The photo of Piedmont Park on our “Team” page was taken by David Cole. The photo is being used under creative commons license, CC BY 3.0
The photo of Piedmont Park on our “Team” page was taken by David Cole. The photo is being used under creative commons license, CC BY 3.0
July 25, 2017
On July 18th, 2017, Lilenfeld PC, won a jury trial in a trademark infringement action. The trial was in the United States District Court for the Northern District of Georgia for Fronto King LLC, a marketer of whole tobacco leaves under the brand Fronto King. Fronto King sought an injunction and a monetary award against the Defendants (Five A Trading, Inc. d/b/a A to Z Wholesale and New Generation Imports, LLC), who used a product package design that was similar to the package design Fronto King began using years earlier.
David M. Lilenfeld and Kaitlyn A Haase conducted the two-day federal trial for Fronto King.
While the jury deliberated, Lilenfeld and team offered a settlement of $150,000 to the defense, in which no response was received. Less than 45 minutes later, the jury came back with a verdict.
Having found that there was a likelihood of confusion between Fronto King’s package design and the package design adopted by the Defendants, the jury awarded Fronto King $21,400 in damages plus disgorgement of Five A Trading’s $250,000 in profits.
From Fronto King’s perspective, the most important part of the trial’s outcome is that the Defendants can no longer use their confusingly similar packaging.
Here is our revised brochure for Lilenfeld PC, which discusses the Firm’s practice areas, attorneys and the founder’s philosophies when it comes to representation of clients in their intellectual property matters.
The Supreme Court of the United States tackled trademark tacking in a recent case titled Hana Financial, Inc. v. Hana Bank, 135 S. Ct. 907 (2015).
When a company changes its trademark (for a example a rebrand), a new trademark is introduced. But what if the company only makes modest changes to its existing brand or logo — is the updated version a new trademark or just a refreshed version of the old one?
The answer is provided by the principle of “trademark tacking,” which allows the company to “tack on” the time it used the former trademark to the new trademark. “Tacking on” is good for the trademark owner because its gives the company the benefit of the Date of First Use of the older trademark, instead of starting over with the new trademark.
The Supreme Court ruled that tacking is allowed when “two marks are so similar that consumers generally would regard them as essentially the same.” The Court explained that two trademark marks “may be tacked when the original and revised marks are ‘legal equivalents,’” meaning that the two trademarks “‘create the same, continuing commercial impression’ so that consumers ‘consider both as the same mark.’”
“The key take-away from this case, though,” said David Lilenfeld, founding partner of Lilenfeld PC, “is the Supreme Court’s ruling that at the trial court level, trademark tacking should be decided by the jury, not the judge.”
In early January 2016, the Supreme Court of the United States a writ of certiorari in a patent case, titled Cuozzo Speed v. Lee. In Cuozzo, is likely to have a major effect on Patent and Trademark Office’s post-grant patent proceedings. Two questions are presented to the Supreme Court:
No. 1. Does the Board have inviolate, unreviewable authority to initiate an IPR.
No. 2. Whether the Board, during those proceedings, may construe claims in an issued patent according to broadest reasonable interpretation or according to their plain and ordinary meaning.
Naruto, the macaque, is a pioneer to the animal world because he is the first animal to take a selfie. Dating back to 2011, on the Indonesian island of Sulawesi, Naruto snatched photographer’s, David Slater’s, camera and took a selfie. This selfie has stirred widespread debate over who owns the rights to this photograph. People for the Ethical Treatment of Animals (PETA) sued on Naruto’s behalf claiming ownership rights to the selfie. Slater, on the other hand, claimed ownership of the selfie because it was taken with his camera. U.S. District Judge William Orrick III ruled that copyright law does not extend its protection to animals. Nevertheless, this is a landmark case because for the first time in history an animal’s right to sue for property rights, as opposed to being labeled as property, has arisen.
PETA, on behalf of Naruto since monkeys do not have standing to bring a lawsuit let alone the ability to talk, sued Slater. The organization asserted Slater could not hold copyright in the selfie because he was not involved in its creation. PETA sought monetary damages, claiming all money will go to Naruto, and a ban on the sale of the selfie.
Slater alleged he has a copyright interest in the selfie. This nature photographer owned the camera that the monkey grabbed in order to take the selfie. Furthermore, Slater argued the photograph was a result of his artistic creativity as he deliberately left the remote trigger for the camera accessible to Naruto with the hope that the monkey would take a picture.
Copyright laws provide that if there is an author, there is a copyright. This poses a problem for Naruto because works created by a non-human are not subject to copyright. According to Clause 313.2 from the United States Copyright Office, “This office will not register works produced by nature, animals or plants.” This clause specifically lists “a photograph taken by a monkey” as an example of a work that is not registerable because it lacks human authorship. Naruto, being an animal, foreseeably had difficulty acquiring a copyright in his selfie even though he arguably is the author of the work. Despite our sympathy for Naruto, United States copyright laws would need to be revised in order for courts to lawfully rule in favor of Naruto.
The Supreme Court, in its 2006 decision in eBay Inc. v. MercExchange, L.L.C. (547 U.S. 388), rejected the general rule favoring the granting of permanent injunctions against patent infringement, instead holding that the traditional four-factor analysis for permanent injunctive relief applied in patent infringement cases.
Below you can view a panel discussion examining the after-effects of the eBay decision. It is moderated by patent infringement attorney and Lilenfeld PC founder David M. Lilenfeld. The panel also features Ronald T. Coleman Jr., of Parker Hudson Rainer & Dobbs; Ann G. Fort, of Sutherland; and Frank G. Smith III, of Alston & Bird.
In a recent decision, the Trademark Trial and Appeal Board (“the Board”) sustained two Oppositions to registration of the mark Miners baseball finding the mark likely to cause confusion with an identical, previously registered trademark. The Applicant, a minor league baseball team in Marion, Illinois, plays in the Frontier League which consists of teams from six Midwestern states, including Illinois and Missouri. The Applicant applied to register the mark MINERS for use in connection with printed materials and “professional baseball imprinted clothing.” However, the mark was already registered and used by the University of Texas at El Paso for printed programs and college imprinted clothing. After evaluating the oppositions, and despite the University of Texas’s lack of a baseball team, the Board concluded that the minor league team’s use of the mark MINERS would likely be confused with the registered mark MINERS owned by the University of Texas. .
While the University of Texas at El Paso no longer fields a baseball team, it still makes good use of the mark MINERS though a licensing agreement with Missouri S&T. The Missouri S&T baseball team operates under the mark, and the University of Texas allows Missouri S&T to use the mark for college imprinted goods and entertainment services in seven Midwestern states, including Missouri and Illinois.
