Jysk v Monosu Dutta Roy: 11th Cir Deems Re-registration of Domain Name to be New Registration Under ACPA, In Conflict with GoPets Decision
Splitting with the Ninth Circuit in the GoPets case, the 11th Circuit has deemed a re-registration of a domain name to be a new registration for purposes of ACPA. The significance is that ACPA has a trademark priority prerequisite (at least that’s how I read it) that might be met if a re-registration is treated as a new registration.
DC Comics defeats motion to dismiss. Defendant argued that its red and yellow 5 sided shield t-shirt design (see above) was a parody of the Superman red and yellow 5 sided shield. Court holds that defendant’s use is not a parody of Superman that comments on Superman, but a merely humorous use of the shield. In fact, plaintiff had made the same joke when it too sold a ‘SuperDad’ t-shirt.
We won a motion for summary judgment that dismissed all claims against our client. It’s a 77 page decision, with extensive discussion of cross-motions to strike.
Defendant NameMedia owns and administers large portfolios of domain names, which it monetizes through advertising, brokerage, and sales. It registered the domain name NewWorldSolutions.com in 2005.
Plaintiff New World Solutions alleged common law rights in the mark NEW WORLD SOLUTIONS in connection with staffing and IT services, claiming a date of first use in 2004. It incorporated in 2007. In 2010 it contacted defendant and demanded transfer of the name, which was refused. Plaintiff then filed a U.S. trademark application, stating a date of first use of 2007. It obtained registration in 2011 and immediately contacted defendant again, repeating its demand, which again was refused. Plaintiff sued under ACPA, the cybersquatting statute, federal dilution, and related state torts.
Held: As to dilution, plaintiff could not establish use of its trademark, let alone fame, prior to defendant’s registration of the name in 2005. As to cybersquatting, it could not establish prior trademark rights prior to defendant’s registration of the domain name. Additionally, it could not establish that defendant had been aware of plaintiff, and therefore could not have sought to divert traffic from, nor otherwise interfere with defendant.
We represented defendant with John Welch as co-counsel.
Footnote 7 is of interest.
Copyright owner BMG may proceed to trial to determine if ISP Cox has contributory and/or vicarious liability arising form Cox’ users’ peer-to-peer file sharing activity.
Discussion of what constitutes a ‘repeat-infringer’ policy.
Display Works v Pinnacle Exhibits, D Maryland 2015: Motion to dismiss false advertising cause denied. Plaintiff had properly pled that informal statements made to by defendan t to customers were suffuciently disseminated so as to constitute promotional statements potentially actionable under 43(a)(1)(B).
I received the email reproduced below soliciting the use of LegalForce Trademarkia’s law services to obtain a design patent, probably because I am the corresponding attorney for a US registration covering the trademark referred to in the email’s subject heading.
There is some murk in the email as to who is soliciting who’s services. The email is signed by a customer service representative of LegalForce Trademark, Inc. LegalForce Trademarkia is identified in the text as a search engine. However, the email doesn’t promote search engine services, but rather solicits the use of a legal services.
The first sentence states: “Please speak attorney with whom you have a prior relationship . . ” (sic)
If you don’t speak ‘prior attorney,’ you can click a link that leads you to “Chat-torney.” Other links in the email lead to the LegalForce site, which contains pages that solicits the use of “LegalForce Attorneys/agents” and the “LegalForce RAPC” law firm. [update: the landing pages of these links are reproduced below]
The email states that I should apply now for a design patent.
However, the date of first use claimed in the registration of the trademark referred to in the email is 2009. The deadline for filing for a design patent is one year after public disclosure (a point acknowledged in one of the back pages of the LegalForce site). So, presumably, the product in question likely hasn’t been eligible for design patent for approximately 5 years (if it ever did have a design eligible for patent protection). It is within the realm of possibility that a trademark owner may use an existing mark on an entirely new product, and thus could still be eligible for design patent protection, but nevertheless, the one year deadline is not disclosed here prior to contact with the soliciting firm.
