This Week in Soft IP News

Sorry its been so long since an update, but here is this weeks top stories in Soft Intellectual Property

Rightfully so, “Against the Grain Gourmet Foods” asks a federal court to order “Against All Gain” to abandon all claims to the name. More reasons to hire a qualified attorney to help with marketing plans and brand protection. Full Story

Harper Lee sues museum in her hometown alleging Trademark infringement and cyber-squatting. How many lawsuits has the author filed this year? Full Story

Van Halen sues Ex-Wife for trademark infringement for using her own name on blankets, furniture, construction services and interior design. Full Story

Must SCOTUS give deference to the TTAB decisions in findings of Trademark Infringement? We may soon find out. Full story

Uhh, sorry no, you can’t trademark Obamacare. Nice try. Full Story

A giant finally dies, ISO Hunt shutting down operation and Gary Fung Settles for $110 million. Full Story

I guess offensive is still offensive, Portland band “The Slants” is denied trademark registration. Full Story

Advertisements

The Strength of a Trademark: The Importance of Being Unique

Oftentimes people ask me surprising things about trademarks, such as; hey, how the heck can Kim Kardashian and Kanye West trademark their baby’s name? Aside from being ridiculous the fashionable couple could not prevent others from giving their own baby the same name, not that normal people wish to name their baby “North”. This gave me the idea to write a series of posts about basic trademark concepts; the first addressing the categories of trademarks and their likelihood of registrerability.

Distinctive or Inherently Distinctive Marks

The strongest type of mark is known as a fanciful mark. This is a word that is not part of the English language, or any language for that matter, but was created solely for use in association with a good or service. This is a made up word that the company uses to identify itself or its products. The most well-known of these is KODAK®  and XEROX®. Fanciful trademarks are the most distinctive, and do not require secondary meaning to be registered with the USTPO or protected by common law trademark. That is, of course, as long as no one else has used it before you.

The next type of mark is an arbitrary mark. This is a word that is part of the English language but has no relation to the goods or services the company provides. Think of Delta® faucets; as an example. The word delta has no relation to faucets; it is just a letter from the Greek alphabet, a mathematical symbol, or a geographic formation at the end of a river. The arbitrary nature of the use is precisely why it makes the mark inherently distinctive and therefore registrable even without established secondary meaning.

Another type of distinctive mark is known as a suggestive trademark. These marks indicate the nature or characteristic of the good or service but do not actually describe what the good is or its purpose. This has always been a bit confusing to me and, I assume, to most people I explain it to. The best example was given by my trademarks professor. Orange Crush, as used to indicate the source of an orange flavored beverage. The mark does not describe the good itself but does describe a characteristic it has, orange flavor. Can you think of other examples?

Non-unique or In-distinctive Trademarks

This is the last category of trademarks and as you may have assumed, marks which are the weakest. These marks are either merely descriptive or have become generic though use of the mark in commerce. The latter is a dangerous situation for any trademark holder and the former tells me you should be more creative when marketing your products. Allow me to explain.

My uncle used to own a business called “Discount Window Blinds”. What do you think he sold? Well the name describes exactly what his business did and what it sold. The problem is descriptive trademarks cannot be easily protected by common law trademark and owner will have an extremely hard time getting the name registered with the USPTO. This is because it would stifle competition too much to disallow others from using the word discount, and windows blinds in commerce. The mark may be allowed registration if the mark has been used in commerce for over five years because it becomes distinctive through its extensive use in commerce. This concept is articulated 15 USC 1052(e)-(f).

The final category is generic marks. Generic trademarks, or perhaps I should just say words, are not ever protectable because everyone has a right to use such words to refer to these goods or services. Also, these are words which have become generic through their use by people over time. Did you know that Asprin used to be a name brand of headache medicine? Most people know it to generically refer to pain reliever instead of indicating a particular source of a good.  This happened because of its long term non-trademark use. Discount Window Blinds could arguably be considered generic unprotectable term as well. It is best to avoid the use of generic terms to refer to your business; so don’t name your buffet “Best Buffet” and don’t expect to get a trademark in the word “Beer” to sell beer.

Having a strong trademark is important for business and choosing one that is inherently distinctive and registerble is much better than using a non-distinctive mark. Make a plan, make sure no one else uses the mark on goods you intend to sell, and most importantly, it is a good idea to speak to an attorney when seeking trademark registration.

Raptorchef

Nothing in this article is meant to be legal advice and it is for informational purposes only. If you need legal assistance please contact a licensed attorney.

Top Trademark and Copyright Stories from Around the Web

Here are your Top IP Stories from around the web for the week of June 24, 2013

 

Brooks Brothers drops trademark lawsuit against small home-based business “Bubble’s by Brooks”. An incident of trademark bullying and local lawyers helping small business. Full Story.

