Pattishall IP Blog

November 10, 2011

Light Blue Color Mark for Tennis Racket Overgrips Held Valid but Not Infringed by Slightly Different Shade of Light Blue Grip Tape

Filed under: Litigation, Trade Dress — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 11:44 am

Categories: Litigation, Trade Dress
Tags: Color Marks, Post Sale Confusion, Initial Interest Confusion, Ian. J. Block

by Ian J. Block, Trademark Attorney

Unique Sports Products, Inc. (“Unique”) manufactures and markets the TOURNA GRIP, an overgrip product for tennis rackets that wraps around preexisting racket handles to provide additional cushioning and moisture absorption during play.  Unique and its predecessors have sold the TOURNA GRIP product in a light blue color since 1977.  Unique owns a federal registration for this light blue color for “grip tape for sports rackets.”  In 1999, when Unique applied for its color mark registration, the TOURNA GRIP product was the most popular tennis grip tape on the market, with sales of the product making up the majority of the market.  The product remains highly successful today, and is endorsed by such tennis stars as Pete Sampras, Venus Williams, and James Blake.

Ferrari Importing Company d/b/a Gamma Sports (“Gamma”) markets a different type of tennis racket grip, called gauze tape.  This product differs from Unique’s racket grip tape in that it has the woven appearance of medical gauze, is tacky to the touch, does not provide additional cushioning, and does not absorb moisture.  Gamma’s gauze tape product also is light blue in color, albeit a different shade.

Based on images of the parties’ products as they are offered for sale online, the products appear as follows:

Unique’s TOURNA GRIP Gamma’s Gauze Tape
   

Unique filed suit against Gamma, alleging trademark infringement of its registered light blue color mark.  After a two-day bench trial, the district court denied Unique’s infringement claim and rejected Gamma’s affirmative defense that Unique’s color mark was invalid.   Unique Sports Products, Inc. v. Ferrari Importing Company d/b/a Gamma Sports, No. 1:09-CV-660-TWT, 2011 WL 5156798 (N.D. Ga. Oct. 27, 2011).[1] (more…)

March 11, 2010

E-Discovery Guidelines and the Seventh Circuit’s Pilot Program

Filed under: E-Discovery — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 9:49 pm

by Ashly Iacullo and Ian J. Block, Trademark Attorneys

Overbroad discovery requests and acrimony between parties add to litigation costs on both sides of a lawsuit.  In an age in which litigants literally are able to produce terabytes of material—which can take thousands of man-hours to digest and analyze—e-discovery’s rising prevalence in federal litigation amplifies the potential cost of discovery even further.  And, as demonstrated in Judge Shira Scheindlin’s scathing opinion against litigants’ e-discovery methods in Pension Committee of University of Montreal Pension Plan v. Banc of America Securities, LLC,[1] courts expect litigants to preserve their electronically stored information (“ESI”) and are willing to impose harsh penalties for a party’s failure to meet its duties.  Given this landscape, Chief Judge James F. Holderman of the United States District Court for the Northern District of Illinois directed the Seventh Circuit Electronic Discovery Committee to develop and implement principles to facilitate more focused and less costly discovery of ESI.  In September 2009, the Committee released its Principles Relating to the Discovery of Electronically Stored Information (“Principles”).[2] (more…)

February 24, 2010

Court Limits Copyright Statutory Damages to Number of Registrations Owned

Filed under: Copyright — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 10:17 pm

by Ian J. Block, Esq.

The availability of statutory damages in copyright cases provides plaintiffs with significant leverage in litigation.  Statutory damages under the Copyright Act can rise as high as $150,000 per infringed work if the infringement is willful.  Assigning damages based on the number of infringed works is different from setting damages based on each act of infringement.  Thus, when a defendant makes multiple infringing copies of a single work the plaintiff is entitled to one statutory award for the infringement, although the plaintiff may choose to receive actual damages instead.  Questions arise, however, regarding what constitutes a “work” when calculating statutory damages, both because significant differences in potential damages can hinge on the answer and because the Copyright Act does not define “work.” (more…)

December 15, 2009

Second Circuit: “Substantial Similarity” Not Required to Prove Dilution by Blurring Under the TDRA

Filed under: Dilution — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 10:08 pm

by Ian J. Block, Trademark Attorney

In a dispute that has bounced between the district and appellate courts for nearly a decade, the Second Circuit recently clarified an important part of the standard for proving dilution by blurring under federal trademark law.  In Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 2009 U.S. App. LEXIS 26300, 92 U.S.P.Q.2d 1769 (2d Cir. 2009), the Second Circuit distinguished the requirements for finding dilution under the prior Federal Trademark Dilution Act (“FTDA”), the current Trademark Dilution Revision Act (“TDRA”), and New York state dilution law, N.Y. Gen. Bus. Law § 360-l.  The court found that “substantial” similarity between a famous mark and an accused mark is not required for a successful claim of dilution by blurring under the current post-TDRA federal dilution provision, 15 U.S.C. § 1125(c).  The Second Circuit remanded on this point but affirmed the district court’s dismissal of Starbucks’s other claims. (more…)

November 6, 2009

Online Service Provider’s Ownership of User Content Held Not to Eviscerate CDA Immunity

Filed under: First Amendment, Internet — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:37 pm

by Ian J. Block, Trademark Attorney

Online service providers that claim ownership of user-generated content can breathe easier because a court recently confirmed the broad scope of immunity available under the Communications Decency Act of 1996 (“CDA”).  In Finkel v. Facebook, Inc., 2009 N.Y. Slip Op. 32248 (N.Y. Sup. Ct. Sept. 15, 2009), a New York state court held social-networking giant Facebook immune from defamation liability by virtue of the CDA.  The court rejected plaintiff’s argument that CDA immunity should not apply because Facebook’s terms of service claim ownership of the content created by its users.

The CDA Immunizes Online Service Providers from Liability for Content Created by Third Parties

The “Good Samaritan Immunity” provision of the CDA, 47 U.S.C. § 230(c), grants online service providers immunity from liability for content found on, or taken down from, their networks.  Immunity here is sweeping, insulating service providers—such as Facebook, Craigslist, Twitter, and others—from liability created by third-party (i.e., user) content.  The statute explains that: “No provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider.”  Id.  The statute’s grant of immunity explicitly preempts contrary state laws, such as state defamation and invasion of privacy claims.  See 42 U.S.C. § 230(d)(3). (more…)

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