Category Archives: Trademark

ALERT: Don’t be Fooled by Bogus Operators Claiming You Need to Take Action on Your Trademarks or Patents

There are a growing number of bogus operators who send misleading communications to patent and trademark owners. These operators often pose as a government agency, or an ostensibly legitimate-looking company. They may use company names that resemble official patent and trademark offices and agencies, like U.S. Trademark Compliance Office, International Register of Patents & Trademarks, and World Intelligent Property Office (WIPO).

One of their primary tactics is to send an official looking communication or “notice” informing you that you must take action (oftentimes pay money) to preserve your rights. The solicitations may refer to upcoming deadlines concerning your registration or application.

The operators use information from public databases to contact legitimate intellectual property owners with “urgent” solicitations for legal services, monitoring services, U.S. Customs trademark recordation services, and registration in the operator’s own private registry. Oftentimes, these services are unnecessary or do not have an immediate deadline. Both the USPTO and WIPO (the legitimate WIPO) have lengthy lists of these fraudulent operators on their websites. A sample solicitation is attached.

Don’t be fooled.

We are your intellectual property attorneys. In general, if you receive an official government notice, you will receive it through us. If you are receiving such types of communications from companies other than Briggs, chances are they are not legitimate. Or, if they are legitimate, we can confirm it for you after a brief review.

If you have received such a notice and have a concern about its legitimacy, please bring it to our attention. Above all, don’t send money without first understanding what the notice is and whether it is legitimate.

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Preclusive Effect of TTAB Decisions: Always, sometimes, or never?

Last week a divided Eighth Circuit panel affirmed a district court’s conclusion that a TTAB decision would not be given preclusive effect in B&B Hardware, Inc. v. Hargis Industries, Inc. The court reasoned that preclusion was inappropriate because the TTAB decided different likelihood-of-confusion issues that those that were before the district court.

The dissenting judge disagreed that the TTAB’s likelihood-of-confusion analysis was truly different from the district court’s analysis, writing that “[m]odest differences in analytical approach to the same ultimate issue, however, do not justify dispensing with collateral estoppel.”

Some commentators have suggested there is now a circuit split regarding the preclusive effect of TTAB decisions. Perhaps there is, but the opinion was careful to avoid holding that TTAB decisions could never be preclusive. Consider these excerpts:

  • “The element at issue in this case is the second one—whether the issue sought to be precluded is the same as the issue involved in the prior action. It was not here, and thus the district court properly declined to apply issue preclusion in these circumstances.”
  • “[A]pplication of issue preclusion in this case is not appropriate, as the TTAB in denying registration did not decide the same likelihood-of-confusion issues presented to the district court in this infringement action.”
  • “Because the Trademark Trial and Appeal Board previously decided the same question about likelihood of confusion that was at issue in the trial of this case, Hargis Industries should not have been permitted to relitigate that point.” (Colloton, J. dissenting)

ICANN Launches Trademark Clearinghouse

The Internet Corporation for Assigned Names and Numbers (“ICANN”) has launched its Trademark Clearinghouse (“TMCH”) effective March 26, 2013.  ICANN touts the TMCH as an effective tool for combating infringement and other feared abuses relating to ICANN’s new generic top level domain program (“gTLD”).  For an annual fee between $95 and $150 per trademark, brand owners can file their trademarks with the TMCH centralized database before and during the launch of the new gTLDs.  Registration will afford the brand owner two purported benefits: 1) priority registration for gTLDs matching their trademark during the ”sunrise” period (the period before the names are available to the general public); and 2) notification if anyone registers a gTLD matching their trademark.

ICANN’s gTLD program provides companies the opportunity to forego standard domain extensions such as “.com” and “.org” and register domain extensions incorporating their trademark such as “.pepsi” or “.google.”  The program has received heavy criticism, including claims the program is primarily intended to increase revenues (the application fee for a gTLD is $185,000 with an ongoing annual fee of $25,000.)  Others are concerned gTLDs will have an anticompetitive effect by allowing large players such as Google to monopolize descriptive domain extensions such as “.blog.”  The founding chairperson of ICANN, Esther Dyson, is on record as claiming the gTLD system will create jobs for lawyers, marketers, search-engine optimization experts, registries, and registrars but add little actual value or benefit to brand owners or internet users.

