Bakery Battle: Univ. of Alabama Program Threatens Local Cake Maker

Mary Cesar, the owner of Mary’s Cakes & Pastries in Northport, Alabama has routinely placed a script letter “A” on cakes she designed for University of Alabama-sponsored functions.

But Cesar recently received a formal cease and desist letter, demanding that she stop using "trademarks, name, logos, colors, slogans, mascots and other indicia associated with the University."

The letter was sent by Collegiate Licensing Company in Atlanta, which has a contract with UA to provide licensing services for the university's trademarked items.

"If UA sues us, it will put us out of business because we are a really small mom-and-pop-type of business," she told the Associated Press.

Cesar said her research indicated it would cost $750 to $3,000 to apply for a license to use the trademarks, a fee she said wasn't justified by her small volume of bakery items.

Cesar opened her bakery in Northport six years ago after moving to Alabama from California. Her main business is custom-decorated cakes. The bakery also makes pastries and cookies, including theme-shaped cookies that she varies throughout the year.  She reportedly started selling cookies shaped like elephants, hats and footballs, particularly during the fall, beginning several years ago.

The hat cookies had a light gray icing and squiggles like a houndstooth pattern, invoking memories of Paul W. "Bear" Bryant, and she had another cookie resembling Nick Saban's signature straw hat.  The elephant and football cookies often had a capital "A'' on them, making them popular with many local football fans.

UA has a reputation for aggressively protecting its brands.  But earlier this year, a federal appeals court sided with Alabama artist Daniel Moore in a trademark dispute involving UA. Moore is known for original paintings with sports themes, including many paintings depicting major moments in UA football games.

UA sued Moore, claiming he infringed on the university's trademarks by showing trademarked words and images in his paintings.

A federal appeals court rejected UA's argument this year, ruling the paintings were an artistic expression protected by the First Amendment.

From a Russian Prison Cell, Pussy Riot Seeks to Trademark Its Name

Игорь Мухин/GNU Free Documentation License

Several members of the punk rocker/feminist activist group known as "Pussy Riot" have sought to trademark the name from their Russian prison cell.


In February 2012, the controversial group performed a 30 second concert of sorts on the soleas of Moscow's Cathedral of Christ the Savior, in which they hurled obscenities against Virgin Mary, the Russian President Vladimir Putin and the Moscow Patriarch of the Russian Orthodox Church.

After a trial, they were found guilty of hooliganism motivated by religious hatred and sentenced to 2 years in prison.


Fear for their lives apparently hasn't dampened their ardor or intellectual property strategy, which consists of seeking to protect their name from unauthorized uses.

Pussy Riot's trademark lawyer said the group wishes to discourage attempts to use its name to derive profits or promote "questionable" projects that contradict its "ideals and aspirations."



He claims that profits will be tolerated only if the proceeds are used to "further fight the political system's imperfections."

Over 20,000 Pairs of Red Soled Shoes Seized by U.S. Customs in Los Angeles

Photo Provided by CBP Photographer Josh Denmark

U.S. Customs and Border Patrol agents stationed at a port in Los Angeles seized 20,457 pairs of fake Christian Louboutin shoes shipped from China, U.S. officials said Thursday.

The counterfeit "red soled" shoes had a domestic value of over $50,000, but would have fetched over $18 million if they had reached the streets, according to U.S. Customs and Border Protection officials.

In 2011, Christian Louboutin filed a trademark infringement lawsuit against designer Yves Saint Laurent, involving the red sole trademark.

However, in August 2011, U.S. District Court Judge Marrero in the Southern District of New York (Manhattan) denied the designer's Motion for a Preliminary Injunction.

The judge questioned the validity of the red sole trademark, writing, "Louboutin's claim would cast a red cloud over the whole industry, cramping what other designers do, while allowing Louboutin to paint with a full palette."

The District Court's denial of Louboutin's Preliminary Injunction application is currently pending on appeal before the U.S. Court of Appeals for the Second Circuit.

Craig Sues James (But Not Angie) for a "List"

Craigslist, the popular free website, has filed a trademark infringement lawsuit against the Swedish owners of Jameslist.

Craigslist offers users job postings, apartments, and all manner of items for sale (and sometimes even for free).

In contrast, Jameslist offers only absurdly high-end luxury real estate and items for sale, such as ninety million dollar mansions, private jets, yachts, sports cars and other accouterments of the wealthy and uber-famous.  It bills itself as "the World's Luxury Marketplace."

The federal lawsuit, filed in U.S. District Court in San Francisco where Craigslist is headquartered, alleges that Jameslist was coined as an admitted play on words to bring Craigslist to mind.  The suit alleges that consumers will be confused.