U.S. District Judge Joan Ericksen reopens copyright cases after incidents of fraud revealed in the Copyright Pornography troll saga.  Full Story

Sweet battle in the trademark world as Wendy’s attacks United Dairy Farmers for use of “Frosty” trademark. Now I want a frosty. Full Story

Excellent article highlights the important of Trademark registration for small businesses and start-ups. Full Story

Trademark licensing issues are highlighted in Trademark dispute between Gibson Guitars and Viacom. Sponge Bob Ukulele looks remarkably like flying V Guitar. Full Story

Will.i.am sues Pharrell Williams’ for using “i am OTHER” claiming infringement for the use of “I AM” trademark. Since 2006 Will.i.am has owned the “I AM” mark. Full story

An examination of the effect of the DOMA ruling on copyright law; gay couples will now enjoy the full benefit of copyright statutory succession and renewal rights. Full Story

Artist Roger Dean seeks $50 million in damages against James Cameron and 20th Century Fox claiming the filmmaker infringed on his copyright by using his characters and art in the film “Avatar”. Full Story

Flea Market Operator vs. Coach Inc. Who do you think won?

In an endless and well justified quest to prevent others from selling knock off bags, Coach, Inc. won a giant settlement against a Flea Market Operator in Tennessee; not just any judgment but a judgment worth over five million USD. The case presented a novel issue for the Six Circuit Court of Appeals. Could an operator of a Flea Market be held liable for contributory trademark infringement when the vendors operating in the market sell counterfeit goods? The answer was a resounding “yes”.

The defendant in this case, Frederick Goodfellow, operates the Southwest Flea Market in Memphis. Goodfellow rented around seventy-five booths to vendors who sold various goods. During operation of the market Goodfellow had ultimate control over operation of the market as well as the power to decide who may sell goods in the market. Apparently several of these vendors made the fatal mistake of selling “Coach” bags, a fact which it appears Goodfellow was well aware.  It is quite obvious that he was aware because Coach sent a letter to Goodfellow notifying him of the sale of Counterfeit Coach products at the market. He received an additional letter from the District Attorney notifying him of the sale of the goods. As if these presumably strongly worded letters were not enough to put him on notice the police conducted two raids on the premises and seized the counterfeit goods. (According to the opinion the second raid involved around 150 law enforcement officers).

Adding to the facts mounting against him, it seems Goodfellow did not do much to rectify the problem. He posted a sign which clearly stated “counterfeit is prohibit”, sporadically distributed pamphlets to vendors, and met with vendors to discuss the problem. However, communication with the vendors was difficult due to language difficulties and the meetings were not well attended.

Coach Inc. moved for summary judgment and Goodfellow failed to respond; even in viewing the record in a light most favorable to him the court held Goodfellow liable for contributory trademark infringement.  When the question of damages was tried in front of a jury; Goodfellow suddenly had a judgment of $5,040,000 looming over his head as well as a permanent injunction and nearly $187,000 in fees and costs. Not fun for Goodfellow.

This is a pretty clear cut example of trademark infringement, as the court said “a party proves trademark infringement by showing (1) that it owns a trademark, (2) that the infringer used the mark in commerce without authorization, and (3) that the use of the alleged infringing trademark ‘is likely to cause confusion among the consumers regarding the origin of the goods offered by the parties.” Leelanau Wine Cellars, Ltd. V. Black & Red, Inc., 502 F.3d 504, 515 (6th Cir. 2007). Goodfellow defended that he could not be held liable for trademark infringement because he was not in a partnership relationship with the vendors, the vendors and Goodfellow did not have power to bind each other and they did not exercise joint ownership or control. The court of appeals agreed with this contention but pointed out that this was the standard required for vicarious liability; in this case the court found that Goodfellow was liable for contributory trademark infringement which is different than the former. The court explained that contributory infringement is where a “distributor intentionally induces another to infringe on a trademark, or if it continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement, [it] is contributorially responsible for any harm done as a result of that deceit. ” Inwood Laboratories Inc., v. Ives Laboratories Inc., 456 U.S. 844 (1982). This standard has been applied against flea market owners throughout several circuit courts but never in the sixth, that is, until last week.

Goodfellow knew of the activity but continued to allow the counterfeit goods to be sold at this market. While Goodfellow will likely appeal I don’t see any way he could win. People are not allowed to freely sell counterfeit goods and it is obvious owners of strong marks will police their brands with the ruthlessness of the Galactic Empire. It is a good idea for any flea market operator to take note of this case. Pay attention to what is being sold in your market if there are third party vendors present, when one of the biggest names in the fashion industry sends you a letter advising you of infringing activity; heed the warning, and be more diligent about informing vendors what they may and may not sell in your market. For the full opinion check here: Goodfellow v Coach.

This article is a case review and my opinion only and is not intended in any way to be legal advice. If you need legal advice please contract an attorney.

