splenda

Dunkin Donuts no longer carries SPLENDA-brand Sucralose, but carries a “Chinese” sucralose, also in yellow packets (imprinted with the DUNKIN DONUTS logo). Allegedly, customers were told that the sweetener in yellow packets was Splenda. When a customer asks for SPLENDA in their coffee, is that a ‘sale’ or is this alleged ‘post-sale confusion’?

According to legend, sucralose was discovered when a lab researcher ingested it by accident (para 14).

Note use of SPLENDA on this page from Dunkin’s site.

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Hyundai sues non-US companies importing Hyundai-brand parts, alleging that the parts are materially different from parts intended for the US market due to physical differences and warranty differences. Physical differences are discussed in paragraphs 25 and 36 to 42. Warranty differences are discussed in paras 32, 33,44 and 45.

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AVELA, which specializes in merchandising public domain imagery, obtained publicity stills and the like, from classic movies such as ‘Gone With The Wind’ and ‘The Wizard of Oz.’ These materials were published without copyright notice, which, under the old Copyright Act of 1909, would strip those materials of protection (while the underlying works such as the movies, would remain protected). AVELA argued that these materials allowed them to merchandise depictions of the materials on any product. The 8th Circuit had previously rejected this argument.

Hollywood Reporter coverage here.

Law360 Coverage.

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sexy tm attorneyTrademark-Paralegal--Job-Title-Navy-Blue-frontIts-A-SIEMENS-thing-you-wouldnt-understand-welch thing

Here’s an interesting fact pattern. SunFrog.com is a custom t-shirt shop. You enter terms and the term is displayed on common designs. These designs are apparently created by the SubnFrog community of artists. I played with a bunch of search terms and it appears that a determination is made as to what category a particular term belongs to (profession, team name, first names, surnames) so that the customization makes grammatical and/or semantic sense (for so different terms generate possible designs. Examples above.

SunFrog has provided a guide to trademark and copyright for its users here.

Siemens has now sued SunFrog (see example above of shirt generated by using SIEMENS as a search term).

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jaco pastorius

Jaco Pastorius was a bassist for, among others, Weather Report (‘Birdland’ was their biggest hit). He died way too soon at the age of 36. His rights holding company is one of the named plaintiffs in this copyright class action against Spotify. The Central District of California grants Spotiy’s motion to transfer venue to the SDNY.

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wtr managing lifecycle 2016

I will be attending World Trademark Review’s conference on “Managing the Trademark Asset Lifecycle” in New York, on Thursday October 20, 2016.

The program covers:

– Brand and trademark audits;
– Brand valuation;
– Collateralization of brands;
– Financial and tax considerations of trademarks;
– Monetization (i.e. licensing);
– ‘Exit strategies’ (i.e. what to do with residual goodwill)

The full program is here.

The speakers are, on the whole, in-house counsel for some of the most valuable properties in the world. The full speaker list is here.

WTR reached out to me and I will be wearing my ‘working-blogger’ hat and attending and live-tweeting the conference, at WTR’s invitation.

Hope to see you there.

TLS is the registry behind the .FEEDBACK top level domain.

The CEO of TS has stated that .FEEDBACK is UDRP-proof, because, as I understand the claim, criticism is a good faith use under the second prong of the UDRP.

The CEO backed up that claim by promising that TLS will pay up to $5k in lawyers fees to defend against UDRPs.

Additionally, the CEO of TLS had previously stated:

“No trademark infringement will occur though, the sites are all geared towards free speech and giving reviews. Confusing the public that the brand is running the site will not happen, each site has a disclaimer and makes it clear the brand is not running the site.”

Two observations on the trademark infringement point. TLS itself registered FOX.FEEDBACK as a demonstration. There is a disclaimer in mousetype. (1) If you Google ‘Fox feedback’ as a search term then the first hit looks like this:

FOX feedback
www.fox.feedback/
The Fox Broadcasting Company, is an American commercial broadcast television network that is owned by the Fox Entertainment Group division of 21st Century …

So people searching on Google could think that this is official.

(2) Also, the six most recent reviews, as of today, are all addressed directly to Fox (as in, “Geraldo Rivera is a cancer on your show”).

So the users erroneously think that Fox maintains the site.

As for being UDRP-proof:

A recent UDRP decision, written by friend of the blog, Warwick Rothnie, granted a complaint bought by DeBeers, which established that DEBEERS.FEEDBACK had been registered in bad faith. The website appeared to have had no original content, but had copied existing reviews from Yelp after receiving a demand letter from DeBeers.

The CEO of TLS has now tempered his ‘UDRP-proof’ remark, indicating that the use of a proxy service appears to have been a material fact in the result.

One thought occurs: .FEEDBACK is semantically different from, for example, .SUCKS or .REVIEWS or .CHAT in communicating a relationship to a source, in that the .SUCKS element in MICROSOFT.SUCKS would appear to suggest the opposite of origin (why would Microsoft sponsor such a site?) and .REVIEWS and .CHAT would be, for the most part, neutral in that regard.

In contrast, however, generally speaking, because you communicate feedback to the source, there is a greater likelihood that a .FEEDBACK TLD will be associated with the trademark owner. I think that’s what the ‘back’ in ‘feedback’ means.

This TLD can be used lawfully in many, if not most instances, especially if the unofficial nature of the site is PROMINENT SO THAT YOU CAN’T MISS IT.

But the .FEEDBACK TLD is not UDRP-proof and not trademark infringement-proof.