Some commentators have pondered why, given Craigslist's apparent concern about confusion arising from the use of a first name and "list," it has never sued Angie Hicks, the founder of Angie's List, which offers reviews of roofers, plumbers, housekeepers and contractors.

The lawsuit notes that there had been a previous administrative proceeding when James had sought U.S. trademark recognition, but that proceeding ended with the entry of judgment against Jameslist.

Can you guess which items appear on Craigslist or Jameslist, respectively, by just looking at the pictures below?  Answers appear at the bottom.

#1

#2

#3

#4

#5

#6

Answers:

#1:  $72,000,000 Yacht for sale on Jameslist.
#2:  $130/month shared room for rent on the Bronx on Craigslist.
#3:  FREE keyboard on Craigslist.
#4:  $90,000,000 Woolworth Mansion for sale on Jameslist.
#5:  Aston Martin for sale for $250,000 on Jameslist.
#6:  Goodyear tires (slightly used) for sale for $150 on Craigslist.

Unofficial 9/11 Memorials Come Under Fire from FDNY Trademark Lawyers

A project using salvaged FDNY firetrucks as "mobile museums and memorials" dedicated to the memory of September 11, 2001, and the heroic firefighters who died that fateful day, have come under fire from lawyers representing the New York City Fire Department.

Source:  Remembrance Rescue Project Website

In July 2011, a group of firefighters purchased former Rescue Truck Number 3 from the City of New York, when it was going to be scrapped.  The firefighters were able to use parts from Rescue Trucks Numbers 4 and 5 to restore them to working condition.  The trucks became part of the "Remembrance Rescue Project."

The Project's website claims to be an educational, not for profit effort focused on educating and memorializing September 11. The Project's application for tax-exempt status from the IRS under Section 501(c)(3) is currently pending.  

The domain name www.Remembrance.co is currently registered to Christopher Gantz of "Strike the Box Enterprises" in Schaumberg, Illinois, whose e-mail address is apparently cgantz@firezonefun.com.

FireZoneFun.com offers children's amusement-park type "rent a fire truck" services for birthday and block parties.

The so-called "mobile memorials" that travel across America are not an official FDNY-sanctioned operation, and the trucks are operated by firefighters across the country who purportedly volunteer their time.

Upcoming locations where the trucks will be displayed include golf tournaments, airshows, NASCAR races and car shows.

However, FDNY lawyers and others have raised questions about the ongoing usage of the official New York City Fire Department logos on the Project's refurbished trucks, after multiple cease and desist letters were sent to the Project's management.

Source:  Remembrance Rescue Project Website

There have also been questions about the lack of involvement by active or retired FDNY members with the Project, but the Project claims that it has repeatedly tried to obtain assistance from the FDNY, as well as from family members of the fallen firefighters, but hasn't received any support.

As for the logos, the Project claims that it is currently redesigning them to steer clear of the NYFD's registered trademarks.

What is the IKEA Trademark Worth? Alot.

What is Swedish-furniture maker IKEA's trademark worth?

The official price in 2012 is 9 billion euros, or 11.1 billion dollars.

That's how much the trademark was valued during a recent transaction where it was assigned to one of IKEA's subsidiaries.

Ikea is a family-owned company and was founded in 1943 by Ingvar Kamprad.  At the age of 86, Kamprad is still actively involved in the business.

Believe it or not, IKEA is not the most valuable brand in Sweden. 

The clothing retailer Hennes & Mauritz (H&M) ranks first with its trademark estimated at 15 billion euros, or 18.5 billion dollars.

Cuties Suppliers Embroiled in Legal Battle Over Name

A dispute involving the beloved Cuties-brand of California clementines has escalated into trademark litigation over millions of dollars and who can control the name.

The seedless, high-quality, easy-to-peel fruit is an incredibly-successful product. 

California Cutie consists of two varieties of mandarins: Clementine Mandarins and W. Murcott Mandarins.  Contrary to popular belief, Cuties are not just “little oranges.”

Berne Evans, the owner of Pasadena, California-based company Sun Pacific, and Stewart Resnick, owner of Delano, California-based Paramount, began collaborating in the late 1990's. They agreed in 1999 to grow, pack, market and sell clementines.  They coined the name "CUTIES" for the product they jointly developed in 2001.

In 2004, the two companies harvested the first major crop of Cuties.  By 2011-2012, Cuties' volume had grown to 75 million boxes of fruit.

However, Paramount and Sun Pacific now claim each owes the other millions of dollars, and a legal battle involving who has the right to sell Cuties juice has landed the parties in arbitration.

