Repeat After Me—Domains are NOT Trademarks (but Trademarks Can Be Domains)

Repeat After Me—Domains are NOT Trademarks (but Trademarks Can Be Domains)

E-Commerce, Entity Formation, Lanham Act, Trademark, Trademark Infringement
Lately, I've had more than one new business owner client tell me they registered a website domain with their company name and, because they were able to do this, then it must not be a registered trademark and available, right? [I direct your attention to the title of this blog post] No, you cannot just add a word onto someone else's trademark and register that domain A recent situation with a new startup client ran something like this: the founder had selected their company name but had not ever bothered to perform an actual trademark search or "clear" the usage of the name. She subsequently hired my firm to assist with getting their startup formally set up and basic initial documentation and disclosures prepared. At one point, the founder requested…
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Ill-Fated: Trademark Tips for Businesses Owners from the Fate Brewing Co. Dispute

Lanham Act, Restaurants, Trademark, Trademark Infringement, Unfair Competition
With craft brew festival season getting into full swing across the country, I thought it'd be fun to revisit the legal trademark saga between a Valley craft brewery, formerly known as Fate Brewing Company, now known as "McFate Brewing Company" (which we'll just call "McFate" for clarity's sake) and the Fate Brewing Company based in Boulder, Colorado (which we'll call "Fate Colorado"). For those unfamiliar, it might be helpful to recap the timeline of events: Summer 2012 - Fate Colorado initially applies for a Federal trademark registration with the United States Patent and Trademark Office (USPTO) for the mark "FATE BREWING COMPANY" August 2012 - McFate sends cease and desist letter to Fate Colorado. November 2012 - Fate Colorado's USPTO application is published for opposition. Winter 2012 - McFate opens its first brewpub…
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Refusing to Take It Easy, Eagles Sue over Hotel California Trademark

Common Law Trademark, Lanham Act, Trademark, Trademark Infringement, Unfair Competition
As first reported in The Hollywood Reporter, earlier this week The Eagles filed a lawsuit in the United States District Court for Central California seeking both an injunction and damages against a couple who (through their California-based LLC) operate the "Hotel California" in the Mexican state of Baja California. The suit alleges, among other things, that since 2001 the couple have gone out of their way to lead potential patrons into thinking that their establishment is connected with the iconic American band, even having served as the inspiration for the 1978 Grammy Record of The Year winner, not to mention having profited off of assorted merchandise bearing the name of perhaps the band's most popular song. On its (lovely) face, The Eagles' complaint claims "trademark infringement" against the defendants, however a closer look…
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