Pattishall IP Blog

March 25, 2014

Lexmark Case Decided – U.S. Supreme Court Creates New Standard for False Advertising Claims

Filed under: Advertising, Trademark (General) — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 5:45 pm

Widmaier_Uli_1 F LRBy: Uli Widmaier

In Lexmark Int’l, Inc., v. Static Control Components, Inc., No. 12-873 (March 25, 2014), the U.S. Supreme Court held that a party alleging false advertising under Section 43(a) of the Lanham Act, 15 U.S.C. Sec. 1125(a), must show “an injury to a commercial interest in sales or business reputation proximately caused by the defendant’s misrepresentations.”

This holding creates a new standard for false advertising claims and invalidates familiar legal doctrine.

THE FACTS OF THE CASE
Lexmark, the defendant in this lawsuit, manufactures laser printers and sells toner cartridges for these printers. Static Control, the plaintiff, makes components for remanufacturers of Lexmark printer cartridges.
Static Control had alleged “lost sales and damage to its business reputation” as a direct result of Lexmark’s false, misleading, and derogatory statements about Static Control and its clients, the remanufacturers of Lexmark toner cartridges.

THE LAW PRIOR TO LEXMARK
U.S. courts had long used “three competing approaches to determining whether a plaintiff has standing to sue [for false advertising] under the Lanham Act.” A plaintiff who did not have the requisite standing could not bring a false advertising claim.

The Supreme Court rejected each of these tests. They are no longer valid law.

THE NEW LAW
In Lexmark, the Supreme Court held that a plaintiff’s ability to sue for false advertising is no longer a question of “standing.”

Rather, it “presents a straightforward question of statutory interpretation: Does the cause of action in Sec. 1125(a) extend to plaintiffs like Static Control?” Put another way, the question is “whether Static Control falls within the class of plaintiffs whom Congress has authorized to sue under Sec. 1125(a).”‘

The courts must answer this question by considering two factors: (a) the zone of interests protected by the law invoked, and (b) proximate cause.

(a)    Zone of Interests – For the zone of interests inquiry, the Supreme Court held that the plaintiff must allege and prove “an injury to a commercial interest in reputation or sales.”

This requirement is not met by “a consumer who is hoodwinked into purchasing a disappointing product,” or by “a business misled by a supplier into purchasing an inferior product.”

(b)    Proximate Cause – For the proximate cause inquiry, the Supreme Court held that the plaintiff must allege and prove “economic or reputational injury flowing directly from the deception wrought by the defendant’s advertising; and that occurs when deception of consumers causes them to withhold trade from the plaintiff.”

This requirement is not met “when the deception produces injuries to a fellow commercial actor that in turn affect the plaintiff.”

APPLYING THE NEW LAW TO STATIC CONTROL’S FALSE ADVERTISING CLAIM

(a)    Zone of Interests – Static Control alleged that its “position in the marketplace has been damaged by Lexmark’s false advertising.” Therefore, the Supreme Court held, Static Control is “within the zone of interests” protected by Section 43(a) of the Lanham Act.

(b)    Proximate Cause – Static Control also satisfied the proximate cause requirement because it alleged “that Lexmark disparaged its business and products by asserting that Static Control’s business was illegal.” As the Supreme Court explained, “when a party claims reputational injury from disparagement, competition is not required for proximate cause; and that is true even if the defendant’s aim was to harm its immediate competitors, and the plaintiff merely suffered collateral damage.”

In addition, Static Control’s specific business model supported a finding of proximate cause. Static Control’s products “both (1) were necessary for, and (2) had no other use than, refurbishing Lexmark toner cartridges.” Therefore, any false advertising directed at remanufacturers of Lexmark toner cartridges “necessarily injured Static Control as well.”

The Supreme Court noted that its approval of Static Control’s false advertising claim extends only to Static Control’s allegations. Static Control still has to prove both the zones of interest element and the proximate cause element of its Section 43(a) claim with factual evidence.

EDWARD S. ROGERS AND THE MEANING OF “UNFAIR COMPETITION”
The term “unfair competition” does not mean that the plaintiff and the defendants must actually be competitors.

To drive home that oft-misunderstood point, the Supreme Court quoted a 1929 (!) article in the Yale Law Journal by the drafter of the Lanham Act and former name partner of the Pattishall law firm, Edward S. Rogers. Rogers – whom the Supreme Court calls a “leading authority in the field” – put the matter memorably: “There need be no competition in unfair competition, just as there is no soda in soda water, no grapes in grape fruit, no bread in bread fruit, and a clothes horse is not a horse but is good enough to hang things on.”

In other words, it is a mistake, explained the Supreme Court, “to infer that because the Lanham Act treats false advertising as a form of unfair competition, it can protect only the false-advertiser’s direct competitors.”

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Uli Widmaier is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois. Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals. The firm advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues. Uli’s practice focuses on domestic and international trademark, copyright, trade dress and Internet law and litigation.

