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Lapping up the trademark law

The question:

(Remember non-professionals:  “Distinctiveness” is the core of a trademark’s existence.  It is identical to secondary meaning.  Without it, you don’t have a trademark, because what you think you have is either descriptive — and it hasn’t “acquired distinctiveness” — or is generic, and it can never be distinctive, i.e., it can never be a trademark.)

What?! Outrageous?!  What will “they” try “to trademark” next?


The answer: Read More…

Best of 2012: Schaden-Fraud?

Originally posted 2012-12-26 12:55:03. Republished by Blog Post Promoter

First posted on September 24, 2012.

John Welch has once again updated his Fraud-O-Meter!

Behind this clever Infographic-type thingy is a report of a meaningful legal development concerning the concept of fraud on the PTO.  As John explains:

Three years have passed since the CAFC’s decision in In re Bose raised the bar for proof of fraud at the TTAB. The appellate court jettisoned the “knew or should have known” standard, but left open the question of whether something less than proof of deceptive intent – say, reckless disregard for the truth – would suffice to establish fraud. The Board has yet to answer that question. In fact, it has not sustained a single claim of fraud since Bose. In a December 2011 article [TTABlogged here], TTAB Judge Lorelei Ritchie suggested that the concept of “willful blindness” might be borrowed from patent law and applied in the trademark [registration] context. The “willful blindness” standard requires less than proof of willful intent, but more than recklessness.

Earlier this year, I offered a beta version of a revised FRAUD-O-METER that included a “willful blindness” wedge, inspired by Judge Ritchie’s article and by a decision by the U.S. District Court for the Southern District of Florida …

On September 11, 2012, however, the U.S. Court of Appeals for the Eleventh Circuit reversed the district court decision. Emphasizing the subjectivity of the attorney’s declaration, the appellate court ruled that, because the attorney had “no awareness that any other organization was using the marks for which Plaintiff Order sought federal protection,” that fact alone compelled reversal of the fraud finding, “as [the attorney] could not have intended to deceive the PTO in attesting to an oath that he believed was entirely accurate.”Sovereign Military Hospitaller Order of Saint John of Jerusalem of Rhodes and of Malta v. Florida Priory of the Knights Hospitallers of the Sovereign Order of Saint John of Jerusalem, Appeal No. 11-15101 (11th Cir. Sept. 11, 2012).

In other words, willful blindness?  Not so much.  Said the Eleventh Circuit:

We have been admonished to exercise caution before importing standards from one area of intellectual-property law into another. . . The Florida Priory has not pointed to any authority to establish the sort of ‘historic kinship’ that may justify translation of a patent infringement standard into the mark-application context.

Ah:  A mark-application context!  That, indeed, is why I added the brackets in the first quoted passage, to the words “applied in the trademark [registration] context” — because willful blindness is no stranger to trademark law, as we all know from the secondary trademark infringement context.  There, willful blindness is one of the elements of secondary liability under the standard of Inwood Laboratories Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 853-854 (1982).  At least that’s how we understand it around my house. Read More…

The odd inversion of the trademark “rights in gross” conundrum

Sunset, Court Plaza

A courthouse

Is reselling domain names a violation of the UDRP? At his blog, Gerald “Mr. UDRP” Levine lays out the question, and then answers it plain and simple (emphasis mine):

On the question of reselling domain names on the secondary market, a dissenting panelist in a 2005 case observed that “[t]here is no doubt Respondent is in the business of being a reseller of domain names that consist of common English words” and then suggested that the “fundamental question before the Panel is whether or not such a business should be allowed under the UDRP.” He concluded that such a business should not be allowed: “I would … find Respondent has engaged in a pattern of preventative domain name registration through its prior conduct of registering domain names that are identical to third-party marks.” Shoe Mart Factory Outlet, Inc. v., Inc. c/o Domain Administrator, FA0504000 462916 (Nat. Arb. Forum June 10, 2005).

The same panelist (again in dissent) in Randall E. Kay v. Sebastian Kleveros / Comcept – Internet Ventures, FA1602001659119 (Forum March 18, 2016) (<>) states

Reselling domain names does not constitute a bona fide offering of goods or services for the purposes of the UDRP. To allow such an absurd construction would eviscerate the UDRP because every respondent could demonstrate rights by simply offering the relevant domain name for sale to the general public at the time of registration. The UDRP could be easily circumvented.

This exaggerates the consequences beyond recognition; buying and selling domain names is neither absurd nor would it eviscerate the UDRP. In fact, it’s legal.

