20
Apr/14

Bayer v Belmora (FLANAX): Is This The First TTAB ‘Reputation Without Use’ Case?


I’ve been blogging about the doctrine of ‘reputation without use’ since forever. Under what circumstances can the owner somewhere, enforce trademark rights in a jurisdiction where it doesn’t have priority by means of a registration or use in that country. Look from the inside out, that is, consider famous U.S. trademarks, such as FACEBOOK, GOOGLE or TWITTER. If it is the case that the US company wasn’t able to file trademark applications in, say all of the 200 or so trademark jurisdictions in the world, prior to becoming famous (or within 6 months of its first filing date), and some ‘front-runner’ beats them to the Trademark Office in a particular jurisdiction, it seems arguable that the US company should be able to trump the front-runner’s filing, if it can establish that the front-runner chose the mark with full knowledge of the US company’s rights.

Article 6bis of the Paris Convention embodies this equitable argument, providing:

“. . .to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith.”

Now note that the phrase ‘well known in that country.’ We may use the expression ‘world famous’ in causal conversation but 6bis applies to local fame.

Consider the Malaysian case, Hummel v Lim Yew Sing, [1996] MLJ 7. I can’t find a copy of the decision so I’m citing to my hazy recollection. Plaintiff owned the HUMMEL trademark for ceramic figurines that your grandmother tells you not to break. Defendant was a Malaysian national. Defendant argued that, sure he knew that there was a German company that sold HUMMEL figurines. But he conducted a search of the Malaysian register and saw that there was no filing. Furthermore, he believed that plaintiff did not use and had no reputation (or more to the point, there was no reputation BECAUSE there had been no use).

Put another way, it is irrelevant to the bad faith analysis that defendant had prior knowledge of plaintiff’s rights somewhere – defendant had a good faith belief that plaintiff didn’t have protectable rights in Malaysia. Defendant prevailed.

My friend, Jin Nee Wong has written an article indicating that Malaysian law has been amended to lessen the effect of the HUMMEL case).

However the Malaysian HUMMEL case turned out to be one of the last major cases to hold that there cannot be reputation without use. A few years later, Tiffany prevailed in Singapore in Tiffany v Fabriques de Tabac [1999] 3 SLR 147. I’m familiar with this case because I was one of the instructing attorneys for plaintiff. A Philip Morris subsidiary had filed for TIFFANY for cigarettes prior to Tiffany & Co. either making use or filing in Singapore. We stuffed the record with evidence of the numerous ways Singaporeans would have known of the existence of the New York jeweler prior to defendant’s filing (Audrey Hepburn, etc.) such that a Singaporean, when encountering a pack of TIFFANY CIGARETTES (with stylized Tiffany glass on the packaging, no less) would assume a connection.

Defendant cited Singaporean precedent – there can be no reputation without use.

And in the end the Singaporean Court of Appeal changed the law on the protection of famous marks. VIAGRA helped us maintain our argument. VIAGRA had not arrived in Singapore but there was anticipation. The Court noted that should someone have filed prior to Pfizer, OF COURSE the Singaporean public would be confused, and that was the sort of confusion that 6bis and local equivalents ought to prevent.

So there you have it – the famous mark owner will prevail even if it hasn’t used in the jurisdiction if it can show a local reputation such that the local consumer will be confused by defendant’s use.

Now look outside in. US Courts aren’t buying. A plaintiff, foreign or domestic, has to have use, constructive or actual to be provided under the Lanham Act. The COHIBA case seems to be a pure fact pattern. Defendant, a US cigar company, appears to have targeted the appearance of the famous Cuban COHIBA cigar. No dice. In the Casino du Monte Carlo case, the 4th Circuit had to, IMHO, distort the concept of use in international commerce to argue that the Casino du Monte Carlo, which, inarguably, is in Monaco, was somehow providing casino services that were covered by the Lanham Act.

My reaction to the COHIBA line of cases is that as a matter of fair play, we ought to amend the Lanham Act to recognize Article 6bis. see my guest-rant in the TTABLOG here.

OK, fast forward to Bayer v Belmora. Bayer sells FLANAX pain reliever, reportedly the leading naproxen sodium pain reliever in Mexico (Bayer sells ALEVE, also naproxen sodium, in the US). Bayer doesn’t seem to have filed for nor used FLANAX in the US. Some guy begins selling FLANAX pain reliever in the US, targeting Hispanics, and imitating the Bayer product’s packaging.

Lightning round of You The Judge: ought this be a tort?

OK, this case was complex from a procedural point of view. An awful lot of evidence seems to have been tossed out. John Welch is going to do the blow by blow of the TTAB decision below but here’s my version of the headlines: Bayer has standing because, get this, it has a Mexican trademark registration. That registration has a reputation in the US which needs protecting, therefore Bayer is no mere meddler. I do not see the first sentence surviving unedited by the Fed Cir. Bayer could not proceed under 2(d) because it doesn’t have prior rights. However, Bayer succeeded under Section 14(3) – “if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used.” Bayer established that US Flanax was passing itself off as Bayer.

So Bayer appears to have cancelled a US registration based on reputation without use. There have been some civil cases that can be characterized as ‘famous mark’ or ‘reputation without use’ cases, such as Grupo Gigante v Dallo, and cases discussed therein).

