IP Law Blog

By Jeff Pietsch           

 Trademark infringement occurs when a third party uses a mark in a way that infringes upon a trademark owner’s exclusive right and use of a trademark. Often, the third party will use a similar mark in a way that confuses consumers as to the source of the goods and services. For example, a fast food restaurant named “Wendi’s” would likely cause confusion with “Wendy’s.” Trademark infringement can occur only when it is likely that consumers will be confused as to the source of the goods. The purpose of this article is to examine the test and factors that courts use to determine if such infringement exists.

By Scott Hervey

Last October I had the good fortune of being invited to attend my friend’s “man shower” in Las Vegas. What made this trip interesting was the fact that this all guy’s version of a baby shower would be the subject of an episode of the VH1 reality TV show “Scott Baio is 46 and Pregnant.” While there are a number of interesting stories that came out of this first and only man style baby shower, the “what happens in Vegas stays in Vegas” rule prohibits me from telling you any. However, the tales fit for this article comes from my observations of the numerous, IP issues that came up during our two days of shooting.

As regular readers of my articles may know, part of my practice includes representing independent motion picture and reality television producers. While I have been production counsel for a number of movies and reality television shows, most of my work occurs before the cameras ever roll. Part of this work involves working with the production staff and preparing them to deal with those issues that may arrive when shooting in an environment you don’t entirely control. However, being on set and having to identify issues on the fly (especially when the person identifying the issues is not a lawyer) is very different from engaging in theoretical and hypothetical discussions.

By Scott Hervey

As 2008 gets underway, its time for companies to take a fresh look at how they manage intellectual property assets. This applies to companies that have never taken serious steps to protect intellectual property, and those companies that have an understanding of the value of intellectual property and take active steps to secure and protect these assets.   The three steps below are a good starting point for companies addressing this issue for a first time, and are a well needed refresher for companies that already have IP management protocols in place.

By Jeff Pietsch

Last week, the Second Circuit affirmed a summary judgment against an advertising consultant in a suit against American Express. The consultant, Stephen Goetz, sued American Express for misappropriation and trademark infringement for the slogan “My Life, My Card” that Goetz claimed to have introduced to American Express. The court affirmed the summary judgment stating that Goetz never actually used the slogan in commerce. Since Goetz never used the slogan in commerce, he had no trademark rights in the mark.

In the summer of 2004, Goetz worked as a consultant for Mez Design. While at Mez Design, Goetz formulated an idea to allow credit card customers to personalize their credit cards by choosing a photograph to be displayed on the face of the card. Goetz then developed software to produce these cards with the idea of selling or licensing the software to credit card companies. After developing the software, Goetz mailed proposals to large credit card companies, including American Express. In these proposals, Goetz prominently displayed the slogan “My Life, My Card.” On July 30, 2004, Goetz mailed a proposal to American Express.

By Jeffrey Pietsch 

Plaintiffs in trademark infringement cases may not be eligible for attorney fees depending on their election of damages. This last December, the Ninth Circuit Court of Appeals examined whether or not electing statutory damages for trademark counterfeiting claims under 15 U.S.C. § 1117(c) precludes the awarding of attorney fees under 15 U.S.C. § 1117(b). The court held that an election for statutory damages does indeed bar the plaintiff from recovering attorney fees in counterfeiting cases.

By James Kachmar

On December 28, 2007, the Ninth Circuit issued its opinion in the case titled Applied Information Sciences Corp. v. eBay, Inc., in which it clarified the plaintiff’s burden in a federally registered trademark infringement action. The Ninth Circuit’s opinion demonstrates the importance of a plaintiff in a trademark infringement claim being prepared to offer evidence of the likelihood of confusion in order to avoid dismissal of its trademark infringement claims.

By Scott Hervey

In a trademark counterfeiting claim, the successful plaintiff is entitled to recover actual damages or can statutory damages. However, according to a recent decision by the 9^th Circuit, depending on the recovery sought, the plaintiff may loose the ability to recover attorney fees.

