Geekview IP Week in Review

Posted by | August 28, 2011 | Disputes, Geekview IP recap, General | No Comments

Vegetarian lawyer sues Chipotle for porking him!

If the fraud and false advertising claims in the class action lawsuit reported on here are accurate, then the ad above appears to be hogwash.  Literally.  Apparently, a Jewish vegetarian named Kevin Shenkman consumed Chipotle’s pinto beans for years reasonably presuming the beans also too to be vegetarian, especially since Chipotle servers told him they were.  A Chipotle spokesman, whom I presume knows more than its servers, claimed the pinto beans always have contained bacon and said that the company has never claimed otherwise.  Well, except for when its servers said the beans were vegetarian, but servers don’t really count, do they?  I mean, just because they actually interact with the customer, doesn’t mean they know what it is that they’re selling to the customer.  Chipotle’s spokesman also said that the company has agreed to roll out new menus that make it clear that the pinto beans are not kosher or vegetarian.  A Jewish vegetarian unknowingly eating pork for years seems pretty terrible, and speaking of . . .

Terrible Towel® throws a wet towel on Terrible T-shirt.

At first glance this case seemed ridiculous to me — like the Steelers were trying to impermissibly protect an idea rather than a mark.  However, after reading their lawsuit, I hear the rally cry of the Steelers on this one.  AVS Foundation and The Pittsburgh Steelers filed **suit** against Eugene Berry and Eugene Berry Enterprises for trademark infringement, unfair competition, dilution and fraud as for manufacturing and selling “the Terrible Tee.”  The AVS Foundation supports Allegheny Valley School, a Pennsylvania nonprofit that provides residences, residential care and habilitative services to developmentally disabled persons.  AVS owns eleven federal trademark registrations for TERRIBLE TOWEL, and the Steelers organization is the exclusive licensee to market TERRIBLE TOWEL goods.  The TERRIBLE TOWEL brand even has its own Wikipedia page.  The suit alleges not only that the Terrible Tee is likely to cause consumer confusion, but that Berry tricked his tee shirt printer into printing the infringing shirts by producing a false letter that stated that Mr. Berry had a relationship with AVS.  Now that’s just plain terrible.  And in another ball field — er, um, court — the State Bar of Wisconsin is hoping to tackle LexisNexis . . .

Wisconsin Bar Sues Lawyers.com claiming lawyers will be confused.

The State Bar of Wisconsin recently registered the logo on the right (or is it the left?  No, it’s the right) for:

[framed_box]

Publications and practice materials, namely, books, magazines, newsletters, pamphlets, fill-in legal forms, and course materials in the field of law in Class 016

Association services, namely, promoting the interest of lawyers and improving the delivery of legal service in Class 035

Educational services and programs for lawyers, namely, providing continuing legal education courses in Class 041 [/framed_box]

The WI State Bar complaint alleges that LexisNexis recently adopted the logo on the right for its Lawyers.com website, causing inevitable consumer confusion given the similarity in the parties’ marks, the overlap in the services offered and the identical consumers targeted by each company under their respective marks.  If ever there were a “sophisticated consumer,” I think we lawyers would like to think we’re it.  But then again, what is the point of trademark registrations if a competitor can adopt a virtually identical mark for similar services targeted to the same consumers?  LexisNexis seems to like to fight, so maybe we’ll actually get some law out of this one.  Most firefighters fight fires, this firefighter fought for his trademark rights and won . . .

 Firefighter douses Firehouse Subs trademark claims.

Firehouse Subs, with more than 440 locations nationwide, usually is quick to put out the fire on other attempts to use the FIREHOUSE mark for restaurant services.  However, firefighter Heath Scurfield, proprietor of Scurfield’s Calli Baker’s Firehouse Bar & Grill, fought back and recently won a jury verdict not only finding Scurfield’s FIREHOUSE mark to be non-infringing, but also cancelling the FIREHOUSE SUBS registration based on fraud!  Seems that Scurfield’s FIREHOUSE trademark use is one fire Firehouse Subs would have been better off to let smolder.  If the thought of subs makes you hungry, grab a glass of pomegranate juice and check out this next dispute . . .

POM says POMPIS is just too close — is that pompous or what?

PomWonderful has marketed and sold its POM® brand pomegranate products for the past ten years.  It has invested over 300 million dollars in the POM brand and has sold over 150 million bottles of POM brand juice since 2002.  The complaint states that PomWonderful owns registrations for multiple POM marks including:

[framed_box]  POM (Reg. Nos. 2637053); POM & Design (Reg. No. 3047447); POM WONDERFUL (Reg. Nos. 2640835 and 3687491); POM WONDERFUL & Design (Reg. Nos. 2864641, 2780314 and 3687492); POM TEA (Reg. No. 3411595); LIGHT POM TEA (Reg. No. 3391707); LIGHT POM TEA & Design (Reg. No. 3411596); POM IN A PILL (Reg. No. 3337435); POM IN A PILL & Design (Reg. No. 3332875); POMEBERRY (Reg. No. 3382338); POM PASSION (Reg. No. 2944482); POM POWER (Reg. No. 2944481); POMx (Reg. Nos. 3562516 and 3674405); POMx & Design (Reg. No. 3562517 and 3791124); POMx SHOTS (Reg. No. 3667882); POMX SHOTS (Reg. No. 3667882); POWERED BY POMx (Reg. No. 3208934); and POMEGRANATE & Design (Reg. No. 3436526) (collectively, the “POM Marks”). [/framed_box]

PomWonderful also alleges that, “Defendant intentionally designed its Pompis energy drink product to copy the inherently distinctive POMMarks, used and made famous by POM.”  I gotta say, looking at the images above, I just don’t see what POM’s fussing about, but then again, maybe I’m missing something.

About Lara

Lara Pearson is a trademark attorney with Exemplar, where she also serves as the firm's Sustainability Steward. Lara's legal practice focuses on trademark and copyright law, including: intellectual property audits; trademark search & clearance; trademark and copyright registration & maintenance; intellectual property transfers; transactional work; and dispute resolution, including litigation when necessary. Lara primarily represents other social enterprises -- those leveraging their businesses and brands as catalysts for positive social and environmental change. Such businesses engage in CSR (Corporate Social Responsibility) to have a positive "triple bottom line" of people, planet and profit. As Exemplar's Sustainability Steward, Lara works with others in her law firm to measure and reduce the firm's carbon emissions and encourage engagement in social responsibility initiatives, including pro bono legal work and volunteering. Lara is a proud member of the Social Venture Network. Brand Geek is a member of 1% for the Planet and a Certified B Corporation, whose Incline Village office is certified under the regional Keep the Sierra Green program. Exemplar Companies is the most innovative professional services firm in the New Economy. Our unique, diversified expertise spans the disciplines of corporate law, business advisory, and capital/investment banking to better meet the needs of our high-potential customers. We have assembled a comprehensive suite of service to meet the complex issues facing companies in today’s challenging business environment. Our unique, holistic approach ensures the growth and success – and greatly increases the competitive advantage - of our customers. The Exemplar team is comprised of knowledgeable, highly skilled experts in a wide range of industries and disciplines. They work closely with our customers to provide trusted advice, incomparable support, expert guidance and the ultimate competitive advantage as they accelerate their businesses and position themselves to transform industries.

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