More Litigation Involving Domain Name Transfers
Register.com has announced that it obtained an injunction against the "Domain Registry of America" regarding its "slamming" tactics to induce domain name transfers.
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Register.com has announced that it obtained an injunction against the "Domain Registry of America" regarding its "slamming" tactics to induce domain name transfers.
The NY Times reports on the success of MECCA COLA, a cola drink targeted at Muslims who wish to boycott Coca-Cola. You can look at MECCA COLA's trade dress here. Sainsbury came out with a red can for its Classic Cola years ago and had to remove the white stripe (Google Sainsbury Cola Trade Dress).
Armand Zildjian, chairman of the Avedis Zildjain company, died recently. If you have seen a drum set, then chances are you have seen the flowing ZILDJIAN mark on cymbals or drumsticks. The Avedis Zildjian company was founded in Constantinople in 1623 and moved to Massachusetts in 1929. Zildjian is the oldest family business in the U.S. (the oldest U.S. family business founded in the U.S. is a Southern resort which, I am afraid, started life as slave plantation).
Family Business Magazine has compiled a list of the oldest family businesses in the world. Number one is a Japanese construction business named KONGO GUMI, now reportedly in its 40th generation.
An article from BrandChannel on branding in the publishing industry addressing, in part, the concept of author as brand.
Front page Wall Street Journal article today on over-use of a final Z replacing a S in brandz like BRATZ.
If you filed multiple applications for a .BIZ domain name prior to September 25, 2001, you may be eligible for partial refunds of your application fees, according to this notice of settlement of the class action on the Neulvel site. The deadline for acting is February 28, 2003.
Good article in the NY Times (free online subscription version here) on the trademark dispute between Microsoft and Lindows, in which Lindows, in response to MS' allegation that LINDOWS infringes WINDOWS, apparently is seeking to get a holding that WINDOWS does not function as a legally protectable trademark. Note the 'legally protectable' bit. It clearly does function as a trademark. If I say "Windows Sucks", you know what I mean, and that's proof of secondary meaning. In fact, given that apparently 400 million people use the product, I would venture that we have something of a paradox. WINDOWS might be one of the strongest trademarks in the history of the world, and, according to Lindows, may not be legally protectable (at least in the US).
The wrinkle is, in part, in Sec. 15 of the Lanham Act (15 USC 1065(4)) which states that "no incontestable right shall be acquired in a mark which is the generic name for the goods or services or a portion thereof . . " Note the present tense of the clause.
Lindows may argue that it merely has to show that in the 80's, when MS choose the mark, WINDOWS was the generic term for software which breaks a screen display into separate rectangular displays. As in: "Please hand me that windows software." The NY Times article has a good introduction to the state of play in the 80's on this point, which indicates that at least the term WINDOWING was regularly used as a descriptive (not generic) term (while relevant, that does not establish that WINDOWS was the generic term at the time). More determinative would be evidence that people referred to non-MS windowing software as "windows software" or had "windows functionality." MS argues that the real generic term for the product GUI or graphics user interface. I would imagine that MS also argues that the present tense of the section suggests that the proper time frame should be when the third-party use begins (namely when LINDOWS was adopted).
The article does not mention that MS still must disclaim the term WINDOWS when filing for marks such as WINDOWS XP, which means that MS has to concede the point vis a vis th US PTO (which hurts but doesn't end its argument in civil court).
Finally, no doubt because the NY Times is yet to discover my international metasearch, the article also doesn't point out that MS might well own registered trademarks of the WINDOWS name without disclaimer, in other nations., and possible would be able to stop LINDOWS there.
The article does mention that the founder of LINDOWS was also the founder of MP3.COM, and therefore had telephone numbers for defendants' lawyers in his PDA.
p.s. There is a lot of material on this case on the web. Google "Lindows motion papers" for a start and you will find this from Lindows itself.
p.p.s. In the article, Lindows' attorney plays the populist card making the statement that no one should be able to establish a monopoly in a word. While not precisely the same, grabbing MP3.COM, and LINDOWS (the best abbreviation for a Linux Windowing program), is not precisely altruistic behavior either.