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February 7, 2014

Utilitarian Shape of Hookah Not Subject to Copyright Protection, Even if Distinctive, Ninth Circuit Holds

Filed under: Copyright, Litigation — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:27 pm

SIA-LRBy: Seth I. Appel, Associate

Inhale Inc.’s efforts to protect the shape of its hookah under copyright law went up in smoke, as the Ninth Circuit affirmed summary judgment in favor of Starbuzz Tobacco, Inc.  Inhale, Inc. v. Starbuzz Tobacco, Inc., 739 F.3d 446 (9th Cir. 2014).[1]

Inhale, a designer and manufacturer of smoking products, sold the hookah[2] shown below:

Hooka

It obtained a U.S. copyright registration for this product.

Inhale sued Starbuzz for copyright infringement in the U.S. District Court for the Central District of California, alleging that Starbuzz sold a similar hookah.  Inhale’s claim was based entirely on the shape of Starbuzz’s hookah.  For purposes of the lawsuit, Inhale disclaimed copyright protection to the skull-and-crossbones graphic.

The district court granted Starbuzz’s motion for summary judgment in 2012, holding that Inhale did not own a valid copyright in the shape of its hookah, notwithstanding its registration.  Last month the Ninth Circuit Court of Appeals affirmed.

The Copyright Act generally protects “original works of authorship,” including sculptural works.  But it does not protect “useful articles.”  Under the Copyright Act, a “useful article” is “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.”  17 U.S.C. § 101.

Individual design elements of a useful article may be subject to copyright protection, to the extent that they “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”  17 U.S.C. 101.  Such protectable elements may be either physically separable or conceptually separable.

Inhale argued that the shape of its hookah was conceptually separable from its utilitarian features, but the Ninth Circuit disagreed.  It explained:  “The shape of a container is not independent of the container’s utilitarian function—to hold the contents within its shape—because the shape accomplishes the function.”  739 F.3d at 449.

The court, citing Copyright Office practice, rejected Inhale’s contention that the distinctiveness of the hookah shape affected the separability analysis.  The court observed:

Although Inhale’s water container, like a piece of modern sculpture, has a distinctive shape, “the shape of the alleged ‘artistic features’ and of the useful article are one and the same.”

739 F.3d at 449 (quoting Compendium of Copyright Office Practices II, § 505.03).

The Ninth Circuit also affirmed the district court’s award of attorneys’ fees to Starbuzz under 17 U.S.C. § 505, and further awarded Starbuzz its attorneys’ fees on appeal.

The Ninth Circuit’s decision is a blow to producers of creative works that have utilitarian functions, including other sculptural works such as bottles and vases.  In view of this decision, it may be harder for such entities to address copying by competitors – at least under copyright law.

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Seth I. Appel is an associate attorney at Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Mr. Appel’s practice focuses on litigation, transactions, and counseling with respect to trademark, trade dress, copyright and Internet law.


[1] http://scholar.google.com/scholar_case?case=621471655821174883

[2]A hookah is a device for smoking tobacco, in which the smoke passes through a water basin, which filters and cools the smoke before it is inhaled by the user.  See http://en.wikipedia.org/wiki/Hookah.

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January 17, 2014

CrossFit Cybersquatter Gets Dealt Multiple Blows

Filed under: Cybersquatting, Domain Name, TM Registration — Tags: , , , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 2:52 pm

Paul Borovay F LRBy Paul A. Borovay, Associate

In CrossFit, Inc. v. Results Plus Personal Training Inc, the panel held that an unsubstantiated “consent to transfer” will not avoid an adverse ruling.  National Arbitration Claim Number: FA1305001498576 (June 28, 2013).  The domain names at issue were <crossfitagawam.com>, <crossfitansonia.com>, <crossfitbeaconfalls.com>, and many other “crossfit”-derivative .com domain names referring to different cities across the United States.

CrossFit, Inc. provided workout and gym products and services.  Its revenue mainly came from licensing its registered CROSSFIT marks and programs to affiliate gyms around the country.  Typically the affiliate would register a “crossfit” domain name that included a geographic designator, e.g., crossfitboston.com.  The Respondent, Results Plus Personal Training Inc., was a competitor of Crossfit.  It registered 113 domain names, most of which “do nothing but add the name of a famous or popular city [to] the CrossFit mark.”  Most were used for parked web pages, often with advertising hyperlinks for Respondent and other competitors.  The panel found that Respondent registered that large amount of domain names “to resell them exclusively to Complainant and its affiliates.”  It was a “bad faith endeavor to confuse Internet users into believing Complainant or its CrossFit mark is at the source of the content, all so Respondent can advance its goals to generate revenue.”

Results Plus argued that GoDaddy.com led it to believe that it could legally register and use these domain names in the manner that it did.  Although CrossFit had filed a federal court action seeking $9 million in damages, the Panel determined that it retained authority to proceed to decision.  To avoid an adverse ruling, Results Plus offered to transfer the domain names to Crossfit on the condition that Crossfit pay Results Plus $1,300, which Results Plus argued was “far less” than it had spent maintaining the 113 domain names.

