With the cavaet that I have not handled domain name disputes under Nominet’s procedure, nor have I read the underlying submissions, I will say that I am ‘surprised’ by this Nominet decision awarding game.co.uk to Game Group, owners of a GAME chain of stores selling, hmm, games. 

It’s interesting that someone could establish rights in GAME for games.

The second interesting question is when the relevant time of inquiry should be, given that the Nominet policy is targeted at ‘abusive registration.’   Here, registrant has owned the name since 1995.  Assuming that complainant’s allegations are correct, which is that registrant, after a period of several years of either warehousing the name or using it in connection with his game industry consulting business, then changed the usage of the site fairly recently to compete with complainant’s now-booming business, that would seem to make for a colorable passing-off action, and would not seem to speak to registrant’s actions in 1995, when he registered the name.

The decision is on appeal.

Commentary from The Register here.

Softbelly plush bean bag dolls have chamois surfaces used to clean computer screens.  At one point they were named SCREENIE BEANIES.  Owners of the BEANIE BABY mark, Ty, sued, and prevailed.  Ty has now been ordered to forfeit its $700k judgement for tampering with an expert witness who was allegedly prepared to testify that BEANIE had become a generic term for bean bag dolls.  Via Chicago Tribune.

Prior appellate decision remanding case to district judge to investigate Ty’s contact with witness here.

A letter has been circulated to non-U.S. trademark owners by a U.S. law firm indicating that if they were to extend an International Application to the U.S. under the Madrid Protocol, were the U.S. Trademark Office to rule that some or all of the goods/services are mis-classified under U.S. practice, those goods/services, rather than being re-classified (as would be the case with an application under Section 44(e)), those goods/services would be deleted.  If correct, this would be something of a disadvantage to the non-U.S. filer. 

While fear of this outcome was articulated in the run-up to U.S. adherence, it apparently is not correct.

Examination Guide 2-03 IV B.2 provides that while the PTO will attempt to conform the U.S. extension to U.S. practice whenever possible, the International Bureau controls classification.  The goods/services would remain in what the U.S. Trademark Office would ordinarily think of as ‘the wrong class.’

One fewer thing for our non-U.S. friends to worry about.

Hat-tip to A.S. for supplying chapter and verse.

Trademark lawyer Anthony Tambourino noted the Red Hat free-distribution trademark story below and writes:

There are a couple of issues to watch out for when representing an “open source” client. 
 
First, be clear who the owner of the trademark is.  There are thousands (literally) of open source projects (See SourceForge).  Often, a half-dozen programmers (a/k/a “maintainers”) work on these “projects” for free.  Very few, if any, of these projects have a formal corporate structure (The Mozilla Foundation and The Apache Software Foundation being notable exceptions).  You will probably need to discuss with the client the need for a corporate structure before talking to them about trademarks.  Programmers come and go, especially in the smaller projects, so it is critical to set-up a structure that keeps the rights with the original project.
 
Second, there are always 2(d) (likelihood of confusion) issues.  Mozilla, who you would think has attorneys on top of these things, had to change the names of two of its browsers.  Firefox early on was called Firebird and Mozilla’s Mac-only browser, Camino, was originally named Chimera, both changed due to trademark issues,  Also, look out for 2(e)(1) descriptiveness issues.  You will often see projects named something like FREEVIEW for an open source all-purpose image reader.
 
Lastly, there are dilution issues.  I think that is why we are seeing Red Hat’s sudden strict stance regarding use of its trademark. It protects Red Hat from poorly maintained and insecure distributions using the Red Hat name (and let’s face it, open source software’s claim to fame is its security (especially vis-a-vis Microsoft)).  However, it also permits Red Hat to funnel consumers towards its own distro.  If a consumer wants a Red Hat distro, how does the consumer know what he or she is getting if the company can’t say “Brand X, a Red Hat-based Linux distribution”? 
 
The GPL (General Public License) covers no activities other than copying, distribution and modification (see Paragraph 0 of GPL).  The stance that Red Hat has taken is interesting, as I see it, because it shows how trademark infringement and a copyright “right of attribution” can be at odds.  While I think it is clear that Brand X using the Red Hat trademarks all over its own advertising is infringement, I don’t know if that necessarily goes so far as to permit Red Hat to enjoin Brand X from stating that it is a “Red Hat based distro”.  Perhaps Red Hat lawyers will start negotiating with individual Red Hat-based vendors regarding the “right of attribution”.
 

 

The owners of the TABASCO sauce trademark have sued the owner’s of TABASCO’S MEXICAN RESTAURANT AND PATIO, a restaurant in Iowa, named after the state in Mexico.

History of TABASCO sauce here.

Information regarding visiting the Tabasco Plantation on Avery Island, Lousiana, here.

Information regarding visiting the Tabasco state in Mexico here.