Pattishall IP Blog

October 1, 2012

ICANN Seeks Comments On The Procedures To Be Used by the Trademark Clearinghouse In Connection With The Implementation of New gTLDs

Filed under: International, Internet — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:31 pm

by Phillip Barengolts, Partner

On September 24, 2012, ICANN requested comments on two important procedures in the implementation of the Trademark Clearinghouse[1] – proof of trademark use and determination of a match. http://www.icann.org/en/news/announcements/announcement-7-24sep12-en.htm.  The Trademark Clearinghouse will serve as a repository used by trademark owners to protect against the use of their marks for domain names in any of the new gTLDs during the sunrise period of a new gTLD and for trademark claims generally.[2]  See prior coverage here: https://blog.pattishall.com/2011/11/08/trademark-protection-in-icann%E2%80%99s-new-generic-top-level-domain-%E2%80%9Cgtld%E2%80%9D-space-will-require-diligence-by-trademark-owners/.  The deadline to submit comments is November 7, 2012.

The specific procedures for which ICANN seeks comment now are: 1) the procedures that the Trademark Clearinghouse will use to verify that a claimed trademark is in use; and 2) the process by which the Trademark Clearinghouse will determine a match between a trademark recorded with the Trademark Clearinghouse and an applied-for domain name.  Highlights of these memoranda are below.

Proof of Use

ICANN has decided that only marks that are in use will be provided protection through the Trademark Clearinghouse during the sunrise period of a new gTLD.[3]  Most jurisdictions throughout the world do not require proof of use to obtain a trademark registration, but the U.S. does have such a requirement (with notable exceptions for foreign trademark registration holders).

To prove use, a trademark owner must submit a signed declaration of use and a single sample of current use.  The specific proposed declaration is below:

The [Trademark Holder/Licensee/Agent] hereby certifies that the information submitted to the Clearinghouse, is, to the best of [Trademark Holder/Licensee/Agent’s] knowledge complete and accurate, that the trademarks set forth in this submission are currently in use in the manner set forth in the accompanying specimen, in connection with the class of goods or services specified when this submission was made to the Trademark Clearinghouse; that this information is not being presented for any improper purpose; and that if, at any time, the information contained in this submission is no longer accurate, the [Trademark Holder/Licensee/Agent] will notify the Clearinghouse within a reasonable time of that information which is no longer accurate, and to the extent necessary, provide that additional information necessary for the submission to be accurate. Furthermore, if any Clearinghouse-verified mark subsequently becomes abandoned by the holder, the holder will notify the Clearinghouse within a reasonable time that the mark has been abandoned.

The sample of use must be “an item that evidences an effort on behalf of the trademark holder to communicate to a consumer so that the consumer can distinguish the products or services of one from those of another.”  Examples include:

  • Labels, tags, or containers from a product; and
  • Advertising and marketing materials (including brochures, pamphlets, catalogues, product manuals, displays or signage, press releases, screen shots, or social media marketing materials). (more…)

July 5, 2012

European Parliament Rejects Anti-Counterfeiting Trade Agreement

Filed under: Counterfeiting, International — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 2:38 pm

by Phillip Barengolts, Trademark Attorney

The European Parliament voted against the Anti-Counterfeiting Trade Agreement (ACTA).  Thus, it is highly unlikely to become law in the European Union.  The E.U. had signed the agreement[1] and the European Commission referred it to the European Court of Justice for review.[2]  The E.U. Parliament’s vote signals, however, that ACTA is not likely to be ratified by the E.U. member states.  According to the press release, this was the first time that the Parliament had exercised its Lisbon Treaty right to reject an international trade agreement.[3]  The vote was not even close with 478 votes against, 39 in favor and 165 abstentions.

As previously noted here,[4] ACTA was negotiated among a select group of nations, including the U.S. and the E.U., to set a higher floor for laws against trademark counterfeiting and copyright piracy, including on the Internet.  Most of these countries already have strong protection for intellectual property rights, but these protections were not consistent and, often, not consistently enforced.

