INTA on Well-known Marks
An amicus brief filed in Indonesia on behalf of Intel by INTA on the registration and protection of well-known marks.
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An amicus brief filed in Indonesia on behalf of Intel by INTA on the registration and protection of well-known marks.
BE for clothing is too close to BeBe (pronounced "bee-bee") for clothing. Via the Arizona Republic.
Philip Morris settles a suit by ALTIRA, allowing it to take the name ALTRIA. However the article indicates that Philip Morris will only use it for non-business related activities. Via Boston Globe.
This from the nlj.com docket (I'd give the link but they don't use permalinks):
Store accused of violating trademark
Egg Harbor Township, N.J.-based gift and novelty retailer Spencer Gifts LLC has sued the Champaign, Ill., store Wild & Crazy Collectibles and its owner, Jerry Schuberth, alleging violation of Spencer's trademarks for "Wild 'N' Crazy" and "Wild 'N' Crazy Card."
Spencer Gifts LLC v. Schuberth, No. 2:02cv2210 (C.D. Ill. Oct. 10)
If you, like my legal assistant, don't get the title reference, click here, episode 47.
Interesting article from allafrica.com about a litigation in Uganda in which the trademark owner received an injunction against a licensee for making substandard product. That the trademark owner is moving for an accounting of profits suggests that there may have been some issue regarding the remittance of royalties as well. Via Nameprotect.com.
An Australian Barrister's view on the Equitrac case (background here) regarding meta-tags and intial interest confusion. Seems that inserting a competitor's trademark as a meta-tag would be a tort down there as well.
If you need to read the latest on-the-scene reportage from the ICANN meeting currently taking place in Shanghai, then check out the ICANN news aggregator. Alternately, you can wait until Thursday and check to see what the ICANN Board decided here.
In this NY Times article on the hiring of Barbara Kolsun, former chairwoman of the board of the International Anticounterfeiting Coalition, as Sr. VP and General counsel of handbag maker KATE SPADE, there is a discussion of "purse parties," where suburban housewives gather to purchase knock-off handbags. They sell knock-off handbags in the lobby of my son's pre-school, and I 'm afraid that if I send a demand letter on behalf of a client, they won't give my son a good letter of referral for kindergarten. (Online subscription req. for nytimes.com).
This time Reuters is in trouble for unauthorized linking.
I have been Googling phone numbers for a variety of reasons for quite some time but I only recently learned via Icann Blog that when you Google some phone numbers, you will immediately get an opportunity to get a map of the location of the phone number via Yahoo Maps or MapQuest. Great when you're looking for an infringer or a Chinese restuarant, not as great when it's someone else Googling your phone number.
Serialsniper.com has been registered. The website solicits an offer to sell the name. The whois of Enom, the registrar, does not identify the registrant. The namespinner program at Verisign says "Verisign recommends serialsniper.biz" and "Other names you might like [include] serialsniper.tv"
Rosie fights with ROSIE. Rosie leaves ROSIE. ROSIE closes ROSIE. ROSIE sues Rosie. Rosie counter-sues ROSIE. My chance of having magazine named after me diminished.
Nartron's complaint that STMicroelectronics infringed its SMART POWER trademark for electrical relay assemblies and electrical power circuits in combination with electrical logic circuits is dismissed by Sixth Circuit, on the grounds that (1) SMART POWER is a generic term for technology that combines power transistors and control circuitry on a single integrated circuit and (2) Nartron took too long to sue, having first learned of defendant's use of the term in 1987. Good discussion of how to plead genericness and how not to plead "successive encroachment" as a defense to laches.
Icannwatch on Wall St. Journal on the ITU on ICANN.
Doonesbury on Blogs. This is not a permalink so today is the only day to see this.
Ireland has endorsed the Nice Treaty, opening the way for expansion of the EEC. This raises the question, what to do about trademarks in the proposed new member countries (including eight Eastern European countries, as well as Cyprus and Malta) identical to existing Community Trademarks but having different owners. The CTM sets out to be a uniform EEC-wide trademark - third party prior rights in a single EEC-member country will defeat a CTM trademark application. What if, for example, a company owns a CTM for ACME for widgets and a different entity owns ACME for widgets in Malta.
Before you rush out now to file trademark applications in Malta, seeking to foil some famous mark's CTM, bear in mind what I am told by my colleague Verena Bomhard of Lovells, who tells us that there will be coexistence, with marks filed in Malta for example, during a certain time prior to accession, being vulnerable for bad faith cancellation. It will be similar to the model - more or less - utilized during German reunification.
More on the CTM and OHIM (the CTM registry) here.
Another political campaign with allegations of cybersquatting and infringement, this time in Wisconsin.
There is a long and tortuous history concerning the trademark for HAVANA CLUB rum. There was a pre-Castro HAVANA CLUB rum and there is a present day Cuban HAVANA CLUB rum.
Bacardi (successor in interest to the pre-Castro rum) was influential in getting the U.S. to adopt legislation to ban importation of the Cuban version, which legislation was held by the WTO to be a violation of U.S. treaty obligations (background here and here). Bacardi has litigated (up to the Supreme Court) for the right to sell its own Bahamanian-produced HAVANA CLUB. There is an awful lot of material on the Web on this dispute -some more stuff here and a metasearch of the term HAVANA CLUB might be informative as well.
The U.S. PTO is handling proceedings regarding the disposition of the trademark applications and registrations of the respective parties (an extensive essay about the distinction between the right to use a trademark and the right to use register a trademark, the descretion of a federal court to decide these issues separately, and the complex role of the PTO as an expert agency to federal courts on these issues would be relevant here but beyond the scope of this blurb).