One of the anomalies in this case is the standing holding (the bit about the Mexican registration) and another anamoly is Bayer’s apparent decision not to file in the US. If the 14(3) analysis survives Fed Cir scrutiny, does the non-US famous mark owner solve that problem by filing a US trademark application the day before filing a cancellation petition?

Bayer Balmora copy.pdf



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)

 



24
Apr/09

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.



15
Dec/08

Reputation Without Use Of Trademarks In The US


TMR: DON’T I KNOW YOU FROM SOMEWHERE? PROTECTION IN THE UNITED STATES OF FOREIGN TRADEMARKS THAT ARE WELL KNOWN BUT NOT USED THERE By Anne Gilson LaLonde



30
Mar/04

COHIBA: Reputation Without Use Protected in the U.S.


In general, protectable trademark rights arise in two ways – obtaining registrations, and, in a couple of oddball countries such as the U.S., through use.  There is a third way a trademark can be protected, and it arises under Article 6bis of the Paris Convention, which provides, in part, that Treaty members have the right to:

“. . . refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods.”

This Article is the source of special protection for famous trademarks.  During the domain name wars this doctrine was attacked on, in my view, misplaced populist grounds, but it has two sound bases in trademark law.  The first is that famous mark doctrine is a logical expansion of and gives flexibility to ‘related goods doctrine.’  Another way of putting it is that a famous mark’s ‘zone of expansion’ is larger than that of a non-famous mark.    I associate NIKE with a wider range of goods than the marks of other sneaker brands.

The second basis is the policy against unfair competition.  Some marks are so famous and so unique (COCA COLA, SONY, AMAZON.COM) that it becomes fair to impute bad faith to a trademark applicant by the mere adoption of that mark.  What is the intent of anyone other than Pfizer who files for VIAGRA on any goods in any country?

One of the wrinkles in 6bis jurisprudence is the expression “well known in that country” (the country where the unauthorized use takes place).  Unaided brand awareness of certain luxury brands may approach 100% in certain zip codes in Manhattan but, outside of duty free stores, awareness may hover around zero in some countries.  If I find a country where the trademark owner has neither used nor filed, can I file in good faith there?  If the jurisprudence is that goodwill can ONLY arise from use, does the trademark owner have protectable rights? This is the “reputation without use” conundrum.

Courts find ways to deal with this.   They may play with the determination as to what part of the populace is relevant.  In the Czech Republic in the late 80’s, someone filed for TIFFANY for jewelry.  I participated in the representation of Tiffany & Co. in a cancellation proceeding.  The reality was that after decades of communism, very few Czech consumers were aware that there was a TIFFANY & CO. (and Tiffany had not sold into the country prior to the filing).

 However, we were able to show that anyone employed in jewelry field would likely have known about the New York company.  For example we produced a Czech jewelry textbook which indicated that a four prong setting was called a TIFFANY setting, named for the NY company.  A Czech book on gems depicted the Tiffany Diamond (which is the largest cut yellow diamond in the world).  We also produced affidavits from Czech jewelers attesting to Tiffany’s fame.

This evidence allowed the Court to rely on Tiffany’s reputation without use, in order to find that the applicant had filed in bad faith.

Other countries simply change their minds.  Singapore had strongly believed that there can be no reputation without use.  In a case that also involved the TIFFANY mark, the High Court acknowledged that in the modern era, knowledge of a mark can arrive in a country before use (the Court used VIAGRA as an example) such that it would be bad faith for third parties to adopt it).

It has been my view that on the whole, the U.S. has not protected non-U.S. marks to the same degree.  To be fair, the fact pattern is less common here, because the U.S. is a desirable high-priority export market.  Nevertheless, the fact pattern is not impossible, particularly in the case of geographically oriented services.  For example the trademark of a famous resort, restaurant or sporting event, may have a reputation here, but no technical trademark use (and the owner may not have gotten around to filing here)

The most notorious case of the U.S. not relying upon reputation without use was the PERSON’S case, 900 F.2d 1565 (Fed Cir 1990).  The applicant freely admitted to visiting Japan, seeing the PERSON’S logo, and filing for an identical version in the U.S.  The U.S. court held that, applicant’s knowledge of Person’s aside, there was no use and no protectable reputation here.

The reluctance to find applicant’s behavior to constitute bad faith. put the U.S. squarely in the camp of such countries as Malaysia.  For example, an applicant had filed for HUMMEL for figurines.  Applicant obviously was aware of the famous HUMMEL mark but had searched and determined in its estimation that there was no use in Malaysia – thus no protectable rights.  Despite prior knowledge of the famous mark, there was no bad faith (note that this was pre-GATT and a Malaysian court might likely hold differently today).

Certain U.S. cases over the  decades do however suggest a U.S. willingness to protect the famous mark.  Recently, the Fourth Circuit gave protection to the mark CASINO DU MONTE CARLO.  It did so however, by creating in my view, a tortured definition of use in commerce, stating in effect that if an American walks into a casino in Monte Carlo, that that is commerce that can be regulated by Congress.  I do not believe that that rationale will be widely followed.  See McCarthy’s, Sections 27.47 and 29.2 for a critique of the case.