ACTA’s provisions establish a level of protection for trademarks and copyrights higher than the baseline embodied in the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS).  ACTA achieves this enhanced protection primarily by harmonizing the participating nations’ laws on remedies (e.g., criminal penalties for commercial counterfeiting and copyright piracy, statutory damages, seizures, preliminary injunctions) and customs authorities’ ability to act.  Some countries, like the U.S., already had these types of laws in place, while others, like Canada, will now have to make minor changes to come into compliance.

ACTA remains signed by 8 of the negotiating nations: the U.S., Australia, Canada, South Korea, Japan, New Zealand, Morocco, and Singapore.  Thus, it can go into effect for those nations once their signatures are properly deposited, despite the likely rejection of the agreement by the E.U.

The negotiations over ACTA generated much controversy because of non-governmental non-IP rights-holder stakeholders generally were not invited to participate.   After early texts were leaked and a draft text officially released, as well as other stakeholders invited to make comment, the final text of the agreement[5] was released by the participating nations in December 2010.

The primary controversy that lingers in the U.S. is whether the President can simply enter into this agreement without ratification by the Senate – as required with a treaty.    Throughout the E.U., however, a mass movement developed against ACTA because of fears that individual rights on the Internet would be threatened.  The agreement generated protests, with some of the largest in Poland, and even a 2.8 million signature petition.

The provisions of ACTA, as ultimately written, simply did not merit such anger in large part because most European nations already have enforcement mechanisms as tough or even tougher than ACTA would have put in place.  In this author’s opinion, because the debate in the E.U. over ACTA coincided with the debate in the U.S. over the Stop Online Piracy Act (SOPA) at the beginning of this year, the perception of ACTA grew far more negative than was warranted, even though SOPA and ACTA have almost no resemblance and served very different purposes in the overall goals of the IP community.  It remains to be seen where international protection for intellectual property rights goes from here.

*     *     *

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, 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. Barengolts’ practice focuses on litigation, transactions, and counseling in domestic and international trademark, trade dress, Internet, and copyright law.  He teaches trademark and copyright litigation at John Marshall Law School, and co-authored Trademark and Copyright Litigation, published by Oxford University Press.


December 13, 2011

Judge In New Mexico Issues Temporary Restraining Order Against Research In Motion To Prevent Use Of BBX Mark At Conference In Singapore

Filed under: International, Litigation — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 11:01 am

by Phillip Barengolts, Trademark Attorney

Research In Motion (RIM) planned to introduce its newest mobile platform at the BLACKBERRY developers’ conference (DevCon) in Singapore.  It was going to call it BBX – until Basis International obtained a temporary restraining order against RIM’s use of the name the day before the conference opened.  See Basis Int’l Ltd. v. Research In Motion, Ltd., No. 11‑cv-953, slip op. (D.N.M. Dec. 6, 2011).[1]  Now, RIM is going to call the platform BLACKBERRY 10.  Meanwhile, the suit continues with a hearing on Basis’s motion for preliminary injunction, scheduled for December 19.

The Lanham Act can have extraterritorial application to stop foreign use of an infringing mark under appropriate circumstances.  As stated in the order:

This Court may issue an injunction having extraterritorial effect in order to prevent trademark violations under the Lanham Act where: the extraterritorial conduct would, if not enjoined, have a significant effect on United States commerce, and then only after consideration of the extent to which the citizenship of the defendant and the possibility of conflict with trademark rights under the relevant foreign law might make issuance of the injunction inappropriate in light of international comity concerns.

Id. at 3.

The court decided the facts satisfied these conditions, so issuing a temporary restraining order was appropriate.  From this author’s view, three facts convinced the court: (1) RIM was going to use a mark identical to Basis’s mark; (2) the parties targeted identical consumers, i.e., business software developers; and (3) actual confusion had already arisen – upon RIM’s original announcement of the BBX platform in October, Basis had been contacted about the connection between RIM and Basis.

RIM, a Canadian company, argued that the Lanham Act should not be applied to stop the use of BBX by RIM’s Singapore subsidiary (which was running the conference), but the court found that line of reasoning unpersuasive.  “It is naive to believe that further confusion of the BBX mark in the United States will be confined to only those attending the conference from this country.”  Id. at 4 (emphasis in original).  The court did not explore this conclusion, but did say that “it is not a stretch to state that RIM is attempting global publicity, much of which is aimed at BASIS’s core customer base—U.S. software developers.”

