Notwithstanding a gallant fight from Reed Elsevier Properties, Inc. at the Trademark Trial and Appeal Board (“TTAB”), the TTAB judges found the mark lawyers.com, for a website providing access to an online interactive database featuring information exchange in the field of law, to be generic. In a decision that has left many trademark attorneys scratching their heads, the TTAB reasoned that the public would readily identify a site bearing the name lawyers.com with a site containing information about lawyers and the law, and accordingly, the trademark was generic.

In fact, the site does contain information about lawyers. It does not, however, contain actual lawyers, nor does it give users the ability to talk to a lawyer through the site (except on special occasions). The site also contains information about cases, legal topics, and legal tips. While most would have no quibble with the suggestion that a site called lawyers.com is dedicated to lawyers and the law, longstanding trademark law suggests that generic refusals of trademarks are reserved for terms that represent the exact definition of what’s offered (a site called poetry.com, that featured actual poetry). Indeed, in this case, it appears that the mark lawyers.com is descriptive rather than generic, since it describes an element of the site, rather than the site itself.

Rex Bell, creator of STAR BOCK beer, is raising the bar on his trademark infringement case.

In August of this year, a district court judged ruled that Bell’s use of the mark and the sale of the beer did not infringe the Starbuck’s coffee trademark.

The Judge, however, put a number of restrictions on Bell’s use of the trademark, that Bell believes are inapposite to the holding. For instance, while the Judge noted that there was no dilution of the Starbuck’s trademark and no likelihood of confusion between the marks. Still, it limited Bell’s use of the mark to Galveston Island, Texas, and to establishments where the beer would be sold “in conjunction with musical activities.”

The term “bock” is descriptive for a specific type of beer, a lager that is brewed traditionally in the fall. The term “star” as used by this Texas purveyor, appears to be more related to his “lone star” roots than any Starbuck’s reference. Finally, Bell uses no green or black in his logo, which characterize the Starbuck’s logo. Indeed, about the only two things the companies appear to have in common is they both provide a “buzz” in one form or another. While Starbuck’s does not currently make beer, the company has sold a coffee liquor for a number of years. We anxiously await the outcome.

The Trademark Trial and Appeal Board issued a recent decision upholding the examiner’s refusal to register the color RED for non-functional plastic training equipment shaped like knives, flashlights, pistols, and other objects used for training law enforcement personnel.

The company, Armament Systems, colored all of its “toy” weapons and armament items in a bright red. This was done, Armament said, to distinguish it immediately from actual firemarms or other functional pieces of equipment. The TTAB, in affirming the examining attorney’s refusal to register the color, noted that there were obvious safety advantages to using the color red, and as such, the color must remain available to manufacturers of competitive equipment for their use.

The decision is interesting in that the TTAB used as evidence against Armament its own cease and decist letters to third parties. These letters were sent to other law enforcement training companies who had been using red on their training equipment prior to getting the letters. Armament introduced the letter into evidence to show that in fact, competitors did not need to use red; all of them had changed their color as a result of receiving the letters. The TTAB found, however, that not using the color red actually put Armament’s competitors at a distinct disadvantage since red was the color associated with safety by law enforcement personnel.

Frosty Treats, Inc., the modern-day pied piper, tempting children with, well, frosty treats from its ice cream trucks, sued Sony Computer Entertainment for trademark infringement based upon Sony’s use of the mark FROSTY TREATS on the side of an ice cream truck in its video game “Twisted Metal.” Frosty claimed that the use of the truck with a clown, coupled with the words FROSTY TREATS emblazoned on one of the trucks would chill its trademark rights and cause confusion among consumers as to whether Frosty sponsored, endorsed, or was affiliated with the game.

The 8th Circuit affirmed a lower court ruling that there was no infringement, because notwithstanding the long time use of the mark by Frosty, the term “frosty treats” was descriptive of frozen ice cream desserts and the mark FROSTY TREATS, as used by the ice cream company, was printed in smallish letters on the back and side of the trucks, so as to appear descriptive of the many ice cream decals plastered around the truck. Frosty’s survey, evidencing some consumer confusion related to seeing the labeled truck in the video game, was thrown out. As to the clown, the 8th Circuit overturned the trial court’s holding that it was functional (the clown directed children to safely cross the street) was overturned, but held nonetheless that no triable issue of fact existed. We believe it’s game over for Frosty’s.

The Constitutional Court in South Africa has ruled that Laugh It Off productions made fair use of liquor giant’s BLACK LABEL trademark as parody when it created a similar looking label that read BLACK LABOUR WHITE GUILT to sell on t-shirts.

SABMiller, one of the largest brewers in the world, manufactures Carlings Black Label Beer. It found Laugh It Off’s add offensive and racially charged and asserted a claim of trademark infringement against Laugh It Off, alleging tarnishment of its polular brand. After losing at the lower court level, the Constitutional Court in South Africa ruled — in a first of its kind case — that Laugh It Off was not liable for trademark infringement.

