Category Archives: Trademarks and Brands

U.S. Trade Representative names “notorious markets” for IP infringement

The Office of the U.S. Trade Representative periodically publishes a list of online and physical marketplaces that considers to be “notorious markets” for counterfeiting and intellectual property piracy.  On February 28, 2011 the USTR released its latest notorious markets report, which includes markets such as:

  • the number one-ranked website in China, which the report cites for enabling between 50 and 75 percent of all illegal music downloads in that country;
  • a Russian website that was formerly the world’s largest server-based pirate music website;
  • several Chinese B-2-B and B-2-C websites; and
  • physical markets in China, Russia, South America, Poland, the Czech Republic, Indonesia, the Philippines, Thailand, and India.

The USTR states that the purpose of the report is to “shine a light’ on the markets and to “urge[] the responsible authorities in these markets to intensify efforts to combat piracy and counterfeiting in these and similar markets, and to use the information contained in the Notorious Markets List to pursue legal actions where appropriate.”

Advanced IP Forum for Advertising Counsel scheduled for April 2011

The American Conference Institute is hosting new seminar that is tailored to help companies learn how to avoid advertising-related pitfalls that can weaken a company’s brand and expose the company to intellectual property litigation.  The new seminar, titled Advanced IP Forum for Advertising Counsel, will feature speakers from leading media and brand-driven companies, along with counsel who represent them.  Topics of the seminar will include:

  • strategies for resolving conflicts and avoiding patent litigation when advertising using new technologies;
  • sidestepping copyright landmines:  what the DMCA, YouTube and Hulu mean to brand media strategies;
  • licensing negotiation strategies for new media; and
  • best practices for combatting widespread IP infringement on the Internet.

The seminar will be held in New York City on April 27-28, 2011, with optional workshops on April 29.  (Full disclosure:  I am one of the speakers at the seminar.  I will discuss strategies for avoiding patent infringement claims when using new advertising technologies.) 

For more details, visit the ACI website.  Early bird registration pricing is available through February 28.

Football and IP

This weekend’s Super Bowl provides an opportunity to review some of the past year’s interesting developments relating to the National Football League and intellectual property:

1.  Titlecraft v. NFL:  wooden Lombardi trophy replicas infringe NFL copyright.

In Titlecraft Inc. v. National Football League (D. Minn. Dec. 20, 2010) the NFL and NFL Properties sued Titlecraft, a manufacturer of custom wooden trophies.  Titlecraft made wooden replicas of the Vince Lombardi trophy.  The Lombardi trophy is a silver statue made by Tiffany & Co. that is awarded to each year’s Super Bowl champion; Titlecraft’s trophies were small wooden replicas that were sold to fantasy football leagues for honoring their own champions. 

Finding that (i) the NFL had a valid copyright registration for the Lombardi trophy; (ii) Titlecraft had access to the Lombardi trophy; and (iii) the two trophies were substantially similar, the court granted summary judgment for copyright infringement in favor of the NFL.  Although Titlecraft pointed to minor differences in size, angles, and texture, the court stated that “‘if it walks like a duck, quacks like a like and looks like a duck, it has got to be a duck’ – or in this case a copy.” 

2.  Who dat say dey gonna own dem trademarks?

When the New Orleans Saints reached the Super Bowl in 2010, the NFL sent cease-and-desist letters to several Louisiana merchants, demanding that they stop selling Continue reading

USPTO to open Detroit regional office in 2011

IP Watchdog is reporting that the United States Patent and Trademark Office plans to open a regional office in Detroit, Michigan next year.   According to the report, the agency’s goal is to employ 100 patent examiners in the Detroit office by summer 2011.  More details are available from the IP Watchdog website.

UPDATE:  In an April 21, 2011 message, USPTO Director David Kappos announced that plans for the Detroit satellite office would be tabled due to congressional appropriations cuts for the USPTO.

Court ruling shows risk of “naked license”

When licensing your trademarks to others, it’s important to carefully draft the license agreement or you could end up giving away — or even losing — your trademark rights.  “Naked licensing” occurs when a trademark holder licenses its trademark to another party without exercising adequate quality control over the licensee.   When a licensor fails to exercise adequate quality control, a court may find that the trademark holder abandoned the trademark.  The practical effect of naked licensing may prevent the owner from asserting rights in the trademark in the future.

In FreeCycle Sunnyvale v. The FreeCycle Network (9th Cir. Nov. 24, 2010), the court considered a license agreement in which a recycling organization – The FreeCycle Network (TFN) – coordinated a network of local groups that promote recycling by giving unwanted items away so that others can use them.   A local group in Sunnyvale, California formed FreeCycle Sunnyvale and received permission to use TFN’s trademarks via an email.  The email correspondence was sparse, and the only express restriction was that the Sunnyvale group could not use the marks for commercial purposes.  Two years later, TFN ordered the Sunnyvale group to stop using the mark, and litigation ensued.

