Viacom International Inc. has filed a lawsuit against IJR Capital Investments alleging that a restaurant owned by the company infringes on Viacom’s intellectual property in the “SpongeBob SquarePants” franchise. Viacom Int’l Inc. v. IJR Capital Invs., No. 16-0257 (S.D. Tex., Houston Div., filed January 29, 2016). As the complaint explains, “The ‘Krusty Krab’ is owned by Eugene H. Krabs, a prominent and recurring character in the SpongeBob universe. SpongeBob SquarePants works at the ‘Krusty Krab’ as a fry cook, but he also performs a myriad of other duties, and once stated that his official title is ‘Vice Assistant General Manager in charge of certain things.’” IJR operates The Krusty Krab in Texas and has filed for trademark registration. Viacom argues that IJR is “attempting to trade off of the goodwill and reputation of the ‘SpongeBob SquarePants’ media franchise’ and that consumers are likely to be confused by IJR’s use of “Krusty…
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Bacardi Ltd. has reportedly filed a Freedom of Information Act request seeking information on the renewal of a trademark registration for “Havana Club” granted to Empresa Cubana Exportadora de Alimentos y Productos Varios (“Cubaexport”), a Cuban government-owned entity. Cubaexport had filed for a renewal in 2006, but the U.S. Treasury Department’s Office of Foreign Assets Control (OFAC) refused to grant the license required to renew the trademark. Cubaexport sold its rum recipe and the rights to “Havana Club” to Bacardi in 1994, 30 years after the United States prohibited the import of Cuban goods. Bacardi sold rum under the “Havana Club” name while disputing the rights to the mark with Pernod Ricard, which owns the rights to sell Havana Club worldwide. In January 2016, Cubaexport sought to renew its trademark in “Havana Club,” arguing that it had obtained the necessary license from OFAC, and the U.S. Patent and Trademark Office…
Idahoan Foods LLC has filed a lawsuit against Basic American Inc. alleging the company’s line of potato products marketed under the name “Buttery Home-Style” infringes on Idahoan’s rights to “Buttery Homestyle,” its brand of potato products. Idahoan Foods LLC v. Basic Am. Inc., No. 16-0005 (D. Idaho, filed January 6, 2016). Idahoan’s trademark application to the U.S. Patent and Trademark Office was filed in May 2015 and remains pending, but the company argues that it has used “Buttery Homestyle” commercially since 2003. Idahoan notified Basic American in December 2015 of its allegedly superior rights to the mark; the complaint asserts that Basic American then filed a lawsuit in California federal court seeking a declaratory judgment that “Buttery Home-Style” does not infringe “Buttery Homestyle.” Idahoan seeks an injunction, destruction of the infringing mark, damages and maturation of its trademark application. Issue 590
A Kentucky federal court has granted a motion to dismiss an action against the owner of Duck Dynasty trademarks alleging infringement based on jurisdictional issues. Chinook USA v. Duck Commander, Inc., No. 14-1015 (W.D. Ky., Louisville Div., order entered January 8, 2015). In 2014, Duck Commander licensed the rights to several trademarks related to Duck Dynasty, including “Duck Commander Family Foods,” “Uncle Si” and “Si Robertson,” to Chinook for use on several types of beverages. Chinook later learned that Duck Commander also licensed the same rights to other companies, including Go-Time and Checkered Flag Business. Chinook sued, arguing that it held exclusive rights to the use of the trademarks on beverages. In “colorful” filings recounting “Bill Russell’s collegiate basketball career, the Scottish jurist and poet Sir Walter Scott’s Marmion, and Jackie Gleason’s role in an short-lived television series from the late 1940s,” Chinook argued that Duck Commander and the beverage…
The U.S. Court of Appeals for the Second Circuit has affirmed a lower court’s dismissal of a lawsuit against Kellogg Co. alleging the company owed a man compensation after it implemented an idea for a portable breakfast the man had submitted through the company’s online portal for innovative ideas. Wilson v. Kellogg Co., No. 15-2237 (2nd Cir., order entered January 13, 2016). The man submitted an idea for a beverage flavored like cereal milk, but Kellogg apparently told him it was not interested in pursuing the idea. The company later obtained a trademark for “Kellogg’s Breakfast to Go” and began selling a similar product under the name in 2013. The man sought compensation for the idea, but Kellogg argued that the terms and conditions the man had agreed to upon submission limited his ability to recover any money for a successful submission. The Second Circuit agreed, finding that the terms…
