Tag Archives: Trademark Law

Best of 2010: Drive-by infringement

Originally posted 2010-12-15 08:00:28. Republished by Blog Post Promoter

Coca-Cola Host of the Highways

Commuter Host

Steve Baird says initial interest confusion is “the real thing” and in the process  seeks to “add life” to Professor McCarthy’s famous “evil highway road sign” analogy:

Whatever the criticisms might be to the doctrine of Initial Interest Confusion, including those detailed by our friends Ron ColemanMarty Schwimmer, and Eric Goldman, in the context of keyword advertising, the road-side restaurant sign shown [at left] definitely is “the real thing” for purposes of trademark initial interest confusion, in more ways than one:

It does depict the Coca-Cola brand, in all its glory, after all, so It’s The Real Thing, by definition.

10 Years of LIKELIHOOD OF CONFUSION®

10 Years of LIKELIHOOD OF CONFUSION®

And, unlike the very hypothetical scenario relied upon in the Wolf Appliance case, the above drive-in restaurant signage is real world and in current use, designed to attract attention, and has been for years, in fact, well after the business responsible for the sign dropped Coca-Cola for Pepsi. That’s right, “no Coke, Pepsi.” To twist Sean Penn’s words in I Am Sam, Wagner’s change was a “very bad choice,” at least in my humble opinion of taste.

Yeah, me too.  I used to think I liked Pepsi better.  Crazy!  It’s one more reason Steve and I are likethis.  More: Read More…

What is a word mark?

Originally posted 2005-01-04 17:46:00. Republished by Blog Post Promoter

Batman___Word_by_Defiant_AntSpeaking of Google and trademarks, an interesting article on Google’s own trademarks is “Don’t “Hitchhike”A Ride On Google’s Trademarks and URLs” by Russell Shaw.

Only thing is that he defines a “word mark” as “similar to a trademark, but more of a logo than a business name,” which it isn’t.

I don’t blame him for being confused. The term is not found in the index of McCarthy’s definitive treatment, nor in the INTA glossary on line.

But one thing is for sure: A word mark is a trademark, it’s not “like a trademark.” And describing it as being like a logo is misleading — many logos don’t have any words in ‘em at all. In fact, a word mark is nothing more or less than a trademark consisting of a word or words. (See, e.g., American Home Products Corp. v. Johnson Chemical Co., Inc.,589 F.2d 103, 200 U.S.P.Q. 417 (2nd Cir. 1978). If you must. )

Best of 2009: Impolitico

Originally posted 2009-09-17 14:01:09. Republished by Blog Post Promoter

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: “Infinity Dollars” — IP damages and the jury, Part 1

Originally posted 2009-06-19 12:07:08. Republished by Blog Post Promoter

JuryA lot of people, including judges, lawyers and civilians, don’t seem to really understand what statutory damages are all about.  They are not supposed to be a windfall (discussed more here).  But just tell that to the jury that awarded “infinity dollars” — practically — to the Lords of Music for what was indeed knowing copyright infringement of two dozen songs, and to the person on whose head the jury just laid that award.

I’m not an “information wants to be free” nutter, and musical compositions aren’t “information” anyway except to the most heartless utilitarian, but Stan Schroeder (presumably no nutter either, but probably to my left on this issue) hits it right on the head:

Ten Years of LIKELIHOOD OF CONFUSION®

In one of the most ridiculous verdicts I’ve seen, the jury decided that Jammie Thomas-Rasset, the first woman who was charged with copyright infringement and offered to settle but decided to fight the RIAA, is guilty and owes the recording industry 1.92 million dollars, or $80,000 per song.

As we mentioned in our original article, Jammie’s case was full of holes, and she probably would have done better if she had just settled with the RIAA. But what’s striking here is the amount of money awarded to the recording industry for infringing the copyright for just one song.

Read More…

Best of 2009: McBummer: Thoughts on the McFamily of Trademarks McConcept

Originally posted 2009-05-11 16:14:53. Republished by Blog Post Promoter

McDonald's Family of Marks

Clownish? Hardly.

I’ve written before about the odd cultural juxtaposition of McDonald’s and the Muslim world.  It turns out I don’t know the half of it!  Now McDonald’s has lost its effort to extend its monopoly of “Mc”-family trademarks in Malaysia, which bucked the colonialist-lackey trend of extending American-style “McFamily Values” to the rest of the globe:

The Oak Brook-based fast-food giant took offense at McCurry Restaurant, a Malaysian joint that maintains its name is an abbreviation for Malaysian Chicken Curry. McDonald’s considers the “Mc” prefix to be its intellectual property.