In analyzing the marks, the Board found that the minor league team’s mark MINERS was similar in sound, appearance, meaning and commercial impression to the University of Texas’s mark MINERS.
No shock there: it’s the same word.
The real issue before the Board was whether the goods and trade channels were similar enough to support a finding of likelihood of confusion as to the source of the goods.
When examining the goods themselves, the Board found that the University of Texas’s “media guides” bearing the mark MINERS were legally equivalent to the minor league team’s use of the mark in “printed guides in the field of professional baseball for media use.” The Board also found no distinction between the minor league team’s use of the mark for professional baseball imprinted clothing and Missouri S&T’s licensed use of the mark for college imprinted goods. The minor league team argued that “college imprinted” clothing was distinguishable from its “professional baseball imprinted” clothing because college clothing should bear the school name, be printed in school colors, or be accompanied by a sticker stating “Officially Licensed Collegiate Product.” But the Board rejected this argument, finding that the terms “college imprinted” and “professional baseball imprinted” did not distinguish the goods in any way. The Board noted that different types of imprinting, college or professional, could result in identical goods imprinted with identical marks.
Finally, the Board examined the trade channels through which the goods traveled to consumers. In so doing, the Board presumed that both the minor league and the University of Texas’s printed guides travel through similar trade channels to a similar class of consumers because the goods are so similar. The Board further reasoned that even if the word “collegiate” modified “media guides” in the University of Texas’s registration, the media guides would still be distributed in the same trade channels as the minor league team’s “printed guides in the field of professional baseball for media use.” As for the clothing, the minor league team argued that clothing items bearing the mark traveled through distinct trade channels to professional baseball fans sincethe minor league team’s clothing is sold primarily to Frontier League fans while the University of Texas’s clothing is often sold to fans in the Conference USA region. However, the Board found that no such restrictions on trade channels existed in the trademark applications and registrations.
Ultimately, the Board held that consumers familiar with the University of Texas’s mark MINERS would be likely to believe that printed goods or clothing bearing the minor league team’s mark MINERS originated from or are somehow associated with the same entity, even though the University’s goods are associated with college baseball while the minor league team’s goods are associated with professional baseball. The University of Texas’s opposition to the mark was sustained, and the minor league team’s registration was refused.
Although the NCAA prevents college athletes from profiting from their athletic success, an increasing number of college football stars are preparing for future deals by filing trademarks now. Gaining legal ownership of their names, nicknames, and catch phrases paves the way for licensing deals down the road. Trademark ownership also prevents others from exploiting and capitalizing on a young player’s fame.
For example, Ohio State running back Ezekiel Elliott recently filed an application with the U.S. Patent and Trademark Office to register his nicknames “Zeke” and “Eze” as trademarks for merchandise. Mississippi State quarterback Dak Prescott is also attempting to obtain trademark rights in his name as well as the phrases “Dak Attack” and “Who Dak.”
Professional players routinely trademark their names and fan phrases, and now, some universities and lawyers are encouraging college athletes to capitalize in the same way. By filing for a trademark registration, college players not only prepare for merchandising when they go pro, but also protect themselves against potential trademark poachers. Additionally, anyone can apply for a trademark, and if an athlete fails to secure legal ownership over his trademark(s), someone else might. Last year, Dak Prescott faced this issue when he discovered someone selling t-shirts with his name on them. In response, he secured a trademark and sued the t-shirt maker, who agreed to stop.
Critics argue that allowing college athletes to secure trademarks blurs the line between professional and amateur sports, and they may have a point. The line is increasingly becoming less clear, especially after a recent court ruling entitling college athletes to compensation when someone uses their likeness commercially. In the judgment, which was entered last fall, a U.S. District Judge ruled in favor of UCLA basketball star Ed O’Bannon and 19 others who sued the NCAA, allowing college players to put money received from television contracts into a trust to be paid to them after they leave school. The NCAA has appealed the decision.
The NCAA still prevents players from receiving commercial payment from their athletic performance, but by trademarking now, college players are certainly becoming savvier about their future interests and their earning potential.
For those interested in a full review of their trademarks, a trademark audit is the best start. Our trademark audits offer many benefits, including:
Comprehensive inventory of your marks. Our team will take stock of your company’s house marks, word marks, slogans/taglines, logos, and non-traditional marks.
Protection analysis. We’ll check for marks that need to be registered (or need their registrations renewed). In addition, if we find you are maintaining registration for marks that aren’t being used, we’ll let you know. This can save you from paying unnecessary renewal fees and might create an opportunity for you to license a mark.
Examination of usage. Even if your marks are adequately protected, it’s still important to use the proper trademark symbols on your company’s materials (TM, SM, ®). Trademark symbols can potentially deter third parties from using your marks. In some situations, they can also prevent marks from becoming legally generic. Lilenfeld PC’s attorneys will fully review your company’s symbol usage as part of your audit.
Search for new revenue streams. There may even be opportunities to increase revenue by licensing your company’s trademarks to third parties. Our team can search for these opportunities, and we can also guide you through the licensing process if necessary.
Want to learn more about any of our trademark protection services? Just contact our team at (404) 201-2520. We would be happy to speak with you.
Chicago jurors awarded the basketball legend $8.9 million on August 21, 2015 in a lawsuit over the Illinois Right of Publicity Act. The case involved the now defunct grocery store, Dominick’s Finer Foods (“Dominick’s”), which used Jordan’s name without his permission in a steak ad in 2009. Surprisingly, the case only reached trial this August, after prolonged litigation and reassignment to several judges. After examining the facts and allegations of the case, Northern District of Illinois Judge Milton I. Shadur ruled that Dominick’s violated Jordan’s right of publicity, and a jury trial on damages followed.
The right of publicity prohibits use of an individual’s identity, including his name and likeness, for commercial purposes without the individual’s consent. The right of publicity is usually protected by state statute; however, only about fifty percent of states have statutes protecting the right. Right of publicity statutes generally protect an individual’s identity during his lifetime and often extend that protection for a number of years after his death.
In an oral ruling, Judge Shadur held that Dominick’s misappropriated Jordan’s identity by featuring his name and jersey number in an ad published in a Sports Illustrated Commemorative Issue. Sports Illustrated provided the ad space for free in exchange for a premium display of the issue in the grocery stores. Below Jordan’s jersey, the ad read “you are a cut above” and featured a $2-off coupon for steak. Only two coupons were ever redeemed.
Since Judge Shadur found Dominick’s liable for misappropriation of Jordan’s likeness, the jury trial focused solely on damages. The court instructed the jury that damages should be measured by the fair market value of the plaintiff’s identity. Fair market value can be calculated based on how much the celebrity would have received for a comparable use of his identity.
