Wrong skillset for trademark registration

John Welch reports, at the TTABlog, about what you’d think would be a no-brainer:

The Board affirmed a refusal to register the configuration shown below, for “electric skillets,” finding that Preston’s proof of acquired distinctiveness under Section 2(f) was inadequate. In re National Presto Industries, Inc., Serial No. 85883551 (April 19, 2016) [not precedential].

The mark comprises the curved handles of the skillet, not the metal base or the glass lid or the knob (which are shown all in dashed lines).

Of course, under Wal-Mart, product configurations cannot be inherently distinctive, so Presto resorted to Section 2(f), relying on its use of the “mark” since 2005, sales of more than $65 million, more that $5 million in advertising expenditures, and distribution of some 80,000 product catalogs.

The Board observed that sales figures showing commercial success of the product are not probative of purchaser recognition of the product’s configuration as a source indicator. The critical question is whether the product design is being used and advertised in such a way that consumers “associate the product design with a particular applicant, and therefore view the product as emanating from a single source.” So-called “look-for” advertising may be particularly probative.

This is not a surprising outcome, even a little tiny bit.

But maybe I take too much for granted! Read More…

Will New York State Go With (the) Flo (& Eddie)?

More of a Grass Roots fan.

More of a Grass Roots fan.

Every once in a great while comes along an intellectual property law decision so significant that blawgers fall over themselves and each other in the scramble to write something pithy about it. The April 13, 2016, decision from the Second Circuit in Flo & Eddie, Inc. v. Sirius XM Radio, Inc. is not such a case. Rather, it is a decision worth writing about because of the handful of opportunities it presents to make puns involving song titles and lyrics.

That’s not to say that the decision isn’t important on its own merits. Indeed, as the brief opinion begins, “This case presents a significant and unresolved issue of New York copyright law.” On the other hand, the issue is not resolved by the decision. Because it is that important! You’ll see.

The plaintiff-appellee is a California corporation that “asserts that it owns the recordings of ‘The Turtles,’ a well-known rock band with a string of hits in the 1960s.” The California corporation is “controlled by two of the band’s founding members, [and] acquired the rights to The Turtles’ recordings in 1971 and continues to market the recordings in a variety of ways, including by licensing the rights….” Let’s unpack this before we go any further. Read More…

“Liberals Against the First Amendment”

Originally posted 2009-04-19 11:33:36. Republished by Blog Post Promoter

Marco Randazza again, this time on naked state-backed censorship at the University of Massachusetts:

university-of-massachusetts-amherst-4f736c5dThe UMass conservative organization, the Silent Majority, publishes a newspaper called “The Minuteman.” The most recent issue of The Minuteman exposed some financial irresponsibility in another student organization, Bridges (an organization that is supposed to spend its funds to tutor minority students), and mocked the organization and its director. The Expose appears on the first page of this document. . . .

The Bridges crew wasn’t too pleased about this, so they engaged in a pretty time-honored UMass tradition: They stole all of the copies of the newspaper that they didn’t want others to read. The UMass student government association responded by calling for the conservative group’s funding to be cut unless they purchased an advertisement in the campus’ main newspaper, The Collegian, apologizing for the above statements. (source)

Despite the fact that the measure violated the First Amendment in two different ways, it still passed. The resolution passed, and when a student senator attempted to introduce his own measure repealing the clearly unconstitutional measure, he was escorted from the senate floor by campus police.

No decency, no shame, not even a hint of self-awareness.  Says the very liberal Professor Randazza:  “Any ‘liberal’ who doesn’t stand up for the Minuteman has no right to complain the next time it is liberal-valued free speech under attack.”

Huh?  What’s a “right”?

Comments to EFF: Sod Off

Originally posted 2005-01-18 20:54:00. Republished by Blog Post Promoter

This is an update on my earlier item about the EFF’s ACLU-like position in the Apple / PowerPage lawsuit. Apparently everyone (all five of ’em) who was motivated to comment on the EFF’s position in this matter (which I will paraphrase as “other peoples’ information wants to be free once someone violates their duty of confidentiality and blabs it”) agrees with Likelihood of Confusion. As we all know, rectitude is solely a function of who wins the vote, so you have to like this trend.

