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
Patent Reform Passes United States Senate
On Tuesday, March 15, 2011, the United States Senate voted 95-5 in favor of passing the “America Invents Act.” If passed by the House and signed by the President this Bill would make significant changes to the United States Patent system, most notably the priority rights of inventors set forth in 35 U.S.C. §102. Currently, section 102 places emphasis on an inventor’s date of invention or “reduction to practice” in determining priority between similar or identical subject matter filed for patent protection with the United States Patent & Trademark Office. The America Invents Act changes this. Under the Act, the new section 102 will shift emphasis away from the date of invention, and instead grant priority based on an inventor’s filing date.Continue Reading Patent Reform Passes United States Senate
Trademark Basics: Dilution
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.Continue Reading Trademark Basics: Dilution
Advertisers Beware: Using a Competitor’s Registered Trademark as a Keyword with Google’s AdWords Program can Constitute Trademark Infringement
by 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).Continue Reading Advertisers Beware: Using a Competitor’s Registered Trademark as a Keyword with Google’s AdWords Program can Constitute Trademark Infringement
No Doubt v. Band Hero – A Further Test of Celebrities Right of Publicity
by Scott Hervey
The rock band No Doubt had serious doubts about the way they were being portrayed in Activision’s video game Band Hero. No Doubt had licensed the likeness of its members for use in the video game but ultimately objected to Activision’s use and claimed that such use was outside of the scope of the license agreement between the Parties.
The agreement between the parties set for the terms upon which No Doubt gave Activision the right to utilize the band members’ name and likeness in the video game. Each band member had the right to approve their likeness as implemented in the game, as well as all other uses of use their name and/or likeness in the marketing and exploitation of the game. After signing the license agreement, the band members participated in a full day photography and data capture session at Activision’s studios so that the band members’ avatars in the video game would accurately reflect their appearances, movements and sounds. No Doubt reviewed the photography and the details related to the appearance and feature of their avatars and ultimately gave their approval. Continue Reading No Doubt v. Band Hero – A Further Test of Celebrities Right of Publicity