Plaintiff owns registrations for REORGANIZED CHURCH OF JESUS CHRIST OF LATTER DAY SAINTS. Defendant refers to itself as a ‘restoration branch’ and uses the term “Reorganized Church of Jesus Christ of LDS: Devon Part Restoration Branch.” Most of this case is straight-forward. Defendant pleads abandonment as a defense and the court rejects that argument.

The interesting part is discussed on page 10: to what extent can the name of the religion serve as a trademark. The case-law appears to be uneven (and if you search for various names of sects on TESS you will find inconsistent results as to registrability).    One source of tension seems to be this: to the extent that a word is used to describe a doctrine, does the First Amendment allow the government determine that only one group may describe themselves by a term?  On the other hand, religious entities perform a variety of ‘conventional’ services (for example, educational, charitable and social welfare) and names of such sects come to designate single sources in the mind of the public.  This creates the potential for confusion and false endorsement from the misuse of such names.

The Court notes its inability to address ‘religion-based’ arguments in a trademark dispute (see footnote 3).   See further discussion of the issues in trademark protection of religious names here and here.

As an aside:  an entity named Intellectual Reserve, Inc. of Salt Lake City, which I assume is an IP-holding entity for The  Church of LDS (not related to the plaintiff in this matter), owns registration 3239919 for MORMON, and its response to a descriptiveness objection of March 31, 2003, contains an interesting history of the word.

UPDATE: Perceptive commenter Dan T. wants to understand how a trademark for REORGANIZED LATTER DAY SAINTS can co-exist with prior ownership of LATTER DAY SAINTS, a point I should have explained in the original post. The answer is: when RLDS applied for REORGANIZED LATTER DAY SAINTS, the application did receive a preliminary objection based on the earlier LDS mark, and RLDS submitted a coexistence agreement that it had executed with LDS. The objection was removed based on that agreement. Such an agreement says in effect “we don’t believe that there is a likelihood of confusion, please take our word for it.”

Decision Reorganized LDS(function() { var scribd = document.createElement(“script”); scribd.type = “text/javascript”; scribd.async = true; scribd.src = “http://www.scribd.com/javascripts/embed_code/inject.js”; var s = document.getElementsByTagName(“script”)[0]; s.parentNode.insertBefore(scribd, s); })();

The works of plaintiff were uploaded without authorization to the Photobucket service.  When plaintiff sent a DMCA-compliant notice, Photobucket removed the material.  Plaintiff apparently got tired of sending DMCA notices and sued Photobucket, arguing that h was not entitled to DMCA protection. It made a general ‘Photobucket should have known’ or “Photobucket should have taken pre-emptive steps” argument. Plaintiff argued that prior DMCA notices of specific infringement gave Photobucket actual notice of other infringements that were not the subject of DMCA notices.   After Viacom, one can guess how this will play out:  the  ISP will have  liability  only after actual knowledge of a specific infringement.

Prof  Goldman’s analysis of this decision is comprehensive.   I only want to bring to your specific attnetion the discussion on page 15 of the decision regarding ‘pre-infringement’ steps an ISP could take.  ”

Photobucket . . . does not maintain the right or ability to control what is posted, including material which infringe copyrights.  “The right and ability to control of infringing activity ‘as the concept is used in the DMCA, cannot simply mean the ability of a service provider to block or remove access to materials posted on its website or stored in its system [citations omitted].  Rather,  such a right and ability to control may take the form of prescreening content, providing extensive advise to users regarding content, and editing users content. [citations omitted].  Photobucket does not engage in such activities, and the size of its website curtails its ability to do so. . . Plaintiff has not pointed to any feasible method by which Photobucket can prescreen its content.

My reaction to that is, well,  eBay is pretty big, and it has pre-screening.

Comment:  After Tiffany and Viacom and cases like these, it will continue to be cheaper and more effective to place intermediaries on actual notice than to bring ‘constructive’ notice/they shoulda known’  litigations.  The more interesting lawsuits (to me) will be variants of the Akanoc fact pattern in both TM and copyright, where the intermediary is on actual knowledge of a specific infringement and for whatever reason, doesn’t promptly remove the material.

decison wolk v photobucket dmca(function() { var scribd = document.createElement(“script”); scribd.type = “text/javascript”; scribd.async = true; scribd.src = “http://www.scribd.com/javascripts/embed_code/inject.js”; var s = document.getElementsByTagName(“script”)[0]; s.parentNode.insertBefore(scribd, s); })();

ok. It’s not an App Store, it’s a mobile download service.  Say, I just licensed the Angry Birds software suite from the mobile download service offered by my cellular telephony provider’s hand-held phone with PC-functionality.  Just joshin.’