In K and N Engineering, Inc. v. Bulat  the defendants were selling unauthorized decals bearing the K&N logo on eBay. The defendants created vinyl decals in the shape of plaintiff’s logo and sold 89 sets of those decals for a total of $267. After contacting the defendants, K & N filed a complaint alleging trademark infringement, trademark counterfeiting, and other related claims. K&N also elected to seek statutory damages under 15 USC 1117(c). The district court granted judgment in favor of K&N and awarded it statutory damages of $20,000 under 15 USC 1117(c) and $100,000 in attorney’s fees under 1117(b). The defendant appealed the attorney’s fee award and argued that K&N’s election to receive statutory damages under 15 UCS 1117(c) precludes an award of attorney’s fees under 1117(b).

By Scott Hervey

Just how valuable are baseball statistics? Apparently very valuable. In fact, baseball statistics are so valuable that CBC Distribution and Marketing, which has run the CDM Fantasy Sports leagues since 1992, sued Major League Baseball and challenged its ownership claim over player statistics.   In a matter which rose all the way to the United States Court of Appeals for the 8^th Circuit, CBC agued that baseball statistics become historical facts as soon as a game is over, and that it shouldn’t have to pay for the right to use them. Major League Baseball claimed that the right of publicity belonging to major league baseball players makes it illegal for fantasy leagues to commercially exploit the statistical profiles of its players.

By Jeff Pietsch

The lawsuit Tiffany & Co. brought against Ebay in 2004 for contributory trademark infringement is currently being heard in the U.S. District Court in Manhattan. The outcome of this trial, though likely to continue on appeal, will greatly affect internet auction websites. A victory by Tiffany will not only spawn hundreds of additional lawsuits against Ebay, it will cost the internet auctioneer millions of dollars in policing costs.

By Scott Cameron

Has eBay become so powerful that it can successfully claim to be the only “Bay” on the Internet? That’s what it argued in a recent Ninth Circuit Court of Appeals trademark infringement case. In that case, Perfumebay.com, Inc. v. eBay, Inc., - - - F.3d - - - (9^th Cir. November 5, 2007), the court upheld a federal district court decision from the Central District of California which ruled that the term “PerfumeBay” and “perfumebay.com” infringed the mark of Internet giant eBay. 

By Scott Hervey

There is a growing trademark dispute between a small Alaskan museum devoted to a 900 piece display of hammers and the great Los Angeles based Hammer Museum (formerly known as the Armand Hammer Museum). On February 10, 2006, the Los Angeles based Hammer Museum filed an application with the United States Patent and Trademark Office to register the mark, HAMMER MUSEUM for museum services. Early this summer, Dave Pahl, the founder of the Alaska museum, became aware of the L.A. Hammer’s application and filed his own in July. Pahl filed his application based on use in commerce and listed the date of first use as April 14, 2000.

By Scott Cameron

The Ninth Circuit Court of Appeals issued an opinion last week that, while not necessarily controversial or new, serves as a good reminder for trademark litigators: There must be actual infringement to prevail in a trademark infringement lawsuit. While this would seem to be obvious, the Ninth Circuit thought it was an important enough reminder to actually publish the decision, and even more surprisingly, issued their unanimous opinion just over a month after oral argument.

By Dale Campbell

Intellectual property litigation relies heavily upon the use of expert testimony. The Ninth Circuit Court of Appeals recently analyzed the intersection of Federal Rules of Evidence, Rule 702 and the ruling in Daubert v. Merrill Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993) (“Daubert”) concerning the admissibility of expert testimony and Federal Rules of Civil Procedure, Rule 56 for summary judgment. Stillwell v. Smith & Nephew, Inc., 482 F.3d 1187 (9^th Cir. 2007). Admissibility of expert testimony must be carefully evaluated for reliability and helpfulness, but that is different than the analysis for whether a triable issue of fact is established.