Soft IP News for Week of April 29th

Another example of trademark bullying, Washington D.C. restaurant “Rogue 24” is being sued by Oregon Brewing Co., one of the country’s largest breweries, for trademark infringement, trademark counterfeiting, and cybersquatting. Full Story

The maker of Sam Adams Beer files Trademark for “Boston Strong” beer. All profits from the Boston Strong beer will be donated to Boston bombing related charities. Furthermore, the company said that if the trademark application is successful it will allow others to use the mark if profits are donated to charities. Full Story

I’ve never heard of this, the government seeks to seize control as biker gang’s trademark using its asset forfeiture power. The government claims the gang is responsible for crimes ranging from selling iPods to murder. Full story

Craigslist had its copyright claims thrown out after it attempts to sue third party for indexing its material. Craigslist claimed copyright in user’s posts; judge disagreed. Full Story

Warner Brothers, copyright enforcement GURU and supporter of SOPA, has come into its own bit of infringing troubles. The media giant is being used for the use of cat memes “Nyan Cat” and Keyboard Cat. Full Story

Eminent author Harper Lee sues former agent of breach of fiduciary duty for failing for properly protect the copyright of “To Kill a Mocking Bird”. Full Story

Facebook and Timelines Inc. settle dispute before any quality time is spent in court. Facebook was sued by the company of its use of “Timeline” on the social networking site. Full Story

Ukraine gets a bad grade from the U.S. Trade Representative’s office for failing to protect copyrights. This mark on the Ukraine can lead to serious consequences in international trading with the country. Full Story.

Wholesale retailer “Costco” and fine jeweler “Tiffany & Co.” square off in court. It seems Costco has been selling “Tiffany” Jewelry in its stores which are not actually authentic. Costco claim the Tiffany name has become generic term for “a mount common on engagement rings”. Good luck with that, Costco. Full Story

Raptorchef’s Weekly Soft IP Round-up. Week of April 8, 2013

This week was quite slow in Soft-IP related news. Below find links to this week’s most interesting stories on Soft IP Law.

Should your company in South Korea be worried about the tense situation with North Korea? A great post by Sean Hayes at the Korean Law blog.  Full Story

In a move to streamline international trademark registration, India joins he Madrid Protocol. This will enable rights holders in India to obtain cost effective registration. The treaty will be effective in India on July 8, 2013. Full Story

In a short news week this story seems to have dominated any Trademark related news.  Texas restaurant chain Trademarks the term “Breastaurant” used in relation to food ordered with a “scenic” view. Full Story

USTPO apologizes to Apple and determines its initial refusal of a trademark for “IPAD Mini” was premature. The trademark examiner has decided to allow the mini mark as long as Apple disclaims the right to use the word mini. Full Story

Fifty Shades of Grey and a grey area of Copyright law. Movie studio asserts material for movie adaptation is in the public domain because most of the content of the book was user submitted fan-fiction. Full Story

As always, China Law Blog has good advice on protecting your Trademarks in the dynamic market. Counterfeit goods and working in China. Full Story

As Maria Pallante testifies for comprehensive changes to the copyright law the need for protection and the purpose of copyright remains the same. Protection encourages creativity and new work. Full Story

A new study shows that having a Trademark attorney greatly increases the chances your trademark will be approved. Full Story

Last Week’s IP roundup:

Prenda Lawyers continue to have problems as Judge Otis Wright attempts to have them explain their actions, but Prenda lawyers plead the Fifth. John Steele is said to have sued from than 20,000 people and made millions from pornography copyright lawsuits. Full Story

ISOhunt’s founder, Gary Fung, demands a jury trial after the Motion Picture Industry of America automatically wins a case on the merits in the 9th Circuit Court of Appeals. ISOhunt is a popular torrent site; Fung faces up to $150,000 per infringement. Fung claims liability will chill free speech and ruling is a miscarriage of justice. Full Story

Microsoft and Fox agree to share the “Killer Instinct” Trademark as long as they promise not to move into each other’s territory in using the mark. Microsoft is the owner of the Killer Instinct mark as used on video games; Fox registered a mark for a TV show under the same name. Full Story

As we see more retro car designs entering the market, Chevrolet applies for a trademark on Chevelle sparking questions of whether the automaker plans to remake its classic muscle car. Full Story

More IP problems for Facebook as it faces a Trademark battle for use of “Timeline”. As it turns out, another social media company used the same name on a website which catalogs a user’s history of events as posted on social media. Timelines.com registered their mark in 2010, Judge rejects facebook’s claim that is term is too generic as facebook has claimed use of “like” is not generic. Full Story

DC claims copyright in its Official Code, public domain advocates deliver special package to ThinkProgress. Currently there is no way to digitally download the code unless a person has a subscription to Lexisnexus. Full Story

Why are CD and tapes are better than digital copies? First Sale Doctrine takes a hit as a Judge rules that reselling digital copies is Copyright Infringement. Full Story