Evidence of Jordan’s fair market value included the $480 million he earned from Nike between 2000-2012. Jordan argued that his identity was worth $10 million, which Judge Shadur openly characterized as greedy. Because of these comments, Jordan argued that Judge Shadur was biased, and the judge recused himself from the case before trial. Dominick’s attorneys contended that Jordan should receive no more than $126,900.
After six hours of deliberation, the jury awarded Jordan $8.9 million in damages. The jury based their award on testimony from both Jordan and his sports economist, who testified that Jordan’s fair market value for the ad was $10 million. Jordan has stated that the award will be given to charities in Chicago.
Under Armour took the right step toward protecting the new Jordan Spieth logo by filing several trademark registration applications with the United States Patent and Trademark Office.
The logo consists of two “J”s with an “S” residing in the negative space between the two “J”s. Under Armour says in its applications that it intends to use the Spieth logo on footwear, golf gloves, headwear, eyewear, jackets and pants.
Under Armour signed Spieth in January 2013, when he was only 19 years old. Spieth reportedly had two years remaining on his Under Armour deal, but the parties negotiated an extension, tying Spieth to the fast-growing brand until 2025. If his current success continues, he’ll surely be one of the highest-paid golfers in the world, especially since he likely receives royalties from sales of his own gear. Filing a trademark registration application could be the glue that holds things together.
In a recent decision, the Trademark Trial and Appeal Board (the “TTAB”) found that the clothing mark GOLF SPORT and its “golfer” design is confusingly similar to the GOLFINO trademark and design for clothing. You can access the full opinion for this decision here (http://ttabvue.uspto.gov/ttabvue/ttabvue-91183317-OPP-19.pdf) and commentary here (TTAB Blog: http://thettablog.blogspot.com/2010/07/ttab-finds-golf-sport-and-golfino-both.html).
Gady Desler (the “Applicant”) applied for a trademark registration for GOLF SPORT identifying the goods as “dress shirts; golf shirts; polo shirts; shirts; short- sleeved or long-sleeved t-shirts; short-sleeved shirts; sport shirts.”
Thereafter, Golfino AG (the “Opposer”) filed an opposition to the Applicant’s registration on the ground that the trademark resembled the GOLFINO trade name, and previously registered GOLFINO trademarks. Opposer stated that allowing Applicant’s mark to obtain registration would likely cause confusion with its currently registered marks.
The Board’s main considerations in determining the likelihood of confusion were similarities between the marks and similarities between the goods.
For goods, the TTAB looked at the channels of trade and class of purchasers. The Board noted that the goods did not have to be identical for there to be a likelihood of confusion:
“The goods need not be identical or directly competitive in order for there to be a likelihood of confusion. Rather, the respective goods need only be related in some manner or the conditions surrounding their marketing be such that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods come from a common source.”
Because the Applicant’s listed goods of “golf shirts” and “shirts” were identical to the Opposer’s registered goods, the Board found that the goods of both the Applicant and the Opposer would be “sold in the same channel of trade and will be bought by the same class of purchasers.”
Additionally, due to Applicant’s admission in the record, the Opposer did not have to prove where the goods would be sold or that the goods would be sold in the same channel of trade (golf stores, golf pro shops, general merchandise stores, and department stores).
After concluding that the DuPont factors related to similarity of goods, similarity of the channels of trade, and similarity of the class of purchasers favored a finding of likelihood of confusion, the Board went on to consider the conditions of sale.
When analyzing the conditions of sale, the Board found that the risk of confusion increased. Because the Applicant’s goods did not include any prices the Board had to consider that the clothing would include inexpensive as well as expensive items. Inexpensive items require less purchaser sophistication and the exercise of a smaller degree of care when purchasing, which increases the likelihood of consumer confusion. Therefore, this factor also weighed in favor of the Opposer.
Lastly, the TTAB considered the similarity or dissimilarity of the marks in their entirety. The Board noted that when the goods and services are identical “the degree of similarity necessary to support a conclusion of likely confusion declines.”
The Board found through the Applicant’s admissions that the marks were “virtually identical” in appearance, sound, and meaning. The Applicant’s “Golfer” design was found to be descriptive and “predominated over the descriptive wording GOLF SPORT.” The Board also found that GOLF SPORT and GOLFINO were similar in sound and connotation because they both begin with the word GOLF.
Thus, after analyzing the DuPont factors, the Board ultimately found in favor of the Opposer. The Board agreed that the Opposer had priority and that the Applicant’s GOLF SPORT mark and design would likely be confused with the Opposer’s prior GOLFINO trademark for the same goods.
In a recent decision (http://ttabvue.uspto.gov/ttabvue/ttabvue-77836610-EXA-21.pdf) The Trademark Trial and Appeal Board (the “Board”) reversed a refusal to register TENNIS INDUSTRY ASSOCIATION on the basis of genericness but affirmed the refusal after finding that the Applicant had failed to prove acquired distinctiveness.
Tennis Industry Assn. (the “Applicant”) filed an application to register TENNIS INDUSTRY ASSOCIATION as a trademark for the following good and services:
“association services, namely, promoting the interests of tennis facilities, tennis manufacturers, tennis retailers and tennis court contractors; providing market research services to track the economic vitality of the tennis industry”
Initially the Trademark Examiner (the “Examiner”) refused the registration under Section 2(e)(1) stating that the proposed trademark was merely descriptive of the services but, in a subsequent action, rejected the Applicant’s showing of acquired distinctiveness stating that the trademark was actually generic.
The Applicant filed a brief arguing that the Examiner should have raised the issue of genericness initially. The Board held that the rules do not permit an initial refusal on the ground of genericness quoting the rule that “even if it appears the mark is generic, the proper basis for the initial refusal is Section 2(e)(1).” Further, the Board noted that only when the Applicant raised the issue of proving distinctiveness in their response did the Examiner come back and say it was generic.
Merely Distinctive, Not Generic
The two issues on appeal were whether the mark TENNIS INDUSTRY ASSOCIATION was generic in relation to the goods and services and whether a Section 2(f) showing of acquired distinctiveness was satisfied.
The Board noted that the Applicant had already conceded that the proposed mark is descriptive by seeking registration pursuant to Section 2(f).
“A mark is a generic name if it refers to the class or category of goods and/or services with which it is used.” The Board looked to the public’s recognition of the mark in order to determine genericness. The Board used the Applicant’s recitation of services and sought to find “whether the designation TENNIS INDUSTRY ASSOCIATION is understood by the relevant purchasing public primarily to refer to that genus of services.” It defined the “relevant purchasing public” as “those whose interests are promoted by the applicant’s identified services.”