The Panel observed that an effective consent to transfer does not ordinarily arise when the transfer is subject to the condition precedent of a markholder’s payment of fees. The Panel found that Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain names without a decision on the merits by the Panel.  The Panel observed that this “consent-to-transfer” approach was one way cybersquatters tried to avoid adverse holdings, but it normally was ineffective, especially when the alleged “consent” required the transfer of money to the respondent.  The Panel ultimately found that Results Plus did not have any legitimate interest in the disputed domain names and had acted in bad faith, and ordered the domain names transferred to Cross Fit.

This case highlights that trademark owners can bring an action to transfer  multiple infringing domain names from a single cybersquatter under the Uniform Domain-Name Dispute Resolution Policy (commonly referred to as “UDRP”).  The UDRP sets forth the grounds on which arbitrators base their decisions, but there are several different dispute resolution forums from which to choose, all with their own local rules, procedures and leanings.  While I do not practice CrossFit myself, I know a good 1-2 punch when I see one – and, for now, Results Plus is down for the count.

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Paul A. Borovay is an associate with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.   Paul’s practice focuses on litigation in trademark, media, online gaming and entertainment, advertising, as well as trademark prosecution and counseling.

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January 15, 2014

Ninth Circuit Declares GoDaddy Not Contributorily Liable For Cybersquatting

Filed under: Cybersquatting, Domain Name, TM Registration — Tags: , , , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 1:08 pm

Paul Borovay F LRBy Paul A. Borovay, Associate

In December, the Ninth Circuit held that the Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d), does not support a cause of action for contributory cybersquatting.  Petroliam Nasional Berhad v. GoDaddy.com, Inc., 737 F.3d 546, 548 (9th Cir. 2013).[1]

Petrolium Nasional Berhad (Petronas), a major oil and gas company with its headquarters in Kuala Lumpur, Malaysia, owns the trademark PETRONAS.  In 2009, Petronas discovered that a third party had registered the domain names “petronastower.net” and “petronastowers.net.”  The third party then used GoDaddy’s domain name forwarding services to forward visitors of the two domain names to a pornographic web site. GoDaddy took no action against the alleged cybersquatting, claiming that (1) it did not host the site; and (2) it was prevented by the Uniform Domain Name Dispute Resolution Policy (“UDRP”) from participating in trademark disputes regarding domain name ownership.  Id. at 548.

Petronas sued GoDaddy in the United States District Court for the Northern District of California on a number of theories, including cybersquatting under 15 U.S.C. § 1125(d), and contributory cybersquatting. Following limited discovery, the district court granted summary judgment in favor of GoDaddy. Petroliam Nasional Berhad v. GoDaddy.com, Inc., 897 F. Supp. 2d 856 (N.D. Cal. 2012) aff’d, 737 F.3d 546 (9th Cir. 2013).  Petronas appealed only with respect to its claim of contributory cybersquatting.

The Ninth Circuit defined cybersquatting as “registering a domain name associated with a protected trademark either to ransom the domain name to the mark holder or to divert business from the mark holder.” Petroliam, 737 F.3d at 550 n. 3 (citing Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672, 680 (9th Cir.2005)).  Under the ACPA, a person may be civilly liable “if … that person has a bad faith intent to profit from that mark … and registers, traffics in, or uses a [protected] domain name.” 15 U.S.C. § 1125(d)(1)(A). Petronas argued that the ACPA provided for a cause of action for contributory cybersquatting, claiming that “Congress intended to incorporate common law principles of secondary liability into the Act by legislating against the backdrop of the common law of trademark infringement and by placing the ACPA within the Lanham Act.”  Petroliam, 737 F.3d at 550.  The Ninth Circuit disagreed.

Beginning its analysis with the text of the ACPA, the Ninth Circuit noted that the ACPA imposes civil liability for cybersquatting on persons that “register[ ], traffic[ ] in, or use[ ] a domain name” with the “bad faith intent to profit” from that protected mark. 15 U.S.C. § 1125(d)(1)(A). The plain language of the statute thus prohibits the act of cybersquatting, but limits when a person can be considered to be a cybersquatter. Id.  Taking notice that the statute makes no express provision for secondary liability, the Ninth Circuit held that “[e]xtending liability to registrars or other third parties who are not cybersquatters, but whose actions may have the effect of aiding such cybersquatting, would expand the range of conduct prohibited by the statute from a bad faith intent to cybersquat on a trademark to the mere maintenance of a domain name by a registrar, with or without a bad faith intent to profit.” Petroliam, 737 F.3d at 550-51.