Much more plausible is yesterday’s Southern District Of NY decision in Empresa Cubana de Tabaca (Cubatabaco) v. Culbro, (Sweet, J.) (you must choose Southern District of NY and then Judge Sweet to access the decision). A U.S. cigar company adopted the COHIBA trademark, aware of its reputation as a highly regarded Cuban cigar.   Because of the embargo, the Cuban trademark owner obviously had no trademark use in the U.S.  Cubatabaco was able to show significant reputation in the U.S.  In fact, Cigar Aficionado magazine had suggested that COHIBA was the most desired cigar brand in the world.  There was also evidence to suggest that the U.S. defendant had contemplated referring to the Cuban trade dress and planned to invoke Cuban imagery in advertising, even though its cigars were sourced from the Dominican Republic.

The 142 page decision cannot be adequately summarized here.  In short, the Court held that the famous mark doctrine of Article 6bis is ‘subsumed’ by Section 43(a) of the Lanham Act.  COHIBA was held to be a famous mark at the time defendant adopted it.  Importantly, the standard for protection under famous mark doctrine is a different (lower) standard than that under the Federal Trademark Dilution Act.  In my view, this is a clear instance of the U.S. protecting ‘reputation without use.’  Owners of famous foreign restaurants, resorts and events, take note.

For the first and last word on the protection of famous marks, see Mostert, “Famous and Well-Known Marks.” (although at this point, wait for the second edition to come out from INTA soon).



14
Feb/17

Topic Outline For My Trademark Talk Tomorrow at the Federal Bar Council


Here is the topic outline for my “trademarks in review” talk tomorrow night for the IP Committee of the Federal Bar Council. Watch this space for links to reference materials.

I. Failure to function as a mark (I BELIEVE THAT WE WILL WIN)

II. Use in Interstate Commerce (ADD A ZERO)

III. Irreparable Harm/Delay (AT&T THANK YOU)

IV. Nominative Fair Use (CISSP)

V. Scandalous! (SLANTS)

VI. Intermediate Liability (various)

VII. Parody (MY OTHER BAG)

VIII. Damages (OCTANE)

IX. Extraterritoriality/Reputation Without Use (BELMORA)



4
Mar/05

2d Circuit Reverses COHIBA Famous Mark Decision on Cuban Embargo Grounds


I blogged previously on the Southern District Court of New York decision in the COHIBA cse, wherein the Court held that the Cuban plaintiff had protectable trademark rights in the COHIBA mark in the U.S. after it showed evidence that its reputation here met the standard under Article 6bis of the Paris Convention for protection as a famous mark.

The Second Circuit has now reversed the District Court holding in Empresa Cubana v. Culbro, 04-2527 (2d Cir Feb 25 2005).  It does not reach the issue as to whether plaintiff’s mark is famous in the U.S. but instead holds that plaintiff, as a Cuban entity, cannot obtain property, that is to say protectable U.S. trademark rights, under the embargo against Cuba.  Thus the claims are dismissed.

This case may be correct on the law but raises concerns.

First, assuming that the lower court’s factual holding that COHIBA is a famous mark in the U.S. is correct, the outcome appears to serve neither the purpose of the embargo nor of the Lanham Act. 

Plaintiff was not seeking the right to use the COHIBA mark in the U.S., only to prevent defendant from using it.  Such an injunction would not bolster the Cuban economy in any meaningful way.  In the meanwhile, the U.S. consumer, presumably aware of the famous Cuban COHIBA mark, will be exposed to defendant’s COHIBA product (that had been marketed at times using Cuban imagery).

Second, there is the issue of equal treatment.  U.S. trademark owners have received the protection of foreign courts not only in the ‘reputation without use’ scenario (see my previous post) but even when external political forces may have prevented the trademark owner from satisfying local conditions otherwise necessary for protection under law.  For example McDonalds was able to protect its mark in South Africa against an interloper during McDonald’s non-use during the apartheid sanction period. 

Then there is the issue of retaliation.  Cuba has certainly appropriated the assets of Cuban businesses, which appropriations led to trademark conflict outside Cuba (such as the HAVANA CLUB matter).  However with regard to Cuban protection of U.S. famous marks, on paper at least, Cuba now offers greater protection to U.S. marks than the other way around.  Cuba is an adherent to the Paris Convention and, in theory, would grant 6bis protection to U.S. famous trademark holders (I would be interested from hearing from anyone who has instructed a 6bis action in Cuba – I came close once but the client changed its mind ). Furthermore, U.S. entities may obtain Cuban trademark protection despite the embargo (although not all owners of famous marks do so). 

Some day Castro will fall off the world’s stage.  We may at that time normalize trade relations with Cuba.  From a policy perspective, the U.S. would perhaps be better off until then if there was a no-use truce of the other country’s marks.  I think we lose out if there’s a free-for-all until then.

 



11
Feb/15

EDVA Reverses FLANAX Case; No Exceptions to the Territoriality Principle


flanax 24 packflanax bayer

The U.S. District Court for the Eastern District of Virginia, in a case of first impression, held that Article 6bis of the Paris Convention, the famous marks provision, does not provide trademark rights that are protectable under Section 14(3) (misrepresentation of source), Section 43(a)(1)(A) (infringement of an unregistered mark) and Section 43(a)(1)(B) (false advertising) of the United States Trademark Statute (the Lanham Act).

