In the United States the first user of a trademark gains superior rights over a second user who merely files an application to register that trademark. However, in several countries, including China, the first to file is the one that gains superior rights. The best way to prevent your trademark from being hijacked is to register your trademark in each country you intend to use that mark on your goods or services early and register your rights as broadly as possible.
Robert G. Klein is a Los Angeles trademark attorney with extensive trial experience. He feels it is important to hire a Los Angeles trademark lawyer and a Los Angeles business lawyer if one is involved in litigation in that locale. Robert G. Klein is a Los Angeles business attorney and is available for consultation on matters involving trademark infringement, copyright infringement, and business law matters.
Posted in Business Litigation, Intellectual Property, Trademark |
Many years ago there was this young entrepreneur who invested his life savings into a start-up cigarette company under the brand name “Death” Cigarettes. His concept was as to provide full disclosure about the hazards of smoking and his packaging consisted of the traditional pirate’s skull and crossbones with a warning that if you smoke any cigarettes you are going to die. He marketed his cigarettes in head shops toward the young underground punk rock market. His position was if you are going to smoke, at least Death Cigarettes did not contain all the additives of the other more mainstream brands. He obtained a federal trademark registration of the name “Death” on the category of cigarettes.
A company called Black Death sold vodka and various spirits. Black Death had a federal trademark registered for alcohol, a different category of goods than cigarettes. Black Death’s trademark was issued before Death’s trademark issued.
Black Death decided it wanted to expand into selling cigarettes after Death Cigarette was was already in the market. Litigation followed and the issue was whether alcohol was sufficiently related to cigarettes such that it was a natural expansion of Black Death’s product line.
The court held that both had federal registrations in different categories of goods but that Black Death obtained its registration of Black Death in alcohol before Death obtained its registration in cigarettes. The court also found that alcohol and cigarettes are sufficiently related and sold through the same marketing channels. The court felt there was a likelihood that consumers may be confused that Death’s cigarettes were related to or sponsored by Black Death.
The court ordered Death to destroy all its cigarettes. Death was not even allowed to ship its cigarettes to England where it developed a market because that would require Death to ship infringing goods through the navigable waters of the United States.
Death Cigarettes was out of business and the founder lost his entire investment a very harsh result and a lesson for those who do not take trademark issues seriously.
Located in Los Angeles, California, Robert G. Klein, Esq. is a Los Angeles trademark infringement attorney who concentrates on business litigation. He emphasizes on trademark infringement, unfair competition and trade secret litigation. Los Angeles trademark infringement lawyer Robert G. Klein has acted as lead counsel in approximately 60 trials. He has successfully obtained many multi-million dollar jury verdicts. Many of Mr. Klein’s court decisions have been published as case authority and he has appeared before the United States Supreme Court for oral argument. Mr. Klein has also published “Consumer List: Trade Secret or Fair Game?”, which is an article published in the Los Angeles Lawyer Magazine. Los Angeles trademark infringement attorney Robert G. Klein can be reached at (213) 996-8508.
Posted in Business Litigation, Trademark |
I was recently asked if using the color of another well known brand can be a trademark infringement. The issue is whether a seller can legitimately obtain exclusive rights under the law of trademarks in a single color of its products. There have been cases where the courts held that a single color can become a registered trademark but there was some caution and possible defenses in a trademark infringement litigation case that may follow.
It currently appears that in order to obtain the exclusive rights to a color it cannot be divorced from a product. In other words you cannot get the exclusive rights in a color per se. For example, a company might be able to establish trademark rights in the greenish-gold color of a cleaning press pad cover, but a company that makes and sells a product could not legitimately claim exclusive rights to use a particular color in any fashion whatsoever in advertising the product or packaging the product.
Trademark issues are often complex and if faced with this or similar issues it is important you contact an attorney versed in trademark rights and the law of unfair business competition.
Robert G. Klein is a lawyer in the Los Angeles area and is a business litigation attorney specializing in trademark litigation, trade secrets, unfair business competition, fraud in business transactions, breach of contracts, and business torts. He has been lead trial attorney in approximately 60 trials and has obtained multi-million dollar jury verdicts for his clients. Mr. Klein can be reached at (213) 996-8508
Posted in Trademark |
