IP Law Blog

By Scott Hervey

What do Hooters, Twin Peaks, Canz, Tilted Kilt, and Mugs N Jugs have in common.  These are all “Breastaurants.” According to Wikipedia, a breastaurant is a “restaurant that has sexual undertones, most commonly in the form of large-breasted, skimpily dressed waitresses and barmaids.”    However, on October 23, 2012  the United States Patent and Trademark Office issued a trademark registration for the mark BREASTAURANT to Bikini Bar and Restaurant, LLC for bar and restaurant services on the Principal Register..  Even more interesting then someone having filed an application to register the mark BREASTAURANT, is that the USPTO allowed the mark to register on the Principal Register without challenging the mark as being merely descriptive.  

15 USC 1052 provides as follows:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it.... (e) Consists of a mark which, (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them....

Matter that “merely describes” the goods or services on or in connection with which it is used is not registrable on the Principal Register. As noted by the United States Court of Customs and Patent Appeal (the precursor to the Federal Circuit) in In re Abcor Dev. Corp):

The major reasons for not protecting such marks are: (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods; and (2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products.

By Nathan H. Geronimo

A recent case in California’s Sixth District Court of Appeal, Winchester Mystery House, LLC v. Global Asylum, Inc., illustrates California’s treatment of trademark infringement with regard to claims involving artistic works.  Winchester Mystery House is a well-known tourist attraction in San Jose, California.  It is a large, Victorian-style mansion built and expanded by Sarah Winchester, the wife of William Winchester of Winchester Repeating Arms Co. fame.  Legend has it that after her husband’s death in 1881, Sarah Winchester became convinced that she and her family were haunted by the ghosts of those who fell to Winchester rifles.  To combat the haunting, Sarah Winchester bought a farmhouse in San Jose and began the unrelenting task of adding rooms and peculiar features to the house, such as stairways that lead to ceilings in an effort to confuse and thwart the ghosts.  Construction at the Winchester mansion continued constantly for 38 years until Sarah’s death in 1922.  By this time the mansion had swelled to 160 rooms.

The mansion was later bought and established as a museum, and is now controlled by Winchester Mystery House LLC (“Winchester”), which owns the “Winchester Mystery House” trademark and an architectural mark comprised of the three dimensional shape of the Winchester mansion.  In 2008, Winchester granted Imagination Design Works the exclusive right to film at the Winchester Mystery House as well as the rights to use Winchester’s marks and copyrights in association with a film about the house.  Defendant Global Asylum (“Global”) thereafter asked Winchester for permission to film at the mansion, at which time Winchester informed Global of its deal with Imagine Design Works.  Nonetheless, Global produced and distributed a film called, “Haunting of Winchester House.”  The film claims to be a true story about a family that moves into the 160 room mansion to act as caretakers and is haunted by Sarah Winchester and other ghosts.  Winchester sued Global for trademark infringement, alleging that Global’s use of the term “Winchester House” and images of a Victorian-style mansion exploited Winchester’s marks and lead the public to believe that the film was sponsored or otherwise sanctioned by Winchester. 

By Dale Campbell

The United States Supreme Court issued a ruling in January 2013 clarifying the application of the Voluntary Cessation Doctrine in trademark actions. The case is entitled Already LLC, dba Yums v. Nike, Inc., 184 L.Ed.2d 553 and 2013 LEXIS 602. The Supreme Court’s decision provides important practical guidance for all practitioners.

The Voluntary Cessation Doctrine is founded upon United States Constitution Article III’s requirement of a “case” or “controversy.” The case becomes moot when there are no longer live issues to resolve.

Nike originally sued Already, a competing footwear company, for alleged infringement of Nike’s trademark related to Nike’s Air Force 1® shoe. This infringement claim did not involve the famous Nike “swoosh.” Already filed a counterclaim, contending that the Air Force 1® trademark is invalid. Months after Nike originally sued, it issued a “Covenant Not to Sue” letter to Already and then filed a motion to dismiss its complaint with prejudice and to dismiss Already’s counterclaim without prejudice on the ground that the Covenant Not to Sue had extinguished any existing case or controversy.

By Scott Hervey

Licensing attorneys should take note of the recent decision by the Central District of California in Jason Bitzer v. Body Glove Int’l et al. In this case, Body Glove licensed its trademark to Sport Dimension who manufactures bodyboards. Sports Dimension allegedly had the permission to use the likeness of professional bodyboarder Jason Bitzer on merchandise, including bodyboards. Body Glove separately had a sponsorship agreement with Bitzer which gave Body Glove the right to use Bitzer's likeness in certain circumstances. Sport Dimension manufactured bodyboards containing Bitzer's image and Body Glove's trademark. Body Glove now faces potential liability for the alleged misappropriation of Bitzer's likeness due to its use on the bodyboards.

Sports Dimension argues that it entered into an agreement with Bitzer to have Bitzer promote Sport Dimension products as a sales representative, and this agreement gave it the right to use Bitzer’s image on various Sport Dimension products such as bodyboards. Sport Dimension claimed that this agreement included the Body Glove branded bodyboards. Bitzer claimed that the agreement did not grant Sport Dimension that right and that Sport Dimension and Body Glove violated California Civil Code Section 3344.

By: Scott Hervey

Often in trademark cases, the goods or services at issue are either exactly the same, related or complementary.  In cases where the goods are non-competitive or not related, often that will be the end of the inquiry into likelihood of confusion.  However, in the case of non-competitive goods, infringement can be found where a junior user began using a mark for such goods before the senior user where the senior user is able to show it is likely that it will enter into this market.  Courts refer to this as “bridging the gap.” Some courts examine this under the framework of the senior user’s interest in preserving avenues of expansion and entering into related fields.   Other courts look at it as a question of whether it was likely that a senior user would enter into a different product market currently occupied by a junior user.  Either way, in certain cases it can be a crucial factor in determining likelihood of confusion.

The test of trademark infringement under state, federal, and common law is whether there will be a likelihood of confusion.  In the 9th Circuit, to determine whether there is a likelihood of confusion, a court will engage in an analysis of the eight factor test set forth in the seminal case of AMF Inc. v. Sleekcraft Boats.  Those factors are the, (1) strength of the mark; (2) proximity of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to be exercised by the purchaser; (7) defendant's intent in selecting the mark; and (8) likelihood of expansion of the product lines, sometimes also referred to as “bridging the gap.” Some Sleekcraft factors, such as the first three, tend to get more attention and are considered more important than the others.   However, in trademark cases dealing with noncompeting goods, courts will look at the “bridging the gap” factor to determine whether it is likely that that trademark owner will expand its line of trademark products to include the type of product being sold by the defendant.

By: Scott Plamondon

Jack Daniels “Old No. 7” Brand Tennessee Sour Mash Whiskey is marked with a distinctive black label including stylized white writing attached to a bottle of Tennessee’s finest sour mash whiskey.  For some, the image of a Jack Daniels bottle conjures images of drunken bar brawls, motorcycle gang members guzzling whiskey or the antics of inebriated 1980’s hard rock musicians.  But for Jack Daniels, the distinct black and white label on its Old No. 7 Brand whiskey represents valuable intellectual property which immediately identifies in the minds of consumers the distinct character and flavor of the contents of the bottle to which the label is affixed.  Because even those who do not consume Jack Daniels Sour Mash Whiskey recognize the label of this legendary intoxicating beverage, the Jack Daniels distillery actively confronts unauthorized users of its trademarked label in order to prevent its unauthorized use.

Many attorneys have written cease and desist letters on behalf of their clients, or at least have reviewed such letters after they have been received by clients.  These letters often are written in a fit of righteous indignation over the obvious theft of one’s brand, or the tarnishment and diminution of the value of a mark resulting from the use of a confusingly similar mark by another party.  More often than not, this results in a letter which is more capable of peeling paint off the walls or curling the recipient’s hair than it is able to clearly and concisely communicate the reasons why unauthorized use of a trademark can damage a trademark owner’s intellectual property.  Recently, however, a cease and desist letter written by counsel for Jack Daniels Distillery dispensed with the usual vitriol took a different approach.

