R.E. Whittaker Co., a Pennsylvania corporation based in New Castle, PA, filed a trademark infringement suit against Misco Products Corporation, a Pennsylvania corporation based in Reading, PA on July 9, 2010 in the United States District Court for the Western District of Pennsylvania.
Whittaker has been in the business of manufacturing and selling commercial carpet cleaning products for over twenty-five years. In 1992 Whittaker introduced a carpet cleaning product under the brand name Crystal Dry®. The Complaint alleges that Misco recently started promoting, advertising, and selling a carpet cleaning product identified by the mark “Crystal Clear.”
The causes of action in the Complaint are: trademark infringement under federal trademark law, false designation of origin and unfair competition, dilution of famous marks, and trademark infringement and unfair competition under Pennsylvania common law.
On October 5, 2009, in a 4-3 decision, the Pennsylvania Supreme Court held that the Trademark Counterfeiting Statute,18 Pa.C.S. § 4119, is unconstitutionally overbroad.
The Trademark Counterfeiting Statute provides:
(a) Offense defined.– Any person who knowingly manufactures, uses,
displays, advertises, distributes, offers for sale, sells or possesses with intent
to sell or distribute any items or services bearing or identified by a counterfeit
mark shall be guilty of the crime of trademark counterfeiting.
* * * * *
(i) Definitions.– As used in this section, the following words and phrases shall
have the meanings given to them in this subsection:
“Counterfeit mark.” Any of the following:
(1) Any unauthorized reproduction or copy of intellectual
(2) Intellectual property affixed to any item knowingly sold,
offered for sale, manufactured or distributed or identifying
services offered or rendered, without the authority of the owner
of the intellectual property.
“Intellectual property.” Any trademark, service mark, trade name,
label, term, device, design or word adopted or used by a person to
identify that person’s goods or services.
18 Pa.C.S. § 4119.
A statute is unconstitutionally overbroad only if the statute criminalizes a substantial amount of constitutionally protected speech.
The Commonwealth argued that the Trademark Counterfeiting Statute is not unconstitutionally overbroad because it is limited to persons with the intent to sell or distribute items with counterfeit trademarks and thus does not reach a substantial amount of constitutionally protected speech. The Commonwealth also relied on a proposed amendment to the statute, statutes from sister states, and the mens rea in the Crimes Code.
The Supreme Court held that under the definition of “intellectual property” any use of a “term” or “word” that is “engaged by another person to identify that person’s goods or services is a ‘counterfeit mark’” which is unconstitutionally overbroad.
- Katie Cooper
Franchise arrangements often involve a variety of intellectual property rights. Disputes can arise when a franchisee’s license ends, but the franchisee continues to sell a product associated with the franchise or the franchisee continues to display the franchise’s signage.
On September 22, 2009, Chevron Intellectual Property LLC and Chevron U.S.A. Inc. (“Chevron”) filed two separate trademark infringement and unfair competition lawsuits in the United States District Court for the Western District of Pennsylvania against defendants who allegedly owned and operated automobile gasoline and service stations with infringing signage and materials (2:09-cv-01292-AJS and 2:09-cv-01293-TFM).
Chevron owns over twenty trademarks and service marks including trademarks for TEXACO, Star T Design, Service Station Canopy Design, Gasoline Pump Design, and a Building Design for automobile services. There are over 1,500 TEXACO-branded stations currently licensed to use such marks.
Chevron’s authorized TEXACO-branded stations sell TEXACO brand gasoline. Licensed TEXACO-branded service station facilities are authorized to use and prominently display exterior and interior signage that bear Chevron’s registered TEXACO and Star T Design trademarks. Buildings of licensed TEXACO-branded facilities also often have an exterior appearance consisting of: (1) a red and black building in combination with silver and dark gray, with the Star T Design mark; and (2) a rigid canopy over the gas pumps with a black background and a red border, including the TEXACO and Star T Design marks on the side of the canopy.