Although Bayer AG has never used the mark FLANAX in the United States, it alleged that a ‘significant number’ of U.S. consumers were familiar with its Mexican FLANAX brand, and that Belmora LLC’s use of the same mark for the same product had caused confusion in the U.S.

Bayer AG, through a predecessor in interest, has used the mark FLANAX in connection with Naproxen, a prescription analgesic, in Mexico, beginning in 1976. It obtained a Mexican trademark registration for FLANAX. After Naproxen was approved for OTC use in Mexico, a mass-market version of FLANAX was launched in 2001-02.

Belmora, a small U.S. pharmaceutical company seeking to introduce Spanish-language packaging to the U.S. OTC market, learned of Mexican FLANAX. Its investigation determined that Bayer was not selling the product in the U.S., had not filed for U.S. trademark protection, and had not listed its product with the FDA.

Belmora filed a U.S. application for FLANAX for Naproxen tablets in October 2003. Bayer’s predecessor, Hoffman-La Roche, filed a U.S. application for FLANAX in February 2004. Belmora’s application (and later, registration) was cited by the USPTO, and blocked the Bayer application, which it then abandoned .

Belmora began use of FLANAX in early 2004, using a similar font and package color to that used by Bayer FLANAX in Mexico.

Bayer filed a petition to cancel Belmora’s U.S. registration in June, 2007. It originally based its petition on Section 2(d), alleging prior use of a trademark in U.S. commerce (and likelihood of confusion). Its alleged prior use claim was based on a variety of trans-border activities consisting primarily of unauthorized grey goods sales by Mexican-Americans who had purchased Bayer FLANAX in Mexico and then sold it in the United States.

Bayer amended its petition to cancel twice, adding claims under the famous mark provision, Article 6bis of the Paris Convention, and under Section 14(3), which permits cancellation of a registered mark that is used to misrepresent source. The added Section 14(3) claim was based on facts disclosed in discovery, and alleged that Belmora, through use of similar trade dress as well as through certain statements in advertising, had intentionally suggested that it was related to Mexican FLANAX.

The Board ultimately rejected the Section 2(d) claim because Bayer had not made use of the FLANAX trademark in U.S. commerce. It rejected the Article 6bis claim because it concluded that Article 6bis does not create a right of action separate from the provisions of the Lanham Act.

However, the Board ruled in favor of Bayer on its Section 14(3) claim, finding that Bayer owned sufficient goodwill in the FLANAX mark and that such goodwill ‘did not stop at the border.’ [finding that Belmora had used the mark to misrepresent the source of its Naproxen Sodium pain reliever “in a manner calculated to trade in the United States on the reputation and goodwill of petitioner’s mark created by its use in Mexico.”] The Board ordered the cancellation of Belmora’s US registration.

Belmora initially elected to appeal the cancellation ruling to the United States Court of Appeals for the Federal Circuit. Although 15 U.S.C. Section 1071 provided for Bayer to either acquiesce in the selection of the CAFC as the channel for appeal, or to request that Belmora initiate a proceeding in a District Court, Bayer instead initiated its own District Court action in California. Belmora amended its election under 15 U.S.C. Section 1071, requesting a de novo appeal in the Eastern District of Virginia. The Virginia action consolidated Bayer’s claims under Lanham Act Section 43(a)(1)(A) (infringement of an unregistered trademark) and Section 43(a)(1)(B) false advertising, as well as related state claims. Bayer also cross-appealed the rejection of its 6bis claim.

Belmora moved to dismiss Bayer’s Section 14(3) and Section 43(a)(1)(A) claims on the ground that Bayer, under the Territoriality Principle, did not own protectable trademark rights in the U.S. because it had never used the mark in the U.S. Belmora moved to dismiss the Section 43(a)(1)(B) false advertising claim on the ground it was duplicative of the 43(a)(1)(A) claim in that the allegation was actually one of false association, namely that Belmora was falsely claiming an affiliation with Bayer. Finally, Belmora moved for judgment on the pleadings with regard to Bayer’s Article 6bis claim, maintaining that Article 6bis is neither a standalone basis for a cause of action under the Lanham Act nor is it incorporated in other provisions of the Lanham Act. In short, Belmora maintained that Article 6bis does not provide exception to the Territoriality Principle which requires that plaintiff have recognized trademark rights in the jurisdiction whether it seeks to enforce trademark rights.

Bayer argued alternatively that its FLANAX mark was famous in the U.S. and thus eligible for protection under 6bis, or that it owned protectable goodwill because a ‘significant number’ of Mexican-American consumers were familiar with its mark as a result of various cross-border activities such as grey goods, spillover advertising, and travel and immigration between Mexico and the U.S.

The Court stated the question as: Does the Lanham Act allow the owner of a foreign mark that is not registered in the United States and further has never used the mark in United States commerce assert priority rights over the mark that is registered in the United States by another party and used in United States commerce? The Court said no. Holding that neither fame nor ‘significant goodwill’ would constitute a source of priority rights, the Court dismissed the infringement and misrepresentation claims. Furthermore, the absence of prior trademark rights deprived Bayer of standing to pursue the false advertising claims as well.

