Lilenfeld PC Client Wins Trademark Infringement Jury Trial

July 25, 2017

On July 18th, 2017, Lilenfeld PC, won a jury trial in a trademark infringement action. The trial was in the United States District Court for the Northern District of Georgia for Fronto King LLC, a marketer of whole tobacco leaves under the brand Fronto King. Fronto King sought an injunction and a monetary award against the Defendants (Five A Trading, Inc. d/b/a A to Z Wholesale and New Generation Imports, LLC), who used a product package design that was similar to the package design Fronto King began using years earlier.

David M. Lilenfeld and Kaitlyn A Haase conducted the two-day federal trial for Fronto King.

Fronto King is the leading brand of high-quality tobacco leaves used to wrap hand-rolled cigars – an increasingly popular hobby in the U.S.Fronto King Art

While the jury deliberated, Lilenfeld and team offered a settlement of $150,000 to the defense, in which no response was received.  Less than 45 minutes later, the jury came back with a verdict.

Having found that there was a likelihood of confusion between Fronto King’s package design and the package design adopted by the Defendants, the jury awarded Fronto King $21,400 in damages plus disgorgement of Five A Trading’s $250,000 in profits.

From Fronto King’s perspective, the most important part of the trial’s outcome is that the Defendants can no longer use their confusingly similar packaging.


66 Fronto King Verdict

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Tackling Tacking in Trademark Law by David Lilenfeld

The Supreme Court of the United States tackled trademark tacking in a recent case titled Hana Financial, Inc. v. Hana Bank, 135 S. Ct. 907 (2015).

When a company changes its trademark (for a example a rebrand), a new trademark is introduced. But what if the company only makes modest changes to its existing brand or logo — is the updated version a new trademark or just a refreshed version of the old one?

The answer is provided by the principle of “trademark tacking,” which allows the company to “tack on” the time it used the former trademark to the new trademark. “Tacking on” is good for the trademark owner because its gives the company the benefit of the Date of First Use of the older trademark, instead of starting over with the new trademark.

The Supreme Court ruled that tacking is allowed when “two marks are so similar that consumers generally would regard them as essentially the same.” The Court explained that two trademark marks “may be tacked when the original and revised marks are ‘legal equivalents,’” meaning that the two trademarks “‘create the same, continuing commercial impression’ so that consumers ‘consider both as the same mark.’”

“The key take-away from this case, though,” said David Lilenfeld, founding partner of Lilenfeld PC, “is the Supreme Court’s ruling that at the trial court level, trademark tacking should be decided by the jury, not the judge.”

David Lilenfeld

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IPR Patent Proceedings May Get a Judicial Makeover

In early January 2016, the Supreme Court of the United States a writ of certiorari in a patent case, titled Cuozzo Speed v. Lee. In Cuozzo, is likely to have a major effect on Patent and Trademark Office’s post-grant patent proceedings. Two questions are presented to the Supreme Court:

No. 1. Does the Board have inviolate, unreviewable authority to initiate an IPR.

No. 2. Whether the Board, during those proceedings, may construe claims in an issued patent according to broadest reasonable interpretation or according to their plain and ordinary meaning.

“This one will be good to watch and can have significant impact on post-grant strategy,” said David Lilenfeld, founder of Atlanta-based Lilenfeld PC.

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Does Copyright Law Let a Monkey Sue Over His Selfie?

Monkey Selfie Blog pic

Naruto, the macaque, is a pioneer to the animal world because he is the first animal to take a selfie. Dating back to 2011, on the Indonesian island of Sulawesi, Naruto snatched photographer’s, David Slater’s, camera and took a selfie. This selfie has stirred widespread debate over who owns the rights to this photograph. People for the Ethical Treatment of Animals (PETA) sued on Naruto’s behalf claiming ownership rights to the selfie. Slater, on the other hand, claimed ownership of the selfie because it was taken with his camera. U.S. District Judge William Orrick III ruled that copyright law does not extend its protection to animals. Nevertheless, this is a landmark case because for the first time in history an animal’s right to sue for property rights, as opposed to being labeled as property, has arisen.

PETA, on behalf of Naruto since monkeys do not have standing to bring a lawsuit let alone the ability to talk, sued Slater. The organization asserted Slater could not hold copyright in the selfie because he was not involved in its creation. PETA sought monetary damages, claiming all money will go to Naruto, and a ban on the sale of the selfie.

Slater alleged he has a copyright interest in the selfie. This nature photographer owned the camera that the monkey grabbed in order to take the selfie. Furthermore, Slater argued the photograph was a result of his artistic creativity as he deliberately left the remote trigger for the camera accessible to Naruto with the hope that the monkey would take a picture.

Copyright laws provide that if there is an author, there is a copyright. This poses a problem for Naruto because works created by a non-human are not subject to copyright. According to Clause 313.2 from the United States Copyright Office, “This office will not register works produced by nature, animals or plants.” This clause specifically lists “a photograph taken by a monkey” as an example of a work that is not registerable because it lacks human authorship. Naruto, being an animal, foreseeably had difficulty acquiring a copyright in his selfie even though he arguably is the author of the work. Despite our sympathy for Naruto, United States copyright laws would need to be revised in order for courts to lawfully rule in favor of Naruto.

David Lilenfeld


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Patent Infringement Panel Discussion in Atlanta

Presumption of Irreparable Harm in Requests for Injunctions After eBay

The Supreme Court, in its 2006 decision in eBay Inc. v. MercExchange, L.L.C. (547 U.S. 388), rejected the general rule favoring the granting of permanent injunctions against patent infringement, instead holding that the traditional four-factor analysis for permanent injunctive relief applied in patent infringement cases.