Let’s hear it for free (and marginally funny) speech.

Car-Freshner, the company that makes those little pine-scented cardboard trees that dangle from many an automobile, has sued Urban Outfitters and Cordog Cards for trademark infringement in U.S. District Court.

The suit claims that the defendants have been unjustly enriched by the use of the trademark pine-tree on holiday cards that feature the tree with the words “Season’s Greetings,” as the message.

Dale Detwiler, spokesman for Corndog Cards, acknowledges that the company did use the image on the cards, but claims his use is parody. “The parody’s humor resides in the fact that instead of using just any pine-tree fo its Christmas tree, the card uses Plaintiff’s tree — a tree with no connection whatsoever to Christmas.”

Um, Dale? For the record, parody is not a defense to trademark infringement. . . at least not an absolute defense. Your attorney will still have to show no confusion. Oh, and it wasn’t even all that funny. We know one company that’s not laughing, anyway.

Last month, the 9th Circuit Court of Appeals ruled that non-commercial use of a party’s trademark as a domain name may not constitute trademark infringement.

The case involved the use of the Bosley Medical Institute’s BOSLEY trademark, which it uses for its hair replacement system. Bosley Medical Institute’s brush with defendant Michael Kremer started when the former disgruntled employee registered the domain name www.bosleymedical.com and then proceeded to write some unfavorable — shall we say hairy — things about his former employer. Bosley Medical brought suit, allegiing trademark infringement of its registered mark.

After combing through the facts, the 9th Circuit held that Kremer’s use of the trademark was non-commercial speech, that no consumer would be confused by his use of the mark, and that the Lanham Act cannot be used as a shield against free speech or criticism.

It’s clear that Kremer’s web site was a bald-faced attempt to divert traffic from the Bosley Medical program. Still, without proof that the site was confusing consumers, or that Kremer was selling hair pieces himself, Bosley is stuck with the wigged-out web site.

Last week, Hugger-Mugger brought suit in federal court against Gaiam, alleging trademark infringement for Gaiam’s use of the term “Hugger-Mugger” as a key search term. Hugger and Gaiam are purveyors of consumer yoga products.

According to the suit, Gaiam is using Hugger-Mugger’s registered trademark, HUGGER-MUGGER, to divert consumers to the Gaiam site. Hugger-Mugger claims that Gaiam has contracted with various search engines, such as Google, MSN, About.com, and Yahoo! to use the trademark. Each time a search engine user types in the term HUGGER-MUGGER, the suit claims that users are given the opportunity to enter the Gaiam site.

This lawsuit is just one of a mounting number of suits that calls into question the practice adopted by many competitors and search engines of using third party trademarks. This suit, however, marks one of the first that goes directly after the competitor for trademark infringement. While it seems evident from some recent cases that have been handed down by the courts that search engines are not likely liable for selling otherwise descriptive terms that may also be trademarks, it is still unclear how the courts will react to more fanciful trademarks used by competitors and search engines. No doubt, Hugger-Mugger’s Chakras will be out of alignment until this matter is settled.

Blue Frog Mobile, the people who brought BLING TONES (hip-hop ring tones) to your mobile phone, has filed suit in Seattle District Court alleging trademark infringment against Lagardere Active North America, Inc. for that company’s use of the mark PUT SOME BLING IN YOUR RING and THE HOOK UP.

Blue Frog claims rights (or rizzights if you’re keeping up) in the marks GET SOME BLING IN YOUR RING for its ring tone download services, and THE HOOK UP, under which it promotes its dating services. According to the suit, Blue Frog contends that Lagardere uses the same or nearly identical marks to promote its identical services. The suit also seeks to cancel Lagardere’s trademark application to register the mark BLING TONES on the ground that the mark is merely descriptive of hip-hop ring tones and is frequently used by the hiphop community. Blue Frog is hoping the district court will see things its way and throw down a ruling fo’shizzle in favor of the ring tone hawker. Stay tuned, peepz.

Eric Hanson, operator of 1-800-SKI-VAIL, successfully defended his business and phone number against Skiing Behemoth, Vail Associates, who filed suit against the reservations agent for trademark infringement.

In ruling in favor of Hanson, who also owns 1-800-SKI-TELL(URIDE) and 1-800-SKI-ASPE(N), the district court judge stated that Vail Associates could not use its registered trademarks to stop Hanson from using the phone number. In addition, the court threw out Vail Associates’ request to cancel Hanson’s own trademark registration for 1-800-SKI-VAIL. In the Judgment, the judge noted that Vail Pass, for which the mountain was originally named, predated the Vail ski area (originally developed by George Gillette) and thus Vail Associates cannot claim exclusive rights to the use of the word. Not snowed by Vail’s arguments to the contrary, the judged used Vail Associates’ own witnesses against them, showing that travelers do not associate a ski vacation and its with a specific company, but rather a location. In the end, Hanson was one happy (phone) mogul.

