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Famous marks doctrine dunked again

Originally posted 2014-10-06 09:52:11. Republished by Blog Post Promoter

Las Vegas Trademark Attorney reports that the Second Circuit has taken the “advice” of the New York Court of Appeals and rendered a final decision in the BUKHARA “famous marks doctrine” case.  Writing about the original Second Circuit opinion from last year, he says:

The court even acknowledged that its decision to reject the “famous marks” doctrine conflicts with the Ninth Circuit’s decision in Grupo Gigante S.A. de C.V. v. Dallo & Co., 391 F.3d 1088, (9th Cir. 2004) which recognized the “famous marks” doctrine with respect to federal trademark rights, and goes against famed trademark treatise author J. Thomas McCarthy, who has apparently called the decision “embarrassing” (see write-up by Seattle Trademark Lawyer and contrasting write-up by Likelihood of Confusion). This circuit conflict alone leads some (myself included) to believe that a grant of certiorari from the U.S. Supreme Court is in the future.

Yeah, contrasting! It would be great if the Supremes would take this up.

Think pink?

Originally posted 2008-10-10 12:50:32. Republished by Blog Post Promoter

Think pink. But cookies <--> cancer prevention?In a nearby Duane Reade: Pink-tinged Mint Milanos by Pepperidge Farm.

You’re supposed to know that the pink on the package means raising money for breast cancer. Breast cancer owns pink.

But what you’re thinking as you scan the point-o-purchase is, “They put some strawberry or something in the cookies.”

Good thing we don’t believe in initial interest confusion at LIKELIHOOD OF CONFUSION®!

You are not the boss of me!

Originally posted 2014-02-07 13:20:00. Republished by Blog Post Promoter

Internet Cases logoEvan Brown reports, as he does so often, about an important ruling that deals another blow to attempts at using intellectual property, and particularly its growing penumbras in the secondary liability area, law as a magic legal elixir to fix ever perceived legal or commercial problem:

After defendant left plaintiff’s employment to co-found a competing company, plaintiff sued defendant personally for copyright infringement based on the new company’s website’s resemblance to plaintiff’s website. The infringement theory was interesting – plaintiff alleged that defendant did not commit the infringement himself, but that he was secondarily liable for playing a significant role in the direct infringement by the new company’s employees. . .

It didn’t fly in BioD, LLC v. Amnio Technology, LLC, 2014 WL 268644 (D.Ariz. January 24, 2014).  Evan explains:

In this case, the court held that plaintiff had not alleged enough detail to state a claim of secondary liability against defendant. Instead, the complaint simply recited the elements of contributory and vicarious liability. . . .

[Plaintiff failed to allege that d]efendant, as a non-employee (but founder) of the new company, was personally responsible for the content of the new company’s website. (Interestingly, the court held it was not sufficient to allege that defendant was a founder of the new company. Although plaintiffs alleged some factual details about what was actually copied from plaintiff’s website, they alleged no factual details as to defendant’s personal involvement in the infringement.) . . .

Plaintiff’s attempts to impose secondary liability were (if they had worked) a clever method for accomplishing the same objective as piercing the corporate veil. Granular control by the individual founder could be equated with the “alter ego” aspect of the veil-piercing analysis. The absence of such specific control by the individual defendant, however, left the possibility of liability only with the company.

This last paragraph does raise an important issue:  “Granular control by the individual founder could be equated with the ‘alter ego’ aspect of the veil-piercing analysis.”  Here the missing factual piece seems to have been the actual connection between the former employee, also the “founder” of the allegedly infringing website, and his actual control — necessary under vicarious liability doctrine (the secondary approach relevant here) — over the infringers.

It seems this was an attempt to use secondary liability “get at” the former employee, whose fingerprints were deftly, or perhaps entirely innocently, nowhere to be found on the allegedly infringing website, personally on the copyright claim.   Read More…

Apple of your eye

Apple Store trademark application drawingHave you ever been to an Apple Store?  I have, and I found it a painful experience.  But that was only because I was at least 20 years older than the average person in the room.  And because the things they sell there really cost a lot of money and work better than my things, which don’t.

Otherwise, it’s very cool.  And very distinctive.

The PTO agrees, and after no small amount of back-and-forth, it’s been widely reported that it has issued a trademark registration for the Apple Store’s layout.

Most of the coverage I’ve seen on this topic has been wretched — not only because it uses the word “trademarked” or describes Apple as “receiving a trademark,” but because it displays the lack of understanding about what trademarks are under U.S. law that such usage betrays.  (No, not going there again, not today.)  But with respect to the granting of a registration for Apple’s trademark — dare I say trademark claim? — I like this piece (cached version — balky server) by law student Deborah Goldman in the Washington College of Law publication, Intellectual Property Brief, which explains the issues well and is rich with links to primary sources.