The TMCH has received similar criticism.  According to some commentators, the TMCH is less effective than readily available commercial watch services routinely utilized by brand owners.  Such critics note that the TMCH will apparently only screen for exact matches – failing to flag minor variations from the subject mark.  For example, an application for the gTLD “.googled” would apparently not get flagged for the registered trademark “google.”  For an equivalent cost, most commercial watch services catch all minor variations of the subject mark.  Additional information and details concerning ICANN’s TMCH can be found at http://trademark-clearinghouse.com

The Foreign Trademark Scam – Why (Oh Why) do We Tolerate this?

I hate it when this happens – a client comes up with a great trademark for a great product, everyone is really excited and then – the knockout search uncovers one of those stinking foreign based US trademark registrations with a list of goods and services that is the trademark equivalent of a 40 car pileup on the freeway at rush hour.  The identification covers 17 classes and is thousands and thousands of words long, and everyone knows that none of the goods and services have ever been, or will ever be, used in commerce in the US (I actually feel sorry for whoever has to examine these applications).  And, there is basically nothing anyone can do about it.  How does this happen?

Well, let’s go back to 1984. In Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 223 U.S.P.Q. 909 (TTAB 1984), the Board went on record stating that a foreign applicant could obtain registration of a mark in the United States based on a foreign registration, even if the trademark has never been used anywhere in the world, and whether or not the applicant had a bona fide intention to use the trademark in the United States.  Wow – that’s a bargain if I ever did see one, especially since US applicants have to prove use before they can get a US registration.

This happens because many countries, including most European countries – unlike the US, do not have use based trademark systems.  This allows a person in those countries to obtain a trademark registration for any mark without any use of the mark.  In the EU, a Community Trademark registration creates property right in a mark without any requirement of a bona fide intention to use, without goodwill, or without any actual use of the mark anywhere, and these rights extend throughout the entire EU (subject to cancellation for non-use after five years).

This foreign trademark registration then can be used under Section 44/66 as the basis of a valid US trademark registration, and there is no requirement that the trademark be used in the US (at least not until the statement of continued use is due 6 years after registration).  That’s a 6-year free ride for foreign applicants, allowing them to put extremely broad registrations on record with the USPTO effectively blocking anyone from registering a confusingly similar trademark.

The Crocker decision, in large part due to the efforts of the predecessor of INTA, led the US to adopt an intent-to-use basis for trademark filing in 1988, which allowed for filing a trademark solely based on an intent-to-use the mark, and includes a requirement that all foreign applicants declare an intent-to-use the mark in the US.  Problem solved, right?  Well – not exactly.

Applicants filing in the US based on a foreign registration are required to state that they have a bone fide intent-to-use the mark in the US, but what does that really mean, and how is that enforced?  Intent-to-use generally only requires a good faith intention to eventually use the mark in a real and legitimate commercial sense.  It is not all that hard to “intend” to do something.  It is certainly nothing like actually doing that something.  I can intend to go to Mars, and without having to actually go to Mars , I don’t have much on the line.  It does not take much to cover your tracks, and show an intent-to-use.

So, what happens if there really was no intention to use the mark?  Keep in mind that when a trademark application filed in a country without a use or intent-to-use requirement is filed in the US with the same colossal list of goods and services that appeared in the foreign registration, it is reasonable to assume that there was no intent-to-use the mark in the US (since there was no intention to use required when the foreign application was filed).  Then, there should be some hope of invalidating the US filing?

In reality, there is not much that can be done.  The client can try and cancel the registration, but that is an awful lot to ask of someone at the name selection stage, and they would need to make the challenge based on the mere existence of a long list of goods and services in a foreign based application (it would be hard to have more evidence than that).  That may be too speculative of a basis for most people to take on the expense and burden of litigation (no matter how reasonable the basis).  Also, since the Federal Circuit’s In re Bose decision, which requires clear and convincing evidence of a material misrepresentation and an intent to deceive to prove fraud, it has become more or less impossible to invalidate an registration based on fraud.