Petronas then argued that Congress incorporated the common law of trademark, including contributory infringement, into the ACPA, citing a number of district courts decisions that relied on that reasoning in finding a cause of action for contributory cybersquatting. See Verizon Cal., Inc. v. Above.com Pty Ltd., 881 F.Supp.2d 1173, 1176–79 (C.D.Cal.2011); Microsoft Corp. v. Shah, No. 10–0653, 2011 WL 108954, at *1–3 (W.D.Wash. Jan. 12, 2011); Solid Host, NL v. Namecheap, Inc., 652 F.Supp.2d 1092, 1111–12 (C.D.Cal.2009); Ford Motor Co. v. Greatdomains.com, Inc., 177 F.Supp.2d 635, 646–47 (E.D.Mich.2001).[2]  Again, the Ninth Circuit was not persuaded, holding that the “circumstances surrounding the enactment of the ACPA [. . . ] do not support the inference that Congress intended to incorporate theories of secondary liability into that Act.”  Distinguishing between the Lanham Act’s codification of unfair competition and common law trademark infringement and the ACPA, the Ninth Circuit stated that claims under traditional trademark law and the ACPA have distinct elements. Petroliam, 737 F.3d at 552  (for example, under the ACPA a mark holder must prove “bad faith,” which is not a requirement under traditional trademark infringement claims, and cybersquatting liability, unlike traditional trademark infringement, does not require commercial use of a domain name).[3]  As a consequence, the Ninth Circuit held that the ACPA simply created a new statutory cause of action to address the new cybersquatting problem and that imposing secondary liability on domain name registrars would unnecessarily expand the scope of the ACPA.

The Ninth Circuit’s decision was not surprising.  The purpose of the ACPA and the UDRP is to provide trademark owners with a remedy against those actively using their trademarks in “bad faith.”  As a domain name forwarding provider, GoDaddy simply did not meet the explicit definition of a “cybersquatter.”  Consequently, trademark owners must use the tools the ACPA and the UDRP provide to go after those the ACPA defines as liable, that is, the cybersquatters themselves.[4]

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Paul A. Borovay is an associate with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.   Paul’s practice focuses on litigation in trademark, media, online gaming and entertainment, advertising, as well as trademark prosecution and counseling.


[2] The Ninth Circuit commented that some of these district courts that recognized a cause of action for contributory liability required that a plaintiff show “exceptional circumstances” in order to hold a registrar liable under that theory. See Above.com Pty Ltd., 881 F.Supp.2d at 1178; Shah, 2011 WL 108954, at *2; Greatdomains.com, Inc., 177 F.Supp.2d at 647. The Ninth Circuit noted that the “exceptional circumstances” test has no basis in either the Act, or in the common law of trademark. Petroliam Nasional Berhad v. GoDaddy.com, Inc., 737 F.3d 546, 553 (9th Cir. 2013).  Rather than attempt to cabin a judicially discovered cause of action for contributory cybersquatting with a limitation created out of whole cloth, the Ninth Circuit explicitly declined to recognize such a cause of action in the first place.  Id.

[3] As a practical point, the Ninth Circuit noted that GoDaddy, a registrar holding over 50 million domain names, would have to presumably analyze its customer’s subjective intent with respect to each domain name, using the nine factor statutory test outlined in 15 U.S.C. § 1125(d)(1)(B).  Moreover, domain name service providers would then be forced to inject themselves into trademark and domain name disputes. which is contrary to the purpose of the ACPA and the UDRP. Petroliam Nasional Berhad v. GoDaddy.com, Inc., 737 F.3d 546, 549-54 (9th Cir. 2013).

[4] UDRP proceedings are a cost-effective means to protect your trademark online and to keep third parties from diverting people from your legitimate websites and siphoning off ad revenue.

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January 10, 2014

Kanye West Sends Cease and Desist Letter to Stop New COINYE WEST Virtual Currency

Filed under: Cybersquatting, Domain Name, TM Registration — Tags: , , , , , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 12:01 pm

Paul Borovay F LRBy Paul A. Borovay, Associate

Whether you are in the Yeezus camp or the My Beautiful Dark Twisted Fantasy camp, or even if either of those references mean nothing to you, you might still be interested to know that a new currency is in development – in a few days we will all be able to own some COINYE WEST.  Or will we?

As the Wall Street Journal first reported, Kanye West has tried to stop seven anonymous coders behind a new virtual currency called COINYE WEST, similar to bitcoin.  Not surprisingly, Kanye West, by and through his attorneys, has claimed trademark infringement, unfair competition, cyberpiracy and dilution.  You can read the cease and desist letter here.  While the company has changed its domain name from coinyewest.com to coinyeco.in, the coders launched their site on January 7.

West has built a music empire on his KANYE WEST brand, a brand that, according to West’s interview with BBC Radio 1, is the most influential in the world.  As if being the “number one rock star on the planet” was not enough, West’s “I am a God” statement truly makes him a being to reckon with.

While West might be a bit high and mighty (pun intended), he does understand the importance of protecting his brand.  This situation highlights the cross section between trademark rights and the new and evolving internet frontier.  First it was domain names, then came AdWords, and now crypto currency.  While COINYE WEST might face an uphill battle if the case proceeds to court, similar disputes are certain to arise as new technologies develop.  At Pattishall, we strive to stay on the forefront of emerging technologies.  And, while I may not be in the market for any COINYE in the near future, I will be ready to purchase some KARDASH-CASH if Kim Kardashian ever makes any available.[1]

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Paul A. Borovay is an associate with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.   Paul’s practice focuses on litigation in trademark, media, online gaming and entertainment, advertising, as well as trademark prosecution and counseling.