With regard to the Article 6bis action, the Court noted the ‘overwhelming authority’ that the Paris Convention is not self-executing, and that Congress has implemented portions the treaty through Section 44 of the Lanham Act. Non-U.S. practitioners are likely familiar with Section 44(d) (which implements 6 month Convention priority) and Section 44(e) (which provides for registration based on a registration from a Convention-member country).

Section 44(b) states that nationals of treaty countries are entitled to the benefits of this section under the conditions expressed herein. Furthermore, Section 44(h) provides that treaty country nationals are entitled to effective protection against unfair competition. Bayer argued that this general language imports Article 6bis protections into the Lanham Act. The Court, however, cited the decision of the U.S. Court of Appeals for the Fourth Circuit in Barcelona.com, Inc v. Excelentismo Ayuntamiento de Barcelona, 330 F.3d 616 (4th Cir,. 2003) and the Second Circuit’s decision in ITC Ltd. v Punchgini, 482 F.3d 135 (2d Cir. 2007) (the Bukhara case) to the effect that those provisions give non-U.S. parties rights that are coextensive with, not greater than, those otherwise provided under the Lanham Act.

The Court cited numerous authorities asserting that Congress could not have intended a specific exception to the Territoriality Principle, without explicitly saying so.

Accordingly, Bayer, without use of a trademark in U.S. commerce, did not have legal standing to prosecute its Federal claims, and its misrepresentation, infringement and false advertising claims were therefore dismissed. The state claims were dismissed as well.

Belmora LLC v, Bayer Consumer Care AG and Bayer Healthcare LLC, 1:14-cv-00847-GBL (EDVA Feb. 6, 2015).

Belmora, LLC was represented by Martin Schwimmer, Lauren Sabol and Lori Cooper of Leason Ellis, John Welch of Lando Anatasi, and Craig Reilly, Esq.

belmora v bayer decision EDVA Feb 2015.pdf



27
May/14

Corporate America: Get Your Ducks In A Row! 10 Easy Steps to Increasing Shareholder Value with Soft IP


Guest post:
Peter Sloane
Partner, Leason Ellis LLP, White Plains, NY

Inside corporate counsel have plenty of work on their desks. The last thing they are looking for is yet more work. Still, trademarks and other intellectual property are increasingly important as corporate assets. Shareholders routinely consider the value of IP in assessing the strength or weakness of a business. In addition to tackling their day-to-day legal work and putting out fires, in-house counsel should look for ways to streamline and leverage their soft IP assets (i.e., trademarks and copyrights). The following is a list of ten possible steps to consider taking before year-end:

1. Register Your Trademarks

Registering trademarks is the bread and butter of most inside trademark counsel. However, many companies are not large enough to hire dedicated trademark counsel. Corporate counsel at those companies should undertake review of the company’s brands and determine whether any additional trademark filings are warranted. Secondary marks, logos, sound marks, colors and product configurations are just some of the myriad kinds of trademarks available for registration.

In addition to protecting trademarks in the U.S., it is important to protect marks in countries abroad where products are made, where goods area sold (or services rendered), and where counterfeiting may occur. An initial investment in trademark protection can be amortized over the years of registration and is less expensive than paying off a squatter or dealing with infringement litigation.

Building a portfolio of registered trademarks, and providing notice of those registrations in advertising and promotional material (i.e., ABC is a registered trademark of Xyz, Inc.) signals to the outside world that the company is trademark savvy. It is also an assuring sign to potential buyers of the company or its assets that they need not worry as much about the risk of infringement (and seek to retain funds in escrow as a reserve for a claw back provision in the event of trademark litigation).

2. Order a Watching Service

Trademark searching before adoption and filing is all well and good, but searching is retrospective rather than prospective. For the leading brands of a company, inside counsel should consider ordering a watching service, which provides advance notice when confusingly similar marks are published for opposition and affords the opportunity to object to registration.

Do not make rely upon government trademark offices to refuse registration of confusingly similar marks. Many do not even examine applications for confusing similarity. For examine, OHIM, the trademark office of the European Union, does not examine applications on so-called relative grounds. It is, therefore, possible to have two EU registrations for the same mark for the same goods owned by different and unrelated parties. It is the duty of the trademark owner to be vigilant and oppose registration of a confusingly similar mark.

Watching services are relatively inexpensive. Leading trademark research companies like CT Corsearch, Thomson Reuters and CSC Nameprotect offer a variety of different watching options. Also consider using them to watch other soft IP assets like domain names and trade names.

3. Develop Trademark Style Guides

Trademarks, particularly new ones, are like babies in that they need care and nurturing to develop to their full potential. Without proper guidance, they may develop bad habits and become wayward in their activities. That is where a trademark style guide comes in handy.

A trademark style guide illustrates the proper way to use a trademark and includes instructions ranging from the proper font and type size to the affixation of trademark notice. The consistent use of a trademark maximizes its value and reduces the chance of collateral attack by third parties.

Many graphic designers specialize in creating trademark style guides. Each company has its own history and different brand needs, so it is necessary to work hand-in-hand with the designer, preferably in consultation with a trademark lawyer, to develop a style guide uniquely suited to meet the specific needs of the business. Then, continually familiarize new marketing people with the guide so that it becomes an important tool rather than a relic gathering dust (or residing unnoticed on an intranet).