By: David Muradyan

The Ninth Circuit, like many of its sister circuits, uses the “likelihood of confusion” analysis to determine whether one mark infringes upon another mark.

For background, the Lanham Trademark Act of 1946 (“Lanham Act”), 15 U.S.C. §§ 1051, 1127, defines a trademark to mean “any word, name, symbol, or device or any combination thereof” used by any person “to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.”  Under 15 U.S.C. § 1114(1), the holder of a registered trademark can file a trademark infringement claim against any person who, without the registered trademark holder’s consent, (1) uses any reproduction, counterfeit, copy, or colorable imitation of a registered mark; (2) in commerce; (3) in connection with the sale, offering for sale, distribution, or advertising of any goods or services; (4) where such use is likely to cause confusion, or to cause mistake, or to deceive. Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1178 (9^th Cir. 1988); see also 15 U.S.C. § 1125(a) (“Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which . . .  is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person . . . shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.”). 

By: Scott Hervey

Without fail, every two years I get a call from a client who wants to incorporate an element of either the Winter or Summer Olympics into a marketing scheme.  This year was no exception.  One of our clients - a fairly significant company in the wine industry - created a graphic featuring wine rings (think of wine stains made by an overly full wine glass) in the form of the Olympic rings, the London skyline in the backdrop, and the official London 2012 Olympics logo and wanted to use it in promoting wine for sale.  Although extremely creative, it certainly would have gotten our client into a jam with the United States Olympic Committee and possibly with the London Olympic Committee.

Under the Ted Stevens Olympic and Amateur Sports Act, Congress granted the USOC exclusive ownership of certain Olympic-related words and symbols, including the name “United States Olympic Committee” and the words “Olympic,” “Olympiad,” “Citius Altius Fortius,” “Pan American,” “Paralympic,” “Paralympiad,” “America Espirito Sport Fraternite” and the International Olympic Committee’s symbol of five interlocking rings. The Act also permits the USOC to authorize its contributors and suppliers to use these Olympic-related words or symbols, and allows the USOC to initiate civil-action proceedings to address unauthorized use.  Third party marks that contain the designated Olympic-related words or symbols, or any combination thereof, cannot be registered on either the Principal or Supplemental Register (nor can the matter be disclaimed) and must be refused registration on the ground that the mark is not in lawful use in commerce.

By: James Kachmar

Two fans of Ayn Rand are slugging it out in federal court over each party’s use of one of Ms. Rand’s famous characters, Hank Rearden from Atlas Shrugged, in connection with their respective businesses.  The Ninth Circuit was forced to deal with the issue of whether plaintiff had produced enough evidence to show that it had used the name “in commerce” in order to state a claim for trademark infringement as well as offer sufficient evidence of the “likelihood of confusion.”

Rearden Steel, Inc. was founded in May 1999 by Steve Perlman who chose the name, in part, because it referred to the “Hank Rearden” character from Atlas Shrugged.  Rearden Steel later changed its name to Rearden Studios, Inc. and finally Rearden LLC and has several affiliated “Rearden” companies.  Plaintiff has offices in the Bay Area, employs approximately 100 employees and operates a number of websites, including their main website “rearden.com.”  These Rearden companies are “technology incubators and artistic production companies.”  Plaintiff obtained protection from the Patent and Trademark Office for the name “Rearden Studios” and later filed “intent to use” applications for several related marks such as “Rearden,” “Rearden Companies,” and “Rearden Commerce Email”. 

By: Zachary Wadlé 

In this day and age, professional athletes increasingly understand the value of their persona and related trademark rights.  Earlier this year, Jeremy Lin of the New York Knicks exploded on the basketball scene and created a media frenzy in the process.  The interest was so intense that reporters started to refer to the scene surrounding Lin as “Linsanity.”  Jeremy Lin promptly filed a trademark application for the term “Linsanity” to secure sole use of the term in connection with various goods.  A few weeks ago, Washington National rookie phenom Bryce Harper was asked what he apparently considered to be an inane question from a reporter after a game.  Harper responded by saying “That’s a clown question, bro” and moved on to the next question.  Harper’s humorous response was replayed constantly on highlight shows and internet sites, and developed a life of its own.  This culminated when Senate Majority Leader Harry Reid replied to a political reporter’s question on immigration policy with “That’s a clown question, bro” and refused to answer the question.  It was unclear whether Reid thought this was a legitimate response to the question given the state of American politics, or was playing to his Nevada constituent base (Harper is a native of Las Vegas).  The day after uttering the phrase, Harper filed a trademark for the term “That’s a clown question, bro” which he intends to emblazon on a variety of apparel, such as jackets, pants, hats, gloves, etc.

The most recent athlete trademark application involves Anthony Davis, former University of Kentucky basketball star and recent number one pick in the 2012 NBA draft of the New Orleans Hornets.  Davis has a unique facial characteristic – a prominent “unibrow” that he refuses to shave.  Davis has always embraced the unibrow look, and recently filed trademark applications for the catchphrases “Fear the Brow" and "Raise the Brow” to further capitalize on his interconnected brows.  However, Davis’ trademark application for “Fear the Brow” is somewhat complicated.  NCAA rules bar college players from financially profiting from athletics while at school, and prevented Davis from protecting and profiting from his intellectual property rights himself during college.  Exploiting this restriction, Reid Coffman -- owner of the University of Kentucky apparel store Blue Zone -- trademarked "Fear the Brow" last November for his popular Davis-themed merchandise sold to Kentucky fans.

By: Scott Plamondon

Anthony Davis is a well-known college basketball player who completed his freshman season in 2012 playing for the University of Kentucky Wildcats and thereafter declared his eligibility for the 2012 NBA draft.  Most people agree that Davis will be the number one overall pick in the 2012 NBA draft.  He is known for being a highly skilled power forward, and for his distinctive unibrow.

As the 2012 NBA draft approached, the news wires began to buzz with headlines proclaiming that “Anthony Davis Has Trademarked His Unibrow.”  While these headlines likely horrified every esthetician in the country, the headlines actually misrepresent what Mr. Davis has done, and they overlook fundamental components of trademark law.

By: James Kachmar

The Ninth Circuit recently dealt with the issue of whether the Federal Drug and Cosmetic Act (“FDCA”) prevents a plaintiff from bringing a Lanham Act claim alleging that the name and labeling of a juice beverage is deceptive and misleading.  The plaintiff Pom Wonderful LLC (“Pom”) produces and sells pomegranate juice and pomegranate juice blends.  In 2007, Coca-Cola Company (“Coca-Cola”) announced that it would start selling a new product called “Pomegranate Blueberry” and “Pomegranate Blueberry Flavored Blend of 5 Juices.”  Despite its name, only 0.5% of the juice was actually pomegranate/blueberry juice, while the rest of it was apple, grape and raspberry.  Believing that it was losing sales to Coca-Cola’s product, Pom sued Coca-Cola alleging that it violated the false advertising provision of the Lanham Act for making a false or misleading description or representation about its goods.

Coca-Cola moved to dismiss the complaint arguing that plaintiff’s claims were barred because in construing the product’s name and labeling, Pom’s claim “could improperly require the court to interpret and to apply FDA regulations on juice beverage labeling.”  After allowing Pom to file an amended complaint and conduct discovery, the court granted summary judgment to Coca-Cola and held that Pom’s Lanham Act challenge to the product’s name and labeling was barred by the FDCA’s implementing regulations.  Pom appealed this ruling.

By: Scott Plamondon

While champagne is rarely my drink of choice (the bubbles tickle my nose), those who prefer to imbibe champagne may have noticed that their favorite beverage might have quietly changed its name from “champagne” to “sparkling wine.”  In similar fashion, those who enjoy Basmati rice or Camembert cheese might also have noticed changes to the names of their favorite products.  Many may wonder what has happened, and why we are now drinking sparkling wine when we used to enjoy champagne, or why we must settle for brie when we previously enjoyed Roquefort and Camembert.

