Wednesday, December 30, 2009

Traverse Internet Law Federal Court Report: November 2009 Trademark Infringement Cases

The facts are unproven allegations of the Plaintiff and all commentary is based upon the allegations, the truthfulness and accuracy of which are likely in dispute.

FILED: 11/09/2009

The registration of the subway name in Minnesota reflects a fundamental problem with state trademark registrations. Usually there is very limited review and no notice provided to third parties in a state trademark registration process. How would you like it if your novel or unique business name was trademarked in a dozen other states around the country and you didn’t even know about it? Keep on top of your name by conducting appropriate searches and setting up alerts for anything containing your business name. You might also consider having your attorney conduct an annual trademark review and clearance of your business name to identify any infringers.

The Plaintiff is the owner of the Subway chain of restaurants. Defendants are alleged to have purchased “” and launched a website at that domain name address. The Defendants obtained a Minnesota state trademark registration for “ eat healthy”.

The lawsuit claims trademark infringement, unfair competition, trademark dilution, violation of the Anti-Cybersquatting Consumer Protection Act, violation of Minnesota Deceptive Trade Practices Act, and dilution and injury to business reputation. Plaintiff requests the cancellation of the Defendant’s state trademark, preliminary and permanent injunctive relief, transfer of the infringing domain name, compensatory relief to be determined at trial, and attorneys’ fees and costs. Traverse Internet Law Cross-Reference Number 1386.

FILED: 11/03/2009

I understand the attraction of making a business appear to be a government agency or affiliated government sponsored service provider. Don’t mess with the fed. And don’t ever, ever, ever get near the Department of Defense. A simple lawsuit is the least of your worries. I’ve had clients, in what appears to be much less serious situations, have to deal with coordinated FDI raids. The fact is that if your business touches upon the Department of Defense or national security you need to be squeaky clean. Résumé banks for retiring military, social networks for active duty, government contractors (and wannabes) all need to be above reproach in every single respect.

The Plaintiff is the United States of America, Department of Defense, Armed Forces Institute of Pathology. The Defendants are allegedly using the acronym “AFIP” on its website and thereby holding itself out as affiliated with the Department of Defense’s laboratory since it has a registered trademark in “Ask AFIP”.

The Plaintiff claims trademark infringement, false designation of origin, unfair competition, false or misleading descriptions and representations of fact, and wrongful registration of a domain name. The United States requests that the court enter a preliminary and permanent injunction prohibiting the Defendant from using the trade name, domain name, and any other indicia of the Armed Forces Institute of Pathology or any other Government affiliate. Plaintiff also request that Defendants be required to surrender all works, products, or advertising bearing the trade name, transfer the domain name to Plaintiff, and place a large font disclaimer on all websites or materials that use the marks “AIPL” or “AIP Laboratories” that make it clear Defendants are not affiliated with the Armed Forces Institute of Pathology. Monetary damages requested include compensatory damages, actual damages, and court costs and attorneys’ fees. Traverse Internet Law Cross-Reference Number 1387.

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