Hair salon threatened with lawsuit agrees to change name

Owners of a salon in Rockaway, NJ, called “Moulin Rouge” have agreed to change the salon’s name after receiving a cease and desist letter from the owner of several federal trademark registrations for the mark MOULIN ROUGE.

According to the Daily Record.com, the change in signage, business cards, etc is expected to cost about $10,000. The attorney for the registrant said she discovered the infringing use by using Internet search engines. Owners of the salon reportedly checked NJ state records to see if the name was available but they didn’t check the US Trademark Office database. The attorney representing the salon said, “It’s not common to look up a patent [sic] when starting a company in New Jersey . . . I think I’ll advise all future clients to do so.” Good advice; especially if they’re going to have a presence on the Internet.  Needless to say, a quick knockout trademark search can be done for much less than $10,000.

University of Utah no love for “Big Love”

According to The Salt Lake Tribune, the University of Utah has demanded that HBO remove part of a scene from the show “Big Love” in which the University’s logo was shown on an official-looking document during an episode that aired in March.

High School and Booster Club Battle Over Use of School Name

The Judson Independet School District reportedly is in the midst of a dispute with its booster club over use of the mark JUDSON ROCKETS by third parties, which is cutting into the booster club’s proceeds from sales of merchandise bearing the mark. 

Booster club volunteer Alan Caudell filed US Trademark Application Serial No. 77/439,823 for the mark JUDSON ROCKETS in class 25 for t-shirts among other things.  A Notice of Allowance issued on November 11, 2008.  The applicant has not yet submitted a Statement of Use and specimen.

Law firm sues for trademark infringement

Jones Day recently sued Blockshopper.com in the northern district of Illinois for trademark infringement.  

Blockshopper.com provides real estate news and local market data for select areas, including Las Vegas, Chicago, and south Florida.  Blockshopper.com reported on real estate purchases in the Chicago area by two Jones Day lawyers.  According to media reports, Jones Day alleges Blockshopper.com infringed its trademark rights by mentioning the firm’s name in the article and providing a link to the Jones Day web site.

Gander Mountain wins trademark dispute with Cabela’s

The Eighth Circuit Court Appeals affirmed a district court decision granting Gander Mountain the right to use its marks in direct sales and marketing.  See more here.

K-Swiss to receive $30 million in trademark settlement

Collective Brands, Inc., which operates Payless shoe stores, agreed to settle a trademark infringement suit brought by K-Swiss, Inc., for $30 million.  Story can be found here.

Two thoughts.  First, damages for trademark infringement can be very difficult to prove.  With this case settling so closely on the heels of the judgment against Collective Brands in the Adidas litigation, one has to wonder if Collective Brands was concerned about another huge judgment.  Second, these cases further prove that a company’s intangible assets, e.g., its brand as represented by its trademarks, can be its most valuable assets. 

Oscar de la Renta sues Elizabeth Arden for trademark infringement

As reported by Reuters, Elizabeth Arden allegedly is impermissibly selling an Oscar de la Renta fragrance in Wal-Mart stores.

ESPN sues to protect X-GAMES mark

According to the Deseret News, ESPN sued Quiksilver, Inc. for infringing ESPN’s X-GAMES mark(s).  Quiksilver makes surfing and snowboarding gear and also sponsors some of the athletes who participate in the X-Games.  ESPN is taking issue with Quiksilver’s use of a stylized ”X” on Quiksilver’s clothing and accessories.

Golf bag makers share bag names

This article discusses the process followed by two golf bag manufacturers in naming their products.  Surprisingly, they don’t do a common law or state trademark search, which can be done relatively inexpensively and which likely would turn up the other company’s prior use.

Manchester City goes global

According to this article, Manchester City football club seeks to establish a global brand, similar to Manchester United.  According to the article, Man City has not yet obtained trademark rights in some of the biggest potential markets, including its own and the U.S.  Applicants in the U.S. can and should file a federal trademark application based on a bona fide intent to use the mark in the future.  Trademark rights are acquired through use of the mark in commerce, but with an intent to use application the eventual registrant enjoys the benefit of having the application filing date as its priority date.