Time for Friday’s Soft IP round up. Here are the top Copyright and Trademark stories from this week. Unfortunately, I was out of town this week and could not make regular posts.  Enjoy!

Gumpy Cat files for Trademark with USPTO, doesn’t like it

USPTO Eliminates Medical Marijuana from TM Categories

Mexican Supreme Court rules against Apple in iFone Trademark Case

Fight to defend Sherlock’s presence in the public domain

Library of Congress fights to preserve achieves of protected music

Copyright lawyers face sanctions for pornography cases

Meltwater’s use of AP news clippings is not fair use

Ninth Circuit reaffirms decision, isohunt induced users to illegally download movies and TV shows

-Raptorchef

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New gTLDs and what it means for Trademark Holders

After the approval of new gTLDs (generic top level domains) by ICANN, several issues are likely to arise for trademark holders, however, with the introduction of the new domains ICANN, created a protection mechanism to address these concerns.

First things first, most people don’t know gTLD means, I will try my best to explain

What is a gTLD?

gTLD is short for generic Top Level Domain. This is something nearly everyone sees every day. It is the suffix at the end of internet addresses such as .com .gov .org. According to ICCAN, the Internet Corporation for Assigned Names and Numbers, there are about two dozen gTLDs in use at this time. As the organization responsible for the coordination of the internet system of identifiers it has moved for the creation for additional gTLD domains in order to expand the digital universe and foster competition. In 2008 ICANN started working towards a new gTLD naming policy which could result in the creation of hundreds of new TLDs such as .eng for England, .med for medical organizations, and .nyc for New York City.

Trademark holders often objected to this due to the fear their mark could be easily infringed by those registering its protected marks under a new domain with a new suffix for example; someone attempting to register pepsi.eng or pepsi.nyc

How are trademark holders protected with the expansion of gTLDs?

To address the concerns of trademark holders ICANN established the Trademark Clearing House (TMCH). The TMCH functions as a database of registered trademarks which will provide support to trademark claims. Trademark holders can register their mark in this database for a fee. In order to register and qualify for a new gTLD the trademark holder must be able to prove actual use of a trademark. Additionally, the TMCH will provide a “Sunrise” service which gives rights holders an opportunity to request a domain name before the domains are available to the public. When a new gTLD becomes available the “sunrise” period begins and registered TM holders will be able to decide if they wish to register under the new TLD, the sunrise period lasts at least 30 days. Therefore, a third party could not simply register a well- known mark under a new gTLD in an attempt to usurp the holder’s good name or attempt to sell the domain to the holder, at least, not without the holder first having an opportunity to use that domain.

Perhaps the greatest benefit to registration is that the TMCH will automatically notify a party attempting to register a new domain name if the name matches one already in the database. For example, if a party attempts to register raptorchef.nyc it would automatically notify the registrant of the existence of raptorchef.com. Furthermore, it notifies the trademark holders when domain names are registered which matches their registered mark. Therefore, the claim service seeks to notify the registrant and the trademark holder of possible infringing uses.

The fees for this service are $150 USD for one year, $435 USD for 3 years, and $725 USD for 5 years, which does not seem like much if a holder is truly concerned about the misuse of his or her mark.

It seems the new gTLDs have created quite a stir as lots of companies have already applied for use of the new domains, you can see the applicant list here. The Trademark clearing house will be open to registration on March 26, 2013.

“Tebowing” Trademarked but it’s not what you think

If you haven’t heard, several news reports have stated that Tim Tebow has been granted a Trademark in “Tebowing”.    You can read the news here. Being a recent law school graduate with no job I had some extra time to do some research on this supposed trademark on his prayer pose done during his sporting appearances. If you don’t know what “Tebowing” is you can see it here.

A simple search of the USPTO trademark database reveals that “Tebowing” has be published for opposition in the official Trademark Gazette.  The Gazette simply shows that “THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PARTICULAR FONT, STYLE, SIZE, OR COLOR.” (Sorry, I wasn’t shouting, that is really how it appears in the Gazette). It’s registered for use on everything from hats, clothing, and posters to sporting goods, DVDs, and school supplies.  Every entry in the Trademark database says the Mark/Drawing type is #4; which is a simple standard character mark.

I saw no place in the description which states the act of “Tebowing” was somehow granted trademark protection by the USPTO.  So no need to get in a tiff that Mr. Tebow owns a prayer pose.  He does, or rather his company, XV enterprises, own the right to use the word “Tebowing” on the vast array of products listed in the classes of goods in his trademark.

