30
Nov/11

Dot Anything as Dot Descriptive – Registrability of TLD Suffixes


John Welch discusses a TTAB decision in which the Board rejects five applications for .MUSIC on descriptiveness grounds (the applications covered various IT services including domain name registration.

Applicant pointed out various prior regs for “.” and “dot” formative marks.  The Board noted that that was then, and this is now.  Now there is an awareness in the ether of various proposed top level domains (and the record included press for a .MUSIC proposal that apparently is unrelated to this applicant).

This holding, if affirmed, would put the kibosh on pretty much dot anything.  My suspicion is that a lot of would-be TLD operators are filing in that form to protect their intended trading name, but perhaps to cause some mischief with those who are awarded that particular TLD over them (question: if this applicant had received a registration for .MUSIC covering domain name registration, what rights would it be able to assert against a third-party that was awarded a .MUSIC TLD.

I could see ICANN wanting to prohibit a registry operator from claiming rights in a TLD suffix if it felt that such a claim hindered ICANN’s ability to award the registry to another operator.



30
Nov/11

Acme Widget – Q logo v Q logo


Not an unusual case – defendant allegedly reproduces plaintiff’s registered  Q logo on its website.  I was just curious as to what a company named Acme Widget did.  Turns out to be financing in the aviation sector.

 Complaint Acme Widget q Logo



29
Nov/11

Grew A Mustache and a Mullet, And Ate More Kale


We have a share in a ‘community-supported agriculture’ organic food plan and we get more green leafy vegetables than we know what to do with. My wife  places kale flat on a baking pan, drizzles it with olive oil, puts it in the oven, and out comes kale chips.  My nine year old eats loads of kale now, and now he can lift cars.

Any way, there’s a guy in Vermont who, how shall we put it,  sounds like a character,  and prints up EATS MORE KALE stickers and t-shirts.

OK, survey time.  Don’t look at the next paragraph yet.  Who sent him the demand letter?

Why, Chick-fil-a, which owns registrations for EAT MOR CHIKIN.  It has an advertising campaign in which cows urge people to, uh, eat more chicken.  But they spell the words wrong because they’re cows.

Apparently they went after him in 2006, then backed off.  But now the Vermont guy has filed an application for EAT MORE KALE, and you know the rest of this song.

(‘)(‘)  <- me rolling my eyes.

I had never heard of Chick-Fil-A before the song “Army” by Ben Folds  (which explains the cryptic title of the post).



28
Nov/11

CAVERN CLUB v CAVERN CLUB (Could Be Another Reputation Without Use Case)


But first I digress.  I was in a Hard Rock Cafe last month with colleagues who were discussing the rock and roll memorabilia on the wall (that is the decorative theme of that chain), and I expressed admiration for a Duane Eddy guitar in a glass case. My colleagues looked at me like I had three eyes.  I gave a short discourse on Duane Eddy and rockabilly, but even my remark that Duane Eddy was an influence on the early Beatles, drew blank stares.  I asked one colleague, someone from the UK, in his early twenties, to name an early Beatles song and he meekly offered “Penny Lane?” If you don’t roll your eyes at that one, I’m not going to explain.

Anyway, the Beatles played about 300 gigs at the CAVERN CLUB in Liverpool.  It’s where they were ‘discovered’ (but not where they really got going as a live band, which was in the clubs on the Reeperbahn in Hamburg).   In this appeal to the District Court of Nevada from a TTAB decision (below), plaintiff/TTAB petitioner, moved to cancel Hard Rock’s registration for CAVERN CLUB.  There appears to have been breaks in ownership since the club’s opening in 1957, but plaintiff seems to be able to establish that it has operated the club since 1991 (prior to that, petitioner had promoted tours of Liverpool which featured the Cavern Club as an attraction, which promotion reached the U.S.  However that doesn’t seem to be use of CAVERN CLUB as a trademark by petitioner).   Hard Rock filed for an ITU for CAVERN CLUB in 1995.

Petitioner moved to cancel alleging 2(a) ‘false association’ with an ‘institution.’  A textbook 2(a) refusal would be if someone without authorization filed a trademark for, for example, NEW YORK CITY POLICE DEPARTMENT or FBI.  The TTAB decision is fairly straight-forward on why petitioner failed on 2(a).