Deborah notes that the two initial refusals for registration were not based on a lack of distinctiveness or functionality, which you’d expect, but on fairly technical aspects of the application.  These are usually amenable to being overcome with some good draftsmanship, especially since the Examining Attorney will typically let you know what he’s looking for.*  Naturally, lawyers who understand how to take such guidance are something Apple is able to procure: Read More…

Best of 2009: Impolitico

Posted September 17, 2009.

homelogo

I first read about the brouhaha over the Politico trademark claim against the College Politico blog on Instapundit:

ED MORRISSEY: “Who owns the word ‘Politico’?” The blogosphere has been very good to Politico, and I think they should bear in mind the ill-will they’re incurring as a result of their heavy-handed legal tactics. This is like me going after everyone who uses the word “pundit” in their blog name.

Almost everything about that post, and other things besides, made me very much not to want to have an opinion on this topic. Just think what that’s saying!

But now my public, namely Jimmie himself, is demanding that LIKELIHOOD OF CONFUSION® speak!  As he writes:

10 Years of LIKELIHOOD OF CONFUSION®

10 Years of LIKELIHOOD OF CONFUSION®

The Politico’s case seems to rest on the “likelihood of confusion” standard as they claim it’s likely that people who come across Gutkowski’s site might think they were coming across a site affiliated with The Politico.I think that’s a pretty weak claim.The College Politico looks nothing like The Policito in design or content. It specifically claims a slant to the right and does not purport to be a straight news site in any way. “Politico” is also a commonly-used word and Gutkowski seems to be using the word as the dictionary defines it.

It seems to me that if The Politico’s claim is granted, the court would set a precedent for other people to claim ownership of other common English words. In which case, I’m going to go ahead and grab “blog” and “times”, and maybe “the”.

Of course, I’m not a lawyer, nor do I pretend to play one in the blogosphere. However, my friend Ron Coleman is, and what’s more, he’s an expert in trademarks and copyrights, so he ought to know a thing or three about the . I’d definitely be interested in his take on The Politico’s claim.

Read More…

Best of 2009: Dr. Yes

Ars longa

Ars longa

Published on July 6th, 2009.

Just a scant day after I was using the mythical man from MI6’s movie mug to mock our former colonial overlords for their upperclass-twittery, comes the Telegraph of London to report that, unlike in these United States, perhaps there’s still a bit of that Anglo Saxon Magna Carta lust for freedom in ye olde English judiciary.

Well, maybe not so much if you insist on some “there’ll always be an England” point of view on the whole lot.

Still, is it true what Dr. No said to James Bond, “East, West, just points of the compass, each as stupid as the other”?  I’ve never bought that moral equivalence argument.  There must be a stupider direction on the compass!

10 Years of LIKELIHOOD OF CONFUSION®

10 Years of LIKELIHOOD OF CONFUSION®

OK, well, how about the European Court o’ F’rinstance, to which the once ruddy rulers of the waves have turned over their hard-fought yeoman rights?  In fact on in this episode, the Euros demonstrate that when we point the finger of foolishness, sometimes the direction of dumb points right this way.  For despite my prejudices against both the theory and the practice of Euroism, and even if they’re still confused themselves about even what they think, I have to admit that there are times, such as this one, when we can and should learn something from Over There about such central moral challenges as intellectual property rights. Read More…

Can’t win for chewing

Louis Vuitton Malletier loses one on parody grounds. I guess you had to be there — sounds like this is on the wrong side of parody to me. And how about trademark dilution, especially under the corporate-friendly new and improved dilution statute? Here’s a link to clarify the Chewy Vuitton concept. Enjoy it while you can — I predict a reversal on appeal.

Best of 2012: That distinctive date

Columns, Tweed Courthouse

Originally posted October 3, 2012.

In a recent TTAB case my office faced a motion to compel answers to interrogatories requesting what would seem like a very relevant, and very critical, piece of litigation information:  The date on which our client’s trademark “acquired distinctiveness,” i.e., achieved secondary meaning in association with our client’s goods or services.  Its birthday as a trademark, in other words.

Our response to both the demand and the motion was that while we could — and wanted to — acknowledge that we must demonstrate that the mark acquired distinctiveness, that wasn’t really amenable to proof of a date certain.  Kind of interesting question, really — you know it has to be by a certain date, and certainly before the date you claimed priority over someone else.

But secondary meaning isn’t born.  It’s made.  As we wrote in our opposition to the motion to compel:

Opposer’s demand for a “specific date when secondary meaning was allegedly required” is meritless. As the Federal Circuit recently explained in Coach Services, Inc. v. Triumph Learning LLC, 668 F.3d 1356 (Fed. Cir. 2012), the acquisition of secondary meaning is a complicated fact question.

To establish secondary meaning, or acquired distinctiveness, an applicant must show that in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself. To determine whether a mark has acquired secondary meaning, courts consider: advertising expenditures and sales success; length and exclusivity of use; unsolicited media coverage; copying of the mark by the defendant; and consumer studies. Acquired distinctiveness is a question of fact which is reviewed under the clearly erroneous standard.

