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Twice as nice in Ohio

Two times twice, really.  Next week I will be presenting in Ohio for the second time, which is nice twice once.

Nice twice twice is that this second presentation is the 26th All Ohio Annual Institute on Intellectual Property (AOAIOIP), being held this September 21-22, 2016 — and the twice there is that we do the program twice, two days in a row:  First in Cleveland and second in Cincinnati!

Nice!  Here’s the program (PDF).

You can register for Cleveland (Sept. 21) by clicking here.  You can register for Cincinnati (Sept. 22) by clicking here.


Official, municipal and trademarkable

Originally posted 2012-07-23 14:01:30. Republished by Blog Post Promoter

A long time ago I asked this question about the aggressive IP — or quasi-IP — enforcement policy of New York’s Metropolitan Transit Authority:

[T]he libertarians remind us constantly, and accurately, that when something is everyone’s property, it is ultimately treated like no one’s property at all — which “everyone” ends up paying for. Still and all, there is an interesting trademark policy issue in here somewhere. It’s one thing to say that services aren’t free and that even when, as in the case of the MTA, they succesfully address significant NYC Subway Token 300x300 Taking the IP Trainexternalities, their costs should not be unduly disconnected from users. But it’s another thing to say that, however revenue-starved, a public institution (in the broad sense of the word) such as the MTA should restrict the public, much less the bloggy, enjoyment of a public iconography such as the train number symbols and the image of the classic subway token.

Since then I have twisted and turned on this issue, and above all concluded that the MTA’s policies were more opportunistic and inconsistent than anything else.

John Welch raises a related issue, reporting a decision at the Trademark Trial and Appeal Board:

 Facing an issue of first impression in two separate cases, the Board, in well-reasoned decisions, affirmed the PTO’s refusals to register the two design marks shown below on the ground that each mark comprises a governmental insignia that is barred from registration by Section 2(b) of the Trademark Act.

In re The Government of the District of Columbia, 101 USPQ2d 1588 (TTAB 2012) [precedential]. The Board affirmed a refusal to register the official seal of the District of Columbia for various goods, including clocks, cufflinks, memo pads, pens and pencils, cups and mugs, and various clothing items.

Section 2(b) prohibits registration of any mark that “consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.” Here there was no dispute that the applied for mark was the official seal, nor that the District of Columbia qualifies as a “municipality” under the statute.

The Board found the language of Section 2(b) to be “plain and clear on its face.” The text of the statute provides for no exception to the ban on registration, even when a governmental entity is the applicant. . . .

Applicant . . .  maintained that Section 2(b) is ambiguous, as evidenced by the PTO’s issuance of three third-party registrations for governmental insignia, as well as by the TTAB’s decision in In re U.S. Dep’t of the Interior, 142 USPQ 506 (TTAB 1964), where the Board reversed a refusal to register a logo of the National Park Service. The Board observed, however, that in the Interior case it concluded that the involved logo was not the type of mark prohibited by Section 2(b) because it was not an official insignia of national authority. In other words, Section 2(b) does not bar a government body from registration of any and all marks, just insignia “of the same class as the flag or coats of arms of the United States.”

So that would seem to neatly cover my train insignia question, though, as I have pointed out in other posts, the MTA has arguably seriously undercut any claim it may have with respect to their exclusive use as identifiers of specific transit services by indiscriminate licensing.  That’s what makes this part of John’s post about the decision interesting:

Relying on certain language in In re U.S. Dep’t of the Interior, Applicant urged that it sought registration of its seal not as a “symbol of authority,” but rather in connection with specific municipal services, and therefore its application falls outside the Section 2(b) bar. The Board, however, found that interpretation to be a misreading of Interior because that case does not support the contention that the nature of the involved goods or services is a factor in determining whether Section 2(b) prohibits registration.

An interesting issue.