Although the names have changed, the products probably have not.  Rather, many countries have created a system which recognizes and protects the value of the intellectual property associated with the geographic origin of certain products.  Functioning like a trademark, a geographical indication can represent valuable intellectual property by identifying a particular region as the source of a certain product.  Although not traditionally protected by trademark laws, geographical indications and designations of geographic origin have traditionally been afforded protection by various countries.  Long known for its famous varieties of cheese, wine, and, of course, champagne, France introduced one of the first systems designed to protect geographical indications, known as appellation d’origine contrôlée, or the “AOC.”  The AOC makes it unlawful to manufacture and sell a product under a geographical indication identified by the AOC if the product does not comply with a set of strict criteria, which includes production of AOC-protected products in particular regions.

By: Scott Hervey

Brand licensing transactions can be structured in a wide variety of ways.  However the fundamental purpose remains the same; to give a third party the right to benefit from the goodwill and economic value associated with an established mark.  Regardless of the structure of the transaction, there are key deal terms that all brand owners need to consider in all licensing transactions. 

1.         Consider Equity.           Most licensing transactions take the form of a contractual relationship whereby the brand owner (licensor) grants the licensee the right to use a brand for a specific purpose in exchange for a royalty.  Although this arrangement is fine for most instances, in certain circumstances it may be more advantageous to the licensor to take a different approach.   For example, the licensor and licensee can form an entity and then have the entity enter into a license agreement with the licensor, which has certain advantages.  First, if the venture is one that lends itself to possibly being acquired by a third party, by virtue of having an equity position, the licensor can participate in the purchase or any other liquidity event.  Obviously a license agreement could also be structured to protect against a licensor not participating in the sale of the licensee. There are however other good reasons to consider running the transaction through an entity.

By: James Kachmar

The Ninth Circuit recently addressed the availability of a wide variety of damages in a trademark infringement case. In Skydive Arizona, Inc. v. Quattrocchi  (2012 U.S. App. LEXIS 5100), the Court analyzed the various types of damages that are available to litigants in a trademark infringement action.

Skydive Arizona, Inc. (“Skydive”) operates one of the largest skydiving operations in the world.  Defendants operated an internet and telephone based advertising service which made skydiving arrangements for its customers as well as offered coupons for various skydiving centers.  Defendants operated several internet domain names that were strikingly similar to Skydive’s trademark and apparently falsely advertised that it was the owner of several skydiving centers in Arizona.  In addition, Defendants sold skydiving certificates that allegedly misled customers into believing that Skydive Arizona would accept them for their skydiving center.

By: Scott Plamondon

So many of us have become hopelessly addicted to our Blackberry smartphones and personal messaging devices that the devices are frequently referred to as “Crackberries.”  Seeking to capitalize on this addiction, beginning in December 2006, Defining Presence Marketing Group (“DPMG”) sought to register four trademarks covering various iterations of the phrase “Crackberry.”  Claiming their use was a parody of the ever popular Blackberry device, DPMG based their trademark registration on use of the Crackberry mark in connection with “Web-based marketing services, computer services, online chat rooms, and apparel.”  All four of the Crackberry marks were published for opposition in late 2007. 

Research in Motion (“RIM”), owner of the Blackberry trademark has been embroiled in patent litigation for most of the 21^st century and apparently has not had its fill of intellectual property-related litigation.  Not long after DPMG’s applications were published, RIM initiated opposition proceedings challenging all four of the Crackberry marks.  DPMG defended its applications by asserting that Crackberry was a parody of the Blackberry name, and as such would not cause confusion among consumers.  RIM disagreed, claiming that use of the Crackberry marks was likely to cause confusion and ultimately would cause dilution of the Blackberry trademark. 

By: Jeffrey Pietsch 

Naked licensing is not as fun as the name suggests. Rather it can mark the end of a trademark owner’s exclusive right to their trademark. Naked licensing occurs when the trademark owner fails to exercise adequate quality control over the licensee.  This usually occurs when a trademark owner grants a third party the right to use a trademark with little or no restrictions.  Naked licensing could also occur when a trademark owner fails to enforce quality control provisions in the license agreement.  The failure of the trademark owner to control the use of its trademark by third parties may result in the trademark ceasing to represent the quality of the product or service the consumer has come to expect.   The Ninth Circuit stated that such licensing is “inherently deceptive and constitutes the abandonment of any rights to the trademark by the licensor.” 

In one such case before the Ninth Circuit, a licensee sought declaratory relief against a trademark owner on the grounds that the trademark owner abandoned its rights in the trademark by granting naked licenses to others.  The trademark in question, FREECYCLE, was owned by The Freecycle Network (“TFN”) and used by TFN to identify TFN’s services known as “freecycling.”  Freecycling is the practice of giving an unwanted item to another so that it can continue to be used as intended.

Article by Scott Plamondon, Esq.

Weintraub Genshlea Chediak Tobin & Tobin

It only took four days, but four days was enough time for New York City fashion designer Joseph Mbeh to file an application with the United States Patent and Trademark Office seeking to register a trademark for “Blue Ivy Carter NYC.” Not coincidentally, “Blue Ivy” is the name chosen by Beyoncé and Jay-Z for the daughter born to them on January 9, 2012. The application is still pending before the United States Patent and Trademark Office, and alleges that Mbeh first used this mark “at least as early as January 9, 2012.”

Similarly, as you may recall, it was nearly a year ago when Governor Sarah Palin filed a trademark application seeking registration of her own name. Although Ms. Palin’s application was the topic of many jokes on late night television programming, as will undoubtedly be the case regarding the “Blue Ivy” mark as well, you may be surprised to learn that the Trademark Act of 1946 contains specific provisions allowing a person to obtain a trademark covering their name. Chapter 1300 of the Trademark Manual of Examining Procedure (“TMEP”) defines the criteria which, if met, permit a person to successfully obtain a trademark covering their name. Not unlike other trademark applications, the application must cover a mark which identifies the goods or services associated with that mark, and must function as an indication as to the source of those goods or services while distinguishing them from others. As a result, any person may seek registration of their name, provided they can demonstrate that their name is so distinctive that the public immediately thinks of them when the name is heard. 

By Nathan Geronimo

Kinbook, LLC, an online social networking company, recently sued Microsoft for unfair competition and reverse trademark infringement in United States District Court.  (Kinbook, LLC v. Microsoft Corp.,2012 U.S. Dist. LEXIS 8570.) Kinbook created a Facebook application called “Kinbox,” which allows Facebook users to create private sub-social networks for sharing of information within a subset of their list of Facebook friends.  Kinbox was formally launched on Facebook in December 2009, and Kinbook’s use of the Kinbox mark was approved in September 2010.

In November 2010 Microsoft released “Kinect,” a motion-sensor interface device for the XBOX 360 that allows users to control the XBOX 360 through gestures and voice commands.  In April 2010, Microsoft released the “Kin” phone, a mobile smart phone for use with the Verizon Wireless mobile phone service.  Microsoft stopped production of the Kin after just two months due to a lack of consumer demand for the product.

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.

Many courts have developed a balancing test to determine if a mark infringes on another. This balancing test has largely grown from the seminal case Polaroid Corp. v. Polarad Elect. Corp., 287 F.2d 492 (2^nd Cir. 1961). In that case, the court identified several variables to consider when assessing if a mark is infringing on another mark. This balancing test seeks to determine if consumers would likely be confused as to the source of the marks. If the test favors that confusion would likely result, then the court will likely rule that infringement exists. On the other hand, if confusion is unlikely or minimal, the court will likely rule against infringement.