By James Kachmar

In Magic Kitchen LLC v. Good Things International Ltd., et al., the California Court of Appeal (Second App. Dist., July 30, 2007) was confronted with the issue of whether to apply the statute of limitations or the equitable doctrine of laches to determine whether plaintiffs’ claims for trade dress infringement were barred as a matter of law. The Court held that it was unnecessary to address the split of authority on the issue because it found that plaintiffs’ claims for trade dress infringement were barred by the doctrine of laches. The Court affirmed the trial court’s entry of a directed verdict against plaintiffs as to these claims.

By Scott Hervey

According to the Department of Commerce, losses to U.S. businesses from the counterfeiting of trademarked consumer products are estimated at $200 billion a year. A model trademark law proposed by the International Trademark Association and currently winding its way through the legislative process in California includes a provision which appears to be an attempt to slow this ever growing enterprise.

The proposed new trademark law provides that the owner of a state registered mark may bring an action for infringement against any persons that “knowingly facilitate, enable, or otherwise assist a person to manufacture, use, distribute, display, or sell any goods or services bearing any reproduction, counterfeit, copy, or colorable imitation of a mark registered under this chapter, without the consent of the registrant.” Under the new trademark law, a person is presumed to have acted knowingly if that person continues to engage in the complained of activity following delivery and receipt of a cease and desist demand letter containing certain language and information. 

By Jeff Pietsch

          Earlier this month, the shoe company Skechers defeated a preliminary injunction brought by the shoe company ASICS. The injunction against Skechers sought to prevent Skechers from making and selling their shoes. ASICS brought this action against Skechers for trademark infringement claiming that Skechers hijacked the ASICS brand image and goodwill by using a similar stripe mark that ASICS has used on its shoes over its 40 year history. The two shoes both use a stripe mark, but the ASICS shoe uses two horizontal stripes while the Skecher shoe has only one stripe. The court found that the design of these shoes were dissimilar and would not likely create consumer confusion. Since ASICS was not likely to succeed in its trademark infringement action, the court denied the injunction against Skechers. This case is just a sampling of the many trademark infringement claims that are brought in court each month. The purpose of this article is to examine the test that courts use to determine if trademark infringement exists.

By Dale Campbell

          There always has been a few simple things to do when a named partner leaves a law firm: change the name of the firm, stationery and business cards, and send a notice to clients. Today, additional tasks include changing web page domain names, email addresses, and websites. Is that enough? One intellectual property attorney in Pennsylvania thought not and filed suit against his former firm alleging violation of federal and state unfair competition and trademark law and the federal Anti-Cybersquatting Consumer Protection Act, among other causes of action.

By Jeff Pietsch

And the Oscar goes too …. This phrase means only one thing to most people: the annual award given to those celebrated actors and actresses at the Academy Awards each February. The eight and a half pound gold plated statue standing thirteen and a half inches tall is as well known as any celebrity, and its name has become synonymous with the show itself. Although the origin of the name is in dispute, the statute has been called Oscar since the 1930’s. 

The Oscar name is a registered trademark of the Academy of Motion Picture Arts and Sciences, and they have vigorously protected the use of their famous mark. Recently, the Academy filed suit against an Italian broadcaster who used the word Oscar in the title of several of their award programs.   These shows were broadcast in Italian to subscribers living in the United States. The Academy filed a motion for summary judgment based on the broadcaster’s trademark infringement.  This motion was denied by the United States District Court, Central District of California. The judge held that the mark Oscar may be generic in Italian and may not be entitled to trademark protection.

By James Kachmar

In January 2007, the Ninth Circuit adopted the long-standing policy of the Patent Trade Office’s Trademark Trial and Appeal Board that “use in commerce only creates trademark rights when the use is lawful.” This case, CreAgri, Inc. v. USANA Health Sciences, Inc., arose out of competing trademark claims brought by two manufacturers of a dietary supplement. 