How would EFF climb down from this one? And assuming they don’t, how would it ever enforce any non-disclosure agreements it may have with its own employees, contractors and others?

Louisiana’s lawyers’ guild

Originally posted 2014-08-07 16:31:46. Republished by Blog Post Promoter

Hudson County Superior CourtLast year we screamed and shouted along with a bunch of other people and prevented New York from passing “ethics” rules that would have essentially shut down New York lawyers’ blogs by regulating them out of existence.  Unfortunately all the noise didn’t make it down to Louisiana, which did go ahead and pass a similar set of restrictions under the guise of “consumer protection” but which should be understood as an attempt by established bar-association types to keep the bogeyman of blog- and Internet-savvy lawyers away from their cozy courtroom concessions.

Now a Louisiana law firm is taking on the regulations and has filed suit in federal court. Look, here’s their press release — we’re allowed to copy that (but links added by LOC):

This morning, Wolfe Law Group, L.L.C. filed a suit in federal court challenging the constitutionality of Louisiana’s new rules governing lawyer advertising. The lawsuit seeks to prevent the enforcement of Louisiana’s new advertising rules, scheduled to take effect on April 1, 2009. The Louisiana advertising rules are some of the most aggressive in the nation, and Wolfe Law Group’s suit argues that the rules go too far and restrict an attorney’s right to freely speak about its trade.

Wolfe Law Group argues that the new rules effectively prevent a lawyer from advertising its services through online mediums, such as Google’s AdWords, as the rules also restrict an attorney’s ability to engage in discourse with colleagues, clients and the public through online bulletin boards, blogs, twitter, and other online communities and forums. Read More…

Now you can go Holmes again!

Originally posted 2014-01-03 09:48:52. Republished by Blog Post Promoter

Watson and Holmes

Which one is Brozik? Is Coleman really that old?

“Knock, knock.”

 “Who’s there?”

  “Watson.”

   “Watson who?”

    “Not much. But there is this decision from the U.S. District Court for the Northern District of Illinois…”

It would be tempting, to be sure, to try to embellish a discussion of the recent Sherlock Holmes decision with Holmesian flourishes, but this blawger isn’t going to do that—even though the decision has recognized his—and yours, for that matter—freedom to use the “characters, character traits, and other story elements from Sir Arthur Conan Doyle’s Sherlock Holmes stories”—or at least those published before 1923. That said, a simple recitation of the relevant facts is in order—a method Holmes himself might have employed—in a bulleted list (and Holmes would have been able to tell you whether I am left- or right-handed just by examining these bullets!):

  • Sir Arthur Conan Doyle wrote four novels and fifty-six short stories featuring the fictional characters Sherlock Holmes and his friend and chronicler Dr. John H. Watson.
  • The first story, “A Study in Scarlet,” was first published in 1887 (in the United States in 1890). Forty-five further stories and the four novels were published in the U.S. before January 1, 1923. All of these works are in the public domain.
  • The remaining ten stories, published after 1922, are still protected by copyright, owned by a company whose principals are relatives of Conan Doyle.

Read More…

Suing bloggers for dollars

Originally posted 2011-12-05 10:40:50. Republished by Blog Post Promoter

Interior of rotunda, New York Supreme Court, New York CountyGlenn Reynolds links to a an article in Wired about a newspaper “chain”‘s — actually, lawyer Steve Gibson’s — “new business model”:  Suing bloggers who post newspaper articles, evidently more or less intact ones, on their sites.  Glenn says suing bloggers “seems like a poor business plan” — mainly, of course, because most bloggers are broke, or pretty close to it.

The article also explains why these one-off claims by outfits such as the Las Vegas Review-Journal are unlikely, in the long run, to pay off.  One reason is that at least the music industry, through the Recording Industry Association of America, is theoretically going for some degree of bulk in its litigation trawling against unlawful file sharing.  And we did say “theoretically”:  Remember, in 2008 the RIAA managed to spend about $16 million on legal fees to reel in a whopping $391,000.  As the article says, “You’d have to go after a lot of people for a relatively small amount of money,” says Jonathan Band, a Washington, D.C. copyright lawyer. “That is a riskier proposition.”

