Trademark Law

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By James Kachmar

In January 2007, the Ninth Circuit adopted the long-standing policy of the Patent Trade Office’s Trademark Trial and Appeal Board that “use in commerce only creates trademark rights when the use is lawful.” This case, CreAgri, Inc. v. USANA Health Sciences, Inc., arose out of competing trademark claims brought by two manufacturers of a dietary supplement. Continue Reading Ninth Circuit Adopts Lawful “Use in Commerce” Requirement for Trade Mark Priority

By Jeff Pietsch

Last week Keith Urban, the Grammy nominated country singer from Australia, sued Keith Urban, a New Jersey painter, for use of the website www.keithurban.com. The suit filed in federal court alleges that Keith Urban, the painter, is infringing on the singer’s trademark rights by misleading internet users into believing that the website is owned by the singer. The website, which has been owned and registered by the painter since 1999, sells oil paintings through the website. Upon entering the site users see the following: “You have reached the site of Keith Urban. To those who don’t know, oil painting is one of my hobbies.” Users are then directed to a link which displays several paintings. The singer claims this use infringes on the Keith Urban trademark by violating the Anticybersquatting Consumer Protection Act, the Federal Trademark Dilution Act, and federal unfair competition laws. This article will examine the claims against the painter under the Anticybersquatting Consumer Protection Act.Continue Reading Will the Real Keith Urban Stand Up: A showdown in Cybersquatting

By Jeffrey Pietsch

In 2006, Federal District Courts throughout the country were asked to decide if purchasing and using trademark-protected keywords to trigger internet advertising constitute trademark violations as contemplated by the Lanham Act. Unfortunately for advertisers, these rulings were inconsistent. In 2007, this trend continues with the Eastern District of Pennsylvania ruling in J.G. Wentworth v. Settlement Funding, LLC, No. 06-0597 (E.D. Pa. Jan. 4, 2007). In J.G. Wentworth, the court siding with advertisers, ruled that using trademark-protected words to trigger internet advertising does not violate trademark law.Continue Reading Settlement In Keyword / Trademark Dispute

By Scott Hervey

On October 31, 2005, adult film actress Mary Cook filed a trademark registration application with the United States Patent and Trademark Office to register the mark MARY CAREY for motion pictures featuring adult entertainment, and a series of prerecorded video cassettes, DVDs, multimedia software and interactive multimedia featuring adult video and visual dramatic performances. On August 29, 2006, the USPTO published the mark in the Official Gazette, beginning the thirty day period in which any third party who believes that they would be damaged by the registration of the mark could oppose its registration. If no opposition is filed within the thirty day time period, the USPTO will usually register the mark. However, on December 27, 2006 pop star diva Mariah Carey, through her company Automatic Princess Holdings, LLC, filed an opposition to the registration of the porn star’s mark, MARY CAREY, claiming that consumers are likely to be confused and believe that there is some association or affiliation between the MARIAH CAREY marks owned by the pop star and MARY CAREY. Continue Reading Trademark Battle: Pop Star v. Porn Star