Just wanted to give a brief congratulations to my client, Next Generation Focus, Inc. (one of my pro bono clients through the Pro Bono Partnership of Atlanta). The registration for their SmarterMe program of academic enrichment for children was approved (Reg. No. 4044965). They’re a great organization, doing great things in the Atlanta metro area, and I’m happy that I was able to be a part of their operation, even if in just a small way on this trademark registration.
The crux of a trademark infringement claim is confusion: the unauthorized, complained-of use will cause, or already is causing, confusion. The purpose of a trademark infringement or domain name cybersquatting lawsuit is, therefore, to stop that confusion, or potential for confusion. But there is a recognized interest, in the US at least, in the value and utility of “free speech.” And so the question then becomes, to what extent can you refer to a trademark without express permission?
It’s quite appropriate, even in an obviously commercial context, to refer to a product for comparison purposes, for example, as in the case of a Coke TV commercial that claims it’s better than Pepsi. Car manufacturers do this a lot. Indeed,… Continue reading
First Descents, a nonprofit organization based in Colorado, has filed a trademark infringement lawsuit in federal district court over national retailer Eddie Bauer’s use/registration of the trademarks First Ascent and First Descent. A copy of the complaint is available here.
This case is interesting because First Descents owns the rights to use its mark on clothing and the like, and it would seem to be potentially confused with Eddie Bauer’s First Descent/First Ascent marks, if used on clothing. Interestingly, Eddie Bauer is apparently attempting to claim prior use through “tacking,” which is the legal process of “joining of consecutive periods of possession by different persons to treat the periods as one continuous period.” Black’s Law Dictionary, 9th Ed.… Continue reading
You’ve probably heard about the new top level domains that are going to be available for registration in the future, the “right of the dot” brand names, like .Canon, or .Coke, etc. But before that became a possibility, .XXX was approved for use (over much controversy) by the adult entertainment sector. As a condition of its approval, the registry approved to oversee .XXX domain name registrations was required to allow a sunrise period for trademark and service mark owners to apply to permanently* block their names from being used in a .XXX registration.
*Since the registry’s contract is only for 10 years, this blocking might have an expiration date, or at least a renewal date. But it’s likely that even… Continue reading
This question comes up pretty regularly, usually in the context of a small business owner who’s filed a trademark registration on their own, without consulting with a lawyer who handles this type of work. When the USPTO rejects the registration, often because there is another mark that uses similar or identical language in the same class of goods or services, then the person who filed for the mark is left scratching their heads and asking a few questions: “What does the rejection really mean? Can I still use the mark? Will I get sued if I do? Is it possible to convince USPTO that they were wrong to initially refuse?”
As with everything in the legal world, the answers are… Continue reading
With trademarks, typically the first to use the mark will have superior rights over any other, later parties who try to use the mark (or a similar mark). This is complicated a bit by registration and international law (or, more specifically, whatever the intellectual property laws are like in other countries).
For example, there’s been some press about Groupon’s advance across the globe, and how it hit a snag in Australia. There, a company snapped up some Australian country code domain names using the Groupon name, as well as an Australian trademark Groupon Pty Ltd. This forced Groupon to launch in Australia under a different name, and try to use the legal system to force the prior registrants to… Continue reading
What’s the biggest risk to small businesses in Georgia, and everywhere else?
In my opinion, the biggest risk to small businesses in Georgia and everywhere else is losing control of the business’s web site.
So much of today’s economy is built around the Internet, whether it’s for customer service and support or sales of products and services. Everyone uses the Internet to interact with the companies that they do business with. The worst thing from the company’s perspective is to hear a customer say “I couldn’t find your web site.”
And how could this happen? Here’s an all-too-common scenario for you to consider. The business could be of any type or size, really, from a small technology start-up to a… Continue reading
I actually recently used some online reviews in a case myself. I think their usefulness to document the way the public identifies a particular business can be incredibly helpful. The federal court for the Eastern District of Arkansas agrees:
U.S. District Court Judge Brian Miller in the Eastern District of Arkansas ruled that the 18-year-old national chain was likely to prevail in its trademark infringement claim because consumers were confused by the other “Chipotles,” which operated in Beebe and Jonesboro.
Critically, Miller ruled that posts on review sites “reflect confusion as to the ownership of defendants’ restaurants.”
Although the new top level domain names (newTLDs or nTLDs) haven’t yet been authorized by ICANN, things are headed in that direction, possibly this year. And despite the steep fees — as much as $180,000 just to apply — people are already lining up to try to be the lucky recipient of what could be a very lucrative registrar contract with ICANN, especially for the generic .___ domain names.
For example, .music. Constantine Roussos has apparently been saying he’s interested in registering .music since 2005. According to Domain Name Wire, he’s even publicly embarked on a mission of registering trademarks to (he hopes) support his registration request with ICANN. His recent attempt to register a .MUSIC design mark with… Continue reading
“Ken dumps Barbie” read the ads, which feature a picture of a frowning Ken doll, male companion to Mattel’s Barbie. Ken apparently did this because Mattel, maker of Barbie dolls, contributes to global deforestation, and Greenpeace isn’t happy about that. Greenpeace tried to run this ad, but it was rejected by Facebook:
Greenpeace seems to have a point. There is a concept akin to copyright’s fair use doctrine that relates to trademark use, although as always with trademarks, if there is evidence of confusion among the public, things start to go off the rails fast. Here’s what Greenpeace had to say about the Facebook takedown:
According to our legal analysis prior to the campaign, this complaint to Facebook that Greenpeace… Continue reading