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

By James Kachmar

On February 23, 2011, the Ninth Circuit issued its opinion in a case involving the Betty Boop cartoon character titled: Fleischer Studios, Inc. v. A.V.E.L.A., Inc., et al. In that case, heirs of the creator of the Betty Boop cartoon claimed that defendants, which were marketing products with Betty Boop’s image, were liable for copyright infringement. (The case also involved claims of trademark infringement which will not be discussed in this article.)

Continue Reading Betty Boop and Chain of Title Issues

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

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.

Continue Reading Apple Sues Amazon for Trademark Infringement

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