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How to Choose a Trademark Attorney

I am frequently disappointed with attorneys who hold themselves out as “trademark attorneys,” when, in reality, they have very little trademark experience.

If you are considering hiring a trademark attorney here are ways to see for yourself whether the attorney truly has trademark expertise:

1.         Use TESS for Filing Trademark Applications

If you are considering hiring an attorney to file a trademark application for you, use TESS.

Step #1:           Find the Trademark Office’s Trademark Electronic Search System (TESS) on the Internet and select “Word and/or Design Mark Search (Structured).”

Step #2:           Enter the attorney’s name in the “Search Term” box.

Step #3:           In the “Field” drop down menu, select “Attorney of Record” and click search.

A list will appear showing the applications in which the attorney is the Attorney of Record.  If the attorney’s name is a common one (e.g., Thomas Smith), make sure you only count those applications filed by the actual attorney you are considering hiring, not another attorney with the same name.

2.         Use PACER for Trademark Lawsuits

If you need to hire a trademark attorney for a lawsuit (also called a “trademark litigator”) you should ask the attorney for a list of trademark lawsuits he or she has handled.  An attorney should readily produce a list for you.  He or she can retrieve it from Public Access to Court Electronic Records (PACER).  Non-lawyers can also conduct their own limited searches on PACER.  Note that the federal courts code trademark lawsuits under the number “840” – so look for that code.

Hire a trademark attorney with real trademark experience, not just one who calls himself or herself one.  The above tips can help you verify that the attorney has the real experience you need.

David M. Lilenfeld

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POM Wonderful LLC v. The Coca-Cola Company in Trademark Fight

A recent Supreme Court ruling sided with Pom Wonderful in a case claiming that The Coca-Cola Company’s “Pomegranate Blueberry” beverage offered by its Minute Maid unit is misleading. The 8-0 ruling allows Pom Wonderful to go forward with its lawsuit against Coke alleging that the “Pomegranate Blueberry” label is misleading because 99 percent of the drink is apple and grape juice. Only 0.3 percent is pomegranate juice and 0.2 percent is blueberry juice. Pom filed its lawsuit against Coke in 2008 after it began losing market share to Minute Maid’s “Pomegranate Blueberry Flavored Blend of 5 Juices” drink. The drink’s label shows the words “Pomegranate Blueberry” in much larger type than the rest of the phrase and emphasizes the pomegranate with a large picture of the fruit.

The Supreme Court’s ruling reversed the lower courts’ decisions in favor of Coke, which were based on Coke’s defense that the label conforms to the Food and Drug Administration (FDA) rules. The Supreme Court’s reversal is important because it sets a precedent that a food label could technically comply with FDA rules but still be misleading to the consumer demographic. Justice Kennedy wrote that the law governing regulation of food and drug labels does not preclude a competitor from suing under the Lanham Act for unfair competition based on false or misleading claims. The Court also ruled that federal food and trademark laws complement each other in the regulation of misleading labels – they are not interpreted as one or the other.

This decision is interesting as it could open the door to more litigation by competitors against food makers for deceptive labeling. On an interesting note, the federal government has filed a separate and unrelated deceptive advertising case against Pom for claiming that its pomegranate juice can treat or prevent heart disease, prostate cancer, and other illnesses. The Federal Trade Commission’s action is pending at the U.S. Court of Appeals for the D.C. Circuit.]

David Lilenfeld

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Keep This in Mind Next Time You Leave an Online Review

Often when we experience bad service, our first inclination is to leave a negative review for the company on a website such as Amazon, Yelp, or TripAdvisor. However, recently some companies have begun threatening to bring suits for defamation against customers who leave negative reviews about their businesses.

What is even more concerning is that a Virginia court recently ordered Yelp to turn over the names of seven people who left negative reviews for a carpet cleaning company. One of the main reasons people feel comfortable speaking openly online is that their identities are protected by user names, which is now compromised by rulings such as this one.

So what is the best way to protect yourself? You must act in good faith and not lie in your review. Truth is a defense against libel (the defamation of a party in written form). To prove a case of libel in court, a plaintiff (here, the company) must prove that the defendant (here, the individual) made a statement that the defendant knew to be false, injurious, and unprivileged. In basic non-legal terms, this means that, as long as you tell the truth in your review, you are probably safe.

David Lilenfeld

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Lilenfeld PC attends IP Section’s CLE and 50th Anniversary Event

On May 22, 2014, we attended a CLE called “Policing and Enforcing Intellectual Property in Social Media” hosted by the IP Section of the State Bar of Georgia. The panel featured Lindsey Corbin (Z5 Consulting), Bakari Brock (Lyft, formerly Twitter, Google, and YouTube), and Todd Williams (Turner Broadcasting). It was moderated by Joe Staley (Kids II, Inc.) and Matt Smith (Innovolt).