In September it was revealed that in June of this year, Bacardi had contributed $50,000 to Florida Governor Jeb Bush's re-election campaign and that two weeks later he wrote a letter to the PTO Commissioner about the case. Bush denied a link.
Under pressure, Gov. Bush has now provided details about his contacts with the PTO, which suggests that his communications may be characterized as petitions regardin the handling of a specific case. The funniest line in the Post article quoted a Bacardi official as complaining that the Trademark Office was interfering in a trademark case.
A starting point for evaluating Gov. Bush's actions would be 37 CFR 10.14 regarding who may represent a party in a proceeding. As a non-lawyer, Bush does not seem to fall under the enumerated list of indivduals. Furthermore, given that 37 CFR 10.93(b), which governs ex parte communications with the Commissioner during an inter partes proceeding, refers only to "practitioners" as being allowed to make such contacts, Bacardi may have problems there as well. We don't know all the facts so we shouldn't jump to any conclusions here.
Of course, when the President's brother writes an angry letter to a presidential appointee, we can come to certain conclusions.
Given the importance of the Florida gubernatorial campagin, I don't think we have heard the last of this matter.
However as we see time and time again, one thing is clear, parties who seek expert trademark representation without political fall-out should retain me.
INTA is informing its members that the United States Senate passed the advice and consent resolution for the Madrid Protocol, an International treaty allowing for easier filing of trademark applications in multiple jurisdictions. The next step for the Protocol is the promulgation of rules by the USPTO. In addition, the U.S. must deposit its instrument of accession with WIPO. These and other steps are expected to take approximately one year to complete.
The term ROOIBOS (pronounced "royboss"), meaning "red bush", is a generic term for a type of tea indigenous to South Africa. An American company registered the name as a trademark in the U.S. The National Law Journal Intellectual Property supplement this week has an interesting article on the dispute and the question of protection of foreign appellations of origin.
The Seventh Circuit will be hearing arguments this week on Daimler Chrysler's allegation that the grille of the Hummer is confusingly similar to that of Daimlers Jeep. Here are photos of the grilles in question.
ICANN has re-delegated the administration of the .org TLD to the Internet Society and Afilias (the .info registry). Here are the comments from the losing bidders about perceived short-comings in the bidding process.
Most risque pun under the circumstances here.
A reader forwarded me this item on Quaker Steak & Lube Restaurant. The author must have had motor oil on the mind because the article contains the seemingly unprovoked quote:
"Quaker Steak & Lube says it doesn’t have problems with trademark infringement with the Pennzoil-Quaker State Co., manufacturer of Quaker State oil and parent company of Jiffy Lube oil change shops. Quaker Steak & Lube is a registered name."
True, not only does it have a registration but the registration is 22 years old, meaning Quaker State lost the chance to cancel it on infringement grounds approximately a decade and a half ago (registrations achieve incontestable status after five years of continuous use - see section 15 of the Lanham Act).
Now, turning away from this specific fact pattern (so as to avoid nasty letters from lawyers for the involved parties), say that 15 years ago, there wasn't a Federal Trademark Dilution Act so a famous mark owner couldn't stop a non-infringing but none the less dilutive use. What happened when the FTDA was passed in 1996 - was it retroactive? Section 43(c) didn't say explicitly one way or the other. There were some domain name cases where the FTDA was applied retroactively but I think that those were result-oriented decisions where the Dilution Act was mangled in ordered to get at cyber-squatters. In the case of 25 years of coexistence, barring compelling circumstances (i.e. the trademark owner was in a coma during that time), it's something it just has to live with.
Thanks to the blogger formerly known as Tuffy Stone for this.
Fortune.com article on counterfeit products on the Internet.
This Washington Post article discusses a new technology which increases the distortion when a camcorder attempts to record the image on a movie screen (but does not alter the image to the naked eye). Successful application of the technology could reduce movie piracy.
SCION is a new brand from Toyota, to be rolled out in June 2003. It means offspring (or a shoot from a plant). BusinessWeek published the name in March when someone spotted the trademark application (once again showing the value of trademark databases). Register.com appears to have handled the domain name registrations for Toyota, and obtained SCION.COM, SCIONSUCKS.COM and SCIONCARSSUCK.COM.
A Toyota spokesperson said in an AdAge article:
"I don't think a lot of people know how to pronounce" Scion . . . "We'll take care of that with a few million dollars of marketing."
I would have said "Pick a name people know how to pronounce and save a few million dollars." So it's a good thing I'm not in marketing.
Via David Galbraith.
They've got a girl from Ipanema, a lot of nuts, an awful lot of coffee, and Ronaldo, in Brazil.
They also have an online trademark database, which we have added to the Schwimmerlegal Trademark Metasearch. Check it out after you check out Ronaldo's official website.
The American Association of Retired Persons doesn't endorse political candidates. Florida Governor and part-time trademark lawyer Jeb Bush sent out a mailer to senior citizens illsutrated with a photo of Bush from an AARP gathering, showing Bush wearing an AARP button standing in front of an AARP sign. AARP is now protesting the mailing, arguing that it falsely suggests that Bush is endorsed by AARP.
File this with the AFLAC DUCK and the various stupid domain name tricks we've seen during this campaign.
They've got an awful lot of coffee, a girl from Ipanema, a lot of nuts and Ronaldo. Brazil also has an online trademark database which has been added to the Schwimmerlegal International Trademark MetaSearch. After you see Ronaldo's offical site, try out the MetaSearch.