Companies with products in international markets must be cognizant that use of a mark that has a substantial or significant effect on U.S. commerce may result in a violation of the Lanham Act.  This was true even before the age of the Internet, but the Internet has helped blur national boundaries – with no small help from RIM and its BLACKBERRY.

 *          *          *

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, 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. Barengolts’ practice focuses on litigation, transactions, and counseling in domestic and international trademark, trade dress, Internet, and copyright law.  He teaches trademark and copyright litigation at John Marshall Law School, and co-authored Trademark and Copyright Litigation, published by Oxford University Press.


October 12, 2011

The Anti-Counterfeiting Trade Agreement (ACTA) Strives to Strengthen Protection for Copyright and Trademark Owners throughout the World Against Counterfeiting and Piracy of their Products by Attempting to Harmonize the Laws of Member Nations. But will it Work?

Filed under: Counterfeiting, International — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 2:07 pm

Categories:  Trademark (General), Counterfeiting
Tags:  International, Phillip Barengolts, Legislation

by Phillip Barengolts, Trademark Attorney

[UPDATE 10/1/11: ACTA signed by U.S., Australia, Canada, South Korea, Japan, New Zealand, Morocco, and Singapore – all that’s left for it to come into effect is the deposit of instruments of acceptance by six of these signatories.] On November 15, 2010, the U.S. Trade Representative (USTR) released the final text of the Anti-Counterfeiting Trade Agreement (ACTA).  See it here: http://www.ustr.gov/webfm_send/2379.  [UPDATE: The final ACTA text, after legal verification in Australia, can be found here: http://www.dfat.gov.au/trade/acta/Final-ACTA-text-following-legal-verification.pdf]] It is now up to member nations to “undertake relevant domestic processes” to have ACTA ratified in each participating jurisdiction.  Below is a brief background on ACTA and a summary of its most relevant provisions.  Also, for a European perspective on ACTA, see this excellent discussion on IPKat. http://ipkitten.blogspot.com/2010/10/letter-from-amerikat-acta-its-baaaa.html.

Who are the potential member nations and when will ACTA take effect?

The participants in the negotiations over ACTA are: Australia, Austria, Belgium, Bulgaria, Canada, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Japan, the Republic of Korea, Latvia, Lithuania, Luxembourg, Malta, Mexico, Morocco, the Netherlands, New Zealand, Poland, Portugal, Romania, Singapore, Slovakia, Slovenia, Spain, Sweden, Switzerland, the United Kingdom, the U.S., and the European Union.  For an as yet to be determined two-year period, only they will have the opportunity to accede to ACTA, as well as any other WTO Members that the participants agree may join.  After this initial two-year period any member of the WTO may accede to ACTA simply by depositing a document noting the member’s approval of ACTA’s terms. (more…)

September 29, 2011

On behalf of the ABA Section of Intellectual Property Law, Pattishall Attorneys Thad Chaloemtiarana and Phillip Barengolts Met With a Delegation from the People’s Republic of China to Discuss U.S. Trademark Law

Filed under: International, Pattishall — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:24 pm

Categories: Pattishall, International
Tags: ABA, Chinese Trademark Law, Thad Chaloemtiarana, Phillip Barengolts

By Phillip Barengolts, Trademark Attorney

On September 2, 2011, the Legislative Affairs Office of the State Council of the People’s Republic of China (PRC) issued the most recent version of proposed amendments to the Chinese Trademark Law.[1]  A delegation from the PRC is meeting this week with several U.S. intellectual property law groups to discuss aspects of U.S. trademark law as part of their efforts to gather comments on the new Chinese trademark law and to better understand the U.S. approach to trademark enforcement and protection.

