The Trademark Blog

A Michigan county's proposed logo for GET PUMPED for its municipal waste services, received a preliminary refusal from the Trademark Office and the local paper second guesses the trademark attorney.  I'm not sure what the 'all jurisdictional' search was that cost $1500. Full U.S. searches are running about $500 from the big 3 vendors, plus whatever the firm charges to evaluate the search. It's interesting that a municipality needs a federal trademark for its services in the first place. As for the $1000 or so for the filing of the application - the Government charges $325 for a one class application (depending on how you file) suggesting $675 for filing the application plus expenses which is not out of line for big city set fees.

Posted by Marty at 09:43 PM | Permalink

Google Print is in beta, play around with it here.  I already found something useful for a client's fame file.

Posted by Marty at 02:21 PM | Permalink

I found the argumentation in this Reuters piece on Creative Commons to be McCarthyesque (after McCarthy the red baiter, not the treatise author).  Professor Lessig knows how to speak up for himself, but I still find the shamelessness of the tactics to be depressing.

Posted by Marty at 05:21 PM | Permalink

Further to yesterday's mention, here is the link to NPR's story examining whether sales of counterfeit products are used to finance terrorism.  With due respect to Prof Lemley, if the government has not made its case that there is such a link, that's one thing, but the assertion that selling counterfeits is not the sort of thing that 'anti-capitalist' terrorists would do, is not a very compelling argument.

Posted by Marty at 04:53 PM | Permalink

American Needle Inc. v. New Orleans Louisiana Saints et al., No. 04 C 7806, 2005 WL 1126537 (N.D. Ill., E. Div. May 5, 2005): 

Plaintiff held a non-exlusive license from the NFL to create apparel and headwear with NFL team logos.  The NFL didn't renew and granted Reebok and exclusive license.  Plaintiff sued on antitrust grounds arguing that the NFL was attempting to monopolize the market in NFL-logo merchandise.

From Findlaw's account of the District Court decision: 

The defendants had argued trademarks only indicate the source or sponsorship of goods or services and say nothing about which other products consumers might see as substitutes.

While that is usually true, the judge said, here the NFL team logos can be viewed as the actual product. While some people might buy a T-shirt or hat with a logo just because they need a T-shirt or hat, most people who buy logo-bearing merchandise are fans who would not see other kinds of apparel as a reasonable substitute, the judge said.

The NFL's motion to dismiss was denied for 4 of the 5 counts and the case continues.

Posted by Marty at 05:15 PM | Permalink

The Copyright Office is offerring RSS news feeds (the first line of the COpyirght Office's page answers the question: 'what is a RSS news feed).

Posted by Marty at 04:07 PM | Permalink

This bill, HR 32, passed May 23.  It prohibits trafficking in labels, tags and various types of packaging, bearing counterfeit marks.

AN ACT

To amend title 18, United States Code, to provide criminal penalties for trafficking in counterfeit marks.

HR 32 EH

109th CONGRESS

1st Session

H. R. 32

AN ACT

To amend title 18, United States Code, to provide criminal penalties for trafficking in counterfeit marks.

Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled,

SECTION 1. SHORT TITLE; FINDINGS.

(a) Short Title- This Act may be cited as the `Stop Counterfeiting in Manufactured Goods Act'.

(b) Findings- The Congress finds that--

(1) the United States economy is losing millions of dollars in tax revenue and tens of thousands of jobs because of the manufacture, distribution, and sale of counterfeit goods;

(2) the Bureau of Customs and Border Protection estimates that counterfeiting costs the United States $200 billion annually;

(3) counterfeit automobile parts, including brake pads, cost the auto industry alone billions of dollars in lost sales each year;

(4) counterfeit products have invaded numerous industries, including those producing auto parts, electrical appliances, medicines, tools, toys, office equipment, clothing, and many other products;

(5) ties have been established between counterfeiting and terrorist organizations that use the sale of counterfeit goods to raise and launder money;

(6) ongoing counterfeiting of manufactured goods poses a widespread threat to public health and safety; and

(7) strong domestic criminal remedies against counterfeiting will permit the United States to seek stronger anticounterfeiting provisions in bilateral and international agreements with trading partners.