Petitioner also moved on fraud.  Now,  it is beyond the realm of coincidence that the purveyors of the Hard Rock Cafe, curators of rock and roll history, could not know that there was a Cavern Club in Liverpool.  However the fraud question asks to what extent HRC ‘knew’ that the operators of the Cavern Club had trademark rights in the US.    Interestingly, the TTAB decision doesn’t address whether plaintiff had such rights in the US, it merely holds that HRC didn’t know that they did.

The appeal to the District Court should be interesting.  Plaintiff has added an infringement claim, so it will have the opportunity to establish protectable trademark rights in CAVERN CLUB prior to HRC’s ITU filing date.  Readers of the blog know that the US doesn’t protect reputation without use.  On the other hand, cases such as Casino du Monte Carlo and the Grupo Gigante case (646 F3d 0309), give plaintiff a fighting chance to establish that it had protectable prior rights (if it is correct, for example, that plaintiff promoted the Cavern Club as part of its US advertising efforts in the 1991 to 1995 period).

At that point it seems plausible that plaintiff could establish that CAVERN CLUB is a famous mark, if I’m in the survey and young people aren’t.

John Welch on the TTAB decision here.

A UK music professor criticizes the decision (of course he does) here.

Complaint Cavern Club Nevada

Ttab Cavern Club 2(a)

 



23
Nov/11

Brand X Liquor


From here.

 



23
Nov/11

CALICO CORNERS v TEACUP FAMILIES re False Advertising


Owner of CALICO CORNERS toy products sue makers of TEACUP FAMILIES for false advertising in commercial shown above.

Brief False Advertising Calico Corners



22
Nov/11

Accountability and Transparency of ICANN re the Departure of its CEO


Dot-Nxt.com:  “Accountability and transparency – but only when it suits us.” (regarding ICANN’s alleged secret meeting in which it fired its CEO).



22
Nov/11

Lego Loses LEGOWORKSHOP.COM UDRP – No Commercial Use


This from the ‘about’ page of LEGOWORKSHOP.COM:

Welcome to legoworkshop! My name is Gavin. My brother Grayson (age11) and I (age 15) and are running this website for the fun of being able to show the world our creations. I attend Middle College for high school. Middle College is a program where you can enroll in a state college to attend high school. Less than 40 kids are accepted each year at each college with hundreds being turned away. We have to do a project that we start on in 10th grade and work on through 12th grade that is part of our graduation requirements. My brother Grayson, who is in 5th grade, is doing this site with me. I am not affiliated with LEGO in any way nor is this site. My brother and I simply love their products and want to feature the things we’ve built and show how to build some of the things that we’ve built.

I just found out that LEGO Group, the company that my brother and I love, is trying to take this site away from us. So by saving it I Have had to rush and get pictures of the model so I had built so far and get the website running. Please contact Sandra Looft who represents LEGO Group at [email protected] and ask them to stop bullying two kids who are merely trying to promote their product. It is clear that our site is not owned or supported by LEGO Group which by my understanding means we are not infringing on their trademark.

Lego filed a UDRP.  There seems to be a dispute whether the site ever ran ‘sponsored links’ however the panel found that there was no commercial use at the time it rendered its decision, and rejected the complaint.



16
Nov/11

By The Way, It's The Devotion of Resources To This Sort Of Thing That Erodes Our Nation's Competitiveness


Let me just channel the voice of an old cranky person first: the reason why the fact that Mike “The Situation” Sorrentino is a wealthy person is a bad thing, is that it sends the message to young people that you don’t actually have to work hard at math or science or some other useful field, to be successful.  You merely have to be fabulous.

OK, I got that out of my system.  So back in August, Abercrombie & Fitch, as part of an (alleged) publicity stunt, announced that it would pay The Situation to NOT wear its clothes.  It also offered shirts such as that above, referring to “The Fitchuation.”

The Situation is now suing, alleging false endorsement (and alleging that Abercrombie never actually contacted him regarding its ‘offer.’  This has the makings of a pretty interesting fact pattern.  A defendant has a free speech right to comment on the plaintiff and a right to parody plaintiff.  Also, there also is an explicit statement by  defendant that it doesn’t want plaintiff to endorse it.  However, there is an interesting ‘meta’ aspect to this in that in view of the novelty of the public statement, and in view of the “Fitchuation” merchandise, that a certain segment of the public might believe the exact opposite: namely that The Situation is in on the joke.

Complaint Situation



16
Nov/11

Mmmmm, Burgers


In-n-Out sues restaurant re use of allegedly infringing boomerang sign.

 Complaint in n Out Boomerang