Ireland has endorsed the Nice Treaty, opening the way for expansion of the EEC.  This raises the question, what to do about trademarks in the proposed new member countries (including eight Eastern European countries, as well as Cyprus and Malta) identical to existing Community Trademarks but having different owners.  The CTM sets out to be a uniform EEC-wide trademark – third party prior rights in a single EEC-member country will defeat a CTM trademark application.  What if, for example, a company owns a CTM for ACME for widgets and a different entity owns ACME for widgets in Malta.

Before you rush out now to file trademark applications in Malta, seeking to foil some famous mark’s CTM, bear in mind what I am told by my colleague Verena Bomhard of Lovells, who tells us that there will be coexistence, with marks filed in Malta for example, during a certain time prior to accession, being vulnerable for bad faith cancellation. It will be similar to the model – more or less – utilized during German reunification.

More on the CTM and OHIM (the CTM registry) here.

There is a long and tortuous history concerning the trademark for HAVANA CLUB rum.  There was a pre-Castro HAVANA CLUB rum and there is a present day Cuban HAVANA CLUB rum.

Bacardi (successor in interest to the pre-Castro rum) was influential in getting the U.S. to adopt legislation to ban importation of the Cuban version, which legislation was held by the WTO to be a violation of U.S. treaty obligations (background here and here).  Bacardi has litigated (up to the Supreme Court) for the right to sell its own Bahamanian-produced HAVANA CLUB.  There is an awful lot of material on the Web on this dispute –some more stuff here and a metasearch of the term HAVANA CLUB might be informative as well.

The U.S. PTO is handling proceedings regarding the disposition of the trademark applications and registrations of the respective parties (an extensive essay about the distinction between the right to use a trademark and the right to use register a trademark, the descretion of a federal court to decide these issues separately, and the complex role of the PTO as an expert agency to federal courts on these issues would be relevant here but beyond the scope of this blurb). 

 In September it was revealed that in June of this year, Bacardi had contributed $50,000 to Florida Governor Jeb Bush’s re-election campaign and that two weeks later he wrote a letter to the PTO Commissioner about the case.  Bush denied a link.

Under pressure, Gov. Bush has now provided details about his contacts with the PTO, which suggests that his communications may be characterized as petitions regardin the handling of a specific case.  The funniest line in the Post article quoted a Bacardi official as complaining that the Trademark Office was interfering in a trademark case. 

A starting point for evaluating Gov. Bush’s actions would be 37 CFR 10.14 regarding who may represent a party in a proceeding.  As a non-lawyer, Bush does not seem to fall under the enumerated list of indivduals.  Furthermore, given that 37 CFR 10.93(b), which governs ex parte communications with the Commissioner during an inter partes proceeding, refers only to “practitioners” as being allowed to make such contacts, Bacardi may have problems there as well.  We don’t know all the facts so we shouldn’t jump to any conclusions here.

Of course, when the President’s brother writes an angry letter to a presidential appointee, we can come to certain conclusions.

Given the importance of the Florida gubernatorial campagin, I don’t think we have heard the last of this matter. 

 However as we see time and time again, one thing is clear, parties who seek expert trademark representation without political fall-out should retain me.

INTA is informing its members that the United States Senate passed the advice and consent resolution for the Madrid Protocol, an International treaty allowing for easier filing of trademark applications in multiple jurisdictions.  The next step for the Protocol is the promulgation of rules by the USPTO.   In addition, the U.S. must deposit its instrument of accession with WIPO.  These and other steps are expected to take approximately one year to complete.  

The term ROOIBOS (pronounced “royboss”), meaning “red bush”, is a generic term for a type of tea indigenous to South Africa.  An American company registered the name as a trademark in the U.S. The National Law Journal Intellectual Property supplement this week has an interesting article on the dispute and the question of protection of foreign appellations of origin.

A reader forwarded me this item on Quaker Steak & Lube Restaurant.  The author must have had motor oil on the mind because the article contains the seemingly unprovoked quote:

“Quaker Steak & Lube says it doesn’t have problems with trademark infringement with the Pennzoil-Quaker State Co., manufacturer of Quaker State oil and parent company of Jiffy Lube oil change shops. Quaker Steak & Lube is a registered name.”

True, not only does it have a registration but the registration is 22 years old, meaning Quaker State lost the chance to cancel it on infringement grounds approximately a decade and a half ago (registrations achieve incontestable status after five years of continuous use – see section 15 of the Lanham Act).

Now, turning away from this specific fact pattern (so as to avoid nasty letters from lawyers for the involved parties), say that 15 years ago, there wasn’t a Federal Trademark Dilution Act so a famous mark owner couldn’t stop a non-infringing but none the less dilutive use.  What happened when the FTDA was passed in 1996 – was it retroactive?  Section 43(c) didn’t say explicitly one way or the other.  There were some domain name cases where the FTDA was applied retroactively but I think that those were result-oriented decisions where the Dilution Act was mangled in ordered to get at cyber-squatters.  In the case of 25 years of coexistence, barring compelling circumstances (i.e. the trademark owner was in a coma during that time),  it’s something it just has to live with.

Thanks to the blogger formerly known as Tuffy Stone for this.