Because the proposed mark is a phrase, the Board followed the court’s analysis in In re The Am. Fertility Society:
“Where the proposed mark is a phrase, the board cannot simply site definitions and generic uses of the constituent terms of a mark; it must conduct an inquiry into the meaning of the disputed phrase as a whole.”
The Board looked at the record of evidence for genericness submitted by the Examiner consisting of five examples of “tennis industry association” used in all lower case and where no particular source was identified. The Examiner also recorded third-party registrations that include the terms INDUSRTY and ASSOCIATION in which those terms are disclaimed in the registered marks.
The Board found that the Office had not shown by clear and convincing evidence that TENNIS INDUSTRY ASSOCIATION is generic for the services. The Board reasoned that even within the Examiner’s evidence, it is not clear that the mark without capitalization is intended to indicate source. The Board also acknowledged that one of the articles the examiner offered was actually a reference to the Applicant.
The Board ended stating that there is a difference between an apt name and a generic name stating that the Examiner’s evidence shows that TENNIS INDUSTRY ASSOCIATION is an apt name for an association of tennis industry members but not that the mark is generic for the recited associated services.”
No Acquired Distinctiveness
Unlike the determination for genericness, the Applicant had the burden of establishing acquired distinctiveness for its descriptive mark. To prove acquired distinction the Applicant submitted a press release, an annual report, and 500 articles in which the Applicant was identified as TENNIS INDUSTRY ASSOCIATION. The Applicant also submitted evidence of almost $500,000 spent in promotional expenses and $16.5 million in promotion for its grassroots tennis program.
The Board found the evidence did not provide proof of public recognition of TENNIS INDUSTRY ASSOCIATION as a source-identifier reasoning that sheer numbers alone are not necessarily enough to prove secondary meaning. The Board found that the articles were not very compelling because many of them were duplicates and outdated and that there was little evidence that “consumers to whom applicant’s services are directed view TENNIS INDUSTRY ASSOCIATION as a distinctive source indicator.”
In conclusion, although the Board reversed the Examiner’s refusal to register TENNIS INDUSTRY ASSOCIATION on the ground of genericness, it did find that the proposed mark was merely descriptive and affirmed the refusal on the ground that the Applicant failed to show acquired distinctiveness.
On March 13, 2013, the United States, under the America Invents Act, moved from a first-to-invent patent system to a first-to-file system. In other words, the first person to file a patent application will have priority over another, regardless of who was the first inventor. Clearly, now more than ever, there is a great importance in getting your patent application filed as soon as your invention is ready to be filed. A great mechanism to do this is through the use of provisional patent applications.
A provisional patent application will never mature into a patent. Instead, a follow up non-provisional patent application will need to be filed based on the provisional, or the provisional itself can be converted to a non-provisional patent application. So if you still need to file a non-provisional patent application, why bother with a provisional?
One of the biggest values in filing a provisional patent application is gaining the benefit of an earlier filing date. The provisional patent application gets your foot in the door so to speak without some of the formalities required with a non-provisional patent application. The early filing date can put you in favorable position in relation to your competitors or others in general who might be working on a similar invention.
Another reason provisional patent applications can be a good idea is due to cost. The USPTO filing fee for a provisional patent application is, if you qualify for micro-entity status, as low as $65 (versus a $400 filing fee for a non-provisional patent application). Moreover, the cost of preparation of a provisional is generally much less due to the less formal filing requirements when compared to a non-provisional. For example, a provisional application does not require patent claims.
A provisional patent application also allows you to reveal your invention to the public without fear of loss of your patent rights. Without such filing, a public disclosure can result in the loss of your patent rights in the United States. However, in some situation where a public disclosure has already been made, you may have a one-year grace period to file a patent application depending on the circumstances. Many times, the Inventor is unaware of these public disclosure limitations, and in these situations, where that one-year grace period is approaching, filing a provisional patent application may be the best choice due to time constraints. Unfortunately, public disclosures will most certainly result in the loss of your patent rights in many foreign countries.
Upon filing of the provisional application, you are also free to conduct marketing campaigns and get a sense of what the demand for your invention may be. This can also help to develop cash inflow to fund down-stream patent related costs, not to mention cash to further develop your invention. You may also, at this point label your invention as “patent pending.”
Another benefit of filing a provisional patent application is that you can combine multiple provisional into one non-provisional application. This is useful in situations where you file a first provisional application and then you subsequently develop another variation or embodiment that was not disclosed in the original. You can quickly file another provisional application to protect the new embodiment, and as long as you filed the new provisional application before the one-year filing date of the first provisional application, you can combine them into one all-encompassing non-provisional patent application.
Still, there are some important caveats here. Importantly, just because the provisional application filing requirements are less formal does not mean that the invention disclosure can be incomplete. You must completely describe your invention as it stands at the time in the provisional application. Put another way, a provisional patent application is only as good as the level of detail of the disclosure found within. A poorly written provisional application can do more harm than good.
It is also of note that a provisional patent application has a lifespan of 12 months from the filing date. In order to take advantage of the provisional application filing date, you must file a non-provisional patent application based off of the provisional application before the 12-month anniversary, after which it will become abandoned.
Whether or not you file a provisional or non-provisional patent application is up to you. As you can see, there are many benefits to in using provisional patent applications.
In a recent decision, the Trademark Trial and Appeal Board (the “TTAB”) affirmed a refusal to register GAME FACE for sports masks after finding that the trademark is likely to be confused with the registered GAME FACE marks used with paintball masks.
Figure 1: Applicant’s Sports Mask
Markwort Sporting Goods Company (the “Applicant”) filed an application to register the trademark GAME FACE for use on sports face masks for baseball, softball, soccer, flag football, lacrosse and field hockey.
Initially the Trademark Office refused registration on the ground that the mark was confusingly similar to a trademark that had already been registered (the “Registrant”).
The Registrant used the GAME FACE trademark in connection with “paintball sporting articles, namely protective masks”. However, the Applicant’s application did not list paintball as one of the sports and specifically noted that its facemask is “incapable of protecting the eyes from liquid contaminates as in paintball activities”.
Figure 2: Registrant’s Paintball Mask
The Trademark Office used webpages from three major sporting goods stores as evidence that the marks are likely to cause confusion:
“A purchaser who encounters the Applicant’s GAME FACE protective mask would also encounter the Registrant’s GAME FACE protective mask in the same store, leading him to be confused into believe the two products emanate from the same source.” The Trademark Office asserted “the goods are similar because they are used in the same way and have the same purpose”. The Board agreed and focused on the fact that both the Applicant and the Registrant’s goods have the same purpose of protecting the face by preventing balls from causing injury.
