A federal court has granted summary judgment on a majority of issues in a dispute between scientists and the University of California Davis centered on the intellectual property rights of two strawberry varieties. Cal. Berry Cultivars, Inc. v. Regents of U. of Cal., No. 16-2477 (N.D. Cal., filed May 2, 2015). Two former UC Davis scientists and their company sued the university alleging it refused to license the strawberry varieties they invented; additional details on the complaint appear in Issue 604 of this Update. The court granted summary judgment on most of the issues, leaving open the scientists’ assertions that UC Davis breached the implied covenant of good faith and fair dealing as well as the unfair competition claim. However, because the court also ruled in favor of UC Davis’ breach of contract claim, it noted that the jury verdict and final judgment may “sock it to both sides .…
Tag Archives trademark
MastJagermeister SE has filed an opposition to a trademark application by apparel company Offseason Outdoors for a logo featuring a deer’s head. MastJagermeister SE v. Offseason Outdoors, No. 91234087 (T.T.A.B., opposition filed April 19, 2017). Jagermeister, which marks its alcohol products with deer head images, filed its notice of opposition to Offseason’s trademark application, claiming Jagermeister has owned deer head marks since 1968. Issue 632
Texas chain Torchy’s Tacos, which uses the tagline “Damn Good Tacos” in its restaurants and merchandising, has filed suit against Colorado restaurant Dam Good Tacos for trademark infringement, claiming consumer confusion. Success Foods Mgmt. Group, LLC v. Dam Good Systems, LLC, No. 170842 (D. Colo., filed April 5, 2017). Asserting that it registered the “Damn Good Tacos” trademark in 2008, Torchy’s alleges federal trademark infringement, unfair competition, and violation of the Colorado Consumer Protection Act, and it seeks injunctive relief, damages and destruction of Dam Good Tacos’ infringing URLs, email addresses and all packaging, promotional and advertising materials. Issue 631
The Irish distributor of Kerrygold butter won an emergency restraining order against a Wisconsin creamery after alleging the creamery backed out of an agreement to process Kerrygold locally and later created its own nearly identical product, “Irishgold,” infringing Kerrygold’s trademark. Ornua Foods N. Am., Inc. v. Eurogold USA LLC, No. 170510 (E.D. Wis., filed April 10, 2017). A Wisconsin federal court granted the order after finding Ornua Foods, Kellygold’s maker, likely to win the trademark case it filed on the merits. After Kerrygold became the top-selling imported butter in the United States, Wisconsin removed Kerrygold butter from stores under a statute requiring all butter sold in the state to bear either a Wisconsin or federal grade mark. After the ban, Ornua Foods began working with Wisconsin state officials and defendant Old World Creamery to process the Irish-made butter a second time, making it eligible for a state grade mark. The…
The Trademark Trial and Appeal Board (TTAB) has affirmed a refusal by the U.S. Patent and Trademark Office (USPTO) to register a trademark for La Finca wines on the grounds that the winemaker failed to show evidence that the brand has acquired distinctiveness. In re Finca La Celia, S.A., No. 86130560 (opinion issued March 31, 2017). Argentina-based winemaker Finca La Celia, which sells its La Finca wines in Trader Joe’s stores, applied for registration of the mark in 2013 and appealed after a second reconsideration was denied. TTAB reversed USPTO’s refusal to register the mark on the ground that it was generic, holding that even though the term “la finca,” which means “the estate” in Spanish, is “merely descriptive,” the term is “not perceived by the relevant public as a generic name for a type of wine.” TTAB affirmed the USPTO ruling that the maker had failed to show La…