SEC. 2. TRAFFICKING IN COUNTERFEIT MARKS.

Section 2320 of title 18, United States Code, is amended as follows:

(1) Subsection (a) is amended by inserting after `such goods or services' the following: `, or intentionally traffics or attempts to traffic in labels, patches, stickers, wrappers, badges, emblems, medallions, charms, boxes, containers, cans, cases, hangtags, documentation, or packaging of any type or nature, knowing that a counterfeit mark has been applied thereto, the use of which is likely to cause confusion, to cause mistake, or to deceive,'.

(2) Subsection (b) is amended to read as follows:

`(b)(1) The following property shall be subject to forfeiture to the United States and no property right shall exist in such property:

`(A) Any article bearing or consisting of a counterfeit mark used in committing a violation of subsection (a).

`(B) Any property used, in any manner or part, to commit or to facilitate the commission of a violation of subsection (a).

`(2) The provisions of chapter 46 of this title relating to civil forfeitures shall extend to any seizure or civil forfeiture under this section. At the conclusion of the forfeiture proceedings, the court, unless otherwise requested by an agency of the United States, shall order that any forfeited article bearing or consisting of a counterfeit mark be destroyed or otherwise disposed of according to law.

`(3)(A) The court, in imposing sentence on a person convicted of an offense under this section, shall order, in addition to any other sentence imposed, that the person forfeit to the United States--

`(i) any property constituting or derived from any proceeds the person obtained, directly or indirectly, as the result of the offense;

`(ii) any of the person's property used, or intended to be used, in any manner or part, to commit, facilitate, aid, or abet the commission of the offense; and

`(iii) any article that bears or consists of a counterfeit mark used in committing the offense.

`(B) The forfeiture of property under subparagraph (A), including any seizure and disposition of the property and any related judicial or administrative proceeding, shall be governed by the procedures set forth in section 413 of the Comprehensive Drug Abuse Prevention and Control Act of 1970 (21 U.S.C. 853), other than subsection (d) of that section. Notwithstanding section 413(h) of that Act, at the conclusion of the forfeiture proceedings, the court shall order that any forfeited article or component of an article bearing or consisting of a counterfeit mark be destroyed.

`(4) When a person is convicted of an offense under this section, the court, pursuant to sections 3556, 3663A, and 3664, shall order the person to pay restitution to the owner of the mark and any other victim of the offense as an offense against property referred to in section 3663A(c)(1)(A)(ii).

`(5) The term `victim', as used in paragraph (4), has the meaning given that term in section 3663A(a)(2).'.

(3) Subsection (e)(1) is amended--

(A) by striking subparagraph (A) and inserting the following:

`(A) a spurious mark--

`(i) that is used in connection with trafficking in any goods, services, labels, patches, stickers, wrappers, badges, emblems, medallions, charms, boxes, containers, cans, cases, hangtags, documentation, or packaging of any type or nature;

`(ii) that is identical with, or substantially indistinguishable from, a mark registered on the principal register in the United States Patent and Trademark Office and in use, whether or not the defendant knew such mark was so registered;

`(iii) that is applied to or used in connection with the goods or services for which the mark is registered with the United States Patent and Trademark Office, or is applied to or consists of a label, patch, sticker, wrapper, badge, emblem, medallion, charm, box, container, can, case, hangtag, documentation, or packaging of any type or nature that is designed, marketed, or otherwise intended to be used on or in connection with the goods or services for which the mark is registered in the United States Patent and Trademark Office; and

`(iv) the use of which is likely to cause confusion, to cause mistake, or to deceive; or'; and

(B) by amending the matter following subparagraph (B) to read as follows:

`but such term does not include any mark or designation used in connection with goods or services, or a mark or designation applied to labels, patches, stickers, wrappers, badges, emblems, medallions, charms, boxes, containers, cans, cases, hangtags, documentation, or packaging of any type or nature used in connection with such goods or services, of which the manufacturer or producer was, at the time of the manufacture or production in question, authorized to use the mark or designation for the type of goods or services so manufactured or produced, by the holder of the right to use such mark or designation.'.