Applicant argued that its sports masks are different because the masks do not prevent liquids or paintballs from striking the face. Applicant also refuted the use of the web pages as evidence of related trade channels.
The Trademark Trial and Appeal Board held that the Trademark Office had not established that the trade channels were related, and that the webpages were not persuasive evidence. The Board reasoned that there is no evidence that “such goods are ever located in the same section of the store or near one another” and that “the mere fact goods can be found in the same stores of a large retailer does not mean the goods are related”.
Although the Board rejected the webpages as evidence, it found that “a consumer who has a lacrosse mask and then is considering a paintball mask would likely consider the goods as emanating from the same source even if they are offered for sale in different sections of the same store or on different web pages”.
For the Board, the only necessary determination was whether a “viable relationship” existed between the applicant’s sports mask and the registrant’s paintball mask. “Where at least one of the cited marks is identical to the applicant’s mark, in order to find the goods related, there need only be a viable relationship between the respective goods”. In this case, the Board concluded the viable relationship requirement was satisfied.
It’s worth noting that the TTAB also disagreed that GAME FACE is a weak mark when applied to the goods involved. The Board also disagreed that consumers would take heightened care in purchasing the masks, stating the face masks were not expensive enough to justify heightened care.
Due to the “identical function” of the applicant’s sports mask and the registrant’s paintball mask, the TTAB affirmed the refusal to register applicant’s mark GAME FACE for sports mask. You can read more about this decision and the opinion here.
Selecting and developing a strong trademark is often vital to the creation of a successful brand. A trademark identifies your business and allows purchasers to quickly connect your products or services to their source. A single word (e.g. Nike), symbol (e.g. McDonald’s Arch), color (e.g. Coca-Cola red), shape (e.g. iPod shape), sound (e.g. the NBC Chimes), or even smell, can enable a purchaser to identify the source of a product in just seconds. But choosing the right trademark can be an overwhelming task. The following six steps should provide a helpful list of things to consider when picking and registering a trademark.
1. Is a trademark right for you? Trademarks, copyrights, patents, and trade secrets are all different and unique forms of intellectual property. A trademark is often a brand name or logo that identifies the particular origin of goods or services. Since trademarks identify source, trademarks must be placed on or used in connection with the products or services they identify. For example, use of a domain name only as part of a web address does not qualify as source-indicating trademark use, but other prominent use of the mark, apart from the web address, near the goods or services, may qualify as trademark use.
2. Select a trademark with care. Not every mark may be registered and the strength of a trademark can vary widely. While most businesses want to explicitly identify their products or services (e.g. Fried Chicken Kitchen), words used to describe an entire category of goods or services are known as “generic” and cannot be registered. For that reason, when picking a trademark it is best to be creative. Before you file a trademark application you should consider: (1) whether the mark you want meets the guidelines for registration, and (2) how difficult it will be to protect your mark based on the strength of the mark selected.
3. Search the USPTO database. Before 100% committing to your trademark, search the USPTO database to see if anyone else has already registered the word, symbol, color, shape, sound, or smell you like. If other businesses have registered the same or similar marks for your goods or services, then there is strong chance your registration may be refused.
4. File online. The USPTO has an online system, the Trademark Electronic Application System (TEAS), which you can use to apply for your trademark. You can access the online application from the USPTO website. When filing your application, remember two things: (1) The processing fee is nonrefundable, so make sure you review everything before you press “submit”, and (2) all information included in your application will be publicly available, so you may want to stay away from including your home address.
5. Consider Hiring a Trademark Attorney. Selecting and registering a trademark is a complicated process, so you should certainly consider hiring an expert in the field. trademark attorneys have professional insight and experience, which will simplify the application process and can end up saving you time and money in the end. They can be particularly helpful during the trademark selection phase. So before you go too far, consider whether you should consult a trademark attorney. For more information on selecting a trademark attorney check out our blog post from January 19, 2015 “How to Choose a Trademark Attorney.”
6. Monitor Your Application. Once you file your application, it is important to check the status every 3-4 months and make sure you don’t miss a filing date. Applications may be monitored through the Trademark Status and Document Retrieval System (TSDR). Just plug in the mark, owner’s name, or serial number to look up your file and check for any updates.
A growing number of our clients come from the sporting goods industry.
Brands are critical to a business’ success in every industry, but especially with sporting goods. Strong brands in the sporting goods industry gain strong customer loyalty, which produces repeat buyers willing to pay premium prices. At the heart of branding is the complex world of trademark law.
A trademark is a symbol of the origin of a product, which enables consumers to recognize the source of the product they are considering buying. Trademarks can be a word (e.g., Adidas), a symbol (e.g., Nike swoosh), a number (e.g., No. 2), a color, a shape, a sound, or even a smell.
Buyers rely on trademarks as a quick and reliable guide to assure the quality they seek, and to distinguish between products offered by competing companies. Trademarks help companies build a reputation in the market and develop and retain a loyal clientele, by instilling consumer confidence and trust in the products they sell. The goodwill associated with a successful sporting brand can be a tremendous commercial asset.
The association of trademarks at sporting events can benefit the brand by appealing to the aspirations and emotions of sports fans. A well positioned brand will become a symbol of a specific sporting lifestyle. Thus the brand becomes a way to live, not just a product to buy.
Shame on the DOJ and the FDIC for forcing banks to stop servicing legitimate but politically-disfavored businesses. Thank you to Congress for putting an end to the DOJ’s Operation Choke Point, but it should not have happened in the first place.
In a 170-page ruling, the Trademark Office recently canceled the registration of the National Football League’s team, REDSKINS mark as disparaging to Native Americans.
The ruling should help educate the public that trademark rights are primarily based on use of a trademark, not on registration of a trademark. For that reason, you do not need a registration to enforce rights in a trademark, but you must use the mark. The decision does not mean that the team is required to change its name. Nor does it mean the NFL is unable to prevent others from making commercial use of the name.
The Trademark Office made this distinction clear at the outset, stating, “[t]his decision concerns only the statutory right to registration under Section 2(a). We lack statutory authority to issue rulings concerning the right to use trademarks.”
Owning a federal trademark registration has several benefits: nationwide constructive notice of rights; prima facie conclusive evidence of exclusive rights to use the mark for the identified goods or services; and the backing of the U.S. Customs and Border Protection minimize importation of counterfeit goods. However, if a registration is cancelled, common law trademark rights can be relied upon in the territories the trademark was actually used.
To determine whether an owner has common law rights in a trademark, courts not only require continuous use of the trademark, but also consider how widespread the distribution is and the extent of the public’s association with the trademark. An owner of common law rights – even one lacking a federal registration — can still sue for infringement in state or federal court and obtain both injunctive relief and monetary damages in appropriate cases.