For a period of time from 2001 to 2006, Chevron licensed the use of the TEXACO marks through Shell Oil Company and other related companies. Chevron claims that the defendants once operated as a licensed TEXACO-branded service station and sold TEXACO brand gasoline and other products. By June 30, 2006 defendants were no longer selling or supplying TEXACO brand gasoline and were no longer authorized licensees of Chevron. At that time, defendants were obligated to remove the TEXACO marks from their facilities, but defendants still have not. Chevron alleges that while defendants’ facilities are presently not operational, defendants displayed and used the infringing signage after June 30, 2006 and defendants continue to display signage on the premises.
Defendants have not yet filed Answers.
- Katie Cooper
The use of a third party’s trademark on social networking sites such as Twitter and Facebook has recently been a topic of interest for trademark owners.
On September 15, 2009, ONEOK, Inc., a publicly traded Fortune 500 company in the energy industry, filed suit against Twitter, Inc. for trademark infringement and contributory infringement of ONEOK’s registered trademarks in the District Court for the Northern District of Oklahoma.
ONEOK is the owner of U.S. Trademark Registration Number 2,985,073 for the word mark “ONEOK” and a Diamond design. ONEOK is also the owner of U.S. Trademark Registration Number 3,655,886 for a Diamond design. In the Complaint, ONEOK alleges the following:
1. Twitter has assigned the user name “ONEOK” to a party other than ONEOK, Inc.;
2. The current ONEOK Twitter account holder has generated Tweets on at least two occasions containing information regarding ONEOK, Inc., the ONEOK trademark name and the Diamond design;
3. The Tweets have the appearance of being an official statement issued by ONEOK and have been passed off to unsuspecting recipients as official statements by ONEOK on Twitter;
4. Twitter has provided the means by which the Twitter account holder generated the postings; and
5. Twitter has refused to transfer control of the ONEOK Twitter account to ONEOK, Inc.
ONEOK claims that if the situation is allowed to persist, it will cause irreparable damage to ONEOK’s reputation in the investor community and in the energy industry.
On June 13, 2009, Facebook allowed users to personalize a Facebook URL by selecting a unique “username” (www.facebook.com/username) which could include a trademark, brand name, or personal name. Companies could protect their registered trademark from a potential infringer registering their trademark as a username by filing out a “Preventing the Registration of a Username” form. The trademark owner was required to provide their trademark and registration number on the form.
- Katie Cooper
Ride The Ducks is an amphibious tour operator with duck boat tours in Branson, Philadelphia, San Francisco, Seattle, Stone Mountain Park, GA and Newport, KY. On May 19, 2009, Ride The Ducks filed suit against Bay Quackers in federal court in the Northern District of California alleging infringement of a sound mark.
Bay Quackers is a San Francisco amphibious tour operator. During tours, guests “quack” like a duck using a kazoo. The suit alleges that Bay Quackers’ kazoos emit a quacking sound that is identical to a registered sound mark of Ride The Ducks, U.S. registration number 2484276, which “consists of a quacking noise made by tour guides and tour participants by use of duck call devices throughout various portions of the tours.”
A sound mark, which is a type of trademark, identifies and distinguishes a product or service through audio means. Examples of sound marks include: (1) a series of tones or musical notes, with or without words; and (2) wording accompanied by music. TMEP § 1202.15. An individual or company may try to protect their sound mark by filing an application for registration with the United States Patent and Trademark Office electronically.
Ride The Ducks has sought a preliminary injunction against Bay Quackers to stop using the kazoos and to have its inventory of the kazoos destroyed.
Just Ducky Tours is a popular attraction in Pittsburgh that is similar to Ride The Ducks and Bay Quackers. Just Ducky Tours offers an amphibious tour that travels on land and in one of Pittsburgh’s three rivers during the months of April through October and on weekends in November.
- Katie Cooper
Eat’n Park, a restaurant company based east of Pittsburgh, Pennsylvania, filed a trademark infringement lawsuit in the United States District Court for Western Pennsylvania against Forget-Me-Knot Gifts alleging that Forget-Me-Knot sells a Smiley cookie that infringes Eat’n Park’s Smiley cookies.
Eat’n Park owns the trademark “Smiley” for “sugar cookie having raised design of a smiling face sold in restaurants for consumption on or off the premises.” Eat’n Park has been selling its Smiley cookies under the trademark since 1987.