The panelists spoke on a variety of issues, including protection in foreign countries, gTLD’s, and  how the law is trying to catch up to how quickly technology is changing. It was a great event followed by the IP Section’s 50th Anniversary Event.pic for blog entry

David M. Lilenfeld

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USPTO Proposes Reduction in Trademark Fees

We have good news for current and future clients! The United States Patent and Trademark Office (USPTO) has released proposed reductions for the fees it charges to file trademark applications and renewals. As we have discussed in previous blog entries, there are numerous advantages to filing for federal registration of your trademark. Some of these include: public notice of your claim of ownership of the mark; a legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide; and the ability to bring an action concerning the mark in federal court.

The USPTO issued a notice of proposed rulemaking on May 9, 2014. In that notice, the USPTO proposed reducing its trademark fees from $325 to $275 for most applications. There are two conditions that must be met. First, the applicant must use the USPTO’s Trademark Electronic Application System (TEAS). Second, the applicant must agree to receive all correspondence by e-mail, and use TEAS to file Office Action Responses and all other documents through TEAS as well. This option would be known as a TEAS Reduced Fee application.

The fee for a TEAS Plus application is also proposed to be reduced from $275 to $225 if both of the above conditions are met. A TEAS Plus application is one in which an applicant selects its description of goods/services from the USPTO’s Acceptable Identification of Goods and Services Manual, rather than entering free-form text.

Lastly, the USPTO’s notice proposed reducing the fee from $400 to $300 per class for renewal of an existing registration.

We hope this motivates our readers to file trademark applications for their company names, product or service names, and logos. Remember, you must have a federal registration to sue another party in federal court for trademark infringement. Please contactDavid Lilenfeld at David@lilenfeldpc.com or Sonia Lakhany at Sonia@lilenfeldpc.com if you would like more information on registering a trademark.

David M. Lilenfeld

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Happy Birthday, Batman: 75 Years of the Batman Trademarks

With the recent announcement of Ben Affleck being cast as Superman in the upcoming sequel to “Man of Steel”, we thought it would be the perfect time to recognize Batman and celebrate his 75th birthday this year. This widely known comic character has become an important part of our pop culture history and, for the first time on the big screen, will appear next to Superman, who will be played again by Henry Cavill. The much-anticipated film is scheduled for release in May 2016.

In the meantime, from a trademark perspective, the graphic below shows an interesting and fun evolution of the Batman logos over the last 75 years. Happy Birthday, Batman!

(Of course, being intellectual property lawyers, we must say thank you to Happy Birthday Roboto for the graphic).

batman logo

David M. Lilenfeld

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Corporate Names versus Trademarks

Even savvy attorneys get confused between a corporate name and a trademark. We thought we would lend a helping hand and clarify the differences.

Let’s start with corporate names. A corporate name is the name of the actual business entity – the name that gets registered with the Secretary of State at the time of incorporation. This is the company’s “official” name. Incorporating with a Secretary of State gives the company the right to use its name for official purposes, such as banking, on legal documents, and as a tax payer.

A trademark, on the other hand, is a particular word, phrase, symbol, design, or a combination thereof (such as a logo) that is the name shown to the public – the public-facing name the company uses in the stream of commerce to identify its goods or services. Trademark registrations are applied for through the United States Patent and Trademark Office (for federal registration), state offices (for state registration), or internationally.

An easy illustration of the difference between corporate names and trademarks is TJ Maxx. TJ Maxx is a trademark for retail department store services, but that is not its corporate name. The corporate name is TJX Operating Companies, Inc., which most of us do not recognize.

A common misconception – among both business owners and lawyers – is that when a Secretary of State allows a company to incorporate with a particular name, the company thereby has permission to use that corporate name as a trademark. The truth is that when incorporation is allowed with a certain name, this does not necessarily mean use of that corporate name does not infringe someone else’s trademark.

Following the example above, let’s say you or your client wanted to incorporate the name TJ Maximum, Inc. A secretary of state is likely to allow that. However, if you or your client began using that name in connection with retail clothing, the owner of the TJ Maxx trademark would likely have a strong trademark infringement claim.  The fact that a Secretary of State allowed incorporation with the name TJ Maximum, Inc. is not a defense to trademark infringement.

The bottom line is that corporate names and trademarks are two different things and shouldn’t be confused.  If you have any questions, please contact David Lilenfeld at David@lilenfeldpc.com or Sonia Lakhany at Sonia@lilenfeldpc.com.