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.
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.]
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.
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.
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.
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).
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.
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, “18.104.22.168,” 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 22.214.171.124, 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.
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.
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.
As trademark attorneys, we are often asked what the rationale behind the search process is and why we stress its importance prior to filing an application for registration. We thought it might be helpful to provide a short list of seven reasons why you should take the time to conduct a proper trademark search:
While search reports for a comprehensive search do cost a few hundred dollars, it is much better to spend a small amount of money up front than to potentially spend a lot of money later in litigation. See #2! Please contact David Lilenfeld or Sonia Lakhany for more information on trademark searching or clearance.
Often in copyright infringement cases, particularly those that deal with piracy, copyright owners seek to not only determine an Internet Protocol (IP) address, a numerical value that identifies a computer, behind the infringing activity, but also the actual, individual person behind the computer. The source for the identifying information is usually the Internet Service Provider (ISP), such as Comcast, AT&T, or RCN. Attorneys for copyright owners in these cases often serve subpoenas on the ISP to obtain the account holder’s name, address, and other contact information. Once the ISP responds to the subpoena, the copyright owners names those account holders personally in suits for infringement.
However, a recent copyright infringement case in the United Stated District Court for the Western District of Washington at Seattle may change that practice. This case addressed a claim of copyright infringement by the makers of the movie Elf-Man against hundreds of users pirating the firm using BitTorrent. The movie studio alleged that the IP address assigned to each alleged infringer shared a single pirated version of the film, stating that the defendants either downloaded the pirated film themselves or permitted, facilitated, or promoted the use of their Internet connections by others to download the film.
Ruling on a motion to dismiss by one of the defendants, the judge ruled that IP address evidence does not prove that an account holder is guilty of copyright infringement. The judge added that evidence consisting only of an IP address is insufficient to plead a claim of copyright infringement. Further, the judge stated, “[The movie studio] has actually alleged no more than that the named defendants purchased Internet access and failed to ensure that others did not use that access to download copyrighted material…While it is possible that the subscriber is the one who participated in the BitTorrent swarm, it is also possible that a family member, guest, or freeloader engaged in the infringing conduct.”
This decision has important implications for identifying future infringers, particularly for firms such as Lilenfeld PC, which focus only on intellectual property. It is something we will be keeping our eyes on for precedent in our home jurisdiction. If you have any questions about a potential copyright infringement claim, please contact David Lilenfeld or Sonia Lakhany.
On February 26, 2014, Lilenfeld PC Attorney Sonia Lakhany spoke on a panel of small- and medium-sized firm lawyers at Emory Law School. The event, hosted by the Emory Center for Professional Development & Career Strategy, discussed various options for a job search outside of the on-campus interviewing process.
Sonia shared her job search as a 1L that turned into a 2L summer position, as well as her post-graduate experiences working in litigation. The other panelists were Randy New (Kitchens New Cleghorn, LLC), Melissa Perignat (Holt Ney Zatcoff & Wasserman, LLP), and Taylor Statfeld (Emory ‘14L). Other topics discussed by the group included items to highlight on a resume, how to take the initiative, and strategies to secure a job offer as an intern.
It was a pleasure for Sonia to meet Emory students and provide advice from the perspective of a recent alum. She looks forward to future events at the law school.
From the President: Voice Your Opposition to SB 209
Dear Bar Member,
The State Bar of Georgia urges you to contact your state House representative to voice your opposition to SB 209.
SB 209 provides immunity from UPL lawsuits for entities such as LegalZoom that provide online legal self-help products, so long as the website “conspicuously” disclaims that its products do not substitute for the advice of an attorney.
The Bar opposes this bill for three reasons:
(1) These websites warrant that their forms meet the specific legal requirements of the consumer’s state law. Whether or not they do is a legal interpretation best left to be determined by the finder of fact.
(2) Many of these websites offer “hands on attention from attorneys,” yet the consumer doesn’t know which states these attorneys are licensed from the face of website itself.
(3) The bill does not define what constitutes a “conspicuous” disclaimer and most disclaimers on these websites are in tiny print and difficult to find.
The State Bar of Georgia’s paramount principal is ensuring easy access to justice for all people, but SB 209 does not do so. In fact, it protects entities that may be impermissibly practicing law in this state and putting our citizens at risk of harm. Please contact your state House representative and urge them to vote NO on SB 209 on Thursday, March 6.
To find your representative, please click here. If you have any questions, please visit the State Bar’s legislative program page. If you have any questions related to the Bar’s legislative agenda, please contact Thomas Worthy, the State Bar of Georgia’s Director of Governmental Affairs, at firstname.lastname@example.org.
Charles L. Ruffin
President, State Bar of Georgia
Patent trolls have recently become more of a concern in the context of enforcing patents. A patent troll is a person or company who enforces patent rights against accused infringers in an attempt to collect licensing fees, but does not manufacture products or supply services based upon the patents in question. Needless to say, a need has arisen to combat patent trolls’ meritless assertions which are often in bad faith.
To that end, recent proposed legislation in Georgia, House Bill 809, serves to prevent bad faith assertions (BFA) of patent infringement. The legislation is split into two parts – factors that a court may consider as evidence of BFA and factors that a court may consider as evidence that an individual has not made a BFA.
With regard to the first category, here are the factors that can indicate a BFA:
With regard to the second category, here are the factors that can indicate there was not a BFA:
The legislation also discusses remedies and enforcement. For the full text of the legislation, click here.
Part Five of our Five-Part series (See Part 1, Part 2, Part 3, and Part 4) addresses another preventative measure trademark owners can take, which is to regularly review the Trademark Official Gazette (TMOG). The TMOG is published every Tuesday and is available on the United States Patent and Trademark Office (USPTO)’s website in both an electronically searchable format as well as in PDF format. Its main purpose is to provide bibliographic information and a drawing for each mark that has been published through the USPTO. Also included is a list of cancelled and renewed registrations for each mark.
You may be thinking, “What is the relevance of the TMOG to me as a trademark owner?” The answer is that it gives you notice of actions that are being taken by the USPTO with regard to certain marks that may be of interest to your portfolio, such as those that are confusingly similar to your marks. This allows you to take action early rather than be blindsided by the mark later on.
As discussed in Part Four, the publication of a mark in the TMOG allows for a period of opposition by any party who believes he or she will be damaged by the registration of the trademark. That party has 30 days to either file an opposition to the trademark with the Trademark Trial and Appeal Board (TTAB) or request an extension of time to file a notice of opposition. The cost to file a notice of opposition is $300 for each class of goods or services, but it is free to file a request an extension of time to file a notice of opposition.
