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Tag Archives: trademark infringement

KERRYGOLD initiates trademark lawsuit against competing butter brand

Recently, the companies responsible for manufacturing and distributing butter under the trademark KERRYGOLD (“Plaintiffs”) filed a trademark infringement lawsuit against Eurogold USA, LLC and Old World Creamery, LLC (“Defendants”).[1] The dispute revolves around Plaintiffs’ allegations that the Defendants plan to sell Irish butter products under the mark IRISHGOLD.[2] According to  Plaintiffs, the parties were in negotiations for the Defendants to package Plaintiffs’ Irish butter products under the KERRYGOLD mark in Wisconsin, but negotiations broke off and Defendants decided to sell their own products under the IRISHGOLD mark.[3] Although Plaintiffs’ KERRYGOLD products are sold throughout the United States, such products have not been widely available in the state of Wisconsin due to the state’s specific requirement that any butter sold in the state bear a Wisconsin or federal grade mark.[4] The problem for Plaintiffs is that its KERRYGOLD products are inspected and graded in Ireland.[5] As a result, Plaintiffs had sought to enlist Defendants’ help in selling its KERRYGOLD products in Wisconsin.[6]

According to Plaintiffs, the Defendants’ IRISHGOLD mark would be presented to the marketplace with a similar font and color scheme found in Plaintiffs’ KERRYGOLD branded butter and would also be sold in packages containing two 4 oz. sticks, which is the same way that Plaintiffs sell their KERRYGOLD butter products.[7] Plaintiffs have alleged that they own several federal trademark registrations for the mark KERRYGOLD, using different fonts, logos and variations.[8] Plaintiffs have also alleged that Defendants’ proposed use of the IRISHGOLD mark would cause consumers to mistakenly believe that this product was authorized by Plaintiffs.[9] Plaintiffs pointed to a specific instance where on April 7, 2017, the Chicago Tribune allegedly published a news story discussing the imminent sale of butter under the IRISHGOLD mark but used a photograph of Plaintiffs’ KERRYGOLD butter.[10]

As a result, simultaneously with the filing of the Complaint, Plaintiffs filed motions for a temporary restraining order and for a preliminary injunction.[11] On or about April 13, 2017, the Eastern District of Wisconsin granted the Plaintiffs’ Motion for Temporary Restraining Order which temporarily prevents the Defendants from using their IRISHGOLD mark.[12] This Order is only temporary in nature, and thus, the Court ordered that an additional court hearing will be held on Plaintiffs’ Motion for Preliminary Injunction.[13] One of the issues yet to be determined is whether Plaintiffs’ KERRYGOLD mark is considered a famous mark, and thus, can support a claim for trademark dilution.

We will be monitoring the status of this case. Please contact our office if you have any questions regarding the information in this article.

Daniel Devine, Esq.
Santucci Priore, P.L.
Partner

[1] See, Ornua Foods North America, Inc., et. al. v. Eurogold USA, LLC, et. al., Case No. 17-cv-00510-JPS, at Docket Entry No. 4 (E.D. Wis. April 10, 2017).
[2] Id.
[3] Id.
[4] Id.
[5] Id.
[6] Id.
[7] Id.
[8] Id.
[9] Id.
[10] Id.
[11] Id.
[12] See, Ornua Foods North America, Inc., et. al. v. Eurogold USA, LLC, et. al., Case No. 17-cv-00510-JPS, at Docket Entry No. 24 (E.D. Wis. April 10, 2017).
[13] Id.

NCAA initiates trademark lawsuit over use of the term “April Madness”

Recently, the National Collegiate Athletic Association (“NCAA”) filed a trademark infringement lawsuit over the use of the term “April Madness” by an online fantasy game.[1] The Defendants are alleged to market and provide online games which award prizes for predicting the results of sporting events, including college basketball games played during the NCAA Men’s Basketball Championship Tournament, also known as “March Madness.”[2] The NCAA’s Complaint alleges that Defendants have been using the terms “Final 3” and “April Madness” to brand college basketball online fantasy games.[3] The NCAA has asserted that such use is without the permission of the NCAA, who owns various trademarks incorporating the terms FINAL FOUR and MARCH MADNESS.[4] The Complaint seeks injunctive relief due to the NCAA’s concern over Defendants’ perceived plan to offer online fantasy games, through Defendants’ website and mobile telephone applications, during the March Madness tournament, which is currently scheduled to begin on March 14, 2017.[5] The Defendants filed trademark applications for use of the terms “Final 3” and “April Madness.”[6]

