Tag Archives: trademark infringement

Court Finds Trademarked Words Can Be Used To Describe Property’s History

On July 14, 2017, the Eastern District of Kentucky found that the use of trademarked words to describe a property’s history is not trademark use.

In 2014, Peristyle, LLC purchased the abandoned Old Taylor Distillery in Millville, Kentucky, hoping to exploit its unique history.  The distillery was built in 1887 by Colonel Edmund H. Taylor, considered by many to be the father of the modern bourbon industry.  Peristyle renamed the property “Castle & Key,” intending to do all its whiskey-related business under that name; nevertheless, a historic sign at the property’s entrance reads “The Old Taylor Distillery Company,” and throughout the renovation period, Peristyle and the media often referred to the location as “the former Old Taylor Distillery” or simply “Old Taylor.” Continue reading

Tagged , ,

Court Says Jury’s Award of Profits Justified by Costco’s Business Model

On August 14, 2017, the Southern District of New York determined that Costco Wholesale Corp. owed Tiffany and Co. over $19 million in damages for trademark infringement.

The case arose out of Costco’s marketing and display of non-Tiffany-brand solitaire diamond rings proximate to signage reading “Platinum Tiffany” and “Round Diamond Ring,” or “Platinum Tiffany” and “Round Brilliant Solitaire Ring.”  On September 8, 2015, the court granted Tiffany summary judgement, holding Costco liable for trademark infringement and trademark counterfeiting.  A jury trial was subsequently held on Tiffany’s claim seeking damages, including profits, and statutory and punitive damages.  The jury estimated Costco’s profits dating back to 2007 to be $3.7 million, but finding that sum inadequate to compensate Tiffany, added a further $1.8 million to the award.  In addition, the jury awarded Tiffany $2 million in statutory damages and $8.25 million in punitive damages.  Continue reading

Tagged , , ,

SpongeBob Restaurant Found To Infringe Viacom’s Trademark

On January 11, 2017, the Southern District of Texas granted Viacom International Inc. summary judgment on its trademark infringement claim against IJR Capital Investments, LLC’s name for its proposed restaurant, “The Krusty Krab.”

“The Krusty Krab” is a fictional restaurant that, since 1999, has appeared on Nickelodeon’s animated television series “SpongeBob SquarePants.” In response to IJR’s filing of an intent-to-use application for THE KRUSTY KRAB and preparations to use that mark in connection with restaurant services., Viacom sued alleging, among other things, trademark infringement and dilution.  Continue reading

Tagged , , , ,