[1] KARDASH-CASH is not a real trademark, nor is it a real currency.  I just made it up for fun.

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January 8, 2014

Who is Johnny Football?

Filed under: Licensing, TM Registration — Tags: , , , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 11:28 am

Paul Borovay F LRBy Paul A. Borovay, Associate

Unless you have turned a blind eye to all sports over the last two years, there is a good chance that you have heard of Johnny Manzeil, the talented (and polarizing) quarterback from Texas A&M.   Manzeil was the first freshman football player to win the Heisman trophy, and he won it in style.  During his rise to the college football elite, he, like many athletes before him, received a nickname from the media: Johnny Football.  While NCAA amateurism rules kept Manzeil from profiting from his name and likeness during his collegiate sports career, those same rules did not keep the media and other private companies from making money on selling merchandise bearing the mark JOHNNY FOOTBALL.

In November 2012,  Kenneth R. Reynolds Family Investments (“Reynolds Investments”) filed an intent to use trademark application for JOHNNY FOOTBALL, which covered electronic games, athletic apparel and footballs.  Ser. No. 85/769,563.  Not surprisingly, Manzeil, submitted a Letter of Protest against Reynolds Investments’ application, claiming that JOHNNY FOOTBALL identifies a particular living individual and Reynolds Investments’ application failed to include Manzeil’s consent.

After receiving the Letter of Protest, the Examiner for this trademark application rescinded his approval of the trademark application and, on August 16, 2013, requested that Reynolds Investments submit a  the written consent of Mr. Manzeil to use his “name.”  The consent requirement includes any pseudonym, stage name or nickname, or signature, if the name or signature identifies a particular living individual.  Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §§813, 1206.04(a). Reynolds Investments has until February 16, 2014 to respond.

This situation is similar to that of Anthony Davis, the Kentucky basketball star and the NBA’s number one draft pick in 2012.  There, BlueZone, LLC, a local clothing store in Lexington, Kentucky, began selling T-Shirts and jerseys with the mark FEAR THE BROW.  The “brow” for which people should fear was actually Davis’ unibrow – a distinguishing feature that Davis wholeheartedly embraced.  To secure its rights in the mark, BlueZone applied for the trademark FEAR THE BROW.  Ser. No. 85/643,417.  Similarly, Davis contested the mark and filed his application for FEAR THE BROW.  Ser. No. 85/643,417.  BlueZone ultimately abandoned its application.

Like Davis’ situation, Manzeil technically remains second in priority for the mark JOHNNY FOOTBALL because he filed his trademark application in February 2013.    However, without Manzeil’s consent, Reynolds Investments will likely have no choice but to abandon its application, giving Johnny Football himself the right to finally make money off of JOHNNY FOOTBALL the trademark.

Davis and Manzeil, while stars in their own right, highlight a revenue stream that many athletes have yet to fully exploit.  As media licensing agreements and mobile advertising dollars increase exponentially, so to can athletes’ endorsements contracts.  If athletes protect their brands and build them properly, these endorsements will continue long after his or her professional career is over.  Athletes, now more than ever, need to actively manage their brands, which will ultimately ensure that Johnny Football profits from being “the” JOHNNY FOOTBALL and that Anthony Davis reaps the rewards of keeping the best kempt unibrow in the NBA.

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Paul A. Borovay is an associate with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.   Paul’s practice focuses on litigation in trademark, media, online gaming and entertainment, advertising, as well as trademark prosecution and counseling.

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November 22, 2013

“THANKSGIVUKKAH” Convergence of Thanksgiving and Hanukkah—The Latest Pop Culture Trademark Sensation

Filed under: TM Registration, Trademark (General), Uncategorized — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 10:54 am

By Belinda Scrimenti, Partner

Many media outlets are asking:  Where is Adam Sandler when you need him?[1]  His well-known Hanukkah Song is due for a new verse that celebrates a hot new holiday “trademark.”

Popular culture events frequently are reflected in trademark filings.  The latest:  “THANKSGIVUKKAH” – This year’s rare convergence of Thanksgiving with the first full day of Hanukkah.   According to reports, the last time the overlap occurred was in 1888, and physicist Jonathan Mizrahi has calculated that the event will not occur for another 79,000 years.[2]

Indeed, this “once-in-eternity” event has brought a “cornucopia of money-making” opportunities as described by USA Today.[3]  And where there’s a money-making opportunity, there must be a trademark.