Several members of Congress, led by Reps. Ileana Ros-Lehtinen (RFla.) and Debbie Wasserman Schultz (DFla.), have urged Secretary of State Rex Tillerson and Secretary of the Treasury Steven Mnuchin to review the Office of Foreign Assets Control's (OFAC's) "unprecedented decision to grant a license to allow Cubaexport, an entity whollyowned by the Cuban government, to renew an expired trademark registration for Havana Club rum in the United States." The lawmakers express concern about the implications for American intellectual property rights holders because "Cubaexport claims rights to the Havana Club registration through its confiscation, without compensation, of the Jose Arechabala Company" in 1960. "By allowing the Cuban regime to register the Havana Club trademark, OFAC is out of step with longstanding United States policy, and has set a terrible precedent for American intellectual property rights holders," Wasserman Schultz said in a March 29, 2017, press release. "I urge OFAC to reverse…
A Las Vegas restaurant called the Heart Attack Grill has filed suit against a Tennessee restaurant calling itself the Heart Attack Shack, claiming trademark infringement. HAG IP, LLC v. Tipps Enterprises Inc., No. 17-0652, (M.D. Ky., filed March 29, 2017). The Las Vegas restaurant, which claims trademarks on its Single, Double, Triple and Quadruple Bypass burgers and Flatliner Fries, alleges that the Tennessee restaurant, which features burgers, wings and “Flatliner XL” fries, has infringed its trademarks. In a February 2017 article in the Chattanooga Times Free Press, the defendant owner claimed he named his restaurant after a “heart attack” burger on the menu of a restaurant that previously occupied his location. For trademark infringement of registered marks, the plaintiff seeks injunctive relief, accounting, damages, attorney’s fees and destruction of all promotional materials bearing the trademarks. In 2012, after the plaintiff sent a cease and desist letter to New York’s Second…
Warner Brothers, the film studio that owns the rights to the Willy Wonka movies, has asked the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office to stop a Georgia craft brewer’s use of “Golden Ticket” as the name for a chocolate stout beer, claiming that the name could lead some to believe the filmmaker is promoting underage drinking. Warner Bros. Entm’t Inc. v. S. Sky Brewing Co., No. 91233169 (T.T.A.B., filed March 1, 2017). In the Willy Wonka movies, children who found golden tickets tucked inside chocolate-bar packaging won a tour of the chocolate factory and a chance to win a grand prize. Warner Brothers claims the name “Golden Ticket” is an “intent to capitalize” on the popularity of the films, alleging that Southern Sky’s beer is advertised as “reminiscent of a chocolate hazelnut candy bar and as creamy as chocolate milk,” reinforcing the “mental association”…
Heartland Consumer Products, producer of sucralose-based sweetener Splenda®, has filed a lawsuit against Dunkin’ Brands, Inc. and its franchisees alleging the restaurant chain misleads its customers into believing it carries Splenda® while providing a different sweetener made in China. Heartland Consumer Prods. v. Dunkin’ Brands, Inc., No. 16-3045 (S.D. Ind., Indianapolis Div., filed November 7, 2016). According to the complaint, Dunkin regularly purchased Splenda® from Heartland until April 2016, when it switched to a different sucralose sweetener. Heartland asserts that Dunkin employees continue to tell customers that the sweetener is Splenda even though the new sweetener is a “Chinese-made, off-brand sucralose.” Heartland further argues that Dunkin appropriated its “Sweet Swaps” program by creating a Dunkin-branded “Smart Swaps” program. The complaint asserts that Heartland received multiple reports of consumer confusion, including one customer who reported that a Dunkin employee said Dunkin had “bought out Splenda.” For allegations of trademark infringement, dilution, false…
Rangers Baseball LLC filed then suspended an opposition to Bacardi & Co.’s application to register a trademark for a logo featuring the letter “T,” stylized to feature points extruding from the middle of the character. Opposition No. 91229825 (USPTO, suspended September 2, 2016). The Texas Major League Baseball team filed its notice of opposition on August 31, 2016, arguing a likelihood of confusion, and then two days later filed a stipulation to suspend pending settlement negotiations. The Bacardi application seeks to trademark the stylized “T” as well as “Tang” for use on alcohol beverages for its spirit produced from tea leaves. The product is currently available only in China. Issue 616