So, yes, it is hard to comprehend the return on investment here.

There are other reasons this doesn’t seem to make sense.  “Defendants might be less willing to settle a lawsuit stemming from their posting of a single news article, despite the Copyright Act’s whopping damages,” says the article.  But no, not quite on the “whopping damages” stuff.  Contrary to myth — and to the threats routinely uttered by copyright plaintiff attorneys — statutory damages are not meant to be a windfall, as I explain at some length here.  Now it is true that some juries think intellectual property infringement damages are a jackpot unrelated to actual harm — usually because judges don’t instruct them properly.  But other judges in high profile cases are refusing to be part of the copyright shakedown.  Thus in the recent Tannenbaum copyright case, the District Judge reduced the jury’s damages award of $675,000 for infringement of 30 songs to $67,500, ruling that the amount awarded was unconstitutional under the Due Process clause.

Still, $67,500 is a lot of money, a lot, and still pretty darned distant from any plausible quantum of loss to the copyright owner.   Read More…

Changing the IP Mentality

Originally posted 2012-06-22 14:07:19. Republished by Blog Post Promoter

Mark V.B. Partridge, a partner at the firm that bears the name of my old trademark professor and author of the Guiding Rights Blog [link is dead – RDC], has written a very important piece for the [non]billable hour blog. Here’s my favorite suggestion:

2. Eliminate rights in gross mentality

My second change, admittedly related to the first, would be to eliminate the “rights in gross” mentality. By this, I mean the notion that a trademark creates an absolute and exclusive right. One sees this tendency on both sides of the rights issue. A trademark owner may have the view that no one else may use its mark for any purpose. The junior user may believe there is no infringement if the mark it adopts is not identical to another’s trademark.

I don’t think there’s a single bigger problem in trademarks than this mentality. It is not necessarily an unreasonable view for trademark owners to have; they pour millions or even more into the “brand equity” represented by a trademark. But that should not, and does not, change what a trademark is supposed to be. Unfortunately, the flowering of federal trademark dilution law has cut in exactly the opposite direction of this would-be change — and I don’t see it getting better.

Likelihood of extrusion

iLrg-szyk-haggadah-four-sonsReprinting my annual Passover post, updated for modern microblogging sensibilities and adjusted for days of the week as they come out this year:

I’ve been hit by pre-Passover preparations — the First Seder is tonight — plus the need to front-load the making-a-living part to make up for the fact that I will be “out of pocket” this weekend and essentially on mission-critical-only duty for next week, too.

Here’s a nice thought on the topic, appropos for our 24/6 social media lifestyle:

The 21st century is certainly a marvelous time in which to live. Space exploration, computerization, the taming of vicious diseases are all truly amazing feats. But we also suffer more burnout, mental exhaustion, attention deficit disorders and high blood pressure than ever before. They are no doubt the effects of our own hi-tech servitude. Like it or not, we’re ruthlessly on call to someone for something all the time. And, we call it “normal.”
Read More…

Inducement to contribute to infringe … to roll on

Originally posted 2013-02-12 16:34:14. Republished by Blog Post Promoter

Michael Atkins:

Novel causes of action for contributory cybersquatting and contributory dilution appear to viable here in the Western District [of Washington].

On Jan. 12, Western District Judge Ricardo Martinez refused to dismiss such claims plaintiff brought in Microsoft Corp. v. Shah.

In that case, Microsoft alleges defendants, among other things, induced others to engage in cybersquatting and dilution by instructing them on how to use Microsoft trademarks to increase traffic on their Web sites. Microsoft also alleges defendants sold a product that contained software that enabled buyers to create Web sites incorporating Microsoft marks to help sell emoticon-related software, including a video narrated by defendant Amish Shah.

Defendants moved to dismiss, arguing claims for contributory cybersquatting and contributory dilution are not recognized.

The court denied the motion.

This is an interesting development, and one to watch, in light of what I see as the overall reluctance of courts to extend the law of secondary liability for trademark infringement — including with respect to domain name registrars.