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Domain Fest: Exhibition and Conference for Domainers. Registrars, re-sellers and PPC companies among sponsors and presenters.
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January 31, 2007
"Google's Top 10 Search Terms Dominated By Trademarks"
CircleID: "Google's Top 10 Search Terms Dominated By Trademarks": "The moral of the story is that consumers are generally searching specifically, rather than generically. While generic search terms remain important to website owners who are concerned with search engine ranking and increasing their traffic, the vast majority of the top search terms are unquestionably trademarks."
"Grand Criticism" Series
"Holographic Labels For Security"
Manufacturing Talk: "Holographic Labels For Security":
"An ex-fashion model, Rodrigo Otazu's move into jewellery has been embraced by a number of celebrities, including Britney Spears, who have worn his designs. The brand's success has not gone unnoticed by counterfeiters, and when fake Otazu jewellery began to appear in non-authorised outlets such as market stalls and eBay, the company decided to find a way of authenticating genuine products."
China: "Nation To Intensify War On Fake Ads"
China Daily: "Nation to intensify war on fake ads.": "China will intensify its fight against advertisements for fake or scientifically unproven medical treatments, drugs, health foods, cosmetics and beauty services, says a government document."
NoDaddy / GoDaddy
Further to the de-registration of a domain name by registrar, GoDaddy, the former registrant has now put up NoDaddy.com.
January 29, 2007
Levi Strauss: CYA Tactics Re Back Pocket Stitching?
Levi Strauss owns registrations that cover the design of the back pockets, such as this one:
which is described as:
"a double arcuate and tab design shown on the shape of a pocket, as indicated by a solid line. The lining and shading shown in the drawing are features of the mark and not intended to indicate color."
This NY Times article reports on Levis' active efforts to police its pocket design. The Times, with the help of Thomson West, created this terrific graphic to illustrate some of the third party pocket designs Levis has sued:
The article quotes competitors who suggest that this litigation is some how related to Levis' failure to take part in the emerging $200 jean market. I'm skeptical - Levis had a reputation for being litigious before there was a Seven For All Mankind.
It may be more interesting to ask: what effect has Levis' enforcement of its 'picket fence' of trademarks had on competition in its segment of the jeans market?
p.s. I don't knwo what the provenance is of the photo depicted above, but I encountered it here.
"Tom Waits Settles Advertising Lawsuit"
NY Lawyer: "Tom Waits Settles Advertising Lawsuit" ("Grammy Award-winning singer Tom Waits has settled a lawsuit in which he claimed an automaker and an ad agency violated his rights by imitating him in TV commercials, his lawyer said.")
If there were an official theme song to Lanham Act Section 43(a), then Tom Waits' Step Right Up would be it.
"Google's Moon Shot"
The New Yorker: "Google's Moon Shot: The Quest For The Universal Library" by Jeff Toobin.
January 28, 2007
"Do Pay-For-Placement Search Engines Engage In Trademark "Use"?
Foley & Lardner: "Do Pay-For-Placement Search Engines Engage in Trademark Use?"
Time Waster: Sports Logo Website
The illustrated history of sports logo: SportsLogos.net.
January 26, 2007
Trade Dress Protection In A Web Page
Why are there not more decisions regarding the trade dress of a web page? Is it because copyright preempts most such claims? Magazine covers have been awarded trade dress protection,Time Inc. v. Globe Communications Corp., 712 F.Supp. 1103 (S.D.N.Y. 1989), why not web pages? (I've been puzzling about the trade dress of magazine covers for a while).
Any way, the Western District Court of Washington has upheld a Motion to Dismiss a trade dress claim for a webpage, ruling that at this stage of the litigation, the copyright claim will not preempt the trade dress claim (link to the decision in this post from the Seattle Trademark Lawyer).
From Footnote 8:
" As a novel theory legal, there are more articles supporting trade dress protection for the “look and feel” of websites than there are published cases deciding the merits of this theory. See G. Peter Albert, Jr. & Laff, Whitesel & Saret, Ltd., Intellectual Property Law in Cyberspace 198-99 (1999 & Supp. 2005) (“One of the next conflicts to arise between the Internet and trademark law is likely to be the question of whether a Web page contains elements protectable as trade dress. . . . Trade dress protection of Web pages has yet to be the central issue in an infringement claim.”); Xuan-Thao N. Nguyen, Should It Be a Free For All? The Challenge of Extending Trade Dress Protection to the Look and Feel of Web Sites in the Evolving Internet, 49 Am. U.L. Rev. 1233, 1276-77 (2000) (“The purpose of Section 43(a) of the Lanham Act is to protect consumers from being deceived as to the source of a product or service. To fulfill that purpose, it is logical to extend trade dress protection to the overall look and feel of web sites that are inherently distinctive or have acquired secondary meaning and are non-functional.”); Jason R. Berne, Comment, Court Intervention But Not In a Classic Form: A Survey of Remedies in Internet Trademark Cases, 43 St. Louis L.J. 1157, 1172 (1999) (“One as yet barely broached area of Internet trademark litigation involves trade dress of a website. In such a case, a plaintiff may claim that the defendant has in some way infringed on the ‘total image and overall appearance’ of a site, rather than one single trademark. Although no cases of trade dress infringement of a website have been reported, at least one claim has been filed on this basis.”).
