and never-ending shrimp. Darden claims that its ad campaigns and its marketing of the never-ending pasta bowl provide a consumer-friendly base for IHOP's ads and that IHOP is gaining an unfair advantage from its use of "never-ending." Darden also claims that consumers are likely to be confused by the competing ads, especially now that IHOP is attempting to move into a more upscale, casual market. The case was filed on February 3, 2004.

Find your Center and Then

Find your Center and Then Sue the Yogi. If you're having trouble finding a local yoga place that offers Bikram yoga, it may have to do with the lack of qualified instructors and dozens of cease and desist letters that went to schools that fail to meet the Bikram standards. Bikram yoga, named after its inventor, Bikram Choudry, is a set of 26 yoga poses performed in room heated to 105 degrees. Choudry has sent over a hundred cease and desist letters to yoga centers all over the country claiming that they must stop providing Bikram yoga because they deviate from his system or they don't use instructors trained by Choudry. In response, a non-profit collective, called Open Source Yoga Unity, sued Choudry seeking declaratory relief stating that he has no trademark or copyright protection because his poses have been used in public for centuries. According to the group, "No one can own a style of yoga." Namaste.

Starbucks Sues Chinese Competitor "Starbuck"

Starbucks Sues Chinese Competitor "Starbuck" for Infringement. In Beijing, the name Starbucks does not apparently wield the same power as it does in the United States. Well, maybe it does because at least one coffee chain has selected a very similar name. However, the folks in Beijing don't seem to fear Starbucks' power. It would hard to imagine an American with enough nerve (or money) to try to operate a coffee shop called "Starbuck," or "Xingbake" in Mandarin. The Starbuck coffee chain operated by CAFE claims that they had always planned to use the name Xingbake , that they had never heard of Starbucks and that it was nothing more than coincidence that their planned name was the same as the Chinese word for Starbuck. Starbucks operates 83 units in China. The company has filed suit against CAFE for copyright infringement.

Google Faces Some Trademark Battles.

Google Faces Some Trademark Battles. First, PC World reports on a lawsuit filed by American Blind & Wallpaper Factory suit in federal court for the Northern District of New York against Google, claiming that Google's practice of selling keyword-based advertising to competitors violates American Blind's trademarks. Specifically, American Blind contends that Google users searching "American Blind" will be directed to a results page that provides advertising from American Blind's competitors. Google has filed its own suit in the Northern District of California, arguing that American and Blind are not entitled to trademark protection. American Blind has filed for an injunction to stop Google's keyword-based advertising.

In other less lofty Google trademark debates, Google has demanded that the owners of a new adult website search engine called "Booble" take down their website. Martin Schwimmer's trademark blog is following the debate and Mr. Schwimmer has been quoted in this article in internews.com discussing the merits of the parties' claims. Booble claims that their site is a parody (which Google disputes) and has apparently had over a million hits per day since Google sent the demand letter. See this article in the New York Times for discussion of the website dispute and Google's role in Booble's popularity.

Trademark Dispute Resolved in Favor

Trademark Dispute Resolved in Favor of Puerto Rico Company. Deciding that a local Kissimmee restaurant name was confusingly similar to that of a chain of restaurants in Puerto Rico, a Florida court issued an injunction requiring the Kissimmee restaurant to change its name. The Kissimmee restaurant - Martin's Family BBQ -- was sued by the Puerto Rico franchise chain, Martin's BBQ. Martin's BBQ argued that its chain was 40 years old and that the Puerto Rican population in Osceola county, which grew 280% in the 1990's, would surely believe that the Martin's Family BBQ was associated with the Puerto Rico chain. The judge agreed and ordered the Kissimmee restaurant to change its name.

Cheezborger Trademark Dispute. A Saturday

Cheezborger Trademark Dispute. A Saturday Night Live skit from the late 1970's has formed the basis of a trademark lawsuit against Cheeburger Cheeburger Restaurants, Inc., a Florida restaurant chain. The Billy Goat, a bar and grill in Chicago, claims that that Saturday Night Live skit was based on its operation, stating in the complaint that "association of 'cheezborger, cheezborger' with the Billy Goat is basically a Chicago landmark." According to the complaint, Don Bonello, who played the character of "Father Guido Sarducci," wrote the skit with The Billy Goat in mind. Cheeburger claims that it owns two federally-registered trademarks of the name. The suit arose because Cheeburger was planning to develop a site in Chicago.