Louis Vuitton — the big IP player that keeps on giving

Ah hah!  Two of my favorite subjects, like peanut butter and chocolate, in one candy bar:

From the “On the Case” Reuters post by Alison Frankel:

To just about everyone but Louis Vuitton, the joke is obvious. Inexpensive canvas totes decorated with cartoon versions of famously expensive, iconic designer handbags? That’s funny – especially because the name of the company that makes the totes is My Other Bag, a play on the “My other car is a ” bumper stickers people used to paste on beat-up cars. To highlight the humor, the company name appears in large, loopy script on the other side of the tote bags. No one with even the faintest sense of irony would confuse My Other Bag’s $35 tote bags with actual Louis Vuitton (or Chanel, Hermes or Fendi) pocketbooks.

Louis Vuitton, of course, is famous for its inability to tolerate any ribbing, however gentle, that involves its classic toile monogram. In 2014, the company sued My Other Bag in federal court in Manhattan for trademark dilution and copyright and trademark infringement. U.S. District Judge Jesse Furman granted summary judgment to My Other Bag on all of Louis Vuitton’s claims last January, writing (with his own cheekiness) that the handbag maker “is perhaps unfamiliar with the ‘my other car’ trope. Or maybe it just cannot take a joke.” . . .

Proving that it has absolutely no sense of humor (in the unlikely event more evidence were needed), Louis Vuitton appealed the summary judgment ruling to the 2nd U.S. Circuit Court of Appeals, arguing that Judge Furman misapplied the law.

That’s when things got interesting: The case blew up into a full-fledged constitutional inquiry into the intersection of trademark law and the First Amendment.

Cool, right?  And here come the profs: Read More…

Avvo ranks us

Originally posted 2011-09-07 23:59:22. Republished by Blog Post Promoter

From the Avvo Blog:

[W]e threw together this auto-updating list of over 300 legal blogs ordered by their Alexa traffic ranking.

Now you can:

– Know who has the most popular legal blog based on objective, third-party data.

– Understand why blogs rank where they do.

– Track changes every weekday.

OK, I might skip a weekday or two.  But it is an interesting list.  They listed 369 law blogs and acknowledge that some are left out because they resolve to sub-domains, which confuses Alexis.

Oh, sure, LIKELIHOOD OF CONFUSION® is on the list.  Silly.  Of course.

Oh, you want to know the rank?  Oh, 75th.  Come on, no one cares. I think among IP blogs this one is probably in the top 10 on that list ok?  Right in that sweet spot, no problem.

Hey, there are some very interesting blogs on that list, too.  And… hmm.

You know, I’m always particularly interested in really slick, well-designed law firm blogs with the contact phone number right up top that rank really close to mine… yeah, they have blogrolls… and don’t link to a single law blog you ever heard of.  Almost as if they only link to blogs that are also customers of the consultant that really “does” their blog– let’s say, for example, an outfit such as Justia Legal Marketing Solutions. Or something. Which is entirely their right to do, and hey, look at that Alexis ranking!  Of course it’s our right not to link to such prepackaged presentations, too, no matter what they say, but who cares about the spirit of the Internet and all that — it’s every man for himself!

Interesting.  Hey, great list.  Alexis rankings, cool!

Social media is evidence

Fashion DosEarlier this month (on August 15, 2016), two of my Archer & Greiner colleagues, Dan Farino and  Douglas Leney, published an article in the National Law Journal called “Social Media Can be a Minefield – or a Goldmine.”

Right on their heels, here’s a link to my commentary in the current (July/August) issue of INTA’s Trademark Reporter entitled, “Fashion Dos: Acknowledging Social Media Evidence as Relevant to Proving Secondary Meaning.”

With both of these in hand, you’re ready to go!

Blog o’ briefs

Originally posted 2014-08-18 11:21:20. Republished by Blog Post Promoter

Just found this blog called Trademark Law Briefs.  It’s all Ninth Circuit stuff — which is plenty.

It’s short little “briefs” summarizing recent trademark law decisions in that August federal Circuit, by California lawyer Cynthia Jones.

I’d say if you mainly read this blog for your trademark learning you should balance it out with that one.  You’ll learn at least as much and not have to claw your way past all the ego you get, well… yeah, here.

I did say balance.

UPDATE:  Sadly, the site hasn’t been updated since 2011.  Blogging is hard!

Cardiac counterfeiting

Originally posted 2012-12-30 15:00:15. Republished by Blog Post Promoter

It’s not a defense to trademark infringement or counterfeiting that your heart is full of good intentions.

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…