Registrar Deletes Domain Name Sua Sponte, Sort Of
Registrars reserve powerful rights to de-register domain names belonging to registrants who have violated the terms of service agreement. They tend not to, in the absence of a court order. It turns out that GoDaddy does, here in the case of a website that was making available lists of MySpace usernames and passwords.
One domain name industry site is calling this a PR nightmare for GoDaddy. GoDaddy might, however, be able to pick up some business from the people who had their usernames and passwords published.
GoDaddy's CEO maintains a blog, and we hope he comments on this.
January 25, 2007
Whose 'Famousness' Is It?
Facts: Masquelier invents a process for deriving a natural extract, and sells it in France under the PYCNOGENOL name. Horphag sells the product in the US under contract with Masquelier. They have a falling out and Horphag obtains the US registration in his own name. Garcia, a new distributor for Masquelier, begins selling a competing party in the U.S. Horphag sues Garcia for trademark infringement and dilution after Garcia reproduces the PYCNOGENOL name in several problematic ways (for example, as a meta-tag).
In his defense to the dilution cause, Garcia argues in part that the fame of the PYCNOGENOL mark in the U.S. (it is apparently a best-selling suppement) derived from Masquelier's original work. Here is the Ninth Circuit analysis:
"Garcia also challenges Horphag’s dilution cause of action
by claiming that he should not be liable for trademark dilution
when the Pycnogenol trademark had already been diluted
prior to his use. In Garcia’s opposition to summary judgment,
he argued that the “famousness of [Horphag’s] ‘Pycnogenol’
is derived from . . . [and] rel[ies] upon the famousness of the
Masquelier ‘Pycnogenol.’ ” He appears to raise the same issue
on appeal by arguing that Horphag is capitalizing on Masque-
lier’s good will and popularity, rather than the other way
around.
We disagree. Garcia has not presented any evidence show-
ing that the Masquelier’s product enjoys any fame in the
United States that is independent of Horphag’s Pycnogenol
mark. It is Horphag’s product that is a “buzz item” in the
United States, not Masquelier’s. It is Horphag that has
invested in research and marketing to increase the “famous-
ness” of its product in this country, not Masquelier. Hor-
phag’s Pycnogenol trademark is famous not because of a
French product, but because of Horphag’s own investment in
advertising, research, and quality control.
COMMENT: It's interesting how the Court is looking out at fame. At least the first six years of Horphag's use in the U.S. was 'under contract' with Masquelier. We don't know precisely how Horphag was able to register the name in 1993 under his own name. One would have to assume that during that prior to that time, however, Horphag, as a distributor, would have identified Masquelier as the source of the product in some way (at least to promote him as the inventor). From a 'moral' point of view, Horphag's fame may well rest on a foundation created by Masquelier. From a trademark dilution point of view, it may be completely correct to say that today, no one in the U.S. is aware of MAsquelier's role in creating PYCNOGENOL.
PRACTICE POINT: NEVER LET YOUR FOREIGN DISTRIBUTORS OWN YOUR TRADEMARK!
PRACTICE POINT #2: Repeat after me: "ALL USE OF THE MARK INURES TO THE USE AND BENEFIT OF LICENSOR."
January 24, 2007
Google Sues Stoller For RICO Violations
Little Caesar, inspiration for the use of the name RICO, available here.
"Copyright Suit in China Called Opening Salvo in Media War"
international Herald Tribune: "China Suit In China Called Opening Salvo In Media War"
"A lawsuit that has been filed by one of China's largest newspapers against one of the country's leading Internet portals over the issue of massive copyright violations is being described here as the opening salvo in a media war.
In the suit, which was filed in October and is expected to go to court soon, The Beijing News is seeking $400,000 in damages from a popular Internet site called Tom.com for having copied and republished more than 25,000 articles and photographs without authorization since 2003.
. . .
Very gradually, an awareness also seems to be taking hold that China's companies must build strong brands of their own to be successful, and that this cannot be accomplished in an environment where copying goes unpunished.
"To enhance the country's development we are trying to encourage innovation," said Xu Chao, vice director of the National Copyright Bureau.
"We are placing more emphasis on intellectual property and have made improvements in the law. It used to be possible for traditional media or Internet media to simply copy each other's work, but now this has been forbidden."
Pepsi Brings Your Ancestors Back From The Grave
Moronland.net: "Top 13 Worst Slogan Translations Ever" Most of these have been around a while but still worth the 30 seconds.
Note to Trademark Attorneys in non-English speaking jurisdictions: We will happily advise if your client's trademark translates into an obscenity in English.
Ninth Circuit: Kahle v Gonzalez
Kahle v. Gonzalez, 9th Cir January 22, 2007:
"Each Plaintiff provides, or intends to provide, access to works that allegedly
have little or no commercial value but remain under copyright
protection. The difficulty and expense of obtaining permission
to place those works on the Internet is overwhelming; owner-
ship of these “orphan” works is often difficult, and sometimes
impossible, to ascertain.