Reportedly, the “Thanksgivukkah” term was coined by a Boston resident, Dana Gitell,[4] who had the foresight to protect the mark by obtaining trademark registrations for the term, in Class 16 for greeting cards and other party goods, and in Class 25 for t-shirts and baby garments.  The applications, based on a stated first use date of December 3, 2012, were filed one day later, but nearly a year before the 2013 holiday.[5]

In another oft-reported story, a 9-year-old New York boy, Asher Weintraub, “invented” the “Menurkey” – a turkey-shaped menorah – and with his parents’ help, raised more than $48,000 on Kickstarter for the product.[6]   They have already filed for a federal trademark registration.[7]

Anxious to get in on the “Thanksgivukkah” trademark action?  Despite many media references to “Gobble tov,” as of this writing nobody has sought to register a trademark for it.  Also available:  “Hanu-Giving” and “Challahday Greetings,” the latter of which was first registered back in 1985 and has long since expired.

The trademark office is often a reflection of popular culture, but not surprisingly, many of these marks either never make it to registration, or are quickly forgotten and abandoned.  Government and historical events often spawn these filings.   For example, seven applications have been filed that incorporate the term “Obamacare” – mostly related to insurance services.  Three have already been abandoned, and four have pending office actions.  Nevertheless, this volume of filings pales in comparison to the adoption of other government catchphrases.

Remember the Iraq War’s “Shock & Awe”?  Within hours and days following the initial attack on Baghdad, applications for “SHOCK & AWE” in various formulations started flooding in to the USPTO.  Not counting applications for other marks incorporating the terms, 36 “SHOCK & AWE” applications were filed for everything from golf clubs to pesticides, lingerie to fireworks, and even “infant action crib toys.”  Of that, only four were eventually registered and remain on the register today.

During the same period, the ire over France’s lackluster support of the United States in the Iraq War led to another pop culture trademark spat.  French fries became “Freedom Fries.”   Within 60 days of the controversy, six companies sought to obtain a trademark registration for the term, and one tried two years later.  The first user of the mark ultimately prevailed in the registration battle, but years later, allowed the registration to go abandoned for failure to file the Section 8 maintenance declaration.[8]

The king of pop culture filings, however, occurred at the 2000 year millennium.  USPTO records reflect over 320 filings for trademarks incorporating the term “Y2K.”  Of that number, only 27 ultimately registered.  Today, only one registration remains on the register – for business consulting and information services.[9]

In contrast, the USPTO records may well be a good barometer of what is highly unpopular in the United States – as no one sought to register “FISCAL CLIFF,” “DEBT CEILING” or “GOVERNMENT SHUTDOWN”!

With no threats of the fiscal cliff, debt ceiling negotiations or a government shutdown hanging over the month of November, that brings us back to Thanksgiving.  A far more enjoyable government event remains free of trademark interlopers – no one has applied to register “TURKEY PARDON.”

*          *          *

Belinda Scrimenti is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.   Belinda’s practice focuses on litigation in trademark, copyright, trade dress, and Internet law, as well as trademark prosecution and counseling.  She has worked on numerous matters relating to the registration, protection, and enforcement of trademarks, and litigated in over 40 U.S. federal district courts.

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[1] See, e.g., http://www.miamiherald.com/2013/11/12/3748399/this-year-thanksgiving-hanukkah.html; http://mainstreetmusingsblog.com/2013/11/04/thanksgiving-and-hanukkah-makes-thanksgivukkah/; http://www.kansascity.com/2013/11/11/4614193/this-year-thanksgiving-hanukkah.html
[2]
http://jonathanmizrahi.blogspot.com/2013/01/hanukkah-and-thanksgiving-once-in.html; see http://bigstory.ap.org/article/gobble-tov-american-jews-ready-thanksgivukkah
[3] http://www.usatoday.com/story/news/nation/2013/11/14/thanksgivukkah-products/3516299/
[4] http://en.wikipedia.org/wiki/Thanksgivukkah#cite_note-22
[5] See U.S. Registration Nos. 4,371,793 and 4,379,381.
[6] http://bigstory.ap.org/article/gobble-tov-american-jews-ready-thanksgivukkah; http://www.usatoday.com/story/news/nation/2013/11/14/thanksgivukkah-products/3516299/; http://online.wsj.com/news/articles/SB10001424052702304176904579112022682954300
[7] See U.S. Application Serial No. 85/956314.
[8] See U.S. Registration No. 3,220,999
[9] See U.S. Registration No. 3,677,414

September 30, 2013

The Likely Impact of a Federal Government Shutdown on the United States Patent and Trademark Office, Copyright Office, and Federal Courts

Filed under: Copyright, TM Registration, Trademark (General) — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:10 pm

By Belinda Scrimenti, Partner

Like many areas of commerce to be effected in the United States, the threatened government shutdown – currently scheduled for midnight on Tuesday, October 1, 2013 – will impact trademark owners, copyright applicants, and federal court litigants.  Immediately available information suggests that a brief shutdown would have little impact, but the impact of a longer shutdown is uncertain.  We will keep current status information posted here.