Therefore, feel free to “Tebow” away; Tebow before breakfast, Tebow at work, Tebow in traffic, or even in the line at the coffee shop. However you Tebow, I wouldn’t recommend using it to sell DVDs and T-Shirts.

Although, this brings up an interesting thought: Could Tim Tebow get a Trademark in the motion of the “Tebowing” prayer pose? Would the motion of Tebowing be a non-traditional mark?

Raptorchef

Protecting Sound Trademarks in Korea

The United States and South Korea recently signed a bilateral free trade agreement which opens many doors between the two countries.  The major components went into effect on March 15, 2012.[1] The agreement was in the works for nearly five years before it was fully ratified.[2] The United States touts the Korea-USA Free Trade Agreement is the “most commercially significant free trade agreement in almost two decades.”[3] According to the United States Office of the Trade Representative the FTA’s of trade tariffs alone will add nearly $10 to $12 billion to the Annual Gross Domestic Product and nearly $10 billion in new exports to Korea.[4]

Interestingly, the United States required Korea to accept sound and scent marks into its trademark law as part of the FTA.  It is interesting that the United States requires its trading members to assent to these sorts of innocuous terms when they do not play a large role in United States’ trademark jurisprudence.  However, companies in the United Sates that wish to protect its sound marks abroad may want to take the time to register their sound marks in Korea as its Trademark law is governed by a first-to-file system.  Don’t think it’s a good idea?  Well, Korean companies do and so should you.

After researching the Korean Intellectual Property Rights Information Service, KIPRIS, this author found that several applications have been filed by Korean companies.  According to recent news the applications for sound trademarks are increasing since the FTA allowed registrations of these marks, however, there have been no applications for scent marks.[5]  It is expected that the first Korean sound trademark will be approved by fall 2013.[6] According to KIPO there have been a total of sixty sound applications since March 15, 2012.  Most of these applications have been filed by large companies in Korea. Forty-seven have been filed by LG, 4 by SK-Hynix, and one by Daesang.[7]  This data has been confirmed after a careful research of KIPRIS.[8] The companies are working to register the famous and highly recognizable sound marks used in their advertising. LG’s “띠러러러 00” which translates into “Ddri ri  ri ri 00″ and SK’s띵띵 띠리띵 “Dding Dding Ddi ri Dding” have been applied for by their respective companies. As this author has spent a great amount of time in Seoul, he can say that you cannot go far without hearing these jingles.[9]  Clearly from these applications there is an interest for Korean companies to protect their sound marks, however, it remains to be seen if theses will be granted, and what if any objection KIPO might have to these applications. Sixty applications in just six months from adopting sound marks shows Korean companies find value in these marks and will work to protect them.


[1] Office of United States Trade Representative on KOR-USA FTA http://www.ustr.gov/trade-agreements/free-trade-agreements/korus-fta/

[2] Id

[3] Id

[4] Id

[5] Seoul Newspaper, 서울신문, (translated from Korean by Soo Jung Kim 김수정

http://www.seoul.co.kr/news/newsView.php?id=20120508010011

[6] Id

[7] Id.

[8] To search KIPRIS visit http://eng.kipris.or.kr/eng/main/main_eng.jsp there is an english service available which can be helpful for searching the database.

[9] If you’re feeling inclined you may search for each other these application in the KIPRIS database. For LG’s sounds search for Application numbers 4020120017884-40220120017890 for SK-Hynix search for application number 4129129911184, 4120120011037, and 4129129911183.  For Daesang famous jingle for organic food check 4520120001311 see http://detseng.kipris.or.kr/ndetsen/loin1000a.do?method=loginTM&searchType=A for database

MySpace: 1 Apple: 0; a Victory for Registered Rights.

Apple recently suffered a loss in its seemingly unending series of legal actions. The TTAB denied Apple registration of its icon used on its mobile devices to access a user’s music collection.  The goods which the mark identifies are described by Apple as “[c]omputer software for use in reviewing, storing, organizing, and playing pre-recorded audio content, sold as a feature of handheld mobile digital electronic devices comprised of digital audio and video players, handheld computers, personal digital assistants, and electronic personal organizers, in International Class 9.

The Trademark Examiner denied registration based on section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), stating that Apple’s mark is likely to cause confusion with a mark already registered with the United State Patent and Trademark Office.  The mark in question is registered to the current owner of “myspace” which I thought died years ago long with my dial up connection and N’Sync’s popularity. The USPTO granted the trademark to the registrant, ilike inc, in August 2008.  ilike describes its mark as services “providing temporary use of nondownloadable software for adding music and video profiles on the internet, for listening toMP3’s and for sharing MP3’s and music playlists with others”.