The Complaint asserts causes of action for Federal Trademark Infringement, Trademark Dilution, and Common Law Unfair Competition.[7] The NCAA further alleges in its Complaint that Defendants alleged infringement was willful because the NCAA had previously objected to Defendants’ use of the term “Final 3” in 2015.[8] The NCAA is seeking an injunction to prevent Defendants’ use of the terms “Final 3” and “April Madness,” refusal of Defendant’s trademark applications for the same, and for actual damages, profits, exemplary damages and attorneys’ fees.[9] On March 9, 2017, the NCAA filed a motion requesting that the Court enter a preliminary injunction to immediately stop Defendants’ use of the terms “Final 3” and “April Madness.”[10]

The NCAA having to deal with businesses trying to profit off the March Madness tournament is not uncommon. Considering that the March Madness tournament begins in March 14, 2017, an immediate resolution of this case is likely. We will be monitoring the status of this case. Please contact our office if you have any questions regarding the information in this article.

Daniel Devine, Esq.
Santucci Priore, P.L.
Partner

[1] See, National Collegiate Athletic Association v. Kizzang LLC and Robert Alexander, Case No. 17-cv-00712-LJM-MPB, at Docket Entry No. 1 (Mar. 8, 2017).
[2] Id.
[3] Id.
[4] Id.
[5] Id.
[6] Id.
[7] Id.
[8] Id.
[9] Id.
[10] See, National Collegiate Athletic Association v. Kizzang LLC and Robert Alexander, Case No. 17-cv-00712-LJM-MPB, at Docket Entry No. 6 (Mar. 9, 2017).

Rapper Rick Ross prevails over another rapper in trademark lawsuit

Recently, rapper Rick Ross prevailed in a trademark lawsuit filed against him by rapper Raul Caiz.[1] The Plaintiff, Raul Caiz’s (“Plaintiff”) Complaint asserted claims for Federal Trademark Infringement, Dilution, and Unfair Competition.[2] The Plaintiff asserted Rick Ross infringed upon his trademark in the term “Mastermind,” for which Plaintiff owned a federal registration.[3] Specifically, the Plaintiff alleged that Rick Ross infringed upon his rights by releasing an album entitled “Mastermind,” by tilting his tour “Mastermind,” and by creating a “Mastermind” persona.[4] In defense, Rick Ross filed a motion for summary judgment arguing that the Plaintiff’s trademark should be cancelled because it is a descriptive term and was abandoned by Plaintiff.[5]

The Court agreed with Rick Ross finding that the term “Mastermind” was utilized by several others in the rap music industry in connection with songs, album titles and lyrics.[6] The Court then went on to determine whether Plaintiff had acquired secondary meaning in the term “Mastermind.”[7] The Court described secondary meaning as occurring when “buyers and potential buyers automatically associate the mark with Plaintiff.”[8] The Court then found that the Plaintiff could not set forth enough evidence to support a finding of secondary meaning as the Plaintiff could not overcome the substantial evidence presented that the term “Mastermind” is widely used in the rap music industry.[9] Further, the Court entered summary judgment against the Plaintiff on his claims for trademark dilution since Plaintiff could not prove that his “Mastermind” mark was famous.[10] As a result, the Court ordered the cancellation of Plaintiff’s “Mastermind” mark.[11]

Please contact our office if you have any questions regarding the information in this article.

Daniel Devine, Esq.
Santucci Priore, P.L.
Partner

[1] See, Caiz v. Roberts, et. al., No. 15-cv-09044-RSWL-ARGx, 2016 WL 7335573 (C.D. Cal. Dec. 15, 2016).
[2] Id. at *1.
[3] Id. at *1-2.
[4] Id. at *1.
[5] Id. at *1-3.
[6] Id. at *4.
[7] Id.
[8] Id.
[9] Id. at *5.
[10] Id. at *6-7.
[11] Id. at *6.