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.

Continue Reading Naked Licensing: Trademark Owners Beware

By Audrey A. Millemann 

In patent litigation, the district court has discretion to award attorneys’ fees to the prevailing party if it finds the case exceptional.  35 U.S.C. §285.  In MarcTec, LLC v. Johnson & Johnson and Cordis Corporation, 664 F.3d 907 (Fed. Cir. 2012), the Federal Circuit affirmed a district court’s award of expert witness fees in addition to attorneys’ fees under section 285. 

The patents in suit covered a surgical device that included a polymer bonded by heat to an implant.  The inventor, an orthopedic surgeon, obtained his patents by arguing to the Patent and Trademark Office that his claims did not cover stents and by amending his claims to require heat-bonding. The inventor assigned his patents to his own company, MarcTec. 

Continue Reading Award of Fees in Exceptional Case Includes Expert Fees

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. 

Continue Reading Is A Trademark Application An Appropriate Gift At A Baby Shower?

By: James Kachmar

In late December, the Ninth Circuit revisited the “safe harbor” provisions of the Digital Millennium Copyright Act (“DMCA”) in the case UMG Recordings, Inc. v. Veoh Networks, Inc., 101 U.S.P.Q.2D (BNA) 1001. Veoh is a web service that allows users to view videos uploaded by other users.   Veoh was sued for copyright infringement by UMG, one of the world’s largest music and music publishing companies. 

Before a user can upload and share a video, on Veoh’s site, he/she must agree to Veoh’s publisher terms and conditions and terms of use, both of which bar the user from uploading any videos that infringe on another’s copyrights. Also immediately prior to uploading a video, a message appears on Veoh’s website warning the user not to upload infringing videos. 

Continue Reading Revisiting the “Safe Harbor” Provisions of the DMCA

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.

Continue Reading Court Finds Kinect and Kinbox Not Kinected