international Herald Tribune: “China Suit In China Called Opening Salvo In Media War”
“A lawsuit that has been filed by one of China’s largest newspapers against one of the country’s leading Internet portals over the issue of massive copyright violations is being described here as the opening salvo in a media war.
In the suit, which was filed in October and is expected to go to court soon, The Beijing News is seeking $400,000 in damages from a popular Internet site called Tom.com for having copied and republished more than 25,000 articles and photographs without authorization since 2003.
. . .
Very gradually, an awareness also seems to be taking hold that China’s companies must build strong brands of their own to be successful, and that this cannot be accomplished in an environment where copying goes unpunished.
“To enhance the country’s development we are trying to encourage innovation,” said Xu Chao, vice director of the National Copyright Bureau.
“We are placing more emphasis on intellectual property and have made improvements in the law. It used to be possible for traditional media or Internet media to simply copy each other’s work, but now this has been forbidden.”

Kahle v. Gonzalez, 9th Cir January 22, 2007:
“Each Plaintiff provides, or intends to provide, access to works that allegedly
have little or no commercial value but remain under copyright
protection. The difficulty and expense of obtaining permission
to place those works on the Internet is overwhelming; owner-
ship of these “orphan” works is often difficult, and sometimes
impossible, to ascertain.
Prior to 1978, the number of orphaned works was limited
by the renewal requirement. Renewal served as a filter that
passed certain works — mostly those without commercial
value — into the public domain. Along with formalities such
as registration and notice (which have also been effectively
eliminated), renewal requirements created an “opt-in” system
of copyright in which protections were only available to those
who affirmatively acted to secure them. The majority of cre-
ative works were thus never copyrighted and only a small per-
centage were protected for the maximum term. ”
Discussion by Prof Patry here.

katonahsmall.jpg
Our offices are located in Mt. Kisco. The next town up is Bedford Hills and then Katonah. Katonah, named after an Indian chief, has a nice art museum. The houses are a little more affordable than in mid-Westchester, but the commute to the city is long (definitely over an hour). Martha Stewart is usually reported as living in Bedford (really big properties) but apparently she lives in Katonah.
Her company has now filed several applications for the mark KATONAH covering various housewares.
If the examiner had uncovered information suggesting that Katonah is known as a source of housewares, which it isn’t, then the application would have been in trouble. In this case, it gets an office action that says:
“Applicant must specify whether the mark has any significance a specific field, trade or industry, or any geographical significance, or any meaning in a foreign language. 37 C.F.R. §2.61(b).
Specifically, Applicant must indicate specifically whether the goods will be manufactured, produced or sold in, or will have any other connection with, the geographic location named in the mark. 37 C.F.R. §2.61(b); TMEP §1210.03. See attached article noting that Martha Stewart lives in Katonah, New York. ”
So then Applicant has to respond:
“Katonah is a town in New York which serves as the inspiration for the design of the goods intended to be sold under the mark. The goods will not be manufactured or produced in Katonah.”
And the application is approved for publication, where Katonah resident Terry McAulliffe (Hi Terry! Remember me? I did about three seconds of work on a matter for you when you were at Nynex, about 17 years ago) notices it and brings it to the world’s attention.
Then the town of Katonah gets a little concerned, afraid that the crazy woman in the haunted house has stolen the name of their town, so, carrying pitchforks and torches, they raze her mansion to the ground.
No, just kidding. The town expresses concern as to the effect that Martha Stewart’s ownership of the KATONAH trademark. However, there will be no effect. The local businesses will continue to be able to truthfully claim that they are located in Katonah, even the furniture stores. They, like us, however, will not be able to use KATONAH as a trademark for the goods covered by Stewart’s registrations. So, in the end, it’s a good thing.
More on the use of geopgraphic terms as trademarks here.

Well, I should have anticipated that, but the first people to contribute logos to the pageant of trademarks slide show, sent in logos for their own trademark firms. But, given that both logos had artistic merit, they have been included.
You can add to the show by emailing a JPG or a PNG (no other format) file to TRADEMARKS at CELLBLOCK dot Com. No subject heading is necessary. I monitor all submissions.
Remember, the button bar at the bottom of the Cellblock viewer allows you to go forward and backward, change the speed, and allow for full screen viewing (turning it into a nifty screen saver).

