America runs on just Dunkin’

By Pablo N. Garcia Rodriguez and Carla Vercellone It was 1950 in Quincy, Massachusetts, when Bill Rosenberg founded “Open Kettle”, a coffee and doughnut shop later renamed as “Dunkin’ Donuts” [1] . But that has changed in 2018, and after 68 years of using this name, one of the biggest food chains in the world is changing and dropping its last name, resulting in just Dunkin’. The brand has received mixed reactions from confused consumers and fans from across the world (see at the end of this post). Last year’s opening in Pasadena, Calif. of the first store with what is the brand’s new name today, meant a change was coming for its loyal consumers. Rumors had been swirling around about a new name, but it wasn’t until January 2018 that the coffee and food chain made a move and filed a new trademark application (87768615) with the United States Patent and Trademark Office (‘USPTO’) for goods such as hats,

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Fourth Circuit Remands Rosetta Stone Ltd. v. Google Inc. 2010 Ruling

By Virginia Dudley On April 9, 2012, the U.S. Court of Appeals for the Fourth Circuit revived the trademark infringement case Rosetta Stone Ltd. v. Google Inc., 730 F. Supp. 2d 531 (E.D. Va. 2010). The Fourth Circuit overturned the summary judgment granted in favor of Google by the U.S. District Court for the Eastern District of Virginia. The Rosetta Stone case stemmed from Google’s sale of marks as AdWords. Adwords are Google’s online advertizing tool that allows a sponsor to “purchase” keywords that prompt the appearance of the sponsor’s advertisement when the keyword is entered as a search item. Rosetta Stone, a language-learning software company, was established in 1992 and began advertizing in connection with Google’s website in 2002. Rosetta Stone initially accused Google of trademark infringement as a result of the website’s use of their mark in AdWords. In terms of this appeal, the Fourth Circuit re-addressed the possible elements of confusion, application of the functionality doctrine, dilution

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9th Circuit Finds Whether Keyword Advertising Infringes Mark Depends on Presentation of Search Results as a Whole

In Network Automation, Inc. v. Advanced Systems Concepts, Inc., Civ. Case No. 10-55840 (9th Cir. March 8, 2011), Network Automation sells a job scheduling and management software product under the mark AutoMate.  Advanced Systems also sells a job scheduling and management software product under the registered trademark ActiveBatch. Network Automation advertises its product online by purchasing certain keywords, including “ActiveBatch,” to produce a results page showing “www.NetworkAutomation.com” as a sponsored link. Advanced  Systems objected to Network Automation’s use of its ActiveBatch trademark to advertise its competing product where prospective purchasers are using a search engine to find ActiveBatch, and brought a trademark infringement action in the Los Angeles District Court based upon a theory of initial interest confusion.

11th Circuit Finds Use of Trademarks in Metatags is an Infringing Use in Commerce

In North American Medical Corporation v. Axiom Worldwide, Inc. 522 F3d 1211; 86 USPQ2d 1462 (11th Cir. 2008), Axiom Worldwide (“Axiom”) appealed the District Court for the Northern District of Georgia’s grant of preliminary injunction in favor of North American Medical Corp. (“NAM”) enjoining Axiom from engaging in alleged acts of trademark infringement and false advertising. The Eleventh Circuit affirmed in part and vacated and remanded in part. Background NAM designs and manufactures physiotherapeutic spinal devices used to treat lower back pain, which are commonly known as traction devices. NAM owns and uses registered trademarks for “Accu-Spina” and “IDD Therapy.”  Axiom competes with NAM and manufactures a physiotherapeutic device known as the DRX 9000. NAM alleged that Axiom infringed NAM’s trademarks by using the “Accu-Spina” and “IDD Therapy” marks on Axiom’s website within meta tags. Meta tags are words or phrases included in a website’s code intended to describe the contents of the website with which the meta tags are

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