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7 Reasons to Conduct a Proper Trademark Search

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:

  1. The United States trademark laws are based upon the “first to use has priority” system. As such, if someone already is using a particular trademark, they have superior rights to it.
  2. You don’t want to knowingly (this includes the “should have known” standard) infringe on someone’s trademark. This can result in possibly having to pay damages such as: (1) disgorgement of profits; (2) damages caused by the infringement, which can be trebled; (3) costs of bringing the lawsuit; (4) attorney’s fees; and (5) destruction of inventory.
  3. A trademark owner can use your failure to search as a willful attempt to “blind yourself” to readily available information.
  4. You don’t want to waste time, money, or resources in developing your product, the packaging, and advertising only to have to change the name or logo later after being accused of infringement.
  5. Searching prior to applying for registration may help you identify potential obstacles to registration, such as those encountered by a similar trademark. You can even see how the applicant responded to the Office Actions under the TSDR tab on the USPTO website.
  6. Similarly, you can see which types of trademarks tend to be accepted or rejected by the USPTO and design your trademarks accordingly, thereby optimizing your chances of approval.

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.

David M. Lilenfeld

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Recent ruling in State of Washington makes identifying copyright infringers more challenging

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.

David Lilenfeld

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Event at Emory Law School

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.

David M. Lilenfeld

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Because we think it is important, we are re-posting an email from the State Bar of Georgia. Please get involved – it will only take a few minutes:

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 thomasw@gabar.org.
Sincerely,
Charles L. Ruffin
President, State Bar of Georgia
cruffin@bakerdonelson.com
David M. Lilenfeld
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The latest in Georgia on combating patent trolls’ bad faith assertions

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:

  • Prior to sending the demand letter, the plaintiff failed to conduct an analysis comparing the claims in the patent to the product, service, or technology. Or, if an analysis was done, it failed to identify the specific areas that are covered by the claims in the patent.
  • The demand letter doesn’t contain the patent number, name and address of patent owner(s) and/or assignee(s), or factual allegations regarding the specific areas that the allegedly infringing product, service, or technology infringes upon the patent, or is covered by the claims in the patent. If omitted and the defendant requests this information and plaintiff still does not provide it within a reasonable period of time, the court may also consider this as a factor.
  • The demand letter demands payment of license fee or response within an unreasonably short period of time.
  • The plaintiff offers to license the patent for an amount that is not based on a reasonable estimate of the value of the patent.
  • The claim or assertion of infringement is meritless and the plaintiff knew, or should have known, that it is meritless.
  • The claim or assertion of infringement is deceptive.
  • The plaintiff (or its subsidiaries or affiliates) previously filed or threatened to file one or more lawsuits based on the same or similar claim of patent infringement, and those threats or lawsuits lacked the above information, or the individual attempted to enforce the claim of patent infringement in litigation and a court found the claim to be meritless.

With regard to the second category, here are the factors that can indicate there was not a BFA:

  • The demand letter contains the above information, or if it does lack the above information and the defendant requests it, the plaintiff provides the information within a reasonable period of time.
  • The plaintiff engages in a good faith effort to establish that the defendant has infringed the patent and to negotiate an appropriate remedy.
  • The plaintiff makes a substantial investment in the use of the patent or in the production or sale of a product or item covered by the patent.
  • The plaintiff is the inventor or joint inventor of the patent, or in the case of a patent filed by and awarded to an assignee of the original inventor or joint inventor, is the original assignee or an institution of higher education or a technology transfer organization owned or affiliated with an institution of higher education.
  • The plaintiff has demonstrated good faith business practices in previous efforts to enforce the patent, or a substantially similar patent, or successfully enforced the patent, or a substantially similar patent, through litigation.

The legislation also discusses remedies and enforcement. For the full text of the legislation, click here.

David M. Lilenfeld

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Avoiding Trademark Disputes: Review the Trademark Official Gazette (TMOG) (Part 5 of 5)

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.
David Lilenfeld

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USPTO May Possibly Revoke Redskins’ Trademarked Nickname

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.

David M. Lilenfeld

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Avoiding Trademark Disputes: Set Up a Watch Service (Part 4 of 5)

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.

David M. Lilenfeld

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GoDaddy Off The Hook for Contributory Trademark Infringement

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.

David M. Lilenfeld

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Victory for Baltimore Ravens over “Flying B” Trademark/Logo

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.”

David M. Lilenfeld

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