Patent and Trademark Office

The United States Patent and Trademark Office (“USPTO”) has announced that, in the event the October 1, 2013 shutdown comes to pass, it will remain open and will continue to operate as usual for a period of as much as four weeks.  The USPTO is able to keep its doors open because it has enough available reserve fee collections  to remain in operation until that date.  Should a shutdown occur and continue longer than the four-week period, the USPTO has advised that it “would shut down at that time, although a very small staff would continue to work to accept new applications and maintain IT infrastructure, among other functions.”  The USPTO has advised that it will continue to post information on its website as it becomes available.  The agency’s plan for an orderly shutdown are available on page 78 of the United States Department of Commerce’s shutdown plan.  http://www.commerce.gov/sites/default/files/documents/2013/september/2013_doc_lapse_in_appropriations_plan_9_27.pdf

Copyright Office

The United States Copyright Office has not issued any public release about its operations during a shutdown.  Like all agencies, it will be required to follow Office of Management and Budget procedures outlining an orderly shutdown, which will leave only “exempt” (i.e., essential) personnel in place.  It remains unclear what effect this would have on services, such as, for example, the issuance of expedited copyright registrations during a shutdown.

Federal Courts

The federal court system will face a more urgent shutdown date.  The Judiciary has announced that, should Congress not agree on a continuing resolution to fund the government before October 1, “the federal Judiciary will remain open for business for approximately 10 business days. “

On or around October 15, the Judiciary has advised that it “will reassess its situation and provide further guidance.”  The Judiciary also advised that, “[a]ll proceedings and deadlines remain in effect as scheduled, unless otherwise advised.”  The Case Management/Electronic Case Files (CM/ECF) system will remain in operation for the electronic filing of documents with the courts.

The Judiciary has not provided further guidance as to the potential shutdown after October 15.However, the contingency plans likely would be comparable to those announced at the time of the threatened April 2011 shutdown.  At that time, the Judiciary described those functions as “limiting activities to those functions necessary and essential to continue the resolution of cases. All other personnel services not related to judicial functions would be suspended.”  Further guidance during that earlier threatened shutdown suggested that criminal trials would continue as needed, but left uncertain the impact on civil cases.

Following this expectation, late today The Department of Justice published its contingency shutdown plan which can be found at:  http://www.justice.gov/jmd/publications/doj-contingency-plan.pdf.  It “assumes” only a five-day furlough for planning purposes.  With respect to litigation, the Department of Justices’ plan assumes that the Judicial Branch will continue to operate through the furlough, noting that criminal litigation will continue without interruption as an activity essential to the safety of human life and the protection of property.  However, the plan provides that civil litigation “will be curtailed or postponed to the extent that this can be done without compromising to a significant degree the safety of human life or the protection of property,” and requires DOJ civil litigators to seek postponement of such cases.

Check back here for current updates.

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Belinda Scrimenti is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.   Belinda’s practice focuses on litigation in trademark, copyright, trade dress, and Internet law, as well as trademark prosecution and counseling.  She has worked on numerous matters relating to the registration, protection, and enforcement of trademarks, and litigated in over 40 U.S. federal district courts.

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June 5, 2013

Flea Market Operator Hit for Over $5 Million for Permitting Sale of Counterfeit Products

Filed under: Counterfeiting, Litigation — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 5:41 pm

By Janet Marvel, Partner

The Sixth Circuit, in a case of first impression, held that a flea market operator can be contributorily liable for counterfeiting carried on by vendors renting stalls at his market.  The case illustrates that contributory infringement can be a valuable tool against counterfeiting when the primary infringers are small, numerous, anonymous or (individually) commercially insignificant.

In Coach, Inc. v. Goodfellow, 2013 WL 2364091 (6th Cir. May 31, 2013), the appellate court affirmed a jury award of over $5 million dollars in damages, and a grant of $186,666.61 in attorneys’ fees against Goodfellow, the operator of a flea market at which counterfeit goods were sold.  The district court had granted summary judgment on liability, which Goodfellow failed to contest.  While Goodfellow technically had forfeited his ability to appeal the liability ruling, the court nonetheless used its discretion to render an opinion on liability.

Goodfellow received a letter from Coach in January, 2010, from the district attorney in March, and was served with the complaint in June.  Police raided the market in April, March and June.  In response, Goodfellow distributed pamphlets telling vendors not to counterfeit, and held a voluntary meeting with some vendors, many of whom did not speak English.  He also posted signs saying “counterfeit is prohibit,” but these were meant to address counterfeit currency.  While he claimed to have ejected 16 vendors over a one year period, the court held that “this effort, if believed, is hardly compelling evidence of a reasonable response….”   Goodfellow claimed to believe other counterfeit goods were genuine, but did not check.  He did not train his employees to recognize counterfeits.  Vendors did not sign any agreements that they would not sell counterfeit goods.

The court found that Goodfellow’s remedial measures fell short.  It approved the district court’s conclusion that Goodfellow had engaged in “ostrich-like practices.”  According to the court, Goodfellow “continued to supply flea market resources to vendors with knowledge of and willful blindness toward ongoing infringing activities, thereby facilitating continued infringing activity.”