On September 26, 2011, Pattishall attorneys Thad Chaloemtiarana[2] and Phillip Barengolts,[3] Bruce Longbottom, Associate General Counsel – Trademarks, Copyrights & Information Technology, Eli Lilly and Company, and Jonathan Hudis[4] of Oblon Spivak McClelland Maier and Neustadt, LLP, met with the PRC delegation on behalf of the American Bar Association Section of Intellectual Property Law.  On behalf of the PRC delegation, from the Economic Law Department, Commission of Legislative Affairs, Standing Committee of the National People’s Congress were:

  • Yang Yong Ming, Director;
  • Wang Qing, Deputy Director – General;
  • Chen Yanguye;
  • Li Jiangua, Researcher; and
  • Wang Xiang.

Also in attendance was Zhou Yan, Deputy Division Director, Law Department, State Administration for Industry and Commerce.  Attending on behalf of the International Trade Administration of the U.S. Department of Commerce were Nicole Melcher, the Director of the Office of China and Mongolia, and Ning Lu, International Trade Specialist for the Office of China and Mongolia.

During the four hour discussion, the PRC delegation and ABA IPL Section representatives discussed a wide variety of U.S. trademark issues, including:

  • conflicts between registered and unregistered marks;
  • damages for trademark infringement and counterfeiting;
  • dilution; and
  • “landlord” or contributory liability for trademark infringement.

The discussion included a detailed review of the separation between common law trademark rights developed through use and the federal registration system administered by the United States Patent and Trademark Office, and their impact on enforcement of trademark rights; the trademark rights enforcement implications of recently enacted dilution legislation in the U.S.; and the implications of recent decisions concerning potential liability under trademark law for Internet companies that host third-party content that contains infringing material or offers infringing or counterfeit products for sale.

 *          *          *

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, 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. Barengolts’ practice focuses on litigation, transactions, and counseling in domestic and international trademark, trade dress, Internet, and copyright law.  He teaches trademark and copyright litigation at John Marshall Law School, and co-authored Trademark and Copyright Litigation, recently published by Oxford University Press.


[footnotes]

[1] The full text of the proposed revised Chinese Trademark Law is available for comment here (but only if you read Mandarin – no official translation was available as of the date of this blog post): http://www.gov.cn/gzdt/2011-09/02/content_1939013.htm.  The comment period ends on October 8, 2011.

[2] Thad currently is the Vice Chair of the Trademark Division of the ABA Section of Intellectual Property Law.

[3] Phil currently is the Chair of the Defining Counterfeiting Sub-Committee of the Trademark Legislation Committee of the ABA Section of Intellectual Property Law.

[4] Jonathan currently is the Chair of the Trademark Division of the ABA Section of Intellectual Property Law.

November 19, 2010

The Anti-Counterfeiting Trade Agreement (ACTA) Strives to Strengthen Protection for Copyright and Trademark Owners throughout the World Against Counterfeiting and Piracy of their Products by Attempting to Harmonize the Laws of Member Nations. But will it Work?

Filed under: Counterfeiting, International — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:49 pm

Categories:  Trademark (General), Counterfeiting
Tags:  International, Phillip Barengolts, Legislation

by Phillip Barengolts, Trademark Attorney

On November 15, 2010, the U.S. Trade Representative (USTR) released the final text of the Anti-Counterfeiting Trade Agreement (ACTA).  See it here: http://www.ustr.gov/webfm_send/2379.  [UPDATE: The final ACTA text, after legal verification in Australia, can be found here: http://www.dfat.gov.au/trade/acta/Final-ACTA-text-following-legal-verification.pdf]] It is now up to member nations to “undertake relevant domestic processes” to have ACTA ratified in each participating jurisdiction.  Below is a brief background on ACTA and a summary of its most relevant provisions.  Also, for a European perspective on ACTA, see this excellent discussion on IPKat. http://ipkitten.blogspot.com/2010/10/letter-from-amerikat-acta-its-baaaa.html.

Who are the potential member nations and when will ACTA take effect?