I wonder how many of these emails have been sent out to trademark registrants.
UPDATE 1: This original post appeared Wednesday morning, November 25. That evening, LegalForce sent me a tweet stating that “Your blog post is inaccurate. Our workflow clearly outlines this point. It linked to its ‘design patent application’ page and provided the following screenshot.
As the illustration refers to three checklist questions, presumably from a form a potential LF customer fills out, refer to the one year filing window, I assume that by ‘this point’, LF is referring to the one year window. I responded to LegalForce noting that I had reproduced the email in its entirety, so readers can evaluate the email on their own. While the omission of the one year window is only one issue raised by the legal solicitation, I note that (1) the email that leads to LF’s website, doesn’t mention the window and (2) the ‘design patent application’ doesn’t mention the one year window either (as an aside, the term of a design patent given is incorrect).
Additionally, if the ‘workflow’ screenshot illustrates the only three questions the customer answers with regard to the 1 year window, then the customer is not being asked whether the product design had been publicly displayed more than one year prior to filing (public display being different from ‘offer for sale.’)
Interestingly, the ‘design patent application’ page (Link 2 below) does contain a link to a PDF entitled “Design Patents” (the link labeled ‘Read Details PDF’), which does correctly note that ‘public disclosure’ starts the one year window.
In any event, I stand by the last sentence in my original post “. . . the one year deadline is not disclosed here prior to contact with the soliciting firm” and based on LF’s citation of its ‘workflow’ snaphot, the disclosure is apparent only after the customer has begun filling out what is described as the ‘Design Patent Application.’
UPDATE 2: On Friday evening, LF Trademarkia tweeted me to ask me to include the links to ‘give fair representation’ of its message. I have now reproduced below the landing pages from the four links in the email. The first link goes to the ‘chattorney’ page and the next three links (indicated by boldface), go to the ‘design patent application’ page. I have reproduced the urls of the landing pages in the text of the email above, as well.
ORIGINAL LF TRADEMARKIA EMAIL SENT TO ME:
Subject: Design Patent for [Trademark name] product shape?
Please speak attorney with whom you have a prior relationship if you have IP or corporate law questions. If none, schedule a free 15 minute consultation with a LegalForce law firm attorney or legal assistant by clicking here [link to http://www.trademarkia.com/bookflip/meet-attorney.aspx?sc=yelp&utm_source=admin&utm_medium=email&utm_content=FreeChattorney&utm_campaign=email]
Dear [name of registrant],
Did you know that your United States trademark solely protects your branding but not your physical product itself? The benefit to you is that if your product design is unique, it is very important to protect the physical shape of your products as a design patent [link to https://www.trademarkia.com/patent/Design-Patent.aspx] to prevent counterfeit goods or knockoffs.
LegalForce Trademarkia, the world’s largest trademark search engine, can help you protect your product design as a design patent for $899 [same link as above] plus the government fees ($380). All you need to do is upload photographs of your product design, and a registered U.S. patent attorney will prepare formal drawings for submission to the United States Patent Office. We will review your submission to ensure compliance with the requirements of the United States Patent & Trademark office.
So, what are you waiting for, apply now for a design patent! [same link a above]
I look forward to being of service to you.
[name of rep]
Customer Service Representative
LegalForce Trademarkia, Inc.
1580 W. El Camino Real Suite 10
Mountain View, CA 94040
Texas A&M sues the Indianapolis Colts re use of the mark 12th MAN.
Lead plaintiff in class action purchased the 92 fluid ounce and 138 fluid ounce bottles of TIDE PLUS BLEACH. The opaque bottles were ‘over-sized’ and did not accurately reflect the volume of detergent. Proctor &^ Gamble ‘routinely employed deceptive packaging containing excessive empty space to mislead consumers into believing they were receiving more laundry detergent than they actually were’ Also, by increasing the size of the bottles, defendants ‘maximized the shelf presence of their products.’ There does not appear to be an allegation that the bottles did not contained the identified number of fluid ounces.