With the launch of each new Top Level Domain (“TLD”), brand owners are always concerned about protecting their trademark rights and preventing individuals from cybersquatting. The .xxx TLDs are coming and brand owners have only a very short period of time left to take proactive steps to prevent their brands from being used in connection with an adult entertainment website.  If you are the owner of a registered trademark outside the adult entertainment industry, chances are you do not want to see your trademark used as an .xxx domain by an adult entertainment website. Such use can potentially harm your trademark rights or adversely affect the goodwill associated with your business or products. There are steps that you can take to prevent others from registering your trademark in connection with an .xxx domain name, but time is running out.

By Zachary Wadlé

Satoru "Miles" Kobayashi opened a new jazz club and restaurant in Manhattan in April 2010. Kobayashi named his establishment the “Miles Café” and used the “Silhouette Profile” of jazz icon Miles Davis as part of his logo. The heirs of Miles Davis felt “Kind of Blue” about this development and sued Kobayashi in federal court claiming trademark dilution, false advertising, and various violations of the Lanham Act. Davis' heirs say Kobayashi changed his first name to Miles, claimed the real Miles Davis appeared to him in a dream and suddenly inspired him to open a restaurant bearing his name. They allege “[Kobayashi is] intentionally free-riding off the goodwill associated with the Miles Davis marks by using them to promote a jazz club entitled Miles’ Cafe in a way that is likely to mislead the public.” Davis’ heirs seek injunctive relief and the destruction of all of the "confusingly similar" Miles Café advertising and merchandise.

Davis’ heirs’ complaint relies on trademarks they own for the name “Miles Davis.” But you may ask how can Miles Davis’ heirs have exclusive rights over the “Miles Davis” name? Surely there are other people named Miles Davis that have just as much right to use their name as the jazz legend.  This is the reason why trademarking a personal name is difficult under trademark law. In particular, you have to demonstrate “secondary meaning” to qualify for trademark protection. Miles Davis won eight Grammys. His 1959 album "Kind of Blue" has sold more than 4 million copies. He was inducted into the Rock & Roll Hall of Fame in 2006 and was declared a national treasure' by the U.S. House of Representatives in 2009. These kind of laurels helped prove the requisite “secondary meaning” of Miles Davis’ name, and allowed his heirs to assert trademark rights against Mr. Kobayashi.

By Zachary Wadlé

The term “geek” is no longer a pejorative term. Just ask consumer electronic retail giant Best Buy. The chain recently threatened online rival Newegg.com with legal action, arguing that its Geek On advertising slogan sounded too similar to Best Buy's tech support service, Geek Squad. Newegg responded by posting Best Buy’s cease-and-desist letter on Facebook and suggesting that Best Buy was attempting to subjugate geeks everywhere. Newegg.com’s posting generated substantial negative reaction towards Best Buy from other self-professed geeks who took issue with Best Buy’s efforts to claim sole rights to “geek” status (and trademark rights).

In its defense, Best Buy says it is just narrowly protecting its Geek Squad trademark against overzealous competitors like Newegg.com. In fact, federal records show that Best Buy has disputed more than a dozen geek-themed trademarks in the past decade, including Rent a Geek, Geek Rescue and Speak With A Geek. But why does a company like Best Buy risk the negative publicity associated with threatening competitors like Newegg.com with legal action over “geek” terminology? The answer is that companies that don't aggressively defend trademarks, even against seemingly innocuous intrusions, risk having courts decide that they abandoned the trademarks later when more substantive disputes crop up.

by David Muradyan

The Lanham Trademark Act of 1946 (“Lanham Act”), 15 U.S.C. §§ 1051, 1127,defines a trademark to mean “any word, name, symbol, or device or any combination thereof” used by any person “to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.”  Under 15 U.S.C. § 1114(1), the holder of a registered trademark can file a trademark infringement claim against any person who, without the registered trademark holder’s consent, (1) uses any reproduction, counterfeit, copy, or colorable imitation of a registered mark; (2) in commerce; (3) in connection with the sale, offering for sale, distribution, or advertising of any goods or services; (4) where such use is likely to cause confusion, or to cause mistake, or to deceive. Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1178 (9^th Cir. 1988); see also 15 U.S.C. § 1125(a) (“Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which . . .  is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person . . . shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.”).

by Nathan Geronimo

Earlier this month, the Ninth Circuit addressed the standard for evaluating a claim for trademark dilution under the Trademark Dilution Revision Act of 2006 (“TDRA”), 15 U.S.C. §1125(c). The TDRA is meant to protect a property right in a trademark. Dilution prevents the use of a famous mark by others in any manner that lessens the uniqueness of the mark. Under the TDRA’s predecessor, the Federal Trademark Dilution Act (“FTDA”) and cases under the FTDA, to pursue a claim for trademark dilution, the offending junior mark had to be “identical or nearly identical” to the mark it was diluting. The new standard represents a more holistic approach, applying factors that focus on, among other things, the degree of similarity between the two marks.

by David Muradyan

When a creditor provides a loan to a debtor, the debtor will often grant to the creditor a security interest in the debtor’s collateral, including the debtor’s intellectual property. A creditor who receives a security interest in the debtor’s intellectual property, usually by a security agreement, must perfect the security interest so that subsequent purchasers and creditors are on notice of the creditor’s security interest in the collateral. Rules relating to the creation, attachment, perfection and priority of security interests in personal property, including “general intangibles” which include intellectual property, are governed by Division 9 (Secured Transactions) of the California Uniform Commercial Code (“Article 9”), unless federal law preempts Article 9. In order to determine where to perfect a security interest for each type of intellectual property, and since copyrights, trademarks, and patents are all governed by different statutes and case law, it is important to review and analyze not only Article 9 but also the Copyright Act of 1976, 17 U.S.C. § 101 et. seq. (the “Copyright Act”), the Lanham Trademark Act of 1946, 15 § 1051 et. seq. (the “Lanham Act”), and the Patent Act of 1952, 35 U.S.C. § 101 et. seq. (the “Patent Act”).

By Scott Hervey           

Early this year, the Ninth Circuit issued its opinion in Network Automation v. Advanced Systems Concepts and clarified that the use of another’s trademark as a search engine keyword to trigger one’s own product advertisement is “use in commerce” and may violate the Lanham Act. Prior to its decision in this case, the Ninth Circuit assumed without expressly deciding that the use of a trademark as a search engine keyword that triggers the display of a competitor’s advertisement is a “use in commerce.” For a time, it wasn’t always so clear that such use was an improper attempt to profit from the good will of another’s trademarks; certain jurisdictions held that such use was not commercial (trademark) “use” and therefore no infringement.

By Matt Massari

Trademarks and their accompanying goodwill are of tremendous importance to any company and are often a business’ most valuable asset.  Some business owners, in a rush to form a company or get their products to market, devise names in a hurry and do not clear them for trademark purposes.  Conducting trademark due diligence and analyzing the potential legal risks for a given mark in advance may save a business from future surprise via a cease and desist letter or infringement lawsuit.

by David Muradyan

Is Apple, Inc.’s (“Apple”) APP STORE mark worthy of trademark protection or is the mark merely a generic term which deserves no protection? This is among the questions that the U.S. District Court for the Northern District of California (the “Court”) will decide in Apple Inc. v. Amazon.com, Inc., Case No. 11-1327. In this action, Apple sued Amazon.com, Inc. (“Amazon”), alleging trademark infringement, false designation of origin and false description, under the Lanham Trademark Act of 1946, 15 U.S.C. § 1125(a) (“Lanham Act”), among other claims.

by Jeff Pietsch

Trademark law is traditionally concerned with protecting consumers. Trademarks protect consumers by helping consumers identify the source of the goods or service. For example, when a consumer buys a product, she knows exactly what she will get with the product based on its mark. Trademark law was designed to protect these consumers by protecting these marks against copycats or products with confusingly similar marks. 