There have been cases that have invalidated registrations based on a lack of a bone fide intent-to-use, however, these have been generally limited to cases against unsophisticated registrants or those that have been unable to produce any documentation at all of an intent-to-use.  As stated above, it is not hard to create some basic documentation of an “intention” to do something thereby clearing the intent-to-use hurdle.

Thus, the available options have serious limitations.  In reality, that vast majority of people in the situation I described at the outset are not in a position to do anything except select another mark, and what is most certainly an invalid trademark registration stays on the register.

The real solution to this problem is to require all applicants for a US trademark to produce evidence of use before obtaining a registration.  Additionally, to deal with the problem of absurdly long identifications maybe there should be requirement to provide a specimen for every distinct good and service rather than just one specimen per class (but don’t get me started on that).

Can You Trademark Anything?

Apparently so.  After recently watching the movie Moneyball, I got to thinking about value in IP.  Trademarks, and in particular alternative trademarks, are the most undervalued and under-utilized form of IP protection.

Case in point, United States Trademark Registration No. 4,277,914 for the mark shown below:

apple store

The registration is owned by Apple and covers the design of an Apple Store, and issued on January 22nd.  That’s right – Apple trademarked the look of an Apple Store, and it really wasn’t that difficult.  They received an initial rejection on the grounds that the 3-dimensional store configuration was not inherently distinctive trade dress. (more…)

Supreme Court: Already v. Nike is Moot.

Sometimes a party who is sued will voluntarily cease its objectionable conduct to end the lawsuit. That cessation, however, does not automatically moot the other party’s claim. City of Mesquite v. Aladdin’s Castle, Inc., 455 U.S. 283 (1982). The “voluntary cessation doctrine”  is, effectively, a presumption against mootness in these cases. The doctrine holds that the case is not moot unless the wrongful conduct “could not reasonably be expected to recur.” Friends of the Earth, Inc. v. Laidlaw Environmental Services (TOC), Inc., 528 U.S. 167 (2000).

The Supreme Court held that Nike met its burden to show that its objectionable conduct (i.e. enforcing an allegedly invalid trademark) would not recur by issuing a broad covenant not to sue. Nike’s covenant is now a Court-approved model for future defendants:

[Nike] unconditionally and irrevocably covenants to refrain from making any claim(s) or demand(s) . . . against Already or any of its . . . related business entities . . . [including] distributors . . . and employees of such entities and all customers . . . on account of any possible cause of action based on or involving trademark infringement, unfair competition, or dilution, under state or federal law . . . relating to the NIKE Mark based on the appearance of any of Already’s current and/or previous footwear product designs, and any colorable imitations thereof, regardless of whether that footwear is produced . . . or otherwise used in commerce before or after the Effective Date of this Covenant.

Already, LLC v. Nike Inc., 586 U.S. __, No. 11-982, 2013 WL 85300, *6.

IntellectualIP previously wrote about the cert grant.

Protip: Don’t raise 8 issues on appeal

Here’s something you never want to see in response to one of your appeals:

Both parties have appealed and have raised many—too many—issues.

Accentra v. Staples is a multi-patent and trademark dispute between owners and licensees of several patents concerning staplers. Both Accetra and Staples prevailed in part in the district court, and both appealed. The parties raised at least the following issues:stapler

  1. Claim construction for the ’768 patent
  2. A means-plus-function non-infringement argument for the ’692 patent
  3. A literal non-infringement argument for the ’692 patent
  4. Indefiniteness finding against the ’709 patent
  5. Damages (The awarded amount was higher than any figure proffered by either party’s expert.)
  6. Trademark infringement
  7. Willfulness

These seven issues are merely the ones identified in the opinion, which suggests other issues were raised, too. “We have carefully considered the remaining issues on appeal…we affirm the district court’s rulings on each of those issues.”

“I know it when I see it.”

