Tennessee IP Law Blog

Atari Interactive, Inc. v. Hyperkin Inc. , No. 219CV00608CASAFMX, 2020 WL 4287584 (C.D. Cal. July 27, 2020). https://www.logolounge.com/articles/the-origin-of-the-atari-logo PART I of III - Background Topic:     Trade Dress - Video Game Controllers I. INTRODUCTION Plaintiff Atari Interactive, Inc. (“Atari Interactive”) filed this action against defendant Hyperkin Inc. (“Hyperkin”) on January 25, 2019. Atari Interactive asserts claims for: (1) false designation of origin, in violation of 15 U.S.C. § 1125(a); (2) common law unfair competition; and (3) trademark dilution, in violation of 15 U.S.C. § 1125(c). Hyperkin filed an answer on March 21, 2019. The gravamen of Atari Interactive's claims is that Hyperkin's videogame console and joystick controller infringe Atari Interactive's trade dress in Atari Interactive's own console and joystick controller. Hyperkin filed a motion for summary judgment on June 1, 2020, and a statement of uncontroverted facts and conclusions of l...

United States Patent & Trademark Office v. Booking.com B. V., 20 Cal. Daily Op. Serv. 6243 (U.S. June 30, 2020) https://www.portfolio.hu/en/business/20200520/hungary-slaps-record-fine-of-eur-7-million-on-bookingcom-432994 Topic: Trademark Registration, Generic Names, Compound Terms Read the Majority Opinion in Part I  Here. In an 8-1 decision, the Supreme Court held that a "generic.com" name is ineligible for trademark protection unless the "generic.com" name itself has meaning to consumers.  Justice Breyer argues that consumers can be easily confused and argues to adopt the Goodyear  standard argued by the USPTO. Goodyear  found that adding a company designation (ex. "Company," "Corp.," "Inc.") to a generic term does not yield a protectable compound term. Goodyear  found that adding a company designation merely indicates corporate form and does not distinguish one corporations' goods/services from another. Justice Breyer argues...

United States Patent & Trademark Office v. Booking.com B. V., 20 Cal. Daily Op. Serv. 6243 (U.S. June 30, 2020) Topic: Trademark Registration, Generic Names, Compound Terms Takeaways: A generic name is ineligible for federal trademark registration. If a compound name that is a generic composite is not perceived as generic to consumers, it is not generic in terms of a Trademark filing. Supreme Court finds against the PTO's request for a "nearly per-se" rule that when a generic term is combined with an internet-domain suffix (like ".com"), the resulting combination is generic. Held: A term styled “generic.com” is a generic name for a class of goods or services only if the term has that meaning to consumers. Check back next week for Part II on the Concurring and Dissenting Opinions. Opinion Justice GINSBURG delivered the opinion of the Court. This case concerns eligibility for federal trademark registration. Respondent Booking.com, an enter...

Blumenthal Distrib., Inc. v. Herman Miller, Inc. , No. 18-56471, 2020 WL 3458983 (9th Cir. June 25, 2020) https://design-middleeast.com/herman-millers-cosm-wins-red-dot-award-as-best-office-chair/ Topic: Trademarks - Trade Dress Functionality Takeaways: Arrangements of individual functional (non-protectable) elements in furniture can come together to create a nonfunctional appearance that is protectable. "Household name" level of fame is required to make a claim for trade dress dilution for 9th Circuit under Thane v. Trek Herman Miller, Inc. (“HM”) sells Eames chairs and Aeron chairs. On December 13, 2013, HM sent a cease-and-desist letter to Blumenthal Distributing, Inc., d/b/a Office Star Products (“OSP”), accusing OSP of selling “knockoff” chairs that look like HM's Eames and Aeron chairs. The letter alleged infringement of HM's rights in the EAMES and AERON trade dresses under the Lanham Act. Litigation ensued, culminating in a jury trial on ...