The Court found that TFN’s license was a “naked license” because Continue reading

How long does patent and trademark prosecution take? (2010 update)

Each year on this blog I’ve addressed a question that patent and trademark applicants commonly ask:  “how long will it take for my application to grant?”   Each year, the USPTO issues a report with statistics that help answer this question.  Key statistics for the USPTO’s 2010 fiscal year are found in the FY 2010 Performance and Accountability Report, and are summarized below

Patents:  The average time between filing and first Office Action is 25.7 months, while the average total pendency (i.e., time from the filing date to patent issuance or abandonment) is 35.3 months.  The average total pendency increased again this year, just as it has since at least 2005.   However, the time to first Office Action remained relatively constant when compared to 2009 data. Continue reading

European General Court finds Lego brick shape not eligible for trademark registration

For several years, Lego Juris A/S has sought trademark registration for the shape of its signature brick.   

Lego block

Those efforts hit the figurative brick wall last month when the European Advocate General of the Grand Chamber affirmed a lower court’s decision invalidating registration of the Lego brick mark as a Community Trade Mark.  In 1996, Lego’s predecessor applied to register the mark and succeeded.  However, in 1999 the predecessor of Mega Brands sought a declaration that the Lego brick trademark was invalid on the basis that it represented a shape of goods that is “necessary to achieve a technical result”, for which registration is prohibited under Article 7(1)(e)(ii) of Regulation 40/94.  The Cancellation Division granted this request and cancelled the registration.

On appeal, the Grand Board affirmed, stating that the Lego shape was a technical solution and thus “capable of protection only for a limited period” such as under patent law. 

In the United States, Lego has taken a different approach to protect its brick shape.  Rather than focusing on trademark protection for the toys, Lego’s recent U.S. trademark applications for the brick shape cover Lego’s other goods and services, including clothing, theme park services, retail store services, and commemorative books.  In August 2010, the USPTO indicated that this registration would be allowable and published the application for opposition.  Lego’s actions in the U.S. illustrate that trademark owners may have several avenues to consider when protecting a mark.  The avenue ultimately selected may depend on both business goals and the likelihood of success of each option.

World Trademark Review survey seeks input on how industry is preparing for new generic top-level domains

World Trademark Review seeks participants for an online survey about  how industry is preparing for new generic top-level domains (gTLDs).  According to Adam Smith of WTR:

It is now almost certain that new gTLDs will launch.  So the trademark community is best advised to stop trying to improve the policy and focus instead on strategy.  External counsel must work out how to build business models around new gTLDs.  Meanwhile, brands must answer much more than the question of whether or not to apply to run a new gTLD registry; they must plan how to react to new spaces on the internet, how to restructure their internal teams accordingly and how to continue building and protecting their brand online.

This is what WTR‘s extensive new survey will uncover.  Open not only to WTR subscribers, the study will collect opinions from the widest respondent base ever consulted on gTLD strategy.  We’ll test the levels of awareness and understanding of this significant development and find out exactly how different organisations are preparing for it.  This research is an editorial, not a commercial, endeavour.  The results will be independent and therefore to the benefit of industry as a whole.

To participate in the study, click here now.  The survey will be available through September 15, 2010.

“Use in commerce” under trademark law requires sale or transport of goods; mere press releases not enough, says Eighth Circuit

IP attorneys recognize that “use in commerce” is an critical aspect of trademark law.  In order to obtain federal trademark registration, 15 U.S.C. 1051 states that the registrant must demonstrate use of the mark in commerce.  In addition, to impose liability for infringement the plaintiff must show that the infringer is using mark in commerce in an infringing manner.

The U.S. Court of Appeals for the 8th Circuit recently ruled that use of a trademark in press releases, industry statements and presentations was not sufficient to establish “use in commerce” under the Lanham Act.  

In Sensient Technologies Corp v SensoryEffects Flavor Co. (No. 09-2686, 7/21/2010), both the plaintiff and the defendant sold flavor delivery systems to food and beverage suppliers.  The defendant, as part of a rebranding initiative, used the mark “SensoryFlavors” in a press release announcing a corporate acquisition.  It also used the “SensoryFlavors” mark in letters to various contacts in the food industry, as well as in two customer presentations.  The plaintiff sued, contending (among other things) that the “SensoryFlavors” mark infringed the plaintiff’s “Sensient Flavors” trade name.

The district court issued a preliminary injunction against the defendant’s use of the mark, but granted summary judgment in favor of the defendant and dismissed the remainder of the case because defendant had no “use in commerce” of the mark.  The Eighth Circuit affirmed, stating that plantiff had “fail[ed] to show evidence of any sale or transport of goods bearing the SensoryFlavors mark.” 



Mission: Intangible

The Intangible Asset Finance Society recently published Mission: Intangible, a book that advocates the careful stewardship of corporate reputation.   Authored by IAFS Executive Secretary Nir Kossovsky with Todd Miller, the book explains how corporate stock prices and revenues are driven by effective risk management practices, ethical operating principles, quality assurance procedures, and safety and security practices. 

The book contains many examples of best practices — and big mistakes — relating to the protection of consumer goodwill.  From Johnson & Johnson’s weathering of malicious tampering with its Tylenol product, to the demise of Chi-Chi’s Restaurants after it failed to recover from a tragedy caused by tainted tomatoes, the book’s case studies serve as a useful guide for corporate executives who are charged with reputation and crisis management.

One practice that the book advocates is that companies adopt the examples of H.J. Heinz and Disney and create a position of Chief Reputation Officer.  The CRO will oversee a variety of functions relating to risk management, markeiting, law, and security.  For more details, read the book, which is available here.