Recent Notable Trademark Cases in the U.S.

by JRO on October 16, 2013

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Trademarks are an important piece of intellectual property for businesses. According to the United States Patent and Trademark Office (USPTO) in Washington, D.C., a trademark is defined as, ” …a word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others.” The words (TM) or (SM) are usually found near the mark to denote that it has been filed with the USPTO.

The Apple logo, McDonald’s Corporation’s golden arches, and the roaring lion of Metro-Goldwyn-Mayer Studios are all examples of famous trademarks. Trademarks become synonymous with the business that uses them, so when a trademark is violated or misused, it can impact a company and its reputation. Here is a look at several important recent trademark cases in the U.S.

Tiffany (NJ) Inc. v. eBay Inc. 600 F.3d 93 (2nd Cir. 2010) 

Tiffany and Company and parent Tiffany Inc. is the New York based department store and jewelry and apparel company famous for its trademarked baby blue jewelry boxes and bags. The company recently brought suit against online reseller eBay over charges that certain sellers counterfeited properties created by Tiffany.

The U.S. Court of Appeals for the Second Circuit held that the items in question that were in fact counterfeit did violate the trademark Tiffany held for such jewelry items. The court further ruled that eBay had an interest in policing its website to ensure the legitimacy and integrity of those items resold claiming to represent another company’s trademark.

Already LLC v. Nike Inc., U.S. Supreme Court, No. 11-982 

On January 9, 2013, U.S. Supreme Court Chief Justice John Roberts wrote the majority opinion in a unanimous ruling, dismissing a suit by Already, LLC against Nike.

Already is a Texas based shoe and clothing apparel, and is the producer of the popular Sugar and Soulja Boy brand shoes. Nike, based in Beaverton, Oregon is the largest maker of athletic shoes and apparel in the world. The company, established in 1962 as Blue Ribbon Sports and universally known for its “Just Do It” and “Swoosh” logo trademarks, initiated a case against Already in 2009, stating that the Soulja Boy and Sugar brands infringed upon its trademark for its Air Force 1 sneakers. Already countersued but when Nike dropped its suit, Already sought jurisdictional relief through its assertion that Nike used bullying tactics.

The court’s decision, which affirmed a lower court’s ruling, did not settle Already’s underlying issue, which was that of large companies like Nike using the courts as a way to intimidate and scare smaller competitors out of the market.

Fair Isaac Corp. v. Experian Information Solutions, Inc., 650 F.3d 1139 (8th Cir. 2011) 

The Fair Isaac Corporation, known to most consumers as FICO, brought suit against Experian Information Solutions and the two other credit reporting bureaus (Equifax and TransUnion) regarding the use of “300-850” as descriptive of credit scores. Fair Isaac had applied for and received a trademark registration for 300-850 from the USPTO in 2006. The court deemed that this trademark was obtained fraudulently.

The U.S. District Court for the Eight Circuit held that the mere descriptive use of 300-850 to describe the algorithm used to determine credit scores was not violated by its competitors. The use of 300-850 is a generally accepted range for describing an individual’s credit score and could not be held in it of itself as an exclusive trademark of Fair Isaac Corp.

In addition to Trademark Law, Benjamin Vinyard writes on Car Accidents, Products Liability, Contract Law, Commercial Litigation and other complex legal topics.

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