What's the "Best a Man

What's the "Best a Man Can Get?" Following the Pizza Hut v. Papa John's battle of the superlatives ("Better Ingredients, Better Pizza"), Schick-Wilkerson Sword has sued Gillette Co. in Connecticut federal court, accusing the Boston company of false advertising in violation of federal and state advertising laws for slogans like "Best a Man Can Get," and "Mach3 is the world's best shave." (Dow Jones Newswire). In a related matter, the companies remain locked in a Boston patent infringement case instituted by Gillette in August over Schick's Quattro razor. If the Pizza Hut dispute -- which was ultimately denied cert from the U.S. Supreme Court in 2001 -- is any indication, this dispute may actually outlast the usefulness of the slogan.

In a side note, Papa John's was successful in the Pizza Hut dispute when the Fifth Circuit reversed and vacated a jury verdict against the pizza maker and remanded with instructions. The Fifth Circuit held that the slogan "Better Ingredients, Better Pizza," standing alone, represented only the typical puffery used in advertising and was a statement of opinion that did not violate advertising laws. For a copy of the Fifth Circuit opinion in the Papa John's case, click here.

McDonald's Seeks Protection for Mac

McDonald's Seeks Protection for Mac in Singapore. In a country where it has 129 restaurants, McDonald's has argued to Singapore's highest court that products such as MacNoodles, MacChocolate and MacTea are likely to confuse consumers, who would associate McDonalds with these products. McDonald's claims that "Mc" and "Mac" are essential elements of its trademark, which deserve protection. In a separate forum, the owner of the "Mac" products, Futures Enterprises Singapore has challenged the right of McDonald's Russia to use the brand McCafe in Moscow. Futures, which has sold instant coffee under the name MacCoffee since 1994, intends to launch a chain of MacCoffee shops in Russia and has held the right to the name in Russia since 1998. Click here for the story on the dispute in Russia.

Cybersquatter Arrested in Hollywood, FL.

Cybersquatter Arrested in Hollywood, FL. John Zuccarini, first known to the world as a defendant in one of the first cases filed under the Anticybersquatting Consumer Protection Act, has been arrested in a motel in Hollywood, FL and charged with criminal violations of the Truth in Domain Names Act. Zuccarini was sued in 1999 by the owner of the Joe Cartoon trademark for registering misppellings of the Joe Cartoon website and directing consumers to advertising sites. Zuccarini lost in district court and later in the Third Circuit and was fined $10,000 for each domain name and required to pay Joe Cartoon's attorney's fees. Zuccarini claimed he made between $800,000 and $1,000,000 each year from the operation of over 3,000 websites of misspelled names of famous marks. In a criminal complaint filed in Manhattan, prosecutors claimed that Zuccarini deliberately targeted children's websites because children were more likely to make spelling mistakes and because he earned 25 cents for every hit directed from his sites to the pornagraphic sites. Zuccarini is the first person charged under the new Truth in Domain Names Act, which makes it a crime to lure children to pornagraphic websites.

Slogan may be Trouble for

Slogan may be Trouble for Red Lobster. Jasper White operates his Summer Shack restaurants using a trademarked slogan "Food is Love." Mr. White is now suing the Red Lobster restaurant chain for using the phrase "Share the Love" in its new ad campaign. In this Boston Herald article, White claims that after Red Lobster executives came to his Cambridge restaurant, Red Lobster started using the new slogan. His trademarked phrase was clearly visible throughout his store and is also used on many other promotional items. Darden Restaurants, Inc., the parent company of Red Lobster, stated that the slogan was created by an advertising agency and would not comment on the lawsuit.

On Trademarks: Email or lunch

On Trademarks: Email or lunch meat? The Pioneer Press (MN) discusses the mounting argument between Hormel Foods Corp. and internet denizens - including a program called SpamArrest - over the use of the name "spam." The article notes, "While the legal brouhaha is steeped in the arcana of trademark law - capitalized Spam vs. lower-case spam, and generic or descriptive use of the term vs. applying a trademark to a particular product - this is all about a World War II generation icon butting heads with the sassy, New Age cyber-lingo."

Trademark dispute: PizzaMarketplace.com reports that

Trademark dispute: PizzaMarketplace.com reports that a trademark infringement dispute between Boston Pizza and Boston Market will go to trial sometime in 2005 in Canada. According to the article, "Boston Pizza holds that its trademarked name has been established for more than three decades, and that Boston Market's name too closely mirrors its own."

In trademark news -- Adidas

In trademark news -- Adidas may lose protection for its stripes: Before the European Court of Justice, the Advocate-General today delivered an advisory opinion recommending dismissal of Adidas' case against a Dutch sportswear manufacturer that uses a two-stripe trim on its clothing similar to Adidas' signature three-stripe insignia. Though European Union law permits trademarks to be safeguarded against dilution and "free-riding," the AG opinion stated that a "simple decorative embellishment" was not a trademark, and that differences between the two product lines should be assessed "solely on the basis of the degree of sensory or conceptual similarity between them." See Guardian Unlimited for the complete story.