Via the Seattle Times, a Spokane law firm is attempting to put together a class action against Bonzi Software, maker of software which, allegedly, creates “fake user interface dialog” boxes.  The lead plaintiff is a partner in the firm, who became upset when he lost control of his computer to one of those “mouse-trapped” fake boxes.

The NY Merchantile Exchange sued an alternate exchange on the grounds that its use of NYMEX settlement prices violated its copyright (background here).  The lovely and talented Copyfight pointed me to this law.com article on the  case.  If any of you out there are, represent, live with or just plain know arbitrageurs (traders who make trades based on the difference in price of the same goods in different markets), ask them how they will make a living if it turns out that the prices in one market can be copyrighted.

The string of UDRP cases regarding re-sellers (such as the WEBER Grill case) has long been troubling. to me.  I understand how a distributor of authorized ACME products may not be cyber-squatting if they point the name to a page selling ACME products (even though the such use might still be infringing, because, in my view, the use of ACME.COM suggests a level of endorsement by the owner of the ACME tradmark that may not exist).  However, the reasoning of some of the re-seller cases might, for example, allow the owner of a convenience store,  to register doman names reflecting any of the 1000 or so brand-names it carries, provided it points the name to a page promoting that product.  I personally think there should be some privitiy of contract between the distributor and the complainant, for the “bona fide offering of goods” defense to take hold.  I also think brand owners should put language in their invoices and license agreements barring their distributors from obtaining certain domain names.

Now in a UDRP case involving BOSTITCH.COM, complainant successfuly showed that the distributor was using the domian name to place itself in a superior position ot other authorized distributors of BOSTITCH products.  Accordignly, its regsitration of the domain name was not in good faith and its offering of goods was not bona fide.  Thank you to UDRPLAW.NET for this one.

FatWallet has announced a partial victory in its tussle with Wal-Mart over FatWallet’s dissemination of Wal-Mart’s post-Thanksgiving prices (background here and here. 

 I hope that some of the parties will make public some of the papers in this case, specifically those which shed light on Wal-Mart’s theory that the prices in the circular were protecatble under copyright.  I appreciate how the prices in a circular before it is released to the public might be deemed to be trade secrets; I do not readily see the basis for copyright protection in a fact such as “Wal-Mart will sell a Vornado heat fan for $49 on Friday”, nor in a listing of such facts which doesn’t copy any particular unique way Wal-Mart might have had in compiling such information.  I therefore encourage the parties to make public the rationale of the copyright argument – right now all we have from this case is a chilling effect.

As previously mentioned, CBS, owner of rights in The Survivor TV show, is suing ABC and Granada TV, which intend to broadcast a show entitled “I’m A Celebrity, Get Me Out of Here.”  Here, via Amlaw, is the Complaint.  Of interest is the cause of action alleging that the show has a famous trade dress, which defendant’s show is diluting.

This Orlando Biz Journal article is getting a lot of linkage for its coverage a lawsuit brought against ICANN barring it from utilizing “sunrise” provisions – means by which holders of registered trademarks could register.info domain names corresponding to those trademarks, before the rank and file could get their hands on those names.

You have to get past the provocative headline “Should Trademarks Rule The Web” and wade through the entire article before you get to the last paragraph where plaintiff admits that he submitted a fabricated sunrise application and is bummed because .info took his names away.

This guy appears to be approaching the Table of Equity with Unclean Hands.

A business owner wrote a small business advisor in the Sacramento Bee:

As a new home-based business owner, I would like to find out more about searching and registering a trademark for my new Web service. I plan to sell ethnic food over the Internet and want to ensure my brand as well as avoid infringement on others. Should I work with a law firm or perform a trademark search on my own using the the U.S. Trademark and Patent Online service? What kind of costs would I incur using either vehicle?

The advisor, Alice Jacobs replied in part:

. . . you may find it easier and safer in terms of avoiding legal troubles down the road to shell out the money to pay an attorney who does this type of work on a daily basis and knows the ins and outs of trademark and patent searches and registration.

I’ve edited out any hedging on her part, but you can read her entire response here.  A comprehensive Google search could not reveal any responsble businessperson urging that trademark counsel not be used (dry humor indicator on).

I want to emphasize and expand on several points she made. 

First, it wasn’t clear from the column that searching the U.S. Trademark Registry is insufficent for clearing a mark, simply because of common law rights – mere use of a trademark creates protectable rights. 

Second, while it’s great that deadhit searching is as freely available as it is, it is not a reliable tool for clearing a trademark for availability, because:

 (1) the underlying databases can be incomplete;

 (2) it is difficult to manually search all confusingly similar marks (N-R-G, ENERGIEE and ZENERGY may all be confusingly similar to ENERGY); and

(3) only the outside search firms presently have the databases sufficient to conduct a comprehensive common law search.  Google is not enough.

 

As to filing trademarks, a trademark application is a document filed in order to perfect legal rights.  It is conceivable that a layperson could locate free legal advice online or elsewhere, but in any event, legal advice is required to maximize those rights.  In worst case scenarios, I have seen laypeople simply lose rights through avoidable mistakes.

As to costs, the outside search firms such as NameProtect and T and T, charge several hundred dollars for a full search.  I have seen website-based search firms essentially re-sell Dogpile as a common law search.  Small obscure usages can come back to haunt you.  Amazon had a lawsuit when a tiny bookstore named Amazon came out of the woodwork.  Comprehensiveness of the common law search is worth the money.

As to evaluation of the search, I evaluate searches so of course I think they’re essential.  The person who reviews a search must perform a small likelihood of confusion test for each ‘hit’ in the search.  Trademark lawyers are trained to perform likelihood of confusion tests.  Some lawyers charge by the hour for this, some bundle the analysis with the search.  The large NY firms will charge several hundred dollars for the evaluation.  I cap my opinion letters at $300.  The trademarkguru.biz (who bought a sponsored link which shows up when you search for Trademark Blog on Google) charges $350).

As to filing, the large trademark firms (like my old Mother Firm), tend to charge approximately $600 as a standard fee, with additional charges for additional classes.  Sometimes there are multiple filing discounts.  Litman Law (who also have a sponsored link for a Trademark Blog Google search) appear to charge approximately $600.  Some of the online trademark firms appear to charge less.  I charge $395, with no additional charges for up to two additional classes.

Bear in mind that standard fees usually cover only what is referred to as “routine prosecution.”  One application may sail through the PTO while another might require hours and hours of argumentation.  I have only seen firms agree to let set fees cover extensive responses to office actions when the client gives the firm sufficient work so that it all evens out.

I would be happy to answer more questions on this topic.  Email me at marty@schwimmerlegal.com.