TTablog reports on the examination of an application for STEALTH that may or may not have been submitted by an entity associated with Leo Stoller . For those of you late to the party, Stoller is an ‘unusual’ guy and one of the objects of his obsessions is the PTO. Here, the Stoller ‘Pension Plan’ has filed a multi-class application for STEALTH, bounced the filing fee check, and the examiner notes that all the specimens seem to have the word STEALTH photo-shopped in (see above). The post reminds me of the Monty Python sketch where after the lunatic tries to prove that he owns a cat license, the government clerk says ‘that’s not a cat license, that’s a dog license with the word ‘dog’ crossed out and the word ‘cat’ written in in crayon.’
I would be interested in hearing arguments for and against pre-emptive letters (as in – ‘please assure me that I’m not about to infringe your rights’) of the kind described in this case, Numatic International v Qualtex  EWHC 1237 (Ch) e. It seems to be that there is little motivation for a rights owner to ever give a go-ahead to a competitor in this sort of situation. Yes, maybe it could prevent a litigation (didn’t here), but why provide a competitor a free roadmap as to how to appropriate non-protectable godwill? However, people send these sorts of letters so there may be compelling reasons to do so.
At some point prior to the end of January 2008 Qualtex formed the intention to have manufactured and to sell a replica of the Henry cleaner. Qualtex concluded that, provided that they chose a design in which all relevant intellectual property rights (such as all the various forms of national and community, registered and unregistered design rights) had expired, they should be free to do so, provided that they did not use any Numatic trade mark such as the name Henry. In this they are absolutely right. There is no point in having design rights with expiry dates if traders are not free to market replica products thereafter. The only qualification to this is that they must not market a product in such a way as to lead to passing off.
Accordingly on 31st January 2008 Qualtex instructed solicitors, Robinsons, to write to Numatic telling them that they intended to launch such a product, but that it would not use the Henry name or have a Henry “face” or anything confusingly similar to either. At this stage Robinsons did not identify for whom they acted, but nothing turns on this, because they identified themselves in their next letter, in response to a request from Patent and Trade Mark Attorneys, FJ Cleveland, instructed by Numatic, for these details and for details of the proposed product.
Robinsons’ letter of 21st February stated that the product would be a replica of the 1997 version of Henry, and repeated its request that Numatic state whether any rights in or relating to Henry would be infringed. On 25th February 2008 FJ Cleveland wrote asking whether the replica product would reproduce any of the Henry colourways. It also asked for clarification of what brand name or other insignia would be used, as this would be relevant to an action in passing off. Robinsons responded on 28th February asking that Numatic should respond on the basis (a) that Qualtex uses the same or similar colourways and (b) that it does not. So far as insignia were concerned, the letter asked that Numatic should respond on the basis that entirely different brand name/insignia were to be used.
As the earlier letter had foreshadowed, on 19th March 2008 FJ Cleveland wrote asserting that Numatic was the owner of a valuable goodwill in the appearance of the Henry including its shape and get-up which it could protect by an action in passing off. They made the position plain in the following way:
“The appearance of the Henry is, quite simply, iconic. It is probably the most distinctive and recognisable vacuum cleaner on the market. Such distinctiveness and recognisability resides in a number of features, including the “bowler hat” shape on the cylindrical base, the “smiley face” graphics and the red and black colourways. Our client instructs us that the basic shape and appearance has not changed over the years and that, whilst the majority of the sales have been in the red/black colourway, it has been sold in various other colourways””
The letter made it clear that Numatic were not prepared to answer on the basis of any hypothetical insignia or branding and repeated a request made earlier for a mock up or prototype. Numatic therefore asked for undertakings not to market the product.
Via Class 99.
Old-timers will recall that in early 2002, before there was a Trademark Blog, I hosted the International Trademark MetaSearch, which allowed a single search of every online trademark registry at the time. That got too expensive to maintain, and the Metasearch was consigned to the dustbin of history. However, the need for and usefulness of one-stop searching remains. OHIM, in cooperation with various European TM offices, has now unveiled TMview, a single-search tool of the OHIM, Benelux, Czech, Danish, Italian, Portuguese and UK registries.
CSC’s TRADEMARK INSIDER is out. Companies that filed a lot of trademarks in the 3d Q, 09, in addition to the usual suspects (Time Warner and Mattel are nos 1 and 2), incude the United Football League, the Big Balloon Adventure Movie and Jake’s Fireworks.
Not really an unusual decision but a reminder about the need for speed when bringing preliminary injunction motions. Plaintiff learned of complained-of behavior in June, didn’t file the proposed order to show cause until November. It’s three reasons for delay: (1) waiting for the expedited copyright reg’ns; (2) it granted an extension to the defendant to answer; and (3) defendant behaved in dilatory fashion; were held to be insufficient reasons to dispel the point that plaintiff’s delay belies its argument that the harm is irreparable.
Decision EDNY Unreasonable Delay PI Motion
On the one hand its prudent to advise all attornies to read any decision where Rule 11 sanctions are actually awarded. On the other hand, it’s hard to imagine an attorney finding him or herself in this situation.
Trademark owner, who sells hoisin sauce, prevails on partial summary judgment against infringer. Five months after summary judgment, defendant seeks to amend its answer. Hoisin means seafood and defendant has ‘just’ learned that there’s no seafood in trademark owner’s hoisin sauce. Therefore trademark owner has allegedly committed fraud on the PTO in obtaining its registration and has committed fraud in general. Judge rolls his eyes and points out that sauces are often named after what they are used with, not what they contain (think BBQ or steak sauce). Judge says in effect “I can’t stop you from making this motion but I can make you sorry that you did” and specifically warns of sanctions.
So defendant defers from making the motion to dismiss in that action before that judge and instead files a new action to cancel the registration, and alleging fraud on the hoisin sauce-using public. (The first action had concluded in chief, but apparenty there is still fighting over fees). Trademark owner moves to dismiss second action, and moves for Rule 11 sanctions.
The new judge finds that as the protectability of trademark owner’s registration was a litigated point in the first action, all claims were barred by res judicata and collateral estoppel. Furthermore, as defendant was aware of the ingredients of the hoisin sauce for years (given that the ingredients were on the label), the claims were also time-barred. And, as icing on the frivolous motion cake, none of the plaintiffs in the second action had standing (for various reasons).
So there you have it – claims dismissed and Rule 11 sanctions ordered.
Decision Rule 11 Hoisin
A blog does a trademark search and reports on what the planned Harry Potter theme park might be like.
OHIM has announced a reduction in overall Community Trademark Fees effective in May. The upfront fee will be raised but the back-end registration fee will be abolished. Applications filed now will have the current soon-to-be-raised upfront fee and no back end fee. Friends of the blog Mastovito Wyness explain why the time to file is now.
Registration Ruminations reports that PTO numbers regarding the withdrawal of ‘inadvertently’ filed documents with the PTO suggests that people are following John Welch’s advice as to how to avoid a ‘fraudit.’