Here is an excerpt from Apple’s first response to the descriptiveness objection (that it overcame) when it applied for the mark APP STORE (which application Microsoft is presently opposing):

In order for a mark to be non-registrable because of descriptiveness, it must not only be descriptive, but must be “merely” descriptive of the goods or services to which it relates. See TMEP § 1209.01(b). Stated differently, to be non-registrable, the mark must do nothing other than immediately convey an understanding of the goods for which registration is sought. . . .

Whether a mark is suggestive or merely descriptive must be determined, not in the abstract, but, rather, in relation to the goods or services for which registration is sought; the context in which the mark is used, or intended to be used, in connection with those goods or services; and the possible significance which the mark would have, because of that context, to the average purchaser of the goods or services in the market place. See TMEP § 1209.01(b);  . . .  In re Realistic Co., 440 F.2d 1393 (C.C.P.A. 1971) (finding CURV not merely descriptive of permanent wave curling solution); In re Waldorf Paper Prods. Co., 155 U.S.P.Q. 174 (T.T.A.B 1967) (finding STRIP-FLAP for an opening device for paper board containers not merely descriptive even through the opening device containing strips and flaps); Ex parte Great West Lubricants, Inc., 118 U.S.P.Q. 169 (Comm’r Pat. 1958) (finding TUBE-O-LUBE used on a cartridge of lubricating grease not descriptive but suggestive).

The term “APP” is not merely descriptive. In fact, it is completely arbitrary. Arbitrary marks are “inherently distinctive” and are registrable on the Principal Register without proof of acquired distinctiveness. TMEP § 1209.01. The term “APP” may, arguably, sometimes be used as a slang abbreviation for the word “application”, but this term has many other incongruous meanings. Attached as Exhibit A are printouts of online dictionary definitions of the term “application”. As demonstrated, “APP” is an abbreviation for a number of app-formative words, such as apparatus, apparent, appendix, applied, appointed, approved and approximate. Attached as Exhibit B is a printout from website Dictionary.com showing the definition of the term “APP”. The Examiner’s evidence of dictionary definitions fails to offer any possible alternative definition besides the one supporting the Examiner’s position from Microsoft’s Encarta English Dictionary. When used in connection with the word “STORE” it is not apparent what the goods or services are. For example, the service could be offering physical objects such as apparatus or it could be commenting on an inherent trait or quality of the items, such as “approved”. As the term “APP” can have several different meanings, applicant submits that at most, the mark is suggestive of applicant’s services.

Further, applicant does not offer “store” services. The word “STORE” is usually used in the traditional sense of a brick-and-mortar store or in the modern sense of an online retail store. Applicant’s software is only available for download to subscribers through its iPhone portable electronic device or its iTunes digital media player application. None of applicant’s APP STORE software is available for purchase through a store in the traditional sense of the word, namely brick-and-mortar or online retail stores. It requires several mental steps to associate applicant’s services to a traditional “store” service. As the term “STORE” is not used in the traditional sense of the word and can have different meanings, applicant submits that at most, the mark is suggestive of applicant’s services.

. . .  In the case at hand, the Examiner offers online dictionary definitions of the words “APP” and “STORE” from Microsoft Corporation’s Encarta World English Dictionary. These definitions, however, are not sufficient to prove that the mark as a whole is merely descriptive. Applicant submits that, on the contrary, such an interpretation would improperly dissect its mark rather than view it as a whole, which is the proper test when considering the issue of descriptiveness. In fact, when viewed together as “APP STORE”, the mark has only one meaning and that is as an indicator of source to applicant’s services. Attached as Exhibit C are printouts of the first 100 hits from a Google search for the mark “APP STORE”. The vast majority of the more than 8 million results from the search use the term to refer to applicant’s services. Of the first 100 references, all but one refers to applicant. This evidence demonstrates that the mark has only one meaning, and that is as an indicator of source for applicant’s services.

