By 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.
Liability for Offers to Sell Clarified
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.”
Can It Still Be On Like Donkey Kong.
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?
The Ninth Circuit expands the scope of the Anticybersquatting Consumer Protection Act: cybersquatters may no longer use a domain name with a bad faith intent to profit from the protected mark by holding the domain name for ransom
Does the Anticybersquatting Consumer Protection Act impose liability upon cybersquatters who innocently register a domain name and properly use it for many years, but who then use a domain name with a bad faith intent to profit from the protected mark by holding the domain name for ransom? In DSPT Int’l, Inc. v. Nahum, __ F.3d __, 2010 WL 4227883, No. 08-55062 (9th Cir. Oct. 27, 2010), the Ninth Circuit answered in the affirmative.
Trademark Infringement: Factors Considered in Consumer Confusion
By: Jeff Pietsch
Trademark infringement occurs when a third party uses a mark in a way that infringes upon a trademark owner’s exclusive right and use of a trademark. Often, the third party will use a similar mark in a way that confuses consumers as to the source of the goods and services. For example, a fast food restaurant named “Wendi’s” would likely cause confusion with “Wendy’s.” Trademark infringement can occur only when it is likely that consumers will be confused as to the source of the goods. The purpose of this article is to examine the test and factors that courts use to determine if such infringement exists.
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