(4) Section 2320 is further amended--

(A) by redesignating subsection (f) as subsection (g); and

(B) by inserting after subsection (e) the following:

`(f) Nothing in this section shall entitle the United States to bring a criminal cause of action under this section for the repackaging of genuine goods or services not intended to deceive or confuse.'.

SEC. 3. SENTENCING GUIDELINES.

(a) Review and Amendment- Not later than 180 days after the date of enactment of this Act, the United States Sentencing Commission, pursuant to its authority under section 994 of title 28, United States Code, and in accordance with this section, shall review and, if appropriate, amend the Federal sentencing guidelines and policy statements applicable to persons convicted of any offense under--

(1) section 1204 of title 17, United States Code; or

(2) section 2318 or 2320 of title 18, United States Code.

(b) Authorization- The United States Sentencing Commission may amend the Federal sentencing guidelines in accordance with the procedures set forth in section 21(a) of the Sentencing Act of 1987 (28 U.S.C. 994 note) as though the authority under that section had not expired.

(c) Responsibilities of United States Sentencing Commission- In carrying out this section, the United States Sentencing Commission shall determine whether the definition of `infringement amount' set forth in application note 2 of section 2B5.3 of the Federal sentencing guidelines is adequate to address situations in which the defendant has been convicted of one of the offenses listed in subsection (a) and the item in which the defendant trafficked was not an infringing item but rather was intended to facilitate infringement, such as an anti-circumvention device, or the item in which the defendant trafficked was infringing and also was intended to facilitate infringement in another good or service, such as a counterfeit label, documentation, or packaging, taking into account cases such as U.S. v. SF.3d 194 (7th Cir. 1996).

Passed the House of Representatives May 23, 2005.

Attest:

Clerk.

Posted by Marty at 02:13 PM | Permalink

"They Sell No Fake Before Its Time" - NY Times article on street vendors, specifically those that sell fake goods.  Interesting points:

- people insist on beleiving that the goods 'fell off the back of the truck' and therefore are real (which, the article asserts, is seldom the case);

-some purchasers have no clue as to which luxury brand is the target of the knock-off they're buying ;

-some bags are sold labeless, and the purchaser pays extra to have a label glued on.

Posted by Marty at 02:08 PM | Permalink

There was a discussion on NPR today of the Government's contention that terrorists use the sale of counterfeit goods to fund their operations.  Prof. Lemley was quoted, doubting the contention.  I do not see a link yet on NPR's site.  Will provide the link when there is on.

Posted by Marty at 02:00 PM | Permalink

Patry on Grokster here.  He predicts that the impending S. Ct. decision will not bring clarity but more murk.

Posted by Marty at 08:49 PM | Permalink

PC World: "In a letter sent to Google on Friday, the Association of American University Presses (AAUP) requests that the company clarify a number of points related to Google Print for Libraries, saying the 125 publishers that belong to the AAUP are concerned about possible misuse of their copyrighted content."  Full article here.

Posted by Marty at 03:23 PM | Permalink

Busch is allowing people to sign up to obtain a YOURNAME@BUDWEISER.COM email address.  Terms of service here.

Posted by Marty at 03:18 PM | Permalink

The Supreme Court upholds mandated commodity advertising programs such as "Beef: It's What's For Dinner", "Pork: The Other White Meat" and "Got Milk?"

Johanns v. Livestock Marketing Association, 03-1164 (S. Ct. May 23, 2005).

Scotus Blog analysis here.

First Amendment Center summary of comments here.

Posted by Marty at 03:00 PM | Permalink

A newspaper took a picture of a jockey during his victorious ride on  Funny Cide in the 2003 Kentucky Derby..  The photo showed a suspicious object in the jockey's hand.  The paper showed the photo to race stewards who then questioned the jockey. The stewards heard him say "It's a cue ring to call the outriders."  Outriders are riders who lead racehorses on and off a track.  The stewards had never heard of a cue ring and suspected some sort of illegal device.  An investigation ensued.

Only the jockey, who speaks heavily accented English, apparently said, "It's a Q-Ray (an ionized bracelet) to cure the arthritis."  His wife had given him the bracelet for his arthritis.

