by 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.Continue Reading Levi’s Legal Department: The Ultimate Pocket Protectors
How to Perfect a Security Interest in Intellectual Property (Copyrights, Trademarks and Patents)
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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”).
Ninth Circuit Clarifies Position on Keyword Advertising Liability
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.Continue Reading Ninth Circuit Clarifies Position on Keyword Advertising Liability
Trademark Landmines
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. Continue Reading Trademark Landmines
Apple Sues Amazon for Trademark Infringement
by 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.Continue Reading Apple Sues Amazon for Trademark Infringement