Not all trademark law, however, is aimed at protecting consumers. The Federal Trademark Dilution Act (the “Act”) is aimed at protecting a company’s or individual’s property right in its trademark. Dilution is defined as “the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of competition between the parties or the likelihood of confusion, mistake or deception.” In essence, dilution forbids the use of a famous trademark by others in any manner that lessens the uniqueness of the mark. Again, the purpose of the dilution doctrine is not to protect the consumer, but to protect the property right and goodwill that a company has developed in a mark.

by David Muradyan

Can an advertiser use a competitor's registered trademark as a keyword with Google’s  AdWords program to advertise its own product or service? In Binder v. Disability Group, Inc., Case No. CV 07-2760-GHK (Ssx), 2011 U.S. Dist. LEXIS 7037 (C.D. Cal., Jan. 25, 2011) (“Binder”), defendants Disability Group, Inc., a law firm specializing in Social Security benefit claims, and Ronald Miller (collectively, the “Defendants”), used and purchased plaintiff Binder & Binder’s (the “Plaintiffs”) trademark in an advertising campaign through Google AdWords. Google’s AdWords program allows advertisers to purchase targeted ads on the results page of a Google search. In order to have their ads appear on the search results page, Google advertisers select and bid on AdWords (purchased keywords) so that their ad might be displayed on the search results. Defendants used Plaintiffs’ registered trademark—“Binder and Binder”—as AdWords linked to their website. As a result, Plaintiffs brought a trademark infringement claim, among others, under the Lanham Trademark Act of 1946 (“Lanham Act”), 15 U.S.C. § 1114(1).

by Matt Massari

People often attempt to register the names of public or famous figures as trademarks for use in association with novelty items. Section 2(c) of the Trademark Act “absolutely bars the registration of a designation that identifies a particular living individual absent written consent.”  In determining whether a particular living individual with that “name” would be associated with the mark, the U.S. Trademark Trial and Appeal Board (“TTAB”) must consider “(1) if the person is so well known that the public would reasonably assume the connection, or (2) if the individual is publicly connected with the business in which the mark is being used.” In short, this provision of the Act “is intended to protect the intellectual property right of privacy and publicity that a living person has in his/her identity.” But does the President of the United States need such IP and privacy protection, such that one cannot register his/her name as a trademark for novelty items? Yes, according to the TTAB.

by Zachary Wadlé

On July 17, 2008, Apple, Inc. applied to register the trademark “APP STORE” covering the Cupertino based company’s online store where users can buy various software applications for their iPhones, iPads, and/or iPods. Apple eventually completed the trademark examination process, and the mark proceeded to publication in the Trademark Official Gazette on January 5, 2010. On July 6, 2010, Microsoft Corporation filed an Opposition with the Trademark Trials and Appeals Board against Apple’s proposed registration of the APP STORE trademark. Two weeks ago, Microsoft filed a motion for summary judgment requesting that Apple’s trademark application be summarily rejected by the Board. The centerpiece of Microsoft’s motion is the argument that Apple’s proposed APP STORE trademark is “generic” and therefore ineligible for trademark protection. The Trademark Board must therefore decide whether Apple’s proposed APP STORE trademark is “generic” or not.

by Jeffrey Pietsch

Naked licensing is not as fun as the name suggests. Rather it can mark the end of a trademark owner’s exclusive right to their trademark. A trademark owner may grant a license to another to use the owner’s trademark. For example, following the San Francisco Giants’ World Series victory, the amount and type of products that featured the Giants trademark was mindboggling. Each of these products, if legally produced, would have obtained a license from the Giants to produce these goods. The consumer purchasing these goods and seeing the Giants’ trademark would have an idea as to the quality of the merchandise based on the trademark. Naked licensing occurs when the trademark owner fails to exercise adequate quality control over the licensee. This failure may result in the trademark ceasing to represent the quality of the product or service the consumer has come to expect.   The Ninth Circuit stated that such licensing is “inherently deceptive and constitutes the abandonment of any rights to the trademark by the licensor.” 

by Matt Massari

It may make business sense to put ownership of related trademarks in different subsidiaries. Under In re Wella A.G., 787 F.2d 1549, 229 USPQ 274 (Fed. Cir. 1986), one can generally register similar marks owned by affiliated companies, as long as it's done properly under the requirements of the Trademark Act. 

By James Kachmar

On November 24, 2010, the Ninth Circuit announced its decision in FreecycleSunnvale v. The Freecycle Network, a case involving the naked licensing defense to trademark infringement. FreecycleSunnyvale is a member group of The Freecycle Network, an organization devoted to facilitating recycling. The Freecycle Network was formed in March 2003 as an Arizona non-profit corporation dedicated to “free cycling,” which is “the practice of giving an unwanted item to a stranger so that it can continue to be used for its intended purpose rather than disposing of it.” The Freecycle Network maintains its own website and provides a directory of member groups as well as resources for volunteers to create new groups. It’s website also includes a section of etiquette guidelines for its member groups.

By: Scott Hervey

In early November, 2010 Nintendo of America filed a trademark registration application for the mark ITS ON LIKE DONKEY KONG for, among other items, video games.   Nintendo filed its mark on an intent to use basis in preparation for the launch of its video game, Donkey Kong Country Returns, for the Wii game system.   The fact that Nintendo filed a trademark registration application for the upcoming release of a video game is not necessarily newsworthy. The interesting thing about Nintendo’s application is that the mark is a phrase that has become well entrenched in the common lexicon. This raises the question, will the common use of the phrase have an effect on Nintendo’s ability to register the mark?

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: Matthew G. Massari

Ten years ago, Rick Norsigian visited a garage sale in Fresno, California, and bought a box of sixty-five photographic negatives for $45.  Norsigian claims to have noticed that the negatives resembled Ansel Adams' Yosemite National Park photos.  He hired an attorney to assemble a team of experts to authenticate the negatives. In a July 21, 2010 press release and a July 27, 2010 press conference, Norsigian and his lawyer proclaimed that the team of experts had analyzed the negatives for six months and concluded that the photos were created by iconic American photographer Ansel Adams "beyond a reasonable doubt." The “expert report,” which at the time of this writing is available on the website located at www.ricknorsigian.com, prominently features Ansel Adams’ name and trademark.  Claiming that the collection is “the lost work of Ansel Adams” from the 1920s or 1930s, Norsigian is now offering for sale prints and posters made from the images for $1,500 to $7,500.

By: Scott M. Hervey

Under 15 U.S.C. §1065, subject to certain criteria, a registered mark that has been in continuous use for five consecutive years after the date of registration and is still in use shall be deemed incontestable. Incontestable status is not available for marks where (1) there has been a final decision adverse to the registrant’s claim of ownership or right to register the mark; (2) there is a pending TTAB or court action involving the mark; or (3) the mark is generic.

By: W. Scott Cameron

Farzad and Lisa Tabari are auto brokers specializing in matching customers with new Lexus automobiles through authorized Lexus dealers. They used two Internet domain names to market their business – buy-a-lexus.com and buyorleaselexus.com. Toyota Motor Sales U.S.A. (“Toyota”), the exclusive distributor of new Lexus vehicles, objected to the Tabari’s use of their trademark “Lexus” in the domain names, and sued for infringement. The district court found infringement after a bench trial, and granted Toyota’s request for an injunction. Specifically, it enjoined the Tabari’s use of the Lexus mark in any domain names. The Tabaris appealed to the Ninth Circuit, which agreed with the Tabaris and reversed. Toyota Motor Sales U.S.A., Inc. v. Tabari (9^th Cir. July 8, 2010).

By: James Kachmar

The Ninth Circuit recently addressed the application of anti-dilution law to trademarks that happen to be common English words. In Visa International Service Association v. JSL Corporation (decided June 28, 2010), the Court held that the defendants’ use of the term “eVisa” for its multilingual education and information business was likely to dilute the Visa trademark. Joseph Orr, who operated eVisa through JSL Corp., ran an English language tutoring service while living in Japan called “Eikaiwa Visa.” (Eikaiwa is Japanese for “English conversation.”) After returning to the U.S., Orr started eVisa (the short form of Eikaiwa Visa) and claimed that the use of the word “visa” was meant to suggest “the ability to travel both linguistically and physically through the English speaking world.” Visa sued JSL claiming that eVisa was likely to dilute its “Visa” trademark. The district court granted summary judgment in Visa’s favor.

