Tony Hawk trademark lawsuit (now settled)

A San Diego area newspaper is reporting in Skateboarder Tony Hawk faces trademark lawsuit that Tony Hawk is being sued over some trademark use- alleging infringement. My quick review indicates that Mr. Hawk should not get too stressed over this, as I doubt the case will even make it to trial. I think a motion for summary judgment by Mr. Hawk's attorneys will nicely take care of what I think is one stretch of a lawsuit.

Tony Hawk is being sued over use for the mark BOOM BOOM HUCKJAM, which was filed on October 24, 2003. A little background... North Shore Militia Resources, Corp, located around Lake Tahoe, opposed the registration of this mark, claiming it would harm their trademark rights to HUCK DOLL (used in connection with action figures). Now, before you laugh, they paid top dollar for a New York law firm to go after Tony. Their initial filing is located here. Tony Hawk decided to fight the opposition, and the answer to the initial opposition filing is here. For those not familiar with the term Huck, it has to do with a type of fiber, and also has a meaning in snowboarding (I'm not a snowboarder myself.)

North Shore has been remiss in their trademark policing, because they allowed Tony Hawk to register two marks for TONY HAWK'S BOOM BOOM HUCKJAM (Reg. No. 2728758, which was registered on June 24, 2003, and Reg. No. 2734096, registered July 8, 2003.)

Not content with missing opposing Tony Hawk's first trademarks for HUCKJAM, and not happy with the pace of the opposition proceeding (or maybe they're just anxious to move forward), North Shore has filed suit in San Diego alleging infringement, and asking for damages of $1 million in lost profits, and $20 million in punitive damages. North Shore claims that the infringement is clear. Let's compare the two marks:

BOOM BOOM HUCKJAM and HUCK DOLL

I really think that North Shore is a little out of line here. The two marks do not look the same. They do not sound the same, and certainly, they mean very different things. This is the standard test for trademark infringement. Also hurting their case is the fact they allowed the first set of "Huck" marks to register, and the fact that they have the pending opposition. I think they perhaps jumped the gun on filing too quickly, and I also think perhaps it's a stretch to think the two marks would be confused.

My guess is that this case will be dismissed in favor of Tony Hawk.

UPDATED:

I have been informed by a party to this case that this case has been amicably settled, and that no further action will be taken in this case. The settlement agreement is confidential, so no word as to what was agreed upon.

"Playing what we want," or "Claiming more trademark rights than you have"

Billboard Radio Monitor, in a story entitled Bonneville Sued For Trademark Infringement, is reporting that SparkNet Communications is going after a website for "infringing" their trademark. SparkNet has a registered trademark for "Playing what we want," for use with "streaming of audio material on the internet." They have gone after a few radio stations that are using a variation of their slogan. Mind you, they're going after the web sites of the radio stations, and not the part of the radio station you can listen to via your radio (which is amazingly more profitable than a little website that streams poor quality audio of the real station.)

With my standard "while it is very important for trademark holders to enforce their trademark rights" disclaimer, in my opinion from the facts in the news story, SparkNet is going a little too far with their rights in trying to stop the use of what they claim is their mark. The offending examples of "infringement" are:

Today’s new music... and whatever we want.

The Peak and the Arch use "70’s, 80’s... whatever we want.

I have a news flash for Spark- the very important term "Playing" is missing from any of these uses. For you to claim such a wide range of rights, you'd have to claim sort sort of incontestible status, such as long use or being very famous. Add some sort of arbitrary or fanciful nature to the mark, and it's a lot easier to got after infringers who may be using a phrase or wording not identical to your mark. In this case, the only thing that is the same is "we want," and part of the word "what." There are many differences between the "infringing" sites and the registered mark.

1- "What" versus "whatever"
2- "Playing" versus ???
3- 4 words versus more words
4- Mentioning of different dates, genres of music, etc.

Suffice to say, if I was counsel for Spark, I would tell them that it's not worth pursuing this case. It's not an open & shut case in their favor, in fact I think it could go either way- even more likely in the favor of the "infringers." It's kind of silly to bring that kind of suit, especially when it could cost a lot of money, you could lose, and you might have to pay the fees for the other side when they win. Good luck!