And now you want to read Gerry’s post where he explains his conclusion.  My observation is just this:   Read More…


Originally posted 2013-12-03 10:39:49. Republished by Blog Post Promoter

David Post discusses Judge Richard Posner’s musings on the pretty hopeless prospects of the newspaper biz:

[I]f “the newspaper” as a business model fails (because of competition from the free content available on the Net), who will invest the resources required for adequate news-gathering services in the first place? . . .

[Posner’s] proposal for reform, however, goes into the “Cure Worse Than Disease” file:

Expanding copyright law to bar online access to copyrighted materials without the copyright holder’s consent, or to bar linking to or paraphrasing copyrighted materials without the copyright holder’s consent, might be necessary to keep free riding on content financed by online newspapers from so impairing the incentive to create costly news-gathering operations that news services like Reuters and the Associated Press would become the only professional, nongovernmental sources of news and opinion.

It’s hard for me to summarize why this is so terrible an idea.

But — like online copyright infringement — impossible to resist the temptation to try!

Confusion ascendant

Originally posted 2015-07-25 23:11:05. Republished by Blog Post Promoter

  1. Jewish tradition teaches that on Tisha B’Av (the Ninth day of the month of Av) five national calamities occurred:

  1. During the time of Moses, Jews in the desert accepted the slanderous report of the ten spies, and the decree was issued by God forbidding them from entering the Land of Israel. (1312 BCE – traditional Jewish dating)
  2. The First Temple was destroyed by the Babylonians, led by Nebuchadnezzar. 100,000 Jews were slaughtered and millions more exiled. (586 BCE)
  3. The Second Temple was destroyed by the Romans, led by Titus. Traditional sourcest teach that two million Jews died, and another one million were exiled. (70 CE)

Read More…

Thank you for your loyalty

I like opinions in trademark infringement cases that don’t just gloss over LIKELIHOOD OF CONFUSION issues, but I have to admit I wasn’t ready for what awaited me when, after seeing the tweet reproduced below from Bill Donahue, I undertook to dig into yesterday’s ruling by the Southern District of New York in Citigroup, Inc. v. AT&T Services, et al.)

So, what gave? Or didn’t?

First, the basics.  From the opinion:

This is a trademark action concerning the phrases “thank you” and “thanks.” Citigroup, a leading financial services company, has offered a customer loyalty, reward, and redemption program using the term “THANKYOU” since 2004. AT&T, a telecommunications giant, began implementing a customer loyalty program using the term “AT&T THANKS” this summer, in 2016. Citigroup initiated this action seeking both damages and an injunction prohibiting AT&T’s continued use of this name, and has moved for a preliminary injunction that would prohibit that use during the pendency of this litigation.

Citi_Marketing_Page_Center_Graphic_2016._CB297805081_These are your alleged trademarks, then:  THANK YOU and THANKS.

Again:  These corporate behemoths are litigating over the use of the words, respectively, “thank you” and “thanks” for — what now?

Competing customer loyalty programs.

Customer LOYALTY programs.  One is called THANK YOU.

One is called THANKS.

What I am telling you is the following information, in case my powers of expression have, perhaps, failed me:  Both parties here claim protectible trademark rights in the use of the words, respectively (maybe), “Thank you” and “Thanks” for customer loyalty programs.

Now, Bill’s take, as he said in the following tweet, is that the money quote from the opinion is this:

On this record, the Court cannot conclude that Citigroup has carried its burden. For the reasons discussed above, there has not been an adequate showing of irreparable harm from the continued existence of AT&T THANKS while this litigation continues. Against that lack of a showing, AT&T has advanced concrete  evidence that requiring it to halt use of the “AT&T THANKS” name would be an expensive and significant disruption.

That is accurate.  How the court gets there, however, is quite interesting. Read More…

My assorted past

What, you didn’t know?

You’ve got to check that out!

Employee’s Own Electronic Customer Lists “Converted”

Originally posted 2013-03-05 17:36:15. Republished by Blog Post Promoter

Originally published August 2, 2005.

Another interesting New York decision reported by the (sub only) New York Law Journal ), an an article called “The Common Law Concept Applied to Computers.”  [Update:  The link to the New York Law Journal is long gone, but the case is Shmueli v. Corcoran Group, 9 Misc.3d 589, 802 N.Y.S.2d 871 (Sup. Ct. N.Y. Co.), aff’d, 29 AD 3d 309 (App. Div. 1st Dept. 2006).]

A Manhattan judge has relied on analogy to determine that the common-law concept of conversion — the wrongful retention of another person’s physical property — applies to electronic records.