On the whole, I have not seen too many trademark decisions involving AOL user names. My guess is that if someone was using [famous trademark]@aol.com, a letter to AOL might do the trick. In any event, there has been a Northern District of Texas case in which the owner of the trademark EMC MORTGAGE received a preliminary injunction against use of the email address EMCFORECLOSURE@AOL.COM. Bear Stearns v. Lavalle, No. 3:0-CV-1900-D (N.D. Texas Dec 3) (not yet up on Judge Fitzwater's section of the Court's website).
The NY Times today reports on Professor Jospeh Turow of the Annenberg School for Communication at the U of Penn., whose upcoming book on the Internet (MIT Press) will conspicuously not use an Initial Cap when discussing the internet, uh, Internet. His argument is that the Internet has become a part of the 'everyday universe' and therefore should be lowercase, like air, water, radio and television.
An argument can be made that the word should retain its proper noun status as unlike radio or television, there is one specific Internet to which we refer, the one defined in Section 230(f)(1) of the Communications Act of 1934, which section defines Internet as ". . . the international computer network of both Federal and non-Federal interoperable switched data networks."
As the article points out, we continue to use initial caps for World Wide Web, but tend not to for website or weblogs.
I just received spam beginning:
Dear Info. We wish you a Merry Christmas.
And what should we look out for in 2003? Write me at marty@schwimmerlegal.com and give me your nominations (don't say "The decisions in Eldred and Victor's Little Secret cause I already have those on the list).
Justice Jacob of theUK will refer to the ECJ whether the shape of Unilver's VIENETTA ice cream is a registrable as a trademark. My legal assistant, apparently a fan of the prduct, has offerred to testify on Unilver's behalf, that she would be able to identify the product's origin by shape alone.
Here is some introductory information from INTA on non-traditional trademarks.
Jennifer Lopez' GLOW BY J.LO scent has apparently survived a preliminary injunction action brought by Glow Industries.
The Chicago Cubs are suing "rooftop operators" who charge people to sit on rooftops overlooking the friendly confines of Wrigleys Field. This was the fact pattern in my law school copyright exam. Seriously. The law.com article mentions that there's a copyright claim which might refer to the fact that the rooftop guys apparently have TV sets up there (because the baseball game itself isn't a fixed work). This is one of those rare and elusive unjust enrichment fact patterns in IP law. More coverage here and here.
Eighth Circuit affirms lower court decision enjoining May Department Stores from using BE as a line of clothing as a result of likelihood of confusion with BeBe clothing's senior BEBE mark. BeBe's employees' testimony of instance of actual confusion makes up for absence of survey evidence. Thanks to How Appealing.
Her Majesty the Queen and the country of New Zealand brought a UDRP against the registrant of NEWZEALAND.COM. Regardless of your view as to whether country names or appellations of origin should be protected, they're not covered by the UDRP. NZ attempted to argue that because NEW ZEALAND is an appellation of origin, it is a trademark as well. The panel was having none of that and found the Queen to be guilty of reverse domain name highjacking. (Wipo Decision No. D2002-0754 - not posted yet but look back here in a day or two).
Now, this same country was able to pry away NEWZEALAND.BIZ from this same registrant. Appeal?
I worry for the presiding panelist, Tony Willoughby. If you hold that your Queen is a reverse domain name hijacker, are you imprisoned in the Tower of London?
My former Mother Firm used to send demand letters on behalf of Rolls Royce telling people that they could not describe their product as the ROLLS ROYCE of trash compacters (for example). Apparently, according to today’s New York Times, they should have been sending Thank You letters. This advertising column reports on a trend of using unrelated brand names to sell brands. Examples include: comparing a SATURN sedan to GREY POUPON (to mean "not bland"), and labeling MILLER LITE "the WD-40 of Conversations" (beer as social lubricant, not grease).