The company long ago established that premise in the United States, successfully forcing two restaurant companies, McBagel’s and the vegetarian McDharma’s, to change their names. . . .

But Malaysia’s Appeal Court said Wednesday that McDonald’s can’t claim an exclusive right to the “Mc” prefix, overturning a 2006 court ruling. The Appeal Court ruled there was no proof that McCurry misrepresented itself to the public and confused consumers, Malaysia’s New Straits Times reported. Besides, McCurry serves Indian food, the Appeal Court said.

10 Years of LIKELIHOOD OF CONFUSION®

10 Years of LIKELIHOOD OF CONFUSION®

(Hat tip to Marty. ) I used that dirty word — “monopoly” — because that’s what a “family of trademarks” kind of gives you, in a manner of which a plain old, childless trademark can only dream.

The first time I heard of this concept I was astonished, although it does make perfect sense from a brand owner point of view.  But it really does amount to a monopoly of semiotic real estate: Read More…

Best of 2009: Keeping it real — the ultimate use in commerce

Bose-Wave-AW1This was first posted on May 7, 2009.

The TTABlog® reports, again, on the fraud issue, but that’s not what interests me here so much this time. Rather, it’s the question of the lifecycle of a trademark’s “use in commerce” status when plotted against that of a specific product which may no longer be manufactured, but which arguably may have trademark significance.

I have looked at this question in other contexts before, particularly in this post where I wrote about a company called River West Brands, that pokes through the junk-heap of “abandoned” consumer-products trademarks and tries to make money off them. The focus in that post was on trademarks for lines of goods that no

10 Years of LIKELIHOOD OF CONFUSION®

10 Years of LIKELIHOOD OF CONFUSION®

longer exist, and I linked to related items by Pam Chestek and, guess what, John Welch that dealt with the issue. But here there’s a twist: The trademark, WAVE, is very much alive in Bose’s successful line of high-end audio equipment. But, as befits a “fraud on the PTO” case, the focus here is on one particular product in the list of goods and service that is no longer in production. Can the trademark still be a trademark?

As John Welch explains, “The TTAB, in Bose Corp. v. Hexawave, Inc., 88 USPQ2d 1332 (TTAB 2007)…, found that Bose had committed fraud in its 2001 renewal of a registration for the mark WAVE for, inter alia, audio tape recorders and players.”

Read More…

Best of 2009: The best of the best. Of the bestest.

Originally posted 2009-04-14 11:20:40. Republished by Blog Post Promoter

Only Marc Randazza can put certain things in certain ways — and on those occasions when he’s actually right (like when he’s discussing law and not politics! ;-)), man, he’s right on. Well, he’s right on today in this latest demonstration of the Streisand Effect.

As Marco explains in his not-quite-safe-for-work post, a man called Morgan, whose name only ironically reminds us of an investment bank, posted what is at best a lame, and at worst a tinfoil-hat-special, gripe site about our benevolent rulers at

10 Years of LIKELIHOOD OF CONFUSION®

10 Years of LIKELIHOOD OF CONFUSION®

Goldman Sachs. Morgan’s “mistake” — actually, the smartest thing he ever did by virtue of the big-firm, big-institution ham-handedness demonstrated here — was registering the domain names www.goldmansachs666.com and www.goldmansachs13.com — Goldman Sachs plus The Beast, of course, and Goldman Sachs plus unlucky-13 — so they would forward to his rant-a-thon.

Let’s pick it up from the middle and relatively quotable part of Marc’s post:

Read More…

Best of 2008: Tackiness not grounds for refusal to register

[Posted December 1, 2008.]

Otherwise, why would John Welch be reporting this appeal?:

December 4, 2008 – 10 AM: In re Chippendales USA, LLC, Serial No. 78666598 [Refusal to register the apparel configuration shown below for “adult entertainment services, namely exotic dancing for women in the nature of live performances” on the ground that the design is not inherently distinctive].

Frankly we would have relied on tackiness for the refusal if we were the PTO, because when we see this classy outfit we think “Chippendales” every time.  “Inherently distinctive?” I’d say!