 Registered Mark  Applicant’s Mark

 While it is clear from a side by side comparison that these two marks look very similar this action provides an excellent example of how the TTAB compares marks and determines whether there is a likelihood of confusion between the marks.  Also, it gives us hope that just because you are a large company like Apple you cannot simply be granted a trademark because your use is superior and more recognizable than a registered mark, even if that other mark has fell into the depths of internet obscurity.

Without further ado here are the common factors trademark examiners and TTAB judges will consider in determining a likelihood of confusion. These factors are taken from In Re E. I. du Pont De Nemours & Co., 476 F. 2d 1357.

  • The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression and the strength of the registered mark.

In applying this factor no one element is determinative in finding there is a likelihood of confusion but at times one factor may prove critical.  In this case it was not whether an average person could easily point out the differences between these marks when subjected to a side by side comparison, but rather if they are similar in terms of commercial impressions that source confusion is likely to result.  The TTAB determined here, that the marks leave a general impression in the average consumer and therefore may cause confusion between the marks.

  • The similarity or dissimilarity and nature of the products and services described in the application and registration

This factor is rather straightforward and requires little explanation. The TTAB determined that regardless of the fact that Apple’s mark allows a user to process audio content is too similar to the registrant’s mark that provides access to non-downloadable music content.

  • The similarity or dissimilarity of likely-to-continue trade channels and classes of consumers

Important to this factor is whether consumers will come in contact with the mark under the same circumstances as the registered mark (think time, place, manner). For example, are they going to go the store and see them on the shelf together?  Are the products even sold in the same retail outlets? The TTAB determined that the same consumers, people listening to digital audio, we likely to encounter both marks and therefore give rise to confusion between the marks.

  • Conditions of sale (degree of consumer care)

 This factor is concerned with the level of care and sophistication the consumers of relevant products use in making purchasing decisions. I.e. do consumers carefully consider their options when making a decision to use these products or are purchases made more on impulse? Here, Apple claimed that users of registrants mark and applicant’s mark are sophisticated.  The TTAB disagreed and said there is not a high level of care by the consumers who encounter either the registrants or the applicants; therefore, the factor did not weigh in Apple’s favor.

  • Nature and extent of any actual confusion

 While providing proof that there has been no actual confusion between the marks in the time they were concurrently used is important, the proof must show that there has been a significant amount of time the marks were concurrently used.  In this case the TTAB said that a significant period of time has not passed and therefore Apple’s argument of an absence of actual confusion is no strong enough to overcome the other factors mentioned by the TTAB.

Jeah Bro!

Olympic swimmer Ryan Lochte has taken steps to capitalize on his fame and broific catch-phrase, “Jeah”. If you are mystified by the meaning of the word, fear not, as you can see Mr. Lochte giving examples of its diverse use in a revealing youtube video. However it is used, Mr. Lochte sees value in it and has applied for a trademark for the use of “Jeah” with the United States Patent and Trademark Office.  According to the trademark application Lochte plans to use the phrase on several pieces of merchandise such as sunglasses, workout DVDs, trading cards, as well as clothing.  In all, there are five classes of goods on which the trademark will be used. There is one problem, shortly after Lochte’s application; another company filed an application for the use of “Jeah” for the same class of goods.

The applicant, Jeah Communications LLC, claims the first use of “Jeah” as early as April 1999. The USTPO granted the applicant a trademark in “Jeah” for use in “[h]osting the web sites of others on a computer server for a global computer network”.  Jeah Communication’s first application does not indicate they used the mark on clothing or other articles which fall under international class 25, but its more recent application, filed twenty days after Lochte’s application, requests it be granted rights to use “Jeah” under class 25. An examination of the applicant’s homepage, Jeah.biz provides a link to a Café Press store with its mark splattered all over random goods, from underpants to coffee mugs.

These two will inevitability will clash over the use of the mark “Jeah”. While it is obvious from the USTPO record that Jeah Communications has used the mark in connection with their web hosting service for over ten years it is much less obvious how long they have used the mark under class 25.  Without prior use on clothing and related articles and proof of that prior use my thinking is that Lochte will be able to bro out and use the mark as he requested in his trademark application.  Either way, it will be several months before we know how this will play out in the eyes of the USPTO.

If you can’t live without your Ryan Lochte “Jeah” merchandise you can buy some sweet sunglasses on his homepage.

Raptorchef