Prior to 1978, the number of orphaned works was limited
by the renewal requirement. Renewal served as a filter that
passed certain works — mostly those without commercial
value — into the public domain. Along with formalities such
as registration and notice (which have also been effectively
eliminated), renewal requirements created an “opt-in” system
of copyright in which protections were only available to those
who affirmatively acted to secure them. The majority of cre-
ative works were thus never copyrighted and only a small per-
centage were protected for the maximum term. "
Katonah's Time In The Spotlight
Our offices are located in Mt. Kisco. The next town up is Bedford Hills and then Katonah. Katonah, named after an Indian chief, has a nice art museum. The houses are a little more affordable than in mid-Westchester, but the commute to the city is long (definitely over an hour). Martha Stewart is usually reported as living in Bedford (really big properties) but apparently she lives in Katonah.
Her company has now filed several applications for the mark KATONAH covering various housewares.
If the examiner had uncovered information suggesting that Katonah is known as a source of housewares, which it isn't, then the application would have been in trouble. In this case, it gets an office action that says:
"Applicant must specify whether the mark has any significance a specific field, trade or industry, or any geographical significance, or any meaning in a foreign language. 37 C.F.R. §2.61(b).
Specifically, Applicant must indicate specifically whether the goods will be manufactured, produced or sold in, or will have any other connection with, the geographic location named in the mark. 37 C.F.R. §2.61(b); TMEP §1210.03. See attached article noting that Martha Stewart lives in Katonah, New York. "
So then Applicant has to respond:
"Katonah is a town in New York which serves as the inspiration for the design of the goods intended to be sold under the mark. The goods will not be manufactured or produced in Katonah."
And the application is approved for publication, where Katonah resident Terry McAulliffe (Hi Terry! Remember me? I did about three seconds of work on a matter for you when you were at Nynex, about 17 years ago) notices it and brings it to the world's attention.
Then the town of Katonah gets a little concerned, afraid that the crazy woman in the haunted house has stolen the name of their town, so, carrying pitchforks and torches, they raze her mansion to the ground.
No, just kidding. The town expresses concern as to the effect that Martha Stewart's ownership of the KATONAH trademark. However, there will be no effect. The local businesses will continue to be able to truthfully claim that they are located in Katonah, even the furniture stores. They, like us, however, will not be able to use KATONAH as a trademark for the goods covered by Stewart's registrations. So, in the end, it's a good thing.
More on the use of geopgraphic terms as trademarks here.
January 23, 2007
Your Logo Here
Well, I should have anticipated that, but the first people to contribute logos to the pageant of trademarks slide show, sent in logos for their own trademark firms. But, given that both logos had artistic merit, they have been included.
You can add to the show by emailing a JPG or a PNG (no other format) file to TRADEMARKS at CELLBLOCK dot Com. No subject heading is necessary. I monitor all submissions.
Remember, the button bar at the bottom of the Cellblock viewer allows you to go forward and backward, change the speed, and allow for full screen viewing (turning it into a nifty screen saver).
January 21, 2007
Join The Never-Ending Pageant Of Trademarks: Send Me A Logo
The thing on the right side of the template (RSS users - you have to go the html version to see this) is called a CELLBLOCK (tm) graphic viewer (disclosure - it's created by my client, Gloto). The cool thing is that anyone can add an image by simply attaching a JPG or PNG file to an email and sending it to TRADEMARKS at CELLBLOCK dot COM. I monitor what gets sent before it's uploaded, so no funny stuff.
At the bottom of the CELLBLOCK frame you will notice a control bar. The buttons on the bottom left allow you to advance to the next image. The slider in the middle allows you to advance the speed of the show. The button on the far right allows you to make the display go full screen - turning the CELLBLOCK into a screen saver.
So if I have left out your favorite logo, please email it to TRADEMARKS at CELLBLOCK dot COM. If you're on the road see some particularly beautiful specimen of a trademark, snap a photo and email it from your cellphone.
If you want a CELLBLOCK of your own, go to CELLBLOCK.COM.
January 20, 2007
76 Balls
WSJ: "Fans Leap To Save A Road Icon" (sub req):
"Surveys showed that consumers preferred gas stations that were well-lit and had a "bright, clean look," he says. Color experts hired by the company said a red and white palette conveyed this orderliness. The orange balls didn't fit.
Starting in 2003, the balls started coming down and being replaced with flat signs with a small red-and-blue 76 logo. Kim Cooper, an author and cultural historian, noticed the new color scheme at a gas station near her Los Angeles house. "It made me feel unsettled," she says of the new colors. A couple of hours later, she had registered the Web site www.savethe76ball.com."
January 17, 2007
Appellant Brief Re Sale Of Keywords As Trademark Use
Prof Goldman: "Rescuecom v. Google Appellant Brief" (2d Circuit appeal).
iPhone: Section 8's Day In The Sun
Note to self: never submit a specimen of use I wouldn't want to see questioned on the editorial page of the Wall Street Journal.
A trademark owner has to submit a Section 8 affidavit in the sixth year of the registration term. The affidavit has to state that the owner is using the mark or is not using for good reason (as in, factory burned down).
It may also submit a Section 15 affidavit at that time, which states that the mark has been in continuous use for 5 years. A Section 15 is optional, but it brings important statutory benefits.
As indicated here previously, Cisco filed a Section 8 use affidavit but not a Section 15 affidavit, by the May 06 deadline, for its iPHONE registration. What appears to have occured is that the original iPhone product was taken off the market, use was interrupted, and resumed no later than the Dec 06 re-introduction. The technical issue would be: was Cisco making trademark use in May 06 when it filed the Section 8.
