‘Managing The Trademark Asset Lifecycle’ is this Thursday in New York

wtr managing lifecycle 2016

I will be attending World Trademark Review’s conference on “Managing the Trademark Asset Lifecycle” in New York, on Thursday October 20, 2016.

The program covers:

– Brand and trademark audits;
– Brand valuation;
– Collateralization of brands;
– Financial and tax considerations of trademarks;
– Monetization (i.e. licensing);
– ‘Exit strategies’ (i.e. what to do with residual goodwill)

The full program is here.

The speakers are, on the whole, in-house counsel for some of the most valuable properties in the world. The full speaker list is here.

WTR reached out to me and I will be wearing my ‘working-blogger’ hat and attending and live-tweeting the conference, at WTR’s invitation.

Hope to see you there.


Dilution Claim Dismissed Against NBC/Biggest Loser re Use of LB Logo

Go to page 7 of the decision and you will see allegations of fame that are insufficient to state a claim of dilution at the Motion to Dismiss stage.


The ‘BACK’ in the .FEEDBACK TLD Refers To The Trademark Owner

TLS is the registry behind the .FEEDBACK top level domain.

The CEO of TS has stated that .FEEDBACK is UDRP-proof, because, as I understand the claim, criticism is a good faith use under the second prong of the UDRP.

The CEO backed up that claim by promising that TLS will pay up to $5k in lawyers fees to defend against UDRPs.

Additionally, the CEO of TLS had previously stated:

“No trademark infringement will occur though, the sites are all geared towards free speech and giving reviews. Confusing the public that the brand is running the site will not happen, each site has a disclaimer and makes it clear the brand is not running the site.”

Two observations on the trademark infringement point. TLS itself registered FOX.FEEDBACK as a demonstration. There is a disclaimer in mousetype. (1) If you Google ‘Fox feedback’ as a search term then the first hit looks like this:

FOX feedback
The Fox Broadcasting Company, is an American commercial broadcast television network that is owned by the Fox Entertainment Group division of 21st Century …

So people searching on Google could think that this is official.

(2) Also, the six most recent reviews, as of today, are all addressed directly to Fox (as in, “Geraldo Rivera is a cancer on your show”).

So the users erroneously think that Fox maintains the site.

As for being UDRP-proof:

A recent UDRP decision, written by friend of the blog, Warwick Rothnie, granted a complaint bought by DeBeers, which established that DEBEERS.FEEDBACK had been registered in bad faith. The website appeared to have had no original content, but had copied existing reviews from Yelp after receiving a demand letter from DeBeers.

The CEO of TLS has now tempered his ‘UDRP-proof’ remark, indicating that the use of a proxy service appears to have been a material fact in the result.

One thought occurs: .FEEDBACK is semantically different from, for example, .SUCKS or .REVIEWS or .CHAT in communicating a relationship to a source, in that the .SUCKS element in MICROSOFT.SUCKS would appear to suggest the opposite of origin (why would Microsoft sponsor such a site?) and .REVIEWS and .CHAT would be, for the most part, neutral in that regard.

In contrast, however, generally speaking, because you communicate feedback to the source, there is a greater likelihood that a .FEEDBACK TLD will be associated with the trademark owner. I think that’s what the ‘back’ in ‘feedback’ means.

This TLD can be used lawfully in many, if not most instances, especially if the unofficial nature of the site is PROMINENT SO THAT YOU CAN’T MISS IT.

But the .FEEDBACK TLD is not UDRP-proof and not trademark infringement-proof.



We need Men In Blazers to sort this one out. Allegations that employee of NYC bar stole FOOTBALL FACTORY trademark.


2d Cir: Brown v Winfrey re OWN YOUR POWER

oprah harpo own your power

Blogged previously here and here.

Plaintiff fails to establish protectability of OWN YOUR POWER, and likelihood of confusion arising from Oprah’s use on magazine cover and other usages.


SDNY: LVL XIII v LV re Metal toe plates

107 page decision by Engelmeyer, J.

Plaintiff targets its LVL XIII (Level 13) sneaker at the luxury ($500) market. The sneaker has a metal toe plate with LVL XIII engraved on it:


Plaintiff’s sneaker got some traction: a few celebrities were seen in a few pairs. 8 months after the introduction, LV comes out with the OTR (On The Road) luxury sneaker:

LV OTR sneaker

PLaintiff therefore has to establish secondary meaning in the toe plate as existing by the 8 month point. Very lengthy discussion as to how to not establish secondary meaning. Not high $$ sales, not much unsolicited media coverage, some evidence that existed after the 8 month point (and therefore irrelevant to the analysis). Plaintiff forewent a conventional secondary meaning survey in favor of a law professor whose testimony got tossed under Daubert.