10 Years of LIKELIHOOD OF CONFUSION®

10 Years of LIKELIHOOD OF CONFUSION®

Then again, that’s how we worked our way through law school, so we’re biased. (UPDATE: Marty raises an eyebrow — obviously doesn’t remember what LIKELIHOOD OF CONFUSION® himself  used to look like.)

More interesting is the concept of apparel configurations as the subject matter of a trademark.  Indeed, as the applicant’s brief by friend Stephen Feingold (of our former firm Day Pitney — didn’t realize he’d handled my favorite Yiddish IP case!) makes clear, that question is indeed a matter of first impression. Read More…

Best of 2007: Trademark rights in interdigitization

Originally posted 2007-05-15 21:32:04. Republished by Blog Post Promoter

Praying Hands

Thou, Rock

Nick Daly drops me a note to the effect that one Jay-Z, gazillionaire rhyming scatologist, has been sued by a professional perspirer and leaping stage goon called Diamond Dallas Page — ach! my kingdom for a stage name! — for the former’s “Roc-A-Fella Hand Gesture,” also known as the “Diamond Cutter” hand gesture. Evidently Mr. Z uses the former, Mr. Page the latter of these nicknames for the clever manipulation of the human carpal, metacarpal and phalange bones in a distinctive diamond-shaped pattern in association with the services provided by the respective performers.

10 Years of LIKELIHOOD OF CONFUSION®

10 Years of LIKELIHOOD OF CONFUSION®

Now, Roc-a-Fella is a record company specializing in rhythmic spoken-word obscenity-laced performance art which generates (1) some light, if you will, allowing one to peer into the dimmer recesses of the heart of urban America’s cultural darkness profundity, plus (2) much heat as regards the controversial word choice typically employed by its practitioners as well as the ribald subject matter of the works, in addition to (3) immense dump trucks full of cash.

You may perhaps, in a merry mood, “Rock a fellow” — “rock” him, in this sense meaning to entertain him or absorb his attentions by use of contemporary upbeat rock and roll music or its derivaties — or as we northeastern urbanites might say, you might rock “a fella”; hence the name of the company. And it is hard not to suspect an allusion, based both on ironic association considering the countercultural nature of the works as well as with vast hordes of currency, to the name Rockefeller, the billionaire dynasty that, as is well known, controls everything, and whose name is arguably a “trademark” for immense wealth and power.  (UPDATE:  Jay-Z, in contrast, evidently cannot quite as readily as the Old Man could rock every fella as he might like to.) Read More…

Best of 2007: That’s a wrap

Published on April 16, 2007.

subway123Forget about the IP rights in those MTA symbols — you can probably use them however you want, now. (Remember to read my disclaimer on the right, though!)

10 Years of LIKELIHOOD OF CONFUSION®

10 Years of LIKELIHOOD OF CONFUSION®

Almost two years ago I expressed my skepticism about the (New York) Metropolitan Transportation Authority’s aggressive IP enforcement program focusing on the iconic train symbols of the New York City subway system.  [That post ended as follows]:

I also had a chance to reconsider the issue, and decided that — absent the establishment by Congress of some sort of “public trust trademark” amendment to the Lanham Act — these symbols are about as good a source indicator for a service as you can ask for. A D train goes on the D route on the D schedule. The E train, the F, the 1 the 2 and the 3 — completely arbitrary, yet packed with trademark goodwill. Very enforceable! That doesn’t mean there can’t be fair use, etc. — but prima facie, these would seem to be very good trademarks that designate very specific services boasting particular qualities.

Not any more: Read More…

Best of 2006: Starbucks — not a “preya” in Korea

Originally posted 2006-10-12 20:04:15. Republished by Blog Post Promoter

Starpreya Starbucks logos

The Korea Times reports that perpetual trademark litigation plaintiff Starbucks has lost two in a row to South Korea’s Elpreya company, which features a line of coffee utilizing the word STARPREYA and the above confusingly similar (says LIKELIHOOD OF CONFUSION®) logo.

10 Years of LIKELIHOOD OF CONFUSION®

10 Years of LIKELIHOOD OF CONFUSION®

No likelihood of confusion here? That’s bad enough. Evidently South Korea doesn’t have a trademark dilution statute, much less one like the new caffeinated version now ruling American symbology. If they had, they would have a slam donut-dunk on this claim — on paper, at least.