Supreme Court Justice Herman Cahn held that a terminated real estate agent who was prevented from accessing her work computer to obtain an electronic list she kept has a conversion cause of action against her former employer, the Corcoran Group.

Usually the former employer is suing the employee for theft of trade secrets. Here, presumably . . .  the employee’s list was her own property, perhaps brought from a previous professional existence, and not that of her employer. The fact that it was kept on her employer’s computer . . . did not automatically make it the employer’s property. We will want to read the full decision, but this is a very interesting case for computer law afficionados.

One last thought from Justice Cahn:

“The question is,” according to Justice Cahn’s decision, “does the common law tort of conversion become an extinct vestige of the past as to documents maintained on a computer, merely because traditional definitions of documents evolve over time to the point where wood pulp is no longer the only required medium upon which to record data?”

Their lack of wood pulp notwithstanding, Ms. Shmueli’s electronic records still comprised property, Justice Cahn ruled.

Best of 2009: Char’ed, I’m sure

Originally posted 2015-01-28 12:07:38. Republished by Blog Post Promoter

First posted December 8, 2009. 
Poor Starbucks.  So much trademark trouble they have!  Other trouble, too.  And now the people who gave you five-dollar coffee in a paper cup had lost another one — one they thought they had won, namely the Starbucks v. Charbucks case (decision here, posted by Marty; the real name of the case is Starbucks Corp. v. Wolfe’s Borough Coffee, Inc.) involving trademark infringement and its genetic freak of a cousin: trademark dilution.

In fact, Starbucks lost this case a lot.  They lost and lost and lost.

Then, they won.  Starbucks won!



At least, they won a shot at winning.  Which, given their litigation luck these days, must be like a double espresso administered intravenously, juridically speaking.  And, brand-wise.

That piece by Mark Hamblett in the last link is a good summary of the docket-slaloming.  For the law lesson, let’s just skip to smart person Rebecca Tushnet, who may or may not be fueled by caffeine when she blogs but all the same has done all the heavy lifting here:

As we all know, Starbucks is big and famous. Wolfe’s does business as Black Bear, a small business that sells coffee via mail order, the internet, and a limited number of New England supermarkets. In 1997, Black Bear began selling a dark roasted blend, Charbucks Blend, and later Mister Charbucks.

Read More…

Schadenfreude hits a new high

You are now reading the only sentence I’m writing in this, the first-ever “no comment,” utterly self-explanatory (besides these introductory words) post on LIKELIHOOD OF CONFUSION® — via a site called Hyperallergic:

In December, documentary photographer Carol Highsmith received a letter from Getty Images accusing her of copyright infringement for featuring one of her own photographs on her own website. It demanded payment of $120. This was how Highsmith came to learn that stock photo agencies Getty and Alamy had been sending similar threat letters and charging fees to users of her images, which she had donated to the Library of Congress for use by the general public at no charge.

Now, Highsmith has filed a $1 billion copyright infringement suit against both Alamy and Getty for “gross misuse” of 18,755 of her photographs. “The defendants [Getty Images] have apparently misappropriated Ms. Highsmith’s generous gift to the American people,” the complaint reads. “[They] are not only unlawfully charging licensing fees … but are falsely and fraudulently holding themselves out as the exclusive copyright owner.” According to the lawsuit, Getty and Alamy, on their websites, have been selling licenses for thousands of Highsmith’s photographs, many without her name attached to them and stamped with “false watermarks.” . . .

Screen Shot 2016-07-27 at 4.18.50 PM

Photo by Carol Highsmith on the Getty site, with a false watermark (image via Highsmith v. Getty et al. complaint by the author) — Via Hyperallergic

Since each violation of copyright in this case allows the plaintiff to seek damages up to $25,000, the statutory damages for Getty’s 18,755 violations amount to $468,875,000. But because the company was found to have violated the same copyright law within the past three years — in 2013, Daniel Morel was awarded $1.2 million in a suit against Getty, after the agency pulled his photos from Twitter and distributed them without permission to several major publications — Highsmith can elect to seek three times that amount: hence the $1 billion suit. . . .

“The injury to Ms. Highsmith’s reputation has been … severe,” it continues. “There is at least one example of a recipient of a threatening letter for use of a Highsmith Photo researching the issue and determining that Ms. Highsmith had made her photos freely available and free to use through the Library website. … Therefore, anyone who sees the Highsmith Photos and knows or learns of her gift to the Library could easily believe her to be a hypocrite.”