The Trademark Blog

Philip Morris v. Various Groceries Selling Cigarettes

Wed, 18 Nov 2009 20:18:07 -0500

This is a complaint Philip Morris brought against six grocery stores and ten John Does, for selling counterfeit cigarettes. What's interesting is how the Court will handle the joinder of these defendants - I did not see allegations in the complaint of any sort of connection between them (apart from the allegation that they all sell counterfeit cigarettes).

Complaint Philip Morris Counterfeit

Who Is The LAWYER OF LOVE?

Tue, 17 Nov 2009 14:55:32 -0500

Playboy sues divorce lawyer/former columnist/former Playboy model, for filing application for LAWYER OF LOVE (name of her Playboy column). I would assume LAWYER OF LOVE was a generic term for trademark lawyer. Defendant owns a registration for the mark LIFE'S SHORT, GET A DIVORCE. Background here.

Complaint Lawyer of Love Playboy

US Polo Association v Ralph Lauren re POLO and Horses

Mon, 16 Nov 2009 10:51:30 -0500

The US Polo Association and Ralph Lauren have been fighting since 1984 over logos using the word POLO and depicting horses. The background of the this dispute is set out below in the Polo Association's complaint in a new declaratory judgement action.

Noting the success of the Polo Association's licensing program, I will be reaching out to the governing body of water polo, in the hopes of securing a license. I would like to update the logo, perhaps to include ponies (yes, that's a Billy Wilder reference).

Complaint DJ Polo v Polo

Extra-territorial Application of Lanham Act to 43(a) False Advertising Case

Fri, 06 Nov 2009 11:13:49 -0500

I think this is an unusual decision, so if you know of similar ones, please send them along. A Southern District of New York court last week denied reconsideration of its refusal to dismiss a 43(a) false advertising claim arising from activities in Germany. In so doing it adopted an expansive view of the reach of the false advertising provisions of the Lanham Act and of what constitutes 'commerce' under the Act (matched by, in my view, few other cases, most notably the Casino du Monte Carlo decision from the Fourth Circuit).

The three prong Vanity Fair test is the well-settled test in this circuit determining whether the Lanham Act can be applied to activities abroad (234 F.2d 633 (2d Cir 1956).

1. Is there a substantial affect on US commerce;
2. Is there a US defendant;
3. Is there no conflict with the substantive law of the non-US jursidiction affected.

So, for example, a US company sold PENNSYLVANIA cream cheese in Bolivia, and Kraft (owner of the PHILADELPHIA cream cheese mark) sued the US company here (necessitating an evaluation by the US court as to how Bolivian law would handle the matter).

AFAIK, the doctrine tends to be applied, for the most part, to trademark infringement cases relating to goods, but that's only as far as I know. There was a 43(a) case a while back involving basketballs, but I think the non-US portion was trimmed from the case.
Now, the doctrine has been applied, to services, under a 43(a) false advertising case. In NewMarkets v Oppenheim, decision below, Plaintiff contracted with Defendant to form an investment fund. Defendant allegedly circulated the prospectus of a competing fund in Germany falsely stating that plaintiff would manage that fund. Plaintiff sued here, alleging, among other causes, 43(a) false advertising. Court applies Vanity Fair test and determines it will exercise subject matter jurisdiction. Defendant moves for reconsideration saying that use in Germany is not use in commerce, and court denies motion (see text of decision at bottom), holding that the Vanity Fair test determines what is and what is not commerce regulated by Congress.

Some background here and here.

Decision Extra-territorial Jurisdiction Lanham Act

Decision Reconsideration Extra-territorial

U.S. Government As Plaintiff In Trademark Suit

Thu, 05 Nov 2009 16:35:02 -0500

Here's something you don't see every day. The USG owns the mark ARMED FORCES INSTITUTE OF PAHOLOGY or AFIP. Defendant allegedly implies endorsement with or some other connection to AFIP.

Complaint Us Afip

Oral Contract Not Worth The Email They're Printed Out On

Thu, 05 Nov 2009 10:03:18 -0500

Plaintiff, movie distributor (The Weinstein Company), attempts to obtain exclusive license to distribute movie. It emails producer "We confirm that we accept your offer." Producer immediately emails back "we're going over the terms, we'll get back to you." (my paraphrase). Then producer does the deal with a different distributor. Distributor attempts to argue either (1) exclusive license created by oral communications, or (2) emails constitute written contract.

Held: The oral communications can't create a binding transfer of an exclusive copyright license as there has to be a signed writing, as per the statute of frauds in the Copyright Act. The emails don't create a transfer as defendant clearly and immediately indicated that it was not yet willing to enter into the contract.