As an ad-exec claims, "When you use a brand as a celebrity, you’re leveraging a well-known name to create an image of your own. […] It’s a very telegraphic way to communicate."
Uh, exactly.
I can think of three reasons why brand owners should not do this: dilution, genericism, and tarnishment.
First, the conventional wisdom is that trademark dilution by "whittling" occurs when a previously known brand is juxtaposed with an unrelated product. The cognitive psychological underpinning of why dilution should be a tort is that the brand owner has successfully invested in brand recognition in a tight stimulus-response loop. The stimulus, namely, the brand, produces the response, namely, recall of that manufacturer’s product. The presence of usage of the brand to an unrelated product, e.g. BUICK shoe-polish, disrupts that tight stimulus-response loop. Google the string "Welkowitz Swann dilution" for more information.
The second danger is that this encourages the use of the brand to stand for the product-category, and that’s genericism. The usual suspects include aspirin, escalator, and thermos.
And finally, I would be worried about tarnishment by metonomy. This is when a brand name is used to denote a concept. You know it as "SPAM" (to mean unwanted e-mail, not the pork product) (this is not realy actionable, but the owners of SPAM will tell you it's a bad thing).
The article indicates that these commercials have a "legal acknowledgement that appears in tiny type at the bottom of an ad," which "suffices as compensation for the brand giving the piggyback ride […]."
No comment on that (unless you’re a client).
So the National Law Journal ran a short piece on page A14 of this week's issue entitled "Urban myth takes." It seems that someone got it in their head to put a disclaimer on their site saying that if you are affiliated with [law enforcement, or such and such a group] then if you enter this site you will be violating Code 431.322.12 of the Internet Privacy Act . . . and you cannot threaten our ISPs [etc.]" However there is no such Act. But many sites copied this disclaimer.
Here's something fun to do: use "431.322.12 [famous designer trademark]" as a Google term and you will get a nice list of websites selling knock-off (and possibly counterfeit) versions of that designer's product.
to my lovely wife Melinda.
I've read the ICANN announcement on the .LA ccTLD more closely (at the urging of two readers), and they are quite correct, there is nothing to suggest that the new domain manager will operate .LA as an 'open' domain - that is to see allowing registrations to non-Laotions. Accordingly, anyone with plans for movies.la, etc., will have to wait, or more to Laos.
p.s. To immediately reprimand me for the dissemination of incorrect information, please use the Yahoo Instant Messaging feature on the left tool bar. If I am the computer and see the message notification, I will either respond to you at once, or pretend I'm not at my computer.
It's the target of the publication's audience, not the target of the published statement. The Fourth Circuit holds that a court in Virginia does not have personal jurisdiction over an out-of-state publisher of a website which allegedly defamed Virginia plaintiff. The Connecticut-based website intended its expose of the Virginia plaintiff to reach a Connecticut audience, not a Virginian one. A link to the decision is available via How Appealing.
5th Circuit decision: Quick Technologies v. Sage Group (Dec. 9, No. 01-11197); discussion of (1) specific jurisdiction; and (2) application of 5th Circuit Pebble Beach analysis re: accounting of profits in an infringement case.
An article on counterfeiting in Uganda via The East African.
More on the ARSENAL trademark case here via the Financial Times.
The .CN (China) domain has been opened for general registration. The "landrush" begins this Sunday, December 15. More info here.
UPDATE: Here is a list of registrars who are accredited to sell the .com.cn names.
ICANN has redelegated the .la domain (country code for Laos). This reportedly will allow for open marketing to names such as ilove.la, shoes.la, escortservice.la and the like.
TILLAMOOK COUNTRY SMOKERS moves for a declaration that it is not infringing the trademark TILLAMOOK, owned by its Tillamook County, Oregon neighbor, TILLAMOOK COUNTY CREAMERY. Complaint via AmLaw here. Previous readers of the Blog get the Apples of Oregon reference.
I think this is the most coolest thing UK IP Judge Hugh Laddie has ever done but I await word from my UK colleagues if Sir Hugh has ever topped this.
