Trademark Law

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By: Jeffrey Pietsch 

Naked licensing is not as fun as the name suggests. Rather it can mark the end of a trademark owner’s exclusive right to their trademark. Naked licensing occurs when the trademark owner fails to exercise adequate quality control over the licensee.  This usually occurs when a trademark owner grants a third party the right to use a trademark with little or no restrictions.  Naked licensing could also occur when a trademark owner fails to enforce quality control provisions in the license agreement.  The failure of the trademark owner to control the use of its trademark by third parties may result in the trademark ceasing to represent the quality of the product or service the consumer has come to expect.   The Ninth Circuit stated that such licensing is “inherently deceptive and constitutes the abandonment of any rights to the trademark by the licensor.” 

In one such case before the Ninth Circuit, a licensee sought declaratory relief against a trademark owner on the grounds that the trademark owner abandoned its rights in the trademark by granting naked licenses to others.  The trademark in question, FREECYCLE, was owned by The Freecycle Network (“TFN”) and used by TFN to identify TFN’s services known as “freecycling.”  Freecycling is the practice of giving an unwanted item to another so that it can continue to be used as intended.Continue Reading Naked Licensing: Trademark Owners Beware

It only took four days, but four days was enough time for New York City fashion designer Joseph Mbeh to file an application with the United States Patent and Trademark Office seeking to register a trademark for “Blue Ivy Carter NYC.” Not coincidentally, “Blue Ivy” is the name chosen by Beyoncé and Jay-Z for the daughter born to them on January 9, 2012. The application is still pending before the United States Patent and Trademark Office, and alleges that Mbeh first used this mark “at least as early as January 9, 2012.”

Similarly, as you may recall, it was nearly a year ago when Governor Sarah Palin filed a trademark application seeking registration of her own name. Although Ms. Palin’s application was the topic of many jokes on late night television programming, as will undoubtedly be the case regarding the “Blue Ivy” mark as well, you may be surprised to learn that the Trademark Act of 1946 contains specific provisions allowing a person to obtain a trademark covering their name. Chapter 1300 of the Trademark Manual of Examining Procedure (“TMEP”) defines the criteria which, if met, permit a person to successfully obtain a trademark covering their name. Not unlike other trademark applications, the application must cover a mark which identifies the goods or services associated with that mark, and must function as an indication as to the source of those goods or services while distinguishing them from others. As a result, any person may seek registration of their name, provided they can demonstrate that their name is so distinctive that the public immediately thinks of them when the name is heard. Continue Reading Is A Trademark Application An Appropriate Gift At A Baby Shower?

By Nathan Geronimo

Kinbook, LLC, an online social networking company, recently sued Microsoft for unfair competition and reverse trademark infringement in United States District Court.  (Kinbook, LLC v. Microsoft Corp.,2012 U.S. Dist. LEXIS 8570.) Kinbook created a Facebook application called “Kinbox,” which allows Facebook users to create private sub-social networks for sharing of information within a subset of their list of Facebook friends.  Kinbox was formally launched on Facebook in December 2009, and Kinbook’s use of the Kinbox mark was approved in September 2010.

In November 2010 Microsoft released “Kinect,” a motion-sensor interface device for the XBOX 360 that allows users to control the XBOX 360 through gestures and voice commands.  In April 2010, Microsoft released the “Kin” phone, a mobile smart phone for use with the Verizon Wireless mobile phone service.  Microsoft stopped production of the Kin after just two months due to a lack of consumer demand for the product.Continue Reading Court Finds Kinect and Kinbox Not Kinected

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.

Many courts have developed a balancing test to determine if a mark infringes on another. This balancing test has largely grown from the seminal case Polaroid Corp. v. Polarad Elect. Corp., 287 F.2d 492 (2nd Cir. 1961). In that case, the court identified several variables to consider when assessing if a mark is infringing on another mark. This balancing test seeks to determine if consumers would likely be confused as to the source of the marks. If the test favors that confusion would likely result, then the court will likely rule that infringement exists. On the other hand, if confusion is unlikely or minimal, the court will likely rule against infringement.Continue Reading Trademark Infringement: Factors Considered in Consumer Confusion

With the launch of each new Top Level Domain (“TLD”), brand owners are always concerned about protecting their trademark rights and preventing individuals from cybersquatting. The .xxx TLDs are coming and brand owners have only a very short period of time left to take proactive steps to prevent their brands from being used in connection with an adult entertainment website.  If you are the owner of a registered trademark outside the adult entertainment industry, chances are you do not want to see your trademark used as an .xxx domain by an adult entertainment website. Such use can potentially harm your trademark rights or adversely affect the goodwill associated with your business or products. There are steps that you can take to prevent others from registering your trademark in connection with an .xxx domain name, but time is running out.Continue Reading Protect your Brand from EXXXposure