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

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