Plaintiff argued that LV’s alleged copying was evidence of secondary meaning. McCarthy’s has one of the more succinct discussions as to why this argument is not always logically sound (defendant might have adopted the element precisely because it thought the element didn’t indicate source). Here, plaintiff couldn’t prove that LV had prior knowledge or that it copied plaintiff. LV’s designer testified that he was inspired by this photo of James Dean wearing Converse Jack Purcells:

james dean wearing jack purcells

LV’s designer replaced the toe ‘smile’ of the Jack Purcells with a metal toe clip because, apparently, metal detailing is in. Also, legal told him to stay away from the Purcells.

So Plaintiff fails in establishing that it has secondary meaning in the toe cap, so that is the end of the case but the court does a full Polaroid analysis any way. Weak mark, evidence of third-party use of two plates, the toe plates don’t look that much like each other (LVL XII’s toe plate has a LVL XII on it) no evidence of actual confusion, no bad faith, people who pay $500 for sneakers are careful as to brand – LV wins ‘lopsidely.’

LV brings counterclaim that plaintiff’s LVL XIII mark is confusingly similar to the LV mark. Dismissed.


Patchogue’s LIVE AFTER FIVE v Farmingdale’s LIVE AT FIVE

AA5 ARTS STAGE POSTER farmingdale live after five

Patchogue is about thirty minutes from Farmingdale on Long Island. Patchogue’s festivals are ALIVE AFTER FIVE and Farmingdale’s festivals are ALIVE AT FIVE.


2nd Cir 43(a)(1)(B) decision: Weeks Pregnant vs How Far Along

clear blue

Justia summary: Defendant, a marketer of over-the-counter pregnancy test kits, was found liable for false advertising in violation of section 43(a) of the Lanham Act, 15 U.S.C. 1125(a). Plaintiff, a leading competing marketer of over-the-counter pregnancy test kits, claimed that, in informing the user as to how long her pregnancy had been in effect, defendant’s product communicated the false impression that it uses the same metric and gives the same number of weeks of pregnancy as a medical professional would do. The district court found in favor of plaintiff and imposed an injunction on defendant. The court agreed with the district court that plaintiff’s Lanham Act claim is not precluded by the Food, Drug, and Cosmetic Act, 21 U.S.C. 301 et seq., claim; there is no error in the district court’s finding of falsity in defendant’s Launch Package and advertising messages associated with it by reason of their unambiguous implication that defendant’s product measures weeks-pregnant in a manner that is consistent with the measurement used by doctors; agreed with the district court’s finding, based on survey evidence, that the message communicated by the Revised Package was impliedly false; there was no error in the district court’s findings that the falsity was material and injurious to plaintiff; and the court did not abuse its discretion in issuing the injunction. Accordingly, the court affirmed the judgment.


Does an On-Premises Sex Club Affect Interstate Commerce

Plaintiffs are 32 professional models. Defendant is a sex club in Miami. Plaintiffs alleges the sex club used their photographs to promote the club on websites and social media, without consent. The complaint contains Lanham False Advertising and various Florida state causes. Defendant moves to dismiss on various grounds but the court dismisses, sua sponte, for failure to state a claim, because plaintiffs did not establish that ‘the misrepresented product or service,’ which the Court defines as people having sex with each other at the club, ‘affects interstate commerce.’

The discussion of interstate commerce occurs on pages 11 through 18.

Last paragraph on page 19: the court indicates that it is dismissing the state law claims, even if plaintiffs can successfully re-plead the Lanham Act cause.


9th Circuit: Direct Tech v EA – Copyrightability of 3D Derivative Work of 2D Image

plumbbob usb flash drive

Justia summary: EA, creator of The Sims, contracted with a production company called Lithomania to produce a USB flash drive shaped like a “PlumbBob,” a gem-shaped icon from the computer game, to promote a “Collector’s Edition” of The Sims. Lithomania in turn contracted with DT to produce a prototype of the PlumbBob-shaped flash drive. After DT settled breach of contract claims with Lithomania, DT sued EA under the federal Copyright Act, 17 U.S.C. 101 et seq., and the California Uniform Trade Secrets Act (CUTSA), Cal. Civ. Code 3426–3246.11. The district court granted summary judgment to EA. The court held that the district court erred by concluding as a matter of law that the flash drive was not copyrightable, and that there is a genuine issue of material fact as to whether DT’s cut-away design for removing the USB flash drive from the PlumbBob object is sufficiently non-functional and non-trivial to warrant copyright protection. In this case, a reasonable jury could decide these questions in either party’s favor. Therefore, the court reversed as to this claim. The court affirmed the district court’s grant of summary judgment to EA as to the CUTSA claim and held that DT’s design for the flash drive’s removal from the PlumbBob object does not derive independent economic value from not being generally known to the public. The court rejected EA’s cross appeal and held that the district court did not clearly err or otherwise abuse its discretion in denying attorneys’ fees for this claim.

I was initially interested in this case because of the discussion as to what extent 3D models based on 2D images contain copyrightable expression (see discussion beginning on page 10).

However there is another interesting angle here: the fact pattern where a disgruntled contractor wishes to assert rights in a derivative work against the original rights-holder, is quite common. This case is a good starting point in researching the spectrum of relationships between a rights holder and the creator of derivative works (see discussion from page 16 on).