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Pirkey Barber PLLC

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Significant Matters

Exxon Mobil Corporation v. FX Networks, LLC, et al.; C.A. No. H-13-2906; in the U.S. District Court for the Southern District of Texas, Houston Division

ExxonMobil filed this suit against FX Networks and other Fox subsidiaries, claiming that the stylized FXX logo infringes and dilutes ExxonMobil’s famous interlocking X design, which it uses as part of its EXXON and EXXONMOBIL logos and as a standalone mark. 

The case remains pending, but ExxonMobil has prevailed on the first two motions, including its motion for protection from an excessive set of requests for admission. In addition, in denying Defendants’ motion to dismiss ExxonMobil’s Texas dilution claim, the court decided an important issue of statutory interpretation under Section 43(c)(6) of the Lanham Act. In an opinion of first impression, the court found that Defendants’ ownership of a federal registration for the mark FXX in standard characters does not bar a state dilution claim against a stylized form of that mark. See Exxon Mobil Corp. v. FX Networks, LLC, No. H-13-2906, 2014 WL 4100412.

Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 109 USPQ2d 1949 (TTAB 2014).  We represented Frito-Lay in opposing Princeton Vanguard’s application and petitioning to cancel its registration for PRETZEL CRISPS for “pretzel crackers.”  In a precedential and highly publicized decision, the TTAB held that PRETZEL CRISPS is generic, sustained the opposition and granted the cancellation.  The TTAB gave controlling weight to generic use of the term “crisps” to identify crackers by competitors in the food business, including by Princeton Vanguard itself, by the media, in disclaimers in trademark registrations, and in dictionaries, and also noted a number of generic references to the combined term “pretzel crisps.”  The Board found that combining the generic terms “pretzel” and “crisps” added no new meaning, and thus was a compound term that retained its generic significance.  This case is currently on appeal to the Federal Circuit.  Press coverage:  Law 360, March 6, 2014, “Siding with Frito-Lay, TTAB says ‘Pretzel Crisps’ is Generic”.

H.J. Heinz Company  v. Figueroa Brothers, Inc.; C.A. No. 3:14-cv-00843-B in the U.S. District Court for the Northern District of Texas, Dallas Division.  Pirkey Barber represented Heinz in this trade-dress / trademark infringement case challenging Figueroa Brothers’ sale of ketchup products in a bottle design similar to Heinz’s famous bottle design, which Heinz has used since the 1890s. Because the case involved Heinz’s famous bottle design, it received attention from a number of media outlets.  The parties negotiated a settlement agreement, and on April 11, 2014, the U.S. District Court for the Northern District of Texas entered a permanent injunction prohibiting Figueroa Brothers from using its bottle design or any bottle design confusingly similar to Heinz’s famous bottle design.  Press coverage:  Texas Lawyer, April 21 issue, page 3, the lead article in the Inadmissible column; Texas Lawyer, April 15, 2014, Bottle battle: trademark ruling for H.J. Heinz Co.;  Dallas Morning News, March 7, 2014, “Ketchup giant Heinz sues Irving-based maker of spicy alternative over trademarked bottle design”; Courthouse News Service, March 7, 2014, “Ketchup Maker Can’t Ride Along, Heinz Says”; Courthouse News Service, April 11, 2014, “Ketchup Maker Concedes to Heinz on Bottle Design”.

Board of Regents, The University of Texas System v. Tower Car Wash, Inc., et al., Case No. 1:11-cv-00125-LY in the U.S. District Court for the Western District of Texas.  Pirkey Barber represents Board of Regents, The University of Texas (“UT”) in this case challenging Tower Car Wash’s construction of a 60-foot replica of the iconic UT Tower, as well as Tower Car Wash’s logo, which prominently features the UT Tower and an orange color scheme.  Because the case involves a local landmark and unique areas of trademark law, it has received attention from a number of media outlets.  On January 8, 2014, the court granted final judgment to UT, finding that UT operates one of the most successful collegiate trademark licensing programs in the world and that Tower Car Wash used the marks to take advantage of the university’s goodwill.  The court enjoined the car wash and awarded UT $68,285.59 as a reasonable royalty for Tower Car Wash’s infringement.  Defendants appealed, and Tower Car Wash, Inc. filed a bankruptcy petition. The parties are currently attempting to negotiate a settlement, subject to bankruptcy court approval.

We represent Valeant Pharmaceuticals International in connection with its brand acquisitions, portfolio management, and global policing.  Valeant is a multinational specialty pharmaceutical company that since 2011 has acquired numerous pharmaceutical companies, including Bausch + Lomb, Biovail, Medicis, OraPharma, Pedinol Pharmacal, Eyetech, iNova Pharmaceuticals, Dermik Laboratories, and Ortho Dermatologics.  Through its acquisitions, Valeant has acquired thousands of trademarks worldwide.  We have provided legal counsel to Valeant in connection with these acquisitions, including the recordation of assignment documentation, integrating and managing the acquired trademark portfolios, and developing and implementing trademark policing strategies.  We have also represented Valeant in numerous oppositions and enforcement actions for its portfolio in multiple jurisdictions around the world.

iTunes Festival during South By Southwest 2014.  We were IP counsel to SXSW, LLC, producer of the world-famous South by Southwest Festivals and Conferences, in negotiations with Apple for an agreement regarding the US debut of Apple’s iTunes Festival during SXSW 2014. The iTunes Festival is a unique concert series in which performances of some of the world’s biggest musical acts are filmed in high definition before a live audience and streamed on the iTunes Store for live and on-demand access by consumers around the globe.  We advised SXSW during extensive negotiations respecting complex trademark and copyright aspects of this agreement to collaborate in mounting the iTunes Festival at SXSW. Because this event represented the first time Apple had produced its enormously successful iTunes Festival outside the UK (where it draws hundreds of thousands of attendees each year), the announcement of this agreement and of the numerous global superstars booked to appear garnered substantial media attention.

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