Marc Reiner Tag

July 11, 2018 In Blog, Business, General Counsel, Intellectual Property, International, Litigation

Spongebob Squarepants’ Fictional Restaurant Granted Real Trademark Rights

One of the bedrock principles of trademark law is that trademark rights stem from actual use of the trademark in commerce.  In recent years, however, courts have been finding that imaginary use of the trademark in fictional works can suffice to create real right in a nonfictional setting.

The latest example of this phenomenon took place in Viacom International Inc. v. IJR Capital Investments, where the Fifth Circuit affirmed a lower court decision granting trademark protection to the Krusty Krab, a fictional restaurant in the television series SpongeBob SquarePants.  Viacom sued IJR Capital Investment for unfair competition and trademark infringement because IJR had been trying to open up seafood restaurants in California and Texas under the Krusty Krab name since 2014.  IJR Capital claimed that they did not base their name on the fictional restaurant, but rather the crusted glaze applied to cooked seafood.  IJR noted that there was no Krusty Krab trademark already registered with the United States Patent and Trademark Office.

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November 22, 2017 In Blog, Business, General Counsel, Intellectual Property, International, Litigation, Media & Technology

Important Trademark Litigation Victory For HBA Client Affirmed on Appeal

Essentially concluding over five years of litigation, the Second Circuit Court of Appeals on November 2, 2017 upheld the trial court’s determination that the sale of Clipps bag closures by Schutte Bagclosures Inc. (“Schutte”) did not infringe any trademark rights Kwik Lok Corporation (“Kwik Lok”). The court further upheld the lower court’s determination that Kwik Lok’s claimed trademark rights in the shape of bag closures were invalid because the shape was “functional” and that Kwik Lok’s trademark registration for that shape should be cancelled.
The same parties previously faced each other in court in the Netherlands, where the judge also ruled that Kwik Lok did not have valid trademark rights in their bag closures.

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August 16, 2016 In Blog, Business, Fashion & Lifestyle, Intellectual Property, Litigation

HBA Litigation Group Successfully Fends Off Attempt to Enjoin Use of the “New York Fashion Week” Name

In a case involving the signature events in American fashion, HBA litigators fended off a motion for a preliminary injunction that would have prevented HBA’s client the Council of Fashion Designers of America (the “CFDA”) from using the New York Fashion Week name.

New York Fashion WeekFashion Week, Inc. (“FWI”) presents fashion shows to consumers, unlike than the shows directed to the fashion industry and media that have long been the foundation of New York Fashion Week.  After using other names to put on its shows, FWI obtained a trademark registration on the Supplemental Register for the term “New York Fashion Week” in 2014.  FWI began using that name even though it only put on one show at a time, taking place on only one day.

As it had for many decades, the CFDA had continued to use the New York Fashion Week name to promote the fashion events that it had scheduled, including the semi-annual women’s fashion events.  But on June 28, 2016, FWI brought a lawsuit and motion for a temporary restraining order against the CFDA and co-defendant WME IMG LLC (“IMG”) claiming that the defendants’ use of the trademarks NEW YORK FASHION WEEK and NYFW infringed FWI’s claimed rights to those marks.  On the next day, Judge John G. Koeltl of the United States District Court for the Southern District of New York held that FWI had not made the requisite showing of irreparable harm and set a briefing schedule for FWI’s preliminary injunction motion to be heard on August 4, 2016.

In response to that motion, the CFDA argued that:  (1) FWI’s long delay in bringing its motion – roughly 18 months – negated any claims of irreparable harm; (2) FWI had not developed any trademark rights to NEW YORK FASHION WEEK and NYFW because it had no registrations on the Principal Register and could not make any showing that consumers identified those marks with FWI; and (3) the CFDA had prior trademark rights to the NEW YORK FASHION WEEK and NYFW trademarks because of its prior use of those trademarks and the public association of them with the CFDA.  In support of the last point, the CFDA submitted substantial evidence of media coverage, testimony from industry professionals, and even FWI’s own promotional materials that used those trademarks to refer to the CFDA’s events rather than FWI’s.

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