A libel suit against the paper ensued.

Movie line free association: "Earn more sessions by sleaving."

Posted by Marty at 01:58 AM | Permalink

Posted by Marty at 03:50 PM | Permalink

A guide to using RSS by Walter Mossberg of the WSJ.

Posted by Marty at 03:41 AM | Permalink

Amanda from Costa Mesa writes to recommend:

1.  The Field (Irish pub), on Fifth Avenue right in the heart of the Gaslamp, is a great pub with very good food.  Try the rasher and cheese boxty.

Posted by Marty at 03:06 AM | Permalink

We are pleased to announce that Glenn Mitchell has joined the firm to head up IP litigation.  Schwimmer and Associates is now the Schwimmer Mitchell Law Firm.

Glenn is active in all aspects of IP law with a particular focus on trademark, copyright and unfair competition litigation, as well as IP-oriented commercial litigation.  Glenn has over fifteen years' experience both in the federal courts and before the United States Patent and Trademark Office, as well as litigation and arbitration involving Internet and Domain Name issues.  He has litigated major cases on behalf of entertainment and publishing companies, large retailers and major consumer products companies, among others.  Published decisions include Hormel Foods Corp. v. Jim Henson Prods., Inc., 36 U.S.P.Q.2d 1812 (S.D.N.Y. 1995), aff’d, 73 F.3d 497  (2d Cir. 1996), Henri Bendel, Inc. v. Sears, Roebuck and Co., 25 F. Supp. 2d 198, 48 U.S.P.Q.2d 1948 (S.D.N.Y. 1998) and Tri-Star Pictures, Inc. v. Leisure Time Productions, Inc., 749 F. Supp. 1243 (S.D.N.Y. 1990).

Glenn has written and spoken extensively on Trademark Law, including, most recently, the book U.S. Trade Dress Law:  A Primer for the New Millennium (2002), which is currently available from the INTA"), www.inta.org.  Glenn currently chairs INTA's Publishing Board.

The Schwimmer Mitchell Law Firm focuses exclusively on intellectual property.  We protect, defend, and manage the brands, domain names, and other intellectual property of some of the world’s leading corporations (and some of the world's leading start-ups, too). Our practice includes all aspects of trademark, copyright, and trade secret law, including counseling, prosecution, licensing, and litigation.

Please contact us at marty at schwimmerlegal dot com or glenn at schwimmerlegal dot com.

Posted by Marty at 04:28 PM | Permalink

John Welch of the TTABlog and I invite you to meet one or both of us at an informal gathering at:

Henry's Pub
618 Fifth Ave.
San Diego, CA 92101

Date: Tuesday, May 17th.
Time: 4:30 to 6:00 pm

Posted by Marty at 07:31 PM | Permalink

Ottomanelli Brothers hired a web design company.  An employee of the company registered the domain name NYCOTTO.COM in his own names for unknown reasons.  The design company provided DNS servers.  It went out of business and the site went dead.    The employee was nowhere to be found.  No one could re-point the name without the authorization of the missing employee.  So Ottomanelli brought a UDRP in order to get control of its domain name (and re-surrect its site).

Ottomanelli Bros. v. Rob Velez, NAF FA0503000440427 (May 2, 2005).

Practice pointer:  Companies should not allow third parties to be the admin contact for its important domain names.  Many companies use 'role' email addresses (domains@xyz.com) for contact addresses so that important communication (such as renewal notices and the like) are not sent to a departed employee's un-monitored inbox.

Posted by Marty at 05:19 PM | Permalink

In response to our inquiry re San Diego, Jenn from the Pacific Northwest forwards this to us:

1.      Georges at the Cove, La Jolla – The view from this restaurant is amazing.

2.      Jakes, Del Mar – Amazing views of the coastline and the food is outstanding.

3.      The Beach House, Cardiff – Food is wonderful and they have a patio on the beach (literally) and there are heated lamps.

4.      Old Town Café – Old Town – Huge margaritas and the Mexican food is great.  They make their own homemade tortillas!