ZDNet took a look at the specimen for Cisco's Section 8 (detail pictured above - the full specimen is available through TDR at USPTO.GOV) and noted that it appears to consist of an iPhone sticker slapped on a box for a pre-existing product. It implies that Cisco fabricated the specimen, which allegation Cisco has addressed.
I emailed the author about errors in the article (including the assertion that Cisco needed to prove continuous use). I tried to make the point that it's not possible for an outside observer to come to any certain conclusion as to the validity of Cisco's filing. I did make the point that Cisco was ably represented when it filed, and it would have been crazy to fabricate use when (1) it knew Apple was watching; and (2) it could have claimed excusable non-use. My comments were included in this follow up ZDNet story (which article, in my view, muddies the issue in its use analysis. That Cisco didn't 'ship' a product until Dec. 06 is relevant to an analysis of the strength of Cisco's rights but not necessarily relevant to whether Cisco met technical user requirements in May 06).
A traditional view of trademark use is that the trademark user has to be able to take orders, but not necessarily fulfill orders, to satisfy trademark use requirements on a particular date. A classic example would be trademark use with regard to airplanes or oil tankers, where the order is placed years before the product is shipped. So given the expansive definition of use, it's hard for an outsider to come to a definitive conclusion as to Cisco's May 06 activities.
I thought that was that and didn't blog it.
Well, today's Wall St Journal editorial page contains a piece entitled "iFoodfight." It is an interesting essay that makes the point that litigation is the continuation of business by other means (and sort of implies that Apple is the moral favorite here). it also notes that:
"What's more, ZDNet, the online news service, examined the paper trail and finds that Cisco may have failed to meet a six-year deadline to show it was making use of the trademark. Cisco did submit something just before an additional six-month grace period ended, but -- according to ZDNet, which backs up its report with a photo -- the filing consisted of slapping an "iPhone" sticker on a box for its Linksys Cordless Internet Telephony Kit."
Well, if push comes to shove, then maybe someday Apple will put Cisco to strict proof and Cisco will have to explain the circumstances behind the specimen. Cisco did or did not satisfy Section 8 requirements. But in the short term, the ZDNet article, and the WSJ citation of it, creates an unfair inference. A sticker on a re-named box is not itself per se evidence of fraud.
Real note to self: don't submit an affidavit to the PTO that you aren't prepared to explain under cross.
Aside: There may be profound issues here regarding (1) the mainstream press reporting on technical legal issues and (2) lawyers speaking to the mainstream press about technical legal issues, but I will leave those for future posts.
January 15, 2007
Brevity As The Soul Of Law In Copyright Case
Prof Patry praises a SDNY copyright opinion (concerning the "Meet The Fockers" screenplay), for its brevity and clarity.
YouTube Statistic Of The Day
NBC Universal has three employees who view YouTube everyday for studio-owned material, and sends 1,000 requests a month to YouTube to take down such material. From: "Hollywood Asks YouTube: Friend or Foe?"
Proposed Legislation To Restrict Internet, Cable And Satellite Recording
January 14, 2007
Synthetic Or Cultured Diamonds?
Diamonds can be produced in a lab. Unlike cubic zirconoia, these diamonds are molecularly identical to naturally occuring diamonds (and rival natural diamonds for clarity.
Now the diamond associations are asking the FTC that such diamonds be referred to as synthetic diamonds and not cultured diamonds. Cultured diamond creators argue that their process is analogous to that used for creating cultured pearls, in that the gem is created not by 'synthesizing' but by reproducing natural processes (WSJ reg req).
January 13, 2007
NY Times: 'Interpreting The Beatles Without Copying'
NY Times: 'Interpreting The Beatles Without Copying' (The Smithereens do their own version of the Beatles 'Meet The Beatles' album).
In A Related Story, the RIAA Has Announced Formation Of Its Own Navy
January 12, 2007
2d Cir: Shake It Like A Polaroid Factor
2d Circuit decision in Louis Vuitton v Burlington Coat Factory discussing proper application of the Polaroid factors (the test of likelihood of confusion in these parts):
In applying the Polaroid factors during resolution of the parties’ claims at a trial
on the merits, the District Court should consider not only the potential for consumer
confusion as to the source of the marks in question, but should also consider the potential for confusion as to the “sponsorship, affiliation, connection, or identification” of those marks. Star Indus. v. Bacardi & Co., 412 F.3d 373, 383 (2d Cir. 2005). The District Court should give particular attention to the Polaroid factors in light of the potential for types of confusion other than source confusion, focusing perhaps especially on (1) the proximity of the products and their competitiveness with one another, (2) evidence that the imitative mark was adopted in bad faith, and (3) sophistication of consumers. See, e.g., Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 874-75 (2d Cir. 1986); Sports Auth. v. Prime Hospitality Corp., 899 F.3d 955, 964 (2d Cir. 1996). In considering both source and non-source confusion, the district court should ensure it gives adequate weight to the strength of the Louis Vuitton trademark when weighing the various Polaroid factors. See Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108, 116 (2d Cir. 2006). Finally, we note that the potential for non- source confusion and its applicability to the Polaroid factors may be relevant to Louis Vuitton’s claims under New York’s anti-dilution statute, New York General Business Law Section 15 360-l (McKinney Cum. Supp. 2007). See Hormel Foods Corp. v. Jim Henson Prods., 73 F.3d 497,16 506-08 (2d Cir. 1996).