Read More…

GEICO Isn’t Good News for Google

Originally posted 2005-02-21 21:14:00. Republished by Blog Post Promoter

Geico logo with geckoRemember the GEICO v. Google case? My former law partner and long-time spouse Jane Coleman does. She’s writing a chapter on secondary trademark infringement liability for the second edition of a book on trademark counterfeiting now being edited by our colleague Brian Brokate, a partner at Gibney Anthony & Flaherty.  wrote the definitive reference work on secondary trademark infringement.  (Brian is one of the leading anti-counterfeiting lawyers in the country. )  Her conclusion is one that Google and its lawyers doubtless know well: Having no trademark monitoring policy may be trouble, but a little policing may be worse than none at all.

The standard is set by a leading case in this area, Inwood Labs. Under Inwood, in a contributory trademark infringement case, a court will find contributory liability if the defendant has either (1) intentionally induced a third party to infringe the plaintiff’s mark or (2) supplied a product to a third party with actual or constructive knowledge that the product is being used to infringe the mark. The GEICO lawsuit, like most such cases, is a Prong Two case.

So, on to Prong Two, then: supplying a product to a third party with knowledge that the product is being used to infringe the mark. Product? Here there is no product; Google provides a service. But based on the principles synthesized in a later decision, Lockheed Martin v. Network Solutions from what are known as the “flea market cases,” the second prong of this definition of contributory infringement can apply to services, too. Then the court applies a modified version of the Inwood standard: It considers the extent of monitoring and control the defendant has over the infringing activity.

So, what happened in the GEICO case? GEICO, a discount insurance company, sued Google for using GEICO’s trademarks to sell advertising on Google’s search engine, alleging contributory trademark infringement. Two practices of Google were at issue:

  1. The sale by Google of GEICO’s marks as search terms or “keywords,” and
  2. The advertisements or “sponsored links” which contained GEICO’s marks in their text, generated by customers who selected those terms.

Regarding the sponsored links, GEICO had argued earlier that Google was contributorily liable, saying, “the advertisers themselves [made] ‘trademark use’ of the GEICO marks by incorporating them into the advertisements, which are likely to deceive customers into believing that the advertisers provide accurate information about GEICO products or are somehow related to GEICO.” GEICO also claimed — remember the “direct control and monitoring” standard of Lockheed – that Google in fact exercised significant control over the content of advertisements that appeared on its search result pages.

Last December, Google asked the U.S. District Court to grant judgment as a matter of law in its favor. It argued that GEICO could not win its contributory liability claim, because it could not prove that “Google affirmatively encouraged or knowingly assisted in violation of trademark law by the alleged infringers.” Google urged that its own internal trademark enforcement policy bans the infringing advertisements at issue, though “some ads occasionally slip through.” It insisted that the “inability to achieve perfect enforcement of that policy” did not give rise to contributory liability, and that there was no evidence that Google condoned or encouraged infringement.

But this would only matter if Prong One — intentional inducement– were at issue. Apparently, it’s not. Google understandably would have the court focus on its good intentions, but this is a Prong Two case such as Lockheed – where, again, the courts ask whether the defendant exercises a level of monitoring and control that Google acknowledges it does effect via its trademark enforcement policy. Google’s argument regarding its internal trademark policing policy may, in fact, prove too much.

It’s not clear that Google can get out of responsibility for ads that “slip through,” given its awareness of the existence of infringing ads. If it can police a little, perhaps it can police a lot. Judge Brinkema’s oral opinion did not address this, but a final written decision by her or an appellate court might. [UPDATE: As of early May, there is still no written decision. It’s a good bet that there won’t be one and the parties will settle…]

The court granted in part and denied in part Google’s motion, allowing the case to go forward on the question of whether Google was contributorily liable for trademark infringement arising out of the sponsored advertisements containing GEICO’s marks. The incentive to settle is high — and maybe that’s why it’s so quiet.

This is why I have argued that auction websites (read: eBay) should be subject to contributory liability for the sale of counterfeit or other infringing merchandise — because they (and other web auctioneers) do have control over the auctions. Courts have repeatedly found contributory infringement where a defendant claims “willful blindness.” Well, it’s certainly a sort of willful blindness to do some kinds of monitoring and not others.

Would it add to the cost of search engines and auctions to do more policing? Yes, of course it would: More fighting over rent. Considering the profits involved, and the tremendous costs imposed on brand owners to try and keep up with counterfeits and online infringers, an outcome that required more policing to protect the IP that contributes to those profits doesn’t seem like an unreasonable one.