The participants in the negotiations over ACTA are: Australia, Austria, Belgium, Bulgaria, Canada, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Japan, the Republic of Korea, Latvia, Lithuania, Luxembourg, Malta, Mexico, Morocco, the Netherlands, New Zealand, Poland, Portugal, Romania, Singapore, Slovakia, Slovenia, Spain, Sweden, Switzerland, the United Kingdom, the U.S., and the European Union.  For an as yet to be determined two-year period, only they will have the opportunity to accede to ACTA, as well as any other WTO Members that the participants agree may join.  After this initial two-year period any member of the WTO may accede to ACTA simply by depositing a document noting the member’s approval of ACTA’s terms. (more…)

September 14, 2010

Is that COHIBA from Cuba? Not if it’s Sold in the U.S.: Second Circuit Reverses Ruling that U.S. Company Misappropriated the Cuban COHIBA Brand

Filed under: International, Litigation — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 12:11 pm

by Phillip Barengolts

The Second Circuit may have finally ended the nearly 15 year legal battle between Empresa Cubana d/b/a Cubatabaco, the cigar making branch of the Cuban government, and U.S. cigar marketer General Cigar.  Now there will be two different marketers of “COHIBA” cigars in the world.  To see the practical impact of this decision, search for “cohiba cigars” in any search engine.

The Court of Appeals for the Second Circuit reversed the district court’s rulings that granted Cubatabaco relief from judgment against it under Fed. R. Civ. P. 60(b). Empresa Cubana del Tabaco v. General Cigar Co., Case No. 08-5878 (2d Cir. July 14, 2010) reversing 587 F. Supp. 2d 622 (S.D. N.Y. 2009) (appellate decision available at http://scholar.google.com/scholar_case?case=1756775939633617674).  Had the Second Circuit affirmed the district court’s rulings, General Cigar would have been enjoined from selling cigars under the COHIBA trademark in the U.S. (more…)

March 24, 2010

European Court of Justice Rules on Google’s AdWords Program

Filed under: International, Internet — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 9:31 pm

By Andrew N. Downer, Trademark Attorney

On March 23, 2010, the European Court of Justice (“ECJ”) issued its long-awaited opinion in a series of cases dealing with Google’s liability for selling trademarks as keywords.  The ECJ limited its opinion to the specific questions posed to it by the referring court – the French Cour de Cassation.

Ruling on an issue that has dominated United States opinions in this space for the last several years, the ECJ held that Google (and other “referencing service providers”) does not use a mark in the course of trade when it sells a mark as a keyword, stores the mark on its servers, and displays advertisements on the basis thereof.  The ECJ noted that the “fact of creating the technical conditions necessary for the use of a sign and being paid for that service does not mean that the party offering the service itself uses the sign.”  (more…)

October 9, 2009

ICANN Outlines Proposed Trademark Protection Measures in Preparation for the Introduction of New gTLDs in Early 2010

Filed under: International, Internet — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:15 pm

By Mark V.B. Partridge, Trademark Attorney

The Internet Corporation for Assigned Names and Numbers (ICANN) is introducing new generic top-level domains (gTLDs) in early 2010.  This past weekend ICANN issued its third Draft Applicant Guidebook, which addresses some of the trademark issues that have been raised.

Implementation Recommendations

While specific trademark protection mechanisms are still to be decided, ICANN has drafted a set of implementation recommendations to protect intellectual property in the new gTLD space based upon recommendations from the Implementation Recommendation Team and others.  ICANN also considered the comments of the broader Internet community. (more…)

June 3, 2009

Google Allows Sales of Trademarks as AdWords in 190 New Countries

Filed under: International, Internet — Tags: — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:06 pm

Google recently announced that it would no longer investigate complaints that advertisers used third-party trademarks as keywords for AdWords advertisements in 190 new countries. This shift in policy brings Google’s international advertising services inline with U.S. AdWords practices.

Google’s decision follows on the heels of a related shift in the Second Circuit. In Rescuecom Corp. v. Google Inc., the Second Circuit overturned earlier district court cases and ruled that trademark owners can bring claims against Google for trademark infringement, based on Google’s sale of their trademarks as keywords to trigger advertisements.

Pattishall trademark attorney Phil Barengolts recently posted his thoughts on the Rescuecom decision. Mr. Barengolts also addressed the Cyberlaw and Data Privacy Committee of the Chicago Bar Association on Sponsored Internet Advertisement in Light of Rescuecom: a Modern Notion of Trademark “Use”.

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