5.      Brockton Villa, La Jolla Cove, great place for breakfast or brunch.

Posted by Marty at 03:05 PM | Permalink

Seventh Circuit: U.S. Copyright Law does not preempt Illinois' Right of Publicity Act.  The right to control the commercial exploitation of one's identity is separate from the right to protect one particular fixation of one's likeness in, for example, a photograph.

Toney v. L'Oreal,  03-2184 (7th Cir.  May 6, 2005).

Posted by Marty at 02:50 PM | Permalink

Answer to the Nike v. Nikepal 'Test Your Skills' fact pattern here via TTABlog.

Posted by Marty at 02:38 PM | Permalink

Posted by Marty at 02:28 PM | Permalink

Yale's LV Sidewalk discussed here by LawMeme.

Posted by Marty at 01:59 PM | Permalink

Google aparently went down for about 15 minutes over the weekend and it's not precisely clear what happened.  A spokesman said that Google had trouble with its domain name server.

Posted by Marty at 08:04 PM | Permalink

Would you clear NIKEPAL for 'Import and export agencies and wholesale distributorships featuring scientific, chemical, pharmaceutical, biotechnology testing instruments and glassware for laboratory uses, electrical instruments, paper products and household products and cooking appliances,' bearing in mind that the owners of the famous NIKE mark prevailed last year against NIKE and design for various restaurant -related services.

Posted by Marty at 07:54 PM | Permalink

A column from eWeek discussing the timetable of UDRP proceedings, using a matter I handled as an example.

Posted by Marty at 03:32 PM | Permalink

I didn't know there was an Irish boyband named WESTLIFE but the fact that its record label's application for WESTLIFE was rejected by the EU's Court of First Instance, because of prior rights in WEST owned by a German cigarette company, has gotten a lot of press coverage.

Posted by Marty at 03:03 PM | Permalink

Posted by Marty at 02:58 PM | Permalink

An article from wwwcoder.com discussing a patent application recently filed by Google reportedly covering part of its relevancy algorithm.  The author draws the following conclusions as to how Google determines freshness, one of the components of relevancy:

• The frequency of all web page changes
• The actual amount of the change itself… whether it is a substantial change redundant or superfluous
• Changes in keyword distribution or density
• The actual number of new web pages that link to a web page
• The change or update of anchor text (the text that is used to link to a web page)
• The numbers of new links to low trust web sites (for example, a domain may be considered low trust for having too many affiliate links on one web page).
Although there is no specific number of links indicated in the patent it might be advisable to limit affiliate links on new web pages. Caution should also be used in linking to pages with multiple affiliate links.

Posted by Marty at 02:44 PM | Permalink

Email me suggestions for where to hang out in San Diego next week (dive bars, good dessert places, little known restaurants) and I'll post the suggestions here.

Posted by Marty at 02:28 PM | Permalink

This is what the Florida State Bar thought, rejecting the ad:

"the phrase "Expect more from your law firm" created "unjustified expectations about results the attorney can achieve" and "compares the services of one attorney to another without factually substantiating the comparison."

But then they reversed.  More here, from the "Amazing Firms, Amazing Practices" site.

Posted by Marty at 03:04 PM | Permalink

If your client wanted to use SURVIVOR for sunscreen, and there was a prior rights holder for SURFVIVOR for sunscreen, what would you advise?

Posted by Marty at 02:59 PM | Permalink

Uli Widmaier of the Pattishall firm has written a law review article: "Use, Liability and the Structure of Trademark Law," 33 Hofstra Law Review 603 (2005).  Based on a very cursory reading on my part, I would categorize this article as part of the (in my view justified) backlash against the excesses of the Brookfield, Promatek and Playboy/Netscape decisions, which are seen by some as over-protecting trademarks.  Hat tip to Prof. Goldman.

Posted by Marty at 07:33 PM | Permalink

NY Lawyer article reporting on Oblon Spivak's use of ad notable for referring to its competitors, Fish and Richardson, Finnegan Henderson, MoFo, Knobbe Martens and Howrey.

Posted by Marty at 02:52 PM | Permalink

UK entity sold products under the RESTORIA mark.  Middlemen purchase the product and advertise it on the Internet on websites that by their language, target Australia (Evidence of which being a drop-down country menu which included Australia).  Australian owner of RESTORIA mark sues UK Restoria in Australia.  Plaintiff has no evidence of actual sales to Australia.