This supported the court’s finding that Goodfellow was contributorily liable.

Goodfellow equated his anti-counterfeiting efforts with those of eBay, which the court found acceptable in Tiffany (NJ) Inc. v. eBay, Inc., 600 F.3d 93 (2d Cir. 2010).   There Tiffany sued eBay for contributory liability for sale of counterfeit Tiffany jewelry on the eBay website.  Perhaps the most important distinction between the flea market bricks-and-mortar contributory infringement standard and that imposed on eBay is the speed with which items are listed and the sheer number of them.  The court in Tiffany held that eBay’s general knowledge that counterfeiting was occurring on its site did not create liability.  Specific knowledge (which Goodfellow had, but eBay did not) was required.  It didn’t hurt that eBay spent millions on anti-counterfeiting and had a sophisticated program for dealing with it.

Courts impose contributory liability on those who know about and facilitate counterfeiting, as well as those who would simply “stick their heads in the sand,” refusing to recognize or police it.  Increasingly, liability applies not only to those who sell goods, but also those that offer services.  Manufacturers and licensors suffering from numerous small scale counterfeits would do well to add actions for contributory counterfeiting and trademark infringement to their arsenals.

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Janet Marvel is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Ms. Marvel’s practice focuses on litigation, transactions, and counseling in domestic and international trademark, trade dress, Internet, and copyright law.  She co-authored the Sixth Edition of the Trademarks and Unfair Competition Deskbook, recently published by LexisNexis.

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April 25, 2013

The FTC Issues Revised Guidance for Mobile Device and Social Media Advertising Claims

Filed under: Advertising, Social Media — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:33 pm

PB LRby Phillip Barengolts, Partner

On March 12, 2013, the Federal Trade Commission issued revisions to its digital advertising guidelines, “.com Disclosures: How to Make Effective Disclosures in Digital Advertising” (the “Guides”).[1]  The Guides do not break new ground, but they provide advertisers with valuable examples of compliant disclosures that qualify advertising claims appearing on mobile devices, on social media such as Twitter and Facebook, and through any other non-traditional platform.

The Guides highlight the FTC’s fundamental belief about advertising claims: the medium does not matter; the advertising claim must be true and not misleading from the viewpoint of a reasonable consumer or else it violates Section 5 of the FTC Act.[2]

Disclosures that qualify an advertising claim must be clear and conspicuous – which can be difficult when dealing with social media or mobile devices due to space constraints.  The FTC’s revised Guides helpfully explain that an advertiser must place a disclosure as close as possible to the qualified claim and must communicate the disclosure in a manner that a consumer is likely to notice and understand.

What if a platform does not provide an opportunity for an adequate disclosure (e.g., Twitter)?  The FTC is clear: don’t use the platform or modify the claim for that platform so that a disclosure is unnecessary.  The Guides do have some detailed suggestions, including:

  • If a consumer has to scroll to view a disclosure, then the disclosure should be unavoidable;
  • Linking to the text of a disclose is permissible, but not if the disclosure is integral to the claim or inseparable from it;
  • Don’t use pop-ups because many browsers block them and most users ignore them;
  • Disclosures should be made before a user clicks “add to cart” or “order now”;
  • If the advertised product is available through outlets other than the advertiser, for example, at an online or brick-and-mortar retailer, the disclosure must be in the ad itself; and
  • for Tweets, the advertiser should use clear terms such as “Ad” or “Sponsored” at the beginning of the Tweet.

The most useful part of the Guides for advertisers are the many examples of compliant and non-compliant disclosures.  Just to highlight a few:

  • the advertiser should optimize its website for mobile devices to ensure that users zooming on a phone will not miss a disclosure;
  • hyperlink disclosures should be right next to the claim they modify (if they can be used at all); and
  • Tweets should include the necessary disclosure not link to it.

Advertisers must be aware of the impact of their claims, intentional or unintentional, and use proper disclosures – suitable to every platform on which the claim will be seen by a consumer –  to qualify any potentially misleading claims.  The Guides provide the FTC’s position on the adequacy of a disclosure to avoid enforcement action.  Of course, advertisers should consult their advertising review counsel to ensure compliance with the Guides and other advertising rules and regulations.

*     *     *

Phillip Barengolts is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, false advertising and unfair competition litigation, trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Mr. Barengolts’ practice focuses on litigation, transactions, and counseling in domestic and international trademark, trade dress, Internet, advertising and copyright law.  He teaches trademark and copyright litigation at John Marshall Law School, and co-authored Trademark and Copyright Litigation: Forms and Analysis, published by Oxford University Press.


[1] The entire 53-page Guidelines can be found here: http://www.ftc.gov/os/2013/03/130312dotcomdisclosures.pdf.

[2] It should be noted that the Guides, like all other FTC guide, are not laws, but if a company fails to comply, the FTC “might bring an enforcement action alleging an unfair or deceptive practice.”

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