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Ninth Circuit Reinstates Levi’s Trademark Suit Against Abercrombie & Fitch.

The Ninth Circuit no longer requires that marks be identical or nearly identical for federal dilution claim.  Here is the opinion.

Levi Strauss & Co. filed a federal trademark dilution claim against Abercrombie & Fitch for infringing Levi’s back pocket stitch design for Levi jeans.  The case made it to a jury trial during which the trial court (Northern District of California) asked the jury to make advisory rulings on fact issues, including whether the two designs were “identical or nearly identical.”  The jury answered that they were neither, from which the District Court entered judgment in A&F’s favor on the dilution claim.  Levi appealed.

The Ninth Circuit observed that the “identical or nearly identical” standard has origins in state law and was incongruous with the federal Trademark Dilution Revision Act’s (15 U.S.C. § 1125(c)) scheme.  The TDRA allows for relief when there is similarity between defendant’s mark and plaintiff’s famous mark which impairs the distinctiveness of the famous mark.  Given that, the Court ruled that all three previously used dilution standards – identicalness, near identicalness and substantial similarity – were too strenuous under TDRA.

Now, at least in the Ninth Circuit, a TDRA plaintiff must only show that the marks are similar and that the junior mark is likely to impair the distinctiveness of the famous mark.

David Lilenfeld

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Is Your Name Also a Trademark?

This blog entry was inspired by Sarah Palin and her daughter, Bristol.  No, I am not about to get political, so keep reading.  Instead, the famous Alaskans have given me an opportunity to write about trademark law’s treatment of  personal names.

Sarah and Bristol Palin have applied to the United States Patent and Trademark Office to register their names as trademarks.  Ms. Palin claims she uses SARAH PALIN in connection with providing “[i]nformation about political elections” and “motivational speaking services in the field of politics, culture, business and values.”  Bristol says she uses BRISTOL PALIN in connection with “motivational speaking services in the field of life choices.”  Here are their applications: Sarah/Bristol.

Will the Palins have a hard time obtaining these registrations — “you betcha”!

A person cannot register her name as a trademark without a showing of “secondary meaning.”  Secondary meaning is a high standard to meet.  In connection with personal names, it is achieved when the public has come to recognize the personal name as a symbol that identifies the service (or good), in contrast to identifying the person.

The mark SARAH PALIN is used to identify a person, not a service.  In other words, the public does not connect the name SARAH PALIN with a particular service, but rather with a particular person, at least not yet.  The same reasoning applies to Bristol, perhaps even more so since she does not have same level of notoriety as her mother.

Secondary meaning tends to grow out of a long association of the name with a particular business.  Secondary meaning requires that, in the public mind, the primary meaning of the name as a word identifying a person has been lost in favor of identifying the business.  Examples of personal names which have acquired secondary meaning – and therefore are protected as trademarks — are RONALD MCDONALD, HOWARD JOHNSON and, to a lesser extent, MARTHA STEWART. Indeed, it takes time before the name and the business become synonymous in the public mind.

So, if you hear a loud “doggone it” coming from Wasilla, that means the Palins just received a final refusal to register their names as trademarks.  It’s on the way.

David Lilenfeld

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Copyright Registrations – Do You Need ‘Em?

This is for non-lawyers and lawyers who do not practice in the area of intellectual property.  It is meant to correct a very common and damaging misconception about United States copyright law.  As an intellectual property litigator, I see this error frequently and, for those copyright owners who end-up having to deal with an infringer, it creates a serious problem.

Most of us understand that works gain the protection of U.S. copyright law when they are created and fixed in some tangible format.  This is accurate and important but, at the same time, a little bit misleading.  Creating and fixing your work affords you with rights, but  . . . and here is the key . . . you cannot enforce those rights without a copyright registration (A refusal from the Copyright Office to register will also suffice, although you will have to prove to the court that the Copyright Office’s refusal was improper).

In other words, you cannot bring a lawsuit under the U.S. Copyright Act until your work is registered or registration was refused.  If your work is infringed, you can rush to register it, but having waiting, you will likely have forfeited your right to recover money damages or attorney fees.

So, register your work and do so early.  Think of the registration as your key to the courtroom.

And, while on the topic, let’s quickly address another misconception.  There is no “poor man’s copyright.”  The practice of sending a copy of your own work to yourself and then relying on the date on the envelope gives no copyright protection.  Save your stamp!

David M. Lilenfeld

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