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Trademark Case Law

Trademark Case Law

The law of trademarks as laid down by the Federal Courts makes for interesting reading. This article seeks to give the reader a brief background into the history of trademark case law and insight into the dos and don’ts when it comes to filing trademark Applications.
The Benefit of Federal Registration
Burger King Dispute, Mattoon, Illinois (1968)
This case arose out of a dispute between the Burger King of Florida, Inc. and Gene and Betty Hoots, Matoon, IL. The Hoots had fixed up their parking garage in Matoon, IL with a counter, grill and had added hamburgers, fries, etc. to the menu and named their new restaurant Burger King. They registered Burger King as a state trademark in Illinois, only to find out later that there already existed a federal registration of the Burger King mark based on a later use of the mark leading to the matter going before a federal court.
The federal 7th Circuit Court of Appeals ruled that as Burger King in Florida had federal registration and federal registration had priority over state law, the Burger King in Florida had rights to the mark to anywhere in the United States except the area of Mattoon where the Hoots had prior actual use. Therefore, the Hoots were allowed ownership of the mark ”Burger King” only in Mattoon but Burger King, Florida retained the right to use the Burger King mark everywhere else.
Generic Name Annoyance
Frosty Treats, Inc. Dispute (2005)
Some trademarks although distinctive when first registered can become generic over time. The case between Frosty Treats, Inc. and Sony Computer Entertainment America, Inc. is a perfect example of this and the difficulty they cause to the owner of the mark. Frosty Treats is well known for its “ice cream truck street vendors” and the “Safety Clown” mark, with the image of the clown pointing kids to the back of the vehicle. Sony Computer Entertainment America, Inc, released a video game called “Twisted Metal 2”, which became one of the most popular video games in vehicular combat. The drivers were encouraged to battle opposing drivers. In the game, one of the vehicles was the Frosty Treats van which was driven by a clown called Sweet Tooth.

Frosty Treats Inc. took Sony to court over infringement of their mark. However, the US District Court held that the mark could not be protected and later the Eight Circuit Court of Appeals affirmed this decision on the grounds that the name ”Frosty Treats” was generic and the clown image was not distinctive enough to merit protection.

Microsoft and Lindows (2001)
Microsoft has been repeatedly criticized for choosing generic names for its products. Microsoft brought an infringement case against Lindows Inc. in 2001, as the “Lindows” mark was similar to Windows. Not only did the courts reject Microsoft’s claims but also raised serious questions about the “Windows” trademark. Microsoft offered to settle with Lindows, Inc. with a settlement price of estimated $24 million in cash, as they feared that the Court would decide that the mark ”Windows” as generic in nature and result in their loss of status of the trademark. Lindows Inc. as part of the settlement agreed to change their name to Linspire.
Trade Dress Protection
Wal-Mart Stores, Inc. v. Samara Brothers, Inc. (2000)
Trademark law under the Lanham Act allows protection for the physical appearance, packaging and even the smell of a product. This appearance of a product is considered as the trade dress of a product and is capable of being protected, as was confirmed by the US Supreme Court in the decision of Wal-Mart Stores, Inc. v. Samara Brothers, Inc.
Samara Brothers Inc. manufactured and designed children’s clothes. Wal-Mart Stores, Inc., a retailer entered into a contract with one of its suppliers Judy-Philippine Inc. to manufacture children clothes similar to that of Samara Brothers. Judy-Philippine copied with only minor adjustments, 16 of Samara Brothers’ designs for children’s clothes which Wal Mart marketed as so called knock offs. On hearing of this infringement, Samara Brothers sent Wal Mart cease and desist letters which had no effect resulting in Samara Brothers bringing an action against Wal Mart in the United States District Court for the Southern District of New York.

The Court found in favor of Samara Brothers Inc., and dismissed Wal Mart’s motion that there was “insufficient evidence to support a conclusion that Samara’s clothing designs could be legally protected as distinctive trade dress for purposes of §43(a).”

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