Wednesday, August 27, 2008


The Jury in the lawsuit above awarded Mattel $100 Million in damages yesterday in U.S. Federal District Court in Riverside, Calif. These damages were awarded against MGA, the maker of the Bratz line of dolls, for copyright infringement and contract interference.

Readers of this Blog will recall our earlier posted article dated July 18, 2008 wherein we discussed the liability phase of this lawsuit under the heading, "A BLACK SPIRAL NOTEBOOK".

The $100M verdict is significantly less than the $1.8 Billion that Mattel had been seeking, but Mattel's counsel has reportedly indicated that its client will be seeking an injunction against MGA prohibiting MGA from producing the Bratz line of dolls. Such an injunction certainly would portend doom for MGA since Bratz is their bread and butter.

Time will tell how this will all play out with an Appeal almost certain to follow. This case is cited as Bryant v. Mattel, CV04-9049 (C.D. Cal., filed 2004)

Friday, August 22, 2008

The Cupcake War

I guess it was predetermined years ago after Famous Amos and Mrs. Fields faced each other down in a no holds barred UFC-like battle of the taste buds on your local store shelf. And so, today it is ALL ABOUT THE CUPCAKE ! Hostess never made it into the Big Leagues of this Designer Dessert Pastry Clique but then it has massive distribution, so who cares !

In the Designer Cupcake Community, however, a trademark battle is now unfolding and it is not just the cupcake wrappers. As reported on August 21, 2008 by L.A. Times Staff Writer, Kimi Yoshino, the famed Beverly Hills cupcake bakery, SPRINKLES, has filed a lawsuit in Federal Court, in the Central District of California (Case 2:08-cv-05349-MRP-PJW) claiming that its competitor, FAMOUS CUPCAKES, has copied Sprinkles so-called "modern dot" design trademark. This design has been described as a "circle-on-circle, color-coded piece of candy that tops every Sprinkles cupcake and helps distinguish a 'Red Velvet', say, from a 'Chai Latte'". Readers of the L.A. Times have even been invited to weigh in, metaphorically speaking, on the battle of the cupcake bakeries at:

A trademark includes, pursuant to Sec. 1127 of the Lanham Act, "any word, name, symbol, or device, or any combination thereof." The Sprinkles "modern dot" trademark would qualify as either a symbol or device. Indeed, the Sprinkles "modern dot" trademark is registered with the USPTO as Reg. No. 3224075 (Reg. Date: April 3, 2007) and the mark is described in said registration, as follows: "The mark consists of a nested-circle design placed prominently on the top center of a cupcake. The dotted lined cupcake in the drawing shows placement of the mark."

Perhaps most interesting, however, from a filing point of view, is that this mark was registered under Sec. 2(f), rather than Sec. 1(a). Section 2(f) provides for "the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce." In a review of the file wrapper or file history found online at, the mark was originally filed under Sec. 1(a) but was initially refused as lacking in inherent distinctiveness. Thus, the applicant was faced with either abandonment of the application or changing its filing basis to that allowed by Sec. 2(f) and providing evidence of "acquired distinctiveness". The applicant was apparently able to provide such evidence in view of the following statement made by the Examining Attorney, namely: "The provided Section 2(f) evidence is acceptable and made of record. Therefore, the non-distinct configuration refusal and ornamental refusal are hereby withdrawn."

In delving even further into the Applicant's response to the initial refusal and the evidence provided to prove distinctiveness, said evidence even included the Declaration of the Fonz, aka, the actor Henry Winkler:

The Fonz' household consumption of Sprinkles cupcakes apparently numbers approximately thirty (30) per month, so I hope he also has a personal trainer or a large family. We don't have to worry about the Winkler Household Monthly Cupcake Consumption Rate (hereinafter, WHMCCR), however, because the applicant also bagged the Declaration of Henry Winkler's wife, Stacy, who also corroborated the aforesaid WHMCCR and declared that the so-called modern dot design is unique to Sprinkles.

If I were Famous Cupcakes, Inc., I would capitulate now or surely be prepared to face down the Fonz in court ! Heeeeeeey !

Friday, August 15, 2008

Who's Who ?... or Who's On First ?

So you can imagine my delight when I received the following email this afternoon, just a couple of days shy of my birthday:

Subject: Your Selection Into Who's Who - Response needed
Date: August 13, 2008 11:27:33 AM PDT
To: maguir......

Dear Candidate,

Your response is kindly requested. You were recently appointed as a biographical candidate to represent your industry in the Who's Who Among Executives and Professionals, and for inclusion into the upcoming 2008-2009 "Honors Edition" of the registry.

We are pleased to inform you that on July 9th, your candidacy was approved. Your
confirmation for inclusion will be effective within five business days, pending our receipt of the enclosed application.

The Office of the Managing Director appoints individuals based on a candidate's current position, and usually with information obtained from researched executive and professional listings. The director thinks you may make an interesting biographical subject, as individual achievement is what Who's Who is all about. Upon final confirmation you will be listed among thousands of accomplished individuals in the Who's Who Registry. There is no cost to be included.

We do require additional information to complete the selection process and kindly ask that you access this form on our website by Clicking Here

Matthew J..........
Managing Director"

(redacted but not redundant)

My delight disappeared upon seeing the words, "Who's Who", however. I wondered which "Who's Who" this is. I asked a colleague and he said, "Who?". I explained that this was the "Honors Edition" of the Who's Who. He said, well that is quite an honor !

In any case, it got me to thinking WHO owns the trademark WHO'S WHO ? Who do you think ? It's not Simon & Garfunkel, I can tell you that much. Perhaps Simon & Schuster...

Turn's out Who owns Who's Who is a whodunit. For instance, there is one publisher
who owns multiple U.S. trademark registrations for "Who's Who" but who disclaims exclusivity to "Who's Who", e.g., NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "WHO'S WHO" APART FROM THE MARK AS SHOWN. Another publisher claims Sec. 2(f) distinctiveness to "Who's Who". Yet another Registrant owns a Class #16 registration for "Who's Who In Congress" without disclaimer or distinction.

All of which begs the question, "Who's on First ?!" Abbott & Costello notwithstanding, the answer to who owns "Who's Who" may actually be "Who Doesn't!".

Who do you think ? Is it Doctor Who, Moms Who Marathon, Chicks Who Click, The Boy Who, or The Who ? In the end, who cares ! My personal opinion is stated quite succinctly by the Applicant of Ser. No. 78710399.