2d Circuit: VERSACE v. VERSACE
Short Second Circuit decision affirming District court injunction against Alfredo Versace, who continues to violate an injunction against him to stop using the VERSACE mark. Discussion of extraterritorial application of Lanham Act.
My Annotatation of "How Apple could fight Cisco"
How Apple could fight Cisco
By Tom Krazit
Staff Writer, CNET News.com
Published: January 12, 2007, 4:01 AM PST
MY COMMENTS ALL CAPS.
News analysis A cell phone is to an Internet phone as an airplane is to a faucet?
That analogy isn't likely to appear on the SATs next year. But that's precisely the question at the heart of the legal dispute over whether Apple will be allowed to use the iPhone name--currently trademarked by Cisco--for the new device unveiled at Macworld. Cisco sued Apple on Wednesday, claiming the iPhone violates a trademark Cisco acquired in 2000 and uses for a line of Internet phones.
NOT REALLY - RELATEDNESS OF THE GOODS IS A SUBSIDIARY ISSUE, AND ONE OF THE LESS CONTROVERSIAL ONES HERE. ARGUMENTS CAN BE MADE TO THE CONTRARY, BUT BECAUSE THE POINT OF APPLE'S iPHONE IS THAT IT IS '3 DEVICES IN ONE', ARGUING UNRELATEDNESS BETWEEN DIFFERENT TYPES OF PHONES IS NOT LIKELY GOING TO BE PLAN A.
IF YOU HAD TO GO WITH SOMETHING OTHER THAN LIKELIHOOD OF CONFUSION AS THE HEART OF THE ISSUE, I WOULD GO WITH 'STRENGTH OF THE PARTIES' MARKS."
There are a few avenues that Apple can pursue in defending itself against Cisco's lawsuit. However, no matter what the company does, it is treading uphill because Cisco has a registered trademark with the U.S. Patent and Trademark Office, according to lawyers interviewed Thursday. "As a federal trademark holder, there are certain presumptions," said Grace Han Stanton, a trademark lawyer with Perkins Coie in Seattle.
RIGHT, HOWEVER, APPLE WILL CERTAINLY PICK UP ON THE FACT THAT CISCO FILED A SECTION 8 BUT NOT A SECTION 15 AFFIDAVIT IN THE SIXTH YEAR OF ITS REGISTRATION, SO IT WILL NOT HAVE A PRESUMPTION OF CONTINUED USE DURING THE LIFE OF THE REGISTRAITON. SECTION 8 MEANS CISCO STILL WANTS THE REGISTRATION, SECTION 15 MEANS THAT THE REGISTRANT HAD USED THE MARK CONTINUOUSLY FOR 5 YEARS (AND IF THE SECTION 15 IS ACCEPTED, THEN THE MARK WOULD BECOME INCONTESTABLE AGAINST PRIOR RIGHTS. IT IS ALSO PRESUMPTIVELY DISTINCTIVE.
INCIDENTALLY, ANOTHER NEWS ARTICLE ON THIS CASE POINTS OUT THAT CISCO FILED ITS SECTION 8 TOWARDS THE END OF THE GRACE PERIOD, AND THAT APPLE WILL ARGUE THAT THIS IS EVIDENCE OF ABANDONMENT. WELL, AN AFFIDAVIT FILED DURING A GRACE PERIOD IS TIMELY. GRACE PERIOD FILING MAY BE EVIDENCE THAT CISCO HAS A BUSY TRADEMARK DEPARTMENT. WHATEVER CISCO'S USE PICTURE WAS, THE DAY IT FILED ITS SECTION 8 IS BESIDES THE POINT.
Apple also apparently recognized the value of Cisco's trademark, as it started negotiating with Cisco for the rights to use the iPhone brand as early as 2001 and was involved in negotiations as late as Monday night, according to Cisco. Apple has declined to comment on its negotiations with Cisco.
APPROACHING CISCO SHOULD NOT BE HELD AGAINST APPLE AS AN ADMISSION OF LIKELIHOOD OF CONFUSION (BUT SHOULD MERELY BE AN ADMISSION THAT CISCO WAS AN 'ISSUE TO BE DEALT WITH." DICTA IN THE 2LIVE CREW CASE SHOULD INFLUENCE HERE THAT PARTIES SHOULD NOT BE PENALIZED FOR TRYING TO CLEAR CLOUDS FROM TITLE.
INCIDENTALLY, THE SUBSTANCE OF THOSE DISCUSSIONS PRIOR TO THE ANNOUNCEMENT COULD BE OF RELEVANCE.
One tack that Apple can take is proving that its iPhone is as different from Cisco's iPhone as Delta Air Lines is different from Delta Faucet, said David Radack, chair of the intellectual property department at the Pittsburgh law firm Eckert Seamans Cherin & Mellott. No one is going to call Delta Faucet looking for a round-trip ticket from San Francisco to New York, so two companies can use the same trademark if they don't confuse the other's customers, he said.
