by Matt Massari
It may make business sense to put ownership of related trademarks in different subsidiaries. Under In re Wella A.G., 787 F.2d 1549, 229 USPQ 274 (Fed. Cir. 1986), one can generally register similar marks owned by affiliated companies, as long as it’s done properly under the requirements of the Trademark Act.
Continue Reading Affiliated Companies and Likelihood of Confusion
By Scott Hervey
The motion picture industry’s battle against cyber piracy took an interesting twist when an individual who allegedly engaged in the illegal downloading of the movie Far Cry filed a lawsuit against the Copyright Group and the law firm that has filed numerous suits against thousands of alleged infringers. To date, the law firm, Dunlap, Grubb & Weaver has filed suit against 20,000 anonymous “Doe” defendants for illegal file trading copies of various motion pictures, including Hurt Locker and Far Cry. Once the firm determines a defendant’s true identity it then sends out a demand letter informing the individual that they have been identified as having illegally downloaded a motion picture and explaining that the plaintiff is entitled up to $30,000 in damages under the Copyright Act for each infringed work (and in cases where the plaintiff can prove that the infringement was intentional, up to $150,000 in damages.) The firm then offers the individual an early opportunity to settle for $2,500 before it is named as a defendant in the complaint.
On November 24, 2010, the Ninth Circuit announced its decision in FreecycleSunnvale v. The Freecycle Network, a case involving the naked licensing defense to trademark infringement. FreecycleSunnyvale is a member group of The Freecycle Network, an organization devoted to facilitating recycling. The Freecycle Network was formed in March 2003 as an Arizona non-profit corporation dedicated to “free cycling,” which is “the practice of giving an unwanted item to a stranger so that it can continue to be used for its intended purpose rather than disposing of it.” The Freecycle Network maintains its own website and provides a directory of member groups as well as resources for volunteers to create new groups. It’s website also includes a section of etiquette guidelines for its member groups.
By: Audrey Millemann
A patent is infringed by one who, in the United States, makes, uses, sells, or offers to sell the patented invention, or imports the patented invention into the United States. 35 U.S.C. Section 271(a). The Federal Circuit Court of Appeals in Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractrors USA, Inc., 617 F.3d 1296 (Fed. Cir. 2010), clarified the meaning of “offers to sell.”
In early November, 2010 Nintendo of America filed a trademark registration application for the mark ITS ON LIKE DONKEY KONG for, among other items, video games. Nintendo filed its mark on an intent to use basis in preparation for the launch of its video game, Donkey Kong Country Returns, for the Wii game system. The fact that Nintendo filed a trademark registration application for the upcoming release of a video game is not necessarily newsworthy. The interesting thing about Nintendo’s application is that the mark is a phrase that has become well entrenched in the common lexicon. This raises the question, will the common use of the phrase have an effect on Nintendo’s ability to register the mark?
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