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

by David Muradyan

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

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

by James Kachmar

United Fabrics International, Inc. (“United Fabrics”) manufactures a collection of fabric designs titled “Ethnic Collection X” to which it holds a copyright. As part of that collection, United Fabrics purchased a fabric design from an Italian design house and then modified the purchase design. It then sued Macy’s (and several others) for infringing on its copyright by selling infringing fabric and garments. Macy’s moved for summary judgment and the court sua sponte dismissed the case claiming that United Fabrics did not have standing to pursue a copyright infringement claim. The court held that United Fabrics had failed to establish the crucial element of ownership of a valid copyright.

Continue Reading United Fabrics v. Macys and the Presumption of Copyright Ownership

by Matt Massari

People often attempt to register the names of public or famous figures as trademarks for use in association with novelty items. Section 2(c) of the Trademark Act “absolutely bars the registration of a designation that identifies a particular living individual absent written consent.”  In determining whether a particular living individual with that “name” would be associated with the mark, the U.S. Trademark Trial and Appeal Board (“TTAB”) must consider “(1) if the person is so well known that the public would reasonably assume the connection, or (2) if the individual is publicly connected with the business in which the mark is being used.” In short, this provision of the Act “is intended to protect the intellectual property right of privacy and publicity that a living person has in his/her identity.” But does the President of the United States need such IP and privacy protection, such that one cannot register his/her name as a trademark for novelty items? Yes, according to the TTAB.

Continue Reading “Obamification”: Barack Obama as a Trademark