Moreover, applicant’s mark creates a clearly recognizable double entendre. A “double entendre” is an expression that has a more than one connotation or significance as applied to the goods or services. A mark that has a “double entendre” will not be refused registration as merely descriptive if one of its meanings is not merely descriptive in relation to the goods or services. TMEP § 1213.05(c). In the context of applicant’s services, in addition to other possible connotations, “APP” will be immediately recognized as an abbreviation of the applicant’s well-known APPLE name and mark, and the mark as a whole, APP STORE, will be immediately recognized as a variant of the applicant’s well-known APPLE STORE mark. These marks are registered under, inter alia, Reg. Nos. 2462798, 2424976 and 2683410 (collectively, the “APPLE STORE Marks”). Copies of these registrations are attached as Exhibit D. Such readily apparent meaning is not merely descriptive, and is in fact highly distinctive, in relation to the goods and services. Therefore the mark should not be refused on mere descriptiveness grounds. See TMEP §1213.05(c).

I look forward to seeing the surveys.  HT MD at Bloomberg for the complaint.

Complaint Apple v Amazon App Store//

Air802, manufacturer of wireless products, sues Amazon for alleged infringement of AIR802 trademark.

Complaint 802 Amazon(function() { var scribd = document.createElement(“script”); scribd.type = “text/javascript”; scribd.async = true; scribd.src = “/javascripts/embed_code/inject.js?1300738718”; var s = document.getElementsByTagName(“script”)[0]; s.parentNode.insertBefore(scribd, s); })();

San Francisco tour operator sues Groupon for buying keywords such as NAPA WINE TOURS, placing such terms in its keyword ads in its ads, regardless of whether it was offering coupons for such services, in order to inflate its keyword placement.

complaint san francisco tour groupon(function() { var scribd = document.createElement(“script”); scribd.type = “text/javascript”; scribd.async = true; scribd.src = “/javascripts/embed_code/inject.js?1300738718”; var s = document.getElementsByTagName(“script”)[0]; s.parentNode.insertBefore(scribd, s); })();

Virginia Tech is a state university in Virginia.  The university’s athletic teams are known as the HOKIES.  Also, “many or most Virginia Tech alumni recognize themselves as Hokies are proud members of the so-called Hokie Nation, in recognition of their affiliation with Virgina Tech.”   Remember my article on Who Dat?  Virginia Tech has an incontestable registration for HOKIES for various merchandise.  It is also working on a HOKIE HOME program, which consists of home design plans to be marketed to VT alums.

In late 2009, VT learns that Hokie had opened up HOKIE REAL ESTATE.  It sued on October 18, 2010, defendant moves to dismiss, VT moves for a prelim in December.

Defendant argued that HOKIE is generic for a VT supporter.  Using the term HOKIE to refer to a supporter of Virginia Tech is like using the term ‘apple’ to refer to the [fruit].”    VT responded that “any person or business would be free to use any mark for any purpose simply by claiming to support the business of the owner of the mark.”

The Court declined to resolve this, as it was a fact-specific issue not suitable for resolution at the motion to dismiss phase.

Another way of looking at this occurs to me: regardless of whether HOKIE is a generic term for a supporter of VT, HOKIE is certainly not the generic term for real estate services,  nor does it describe a material quality of the real estate services.

Defendant also argued that HOKIE is distinguishable from HOKIES, and that took  three paragraphs to reject.

VT’s motion for preliminary relief failed, as it’s showing was insufficient to show that it was likely to prevail, and that it would suffer irreparable harm.  Its dilution claim was undercut by a showing of ‘a multitude of restaurants and other business  .  .  . currently utilizing the HOKIE mark without permission from the university.”

Decision Virgina Tech Hokies(function() { var scribd = document.createElement(“script”); scribd.type = “text/javascript”; scribd.async = true; scribd.src = “/javascripts/embed_code/inject.js?1300351301”; var s = document.getElementsByTagName(“script”)[0]; s.parentNode.insertBefore(scribd, s); })();

A jury has found a search engine optimization firm, Bright Builders,  to be liable for ‘building and hosting’ a customer’s site that sold counterfeit goods. A judge has ordered that it pay $750k in damages. The case isRoger Cleveland Golf Company v. Prnce, Shelley and Bright Builders Inc., 2:09-cv-02119-MBS (D South Carolina March 14 2011).

This Chrysler Super Bowl commercial introduced the tagline ‘Imported from Detroit.’ Defendant immediately started selling t-shirts with the slogan. The complaint is a good read as it tells the stirring story of the commercial. Personally, I like the “This is the Motor City. This is what we do” slogan better. It conveys confidence and competence (as opposed to ‘Imported From Detroit’, which either tacitly admits that imported cars are better, or subtly criticizes the customer for believing that).

Complaint Chrysler Imported From Detroit