4. Develop Internal Clearance Forms

Whoever handles the legal trademark function for a company should advertise that fact internally so that marketing and others who may create brands know whom to contact before taking any public steps. If employees act unilaterally when it comes to trademark adoption, searching, or filing, it will lead to inconsistent practice, increased expense, and added risk exposure.

Develop trademark clearance forms and distribute them throughout the company (an effective way to centralize a trademark practice). The forms should include key metrics like the mark to search, the reason for selecting the mark, the goods or services of interest, the countries where the mark may be used, and the lead time before commercialization.

Post trademark clearance forms on a corporate intranet to make them readily available for widespread use. Beyond that, periodically notify businesspeople about the availability of the forms, especially as marketing people may turn over fairly regularly.

5. Beef Up the Copyright Portfolio

Copyright is an often-overlooked area of intellectual property protection. Most companies likely have scores of materials entitled to copyright registration. Adding copyright registrations to an IP portfolio is an easy way to establish and measure company assets. At the very least, it is another schedule of assets to attach to merger and acquisition documents, thus evidencing the tangible value of the assets transferred.

Materials amenable to copyright registration include a company website, its advertising and promotional materials, its product packaging, and the like. Recordation with the U.S. Customs and Border Protection is even available if counterfeits or gray goods are an issue.

The U.S. Copyright Office charges only $35 for an application and the filing requirements are minimal. U.S. copyright law encourages early and often filing as statutory damages and attorneys’ fees are only available if an application is filed within three months of publication or before infringement. Also, if the nature of the works change over time, keep in mind the possibility of filing for derivative works to protect newly added material.

One last point to remember about copyright – it is international in scope and immediate in efficacy. You may be able to enforce copyright in, for example, your packaging in a jurisdiction where your trademark applications are still pending.

6. Clean Up Chain of Title Issues

Nothing causes more problems in due diligence than a messy chain of title. There is no time like the present to review trademark applications and registrations to make sure that the chain of title is clear and current.

Make sure that it is possible to trace an understandable chain of title from the current record owner back to the applicant. Assignments nunc pro tunc can be used to fill in gaps, particularly when a prior owner is no longer in business. Also, check with secretary of state records to ensure that the current owner is still an active business entity.

Unreleased security interests are another problem when it comes to due diligence. Most people remember to record security interests against trademarks, but fewer remember to record the release of the security interest down the road.

7. Centralize Agreements And Review Any Licenses

Hard as it may be to fathom, some trademark settlement agreements and co-existence agreements are effectively put in a drawer (literally or proverbially) and forgotten once signed. The mark of an effective trademark practice is to consolidate those agreements in one location so that they can be consulted when needed in the future.

In the past, one could maintain a binder of trademark related agreements. Since most everything is electronic these days, it is more important than ever to main those agreements in an easily accessible electronic format. Some trademark docketing programs even have modules to record trademark agreements.

Where the number of agreements is manageable, it may even be worth reviewing them fresh. Among other things, the other side may have gone out of business or discontinued using its mark. This may result in termination of a co-existence agreement, resulting in one less issue for inside corporate counsel to worry about.

8. Rationalize Outside Counsel Relationships

As companies acquire and divest one another in whole or in part, trademark portfolios come and go. There is often different trademark counsel associated with those portfolios, especially in foreign jurisdictions.

The well-run trademark practice will seek to consolidate those portfolios in one or two counsel in each country. Some companies like to have favored prosecution counsel and preferred litigation counsel. Others will seek to have a back up in case of any conflict of interest.

Consolidating trademark portfolios is a good way to make sure that there are a limited and manageable number of counsel who are familiar with the company and its trademarks. Those outside trademark attorneys can often serve as the eyes and ears of the company on the ground in spotting infringements and recommending steps to better protect the company’s marks.

9. Maintain Evidence Of Fame And Use

Even where marks are famous, courts and trademark offices require proof of fame. It behooves the owner of a famous mark to maintain a record documenting that reputation. The fame file should include documents evidencing the adoption of the mark, the history of use of the mark, advertising and promotion of the mark, and consumer recognition of the mark.

Beyond maintaining a fame file, it is good practice to draft an affidavit of fame. That affidavit can be used in actions around the world and modified as necessary.

Time passes quickly and evidence of fame today may grow stale tomorrow. Consider docketing a future date to review and refresh evidence of reputation. Also, gather evidence across jurisdictions where marks are used outside the U.S.

One last point about fame files: ‘bookmarking’ services such as Instapaper make it easier than ever to keep a clipping file (but don’t forget to save electronic copies – the Web is ephemeral).

10. Develop An IT Policy

Today, electronic discovery is part and parcel of traditional paper discovery in any U.S. litigation. It is generally accepted that electronic discovery represents the most significant cost of the litigation process.

The value of trademarks is lessened if it is too expensive to enforce rights. As a result, it is essential that corporate counsel develop an electronic discovery plan in advance of litigation.

Identify key custodians of trademark related information and documents, and identify where such materials reside on corporate systems. With so many e-discovery vendors, it should be easy enough to find a vendor willing to assess needs and provide cost estimates. They are also often willing to come in and provide a CLE presentation.

Conclusion

There are plenty of other things that in-house corporate counsel can do to more effectively grow and protect their soft IP assets, from making sure that they are using the right docketing program, to establishing an effective domain name policy, to scouring social media for infringements. The above merely represents a sample list of actions to consider taking along the way. The important thing is to at least consider the various issues and to take one concrete step at a time. If you are looking for additional ideas, or if you have any questions, you can reach me at [email protected].