SEE COMMENTS ABOVE ON RELATEDNESS.
Preventing consumer confusion is one of the primary reasons for trademark law, Radack said. Courts must consider whether the average consumer would be flummoxed by the fact that a faucet company and an airline share the same name. "Since the mark is the same, are the goods substantially different?" he asked.
This appears to be one facet of Apple's legal strategy, as one part of its statement Thursday in response to the lawsuit read, "We're the first company ever to use iPhone for a cell phone." Any court taking up the Cisco versus Apple case would have to decide if voice over Internet Protocol (VoIP) phones are substantially different from cell phones, and while some might consider a phone a phone, it's not clear cut, Radack said.
THE ISSUE WIL NOT BE WHETHER VOIP PHONES ARE TECHNOLOGICALLY DIFFERENT FROM CELLPHONES BUT WHETHER IN THE MARKET, ARE THEY PERCEIVED TO BE SO DIFFERENT THAT CONSUMERS WILL EASILY DISTINGUISH BETWEEN SUCH OFFERRING EVEN IF THEY ARE UNDER THE SAME BRAND.
McDefense strategy
Apple can also argue that it owns a "family" of trademarks related to the iPhone,
For example, the iPod, iTunes, iMac, iWork and iLife products all bear a strong association with Apple, so the company could argue that consumers would naturally associate the iPhone with Apple.
SEE COMMENTS BELOW ON MARKET ANTICIPATION THAT THE PRODUCT WOULD BE NAMED 'iPHONE' AS EVIDENCE OF APPLE'S RIGHTS IN A 'i' FAMILY.
The most famous example of this strategy is used by McDonalds, which has successfully argued that any other company that attached "Mc" to their product, like a McPhone, is creating consumer confusion that the McPhone is a McDonald's product. Even though you really shouldn't eat a phone, consumers would automatically associate McDonald's with anything using the "Mc" . . ..
The problem with this argument is that the letter "i" is not a strong letter for trademark purposes, said Grace Han Stanton, a trademark attorney with Perkins Coie in Seattle. "There are a number of parties that use 'i' for Internet services," she said.
YUP.
For example, Sony uses a technology it calls iLink to describe its implementation of the FireWire, or IEEE1394, connection. And there's also a company that operates the iBoat Store, selling boats and boating supplies over the Internet. And several iPod accessory makers use lower-case "i"s in their product names, such as the Soundcast iCast or the Klipsch iGroove . .
WELL, THIS WILL CUT BOTH WAYS. IT SHOWS THIRD PARTY USE OF THE i PREFIX BUT ALSO IN A WAY THAT SUGGESTS AFFILIATION WITH iPOD.
And Apple has established an association between itself and the specific iPhone term because it went ahead and launched a product with a name that it didn't have clear rights to use.
YES, BUT APPLE ALSO WILL HAVE A LOT OF EVIDENCE TO THE FACT THAT THE PUBLIC EXPECTED THE PRODUCT TO BE NAMED iPHONE BEFORE THE ANNOUNCEMENT ON TUESDAY.
This is called "reverse confusion," when one company starts using a trademark used by another company, and the later entrant into the market creates a significant buzz around its products. Given the sheer volume of iPhone coverage and that Apple is better known among average consumers than Cisco, people might assume that Cisco is ripping off Apple's iPhone with its family of VoIP phones, Radack said.
HOWEVER, CISCO GOT THE COVERAGE IT DID IN ITS DECEMBER ROLL-OUT PRECSIELY BECAUSE ITS PRODUCT WAS NAMED iPHONE (WITH THE IMPLICATION THAT APPLE COULD NO LONGER USE THE NAME.
THIS IS AN IMPORTANT POINT. ONE ISSUE MIGHT BE: WHEN IS CISCO'S PRIORTY DATE, AND WHEN DID APPLE REALLY DEVELOP A STRONG i-FAMILY?
AS AN ASIDE, IT'S MY UNDERSTANDING THAT THE HIGHEST DAMAGE AWARD CASES IN TRADEMARKS TEND TO BE REVERSE CONFUSION CASES, BUT IN THOSE CASES, IT TENDS TO BE DAVID v GOLIATH. I SUSPECT THAT CISCO HAS A HIGHER MARKET CAP THAN APPLE (MAY BE WRONG) AND IS NOT A DAVID.
If either of those tactics fails to impress a judge or jury, Apple could also claim that Cisco has failed to defend its iPhone trademark, Stanton said. Cisco acquired the iPhone trademark when it bought Infogear in 2000. Since then, other companies, such as Teledex and Orate Telecommunications Services, have shipped products--products that directly compete with the Cisco/Infogear line of phones--bearing the iPhone moniker.
THIS MAY WELL BE ITS 'ACE IN THE HOLE." IT CAN LIVE WITH iPHONE AS A WEAK MARK. IT'S PRODUCT HAS 'OPENED' THANKS TO THE FREE COVERAGE.
Even Cisco doesn't appear to have actively used the iPhone name until weeks before Apple's announcement. Cisco says that it sold products under the iPhone trademark after it acquired Infogear in 2000--until it started selling Linksys VoIP phones using the iPhone name starting in early 2006. But references to either a Cisco or Linksys iPhone were not readily available on the Web sites of either division until December 2006, when Linksys launched the iPhone family of VoIP phones.