The U.S. Court of Appeals for the Second Circuit has ruled that a Russian state-owned company can sue U.S. distributors of Stolichnaya vodka in a dispute over which entity inherited the brand after the Soviet Union collapsed—the Russian Federation or private companies successive to the company that sold the product before the dissolution. Fed. Treasury Enter. Sojuzplodoimport v. Spirits Intl. BV, No. 14-4721 (2nd Cir., order entered January 5, 2016). A lower court previously held that the Russian Federation’s Federal Treasury Enterprise Sojuzplodoimport (FTE) did not have standing to sue, but the appeals court disagreed. “The declaration of a United States court that the executive branch of the Russian government violated its own law by transferring its own rights to its own quasi-governmental entity (FTE) would be an affront to the government of a foreign sovereign,” the appeals court held. “Even an inquiry into whether Russian law permitted the Assignment…
Grumpy Cat Ltd., owner of the Grumpy Cat trademark, has filed a copyright infringement suit against Grenade Beverage LLC alleging the company failed to pay for the sales of authorized merchandise and sold additional unauthorized branded products. Grumpy Cat Ltd. v. Grenade Beverage LLC, No. 15-2063 (C.D. Cal., filed December 11, 2015). "Ironically," the complaint states, "while the world-famous feline Grumpy Cat and her valuable brand are most often invoked in a tongue-and-cheek fashion, Defendants' despicable misconduct here has actually given Grumpy Cat and her owners something to be grumpy about." Grumpy Cat agreed to license its trademark to Grenade for use in relation to "a line of Grumpy Cat-branded coffee products," which the complaint asserts was mutually understood to mean a line of iced-coffee beverages called the "Grumpy Cat Grumppuccino." Grumpy Cat alleges that it later learned Grenade also planned to produce a line of roasted coffee grounds products associated…
Pepperidge Farm, maker of Milano® cookies, has filed a trademark infringement lawsuit against Trader Joe’s Co. alleging the retailer’s Crispy Cookies emulate the shape and configuration of Milano® cookies. Pepperidge Farm, Inc. v. Trader Joe’s Co., No. 15-1774 (D. Conn., filed December 2, 2015). In addition to the similarity between the cookie products, Pepperidge Farm alleges that the packaging of Crispy Cookies is similar as well. Although Crispy Cookies packaging depicts the cookies in a fluted paper tray—as Milano® cookies are sold—Trader Joe’s actually packages the cookies in a plastic tray inside the external packaging. Pepperidge Farm cites Google search results for “‘Trader Joe’s,’ ‘cookie’ and ‘Milano’” as evidence that consumers have also noted the similarities between the two products. Pepperidge Farm seeks declarations of infringement, permanent injunctions, damages and attorney’s fees. Issue 586
Jim Beam Brands Co. has filed a notice of opposition against an application filed by Brown-Forman Corp., maker of Jack Daniels®, to trademark Woodford Reserve Double Oaked, a bourbon product aged in two charred-oak barrels. Jim Beam Brands Co. v. Brown-Forman Corp., Serial No. 86/450,636 (T.T.A.B., notice of opposition filed October 19, 2015). Jim Beam argues that the “Double Oaked” portion of the proposed trademark is generic—or at least descriptive—because it “refers to a process of aging alcoholic beverages in a second oak barrel, which is common in the industry.” The notice cites descriptions on Brown-Forman’s website using the terms “double” and “double oaked” to describe the process of making the product. Jim Beam does not object to the registration of Woodford Reserve but requests that Brown-Forman disclaim trademark control of “Double Oaked.” Issue 583
Whole Foods Market, Inc. and video publisher The Criterion Collection have filed a notice of voluntary dismissal in a trademark dispute over Whole Foods' "Criterion Collection" line of wines. The Criterion Collection v. Whole Foods Mkt., Inc., No. 15-7132 (S.D.N.Y., notice filed October 28, 2015). The parties note that matters have been "amicably settled and adjusted between the parties" and voluntarily dismiss the case with prejudice and without costs to either party. Terms of the settlement were not disclosed. The September 2015 lawsuit alleged that Whole Foods infringed Criterion's trademarked name for a line of republished classic movies. Additional details appear in Issue 578 of this Update. Issue 583