Previously-filed public court documents show that Paramount wants $60 million from Sun Pacific and Sun Pacific wants $18 million from Paramount.

Fortunately for the public, according to the parties, no impact on supply is expected.

The King of Beers' Fitting Legacy: Brawling Over Budweiser

Budweis Today / Wikimedia Commons / Norbert Aepli

This fascinating trademark dispute finds its roots nearly 800 years ago in the Middle Ages, and it never seems to have ended.

In the quaint European town of Budweis (or Böhmisch Budweis, today's České Budějovice), a certain form of beer has been brewed since it was dubbed "Budiwoyz" by King Ottokar II of Bohemia in 1245.

King Ottokar was originally educated for the role of an ecclesiastical administrator. However, after the death in 1247 of Ottokar's older brother and the heir of Bohemia, Ottokar himself became the heir.

Statue of King Ottokar II

According to popular oral tradition, Ottokar was profoundly shocked by his brother's death and did not involve himself in politics, instead becoming focused on hunting and drinking heavily. Ottokar also founded the town of Königsberg, the namesake of yet another beer.  He became, so to speak, the original King of Beers.

Centuries later, in 1876, Adolphus Busch and his friend Carl Conrad, a liquor importer, developed a "Bohemian-style" lager, inspired after a trip to the region, including the now-famous Budweiser.  The name Budweiser is genitive, meaning "of Budweis."

By the end of the 20th Century, American company Anheuser-Busch and Czech company Budejovicky Budvar Narodni, had both sold beer in the United Kingdom under the name "Budweiser" for decades.

In 2000, the UK Court of Appeals held that both Anheuser-Busch and Budvar were permitted to register "Budweiser" as a trademark in the UK because there was "honest concurrent use" of the mark by both companies.  That is, both companies had been simultaneously using the name for a long period of time without any significant adverse effects on the marketplace.

However in 2005, Anheuser-Busch applied for an order under Article 4(1)(a) of EU Directive 89/104 that Budvar's existing registration be rendered invalid and that it be declared the only legitimate source of Budweiser in the United Kingdom. Budvar also apparently declared itself the "original" Budweiser.


The UK Court of Appeals referred a number of questions to the Court of Justice of the European Union, including:

  "Does Article 4(1)(a) apply so as to enable the proprietor of an earlier mark to prevail even where there has been a long period of honest concurrent use of two identical trade marks for identical goods?" The Court of Justice of the European Union found that the circumstances of this dispute were so exceptional as to justify concurrent usage by both companies.

The European Court of Justice said that the proper interpretation of the relevant law means that the owner of an older trademark cannot obtain a declaration that an identical later trademark designating identical goods is invalid in circumstances where there has been a "long period of honest concurrent use of those two trademarks" and that situation has not had (nor is likely to have) an adverse effect on the essential function of the trademark, which is to guarantee the origin of the goods. The Court of Justice dismissed the existence of some documented cases of actual consumer confusion as too marginal to overcome its conclusion.

In the end, it would seem that the original King of Beers' legacy was to encourage a bit of brawling nearly eight centuries after his death.

Harley-Davidson Loses Bid to Dismiss Artist's Case Based on Long Delay

Harley-Davidson has lost an early bid to dismiss a Complaint filed against it by a freelance artist who claims the motorcycle maker used his logos outside of the scope of a license.

Wayne Wm. Peterson, a freelance commercial artist, had produced numerous well-known logos for the Harley-Davidson companies between the mid-1970's and the mid-2000's. 

The famous "LIVE TO RIDE, RIDE TO LIVE" eagle was one of Peterson's creations.

The decision explained that the Court could not rule that Peterson's delay, while admittedly long, constituted an unreasonably long delay barring all relief, on its face.

Under Federal Rule of Civil Procedure 12(b)(6), whenever a Defendant moves to dismiss a Complaint for failure to even state a claim, all the facts specifically plead in the Complaint are assumed to be true, and all reasonable inferences in the Complaint are construed in the Plaintiff's favor.

Harley-Davidson had argued that, even viewed in this favorable light, the Plaintiff's long delay in bringing suit constituted a disabling estoppel by laches, and violated a statute of limitations that should be applied to his copyright claims for conduct occurring before 2009.

However, the District Court stated that any dismissal would not be warranted solely on the basis of the Complaint alone, in the absence of the parties conducting discovery, because laches is an affirmative defense that Harley-Davidson bears the burden of proving.

Harley-Davidson is now free to develop a full record through discovery to establish the proposition that the Plaintiff's long delay was indeed inexcusable and caused it prejudice.