Owner of The Wizard of Oz TMs Opposes Pagan Elder’s Application for Wicked Witch TM
Turner Entertainment Co. (subsidiary of Warner Bros.) filed a petition against Wicked Witch Studios’, application for WICKED WITCH MOJO used in connection with its magical line of “candles, aromatic essential oils, incense, and scented room sprays” which are available in in metaphysical shops nationwide. In its opposition, Turner claims that it owns a family of famous marks containing the words “Wicked Witch,” which are registered for a variety of goods. It claims that Wicked Witch Studios is attempting to mislead customers into believing that the mark is licensed and to dilute its famous marks.
Balenciaga Claims Parody Pet Clothing TM “Pawlenciaga” Will Cause Confusion
On September 24, Paris-based luxury fashion house Balenciaga opposed a trademark application filed for PAWLENCIAGA used in connection with “clothing for pets, namely, hoodies, tee shirts, polo style shirts, button down shirts, jackets, vests, and scarves.” Balenciaga states in its opposition that, if registered, the mark will confuse customers into associating the “parody streetwear” for pets with its famous marks for high-end apparel. Considering the fact the TTAB has said that it will not follow the precedent of the Fourth Circuit’s Louis Vuitton v. Haute Diggity Dog case which allows for statutory fair use, the parody defense before the Board may be a bit far-fetched.
Owners of Iconic Little Trees Air Fresheners Sue Balenciaga for TM Infringement
On October 19, owners of the 66-year-old LITTLE TREES Air Fresheners, filed a complaint in New York federal court against Balenciaga alleging that the company is manufacturing and selling $275 leather key chains that are deliberately designed to replicate their classic tree design. According to the complaint, Balenciaga’s website states that its luxury key chains are “inspired by the tree air fresheners for cars.” The owners say that not only are the key chains the same dimensions as their five registered designs, but they are even offered in the four colors associated with the most popular scents of LITTLE TREES Air Fresheners. This case is pending in the U.S. District Court for the Southern District of New York.
Female-Founded Law Firms Argue Over “Ever Argue(d) With a Woman?” Slogan
A Florida law firm that uses the slogan “Ever Argued With a Woman?” sued a Texas law firm on October 9 in Texas federal court, for trademark infringement for using the slightly different slogan “Ever Argue With A Woman?” in connection with legal services. The Plaintiff first discovered the alleged infringement after the Defendant began using the slogan on billboards and Plaintiff began to receive inquiries from “confused members of the public” asking if her firm was related to Defendant’s. This case is pending in the U.S. District Court for the Western District of Texas.
Vogue Magazine Sues Owner of “Black Vogue” for TM Infringement in SDNY
On September 28, Advance Publications, the parent company of Vogue and Condé Nast, filed a complaint in the U.S. District Court for the Southern District of New York against a 26-year old designer and activist Nareasha Willis for infringing on its famous 125-year-old trademark. It claims that Willis’ use of the mark BLACK VOGUE on apparel “mirrors the well-known font and stylization of (its) long registered Vogue trademark,” and is likely to cause confusion and dilution of its mark. Although the USPTO issued Willis an Office action on May 23 refusing to register the mark because of a likelihood of confusion with Vogue’s registered trademarks, Willis continued to use the mark. Willis must answer the complaint by October 25.
UPDATE: MoMA Forces Cafe MoMaCha to Change Its Name
On September 28, Judge Louis L. Stanton of the U.S. District Court for the Southern District of New York granted The Museum of Modern Art’s motion for a preliminary injunction and ordered café and art gallery MoMaCha to stop “using, displaying or promoting the MOMA or MOMACHA marks, and the https://momacha.com/ domain name.” In April, MoMA sued the café claiming that it willfully infringed on the museum’s registered trademark MOMA. MoMaCha claimed that it created its name by combining “more” and “matcha.” For now, the café has changed its name to MAMACHA.
Click here to be redirected to the related article on The New York Times website.
SDNY Denies Beyoncé’s Motion for Summary Judgment in Feyoncé TM Infringement Case
On September 20, Judge Alison J. Nathan denied pop star Beyoncé Giselle Knowles-Carter’s motion for summary judgement against Feyonce, Inc., a company that uses the mark FEYONCÉ on products marketed to people that are engaged to be married (i.e. fiancés). In November 2015, the defendant attempted to register the mark for apparel, and the USPTO denied the registration because of a likelihood of confusion with “Beyoncé.” Although the court believed that Feyonce used the mark to capitalize on Beyoncé’s famous brand, it ruled that a genuine dispute of material fact still remains as to whether “a rational jury might…conclude that the pun…is sufficient to dispel any confusion among the purchasing public.”
Click here to be redirected to the related article on the Reuters website.