David Lilenfeld

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Recent Eleventh Circuit decision mirrors State of Washington case on IP addresses

In a recent blog post (see here), I discussed a recent case in the State of Washington where the judge ruled that an IP address connected with infringing activity does not prove that an account holder is guilty of copyright infringement.  The judge further ruled that evidence consisting only of an IP address is insufficient to plead a claim of copyright infringement.

I had stated that Lilenfeld PC would be keeping an eye on this issue for precedent in the Eleventh Circuit and it arose just a couple of weeks ago in Florida. Malibu Media, a pornography distributor that filed more than 1,000 suits in 2013 alone, asked the judge to issue a subpoena against a suspected pirate known only by an IP address. The user, “174.61.81.171,” was accused of sharing Malibu Media content without the company’s permission. In response to the judge inquiring how Malibu Media obtained the evidence against 174.61.81.171, the company explained that its software was able to determine that the downloader was in at a residential address and not using a WiFi hotspot. This meant that the infringer had to be guilty of downloading the content. However, the judge’s perspective was that even if the company could prove that a specific internet connection was used, it would not be definitive as to who was sitting at the keyboard. Dismissing the case, the judge wrote, “There is nothing that links the IP address location to the identity of the person actually downloading and viewing Plaintiff’s videos, and establishing whether that person lives in this district.”

While this case does not necessarily mean all IP address cases will be ruled similarly, it is certainly the latest in a trend shifting toward more stringent requirements in piracy cases. Regardless, even if their suits are ultimately dismissed, companies like Malibu Media are intimidating people into paying thousands of dollars, even if they’re innocent of copying or uploading movies illegally. A digital rights group called Electronic Frontier Foundation explained that these lawsuits often list embarrassing titles, which then become public record. Copies of the court filings are sent to the subscriber along with a demand for money, to which most people’s response is to pay, rather than be elect to pay named in a public lawsuit as a habitual user of hardcore porn.

David M. Lilenfeld

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Example of possible trademark infringement at a local Atlanta grocery store

As consumers with busy lives, we often hastily do our grocery shopping and don’t think much of products we don’t use or purchase. As a trademark attorney, I am consistently interested in blatant examples of trademark infringement I come across and thought to share one on today’s blog post.

The photo below was taken recently at a local grocery store here in Atlanta. It looks rather similar to a popular brand we all know (second picture), doesn’t it? The familiar bee was even on the side of the box. Just goes to show that the standard for trademark infringement (which is likelihood of confusion) can be as simple as a consumer shopping for cereal and doing a double-take when reaching for a box before realizing it’s the wrong product.

 

photo (26)

cheerios

David Lilenfeld

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The “Good Times, Bad Times” of Works Made-for-Hire

Have you ever hired anyone to create something for you or your business? If so, read on. Under United States law in the majority of instances, the person who created a work is its author for purposes of copyright protection. However, one exception is when an independent contractor is specially ordered or commissioned to produce a work under a properly drafted written agreement. This specific circumstance constitutes a work made-for-hire, where the person or entity who hired the independent contractor (not the independent contractor herself) is then the owner of the work.

Of course, determining whether a work is one made for hire can be tricky. The first step is to establish whether the person who prepared the work is an employee or an independent contractor. If it was an independent contractor, then under Section 101 of the Copyright Act, the work must have been specially ordered or commissioned for use and there must have been an express written agreement between the parties that the work was made-for-hire. Such an agreement is typically called a “work-for-hire” agreement.

An example of the complications with works made-for-hire is the recent suicide of Mick Jagger’s girlfriend, L’Wren Scott, which resurfaced Jagger’s longstanding feud with artist Ruby Mazur. In the 1970’s, Jagger paid Mazur $10,000 for Mazur to create the original “mouth and tongue” artwork for the Rolling Stones’s “Tumbling Dice” album. Since then, the image has become an iconic piece and one of the most recognizable logos in pop culture. Perhaps taking things too far, Mazur said (referencing Scott’s suicide), “I feel for [L’wren]…Had I not been as strong, with great friends, I might have hung myself too.”

Mazur stated he asked Jagger repeatedly to give him trademark rights in order to reap fair earnings for his work, but Jagger refused. Indeed, Mazur tried to sue Jagger for trademark infringement in the 1990’s, but too much time had elapsed. Mazur now claims that the experience drove him to depression and suicidal thoughts.

While this was an unfortunate outcome for Mazur, Jagger structured the deal correctly, having an express written agreement with Mazur to create the image and paying Mazur for his work. Mazur was an independent contractor and the transaction was a work made-for-hire squarely within the Copyright Act’s definition.

David Lilenfeld

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