Posts made in August, 2013

Attorney’s Fees Under the Lanham Act

Posted by on Aug 27, 2013

Today we look at Aviva USA Corporation v. Vazirani, a case recently heard by the United States District Court for the District of Arizona.  Interestingly, Arizona is located in the famous (or infamous) 9th Circuit of the United States, the largest circuit including areas as diverse as Alaska, Oregon, California, and of course, Arizona.  This case explores the issue of when it is appropriate to award attorney’s fees to the prevailing party in an action for trademark infringement. Attorney’s Fees, Generally In the British judicial system the rule is that the losing party pays the attorney’s fees of the victor.  Although we have adopted many features of the...

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When are Terms Merely Descriptive? Part 1 of 2

Posted by on Aug 20, 2013

We have previously discussed trademark issues with descriptive terms.  To recap, terms that are merely descriptive receive the least amount of trademark protection.  A descriptive term, such as “Fish-Fry” generally does not qualify for protection unless the term has acquired some form of secondary meaning in the perception of the relevant consumer base in the relevant market for the product. Today, we address an even more basic question – what are some of the grounds for a mark to fall into the dreaded “merely distinctive” category?  And are there any ways out?  We will focus on four major areas, which are: foreign words, personal names, acronyms, and...

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When is it Ok to Use Another’s Artwork?

Posted by on Aug 13, 2013

Today we take a look at the case of Seltzer v. Green Day and examine the circumstances under which one may use the creative works of another person.  The major issue in the case was fair use of copyrighted material.  The topic ties in nicely with last week’s post, which dealt with Fair Use in the trademark realm. Background of the Case Plaintiff Seltzer is an artist, illustrator and photographer.  Defendant Green Day is an iconic rock and roll band.  In 2003 the plaintiff created a drawing of a screaming, twisted face which he entitled “Scream Icon.”  He licensed its use for inclusion in a music video and has used the drawing to identify his own work by...

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Fair Use of Descriptive Marks

Posted by on Aug 6, 2013

Today we take a look at the fair use defense to allegations of trademark infringement.  Beware!  The fair use defense in trademarks is quite different from its more notorious cousin, the fair use defense in copyright actions.  In a previous post we looked at Zatarain’s v. Oak Grove Smokehouse to learn the applicable standards for when secondary meaning allows for a merely descriptive trademark to be enforced.  Today we return to the case featuring delicious battered and fried chicken and fish to learn more about fair use and its role in the final disposition of the case by the Fifth Circuit Court of Appeals. Background of the Case As previously discussed, at...

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