2
Oct/07

Text of FACE-BOOK.COM UDRP Decision


ADMINISTRATIVE PANEL DECISION
Facebook Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT
Case No. D2007-1193
1. The Parties
The Complainant is Facebook Inc. of Palo Alto, California, the United States of America, represented by Heller Ehrman LLP, the United States of America.
The Respondent is Privacy Ltd. Disclosed Agent for YOLAPT of Isle of Man, the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name is registered with Fabulous.com Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2007. On August 15, 2007, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain name at issue. On August 16, 2007, Fabulous.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amendment to the Complaint on August 15, 2007. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with Paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 21, 2007. In accordance with Paragraph 5(a) of the Rules, the due date for Response was September 10, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 12, 2007.
The Center appointed Brigitte Joppich as the sole panelist in this matter on September 18, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Paragraph 7 of the Rules.
4. Factual Background
The Complainant in this administrative proceeding is Facebook, Inc., a Delaware corporation having its principal place of business in Palo Alto, California, the United States of America. The Complainant was founded in 2004 and is a recognized leader in providing online social networking services and related products and services. Currently, the Complainant has more than 31 million active users of its online services, and its website at “www.facebook.com” is the sixth-most trafficked website in the United States of America. The Complainant is the owner of numerous FACEBOOK trademarks that are registered in many countries worldwide, inter alia, a word mark FACEBOOK (Reg. No. 3122052) filed on February 24, 2005 with the United States Patent and Trademark Office and stated to have been first used in commerce at least as early as February 4, 2004 (the “FACEBOOK Marks”), and a European Community Trademark for FACEBOOK (Reg. No. 2483857) with a registration date of June 13, 2003 (to which the Complainant states it is the successor-in-interest). The FACEBOOK Marks mostly designate the provision of online chat rooms for transmission of messages as well as an online directory information service, both concerning collegiate life, classifieds, virtual community and social networking.
The Respondent in this administrative proceeding is Privacy Ltd. Disclosed Agent for YOLAPT. The disputed domain name was first registered on October 3, 2004. At “www.face-book.com”, the Respondent provides, inter alia, advertising for and links to other commercial websites offering social networking and information services.
5. Parties’ Contentions
A. Complainant
The Complainant contends that each of the three elements specified in Paragraph 4(a) of the Policy is present in this case:
(i) The domain name is identical or confusingly similar to the Complainant’s FACEBOOK Marks.
(ii) The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the domain name as the Respondent has not registered the mark FACEBOOK anywhere in the world, is not a licensee of the Complainant, does not produce or market any of its own goods or services under the FACEBOOK name or mark but simply uses the website at “www.face-book.com” as a portal site, listing advertisements and links to other commercial websites that offer goods and services highly similar to those of the Complainant. Furthermore, the Respondent does not use the domain name in connection with a bona fide offering of goods and services and is not commonly known by the domain name. Finally, the Respondent is not deemed to make any legitimate noncommercial or fair use of the domain name as it merely diverts customers to other commercial websites.
(iii) The Complainant finally contends that the domain name was registered and is being used in bad faith as the website at the disputed domain name is used in order to free ride on the Complainant’s reputation and customer goodwill. The Respondent is intentionally diverting Internet users and customers to a website for commercial and financial gain. The Respondent had actual notice of the FACEBOOK Marks and the Complainant as the source of high quality products and services. Since the Respondent appears not to use FACEBOOK in association with any of its own products or services and does not identify its own company by such name, it would have no reason to register and use the disputed domain name unless it was aware of the goodwill associated with FACEBOOK and was attempting to usurp this goodwill. In addition, the Respondent had constructive notice of the Complainant’s prior use of the FACEBOOK Marks that had been used at least for eight months already when the Respondent registered the disputed domain name. The Respondent either knew or should have known of the Complainant’s prominent use of FACEBOOK. Finally, the Complainant contends that the Respondent’s bad faith is evidenced by the lack of any reply to the Complainant’s attempts to contact it by email and by ordinary mail.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under Paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant’s trademark; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name was registered on October 3, 2004, i.e. quite possibly before the Complainant acquired any trademark rights in the FACEBOOK Marks (it is unclear from the provided material when exactly the Complainant first acquired rights in the European Community Trademark for FACEBOOK, which as noted previously has a registration date of June 13, 2003). However, Paragraph 4(a)(i) of the Policy does not require that the trademark be registered prior to the domain name. See AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527; MADRID 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598. The fact that the disputed domain name predates the Complainant’s trademark registration is only relevant to the assessment of bad faith pursuant to Paragraph 4(a)(iii) of the Policy, which is considered below.
The disputed domain name fully incorporates the FACEBOOK Marks and can only be distinguished from them by the hyphen between the words “face” and “book”. Hyphens are generally without legal significance when comparing domain names to trademarks. See X-Copper Legal Services Inc. v. Majid Hashemi, WIPO Case No. 2007-0251; VeriSign Inc. v. Bin g Glu / G Design, WIPO Case No. D2007-0421.
Finally, it is well established that the specific top level domain name is not an element of distinctiveness that can be taken into consideration when evaluating the identity or similarity of the complainant’s trademark and the disputed domain name. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374.
