If Ron Coleman says that he worked his way through Law School as a Chippendales dancer, who am I doubt him. The story (and commentary) continues here.
NYSE owns a registration in THE OPENING BELL. It had to provide evidence of secondary meaning but it got it through.
Word Mark THE OPENING BELL
Goods and Services IC 036. US 100 101 102. G & S: operation of a securities exchange.
FIRST USE: 19030000. FIRST USE IN COMMERCE: 19030000
Serial Number 76222948
Filing Date March 12, 2001
Registration Number 3411878
Registration Date April 15, 2008
Owner (REGISTRANT) NYSE GROUP, INC. CORPORATION DELAWARE 11 WALL STREET NEW YORK NEW YORK 10005
Wikipedia on Cloud Computing.
Word Mark CLOUD COMPUTING
Goods and Services:
IC 040. Custom manufacture of computer hardware for use in data centers and mega-scale computing environments for others
IC 042 Design of computer hardware for use in data centers and mega-scale computing environments for others; customization of computer hardware for use in data centers and mega-scale computing environments for others; design and development of networks for use in data centers and mega-scale computing environments for others; Consulting services for data centers and mega-scale computing environments in the fields of design, selection, implementation, customization and use of computer hardware and software systems for others; Consulting services for data centers and mega-scale computing environments in the fields of design, selection, implementation, customization and use of computer hardware and software systems for others
Mark Drawing Code (4) STANDARD CHARACTER MARK
Serial Number 77139082
Filing Date March 23, 2007
Published for Opposition April 15, 2008
Owner (APPLICANT) Dell Inc.
Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE “COMPUTING” APART FROM THE MARK AS SHOWN
Cloud Computer illustration from here.
UPDATE: 43(B)log weighs in.
Plaintiff uses the mark UTAH LIGHTHOUSE in connection with goods and services that critque Mormonism. There has been extensive history between plaintiff and the LDS faith. Defendant FAIR responds to such critiques, and created a parody website that was similar in appearance to that of Plaintiff. Defendant used domain names such as UTAHLIGHTOUSE.COM to direct to the parody site (the names listed in this summary of the case on the Citizen Media Law Project’s site all appear to point to plaintiff’s site as this time).
There are complex and controversial issues here involving the intersection between trademark use and parody, and what constitutes commerical use of a trademark in a primarily religious/political speech context, similar to the issues raised by cases such as PETA v Doughney and JEWS FOR JESUS v Brodsky
Which issues I will not address in this post today.
I instead want to talk about the strange way the issue of whether plaintiff had a protectable mark was handled. Plaintiff received a registration 3119677 for UTAH LIGHTHOUSE after filing its complaint. Sections 7(b) and 33(a) of the Lanham Act discuss the evidentiary presumptions that a registered mark receives, including the validity of the mark as a protectable mark. See also McCarthy Section 32.134 and 32.138 for a general discussion of the presumptions that flow from a trademark registration.
In addressing the requirement as to whether it owned a protectable mark, plaintiff appears to have only cited its registration and relied upon the presumption. The District Court held that because the mark was not registered at the time the suit was filed, plaintiff was not entitled to that presumption (pg. 8) and then found that plaintiff had not shown secondary meaning (and then proceeds on a tangent about the absence of secondary meaning).
On appeal, plaintiff argues that even without the presumption, UTAH LIGHTHOUSE was inherently registrable.
The 10th Circuit choose not to entertain this argument as it had been raised only on appeal for the first time.
Oddly, it also finds that plaintiff failed to produce sufficient evidence that UTAH LIGHTHOUSE was protectable. If the registration was in the record, then, because it was issued under Section 2(a) and not 2(f), it would seem to be at a minimum evidence of the PTO’s expert opinion that UTAH LIGHTHOUSE was inherently registrable as of March 21, 2005, the application’s filing date (prior to the date that the suit began). With a minimum of evidence of trademark use (such as plaintiff’s website), it is hard to see how defendant could establish that the mark wasn’t protectable.
It could be that plaintiff’s travails could have been avoided by plaintiff merely arguing in effect ‘we are entitled to a presumption because of our registration but in any event, the mark is inherently registrable . . .’, and that the court is penalizing the lawyering (unfettered by knowledge, I speculate freely).
As I stated above, I’m not speaking to the questions as to whether defendant’s actions rose to commercial use, and whether it had good parody or other defenses. Based on one reading of the circuit court opinion, and none of the underlying documents, the holding that UTAH LIGHTHOUSE was not a protectable mark seems problematic at best.
In this discussion of a Swiss Federal Adminisitrative Court decision holding that PEACH MALLOW is not descriptive of candy, the point is made that Marshmallows are no longer made of the Mallow plant.
If you got that right, you may be needed to testify as to secondary meaning. Story regarding the trademark suit here.
Update: WSJ Lw Blog points out that it woudl be great to attend a hearing in this suit, so that you can hear the judges and lawyers repeat the line over and over again.
Seattle Trademark Lawyer: “No Secondary Meaning for Color Mark Means No Enforceable Trademark Rights”