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November 29, 2004

The Novy Ochevidets. Yes, The Novy Ochevidets.


An NPR story on NOVY OCHEVIDETS, or NEW EYEWITNESS, a new Russian magazine referred to as a dead-ringer for THE NEW YORKER.


Assuming Conde Naste (publisher of The New Yorker) were to protest, this case would be one for the books.  The article states that there is no foreign language edition of The New Yorker (which is not to say that the English version doesn't find its way to Russia). 


Assume for the sake of argument that CN has Russian registrations for the cyrillic translation AND transliteration of NEW YORKER, this mark isn't either (and would such registrations be valid if never used?).


Typeface similarities between roman and cyrillic?  Compare the O's and the E's.


Look and feel of the magazine as a copyright concept?


A series of magazine covers as a famous trademark?  (it's difficult to get protection for non-traditional trademarks under Article 6bis, the argument being that the treaty can't protect the types of trademarks that weren't recognized when the treaty was signed).


If only the Russian magazine would publish a drawing of Eustace Tilley looking at a butterfly through a monocle, then this would be an easy case.  New Yorker covers here.

Rudolph and Rude Elf



A trademark tale for the holidays: After a protest from the Rudolph Company, the brewery behind RUDOLPH'S RESERVE Beer has re-named its product as RUDE ELF BEER.  Thanks to Jay from Igor.

November 24, 2004

Hooters In Trade Dress Suit

Hooters has sued WingHouse, for infringing the trade dress of its 'breastaurant" (not my term).  Thanks to Bradford for the tip.  For more on trade dress protection of restaurants, see Two Pesos, Inc. v. Taco Cabana, Inc., 505 US 763 (1992).

More On Perfect 10 v. Google

Chilling Effects identifies two previous DMCA notice letters sent by Perfect 10 to Google.  Wendy Seltzer comments on this and other issues in the case.

Who Will Receive Reduced Trademark Filing Fees?

The hub-bub on the INTA Listserv is about pending fee increases at the PTO (the Patent Bar is upset that patent fee diversion to other branches of government will apparently continue - see here).


The per-class trademark filing fee will likely go to $375 however electronic filing will remain at $335.  Interestingly, there will be a reduction to $275 for electronic filing that meets 'additional requirements.'  One rumor is that the additional requriements will consist of prosecuting the entire application electronically (fair enough - I do that already).  


More tantalizing is the rumor that the reduced fee will be available to applications that select descriptions of goods and services from a pre-existing list.


Assuming that the list is comprehensive enough (nice assumption), then I can only say amen to that. 

He Who Must Not Be Named (in a Lawsuit)

Every so often you read about a guy who trademarks (or this case, 'copyrights') his own name so that people can't refer to him.  More here.

November 23, 2004

But What Does It Mean?

The Google linkometer indicates that 2000 websites have linked to this blog.

Attention All Firms Based in the Euro-Zone

If you've been holding off retaining U.S. counsel until now, the Euro has just hit a record high against the dollar.  Our firm's fees will seem more reasonable than ever to you.

"Building A Brand by Not Being a Brand"


NY Times article (reg. req.) on American Apparel, which is "Building a Brand by Not Being a Brand," if you go in for that reverse psychology kind of thing.   There 'is not a logo in sight' in its 26 stores.


The PTO online database indicates that its application for AMERICAN APPAREL has been approved for publication after the applicant submitted evidence of secondary meaning (the mark has been in use since 1988 - the company also owns prior registrations for ALL AMERICAN APPAREL).


MUJI is a Japanese retailer that also adopts 'no branding' branding.


UPDATE: A branding consultant gives her opinion on 'no branding.'

Paying $1 Billion For Counterfeits

NY Times article (Reg. req.) estimating that trademark counterfeits cost New York City $1 billion in lost revenue, annually.

November 22, 2004

Google Image Search Returns Trademark and Copyright Suit

Complaint alleging direct, contributory and vicarious liabilty for copyright and trademark infringement filed November 19 in the Central District of California by Perfect 10 magazine against Google, for providing, via its Image Search, links to 'Stolen Content Websites' displaying unauthorized photos.


Interesting assertion from complaint: "It would be virtually impossible for consumers to locate most Stolen Content Websites if they were not directed to them by Defendant" (para 23). Plaintiff also notes that most of the Stolen Content Websites are judgement-proof.


Complaint via The Berkman Center.

"Brands As Influencers"

"Brands As Influencers" by Stephen Rapier, via Branchannel.

Trademark Counterfeiting To The Point Of Identity Theft

Front page article in today's Wall Street Journal: "Stuck On You: A Tiny Glue Seller Claims Identity Theft," about how the Hunan Magic Power adhesive company of China has gone one step beyond counterfeiting and has actually stolen the identity of Indiana-based ABRO Industries, to the point of distributing products with a photo of the wife Abro's owner on the label.  Hunan Magic allegedly goes around the world indicating that it IS Abro Industries.


