IP Law Blog

By Jeff Pietsch

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

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

By James Kachmar

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

By Jeff Pietsch

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

By Jeffrey Pietsch

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

By Scott Hervey

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

By Scott Hervey

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

By Audrey A. Millemann

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

By April Hiroshima Gatling

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

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

By Andrea Anapolsky

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

By Scott Hervey

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

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

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

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

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

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

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

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

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

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

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