A vendor sold scarves wtih the Arsenal football club name and indicia. The issue turns on whether use of a team name in such way is trademark use in that sense that the team name designates the origin of the good, or is the team name and logo merely decorative use in the sense that the wearer of the scarf is merely communicating allegiance to that team. It's my understanding that Laddie himself tends toward the latter view (and I'll ask UK friends to confirm/rebut that assertion). Laddie referred the case to the ECJ (background here). Now that the ECJ has ruled that of course it's trademark use, Laddie has refused to follow its decision, apparently relying on the fact that the ECJ made fresh findings of fact, something it had no power to do.
I guess that if Laddie was an American, he would be a state's rights kind of guy.
Here's a guy who is attempting to use trademark law to build up some sort of snakehead fish monopoly. Let's be clear - I can sell t-shirts with pictures of snakehead fish, and I can fairly describe those t-shirts as snakehead fish t-shirts, even if you have a federal trademark registration for SNAKEHEAD for t-shirts.
Incidental to an unrelated search, I came across this page entitled "Trademark Wars on the Web," last updated December 1996. I wrote two of the demand letters referred to (the links to them no longer work, alas), so it really brought back memories.
The European Court of Justice ruled last week that cigarettes cannot be marketed with the terms MILD or LIGHT. Japan Tobacco's MILD SEVEN brand has a problem. The ECJ decision seems to say "You can always pick another trademark."
For those of you scoring at home, the Czech Budvar had a split decision in Hungary - it can use BUDWEISER but not BUD.
ICANN President Stuart Lynn's interesting replies to comments on his proposal for new GTLDs.
The law of the place of the tort. The allegedly libelous publication by Dow Jones was in Victoria, Australia. The damage to reputation was in Victoria. The law of the tort is the law of Victoria. The text of the High Court of Australia decision is here.
A fraternity was involved in litigation in 1969 regarding use of its various indicia, and resolved the matter signing a consent agreement which bars it from asserting rights against, inter alia, "any jewelry or insignia goods manufacturer." Now the frat has a trademark dispute with a manufactuer, who was not involved in the 1969 dispute, but argues that it is protected by the language in the 1969 agreement. Affirming a lower court rejection of that argument, the Eighth Circuit held that in general, consent agreements do not create rights in parties not bound by the agreement, and there was no extrinsic evience in this case that the drafters of the 1969 agreement had intended to create such rights here. For the text of this decision, use Sigma Chi as a search term in the Eighth Circuit's full text search engine. Pure Country v. Sigma Chi, 02-1944 (8th Cir. Nov 27, 2002),
Google has apparently lost in the court of first instance in Norway regarding use of the domain name Google.no (.no being the Norwegian country code). Via Greplaw.
Google should probably consider buying out the rights to Barney Google.
Low-cost branding strategies for the small business via Brandchannel. One person's definition of branding:
"Branding is simply an integrated strategy of individual marketing techniques you can use to communicate to a targeted market about what your product or service can do for them. It's an umbrella strategy that helps guide the rest of your marketing. . ."
The Trademark Blog has cracked the all-time top 100 list of Userland blogs. In the future, everyone will be famous to 15 people.
This article describes a Pennsylvania business which believes it has some form of protectable trademark rights in the term HOAGIE for sandwich, which, we are told, was originally the HOGGIE, invented on Hog Island. No origin tale is provided for the SUBMARINE or HERO or GRINDER. Via NameProtect.com.
p.s. If you are ever contemplating obtaining state trademark protection, contact me and I will talk you out of it.
PTO Press Release here re electronic filing of TTAB documents
Via the Seattle Times, a Spokane law firm is attempting to put together a class action against Bonzi Software, maker of software which, allegedly, creates "fake user interface dialog" boxes. The lead plaintiff is a partner in the firm, who became upset when he lost control of his computer to one of those "mouse-trapped" fake boxes.
. . . technology that allows the user to access Wi-Fi while riding a Segway.
