Tag Archive for: suit

YM Inc. Beats Roots Inc. In Trademark Suit Over Two Logos That Don’t Look Anything Alike

In far too many of the trademark disputes we cover here, those disputes center around two competing logos or trade dress that look nothing alike, save for one very generic component. To get a sense of what I mean, you can refer back to the Chicago Cubs and Washington Nationals bullying a financial services company because its logo used a capital “W.” Or the time one sausage company sued another because both logos had, sigh, a pig in them.

Or, now, when clothier Roots Corp. tried to nullify a trademark held by YM, Inc. because both had clothing lines with logos that included log cabins.

Roots had applied to strike YM’s registered trademark for a logo that featured a cabin surrounded by two trees and the words “Cabin Fever” beneath it, arguing that it was invalid for several reasons. According to a federal court document, Roots said the logo was confusing with its existing trademarks, that the YM Inc. trademark was not distinctive, and that the mark was only being used on some of the goods listed in the application. YM disputed all of Roots’ arguments.

And it’s easy to understand why the moment you take a look at the two logos in question.

Here again we have one single aspect that can be said to be similar about each logo: both include a cabin set against trees. Beyond that, nothing else is similar. The cabins themselves aren’t similar. Neither are the trees. Nothing in the rest of the images — from colors to shapes to wording to font — is even remotely similar. It’s enough to make you wonder if any public confusion was really the worry here, or if this was just one rival clothing company trying to push around another.

It seems the judge overseeing the request had similar concerns.

In the end, Federal Court Justice George R. Locke dismissed Roots’ application to strike YM’s trademark registration, concluding that the rival’s mark “was not confusing” with any of the Roots’ cabin-related trademarks, despite some similarities in the trademark and products sold by both companies.

“The cabin image itself used in YM’s Cabin Fever Design Mark is not particularly similar to either of the cabin images used by Roots,” Locke wrote in his January 8 decision, adding that using an image of a cabin was “no more distinctive” than using the word cabin.

“The word ‘cabin’ suggests a small house in the woods, and trees are inherent in such an environment. It is not distinctive to incorporate trees in an image of a cabin.”

Roots also suggested that YM’s entire trademark should be cancelled because it had applied for the mark with far more market designations than it was in fact using. The judge disagreed, however, taking the much more common sense approach of simply limiting the trademark to the markets in which YM is using it, of which there are something like ten. This again seems to indicate that this is all simple bullying, rather than any true concern for customer confusion.

And so we end up with a good ruling, one which actually takes care to address the tests for trademark infringement rather than simply looking at two logos that both have log cabins and deciding that infringement must have occurred. It would have been nice for the legal staff at Roots to have taken such care as well.

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Marriott data breach: Class-action suit filed; experts ask why it wasn’t caught earlier – USA TODAY

  1. Marriott data breach: Class-action suit filed; experts ask why it wasn’t caught earlier  USA TODAY
  2. Schumer: Marriott should pay for new passports compromised by data breach  The Washington Post
  3. Dem lawmaker: Marriott ‘in the dark’ about massive data breach | TheHill  The Hill
  4. Marriott’s breach response is so bad, security experts are filling in the gaps — at their own expense  TechCrunch
  5. Marriott sued hours after announcing data breach  ZDNet
  6. View full coverage on read more

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Texas A&M Wins Trademark Suit Against Soap Company In Washington State By Playing Six Degrees Of Trademark Licensing

Readers here will likely be aware of the tortured history of Texas A&M’s “12th Man” trademark. If you’re not, the term describes the fans of the team and their tendency to make so much noise to effect on-field play during games. A&M, which holds a trademark for the term, has made a name for itself as a trademark bully, going around and threatening basically anyone that uses anything remotely like that term, even as it has in the past infringed on the IP of others. The school has been so successful in locking down this term for use in anything sports related that the Seattle Seahawks, the NFL team that also refers to its fans as its “12th Man”, pay a licensing fee to the school to do so.

And now that licensing arrangement appears to be part of the reasoning A&M’s legal team used to sue a soap company based in Washington State for using the “12th Man” term as well. In the school’s filing, embedded below, it argues that because the soap company resides in the same state as the Seahawks, and because the company’s soap product “12th Man Hands” includes an image of a football on the packaging, this makes it an infringement on its trademark, despite soap and athletics not being in related marketplaces. The USPTO somehow actually bought this six-degrees-of-licensing-separation argument.

According to the trademark board, the soap company was trying to call to mind the Seahawks’ 12th Man thing when designing the soap. There’s even a football on the “12th Man Hands” soap bar, and the company acknowledged it was trying to reach Seahawks fans, which makes sense because it’s a Washington-based company.  But according to the board, the soap-makers didn’t clear their use of the 12th Man mark with A&M specifically. That appears to have hurt their case.

And the board ruled against the soap company. That’s ridiculous for several reasons. First, no linkage in geography, nor the company’s desire to reach Seahawks fans, creates confusion on its own in the public. Other than the image of a football, there is no other linkage to the Seahawks at all. It’s just a puck of soap with something of a stock image of a football being held by a hand. Nobody is going to look at that and think it was soap branded by the Seahawks.

Secondly, even if the above weren’t true, the confusion would be between the soap company and Seahawks, not Texas A&M. Whatever the licensing agreement between the Seahawks and the school, there is absolutely zero chance for anyone in the public thinking that Texas A&M has anything to do with this soap company. That, I’m confident saying, is completely inarguable. If anyone should have sued here, it should have been the Seahawks, and even that suit would have been ridiculous. A&M included information about past licensing deals for soap with other companies, but none of them were for “The 12th Man” use, and all of them were instead for university-specific terms and imagery, such as its logo.

How in the world the Trademark Board ever bought into this is beyond me.

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Baltimore Attorney Tapped to Help Lead Data Breach Suit

  1. Baltimore Attorney Tapped to Help Lead Data Breach Suit  U.S. News & World Report
  2. Baltimore attorney selected to help lead class-action lawsuit over massive Equifax data breach  Baltimore Sun
  3. Full coverage

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