Unlocking the Sky by Seth Shulman is the story of Glenn Curtiss, aviation pioneer, and his battles with the Wright Brothers.  The Wright Brothers had received a broad patent on wing stabilization for which they sought such a broad scope of protection that it was said if you jumped and flapped your arms, you infringed their patent.  This narrative does not portray the Wright Brothers in quite the same light as this history on the Curtiss Wright homepage (yes, the dispute was ultimately resolved by settlement).  Not to put too fine a point on it, the story about invention and the monetization of invention strikes home.

 Although the firm which drafted the original patent is not identified in the book, the patent firm of Fish and Neave takes credit for representing the Wright Brothers, to the extent that the Kitty Hawk plane is in Fish and Neave’s logo.

This blurb from today’s NY Times (online by subscription only):

“Certainly it’s hit Ralph Lauren, and I feel it’s hit Tommy
to an extent. Kate Spade is pulling back a little and
Calvin has pulled back the CK’s on a lot of things.” – Kal Ruttenstein of Bloomingdale’s, on the decline in designer logos.

The “decline in designer logos” discussed in the article refers more to the decreased use of logos themselves as design elements on the goods, and less to a cultural shift caused by rich people reading Naomi Klein’s No Logo.

This via Rick on re-branding Britain.

Coincidental to the blurb on Yakult below, I just learned of the Ninth Circuit’s recent case discussing fame, Thane v. Trek, in this case, the fame of the TREK mark used for mountain bikes.  To clarify my comments below, fame is and should be interpreted differently when determining whether there is infringement, or dilution, or whether there is an element of bad faith on the part of defendant.  In this case, where the court is asking whether defendant’s use dilutes plaintiff’s mark, it (properly in my view) adopts a high standard of fame, namely whether the name is known to general public.  Under this standard, a mark which commands 98% of a niche market will not be deemed to be famous.

Via NameProtect, an article from The Guardian re FIFA’s attempts to prevent “ambush marketing,” by which advertisers refer to events such as the World Cup, where the organizers of such events have sold “endorsement” rights.  In this case, VISA referred to the World Cup and in FIFA’s view, implied an endorsement by FIFA.

This article describes an injunction obtained by Yakult (the famous Japanese maker of a Yogurt drink and owner of the Yakult Swallows) received against a competitor named Yakudo.  The injunction applies to Hong Kong, which is a separate jursidction from the PRC (for now).  The article goes on to discuss the larger prize – China (where Yakudo appears to have canceled Yakult’s registrations based on non-sue).  Yakult’s dilemma touches on the thorniest question regarding the protection of famous marks – what does famous mean?  Specifically – famous to who and famous where?  Countries may use similar language in their trademark statutes in granting protection to famous trademarks, but their courts may define fame in a number of different ways such as famous in that country, or internationally famous, or famous to a relevant sub-set.  A typical fact pattern occurs where the local consumers are unaware of what has become successful in another country, but the local merchant group makes a business of knowing exactly that, and it has a vested interest in foreclosing foreign competition.  In that situation, a famous mark protection may serve more as an unfair competition statute.  However, if the country narrowly defines ‘famous’ as whether the mark is known only to the local consumer class, the foreclosure gambit can succeed.

Fred Mostert’s book, by the way, is the place to start when contemplating the protection of famous marks

China has stopped re-directing requests to Google although, according to this article from siliconvalley.com, China doesn’t acknowledge that it ever did in the fist place).

 I thought I was going to write about 9/11 today but that has turned out not to be the case.  This morning I received an email from a colleague with the subject “Al Fross.”  Al has had cancer for four years now, so I knew my colleague was writing to tell me Al had died.

 Simply put, Al Fross was the best trademark lawyer ever.  Don’t take my word for it, ask the clients he counseled at Hanna-Barbera, CalTex, Tiffany, Seagrams, the Muppets and others.  After Al had obtained for Tiffany a victory in the highest court in Singapore (and made new law doing so), Tiffany presented him with an engraved silver box reading “To the Tiffany of Trademark Lawyers.”

 When I had been at what was then Weiss Dawid (now Fross Zelnick) for about two weeks, I was given a big assignment from Al, involving  Inter-American trademark treaties, Central American trademark treaties, Pan American trademark treaties, and something called the Andean Pact, none of which I could keep straight.   But I gave it a shot and handed him a memo.  I sat on the other side of his oddly shaped desk while he read it.

 “You’re wrong” he shouted.  “But you’re wrong in a really interesting way, and that’s why I’m excited to be working with you.”

 That is how you encourage someone to stick with something.

I went on to train with him for ten years.  Every day produced something worth remembering forever, souvenirs from a career.  Most importantly, Al was a role model – he always took the high road.  His long successful career refutes any notion that ethical compromise is necessary to make it as a lawyer.

 Al Fross taught me everything I know about trademark law. There wasn’t enough time for him to teach me everything he knew.