Maybe the Lanham Act Should Be Amended To Create A 'Reputation WIthout Use' Cause of Action Derived From Article 6Bis
John Welch blogs about a precedental TTAB case holding that Section 44 of the Lanham Act doesn’t create a ‘famous marks’ cause of action here. He reproduces an email I sent to the INTA listserv, suggesting that maybe the Us should amend its act to include a cause of action that US companies have utilized abroad, specifically a cause of action relating to the intentional adoption of a mark that is famous to the US public, even if said mark is not in use in the US.
Wall Street Journal discusses whether its a good idea to maintain a brand after the designer dies.
French fashion giant Lacoste has lost its court battle against a Gloucestershire-based dental practice, after arguing in court that the surgery’s use of a crocodile logo was too similar to the famous trademark found on its polo shirts.
43(B)log: “If You Can Make It Anywhere, You Can Make It Here.”
“The Second Circuit certified two questions to the New York Court of Appeals. That court concluded that New York does have a common-law unfair competition claim, but that doesn’t include the famous/well-known marks doctrine. Except insofar as it actually does . . .”
Discourse.net (Prof Froomkin) constructs a timeline in the Johnson Johnson / Red Cross dispute regarding the Red Cross symbol.
Let’s say you’re RIM, owner of the BLACKBERRY trademark. After years of trying to get into China market, just as you launch, you discover that a Chinese telecom giant has just launched its own wireless email product named REDBERRY.
What do you do?
Well, you could contact a great Chinese trademark lawyer like Spring Chang at Chang Tsi, and ask her what to do. This is what she’ll say (note – this letter was composed NOT at the request of RIM but at my request for purposes of the Trademark Blog, to illustrate what I think is a typical fact pattern confronting trademark owners):
1. Chinese Trademark registrations for BLACKBERRY registered by Research in Motion Limited – I confirm that RIM possesses around fifteen (15) registrations/applications of BLACKBERRY in Classes 9, 38 and 41 in P.R. China. The first registration was obtained approximately in the year 2001. Based on the aforesaid, I do not think we need to worry about a legal basis for a proposed action. ED NOTE: THIS WAS IN RESPONSE TO MY QUESTION AS TO WHETHER AN UNREGISTERED FAMOUS MARK CAN BE USED TO ENJOIN AN INFRINGEMENT – AN UNREGISTERED WELL-KNOWN MARK CAN BE USED IN THE PRC AS A BASIS FOR OPPOSING AN APPLICATION.]
2. Status on registration and use of the trademark REDBERRY – Our online research indicates that China Unicom released the REDBERRY push mail service on April 3, 2006. There is not much information revealed by our research regarding the actual use of REDBERRY as a trademark, and we are under the impression that it has not yet been used in a large scale. Meanwhile, our on-line trademark search reveals no REDBERRY trademark application/registration, in the name of China Unicon or any others. In a word, China Unicom has conmmenced the business use of REDBERRY but they would not have applied for/registered the trademark REDBERRY (unless they filed the application not long ago, like within 3 months or a little bit longer, in that circumstance, our search could not reveal the existence of the trademark applicadtion). To be prudent, an official search is likewise recommended.
3. Non-use attack concerns – Before contemplating any action against China Unicom, based on our registration for BLACKBERRY, we need to make sure that the client’s BLACKBERRY registrations in China are not vulnerable to non-use attacks (as some of them are registered for more than three years, but so far as I know, BLACKBERRY does not appear to have been introduced into China Mainland). [ED NOTE: DIFFERENT JURISDICTIONS HAVE DIFFERENT NON-USE TERMS. IN SOME JURISDICTIONS, RESUMED USE ‘CURES THE DEFECT’ BUT IN SOME JURISDICTIONS, DEAD IS GONE. OTHER VARIABLES REGARDING NON-USE IS WHETHER ADVERTISING WITHOUT MORE CONSTITUTES USE, AND WHETHER GOVERNMENTAL ACTIONS MAY EXCUSE NON-USE – ALSO, USE IN HK WILL NOT BE DEEMED USE IN PRC]
Please note that although BLACKBERRY is very famous in the US, Europe and many other jurisdictions, Chinese authorities will mainly consider its reputation and prior rights in China in determining a dispute. [ED. NOTE – THIS ILLUSTRATES A CHALLENGE IN FAMOUS MARK PROTECTION – DIFFERENT JURISDICTIONS HAVE DIFFERENT DEFINITIONS OF FAME – THE MOST COMMON DEFINTIONS BEING ‘WORLDWIDE FAME’ AS OPPOSED TO ‘FAMOUS HERE.’]
In other words, we can hardly resort to the international reputation of BLACKBERRY in an action againt China Unicom or other infringors, but rely on the prior registrations (and possible use) of the trademark in China. If the client is not sure about the actual use of BLACKBERRY mark in China, I suggest we take a very cautious attitude in determining the strategies in order to avoid possible offensive actions against our own registrations in China. [ED NOTE: MANY LARGE TRADEMARK OWNERS MAINTAIN TRADEMARK HYGIENE PROGRAMS TO ENSURE THAT IMPORTANT MARKS DO NOT BECOME VULNERABLE TO NON-USE ATTACK].
4. Proposed actions against infringement – Basically, if not considering the non-use attack issues, the client may consider
4.1 serving a Cease and Desist Letter to China Unicom in hope that they may give up the REDBERRY mark voluntarily.
4.2.lodging a litigation against China Unicom to force it to stop the use of REDBERRY. [ED NOTE: ALWAYS INQUIRE REGARDING URGENT vs. PERMANENT INJUNCTION RELIEF. ASK ABOUT FILING DEADLINES AND WHETHER BONDS WILL BE REQUIRED].
For the first choice, it could be efficient in terms of time and cost, if the cease and desist letter actually works. While, the outcome of a cease and desist letter is normally unpredictable because it depends on the counterparty’s attitude. [ED. NOTE: THIS IS GOOD GENERAL ADVICE BUT IN THIS PARTICULAR SITUATION, MY HUNCH IS THAT BECAUSE CHINA UNICOM LIKELY DIDN’T SELECT THE MARK BY ACCIDENT, IT IS UNLIKELY TO BE PERSUADED BY A LETTER]
For the second choice, more factors need considering carefully and more research is needed. At present, we need to consider at least the following main issues:
a. China Unicom is a telecom giant, we need to consider as whether its background and power could affect the suit [ED NOTE: GOOD ADVICE IN ANY COUNTRY]
b. we need to carefully study the use status of the BLACKBERRY trademark registrations so as to avoid the non-use attack directing at our existing trademark right;
c. we need to carefully study the use status of the REDBERRY and BLACKBERRY mark in Chinese market so as to see whether we may claim unfair competition;
d. we need to research as whether the trademarks of the parties constitute confusingly similar as as to cause misleading; if yes, infringement of trademark right could be established.
Hope the aforesaid could address your concerns, and we are looking forward to discussing with you further.
ED NOTE: ALWAYS ASK FOR A LIKELIHOOD OF SUCCESS AND A COST ESTIMATE.
UPDATE: I am told by Samuel the Blog reader that this is a press release from China Unicom that states that it chose REDBERRY because “it continued the familar Blackberry name and carry on the color red in Unicom’s visual identity.”
IPFrontline.com: ‘Champagne and Barbie in the Supreme Court of Canada‘
Starbucks has gained the upper hand in its travails in using the STARBUCKS mark in Russia, via Forbes.