If Apple can argue that Cisco failed to defend the trademark until it launched the new iPhones in 2006, it could possibly convince a judge that Cisco abandoned the trademark, Stanton said.
NAH, ABADONMENT IS REALLY HARD TO PROVE. AND IF CISCO KNEW SINCE 2001 THAT APPLE WAS INTERESTED, I WOULD BE SURPRISED IF APPLE COULD ESTABLISH THAT.
Cisco has said that it used the iPhone trademark on VoIP phones sold in early 2006, and maintains that is has actively defended its trademark. "We have taken all actions necessary to satisfy all elements to prove the validity of our trademark under trademark law," a Cisco spokesman said.
However, settlement is the most likely outcome of this dispute, given the burden of proof on Apple needed to overcome Cisco's trademark registration, the lawyers said. "Even big companies get legal fatigue," Radack said.
ALTHOUGH APPLE HAS SPENT MILLIONS ON ITS LITIGATIONS WITH APPLE RECORDS. I DON'T THINK IT FATIGUES EASILY. I THINK UNEASE WITHIN MARKETING IS A GREATER RISK.
But Cisco has said that negotiations broke down over Cisco's desire for interoperability between its iPhone and Apple's. Apple is not known for its desire to make its products interoperable with anyone else's, so if there's no amount of money that could make Cisco happy, we could be in for a battle.
YES, INTEROPERABILITY MAY BE THE HEART, AND AS STATED ABOVE, APPLE MAY PREFER A RULING THAT iPHONE IS GENERIC BEFORE THEY AGREE TO EXTERNALLY-IMPOSED INTEROPERABILITY.
DISCLOSURE: I HAVE NEVER REPRESENTED EITHER PARTY. I HAVE CLIENTS WHO ARE EITHER ADVERSE TO OR HAVE DEALINGS WITH APPLE (SOMETIMES BOTH). I AM TYPING THIS ON A POWERBOOK. I DOWNLOAD MUSIC FROM iTUNES. MY PHOTOS ARE STORED ON iPHOTO. I WANT TO BUY AN iPHONE.
January 11, 2007
Text of Complaint In Cisco v. Apple
News.com is hosting a copy of the complaint in Cisco v. Apple.
Interesting aside: Apple allegedly blew the Ocean Telecom cover when it filed an application in Australia for iPHONE in Sept 06, identifying the same Trinidad & Tobago application for iPhone as a basis for convention priority, as is the basis for the U.S. application filed in Sept 06 in the name of Ocean Telecom (note - the Paris Convention allows you to file an application in which you have an establishment, and take up to 6 months to file for the identical trademark (in the identical applicant's name) for the identical (or fewer) goods/services, and claim the earlier filing date as the priority date of the later filed application. Thus, the U.S. and Australian applications, which were filed in September 06, will be treated for priority purposes as if they were filed in March 06 (although it would seem Apple will have to solve the discrepancy in applicant name between the Trinidad and the Australian applications).
January 10, 2007
Beatles Sue Apple Over iPhone
"No, just kidding" said an Apple Records spokesperson.
Unfrigginbelievable - Cisco Sues Apple Over iPhone
Reuters reports that Cisco sues Apple over its use of IPHONE. Yesterday, Cisco had indicated its belief that it would receive a signed copy of an agreement.
UPDATE: Cisco alleges use of front company.
There's a U.S. application filed here in September, claiming March 2006 priority based on a Trinidad and Tobago application, in the name of Ocean Telecom Services. Cisco alleges that this is a front company for Apple.
UPDATE: Cisco's statement.
UPDATE: NY Times on the lawsuit, quoting Apple VP for World Communications.
January 09, 2007
Reuters: Cisco Expects Apple Agreement On iPHONE Trademark
Reuters:
NEW YORK, Jan 9 (Reuters) - Cisco Systems Inc. (CSCO.O: Quote, Profile , Research) said on Tuesday it expected to reach an agreement with Apple Computer Inc. (AAPL.O: Quote, Profile , Research) later Tuesday on its "iPhone" trademark after Apple unveiled a mobile phone with the same name.
Cisco spokeswoman Penny Bruce said the two companies had been in discussions, and it believed that Apple intends to agree to a final document and public statement concerning the trademark.
"We expect to receive a signed agreement today," she said.
Linksys, a division of Cisco, has launched several wireless products with the iPhone name.
HT Jay.
"Keyword Ads and Metatags Don't Confuse Consumers"
Prof Goldman: "Keyword Ads and Metatags Don't Confuse Consumers -- J.G. Wentworth v. Settlement Funding" (Eastern District of Pennsylvania, finding no likelihood of confusion). From the post:
". . . this case stands for two clear legal propositions:
* if keyword-triggered ad copy doesn't display the plaintiff's trademarks, plaintiff loses
* if search results don't display the plaintiff's trademarks even though the trademarks were included in the keyword metatags, plaintiff loses"
January 08, 2007
Perry Ellis Sues J Crew Over Penguin Design
PEI Licensing, a subsidiary of Perry Ellis, owner of the Munsingwear PENGUIN trademark, has sued J Crew in the Southern District of New York, alleging that various items of clothing bearing penguins, including the PENGUIN CRITTER CARDIGAN depicted above, infringe and/or dilute its famous PENGUIN trademark. Complaint on Pacer.
