Baker Donelson - USA
A month after Halloween, a federal court refused to find on summary judgment that a pending batch of applications to register WALKING DEAD for merchandising items had infringed the hit franchise's trademark (Robert Kirkman, LLC v Theodorou, DNJ, 15-8474 (MAS) (DEA), November 30 2016).
After encountering rejection at the US Patent and Trademark Office (USPTO) on the grounds of various prior third-party applications to register WALKING DEAD for various merchandise and services, Robert Kirkman's company sued the owners of those applications for trademark infringement in an effort to stop their unauthorised applications. Defendants Anna Theodorou, Phillip Theodorou and Mohamed Elkady had filed 11 applications covering T-shirts, coffee, bottled water and restaurant services, among other things.
Kirkman and artist Tony Moore created the comic book series in 2003, which was later adapted into a hit cable TV show. Robert Kirkman LLC currently holds four US trademark registrations for THE WALKING DEAD that cover comic books, fan club services, video recordings, sound recordings, video games, DVDs and TV series.
The USPTO rejected Kirkman's application for another registration covering books, sculptures, clothing, games, toys and costumes. Kirkman sued the Theodorous and Elkady in a New Jersey federal court, alleging trademark infringement, unfair competition, trademark dilution, deceptive and unfair trade practices, and false designation of origin. His motion for summary judgment on all claims was denied after the court found that actual use in commerce of the disputed marks had not been proven. Kirkman's argument – that the defendants' intent and ability to use the mark violated the Lanham Act – was unpersuasive.
If the case proceeds, the parties will have the opportunity to conduct discovery.
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