The NY Merchantile Exchange sued an alternate exchange on the grounds that its use of NYMEX settlement prices violated its copyright (background here). The lovely and talented Copyfight pointed me to this law.com article on the case. If any of you out there are, represent, live with or just plain know arbitrageurs (traders who make trades based on the difference in price of the same goods in different markets), ask them how they will make a living if it turns out that the prices in one market can be copyrighted.
Some other minor fees are going up as well, according to the Federal Register. The fee increase is effective January 1, so get your trademark filing instructions in to me now.
The string of UDRP cases regarding re-sellers (such as the WEBER Grill case) has long been troubling. to me. I understand how a distributor of authorized ACME products may not be cyber-squatting if they point the name to a page selling ACME products (even though the such use might still be infringing, because, in my view, the use of ACME.COM suggests a level of endorsement by the owner of the ACME tradmark that may not exist). However, the reasoning of some of the re-seller cases might, for example, allow the owner of a convenience store, to register doman names reflecting any of the 1000 or so brand-names it carries, provided it points the name to a page promoting that product. I personally think there should be some privitiy of contract between the distributor and the complainant, for the "bona fide offering of goods" defense to take hold. I also think brand owners should put language in their invoices and license agreements barring their distributors from obtaining certain domain names.
Now in a UDRP case involving BOSTITCH.COM, complainant successfuly showed that the distributor was using the domian name to place itself in a superior position ot other authorized distributors of BOSTITCH products. Accordignly, its regsitration of the domain name was not in good faith and its offering of goods was not bona fide. Thank you to UDRPLAW.NET for this one.
FatWallet has announced a partial victory in its tussle with Wal-Mart over FatWallet's dissemination of Wal-Mart's post-Thanksgiving prices (background here and here.
I hope that some of the parties will make public some of the papers in this case, specifically those which shed light on Wal-Mart's theory that the prices in the circular were protecatble under copyright. I appreciate how the prices in a circular before it is released to the public might be deemed to be trade secrets; I do not readily see the basis for copyright protection in a fact such as "Wal-Mart will sell a Vornado heat fan for $49 on Friday", nor in a listing of such facts which doesn't copy any particular unique way Wal-Mart might have had in compiling such information. I therefore encourage the parties to make public the rationale of the copyright argument - right now all we have from this case is a chilling effect.
As previously mentioned, CBS, owner of rights in The Survivor TV show, is suing ABC and Granada TV, which intend to broadcast a show entitled "I'm A Celebrity, Get Me Out of Here." Here, via Amlaw, is the Complaint. Of interest is the cause of action alleging that the show has a famous trade dress, which defendant's show is diluting.
This Orlando Biz Journal article is getting a lot of linkage for its coverage a lawsuit brought against ICANN barring it from utilizing "sunrise" provisions - means by which holders of registered trademarks could register.info domain names corresponding to those trademarks, before the rank and file could get their hands on those names.
You have to get past the provocative headline "Should Trademarks Rule The Web" and wade through the entire article before you get to the last paragraph where plaintiff admits that he submitted a fabricated sunrise application and is bummed because .info took his names away.
This guy appears to be approaching the Table of Equity with Unclean Hands.
A business owner wrote a small business advisor in the Sacramento Bee:
As a new home-based business owner, I would like to find out more about searching and registering a trademark for my new Web service. I plan to sell ethnic food over the Internet and want to ensure my brand as well as avoid infringement on others. Should I work with a law firm or perform a trademark search on my own using the the U.S. Trademark and Patent Online service? What kind of costs would I incur using either vehicle?
The advisor, Alice Jacobs replied in part:
. . . you may find it easier and safer in terms of avoiding legal troubles down the road to shell out the money to pay an attorney who does this type of work on a daily basis and knows the ins and outs of trademark and patent searches and registration.
I've edited out any hedging on her part, but you can read her entire response here. A comprehensive Google search could not reveal any responsble businessperson urging that trademark counsel not be used (dry humor indicator on).
I want to emphasize and expand on several points she made.
