trademark dispute

No Pimping: Trademark Law Protects the Goodyear Blimp

January 7, 2020 by David Klein

January 7th, 2020

On January 2, 2020, the Goodyear Tire & Rubber Company (“Goodyear”) and the Illinois-based punk rock band, The Pimps, a/k/a The Good Year Pimps (“The Pimps”), entered into a settlement agreement to resolve allegations that The Pimps: (1) had breached a previous settlement agreement entered into between the parties; (2) were infringing on Goodyear’s trademark rights; and (3) had diluted and tarnished the famous GOODYEAR name and mark, the Goodyear winged foot logo and the Goodyear Blimp logo, respectively. This is not the first time that Goodyear has had to use trademark law to prevent The Pimps from using its marks. In 2002, a cease and desist letter was sent to stop The Pimps from using “Goodyear” as part of their band name. Then, in 2007, the parties eventually entered into a settlement agreement after it was learned that The Pimps were continuing to use Goodyear’s trademarks in connection with promoting their performances and in merchandise sales. This settlement agreement was adhered to until 2018, when it was brought to Goodyear’s attention that The Pimps were again using its famous trademarks during performances and to sell merchandise.

How does trademark law prevent a band from using a similar name to that of a tire company?

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Who “Asked” for a Trademark Dispute?

September 11, 2018 by David Klein

September 11, 2018

Two weeks ago, the Trademark Trial and Appeal Board (“TTAB”) denied a petition for cancellation in a trademark dispute involving the company formerly known as Ask Jeeves, refusing to cancel the trademark application of a smaller company that applied to register “ASKBOT” with the United States Patent and Trademark Office (“USPTO”). The petition for cancellation was filed on September 25, 2014 by IAC Search & Media, Inc. (“Petitioner”) (which has a federal trademark registration for the term “ASK” (among other variations)). Petitioner asserts that the term ASKBOT is likely to be confused with its ASK mark.

Respondent ASKBOT, Spa (“Respondent”) is a company located in the Republic of Chile. Since 2012, Respondent has offered services that are used to create online forums featuring questions and answers on a particular subject. Respondent opposed Petitioner’s request for cancellation.

Did you Ask what happened?

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Edible Marijuana Maker Settles Trademark Dispute with Hershey

November 4, 2014 by David Klein

November 4, 2014

In June, 2014, the Hershey Company (“Hershey”) brought a trademark infringement action against Colorado-based TinctureBelle, LLC. Hershey alleged that TinctureBelle infringed on numerous registered trademarks in the naming, packaging and marketing of its chocolate and confectionery products containing marijuana. TinctureBelle appeared in the action, but never filed an answer. Instead, after months of negotiation, the parties reached a settlement agreement and a final judgment was entered in the case on September 25, 2014. Although spared any monetary penalty, TinctureBelle has agreed to permanently discontinue its distribution, advertising and sale of the allegedly infringing products.

The Hershey Trademarks & Alleged Infringement

In its complaint, Hershey described its “well-known brands in the United States,” such as Hershey’s Reese’s Peanut Butter Cup, Heath Bar, Almond Joy and York Peppermint Patty products. Each of these products has associated registered trademarks, with first use in commerce dates of as early as 1922.

Marijuana-based candy products (or “edibles”) may now be sold and consumed legally in the State of Colorado. TinctureBelle used similarly colored packaging as the respective Hershey products when it marketed its edibles, such as “Hashees” (allegedly infringing upon the Reese’s Peanut Butter Cup mark), “Ganga Joy” (allegedly infringing upon the Almond Joy mark), “Hasheath” (allegedly infringing upon the Heath Bar mark), and “Dabby Patty” (allegedly infringing upon the York Peppermint Patty mark). Hershey alleged a likelihood of confusion between its products and those of TinctureBelle, as well as claims for dilution of its famous trademarks.

The Trademark Dispute Settlement

As part of its settlement, TinctureBelle “has ended all distribution, advertising, sale and other use anywhere in the world” of its allegedly infringing products. Further, TinctureBelle has agreed to provide a recall notice to all of its distributors, customers, resellers and retailers directing them to destroy any unsold inventory. Although TinctureBelle turned over all of its sales records to Hershey as part of the proceeding, Hershey will not recover any money as a result of the settlement.

Protect Yourself

Trademark infringement cases are more difficult to defend when a famous mark has allegedly been infringed upon. Hershey’s long-standing registered marks are entitled to be given strong protections in a court of law. While “parody” may be a defense in some trademark infringement actions, in this matter, the sale of goods packaged similarly to well-known products would likely have subjected the owner to serious financial penalties had it not settled early in the proceeding, as TinctureBelle did in this case.

If you are interested in learning more about this topic, or if you have been served with legal process relating to trademark infringement, please e-mail us at info@kleinmoynihan.com or call us at (212) 246-0900.

The material contained herein is provided for informational purposes only and is not legal advice, nor is it a substitute for obtaining legal advice from an attorney. Each situation is unique, and you should not act or rely on any information contained herein without seeking the advice of an experienced attorney.

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