Tuesday, June 29, 2010

Dilution by Blurring is Paved with Good Intentions

Shell espresso. Tide calculators. Camel cupcakes. These are just a few of the musings of Chief Judge Kozinski in the latest 9th Circuit ruling affirming the lower District Court's summary judgment finding of dilution by blurring (Visa vs. JSL, June 28, 2010; No. 08-15206; D.C. No. CV-01-00294-LRH/LRL).

For the reader's convenience, this Opinion is incorporated herein.

Talking Points or Take Aways:

1. Dilution isn't confusion.
2. Dilution occurs when consumers form new and different associations with the plaintiff's mark.
3. Use of an identical mark provides circumstantial evidence of dilution.
4. Establishing likelihood of dilution does not require expert testimony or market surveys.
5. Good intentions alone do not negate a showing of likelihood of dilution.

Comment: With apologies to John Milton, this case does indeed point out that the defendant's "good intentions", e.g., his claim that he had no intent to dilute the plaintiff's VISA mark, "alone do not negate a showing of likelihood of dilution."

Conclusion: Dilution by Blurring is paved with Good Intentions.

6. Non-trademark use of a common English word by third parties does not undermine the uniqueness of said common English word as a trademark by the trademark holder.

7. "But dilution always involves use of a mark by a defendant that is "different" from the plaintiff's use; the injury addressed by anti-dilution law in fact occurs when marks are placed in new and different contexts, thereby weakening the mark's ability to bring to mind the plaintiff's goods or services."

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Respectfully submitted,

William E. Maguire
Los Angeles, California

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Thursday, June 17, 2010

"Trademarks In The Sun, Sand and Surf"

Summer 2010 is rapidly approaching with some schools already finished and others finishing up this friday. With the warm weather already here, the first official day of summer on Monday, June 21, 2010 will start out strong.

Plenty of trademarks will be out in force too from sunscreen, to hats, to bathing suits, to umbrellas, to surfboards, bodyboards, swim fins, goggles, beach towels, flip flops, t-shirts, sunglasses, etc. et al.

Can you think of some of the brands that come to mind. Coppertone, Oakley, Persol, Nike, Billabong, Quiksilver, Morey, Speedo, etc.

Each of these brands are protected by registered trademarks. If you are doing business and selling product, then you too need to think carefully about obtaining trademark registrations in the countries where you sell your goods.

If you would like to learn a bit more about the basics of registering your trademark, have a look at the following linked article:

AT THE BEACH: A Primer on the Selection and Clearance of Trademarks


In the words of Coppertone, remember: "Tan, Don't Burn!"

William E. Maguire,

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Tuesday, June 01, 2010

"It's DUNKIN' DONUTS in the USA"

Last month we wrote about DUNKIN' COFFEE in Spain. This month, having just returned from Boston, Mass. last week, we can accurately report that it is still, indeed, DUNKIN' DONUTS, here in the good old U.S. of A. Whew!......

The undersigned attended the Annual Meeting of the International Trademark Association (INTA) which was held last week in Boston, Mass. (May 22 - 26, 2010), and it seemed that there were DUNKIN' DONUTS locations everywhere.
For a professed donut lover this was welcome news. And all the chit chat I've heard over the years about "how good the coffee is at Dunkin' Donuts!".... well, it's true. It's darned decent coffee.

So what does all this have to do with trademarks, you might ask? Plenty! Canton, Mass, as it turns out, is the headquarters of Dunkin' Donuts, a subsidiary of Dunkin' Brands, Inc. Also, Dunkin' Donuts owns a bunch of trademarks and service marks worldwide. Plus, the Trademark Manager, Terry Ursino, at Dunkin' Brands, Inc. was interviewed in the INTA Daily News last week during the INTA Annual Meeting and an excerpt of same is included below.

Dunkin' Trivia: Did you know that Dunkin Brands, Inc. also owns the Basin-Robbins ice cream brand and its trademarks? True story!

Therefore, the balance of this blog post will be a short summary of trademark related facts and figures about Dunkin' Donuts, as TrademarkEsq continues its quest to do mash ups of cool brands and trademarks.

A. Dunkin' Donuts, The Trademark, USA:

The earliest U.S. trademark registration we could locate online at uspto.gov for Dunkin' Donuts, is as follows:

Goods and Services IC 030. US 046. G & S: Doughnuts [and Doughnut Flour, Pastry Fillings and Toppings, Flavoring Extracts, Shortenings, ] and Coffee. FIRST USE: 19540700. USED IN ANOTHER FORM as to "Dunkin' Donuts" on doughnuts May 1952. FIRST USE IN COMMERCE: 19560700

Serial Number 72054025 Filing Date June 23, 1958
Current Filing Basis 1A Original Filing Basis 1A
Registration Number 0715860
Registration Date May 23, 1961

note: According to the records online at uspto.gov, Dunkin' Donuts owns at least 18 registered trademarks and service marks in the USA, plus several pending trademark applications. Thus, one can see that Trademark Registrations play an important role in protecting this famous brand name.

B. Dunkin' Donuts, Worldwide; Comments:

According to Terry Ursino at Dunkin' Brands, Inc., there are Dunkin' Donuts and Baskin-Robbins restaurants in 45 countries and that they have registered their marks more broadly than that, e.g., in more than 45 countries. This suggests that Dunkin' adheres to the strategy of both offensive and defensive trademark registrations. Offensive marks are those that apply to countries where one offers goods and/or services. Defensive registrations are for those countries where pirating and counterfeiting is anticipated and where use may not yet occur or anticipated.

C. Dunkin Donuts, The INTA Daily News interview (excerpt only):

Question: What is the single biggest challenge you face in protecting your particular brand?

Answer: "Staying one step ahead of trademark priates and cybersquatters. Our brands are world famous, and with fame comes imitation and unauthorized use of our IP."

(Source: "Defending a Delicious Brand", INTA Daily News, Wed., May 26, 2010.)


Just a few comments overall about things we think are fun and interesting in the area of brand names and trademarks for you to consider.

Time for a cup of joe,

William Maguire
Blog: wwwTrademarkEsq.blogspot.com
Web: www.TrademarkEsq.com

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