First, it wasn't clear from the column that searching the U.S. Trademark Registry is insufficent for clearing a mark, simply because of common law rights - mere use of a trademark creates protectable rights.
Second, while it's great that deadhit searching is as freely available as it is, it is not a reliable tool for clearing a trademark for availability, because:
(1) the underlying databases can be incomplete;
(2) it is difficult to manually search all confusingly similar marks (N-R-G, ENERGIEE and ZENERGY may all be confusingly similar to ENERGY); and
(3) only the outside search firms presently have the databases sufficient to conduct a comprehensive common law search. Google is not enough.
As to filing trademarks, a trademark application is a document filed in order to perfect legal rights. It is conceivable that a layperson could locate free legal advice online or elsewhere, but in any event, legal advice is required to maximize those rights. In worst case scenarios, I have seen laypeople simply lose rights through avoidable mistakes.
As to costs, the outside search firms such as NameProtect and T and T, charge several hundred dollars for a full search. I have seen website-based search firms essentially re-sell Dogpile as a common law search. Small obscure usages can come back to haunt you. Amazon had a lawsuit when a tiny bookstore named Amazon came out of the woodwork. Comprehensiveness of the common law search is worth the money.
As to evaluation of the search, I evaluate searches so of course I think they're essential. The person who reviews a search must perform a small likelihood of confusion test for each 'hit' in the search. Trademark lawyers are trained to perform likelihood of confusion tests. Some lawyers charge by the hour for this, some bundle the analysis with the search. The large NY firms will charge several hundred dollars for the evaluation. I cap my opinion letters at $300. The trademarkguru.biz (who bought a sponsored link which shows up when you search for Trademark Blog on Google) charges $350).
As to filing, the large trademark firms (like my old Mother Firm), tend to charge approximately $600 as a standard fee, with additional charges for additional classes. Sometimes there are multiple filing discounts. Litman Law (who also have a sponsored link for a Trademark Blog Google search) appear to charge approximately $600. Some of the online trademark firms appear to charge less. I charge $395, with no additional charges for up to two additional classes.
Bear in mind that standard fees usually cover only what is referred to as "routine prosecution." One application may sail through the PTO while another might require hours and hours of argumentation. I have only seen firms agree to let set fees cover extensive responses to office actions when the client gives the firm sufficient work so that it all evens out.
I would be happy to answer more questions on this topic. Email me at marty@schwimmerlegal.com.
In response to parodies of its "Switcher" ads which flood the Web, Apple offers its own,
The top ten brand names used as search terms on Google in the month of October are:
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Source: Google Zeitgeist
The Raysan Trademark firm of Iran sends me its newsletter. Its website reports three recent victories by Western trademark owners. ARMANI triumphed over ARMAN for shoes. FABER-CASTELL cancelled a somewhat similar logo for stationery products. NESTLE appears to have exclusive rights in designs of birds in nests.
By the way, this is not legal advice and you should consult your attorney on this point, but bear in mind that in general, the protection of intellectual property is an exception to prohibtions on trade with certain countries (the laws regarding your particular axis of evil country may vary).
Ethan Katsh, professor and member of the UDRP Task Force, has drafted a proposal for refinement of databases containing UDRP decisions, to allow in effect for keynote-style searching. While I think he is a little too harsh on the status quo of UDRP databases, his proposal is worthwhile and the document itself is an invaluable list of UDRP resources.
When reading the proposal, two thoughts occurred to me. The first is that while in comparison to what electronic publishing makes possible, yes, the UDRP database could be made better but in the context of comparing UDRP research to, for example, U.S. civil litigation research, where one either has to have access to West publications or Lexis databases, the UDRP is universally available and universally affordable.
Second, Professor Katsh's proposed "keynote" system for the UDRP may represent a more user-friendly method of categorizing caselaw. This may not actually empower the layperson and "dis-intermediate" the lawyer, but some laypeople may think that it does. Disclosure - I am a lawyer and I only approve of dis-intermediating lawyers other than myself.