By Scott Hervey

“Everyone does it” exclaimed the IT staffer in charge of the company’s website. "Everyone uses their competitor’s brand as a keyword to trigger a paid advertisement."   The company’s chief marketing officer remembers something her mother use to say about jumping off a bridge…but that’s not important right now. They received a letter from a competitor’s lawyer and it’s time to get the company’s general counsel involved.

Over the past 10 years there have been a number of cases in State and Federal courts that have addressed the question of when the use of a competitor’s trademark as a keyword is actionable infringement. For a time the focus was on whether such use was “use in commerce” as required by the Lanham Act. Some courts held that there was no use in commerce when the competitor’s mark was used as a keyword to trigger an advertisement but the mark did not itself appear in the ad copy; other courts held that such use was “use in commerce.”   The debate over whether or not such use is “use in commerce” under the Lanham Act is now dead; most jurisdictions agree that the use of a competitor’s brand as a keyword is “use in commerce.”   The focus is now on whether such use creates a likelihood of confusion.

In Network Automation v. Advanced Systems Concepts, the 9^th Circuit advanced a new four factor test for determining likelihood of confusion in keyword cases: i) mark strength; ii) evidence of actual confusion; iii) the type of goods and degree of purchaser care; iv) and the labeling and appearance of the advertisements and the surrounding context on the screen displaying the results page.    Continue Reading Keyword Advertising Quagmire

By Scott Hervey

What do Hooters, Twin Peaks, Canz, Tilted Kilt, and Mugs N Jugs have in common.  These are all “Breastaurants.” According to Wikipedia, a breastaurant is a “restaurant that has sexual undertones, most commonly in the form of large-breasted, skimpily dressed waitresses and barmaids.”    However, on October 23, 2012  the United States Patent and Trademark Office issued a trademark registration for the mark BREASTAURANT to Bikini Bar and Restaurant, LLC for bar and restaurant services on the Principal Register..  Even more interesting then someone having filed an application to register the mark BREASTAURANT, is that the USPTO allowed the mark to register on the Principal Register without challenging the mark as being merely descriptive.  

15 USC 1052 provides as follows:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it…. (e) Consists of a mark which, (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them….

Matter that “merely describes” the goods or services on or in connection with which it is used is not registrable on the Principal Register. As noted by the United States Court of Customs and Patent Appeal (the precursor to the Federal Circuit) in In re Abcor Dev. Corp):

The major reasons for not protecting such marks are: (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods; and (2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products.Continue Reading THE BREASTAURANT TRADEMARK – NOT SUCH, A BIG DEAL AFTER ALL

By Nathan H. Geronimo

A recent case in California’s Sixth District Court of Appeal, Winchester Mystery House, LLC v. Global Asylum, Inc., illustrates California’s treatment of trademark infringement with regard to claims involving artistic works.  Winchester Mystery House is a well-known tourist attraction in San Jose, California.  It is a large, Victorian-style mansion built and expanded by Sarah Winchester, the wife of William Winchester of Winchester Repeating Arms Co. fame.  Legend has it that after her husband’s death in 1881, Sarah Winchester became convinced that she and her family were haunted by the ghosts of those who fell to Winchester rifles.  To combat the haunting, Sarah Winchester bought a farmhouse in San Jose and began the unrelenting task of adding rooms and peculiar features to the house, such as stairways that lead to ceilings in an effort to confuse and thwart the ghosts.  Construction at the Winchester mansion continued constantly for 38 years until Sarah’s death in 1922.  By this time the mansion had swelled to 160 rooms.

The mansion was later bought and established as a museum, and is now controlled by Winchester Mystery House LLC (“Winchester”), which owns the “Winchester Mystery House” trademark and an architectural mark comprised of the three dimensional shape of the Winchester mansion.  In 2008, Winchester granted Imagination Design Works the exclusive right to film at the Winchester Mystery House as well as the rights to use Winchester’s marks and copyrights in association with a film about the house.  Defendant Global Asylum (“Global”) thereafter asked Winchester for permission to film at the mansion, at which time Winchester informed Global of its deal with Imagine Design Works.  Nonetheless, Global produced and distributed a film called, “Haunting of Winchester House.”  The film claims to be a true story about a family that moves into the 160 room mansion to act as caretakers and is haunted by Sarah Winchester and other ghosts.  Winchester sued Global for trademark infringement, alleging that Global’s use of the term “Winchester House” and images of a Victorian-style mansion exploited Winchester’s marks and lead the public to believe that the film was sponsored or otherwise sanctioned by Winchester.  Continue Reading What’s In a Name? Trademark Infringement and Artistic Expression