The essential first step for businesses protecting their trademarks and stopping counterfeits at the source, is to obtain trademark protection in foreign jurisdictions such as China BEFORE the counterfeiting begins.  Unlike copyrights, which are the subject to protection under international treaty, trademarks are, for the most part, national or regional in scope (the exceptions, such as protection of famous marks, are statistically insignificant for the purpose of this conversation).


The U.S. provides protection to trademarks arising from use - there are very few other countries which do likewise.  The overwhelming practice is to protect ONLY trademarks registered in that country.


While some companies have sufficient in-house legal resources to maintain a network of international trademark lawyers to manage their international trademark portfolios, many companies go to their local trademark firms (such as ours) to instruct international trademark filings.

November 19, 2004

Copyrightability of Photographs

Good introductory discussion of copyrightability of photographs apart from the underlying content of the photograph (in this case, photographs of fabric patterns).


Schiffer Publishing v. Chronicle Books, No. 03-492 (E.D. Penn.  Nov 12 2004).


Practice pointer: Discourage your clients from writing internal memos giving advice on how to commit copyright infringement.

November 17, 2004

Lawsuits of Tomorrowland

Lawsuit dismissed against Disney alleging theft of idea relating to Epcot Center.  Via NY Lawyer.

Registrant Prevails in GATWICK.COM UDRP

After controversy regarding selection of the panel, a 3 person panel has rejected BAA's UDRP complaint regarding registration and use of GATWICK.COM, used in connection with a directory of businesses serving Gatwick Airport.  Desipte the panel's finding that BAA had a common law rights in the trademark GATWICK, it held that the registrant's business was legitimate, and did not appear to be on notice of BAA's rights in this common law trademark.


Of interest was the panel's finding as to registrant's creation date.  Registrant claimed priotiy to 1996, when the whois showed a creation date of 2000.  Whois data uses a new creation date when there is a transfer.  WhoWas data was entered to identify the 1996 registrant.  Registrant claimed that this 1996 entity was his 'alter ego' but could not document any relationship to it. 


 

November 16, 2004

Interview With Designer of FedEx Logo

Interview with the designer of the FedEx logo, via The Sneeze.

Trademark Created By Former Employee: Can You Take It With You?

IPNewsBlog on former employee vs. former employer (ShopNBC) regarding a trademark coined by employee during her employ.

TTABlog Debuts

John Welch, some-time contributor to The Trademark Blog and full-time expert on the Trademark Trial and Appeal Board, has started the TTABlog.

BUD v. BUDVAR in Finland

BUD v. BUDVAR in Finland, discussed by IPKat.

November 15, 2004

Restoring Opportunity But Perhaps Not Motive


CNN.COM reports that the FDA has requested that Pfizer pull ads for VIAGRA, on the grounds that the lines such as "Remember the guy who used to be called 'wild thing'?  Well, he's back" make the unsubstantiated claim that VIAGRA restores previous levels of sexual desire (as opposed to the substantiated claim that it treats erectile dysfunction).  The ad also neglects to mention side-effects.

Must Read: "The Plagiarism Game"

If you are an IP lawyer, then this article, "The Plagiarism Game," by Malcolm Gladwell, is a must read.  The author discusses an instance in which he was plagiarized.

Why Are The Big Patent Firms Disappearing, continued.

One patent lawyer voices his opinion here.

Use of RFIDs to Combat Pharma Counterfeits

New York Times: The FDA is expected today to approve the use of radio-frequeny identification devices (RFIDs) to help fight counterfeits in the prescription drug pipeline. At the cost of 20 to 50 cents per unit, the devices will probably not yet appear on individual unit packaging yet, but that will likely change as the cost drops.  Walmart is mandating use of RFIDs by its suppliers at the palette level.

November 10, 2004

Why Are The Big Patent Firms Disappearing?

OK, explain this to me.  I see the large patent firms disappearing one by one.  As far as I can tell, the Pennies, Fishes, Kenyons and Darbys of the world have been competently handling the largest, most complex patent litigations, since forever.  So when they merge into a larger firm it is not as if a small boutique suddenly had access to new resources and could now do work that they couldn't before.  It seems to me that all that happens is that the largest IP litigation becomes more expensive.  I understand why the partners in these firms want to make more money, I don't understand why clients accept this. 


If my underlying assumptions or analysis are completely wrong, write and clue me in.

Predicting The Future

Matthew Homann's The (Non) Billable Hour askd me to contribute 5 important isues and developments in trademark law, to his 5 X 5 feature.  Four other IP practitioners chipped in with where they see patent and trademark law headed.  In short, I saw more use of ADR, more use of XML, and more Initial Interest Confusion (I couldnt' think of 5 issues).  My entry here.