The TMOG is an excellent source of information about marks as they become registered. Keeping abreast of these filings will arm you with the information you need to ensure that the marks you have worked so hard to maintain will stay protected. Contact David Lilenfeld or Sonia Lakhany at Lilenfeld PC to help you evaluate your options for opposing a mark, or for any other intellectual property need you may have.
Trouble may be on the horizon for the Washington Redskins trademark. In correspondence dated December 29, 2013, the United States Patent and Trademark Office (USPTO) rejected a request to register “Redskins Hog Rinds” as a trademark for a pork rind product. The USPTO stated, “Registration is refused because the applied-for mark REDSKINS HOG RINDS consists of or includes matter which may disparage or bring into contempt or disrepute persons, institutions, beliefs, or national symbols.” While the “Redskins Hog Rinds” product is not affiliated with the football team, the implications of the USPTO’s letter will certainly affect the team’s intellectual property protection, including its iconic REDSKIN trademark.
The USPTO initially held a hearing on the team’s nickname in March 2013, in the wake of a lawsuit led by Amanda Blackhorse, a Native American issues advocate, and members of the Oneida Indian Nation, all of whom criticize the use of the REDSKIN trademark. A representative of the Oneida Indian Nation, referring to the Redskins nickname as the “R-word”, stated that the term is a “dictionary defined slur designed to demean and dehumanize an entire group of people.”
Daniel Snyder, owner of the team, has refused to change the REDSKIN trademark despite a growing movement through media outlets and advocacy groups, defending it in a recent letter to fans as a “symbol of everything we stand for: strength, courage, pride, and respect — the same values we know guide Native Americans and which are embedded throughout their rich history as the original Americans.” The Oneida Indian Nation criticized Snyder’s letter as “an attempt to re-write history.”
What the USPTO ultimately decides regarding the Redskins mark remains to be seen and we will post an update once that the decision is released.
Once you have performed a thorough clearance search, registered your trademarks, and are actively managing your registrations, the next prudent step is to set up a trademark watch service. This is an imperative component of protecting your brand and something no trademark owner should neglect. Part Four of our Five-Part Series will provide an overview of what a watch service is and why you should consider one.
As you may know, the process of registration of a trademark includes a period of publication of the mark in the Trademark Official Gazette (TMOG) (to be discussed further in Part Five), allowing watch services to track trademark filings and inform trademark owners so they can act within the allotted opposition period. Essentially, a watch service monitors sources both domestically and internationally, alerting you of newly-filed applications with the United States Patent and Trademark Office (USPTO) or applications that are in the publication period that may be confusingly similar or even infringing upon a mark in your portfolio. This can include all types of trademarks – word marks, logos, and slogans. Having this information is invaluable to you as a trademark owner, since you can take action early in the form of an opposition through the Trademark Trial and Appeal Board (TTAB).
Watch services allow you to specify which marks and which classes to monitor. They will send you a report that can be customized to your preference to include cases, notes, and opinions if you choose. You can specify certain countries or territories, as well as expand the report to include domain name registrations and common law uses. Some services may even review the watch notices for you and recommend what action you should take.
The cost for watch subscriptions can range depending on the type of services you require, but as with other trademark costs, it is far better to pay these fees up front than to try to stop infringement once it has started. Think of it as preventative care for your portfolio. Contact David Lilenfeld or Sonia Lakhany at Lilenfeld PC to help arrange and set up a watch service for your marks.
Good news came recently in the intellectual property world for GoDaddy, as well as other domain name registrars. In a recent trademark case, the United States Court of Appeals for the Ninth Circuit ruled that GoDaddy is not liable for contributory trademark infringement by cybersquatters. If you aren’t familiar with cybersquatters, they are third parties who register domain names similar to well-known trademarks and redirect their websites to alternative, and often offensive, content.
The appellate case, Petronas v. GoDaddy.com, came after a federal district court’s dismissal on the same facts. The facts, though relatively simple, serve as a large victory for domain name registrars since cybersquatting is becoming more common with so many recent technological. A third party registered the domain names <www.petronastower.net> and <petronastowers.net> using GoDaddy, thereby infringing or diluting the trademark PETRONAS, owned by the Malaysian oil and gas company Petroliam Nasional Berhard. The third party’s domains, via GoDaddy’s domain-forward service, led users who visited the websites to adult content instead. GoDaddy declined to penalize the cybersquatter, asserting that under the Uniform Domain Name Dispute Resolution Policy promulgated by ICANN (the Internet Corporation for Assigned Names and Numbers), a domain registrar cannot get involved in trademark disputes involving domain names.
Petroliam Nasional Berhard brought suit, alleging contributory trademark infringement by GoDaddy for hosting the infringing websites and providing a forwarding service to adult content. The district court declined to hold GoDaddy liable for refusing to take action.
On appeal, Petroliam Nasional Berhard requested that the Ninth Circuit allow a claim under the 1999 Anticybersquatting Consumer Protection Act (ACPA), a law that allows trademark owners to contest infringing domain names, against a domain name registrar if the registrar’s conduct contributed to the cybersquatter’s trademark infringement. The Ninth Circuit ruled against Petroliam Nasional Berhard, referring to the need to “spare neutral third party services providers from divining the intent of their customers” who registered or redirected domain names.
While GoDaddy is the world’s largest domain name registrar, hosting approximately 50 million registered domain names in its database, the ruling extends to smaller domain name registrars as well. Considering the vast number of domain names registered through GoDaddy, the Court pointed out that it would be nearly impossible for GoDaddy to track which domain names were legitimate and lawful and which were being used for cybersquatting.
A battle lasting longer than fifteen years over the Baltimore Ravens’ “Flying B” logo has finally come to an end, after multiple lawsuits by the owner of the copyrighted work, Frederick Bouchat. Affirming the lower court’s decision, the United States Court of Appeals for the Fourth Circuit ruled that the NFL’s use of the logo in three videos and in certain historical displays in the team’s stadium was Fair Use. The three videos Bouchat challenged were produced by the NFL for display on the NFL network, and were also featured on websites including NFL.com and Hulu.com. Two of the videos were part of the film series Top Ten, each episode of which features a countdown of ten memorable players, coaches, or events in NFL history. The third video is part of the Sound FX series, which provides viewers with an inside look at the sights and sounds of the NFL through players who wear microphones. The historical displays Bouchat challenged were a timeline, a highlight reel, and a significant plays exhibit, all of which were located on the Club Level section of the Ravens’ stadium.