Bonus footnote 4: Defendant argued that plaintiff couldn't make the 'oral transfer' argument as it had taken a contrary legal position in another lawsuit. Held: 'Judicial Estoppel' exists not when a party argues a certain position in another proceeding but when a tribunal adopts that position.

Decision Twc Oral Copyright

NewLawyer.com Spammed Me Yet Again

Mon, 02 Nov 2009 16:11:18 -0500

I don't understand why their telemarketers don't mark their records "do not call - angry abusive guy threatens suit."

My Interview On CNN International re Domain Names

Fri, 30 Oct 2009 13:37:14 -0500

With the World Series a close second, my interview on CNN International regarding domain names was certainly the most compelling television last night.

New gTLDs Delayed, Perhaps to Fall 2010 (Dog Bites Man)

Fri, 30 Oct 2009 09:55:53 -0500

The ICANN Board passed a bunch of resolutions Friday morning in Seoul. Internalized domain names will be fast-tracked, new generic top level domains will be slow tracked. Applications for new gTLDs will only be accepted after (and depending upon) (1) more economic analysis as to whether new gTLDs are a good thing or not; (2) more analysis as to the cumulative effect of new IDNs and other implementations on the scalability of the DNS; (3) more consideration of trademark protection; and (4) the appointment of the evaluators of the gTLD application process. So expect a fourth version of the draft Applicant Guidebook. I'm predicting fall of 2010 now as the opening date for filing applications.

ICANN Contract Compliance Statistics

Tue, 27 Oct 2009 01:43:44 -0500

Source: ICANN contract compliance team (which enforces the accrediation contact between a registrar and ICANN):

For January to October 2009:

9 terminations of registrars
7 (contested) non-renewals of registrars
184 breach notices transmitted
4,290 enforcement actions
9,304 consumer complaints processed

This Is Why I Don't Do The ICANN Reading For The First Two Years Of A Process

Mon, 26 Oct 2009 17:46:53 -0500

I'm here in Seoul at the ICANN meeting. The third version of the Draft Applicant Guidebook to the new TLDs is out.

As to timing, the initial word is that the process will be kicked even further into the future. ICANN suggested in the opening remarks that the application process itself, intially scheduled for early 2010, may not even start until 2011. There are TLD start-ups out there carrying heavy salary loads and they were not happy to hear this. Of course if the delay is only until September 2010, that may seem like a relief.

Also, there is the issue as to 'dot brands,' TLDs consisting of a brand owned by that brand, such as .NIKE or .AMAZON (I'm using those as examples of famous brands, not because I have any reason to believe that those particular companies want those particular TLDs). It has been an assumption that TLD applications would be judged on various technical criteria but the judging would be 'content-neutral' (within reason).

Well, the word on the street is that two ICANN board members stated publicly on Sunday that they are opposed to dot brands and will work to reject such applications.

It's not clear to what extent they can bring that about - but ICANN may wish to clarify this issue before the Fortune 100 each pay $185k in fees to ICANN for dot brands.

Of one thing I am certain - I am glad I did not devote psychic energy to this process two years ago.

The Seoul meeting can be tracked and followed remotely here.

There Is A Scam (Still) Going Around In Which Law Firms Are Being Targeted

Wed, 21 Oct 2009 13:27:45 -0500

A approaches a law firm and says that they've negotiated a settlement in principle with B, and can the law firm please eyeball the final agreement. The settlement will be about $280k and you can keep $5k for 1 or 2 hours of work. A is to be paid by wire upon receipt of a certified check from B made out to the law firm. The certified check arrives and the law firm deposits it. The scam depends on the hope that the firm will mistakenly think that a certified check is like depositing cash, and will therefore immediately wire the balance to A. However, the certified check is forged.

Note: This scam is going on presently, while this post from the North Carolina Bar Association indicates that it has been around since at least May 2008 (and is of course a variation of the 'classic' bank frauds). The post contains practice pointers and red flags.

I'm Going To Seoul For the ICANN Meeting

Mon, 19 Oct 2009 09:17:45 -0500

If you're going and want to meet up, drop a line. If you want to chat about the new gTLD process when I get back, that's good too.

Verizon v AT&T re Best 3G Network

Sat, 17 Oct 2009 09:58:20 -0500

Action for declaratory judgment that Verizon Wireless's advertising claims of having "America's Most Reliable 3G Network."

Complaint Best 3g Network

What Once Was Dilution Is Now The Theme Song

Thu, 15 Oct 2009 14:47:04 -0500

Once Mattel sought to enjoin the "Barbie Girl" song as dilutive, and now they've licensed it.