Below you can view a panel discussion examining the after-effects of the eBay decision. It is moderated by patent infringement attorney and Lilenfeld PC founder David M. Lilenfeld. The panel also features Ronald T. Coleman Jr., of Parker Hudson Rainer & Dobbs; Ann G. Fort, of Sutherland; and Frank G. Smith III, of Alston & Bird.



David M. Lilenfeld

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Opposition to Minor League Team’s Trademark of MINERS Upheld

In a recent decision, the Trademark Trial and Appeal Board (“the Board”) sustained two Oppositions to registration of the mark Miners baseball finding the mark likely to cause confusion with an identical, previously registered trademark. The Applicant, a minor league baseball team in Marion, Illinois, plays in the Frontier League which consists of teams from six Midwestern states, including Illinois and Missouri. The Applicant applied to register the mark MINERS for use in connection with printed materials and “professional baseball imprinted clothing.” However, the mark was already registered and used by the University of Texas at El Paso for printed programs and college imprinted clothing. After evaluating the oppositions, and despite the University of Texas’s lack of a baseball team, the Board concluded that the minor league team’s use of the mark MINERS would likely be confused with the registered mark MINERS owned by the University of Texas. .

While the University of Texas at El Paso no longer fields a baseball team, it still makes good use of the mark MINERS though a licensing agreement with Missouri S&T. The Missouri S&T baseball team operates under the mark, and the University of Texas allows Missouri S&T to use the mark for college imprinted goods and entertainment services in seven Midwestern states, including Missouri and Illinois.

In analyzing the marks, the Board found that the minor league team’s mark MINERS was similar in sound, appearance, meaning and commercial impression to the University of Texas’s mark MINERS.

No shock there: it’s the same word.

The real issue before the Board was whether the goods and trade channels were similar enough to support a finding of likelihood of confusion as to the source of the goods.

When examining the goods themselves, the Board found that the University of Texas’s “media guides” bearing the mark MINERS were legally equivalent to the minor league team’s use of the mark in “printed guides in the field of professional baseball for media use.” The Board also found no distinction between the minor league team’s use of the mark for professional baseball imprinted clothing and Missouri S&T’s licensed use of the mark for college imprinted goods. The minor league team argued that “college imprinted” clothing was distinguishable from its “professional baseball imprinted” clothing because college clothing should bear the school name, be printed in school colors, or be accompanied by a sticker stating “Officially Licensed Collegiate Product.” But the Board rejected this argument, finding that the terms “college imprinted” and “professional baseball imprinted” did not distinguish the goods in any way. The Board noted that different types of imprinting, college or professional, could result in identical goods imprinted with identical marks.

Finally, the Board examined the trade channels through which the goods traveled to consumers. In so doing, the Board presumed that both the minor league and the University of Texas’s printed guides travel through similar trade channels to a similar class of consumers because the goods are so similar. The Board further reasoned that even if the word “collegiate” modified “media guides” in the University of Texas’s registration, the media guides would still be distributed in the same trade channels as the minor league team’s “printed guides in the field of professional baseball for media use.” As for the clothing, the minor league team argued that clothing items bearing the mark traveled through distinct trade channels to professional baseball fans sincethe minor league team’s clothing is sold primarily to Frontier League fans while the University of Texas’s clothing is often sold to fans in the Conference USA region. However, the Board found that no such restrictions on trade channels existed in the trademark applications and registrations.

Ultimately, the Board held that consumers familiar with the University of Texas’s mark MINERS would be likely to believe that printed goods or clothing bearing the minor league team’s mark MINERS originated from or are somehow associated with the same entity, even though the University’s goods are associated with college baseball while the minor league team’s goods are associated with professional baseball. The University of Texas’s opposition to the mark was sustained, and the minor league team’s registration was refused.

David Lilenfeld

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College Football Stars Playing Defense with Trademark Rights

Although the NCAA prevents college athletes from profiting from their athletic success, an increasing number of college football stars are preparing for future deals by filing trademarks now. Gaining legal ownership of their names, nicknames, and catch phrases paves the way for licensing deals down the road. Trademark ownership also prevents others from exploiting and capitalizing on a young player’s fame.

For example, Ohio State running back Ezekiel Elliott recently filed an application with the U.S. Patent and Trademark Office to register his nicknames “Zeke” and “Eze” as trademarks for merchandise. Mississippi State quarterback Dak Prescott is also attempting to obtain trademark rights in his name as well as the phrases “Dak Attack” and “Who Dak.”

Professional players routinely trademark their names and fan phrases, and now, some universities and lawyers are encouraging college athletes to capitalize in the same way. By filing for a trademark registration, college players not only prepare for merchandising when they go pro, but also protect themselves against potential trademark poachers. Additionally, anyone can apply for a trademark, and if an athlete fails to secure legal ownership over his trademark(s), someone else might. Last year, Dak Prescott faced this issue when he discovered someone selling t-shirts with his name on them. In response, he secured a trademark and sued the t-shirt maker, who agreed to stop.

Critics argue that allowing college athletes to secure trademarks blurs the line between professional and amateur sports, and they may have a point. The line is increasingly becoming less clear, especially after a recent court ruling entitling college athletes to compensation when someone uses their likeness commercially. In the judgment, which was entered last fall, a U.S. District Judge ruled in favor of UCLA basketball star Ed O’Bannon and 19 others who sued the NCAA, allowing college players to put money received from television contracts into a trust to be paid to them after they leave school. The NCAA has appealed the decision.

The NCAA still prevents players from receiving commercial payment from their athletic performance, but by trademarking now, college players are certainly becoming savvier about their future interests and their earning potential.

David Lilenfeld

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