The domain name is therefore almost identical and in any case confusingly similar to a trademark in which the Complainant has rights, and the Panel finds that the Complainant has satisfied the requirements of Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of Paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Respondent in this case did not file a response in this proceeding. Therefore, the Complainant’s assertions that the Respondent lacks rights or legitimate interests stand unrebutted. Based on the evidence before the Panel, the Respondent apparently did not make any bona fide offering of goods or services in connection with the domain name and is neither commonly known by the domain name nor contends to make a legitimate non-commercial or fair use of the domain name. Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests under Paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, although not exclusive, are evidence of the registration and use of the domain name in bad faith for purposes of Paragraph 4(a)(iii) of the Policy, i.e.
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The two parts of the third requirement of the Policy are generally regarded cumulative conditions: i.e. the Complainant must show that the domain name was registered and is being used in bad faith. This point is clear from the wording of the Policy and has been confirmed ever since Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003. See Telstra Corporation Limited v. Adult Web Development and Telstraexposed, WIPO Case No. D2002-0952; Telstra Corporation Ltd v. David Whittle, WIPO Case No. D2001-0434; Prada S.A. v. Mr. Chuan Sheng Wang, WIPO Case No. D2003-0758.
As to bad faith registration, on balance, the Panel is convinced that the domain name was registered by the Respondent in bad faith for the following reasons, although the case established by the Complainant is towards the weaker end of the spectrum, noting in particular the absence of provided evidence from which the Panel may assess the extent (or otherwise) of the fame of the name or mark FACEBOOK at the moment of the registration of the disputed domain name:
Firstly, it is important that the name FACEBOOK (consisting of “face” and “book”) is made up of two common terms in an imaginative manner and can generally not be found in dictionaries. It must therefore be considered as inherently distinctive (this is confirmed by the numerous trademark registrations in English-speaking countries worldwide which do not rely on secondary meaning). The Respondent therefore did not register just any generic domain name.
Secondly, taking into account all circumstances of this case, it is difficult to imagine that – eight months after the Complainant’s services were first offered online – the registration of an almost identical domain name that is not generic by a third party is a mere coincidence. The Complainant’s services, by their very nature, became known to the public through the Internet and thus worldwide. Domicile is irrelevant in this regard.
Thirdly, the Respondent has never been offering any products or services of its own or been known under the domain name. It could have given a different meaning to the combination of the words “face” and “book” by using the disputed domain name but preferred to enter into direct competition with the Complainant.
Fourthly, the Respondent is using a privacy shield, and apparently wishes not to be identified. The Panel has considered the possibility that such behavior enables the Respondent to conceal facts that might otherwise be considered as evidence against it.
Finally, the Respondent has not made any effort to defend itself – neither when first contacted by the Complainant nor in the course of these administrative proceedings. The Panel is not of the opinion that the absence of a response in UDRP proceedings is to be considered automatically as an indication of bad faith. Still, cases involving generic domain names must be distinguished from cases concerning inherently distinctive domain names, in particular those where the domain name includes a famous trademark as in this case.
Having regard to these facts, the Panel is convinced on balance that the disputed domain name was registered by the Respondent with actual knowledge of the Complainant’s website at “www.facebook.com”. Actual knowledge of the FACEBOOK Marks is also required and more difficult to establish. Although the Panel does not exclude the possibility that the Respondent may have been aware, at the time of registering the disputed domain, of the European Community Trademark for FACEBOOK, the evidence is not decisive, and the point at which the Complainant itself acquired that mark remains unclear. As a general rule, a domain name is not registered in bad faith if it was registered before the trademark. Still, an exception must be made to this rule where the respondent registered the domain name with speculative intent in full knowledge of the likely use of the trademark by the complainant, and, more particularly, where the respondent hopes to either benefit from confusion and the diversion of web traffic or by selling the domain name to the trademark holder. See e.g., inter alia, ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669; Joe Cole v. Dave Skipper, WIPO Case No. D2003-0843; General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online, WIPO Case No. D2003-0845; MADRID 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598. Considering the circumstances of the present case, the Panel is of the opinion that the Respondent in all likelihood had such speculative intent and thus that the registration of the disputed domain name occurred in bad faith. As a result, the Panel need not make a finding on whether the concept of constructive notice exists under the Policy (most panels have declined this unless in the presence of very special circumstances).
As to bad faith use, by fully incorporating the FACEBOOK Marks with only a minor variation into the disputed domain name and by using the website under such domain name to provide advertisements and links to other commercial websites that offer services and products in direct competition with the Complainant’s products and services, the Respondent is in all likelihood trying to divert traffic intended for the Complainant’s website to its own for the purpose of earning click-through-revenues from Internet users searching for the Complainant’s website. The use and exploitation of trademarks to obtain click-through revenues from the diversion of Internet users has in many decisions been found to be use in bad faith under Paragraph 4(b)(iv) of the Policy. See L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623, with further references.
Therefore the Respondent has also been using the disputed domain name in bad faith.
As a result, the Complainant has established registration and use in bad faith under Paragraph 4(a)(iii) of the Policy as well.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Brigitte Joppich
Sole Panelist
Dated: September 23, 2007