The thing on the right side of the template (RSS users – you have to go the html version to see this) is called a CELLBLOCK ™ graphic viewer (disclosure – it’s created by my client, Gloto). The cool thing is that anyone can add an image by simply attaching a JPG or PNG file to an email and sending it to TRADEMARKS at CELLBLOCK dot COM. I monitor what gets sent before it’s uploaded, so no funny stuff.
At the bottom of the CELLBLOCK frame you will notice a control bar. The buttons on the bottom left allow you to advance to the next image. The slider in the middle allows you to advance the speed of the show. The button on the far right allows you to make the display go full screen – turning the CELLBLOCK into a screen saver.
So if I have left out your favorite logo, please email it to TRADEMARKS at CELLBLOCK dot COM. If you’re on the road see some particularly beautiful specimen of a trademark, snap a photo and email it from your cellphone.
If you want a CELLBLOCK of your own, go to CELLBLOCK.COM.

union 76 ball.jpg
WSJ: “Fans Leap To Save A Road Icon” (sub req):
“Surveys showed that consumers preferred gas stations that were well-lit and had a “bright, clean look,” he says. Color experts hired by the company said a red and white palette conveyed this orderliness. The orange balls didn’t fit.
Starting in 2003, the balls started coming down and being replaced with flat signs with a small red-and-blue 76 logo. Kim Cooper, an author and cultural historian, noticed the new color scheme at a gas station near her Los Angeles house. “It made me feel unsettled,” she says of the new colors. A couple of hours later, she had registered the Web site www.savethe76ball.com.”

iphone sticker.jpg
Note to self: never submit a specimen of use I wouldn’t want to see questioned on the editorial page of the Wall Street Journal.
A trademark owner has to submit a Section 8 affidavit in the sixth year of the registration term. The affidavit has to state that the owner is using the mark or is not using for good reason (as in, factory burned down).
It may also submit a Section 15 affidavit at that time, which states that the mark has been in continuous use for 5 years. A Section 15 is optional, but it brings important statutory benefits.
As indicated here previously, Cisco filed a Section 8 use affidavit but not a Section 15 affidavit, by the May 06 deadline, for its iPHONE registration. What appears to have occured is that the original iPhone product was taken off the market, use was interrupted, and resumed no later than the Dec 06 re-introduction. The technical issue would be: was Cisco making trademark use in May 06 when it filed the Section 8.
ZDNet took a look at the specimen for Cisco’s Section 8 (detail pictured above – the full specimen is available through TDR at USPTO.GOV) and noted that it appears to consist of an iPhone sticker slapped on a box for a pre-existing product. It implies that Cisco fabricated the specimen, which allegation Cisco has addressed.
I emailed the author about errors in the article (including the assertion that Cisco needed to prove continuous use). I tried to make the point that it’s not possible for an outside observer to come to any certain conclusion as to the validity of Cisco’s filing. I did make the point that Cisco was ably represented when it filed, and it would have been crazy to fabricate use when (1) it knew Apple was watching; and (2) it could have claimed excusable non-use. My comments were included in this follow up ZDNet story (which article, in my view, muddies the issue in its use analysis. That Cisco didn’t ‘ship’ a product until Dec. 06 is relevant to an analysis of the strength of Cisco’s rights but not necessarily relevant to whether Cisco met technical user requirements in May 06).
A traditional view of trademark use is that the trademark user has to be able to take orders, but not necessarily fulfill orders, to satisfy trademark use requirements on a particular date. A classic example would be trademark use with regard to airplanes or oil tankers, where the order is placed years before the product is shipped. So given the expansive definition of use, it’s hard for an outsider to come to a definitive conclusion as to Cisco’s May 06 activities.
I thought that was that and didn’t blog it.
Well, today’s Wall St Journal editorial page contains a piece entitled “iFoodfight.” It is an interesting essay that makes the point that litigation is the continuation of business by other means (and sort of implies that Apple is the moral favorite here). it also notes that:
“What’s more, ZDNet, the online news service, examined the paper trail and finds that Cisco may have failed to meet a six-year deadline to show it was making use of the trademark. Cisco did submit something just before an additional six-month grace period ended, but — according to ZDNet, which backs up its report with a photo — the filing consisted of slapping an “iPhone” sticker on a box for its Linksys Cordless Internet Telephony Kit.”
Well, if push comes to shove, then maybe someday Apple will put Cisco to strict proof and Cisco will have to explain the circumstances behind the specimen. Cisco did or did not satisfy Section 8 requirements. But in the short term, the ZDNet article, and the WSJ citation of it, creates an unfair inference. A sticker on a re-named box is not itself per se evidence of fraud.
Real note to self: don’t submit an affidavit to the PTO that you aren’t prepared to explain under cross.
Aside: There may be profound issues here regarding (1) the mainstream press reporting on technical legal issues and (2) lawyers speaking to the mainstream press about technical legal issues, but I will leave those for future posts.