Trademarks

TTAB Requires Cross-Examination By Oral Deposition in CAPTAIN CANNABIS Battle

In a precedential decision in a cancellation proceeding, the Trademark Trial and Appeal Board has ruled that Petitioner Laverne J. Andrusiek must cross-examine, by oral deposition, Respondent Cosmic Crusaders LLC’s witnesses who provided direct testimony via written declaration.  Laverne Andrusiek v. Cosmic Crusaders LLC   Andrusiek contends that he created a comic book character named “Captain Cannabis” in the 1970s, and operates a website identifying various books and other works related to that character since that time. Cosmic Crusaders appears to be associated with a cannabis activist under the moniker of “Captain Cannabis,” and related media, including a “Cosmic Crusaders” comic featuring a “Captain Cannabis” character. Cosmic Crusaders obtained the registration at issue for CAPTAIN CANNABIS , for comic books in Class 16, in 2015.   Andrusiek sought leave to cross-examine Cosmic Crusader’s witnesses by written questions, citing, as factual background, to the inconvenience and expense of conducting oral cross-examinations. Andrusiek was identified as being in Washington state, while Cosmic Crusader’s witnesses were identified as being in Tampa, Florida. Andrusiek cited 37 CFR 2.124(b)(3) as basis for the request:   A party desiring to take cross-examination, by written questions, of a witness who has provided testimony by affidavit or declaration… Read More »TTAB Requires Cross-Examination By Oral Deposition in CAPTAIN CANNABIS Battle

Pleading Removal of Copyright Management Information Under the DMCA (and a Related Trademark Claim)

In Fischer v. Forrest, 14 Civ. 1304 (PAE); 14 Civ. 1307 (PAE) (S.D.N.Y. Jan 13, 2015), the court denied a Rule 12(b)(6) motion to dismiss a suit alleging copyright and trademark infringements. Of particular interest in this post is the pleading required to state a claim for remove of Copyright Management Information (CMI) under the DMCA. Also of interest is the way in which the facts supporting this claim were intertwined with a claim for trademark infringement under the Lanham Act.  Finally, this case offers a lesson for drafting choice of law provisions in confidentiality agreements — make them broad enough to cover related tort claims in addition to breach of contract claims. The plaintiff held a valid federal copyright registration for text and images used on his website, and a valid federal trademark registration for his honey harvesting product for beekeepers called Bee-Quick®. The plaintiff authorized the defendant to use the trademark name, images and text to sell Bee-Quick® through the defendant’s website. After eight years, the defendant terminated the business relationship with the plaintiff, but allegedly continued using the copyrighted text, images and trademark on his website and catalogs to market his own product. Specifically, the plaintiff alleged… Read More »Pleading Removal of Copyright Management Information Under the DMCA (and a Related Trademark Claim)

Abandonment of Android Trademark Makes Google the Senior User

After the owner of a registration for the “Android Data” trademark alleged that Google infringed the mark, the Seventh Circuit has affirmed the district court’s entry of summary judgment, based on a finding that the “Android Data” mark had been abandoned.  Specht v. Google, Inc., No. 11-3317 (7th Cir. April 4, 2014). Erich Specht’s application “to register the trademark “Android Data” with the United States Patent and Trademark Office . . . was approved in 2002.”  However, at the end of 2002, Android Data Corporation (ADC), to which the mark was assigned, ceased operations.  In 2003, Specht unsuccessfully attempted to find a buyer for ADC’s assets. In December 2007, Specht included the “Android Data” mark in a mass mailing marketing software.  He made no sales. Specht’s next use of the mark was in April 2009, “when he resurrected his website, albeit with a slightly different URL (android-data.com) because his previous URL had by then been registered by a third party.”  Specht had “also assigned the Android Data mark to ADI [The Android’s Dungeon, Incorporated], retroactive to the December 2002 asset transfer.” Google released a public beta version of its Android operating system in November 2007, a month before Specht’s mass… Read More »Abandonment of Android Trademark Makes Google the Senior User