- Posted by Holmes Weinberg, PC
- On May 4, 2016
AND THE WINS KEEP COMING!
Following last year’s big win for our client E. & J. Gallo Winery against the use of EL GALLO as a trademark for an energy drink (Eastern District of California), HW has recently won three more important cases.
In the first, the Trademark Trial and Appeal Board of the US Patent and Trademark Office ruled that KARAOKE’S GOT TALENT for talent contests could not be federally registered as a service mark in light of our client Fremantle Media’s prior ownership of the AMERICA’S GOT TALENT mark. In ruling in our client’s favor following an accelerated trial, the Board held that AMERICA’S GOT TALENT is a “famous” mark, a particularly great part of the overall result. The Board rarely holds marks to be “famous”; a finding that extends the broadest possible protection to a trademark or service mark.
In the second case, HW obtained summary judgment for client KidTribe against the attempt by two former employees to register HOOP IT UP as a service mark for providing educational athletic services to school kids. KidTribe has been providing athletic/empowerment programs for school kids nationally, including at the White House. Unfortunately, the owner had not entered into written agreements with two of its instructors, who decided to abruptly leave the company to start a competitive business, using and seeking to register KidTribe’s popular trademark HOOP IT UP. The Board agreed with our client that the former employees could not succeed with their plan.
Last but not least, with co-counsel Meylan Davitt, HW convinced the Northern District of California to enter summary judgment in our client McKeon Products’ favor, holding that plaintiff Moldex-Metric’s green colored earplug used in industrial settings was not a protectable trademark under the Supreme Court’s Qualitex Co. v. Jacobson Products Co. and the Ninth Circuit’s Disc Golf standards for determining functionality. Moldex touted that its neon green colored earplugs were the best for compliance checks in industrial settings and dominated that market segment. The court held that under these facts, the color green was functional as a matter of law and therefore not protectable. Moldex has filed an appeal of the decision with the Ninth Circuit. Congratulations to our clients and many thanks to them for trusting in HW to represent them.