By Jeff Pietsch

Last week Keith Urban, the Grammy nominated country singer from Australia, sued Keith Urban, a New Jersey painter, for use of the website www.keithurban.com. The suit filed in federal court alleges that Keith Urban, the painter, is infringing on the singer’s trademark rights by misleading internet users into believing that the website is owned by the singer. The website, which has been owned and registered by the painter since 1999, sells oil paintings through the website. Upon entering the site users see the following: “You have reached the site of Keith Urban. To those who don’t know, oil painting is one of my hobbies.” Users are then directed to a link which displays several paintings. The singer claims this use infringes on the Keith Urban trademark by violating the Anticybersquatting Consumer Protection Act, the Federal Trademark Dilution Act, and federal unfair competition laws. This article will examine the claims against the painter under the Anticybersquatting Consumer Protection Act.

By Jeffrey Pietsch

In 2006, Federal District Courts throughout the country were asked to decide if purchasing and using trademark-protected keywords to trigger internet advertising constitute trademark violations as contemplated by the Lanham Act. Unfortunately for advertisers, these rulings were inconsistent. In 2007, this trend continues with the Eastern District of Pennsylvania ruling in J.G. Wentworth v. Settlement Funding, LLC, No. 06-0597 (E.D. Pa. Jan. 4, 2007). In J.G. Wentworth, the court siding with advertisers, ruled that using trademark-protected words to trigger internet advertising does not violate trademark law.

By Scott Hervey

On October 31, 2005, adult film actress Mary Cook filed a trademark registration application with the United States Patent and Trademark Office to register the mark MARY CAREY for motion pictures featuring adult entertainment, and a series of prerecorded video cassettes, DVDs, multimedia software and interactive multimedia featuring adult video and visual dramatic performances. On August 29, 2006, the USPTO published the mark in the Official Gazette, beginning the thirty day period in which any third party who believes that they would be damaged by the registration of the mark could oppose its registration. If no opposition is filed within the thirty day time period, the USPTO will usually register the mark. However, on December 27, 2006 pop star diva Mariah Carey, through her company Automatic Princess Holdings, LLC, filed an opposition to the registration of the porn star’s mark, MARY CAREY, claiming that consumers are likely to be confused and believe that there is some association or affiliation between the MARIAH CAREY marks owned by the pop star and MARY CAREY. 

By Scott Hervey

In October, Congress signed into law the Trademark Dilution Revision Act of 2006 (“TDRA”). This Act overrules the High Courts holding in Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003) and lays to rest a number of other issues that had long split the federal circuits.

By Audrey A. Millemann

            A business's intellectual property may be its most valuable asset. Whether it is biotechnology, trade names, business methods, or computer software, intellectual property should be protected to the greatest extent possible in order to maximize the value of the business. This article summarizes the types of intellectual property protection that are available.

By April Hiroshima Gatling

          This month, a United States District Court ruled that retailer Land’s End will get a trial in a case where defendant website owners are accused of profiting from the company’s online affiliate program through a scheme that gave “typosquatting” a new twist.

          “Typosquatting” is a form of cybersquatting that relies on typographical mistakes made by Internet users when inputting a website address into a web browser. Most typosquatters are either in the practice of tricking or diverting Internet users to alternative websites or attempting to sell the domain name back to the trademark owner.         In this case, however, defendants directed Internet users to the Land’s End’s website, but only after channeling them through “affiliate” sites owned by defendants, who in turn received commissions associated with subsequent purchases.

By Andrea Anapolsky

What do Fendi, compact discs, car parts and Viagra have in common? They are among thousands of products targeted by intellectual property pirates who have successfully infiltrated the global market with thousands of counterfeited trademarked items. And buying Fendi handbags at Wal-Mart is just the tip of the iceberg. What lurks beneath the surface is a lucrative underground economy, which as of January 2006, resulted in an annual loss of $1.54 billion dollars worldwide, reported the Gieschen Consultancy.

By Scott Hervey

Canada has made a fundamental change in its Trade-mark Examination practice. It had been a longstanding practice in the Canadian Intellectual Property Office (the governmental body responsible for reregistering trade-marks) of determining the priority of applications based on the earliest of the following: the date of first use or making known in Canada, the date of filing in Canada, or the date of filing of the Paris Convention priority application. The legitimacy of assessing priority in this regard was challenged and overturned by the Federal Court of Appeals in May of this year in Attorney General of Canada v. Effigi (2005 FCA 172).