Trademark Blog World Tour Goes To Phoenix

I will be in Phoenix the rest of this week, attending the INTA conference.  I will be presenting a talk as part of a panel entitled "Famous and Well Known Marks." 

November 09, 2004

Ropes and Gray To Acquire Fish and Neave

Ropes and Gray has announced it will acquire intellectual property pioneer Fish and Neave.  The combined firm will have 740 lawyers.  FN will become known as the Fish and Neave Intellectual Property Group of Ropes and Gray, and will probably therefore get to keep using the Wright Brothers plane as part of its logo.


If you are interested that your legal fees for your trademark litigation, prosecution and counseling work not go to pay for law firm merger consultants, early retirement plans and moving vans, please consider our firm.


UPDATE: This quote from the NY Lawyer on the merger:


Aside from their greater access to general counsel and other high-ranking in-house lawyers, general practice firms usually have higher profits, enabling them to more handsomely compensate star IP partners.


 

Emotional Distress Inflicted By Email Providers

Right now if some of you were to email me you would get a bounceback message that would say 'The recipient name is not recognized.'   At least one client called me, worried.


The statement might be technically true but misleading, in that all of the email provider's recipients' names are not being recognized, due to weekend maintenance that appears to be lasting through Monday.  A more accurate bounceback statement might be:


"Your email is not going through because of something we, the email provider, did."


You never see that in a bounceback message.

November 08, 2004

Red and Blue Brands?


I've written in the past on the effect of geopolitics on branding.  For example, MECCA COLA and the RAZANNE Doll, are two products targeted to Moslems as alternatives to Western brands.


Will we see Red and Blue brands now?


Update: Blogger Andrew Raff points out that maybe we do already see this happening in the form of W Ketchup.

Trademark Law Is A Consumer Protection Law AND A Property Protection Law

Cory Doctorow at Boing Boing elaborates on the Wired article regarding the waning power of brands.  Fair enough, but the article has something of a false premise.  Consumer protection is one of two, not the sole, rationale for trademark law.  The other rationale is the protection of the trademark owner's intellectual property.  A brand is an asset and acts by third parties can misappropriate and damage the value of that asset.  Trademark law protects the owner of that asset.  See Chadwick v. Covell, 23 N.E. 1068 (1890) (Holmes, J.).  There is no basis given by Mr. Doctorow for referring to a trademark as psuedo-property.  Why is it pseudo-property, because it's intangible?  That would be an odd position to take from someone who makes a living as a writer.

Justice Thomas To Be Next Chief Justice?

The Drudge Report is reporting that Justice Clarence Thomas is President Bush's first choice to replace Justice Rehnquist as Chief Justice.  This has been suggested previously by The Washington Post.


Here is an article on Justice Thomas' views on commercial speech.

November 05, 2004

Wired: Are Brands Being Hurt By Informed Consumers?



Wired article
about the waning power of brands.  Interesting graphs on declining premiums that certain brands command.  The argument is, in part, that product information, widely disseminated on the Internet, undermines brand loyalty.

Speaking of Personalities

Amazon is seeking resumes for the position of Senior Maanger of 'Personality Lines.'  The job calls for 'developing and executing innovative ideas and concepts with regard to exclusive celebrity-focused products on Amazon.com.'  Via Craigslist.

Tiger Seeks Privacy For 'Privacy'

Tiger Woods, through a corporation, purchased a yacht, which he named 'Privacy.'   In the contract of sale, the vendor was allowed to orally disclose that it had sold a yacht to Tiger Woods, but pretty much any other use of the Woods name was prohibited.  The vendor allegedly printed up brochures naming Woods, and distributed photos to magazines.  Woods has now sued, alleging breach of contract and of Florida privacy statutes.  Complaint reprinted here via The Smoking Gun.

Trademark Protection for Barcelona Chair



Discussion of protectability of Barcelona chair here.

GRAND HERITAGE v. GRAND HERITAGE

Grand Heritage Hotel v. Grand Heritage Hotel via the Business Journal of Portland.

November 03, 2004

Marvel Sues Disney

Marvel sues Disney over animated superhero cartoons. Via NY Lawyer.

November 02, 2004

More on Homeland Security and Rubik's Cube

Update on the Department of Homeland Security's IP branch (formerly Customs), enforcing rights in a 'Rubik's Cube'-like device here and here.  Background here.

KRISPY KREME v. KRISPY KREAM



KRISPY KREME Donuts protests Pennsylvania ice cream stand named KRISPY KREAM.  Via StarTribune.com.

November 01, 2004

INTA Profile On Me

INTA has profiled me in its most recent Bulletin.