As the Australian IP blog, Weatherall's Law, reports, the moral of the story is:

It will be possible to infringe a trade mark in Australia, by use on an overseas website, where communications of that website are targeted at Australians. But you are going to have to prove that Australians, other that people authorised or engaged by the trade mark owner, have received those representations. A tricky matter of evidence, potentially, but it is arguably not inappropriate to require something to be happening in Australia, on the other side of the world from where the webiste is launched, before lawsuits can happen here. To find otherwise would surely encourage a bit of easy forum shopping.

Comment from Freehills here.

Comment from Warwick Rothnie here.

Text of  Ward Group Pty Ltd v Brodie & Stone Plc [2005] FCA 471.

Posted by Marty at 02:17 PM | Permalink

Posted by Marty at 01:57 PM | Permalink

The Third Circuit affirms the District Court of the Virgin Islands holding that SAPPHIRE BAY CONDOMINIUMS WEST is a famous trademark eligible for dilution protection.

THE BOARD OF DIRECTORS OF SAPPHIRE BAY CONDOMINIUMS WEST v. GEORGE R. SIMPSON, Individually, and d/b/a NORTH AMERICAN ALLIANCE FOR CORPORATE MANAGEMENT, No. 04-3690, 2005 U.S. App. LEXIS 7562 (3rd Cir. April 20, 2004)

Gripe cite against plaintiff here.

Posted by Marty at 09:11 PM | Permalink

Panicware files lawsuit to stop use of POP-UP STOPPER in keywords ads.  Via Yahoo press release.

Posted by Marty at 08:54 PM | Permalink

The Register's (mostly negative) comments on ICANN's process for evaluating who should be awarded the contract for adminstering the .NET domain name registry, now held by Verisign.

UPDATE: ICANN posts comments on the Telcordia review.

Posted by Marty at 08:51 PM | Permalink

Interesting press release from Response Insurance announcing that Google has complied with its request to police use of its name as keyword.

Posted by Marty at 05:25 PM | Permalink

Scented-tree infringement case brought by 'Car Freshners' via Newsday.

Posted by Marty at 05:22 PM | Permalink

The Fourth Edition of the Trademark Manual of Examination Procedures has been issued.

Friendly tip to people starting out in trademark law: when you approach your supervisor with a question as to Trademark Office practice, anticipate that their first question to you will be: have you looked in the TMEP?

Posted by Marty at 04:41 PM | Permalink

Marketwatch on spyware and the influence of Ben Edelman in getting legitimate companies such as Ask Jeeves from partnering with spyware vendors. 

Posted by Marty at 02:27 PM | Permalink

According to Law and Entrepreneurship News, the owners of the FARMALL trademark for tractors are protesting the use of the name FARMALL PROMENADE for square dancing tractors.

Historical information on Farmall Tractors here.

Farmall diecast trucks available here.

Posted by Marty at 10:59 PM | Permalink

A variation of worldwide fame of a trademark: Multi-local success via Brandchannel.com.

Posted by Marty at 03:36 PM | Permalink

Miami police contemplate obtaining trademark protection for its badge design.  Via Sun Sentinel.

Posted by Marty at 02:21 PM | Permalink

Professor William Patry, author of, among other things, Copyight Law and Practice, has started a blog named THE PATRY COPYRIGHT BLOG.  As Prof. Patry is also a parter at Thelen Reid and Priest, this may be the first practitioner-authored pure copyright blog.

I've had the honor of sharing a panel with Prof. Patry and have attended several of his lectures.  I've consulted his treatise innumerable times. Let's just say he's familiar with the material.

Posted by Marty at 02:19 PM | Permalink

Doonesbury on digital rights management, via Slate.

Posted by Marty at 02:10 PM | Permalink

If the Simon Barsinister Weather bill becomes law, would we need Sunshine Laws to get the weather?

Posted by Marty at 02:09 PM | Permalink

Florida 2d District Court of Appeal case on the copyrightability of public records, via Rulemaking Blog.

Posted by Marty at 02:04 PM | Permalink