By: Zachary M. Wadle

The following scenario is common when a business owner attempts to register a trademark with the United States Patent and Trademark Office (“USPTO”): The business owner decides upon a seemingly unique business trademark. The business owner conducts a quick internet search for similar trademarks being used in the same industry, and does not find anything. Confident in the uniqueness of the mark, the business owner files for registration of the trademark with the USPTO, pays the required fee, and presumes the application will fly through the registration process with a hitch. A few months later, the business owner receives an “office action” from an Examining Attorney at the USPTO.

By: Matthew G. Massari

In February 2010, a U.S. District Court judge for the Northern District of California denied the National Collegiate Athletic Association’s motion to dismiss a class-action lawsuit that argues the NCAA and its licensees should compensate former student athletes for the use of their images and likenesses. Subsequent to the judge’s order, eleven former college football and basketball players joined former UCLA basketball star Ed O’Bannon in the litigation. O’Bannon alleges that the NCAA has and continues to enter into agreements that allow the use of his image without compensation paid to him, including a 2007 agreement between the NCAA and Thought Equity Motion, Inc. to offer “classic” college basketball games online. 

By: Jeffrey Pietsch

Victor’s Secret, a small store in Kentucky selling adult videos and sex toys, lost another battle in a trademark dilution case brought by Victoria’s Secret. Last month, the U.S. Sixth Circuit Court of Appeals affirmed an injunction granted by the District Court that concluded that the trademark Victor’s Secret or Victor’s Little Secret disparages and reduces the positive associations of the Victoria’s Secret mark. The Sixth Circuit on review sought to determine whether Victoria’s Secret’s case met the standards of “dilution by tarnishment” as set out in the recently enacted Trademark Dilution Revision Act of 2006.

by Matthew Massari

On May 24, 2010, the United States Supreme Court issued a unanimous decision that may ultimately change the way pro sports teams and leagues can license team-owned intellectual property for merchandise and apparel items. The Supreme Court’s ruling in American Needle, Inc. v. National Football League et al., case number 08-66, struck a significant blow to the long-standing joint venture between the National Football League (NFL) and its 32 member teams to license and market team-owned trademarks through a single entity. The case stems from a licensing agreement the NFL made with Reebok International Ltd. in 2000 to be the exclusive manufacturer and marketer of hats bearing NFL team trademarks.

by James Kachmar

On May 6, 2010, the Ninth Circuit issued its opinion in the case Au-Tomotive Gold Inc. v. Volkswagen of America, Inc., et al. in which it decided the issue of whether the sale of marquee license plates bearing Volkswagen badges that Au-Tomotive Gold (“Auto Gold”) had purchased from a Volkswagen dealer constituted trademark infringement or whether the sale of the plates was protected by the “first sale” doctrine. 

by Matt Massari

Patent lawyers have understood the consequences of sending a cease and desist letter to a potential infringer since the Supreme Court’s decision in MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007). After MedImmune, a party contemplating sending such a letter risks that the recipient may file for a declaratory judgment in their own jurisdiction.  This may require the sender to appear in a distant court, at their own expense.  Thus, the patent owner must be very careful when communicating with possible infringers. Several recent decisions have applied the MedImmune standard for declaratory judgment jurisdiction to trademark controversies, making it difficult for trademark lawyers to avoid exposure to a declaratory judgment action after contacting a potential infringer. 

by Sara Davidson

The United States Court of Appeals for the Second Circuit issued an opinion on April 1, 2010 that provides a compass for companies like eBay to navigate the murky waters of trademark infringement in the e-commerce marketplace. Tiffany & Co. v. eBay Inc., No. 08- 3947 (2d Cir. April 1, 2010)

By W. Scott Cameron

Mighty Leaf Tea sought to register the mark “ML” in standard character form to market, not tea, but rather personal care products and skin care products, including skin soap, body wash, foam bath, body lotion, body scrub, bath salts, massage oils, potpourri, and incense.  It filed its application with the United States Patent and Trademark Office on July 2, 2007, claiming first use in November of 2004.  The USPTO denied the application, however, because it found a likelihood of confusion with the mark “ML MARK LEES,” which had previously been registered for “skin care products, namely skin cleanser, skin toner, skin cream, skin lotion, skin mask gel, make-up foundation, powder and blush.” 

by Zachare J. Wadle

United States trademark law provides for the filing of trademark applications to protect (or reserve) trademarks which are not yet actually in use in commerce. The law will allow for filing of a trademark application, with the benefit of constructive use and priority, based upon the  
Applicant’s “bona fide intent to use” a mark. The question then becomes what constitutes “bona fide intent to use a mark?”

By Scott Hervey

The battle over the right to the trademark “Tavern on the Green” is over. In Manhattan earlier this month U.S. District Judge Miriam Cedarbaum ruled in favor of New York City, casting aside the prior concessionaire’s claim that it owned and controlled the famed “Tavern on the Green” trademark. The risk to New York losing were extremely high. Tavern on the Green, LP and LeRoy Adventures Inc. claimed ownership of the iconic brand that had recently been valued at $19 million and were seeking an injunction to prevent the new operator and the city from using the mark. Although the restaurant was the second-highest-grossing independent restaurant in the U.S. in 2008, with sales of $34.2 million. It’s almost certain that the new operator would renegotiate its winning bid if it was not able to use the Tavern on the Green mark, which would mean the city could lose millions of dollars in license fees.

By Jeff Pietsch

Last week, a United States District Court for the Eastern District of Missouri denied a motion by Intel to dismiss a declaratory judgment suit brought by Express Scripts Inc. Since last February, Express Scripts has been marketing some of its health care and pharmaceutical consulting services under the trademark “Intellact.” Shortly thereafter, Express Scripts received a cease and desist letter from Intel claiming that Express Scripts’ “Intellact” trademark infringed on Intel’s trademark rights. Intel specifically stated that the “Intellact” trademark would likely deceive or confuse consumers as to the source of the goods, namely that consumers would believe “Intellact” was affiliated with Intel. According to the suit filed by Express Scripts for declaratory judgment, Intel claims that it owns “all rights to names that contain the root of the word ‘intelligent.’” This article will examine trademark infringement in light of Express Scripts’ request for declaratory judgment.

By W. Scott Cameron

The Ninth Circuit issued an interesting ruling last week regarding the ownership and status of a domain name as property. In Office Depot, Inc. v. Zuccarini, ___ F.3d ___, Feb. 26, 2010, the Ninth Circuit ruled that a judgment creditor can levy a domain name of a judgment debtor to satisfy his judgment. This ruling was interesting for a couple of reasons. First was the location where the domain name can be levied, and second the facts of the case make the result somewhat ironic.

by Zachary Wadlé

The Heart Attack Grill in Chandler, Arizona (http://www.heartattackgrill.com) is unabashedly unhealthful. The morbidly titled restaurant proclaims its food has “a taste worth dying for,” and offers to feed all patrons 350 pounds and over for free. The menu features single through quadruple ”bypass burgers” (actual quadruple bypass burger pictured above), "flatliner fries" deep fried in pure lard, unfiltered “Lucky Strike” cigarettes, and Jolt Cola, amongst other fulsome fare. 

by Scott Hervey

A basic prerequisite for the ownership and registration of a trademark is that the mark is “used in commerce.”  The Trademark Act defines “use in commerce” as the bona fide use of a mark in the ordinary course of trade. Under the Act, a mark is deemed to be used in commerce when: (i) the mark is placed in any manner on goods, their containers, their displays, on the goods’ tags or labels and, in certain cases,  on documents associated with the goods or their sale; and (ii) the goods are sold or transported in interstate commerce.

by Scott Hervey

After four years, the quest to obtain federal trademark protection for the mark MATTRESS.COM by owner 1800Mattress.com IP, LLC, formerly Dial-A-Mattress Operating Corp, has been put to bed. The United States Court of Appeals for the Federal Circuit has finally held that the mark is generic and not entitled to registration.

by Jeff Pietsch

Earlier this year, the Tenth Circuit court upheld a preliminary injunction granted in favor of an electronics equipment manufacturer against a reseller of its goods in a trademark infringement action. In Beltronics v. Midwest Inventory Distribution, the reseller (Midwest) argued that it was able to resell the manufacturer’s goods based on the first sale doctrine. The court, however, disagreed with this assessment and ruled that the resellers violated the manufacturer’s trademark rights because Midwest’s sales caused consumer confusion.