Id. at 1379 (internal citations and quotes omitted). Similarly, in Zobmondo Entm’t, LLC v. Falls Media, LLC, 602 F.3d 1108, 1114 (9th Cir. 2010), the Ninth Circuit acknowledged:

In distinguishing between suggestive and descriptive marks, we are aware that “[d]eciding whether a mark is distinctive or merely descriptive is far from an exact science and is a tricky business at best.” Lahoti[ v. VeriCheck, Inc., 586 F.3d 1190], 1197 (9th Cir.2009) (quotation marks omitted); 2 McCarthy § 11:66 (“The descriptive-suggestive borderline is hardly a clear one”), § 11:71 (observing that the descriptive-suggestive dichotomy is not “some kind of concrete and objective classification system”).

The “date” on which secondary meaning is acquired is not some precise moment in time which can be proved by a date-stamped receipt showing that from that instant, but not before then, a mark has acquired distinctiveness. Opposer would very much like Applicant to box itself in by asserting such a date, but cites no authority for the proposition that Applicant must do so, or that any applicant could.

The TTAB agreed, Read More…

That distinctive date

Columns, Tweed CourthouseIn a recent TTAB case my office faced a motion to compel answers to interrogatories requesting what would seem like a very relevant, and very critical, piece of litigation information:  The date on which our client’s trademark “acquired distinctiveness,” i.e., achieved secondary meaning in association with our client’s goods or services.  Its birthday as a trademark, in other words.

Our response to both the demand and the motion was that while we could — and wanted to — acknowledge that we must demonstrate that the mark acquired distinctiveness, that wasn’t really amenable to proof of a date certain.  Kind of interesting question, really — you know it has to be by a certain date, and certainly before the date you claimed priority over someone else.

But secondary meaning isn’t born.  It’s made.  As we wrote in our opposition to the motion to compel:

Opposer’s demand for a “specific date when secondary meaning was allegedly required” is meritless. As the Federal Circuit recently explained in Coach Services, Inc. v. Triumph Learning LLC, 668 F.3d 1356 (Fed. Cir. 2012), the acquisition of secondary meaning is a complicated fact question.

To establish secondary meaning, or acquired distinctiveness, an applicant must show that in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself. To determine whether a mark has acquired secondary meaning, courts consider: advertising expenditures and sales success; length and exclusivity of use; unsolicited media coverage; copying of the mark by the defendant; and consumer studies. Acquired distinctiveness is a question of fact which is reviewed under the clearly erroneous standard.

Id. at 1379 (internal citations and quotes omitted). Similarly, in Zobmondo Entm’t, LLC v. Falls Media, LLC, 602 F.3d 1108, 1114 (9th Cir. 2010), the Ninth Circuit acknowledged:

In distinguishing between suggestive and descriptive marks, we are aware that “[d]eciding whether a mark is distinctive or merely descriptive is far from an exact science and is a tricky business at best.” Lahoti[ v. VeriCheck, Inc., 586 F.3d 1190], 1197 (9th Cir.2009) (quotation marks omitted); 2 McCarthy § 11:66 (“The descriptive-suggestive borderline is hardly a clear one”), § 11:71 (observing that the descriptive-suggestive dichotomy is not “some kind of concrete and objective classification system”).

The “date” on which secondary meaning is acquired is not some precise moment in time which can be proved by a date-stamped receipt showing that from that instant, but not before then, a mark has acquired distinctiveness. Opposer would very much like Applicant to box itself in by asserting such a date, but cites no authority for the proposition that Applicant must do so, or that any applicant could.

The TTAB agreed, Read More…

Dr. Yes

Ars longa

Ars longa

Just a scant day after I was using the mythical man from MI6’s movie mug to mock our former colonial overlords for their upperclass-twittery, comes the Telegraph of London to report that, unlike in these United States, perhaps there’s still a bit of that Anglo Saxon Magna Carta lust for freedom in ye olde English judiciary.

Well, maybe not so much if you insist on some “there’ll always be an England” point of view on the whole lot.

Still, is it true what Dr. No said to James Bond, “East, West, just points of the compass, each as stupid as the other”?  I’ve never bought that moral equivalence argument.  There must be a stupider direction on the compass!

OK, well, how about the European Court o’ F’rinstance, to which the once ruddy rulers of the waves have turned over their hard-fought yeoman rights?  In fact on in this episode, the Euros demonstrate that when we point the finger of foolishness, sometimes the direction of dumb points right this way.  For despite my prejudices against both the theory and the practice of Euroism, and even if they’re still confused themselves about even what they think, I have to admit that there are times, such as this one, when we can and should learn something from Over There about such central moral challenges as intellectual property rights.

Vita brevis

Vita brevis

It seems that while the title of the first James Bond movie, “Dr. No,” conjures up all the secondary meaning you could ever want,  the European Court of First Instance in Luxembourg has nonetheless reminded us all that there’s more to a trademark than brand equity.  There’s something we would call “trademark use.”

And No, Mr. Bond, before you die your horrible death at my vengeful hands — out of my presence, of course, so you may brilliantly extract yourself from doom and undermine my evil life’s work whilst I cavort abode decks in arrogant ignorance — I cannot but resist telling you that “Dr. No” is not a protected trademark (spelling corrected to proper American): Read More…