Verb That Adjective Noun! “Google” Is Not (Yet) Generic.

It was bound to happen sooner or later—and in fact it happened back in 2012. Someone sued to have “Google” declared generic and the registration of the trademark(s) “GOOGLE” canceled at PTO. That someone was actually two someones—two cybersquatters: David Elliott and Chris Gillespie, who in the early months of 2012 registered 763 domain names that each included the word “google.” Among these were “” and “” Predictably and promptly, Google, Inc., which holds two trademark registrations for the term GOOGLE, complained to the National Arbitration Forum under the terms of the Uniform Domain Name Dispute Resolution Policy. The NAF…

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Going Wayback… and it’s out of here!

Originally posted 2012-02-09 13:59:20. Republished by Blog Post PromoterThe TTABlog writes about a recent TTAB decision rejecting “Wayback Machine” data as evidence: The Board observed that the “Wayback Machine” suffers from a serious evidentiary flaw: even Petitioner noted that the “Wayback Machine” shows “each date on which a website has undergone a significant change.” “What may be insignificant to the archivers for the ‘Wayback Machine’ may have significance from the standpoint of evidentiary value in a trademark proceeding.” It’s not just that.  In a recent case, we considered the use of such material, and on due diligence were informed that... Read more

But you can never leave

No.  No!!! The Eagles are suing the owners of a Mexican hotel named Hotel California, claiming it’s capitalizing off the band’s hit song of the same name. The band filed a federal trademark infringement lawsuit [on May 1] against the U.S.-based owners of Hotel California in Todo Santos, a town on the Pacific Coast near the southern tip of Mexico’s Baja California Sur. No: “Through advertising targeted to U.S. consumers, and in-person communications, Defendants lead U.S. consumers to believe that the Todos Santos Hotel is associated with the Eagles and, among other things, served as the inspiration for the lyrics... Read more

Google Patents

Originally posted 2009-12-24 19:57:34. Republished by Blog Post PromoterSearch patents on Google. A paradigm shifter? Maybe. May very well be. UPDATE:  Dennis Crouch explains: One problem: Google is best at finding the top-twenty references related to your search.  Google is much worse at doing exhaustive searches.  Thus, if you want to find every patent that mentions a certain term, you will probably not be successful (at this point) with the Google Patent Search.  Finally, Google does not yet have a link to the PDF version of the document. Read more

We’re from the government, and we’re here to help

Originally posted 2013-02-12 16:34:16. Republished by Blog Post PromoterWould Barack Obama’s election lead to revival of the “Fairness Doctrine” — and if so, how would that affect bloggers, who basically didn’t exist as of the last time the Fairness Doctrine governed political speech in the media?  The FCC’s chairman, Robert McDowell, suggests that bloggers wouldn’t be too happy about such a development. (Hat tip to Van Helsing.) McDowell is a Bush appointee, and was speaking to the conservative Heritage Foundation.  Now that we’ve gotten that out of the way, what exactly is the principled defense of the Fairness Doctrine? Read more

Phantoms, zombies and the big problem with trademark use

I’ve got trademark use on the brain! Maybe it’s the Belmora effect — the result of living in a world in which use of a trademark in a country that is not the U.S. gets you a Lanham Act claim under 43(a) in the U.S. Who can blame me?  It’s boggling my mind and making it soft, this trademark-use business. As I mentioned in my brief appearance at INTA last week in Barcelona — a sign that INTA has ‘jumped the shark’[email protected] invited to speak to a main session #thefonz — Erik Pelton® (@tm4smallbiz) May 18, 2017 — er, thanks, Erik... Read more

Best of 2013: The Lanham Act’s surprising penumbras

Originally posted 2013-12-31 06:06:27. Republished by Blog Post PromoterFirst published on July 15, 2013. Here I thought I understood something about the Lanham Act.  But wait, there’s more!  Did you know this?: The purpose of the Lanham Act is to protect registered and valid copyrights, trademarks, and patents. That’s from Coach, Inc. v. Southwest Flea Market., 2:10-CV-02410-DKV, 2012 WL 8470191 (W.D. Tenn. Feb. 21, 2012), an important decision concerning, among other things, the circumstances under which a flea market vendor can be held contributorily liable for the sale of counterfeit trademark merchandise by vendors after the Second Circuit’s ruling in Tiffany... Read more

Dear John Letter

“Dear Licensor” — Part II

Originally posted 2014-04-09 07:50:28. Republished by Blog Post PromoterLast spring I excerpted from and linked to an article by my friends Richard Bergovoy (of the Licensing Law Blog) and Oliver Herzfeld (of Beanstalk) concerning the dizzying concept of a trademark licensee gone bankrupt.  Now I’m told that Part II is out and about as well. Here’s a highlight: If Licensee Seeks to Assume and the Licensor Objects The licensor may believe that the licensee or its proposed assignee are incapable of properly performing the license agreement. One of the fundamental principles of U.S. trademark law is that a licensor must control the quality of the... Read more

Welcome from Barcelona!

Thread. First time I’ve shown up at the @INTA host city so early. Turns out I’ve missed the local celebrations marking our arrival. #INTA17 — Likelihood ®© Blog (@likely2confuse) May 20, 2017 Read more