By Zachary Wadlé

Most people are familiar with the concept of trademarks in the form of logos or words.  But intellectual property can also be embodied in sounds not represented by words and drawings, but rather musical notes and/or auditory tones.  While sound marks are not nearly as common as word marks, many sound marks are immediately recognizable, including Southwest Airline’s “Ding!,” MGM's roaring lion, AOL’s “You've got mail,” the Pillsbury Doughboy’s giggle, NBC’s chimes, Nokia’s default cell phone ringtone, and the Harlem Globetrotter’s theme song.  However, the legal requirements to register such sound marks are different than word marks, and much less well-defined by the courts.

by Scott Hervey

Recently the 7^th Circuit in Sunstar, Inc. v. Alberto-Culver Company provided a reminder to attorneys engaging in a business transaction between domestic and a foreign parties. Stated plainly, the 7^th Circuit reminded business attorneys that if a term is included in a transaction document – especially if that term is a foreign word – be sure you understand what it means. This case presented the question of how a foreign legal term included in a trademark license agreement should be interpreted where the choice of law for such agreement was Illinois state law. 

By Jeff Pietsch

Not all trademark law is aimed at protecting consumers. The Federal Trademark Dilution Act (“Act”) is aimed at protecting a company’s property right in its trademark. Dilution is defined as “the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of competition between the parties or the likelihood of confusion, mistake or deception.” In essence, dilution forbids the use of a famous trademark by others in any manner that lessens the uniqueness of the mark. Again, the purpose of the dilution doctrine is not to protect the consumer, but to protect the property right and goodwill that a company has developed in a mark.

By Zachary J. Wadlé

Missouri teenager Jimmy Winkelmann grew weary of his high school classmates’ blind and materialistic infatuation with The North Face products, and decided something had to be done. Mr. Winkelmann’s answer was to come up with his own competing apparel line to mock the ubiquitous North Face fleece jackets found on his high school campus. He called his line “The South Butt” and designed a suspiciously similar logo to that of The North Face.

by Scott Hervey

This is about a birthday card. Not just any birthday card mind you. This birthday card, produced by Hallmark Cards, depicts a cartoon waitress, dressed in an apron, serving food to a restaurant customer. However, not just any waitress could create such a controversy requiring an appeal to the 9^th Circuit. This waitress has, for her head, an oversized photograph of Paris Hilton’s head, and is engaged in witty banter with the customer wherein the cartoon waitress with the oversized Paris Hilton head states Paris’ trademarked (yes, she did file for Federal trademark protection) phrase, “That’s Hot.” What’s all the fuss about? Apparently Hallmark forgot to ask the young heiress if they could use her picture on their card.

By Scott Hervey

Those in the wine industry regularly traverse a vast array of statutes, rules and regulations in an effort to get their grape from the vine into your glass. One set of regulations all wine producers deal with are those governing wine labeling. The federal government, which regulates wine labels through the Alcohol and Tobacco Tax and Trade Bureau (the TTB), imposes rules which state what must and what may not be included on a wine label. A winery or wine producer must obtain federal approval of each wine label before bottling wine in the United States. In addition to federal approval, some states have their own wine label approval process wine producers and or distributors must go through prior to a wine being sold within that state. Most of the time the federal and state wine label approval process is straight forward. However, every so often a situation arises which shows the process can be complex and subjective.

by Dale C. Campbell

Section 43(a) the Lanham Act provides for liability related to unregistered marks. Section 43(a) provides for civil liability for any person who, IN connection with any goods or service uses in commerce any word, term, name, symbol or any combination thereof, or any false designation origin, false or misleading description of fact or false or misleading misrepresentation of which (a) is likely to cause confusion as to the origin, sponsorship or approval of the goods or services by another person or (b) in commercial advertising or promotion misrepresents the nature, character qualities or origin of his or her good, service or commercial activity. Subsection (a) is commonly known as the false origin claim and subsection (b) is commonly known as false advertising claim. In short, one can’t be liable for claims of false origin even if the statements are not made in the course of commercial advertising or promotion as required in subsection (b).

by Scott Hervey

It’s been five years since the Trademark Trial and Appeal Board dramatically changed the way Untied States trademark registrations are handled. The case of Medinol Ltd. v. Neuro Vasx, Inc. reflected an analytical shift in the way in which the Trademark Trial and Appeal Board (TTAB) determines whether an applicant committed fraud on the trademark office. The holding also provided those seeking to cancel a trademark registration with a powerful weapon, and created substantial risk for trademark applicants and registrants who overstate the goods or services in their application. The facts of Medinol Ltd. v. Neuro Vasx, Inc. are as follows:

by Jeff Pietsch

Earlier this month, the Tenth Circuit court upheld a preliminary injunction granted in favor of a manufacturer of electronics equipment against a reseller of its goods in a trademark infringement action. (Beltronics v. Midwest Inventory Distribution (10th Cir. April 9, 2009)). The reseller argued that it was able to resell the manufacturer’s goods online based on the first sale doctrine. The court, however, disagreed with this assessment and ruled that the resellers violated the manufacturer’s trademark rights because Midwest’s actions caused consumer confusion.

By Zachary Wadlé

The widely popular Guitar Hero videogame series created by Activision Publishing, Inc. allows players to emulate their favorite rock guitarists, without requiring any actual guitar playing skill. However, this virtual reality was endangered last year by a threatened patent infringement lawsuit by guitar company, Gibson, longtime maker of iconic rock guitars such as the Gibson “Les Paul,” “SG,” “ES-335,” and “Flying V,” to name a few.

 In January 2008, Gibson sent a letter to Activision, claiming that Guitar Hero infringed upon Gibson’s registered U.S. Patent No. 5,990,405 (the “‘405 Patent”). This patent covered "a system and method for generating and controlling a simulated musical concert experience." Gibson claimed that the Guitar Hero game controllers – miniature plastic replicas of Gibson guitars with no strings, and four buttons on the fret-board – infringed upon Gibson’s patent and required Activision to obtain a license from Gibson, or else halt sales of any version of the Guitar Hero game and controllers.    

By Jeff Pietsch

Trademark law is traditionally concerned with protecting consumers. Trademarks protect consumers by helping consumers identify the source of the goods or service. For example, when a consumer buys a product, she knows exactly what she is going to get with the product based on its mark. Trademark law was designed to protect these consumers by protecting these marks against copy-cats or products with confusingly similar marks. Cases based on consumer protection concern similar products with similar marks that may confuse consumers. 

By Dale C. Campbell

The Ninth Circuit recently considered the enforceability of non-competition covenants contained in franchise-like agreements.  (Comedy Clubs, Inc. v. Improv West Associates (9th Cir. January 29, 2009; WL 205046.)