The U.S. Supreme Court has clarified a split in the circuit courts and limited to scope of protection a federally registered mark may have in a trademark infringement case. In Lasting Impressions, Inc. v. KP Permanent, the high court wrote, in its unanimous decision, that a defendant claiming fair use (based upon a descriptiveness defense) of a third party’s registered trademark need not show a lack of consumer confusion in order to prevail. Indeed, even in cases where some confusion does exist, it will not be dispositive of trademark infringement by the junior user. Writing for the court, Justice Souter noted that “Some possibility of consumer confusion must be compatible with fair use,” effectively shifting the burden of showing trademark infringement against a descriptiveness defense to the plaintiff.

The case involved two companies that make liquid pigments used in cosmetics. Lasting Impression, Inc. (“LI”) had an incontestable registered trademark for the mark MICRO COLORS (stylized), under which it sells the permanent inks. The defendant, KP Permanent (“KP”), also makes cosmetic dyes. Beginning in 1999, KP started using the words “micro colors” on its products and printed matter. Shortly thereafter, KP received a cease and desist letter from LI, alleging trademark infringement and demanding that KP remove the words “micro colors” from its packaging and products. KP responded, filing a declaratory relief action alleging fair use of the words and asserting that the descriptive use of the words “micro colors” in the cosmetic industry predated LI’s trademark registration.

A federal trial judge, no doubt following similar cases handed down in the Second Circuit, found in favor of KP and held that its use of the term “micro colors” was allowable as descriptive use. On appeal, the Ninth Circuit reversed the lower court, stating that a defendant was required to show that consumers were not confused by the use of the terms in a descriptive sense, effectively establishing a conflict between it and the Second Circuit. The Supreme Court appears to have sided with the Second Circuit in this matter, and found that no showing of lack of confusion is necessary to make a fair use defense.

Given the holding of the Supreme Court in this case, plaintiff’s may have a more difficult time showing that a competitor’s use of terms that are similar or identical to a registered trademark constitutes trademark infringement. One hopes, however, that common sense will prevail in the event there is actual and substantial confusion in the marketplace.

DC Comics, owner of the SUPERMAN character and corresponding trademarks, may in fact have a lock on the term “kryptonite,” much to the consternation of Kryptonite Corp., makers of the famous bicycle lock.

A New York City judge refused to throw out the trademark infringement case DC filed against the bike lock company, noting that “Kryptonite is an element associated with Superman entertainment products and it is thus entitled to protection.”

The two companies have existed for over 20 years pursuant to a 1983 agreement that limited Kryptonite’s use of the mark for locks and cables. Now that the company is producing new products (clothing, tote bags), all tights are off.

Montblanc North America, famous maker of high-end and executive pens and pencils has sued A.T. Cross Co. for trademark infringement and false advertising for marketing its refills with the MONT BLANC trademark conspicuously on the package.

Montblanc North America, famous maker of high-end and executive pens and pencils has sued A.T. Cross Co. for trademark infringement and false advertising for marketing its refills with the MONT BLANC trademark conspicuously on the package.

Getting straight to the point, Montblanc has asked a New York district court for a preliminary injunction to stop Cross from selling the pen refills in question. Seems these rival pen-makers have “crossed” paths before. In 2003, Montblanc sent a similar demand to Cross, who promised to address the issue. Evidently, that was the PENultimate altercation.

In its suit, Montblanc claims that Cross is taking advantage of the goodwill and equity built up in the mark MONTBLANC by featuring it so conspicuously on the Cross packaging. What’s worse, the Cross brand is missing from the package. Montblanc claims the refills’ markings do not reflect deminimus fair use of its trademark and vows to have its name removed. For Cross’ part, the bar-mitzvah gift king could not be reached for comment.

The 8th Circuit Court of Appeals has upheld a U.S. District Court ruling that Companion Products Inc.’s “Cody Cow” Computer Topper infringes Gateway Computers cow-motif trademark.

Companion Products makes computer plush animal heads that attach to stretch bands which wrap around computer monitors. Its collection includes numerous animals, including a cow, which naturally, is white with black spots. Consumers may buy these toppers (after market) to decorate their computer monitors. Cody Cow quickly became a best-seller, the cream of the crop, one might say.

No COWards they, Gateway, which has a trademark registration for the cow-motif as used in connection with computers, sued in Federal Court for trademark infringement. Companion argued that Cody was, well, a cow, that cows have spots, and that it was not using Cody specifically to market its plush heads, but merely selling a cow. Gateway’s response was that such a defense was Bull, and proffered expert testimony that the cow motif as used in connection with computers was widely recognized to be a Gateway trademark. Evidently, both the lower court and 8th Circuit agreed with Gateway, requiring Companion Products to change Cody’s spots. Notwithstanding the fact that cows do come in many colors, we think the 8th Circuit’s holding is udderly ridiculous.