Voting Information


  1. Find out today where your polling place is by calling your county clerk or checking www.mypollingplace.com
  2. Alternatively, call 1-866-MYVOTE1 to find your polling place.
  3. Check the hours the polls are open with your city or county clerk.
  4. Print the League of Women Voters' card in English or Spanish and put it in your wallet or purse.
  5. Bring a government-issued picture ID like a driver's license or passport when you vote. Some states require it but if there are problems, you will certainly need it. If you have a cell phone, take it to call for help if need be.
  6. As you enter the polls, note if there is an Election Protection person outside the polling place.
  7. If you are not on listed as a registered voter, try to register on the spot. Some states allow that. Otherwise, talk to the Election Protection person if there is one or call 1-866-OUR-VOTE for instructions. If neither of these helps, ask for a provisional ballot, but you will need a picture ID to get one.

via Electoral-vote.com


From The League of Women Voters:


1)  Your Ballot, Your Vote   Don’t panic if you registered to vote but your name is not on the list. Get help from a poll worker to make sure your vote is counted. You may be directed to another polling place or given a provisional ballot.


Provisional/interim/conditional ballots are intended as a safeguard for voters whose eligibility is in question on Election Day. These include those whose voter registration is in doubt, those who may have been erroneously purged, or first-time voters who registered by mail and have I.D. problems.  


The Help America Vote Act (HAVA) requires that provisional ballots be counted if the voter is eligible to vote by state law.  However, some election officials have chosen to apply standards for counting provisional ballots that are unrelated to voter eligibility, such as casting the provisional ballot in the proper polling place and filling out the enclosing envelope correctly.  Provisional ballots are the safety net so that no voter coming to the polls will be turned away.


However, provisional ballots should not be considered a backup for poor polling place operations or a catch-all for all problematic situations.  Election officials should make every effort before the election to reduce the need for numerous provisional ballots, by improving the registration system and by other means to allow the voter to cast an ordinary/regular ballot.  Too many provisional ballots will increase the post-election administrative burden on election officials and delay election results.  


2)  I.D. – Don’t Go Without It   You may need to show I.D. To be safe, bring your driver’s license, or a paycheck, utility bill or government document that includes your name and street address.


HAVA requires that first-time voters who register by mail present I.D. prior to voting on Election Day unless the state has already verified their identity.  Unfortunately, many states have gone further,  and are requiring all voters or all first-time voters to present I.D.  In addition, while HAVA says that the application of the new requirement must be “uniform and non-discriminatory,” many states have neither established mechanisms for ensuring uniform and non-discriminatory application, nor informed the public as to what forms of I.D. are acceptable in their state.  Because this is a new requirement, it could lead to problems such as unequal and discriminatory treatment, and ultimately lead to wrongful disenfranchisement on Election Day.


3)  Writing on the Wall   Look at the signs at the polling place for directions on how to use the voting machines, a list of your voting rights, and instructions for filing a complaint if your rights have been violated.


Voters will face many changes in the polling place this year. Many will experience new procedures, some will see new equipment, others will see the same equipment as before but now wonder if they failed to cast their vote properly, and many will be first-time voters.   To address these realities, HAVA also requires that basic voting information be posted in the polling place.  Election officials should work with design and usability professionals to ensure the readability of the information they’re providing in the polling place.  Information/instructions should be written clearly and simply and provide illustrations.  Voting machine instructions should include how a voter can review his or her ballot, and how to check for overvotes and undervotes.  And, information regarding what constitutes a spoiled ballot and instructions for securing a new ballot should be provided.  


4)  When in Doubt – Ask   Poll workers are there to help you. They’ll show you how to work the machines and give you a provisional ballot if you need one. If you’re at the wrong polling place, they should tell you how to get to the right one.


Poll workers are volunteers from the local area, who are committed to helping voters. Ultimately,  the successful administration of elections lies in the hands of poll workers.  However, in too many cases, there are too few of them and/or they have not received the necessary tools from election officials.  Such tools include appropriate training, easily searched reference information to answer questions, and the official list of all voters, with their polling place identified, for the election registrar’s entire jurisdiction. 


5)  In and Out   You probably won’t have to wait too long. But even if the line is long, don’t leave without voting. The outcome of this election will be important!


Many voters state that they don’t have time to vote and that’s why they haven’t participated in the past.  Creating a sense of a positive voting experience and giving voters the tools they need to achieve this – such as the League’s 3 Ways to Make Voting a Breeze – will go a long way in increasing voter turnout.  The League is urging TV and radio stations to help with this by giving regular updates on Election Day on wait times at polling places in their area.


AND 


Know What to Do if You Experience Election Day Problems 


Call toll free --- 1-866-Our-Vote --- to report problems and to receive advice on what to do.  This hotline is being operated by the Election Protection Coalition, which is composed of many organizations including the League of Women Voters.