Are you tired of all of the letters inviting you to refinance your home mortgage?#160 Have you ever been shocked and a little angry when you receive such a letter and see the name of your lending institution, your account number and the amount owed on your mortgage?#160 You are not the only one that was upset.#160 The financial institutions carrying consumer mortgages grew increasingly upset as a number of customers refinanced.#160 They also grew tired of explaining to irate customers who believed the bank had disclosed private financial information that the information was publicly available.#160 So, in an attempt to deal with the situation, the banking industry in California, literally, wrote its own law.

SB 1150, which was passed by the California Legislature in 2004 and became effective January 1, 2005, places significant restrictions on the use of names, trade names, logos and taglines of lending intuitions as well as consumer loan information. The bill adds to California Business and Professions Code sections 14700 through 14704.#160

The new statutes prohibit the use of the name, trade name, logo, or tagline of a lender in a direct mail advertisement for financial services that is sent to#160 a consumer who has obtained a loan from the lender without the consent of the lender, unless the advertisement clearly and conspicuously states that the party is not sponsored by or affiliated with the lender and that the advertisement is not authorized by the lender, which must then identify by name.#160 This statement must be made in close proximity to, and in the same or larger font size as, the first and the most prominent use or uses of the name, trade name, logo, or tagline in the solicitation, including on an envelope or through an envelope window containing the advertisement.

The new statutes also prohibit the use of a consumer's loan number or loan amount, whether or not publicly available, in a solicitation for services or products without the consent of the consumer, unless the solicitation clearly and conspicuously states, when applicable, that the party is not sponsored by or affiliated with the lender and that the solicitation is not authorized by the lender, and states that the consumer's loan information was not provided by that lender.#160 This statement shall be made in close proximity to, and in the same or larger font as, the first and the most prominent use or uses of the consumer's loan information in the solicitation, including on an envelope or through an envelope window containing the solicitation.

In addition to the above, the new statutes prohibit the use of use the name of a lender or a name that is similar to that of a lender in a solicitation for financial services if that use could cause a reasonable person to be confused, mistaken, or deceived initially or otherwise as to either (a) the lender's sponsorship, affiliation, connection, or association with the sender; or (b) the lender's approval or endorsement of the sender.#160 The above "could cause" confusion standard differs from the traditional "likelihood of confusion" standard under both the Lanham Act and California's chapter of the Business and Professions Code that addresses Trademark Law.

This statute poses a number of problems.#160 First, it proposes a new standard for judging consumer confusion without giving the court guidance.#160 The courts have a well developed test for determining whether there is a likelihood of confusion in a trademark case; here they have nothing to guide them.#160 In addition, the new statute does not provide a mechanism for dealing with marks that lack distinctiveness and thus otherwise would not be entitled to a great deal of trademark protection.#160 For example, a financial institution could rename itself "The Bank" and then use B&P Code § 14700 et al to prevent other financial institutions from using the words "The Bank" because it could cause confusion.#160

The new statute makes it rather easy for a financial institution that believes another lender is using a mark that could cause confusion to obtain an injunction.#160 The aggrieved bank is not required to show actual damages in order to obtain an injunction as irreparable harm and interim harm are presumed.#160 In addition to injunctive relief, an aggrieved bank would be entitled to recover actual damages, if any, as well as reasonable attorney's fees.

Although the new law lessens the burden for bringing what otherwise could be considered a trademark action, it does attempt to preserve some fair use elements.#160 The new statutes provide that it is not a violation to use the name, trade name, logo, or tagline of a lender without the disclaimer statement described above in comparison advertising or in a manner that otherwise constitutes nominative fair use.

There have not yet been any lawsuits brought under this new law.#160 However, given the competitive nature of the home mortgage industry, it is only a matter of time.

Scott Hervey is a shareholder with Weintraub Genshlea Chediak Sproul.#160 Scott represents clients in numerous industries on intellectual property matters and issues concerning the Internet in both transactions and litigation.#160