Court Dismisses Trademark Case about SpongeBob Squarepants Ukuleles with a Flying V® shape

On November 5, 2013, the law firm of Bienstock & Michael, P.C., along with Buche & Associates, P.C. as California (Los Angeles) local counsel, successfully obtained a dismissal of a Plaintiff’s case in a trademark dispute between Plaintiff Gibson Brands (“Gibson”) and Defendant John Hornby Skewes & Co (“JHS”) because of lack of subject matter jurisdiction in the United States.  In a 13 page ruling, the Court determined that all of JHS’ alleged infringing activities occurred outside of the U.S. and that U.S. trademark law does not apply to overseas activities. 070_Order granting MTD.  JHS manufactures and sells a line of musical instruments with the character of SpongeBob on them.  JHS sells the SpongeBob instruments in the U.K., and JHS’ license specifically precludes them from selling the SpongeBob instruments in the U.S.  Gibson claimed that one of the SpongeBob instruments, a ukulele shaped like the letter “v,” infringed Gibson’s trademarked “Flying V” guitar.  Gibson’s “Flying V” is trademarked in the U.S. but is not trademarked in the U.K.  Gibson claimed it was able to purchase the SpongeBob ukulele from third party retailers in the U.K. and have it shipped to the U.S., and argued that U.S. trademark law should apply.  However, the court disagreed and sided with Defendant.  The court ruled that Gibson failed to adequately allege that JHS directly sold or marketed the v-shaped ukulele in the U.S.. Since U.S. trademark law does not apply to activities outside of the U.S., the court dismissed the case.  Bienstock & Michael, P.C. is a boutique law firm specializing in music law (www.musicesq.com).  Buche & Associates, P.C. is a boutique intellectual property firm with offices in Los Angeles and San Diego, California (www.pacificpatentlawyers.com).