Federal trademark law prohibits the registration of a mark that includes “immoral, deceptive, or scandalous matter.” 15 U.S.C. § 1052(a). Today in In re Fox, the Federal Circuit affirmed a scandalous-based rejection under § 1052(a), effectively holding that one of these things is not like the other:

suckers

“Cock Sucker” is scandalous, according to the Federal Circuit, Read the rest of this entry

Color Trademarks Prevail Over Aesthetic Functionality

The Second Circuit has determined that fashion designer Christian Louboutin’s use of a distinctive red sole can serve as a trademark as long as it contrasts with the other colors of the shoe.  In doing so, the Second Circuit reversed the lower court’s ruling that color can never be a valid trademark for fashion items. (See Christian Louboutin S.A. v. Yves St. Laurent America Holding, Inc.)

By way of background, Louboutin is the owner of a U.S. federal trademark registration for the use of “lacquered red sole[s] on footwear.”  Further, there is no dispute Louboutin’s red soles are widely recognized and have acquired secondary meaning.

Despite these facts, the lower court relied on the doctrine of aesthetic functionality to invalidate and cancel Louboutin’s Registration.   The District Court argued that “[t]here is something unique about the fashion world that militates against extending trademark protection to a single color.”

The Second Circuit began its analysis by citing to multiple examples where color has been upheld as a valid trademark.  As one example, the Court cited to the Owens-Corning decision wherein the Federal Circuit explained, “[Owens-Corning’s] use of the color ‘pink’ performs no non-trademark function, and is consistent with the commercial and public purposes of trademarks” and therefore “serves the classical trademark function of indicating the origin of the goods, and thereby protects the public.”

Following the Federal Circuit’s lead, the Second Circuit rejected the district court’s per se ban on colors acting as trademarks in the fashion industry and reinstated Louboutin’s federal registration.  The Court explained, “Louboutin’s marketing efforts have created a “brand with worldwide recognition,” and “[b]y placing the color red in a context that seems unusual, and deliberately tying that color to his product, Louboutin has created an identifying mark firmly associated with his brand. . .”

While the Court recognized the validity of Louboutin’s red sole mark, it restricted its scope solely to contrasting red soles.  According to the Court, Louboutinfailed to establish the requisite distinctiveness and/or secondary meaning when the red sole does not contrast with the upper part of the shoe (For example, a monochromatic red shoe.)

Despite rejecting the lower court’s per se ban based on the aesthetic functionality doctrine, the Second Circuit clarified that the aesthetic functionality doctrine remains a viable defense.  According to the Court, the aesthetic functionality doctrine is applicable “where protection of the mark significantly undermines competitors’ ability to compete in the relevant market.”

However, the Court avoided having to conduct an aesthetic functionality analysis because Yves St. Laurent’s accused shoes were monochromatic (non-contrasting) and therefore outside the restrictions placed on Louboutin’s trademark by the Court.

While the scope and boundaries of the aesthetic functionality defense remain to be explored, the Second Circuit’s decision is a victory for fashion designers seeking to use color as a brand identifier.

Kindly Cease and Desist Letters

Broken Piano for President is a blog and eponymous book by Patrick Wensink. The book’s cover, at left, bears a resemblance to the label on a bottle of Jack Daniels Whiskey.

Jack Daniels Properties, Inc., sent a cease-and-desist letter to Wensing, at right. The letter is remarkable for its tone. It’s a remarkably nice C&D letter.

In addition to its great tone, the letter explains why trademark law forces mark-holders to send C&D letters: if mark-holders don’t police unauthorized uses of their mark, they can lose rights in the mark. This is because one factor courts consider is whether the trademark owner zealously polices its mark.  As explained by the Second Circuit:

[O]nce a trademark owner loses control of its mark by failing zealously to watch over its use by others — or by not objecting to its unauthorized use — the reputation associated with the mark is reduced.

Church of Scientology Int’l v. Elmira Mission, 794 F.2d 38 (2nd Cir. 1986)

C&D letters aren’t sent for the sake of more litigation. They are sent because mark-holders who don’t send them tend to weaken or lose rights in their mark. Mark owners can use such letters in later litigation to help demonstrate that they actively police unauthorized uses in their marks.

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