A number of law suits have been filed involving the radio slogans used by Jack FM:

"playing what we want."

"playing whatever we want."

"playing whatever the hell we want."

Read more here and here and here

A well-established line of cases holds that the addition of another's name to a mark does not preclude a finding of infringement.  Following this view, it is likely that the owner of the mark AUDITOR for pens would have a successful claim against JOHNSON AUDITOR for pens.  

A recent TTAB decision, however, shows that this general rule is not always persuasive.  In Knight Textile Corp. v. Jones Investment Co., 75 U.S.P.Q.2d 1313 (TTAB 6/21/05), the Board ruled that NORTON McNAUGHTON ESSENTIALS was sufficiently distinguishable from prior use and registration of ESSENTIALS for similar goods that confusion was not likely.

Reconciling ...   more »

American Family Products has agreed to pay $1.15 million in criminal fines and $1.74 million in civil penalties for illegal use of logos from nearly 60 Universities.  Story here.

After the Supreme Court vacated and remanded its prior decision, the Ninth Circuit again reversed the lower court's grant of summary judgment in KP Permanent Make-Up, Inc. v. Lasting Impressions I, Inc. on May 19, 2005.

The Ninth Circuit decision is available here.

New gray market decision issued on April 25, 2005, in American Circuit Breaker Corp v. Oregon Breakers Inc.

Story reported here.

All students of trademark law are aware that the Supreme Court in Mosley v. V. Secret Catalogue, Inc., 537 U.S. 418 (2003), interpreted the Federal Trademark Dilution Act to require "actual dilution" as an essential element of a federal dilution claim. 

But how do you prove actual dilution?

The Supreme Court's enigmatic answer:

"direct evidence of dilution such as surveys will not be necessary if actual dilution can reliably be proved through circumstantial evidence--the obvious case is one where the junior and senior marks are identical."

The Second Circuit has now joined a number of district courts in holding that ...   more »

The Supreme Court's decison by Justice Souter was issued today in the fair use dispute KP Permanent Mark-Up, Inc. v. Lasting Impression I, Inc.

Justice Souter writes:

When Barnes and Noble used the phrase "Half Price Books" to promote online book sales, its competitor, halfpricebooks.com, sued for trademark infringement and dilution.

The plaintiff lost its motion for preliminary injunction, but has now escaped adverse summary judgment, with the district court ruling that the case could proceed to trial, reports News.com. 

Rejecting Barnes and Noble's summary judgment claim based on fair use, the court states:

"While BN.com's name is displayed on each and every page [of its Web site], a reasonable jury may find that the usage of 'Half-Price Books' on the webpage is sufficiently prominent to ...   more »

The prohibition against the assignment of trademarks without goodwill is alive and well in this recent decision by the Judge St. Eve of the Nothern District of Illinois.  Pure Imagination Inc. v. Pure Imagination Studios Inc., Civil Action No. -03 0 6070 (N.D.Ill. Sept. 30, 2004).

Students of trademark law will appreciate the continued application of that classroom favorite, Pepsico, Inc. v. Grapette Co., 416 F.2d 285 (8th Cir. 1968).

The Pure Imagination case stands for these key points:

1.  Mere registration of a domain name creates no rights or goodwill (although use of a domain name as a trade ...   more »