The plaintiff Comedy Club, Inc. (“CCI”) entered into a trademark license with Improv West Associates (“IMPROV”). CCI owned and operated restaurants and comedy clubs across the nation. The license agreement provided that IMPROV granted CCI an exclusive nationwide license to use the IMPROV marks; that CCI would open four IMPROV clubs a year in 2001 through 2003; and CCI would not operate any non-IMPROV clubs during the term of the license.

by James Kachmar

The Ninth Circuit recently addressed the issue of whether a “first publication” exclusion in an insurance policy applies to trademark infringement claims. In United National Insurance Company v. Spectrum Worldwide, Inc., et al., decided February 2, 2009, the Ninth Circuit resolved a split among lower courts and held that a “first publication” exclusion did apply under California law.

In December 1997, Sunset Health Products, Inc. (“Sunset”) hired Spectrum to advertise and distribute a diet drink called “Hollywood 48 Hour Miracle Diet” drink. Celebrity Products Direct, Inc. (“Celebrity”) was formed a short time later and began selling a similar product, “The Original Hollywood Celebrity Diet” drink. Spectrum then terminated its contract with Sunset and begin marketing the Celebrity diet drink.   Sunset made repeated demands that Spectrum cease infringing on its Miracle Diet trademark. 

By Jeff Pietsch

Last year, Google lost the first round of a court battle against Vulcan Golf, a golf club manufacturer, in a trademark and cybersquatting dispute. In that decision, the US District Court in Illinois ruled that Google could be sued for its role in serving ads on websites that use domain names that violate trademark and cybersquatting laws. In the latest round of decisions on this case, the court denied class certification damaging the plaintiffs’ hopes in prevailing in this matter.  

By Scott Hervey

While the producers of American Idol, FreemantleMedia North America, appreciate just how much people love the show, it’s now obvious Freemantle doesn’t agree with the old adage that imitation is the sincerest form of flattery. In late December, Freemantle filed suit against a strip club in Austin, Texas that ran a stripper talent contest, and called it “Stripper Idol” and also used the American Idol logo. Freemantle claimed that the strip club owner’s use of “Stripper Idol” in connection with its stripper talent contest constitutes Federal trademark infringement because such use “is likely to cause confusion, mistake, or to deceive as to the affiliation, connection, or association” of the strip club owners with Freemantle or the American Idol program.

by Scott Cameron

Trademark infringement is generally the improper use of a competitor’s trademark that results in the customer buying one product thinking it is another. The classic example is when the new competitor adopts the name of the established competitor, or varies the name ever so slightly. Company A calls its new product “TheUltraWidget” to trade on the goodwill Company B has built in its best-selling “UltraWidget.”

These cases are pretty simple. If the consumer is likely to be confused by Company A’s use of Company B’s trademark, and Company B is harmed by (or Company A profits from) that use, there is actionable trademark infringement. As long as Company B can establish the elements of the claim, it is entitled to injunctive relief and monetary damages.

By Audrey A. Millemann

The beginning of the year is a good time to review your clients’ intellectual property needs. The first and most important thing to do is to determine what intellectual property the client has. Once the intellectual property has been identified, the means of protecting it can be analyzed and a plan for establishing protection set up. 

What is Intellectual Property?

Almost anything can constitute intellectual property. IP may fall into one or more of the following categories: inventions that can be patented, expression that is copyrightable, names or logos that are trademarks, and information that is a trade secret.

By Scott Hervey

The holiday season means something different for each of us. For some it’s a time for eggnog, parties and mistletoe. For others, it’s a time for cease and desist letters, seizure actions and lawsuits. Yes Virginia, there is a Santa Clause, and his lawyers stand ready to sue those who use his marks and other intellectual property without permission.

By Jeffrey 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.

James Kachmar

The Grand Theft Auto (“GTA”) video game series is one of the most successful video games of all time. In April 2005, the maker of GTA was sued for trademark infringement as a result of its inclusion of a fictional strip club in its game that bore a resemblance to a real strip club in East Los Angeles. On November 5, 2008, the Ninth Circuit in the case E.S.S. Entertainment 20002, Inc. v. Rockstar Videos, Inc., et al. issued its opinion in this case involving video games and virtual strip clubs and reaffirmed the protections of the First Amendment as a defense to trademark infringement claims.

Rockstar Games, Inc. (“Rockstar”) manufactures the GTA video game series, which includes Grand Theft Auto: San Andreas. The games take place in fictional cities resembling actual American urban areas. Each game is accompanied by a disclaimer stating that the locations depicted are fictional. GTA: San Andreas was created to emulate the West Coast “gangster” culture and depicts the virtual city of Los Santos, which is intended to imitate actual Los Angeles neighborhoods. 

By Dale C. Campbell

The 2008 presidential election is just two weeks away. The candidates have discussed everything from foreign policy, the economy, the war in Iraq, washed-up homeland terrorists, and where you find the “real” America. But where do the candidates stand with respect to intellectual property protection?

For those of you who are interested, and the mere fact that you are continuing to read this article means that you are, a little-publicized conference sponsored by the IP section of the Colorado Bar was held in August 2008, during which two surrogates for Senator McCain and two circuits for Senator Obama discussed their respective candidates’ positions on topics of interest to the IP bar. A video presentation of the discussion can be if you search: IP Policy and the Presidential Debate Video Replay.

By Scott Hervey

John Facenda is a football legend. His deep, baritone voice is “distinctive,” some say “legendary.” Without question, for most football fans, John Facenda was the voice of NFL Films. 

 For decades Facenda worked for NFL Films as an off camera commentator. He worked on a session by session basis under an oral agreement, receiving a per performance fee. Shortly before he died in 1984, Facenda signed a “standard release” contract with NFL Films which stated that NFL Films enjoys “the unequivocal right to use the audio and visual film sequences recorded of me, or any part of them… in perpetuity and by whatever media or manner NFL Films…sees fit, provided, however, such use does not constitute an endorsement of any product or service.” (Emphasis added.)

In 2005, NFL Films produced a 22 minute long television program entitled “The Making of Madden NFL 2006.” The program was about the soon to be released version of the highly popular video game, Madden NFL. The program featured interviews with NFL players and game producers; it contained several sequences comparing the games virtual environment with the actual NFL playing environment, and commented on the realism of the graphic quality of the video game. The program also featured audio and video clips from pervious NFL Films productions, including three sentences, lasting a total of 13 seconds, that were read by Facenda. The producers of the program modified Facenda’s audio clips to make his voice sound more like a computer.

Facenda’s estate sued NFL Films and others claiming that the use of Facenda’s voice in the program falsely implied that Facenda or his estate had agreed to endorse the video game. 

By Jeffrey Pietsch

eBay let out a sigh of relief last month when a New York Federal Court ruled that eBay’s efforts to remove sellers of counterfeit goods was sufficient to combat the sale of fake Tiffany & Co. products. In fact, the court held that trademark holders, such as Tiffany & Co., are the ones responsible for policing the online market place for counterfeit products, not online “swap meets” such as eBay.

By Dale C. Campbell

Search engine websites sell keywords as a component of their advertising programs. By purchasing an advertising keyword, a business’s advertisement will appear next to the search results whenever a person enters the advertising keyword as a search term. Trademark questions arise whenever a competitor purchases an advertisement keyword that is confusingly similar to the protected mark of another competitor, thereby causing its advertisement to pop up next to the search results.

By Scott Hervey          

The First Circuit recently decided a case that exemplifies the downfall of building a brand around merely generic terms. No matter how long the mark owner may use a mark in commerce, it is going to be next to impossible to prevent competitors from using those generic components, even where the use is part of the competitor’s trademark.

Boston Duck Tours operated a sightseeing tour operation of the Boston area since 1994 and used renovated WWII amphibious vehicles commonly referred to as “ducks.” In 2001, Super Duck Tours began operation of a sightseeing land and water tour. Super Duck Tours originally operated its business solely in Portland, Maine. In 2007, Super Duck Tours expanded its operation and began to offer tours in certain parts of Boston not serviced by Boston Duck Tours. 

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 Tobin & Tobin Sproul.#160 Scott represents clients in numerous industries on intellectual property matters and issues concerning the Internet in both transactions and litigation.#160