PEI Licensing v. J Crew International, 06 CV 15385, SDNY Dec 21 2006.
January 06, 2007
This Blog Needs A Mascot
Agenda inc.: "Marketers Expand Brands With A Bit Of Character" (on the use of 'brand ambassadors).
Artist Improves Upon Cage's Silence
Not daunted by John Cage's estate's lawsuit against a group that allegedly copied 60 seconds of John Cage's work consistng of 4 minutes and 33 seconds of silence (to which the group's lawyer had replied that Cage's lawyer had not specified which 60 seconds of silence were copied), conceptual artist Jonathan Keats has now released, MyCage, a 4 minute and 33 second ringtone, consisting of computer-generated silence. He views this as superior to Cage's verision, as digital technology allows for a more silent silence (although I suppose some will argue that ambient noise was one of the points of Cage's work). HT wmmna.com.
January 03, 2007
First Irony Of The New Year
I bought my son a batting helmet. "Common substances (such as paints [and] decals) applied to this helmet can cause permament damage not visible to you." You know where I read that? On the decal applied to the helmet.
"Is Your Medicine The Real Deal?"
BusinessWeek: "Is Your Medicine The Real Deal?:
"When Leslie-Ann Lescarbeau saw the sales pitch from a pharmacy called Med4Home on the Internet and TV in 2004, she couldn't resist signing up. Med4Home promised to deliver her medications right to her door and file her Medicare claims for her. Lescarbeau, 50, suffers from asthma and other lung problems and sometimes uses a wheelchair. But what Med4Home actually sent her, she believes, were reformulated versions of the brand-name medicines she was supposed to take. One of the drugs even allegedly contained alcohol, a known lung irritant. After Lescarbeau made several harrowing trips to the ER, struggling to breathe, a doctor discovered the Med4Home drugs and ordered her to switch pharmacies. "I did not see anything on Med4Home's Web site that said I wouldn't be getting the real thing," says Lescarbeau, a nondenominational Christian pastor who lives in Middletown, Conn."
January 02, 2007
Samuel Clemens May Claim To Be Mark Twain Under Lanham Act
But Samuel Clemens can't claim to be Mark Twain in my business dealings with him (if it matters to me that he is in fact Mark Twain).
Antidote International Films, Inc. v. Bloomsbury Publishing, PLC, -- F.Supp.2d --, 2006 WL 3822484 (S.D.N.Y.): Defendant author wrote a fiction work as under a pseudonym, and in promoting the work, created a persona for the pseudonym (that of the protagonist of the fiction work, a 12 year old boy). In negotiating a sale of film rights with plaintiff, defendant (in the guise of the boy's representative), represented that the boy was real (to the point of fabricating documents to prove the existence of the boy). Defendant's ruse was uncovered in the popular press, and the film rights' value dropped to nothing. Plaintiff sued defendant for fraud and under several theories under Lanham Act 43(a), including false designation of origin. Defendant moves to dismiss.
Plaintiff's fraud claim stands (as the existence of the boy was of material importance to plaintiff's plans for a film).
The 43(a) claims however, are barred by Dastar for the reasons explained here by 43(B)log. And I cannot recommend Prof Tushnet's post (and cites therein) highly enough.
In short, Dastar, intended to prevent authors of public domain works from using trademark law to re-claim such PD works (or even forcing attribution), holds that 'origin', as used by the Lanham Act, doesn't refer to the source of ideas, concepts or communications. Thus defendant did not misrepresent the origin of the novel. As Prof Tushnet notes, the practice of anonymous and pseudonymous authorship of novels seems to weigh heavily against holding otherwise.
On a related note, Lemony Snicket may not be his real name.
An Abel Discussion Of Dilution
Friend of the Blog Sally Abel of Fenwick and West has authored: "Congressional Balancing Act: The Trademark Dilution Revision Act of 2006"
Feel For The Velvety Label In Your Local Wine Shop
In June '06 I blogged that I was aware of one 'tactile' trademark, a German registration for a word in braille. Now I'm aware of two tactile trademarks. The INTA newsletter advises that U.S. Reg. No. 3155702 has been issued to American Wholesale Wine & Spirits, in connection with KHVANCHKARA wine. The description of the mark is "a velvet textured covering on the surface of a bottle of wine."
Questions:
1. What type of texture on the surface of another bottle of wine would be confusingly similar?
2. Would this be confusingly similar to VELVET TOUCH Wine (were such a thing to exist)?
3. Would this be confusingly similar to BLACK VELVET Scotch, sold in a velvet sack?
HT and Happy New Year to JW at the TTABlog.
Video Sharing Site Of The Day: DailyMotion.com
As YouTube goes 'legit,' other video-sharing sites are moving to fill the demand for unpoliced video content. DailyMotion.com, based in Paris, reportedly has 1 million registered users. DailyMotion's Terms of Service prohibit the uploading of infringing content, and it reportedly takes down infringing videos that have been brought to its attention.
There are, however, sites, such as Quicksilverscreen.com, that provide links that would apparently lead to copyrighted content on DailyMotion. Some of these links indicate that the content has been removed from DailyMotion, and some do not.