The Court analyzed each alleged infringing use using each of the four Fair Use factors. With regard to the three videos, the Court found that the first factor, whether the use was transformative, was met. Rather than the initial use of serving as the brand symbol for the team, the Flying B is now used in the videos as part of the team’s historical record. The infrequent appearance of the logo supports the finding of transformative use, as the logos appear only for a few seconds. Also part of the analysis under this factor was the commercial nature of the use. Indeed, the NFL’s use of the logo is largely commercial, but the Court found that this was outweighed by the highly transformative and limited nature of the uses.
The second factor, the nature of the copyrighted work, was found to be neutral. Citing its own decision in a prior Bouchat case, the Court stated that the second factor may be of limited usefulness where the creative work of art is being used for a transformative purpose.
The third factor, the amount and substantiality of the portion used in relation to the copyrighted work as a whole, was also found to be neutral. Here, the NFL had no choice but to film the whole logo in order to fulfill its “legitimate transformative purpose” of creating the historical videos at issue, so the factor has limited influence.
The fourth factor is the effect of the use upon the potential market for or value of the copyrighted work. This involves assessing whether the NFL’s use of the logo would materially impair the marketability of the work and whether it would act as a market substitute for it. A transformative use renders market substitution less likely and market harm more difficult to infer. Due to the transient and fleeting use of the Flying B logo, as well as the factual (as opposed to expressive) content, the Court concluded that the logos served a different purpose in the videos than they do standing alone.
Bouchat also challenged the incidental use of the Flying B logo in certain historical displays located on the Club Level of the Baltimore Ravens’ stadium – a timeline, a highlight reel, and a significant plays exhibit. The Court undertook a similar analysis as that above and again concluded Fair Use, stating: “It would force those wishing to create videos and documentaries to receive approval and endorsement from their subjects, who could ‘simply choose to prohibit unflattering or disfavored depictions’…This regime…would chill the very artistic creation that copyright law attempts to nurture.”
In our last blog we discussed the importance of registering your trademarks as a means for avoiding trademark disputes. We continue here by explaining why and how to tend to those registrations once acquired. This tending to is referred to as “portfolio management” or “portfolio maintenance.”
1. This first point seems obvious but it is often overlooked. Ensure that the ownership information in the registration is up-to-date. If there have been any changes to key information since the original registration, the registration needs to be updated. Company name, address, contact email are examples of information that often change and need updating. Otherwise, correspondence from the trademark or someone trying to reach you about your trademark might be missed by you.
2. Periodically, the trademark owner must prove that it is still using the trademark. For federal registrations, renewals are under “Section 9” and proof of your continued use of a mark is made through a Declaration of Continued Use under “Section 8.”
3 Registrations should be reviewed to determine the availability of the mark for incontestability status. Incontestable status shields the trademark from certain (but not all) challenges – making your trademark somewhat bulletproof. Similarly, a mark registered on the Supplemental Register may be appropriate for transfer to the Principal Register, which also strengthens the registration.
4. Registrations should be reviewed to make sure that the goods or services listed in the registration are consistent with your actual use of that trademark. For example, if you began using the mark in connection with plumbing services, that will be reflected in your trademark registration. If you later expand your services to HVAC equipment, you may need to apply to add that new service to your registration.
5. Existing registrations might also not cover all geographic areas where you use your mark. For example, if you registered the mark with the State of California because you only used the mark there, you might need to register the mark elsewhere if you are now using the mark outside California. Another example, perhaps a more common situation, is a mark being initially registered in the United States with the mark later also being used outside the United States. A foreign registration may be appropriate in such circumstances.
6. Also, I’ve seen disclaimers in trademark registrations that may have been appropriate at the time of the initial registration, but are no longer appropriate. (A disclaimer is a declaration from the Trademark Office that the trademark owner does not have the exclusive right to the disclaimed portion of a registered trademark.) For example, in its registration for Google PLACES, Google was required to disclaim “places.” Removal of a disclaimer can strengthen the registration.
It is much easier to address these trademark portfolio issues in advance and not while under time pressure, rather than in response to a crisis created by a third party’s unauthorized use of your trademark or some other external event.
**** Remember, that none of our posts are or can substitute for legal advice. Our posts address general legal matters, while “legal advice,” on the other hand, is tailored by an attorney to fit your particular situation.****
In almost all cases, trademarks should be registered. They can be registered with the federal government – more specifically, with the United States Patent and Trademark Office – if you, as the trademark owner, use the mark in “interstate” commerce (most marks are used in “interstate” commerce). Most of the 50 states also allow for registration of trademarks if the trademark is used in the state where registration is sought. State and federal trademark registrations is a service provided by Lilenfeld PC.
Federally registering a trademark gives you national rights to it. Such a registration preserves your right to expand your use of the mark into geographic regions of the United States where you have not previously used the trademark. Without a federal registration, you will be hard-pressed to establish trademark rights in states you have not yet used the trademark.
A federal registration will also assist you in the event someone uses your trademark in a domain name, without your permission. Such a registration will make it easier to persuade the person who registered the infringing domain name to relinquish the domain name registration to you.
A federal registration will also serve as a deterrent to others who might be thinking about using a trademark similar to yours. A trademark registration shows that you are aware of and active in protected your trademark rights. And, after five years of continuous use of a trademark your registration may become even stronger, gaining what is called “incontestable” status.
Finally, if a dispute over your trademark does arise, a federal registration entitles you to a presumption from the court that your registration is valid. Your registration also entitles you to additional damages in the event it is found that your mark was infringed. And a federal registration makes it easier to work with the United States Customs Service to stop the importation into the United States of unauthorized goods bearing your registered trademark.
As you can see, registering your trademarks greatly strengthens your rights and will likely help you avoid disputes. We’ll post Part 3 of this 5 part series next week. Please check back!
Before you adopt a new trademark you should devote resources to making sure, to the greatest extent you can, that using that trademark will not infringe on some other party’s rights. This sounds obvious, but we see many trademark disputes occur because not enough effort was made before a new trademark was adopted.
Once you’ve identified the trademark you would like to use, we generally suggest that you look for the same and similar trademarks in your industry and related industry on the Internet. If you do not find anything that looks problematic, step two is to forward your results to a trademark lawyer and retain that lawyer to conduct a formal search. Most trademark lawyers, including us at Lilenfeld PC, will engage a vendor to conduct what is often called a “trademark availability search.”
The results from the trademark availability search are listed in a report, which consists of trademarks which are the same or similar to the trademark you are considering. The report itself does not offer any opinions about whether it is safe to adopt the trademark or not. Instead, your trademark lawyer will review the report and provide a legal opinion about the risks, if any, associated with adopting the trademark. Following this process will not guarantee that no one claims that your new trademark creates an issue, but it should greatly lower the risk and give your trademark the best start.