Intellectual Property Law Blog

On April 7, 2008, in North American Medical Corp. v. Axiom Worldwide, Inc., the Federal Court of Appeals for the 11th Circuit Court (with jurisdiction over Alabama, Florida and Georgia), ruled that using another’s trademark in metatags infringes the Lanham Trademark Act.  There is a split of authority regarding trademark infringement by the use of search engine key words and metatags.  This decision followed the reasoning of the 9th Circuit in Brookfield Communications, Inc. v. West Coast Entertainment Corp., along with a majority of other circuits (with the 2nd Circuit being an exception), in holding that the use of another’s trademark(s) in metatags and keywords is a “use in commerce” and may result in trademark infringement.

Perfumebay.com v. eBay, Inc. _ Fed 3D _ (9th Cir. Nov. 5, 2007)

Click here to view a PDF copy of the document.

One of the foundational principles of United States trademark law, as well as the law of most other countries, is that trademark protection is national in nature and does not extend beyond a country in which the mark is used or registered.  A recent decision by the New York State Court of Appeals demonstrates that in an increasingly global economy, this bedrock principle of trademark law is no longer absolute.  The Court of Appeals decision in ITC Ltd. v. Punchgini, Inc., involved a claim by the owner of the Bukhara restaurant in New Delhi, India, that a restaurant which opened in New York City under the same name was infringing its trademark rights.

Click here to view a PDF copy of the document.

Click here to view a PDF copy of the document.

Click here to view a PDF copy of the document.

Internet addresses ending in ".Asia" will soon be available for the registration of domain names.  Trademark owners and businesses may wish to consider registering domains with the ".Asia" ending for their corresponding names.

Click here to view a PDF copy of the document.

Click here to view a PDF copy of the document.

Traditional legal concepts and e-commerce have not always easily coexisted.  Nowhere is this more apparent than trademarks where the traditional “affixation” requirement flies in the face of how modern internet transactions are proposed and consummated.  Through its decision in In re Valenite Inc., Serial No. 76482852 (July 31, 2007), the Trademark Trial and Appeal Board has, fortunately, engaged in some creative rule bending which provides breathing space for the new realities of the electronic marketplace while remaining faithful to the underpinnings of trademark law – namely, assuring protection only for marks which identify the source of products because of how they are perceived by the relevant purchasing public.

In a case likely to impact intellectual property litigation, the Supreme Court recently issued a ruling that alters the pleading standard necessary to support civil complaints filed in federal court, which governs most IP disputes.  In Bell Atlantic Corp. v. Twombly, 550 U.S. ____ (2007), the Court heightened the pleading standard, requiring that a complaint recite facts sufficient to "plausibly" support the legal claims it sets forth.

There is a groundswell of federal legislative activity aimed at protecting and enforcing the intellectual property rights of United States businesses, authors and artists against international counterfeiting and piracy. This movement is signified most recently by the introduction of Senate Bill 522 on Feb. 7, entitled the "Intellectual Property Rights Enforcement Act." What remains to be seen is whether this groundswell will come out of the halls of Congress and into the international marketplace, or whether it will recede into relative oblivion, as when a prior version of IPREA was introduced in 2005.  

In a win for owners of famous trademarks, the Second Circuit recently held that the 2006 Federal Trademark Dilution Act ("FTDA"), which amends portions of the federal Lanham Act, applies to pending appeals seeking injunctive relief, even if on appeal from a final judgment entered before the amendments were enacted.  Starbucks Corporation v. Wolfe's Borough Coffee, Inc., 2007 U.S. App. LEXIS 3372 (2nd Cir. 2007).

On October 6, 2006, President Bush signed the Trademark Dilution Revision Act of 2006 (“TDRA”) into law. The TDRA amends the Federal Trademark Dilution Act of 1995 (“FTDA”) in a number of important respects, both broadening and narrowing the dilution protection afforded to famous marks.  The TDRA does not preempt state anti-dilution law.

Click here to view a PDF copy of the document.

Article printed November 22, 2006 for The Los Angeles Daily Journal

Evidence of actual confusion, or the lack thereof, is often the dispositive factor in trademark infringement cases. Over the last dozen years, the Central and Northern Districts of California have issued conflicting rulings on the admissibility of testimony concerning conversations with third parties to prove actual confusion.

On December 1, 2006, several amendments to the Federal Rules of Civil Procedure ("FRCP") will become effective. The changes that deal directly with electronically stored information ("ESI") will likely affect the means, method, and timing of discovery. Selected amendments to the FRCP are discussed below:

Click here to view a PDF copy of the document.

Click here to view a PDF copy of the document.

In the past year, the Ninth Circuit Court of Appeals appears to have narrowed the application of the reverse confusion doctrine.  Many companies are familiar with the traditional trademark infringement known as “forward confusion.”  See Lanham Act, 15 U.S.C. §§ 1051 et seq.  Forward confusion occurs when the use of a trademark by a second party (a junior user) is likely to lead consumers to mistakenly believe the junior user’s goods emanate from or are associated with the first (or senior) user of the mark.  Such confusion allows the junior user to trade on and benefit from the reputation and goodwill of the senior user, whether intentional or not.  In launching new brands, companies also should keep in mind another form of trademark infringement recognized under the Lanham Act – “reverse confusion.”

Please click here to view the attached article.

On September 25, 2006, the House of Representatives passed the Senate’s version of the Trademark Dilution Revision Act of 2006 (H.R. 683).  The International Trademark Association led the campaign to enact the new U.S. trademark anti-dilution statute as a reaction to the Supreme Court’s decision in Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003) and splits between the federal circuit courts relating to current dilution law.  President Bush is expected to sign the bill within the next few weeks.

Well-meaning marketers sometime structure branded licensing campaigns around charitable causes. These kinds of campaigns are built around a core concept: sell products or services that benefit, in whole or in part, a charity of the marketer's choosing. Campaigns of this nature offer manufacturers and retailers a possible tri-fecta win- increased sales, positive public relations, and the satisfaction of contributing to a worthwhile cause.      

The Ninth Circuit recently rejected efforts to expand the doctrine of aesthetic functionality to cover logos, as such an expansion would do away with trademark protection, according to the court. Au-Tomotive Gold, Inc. v. Volkswagen of America, Inc. et al., Case No. 04-16174, ___ F.3d _____, 2006 WL 2325105 (9th Cir. August 11, 2006). The Ninth Circuit also articulated its test for aesthetic functionality.

A group of six Native American tribal leaders have filed a petition to cancel the REDSKINS® trademark registration, a moniker used by the Redskins professional football team since it first changed its name to the Boston Redskins in 1933. According to some accounts, the team was so named to honor its first coach who was a Native American. (See http://www.intellectualpropertylawblog.com/redskinsTMdecision.pdf). The team moved to Washington D.C. in 1937 and have been known as the Washington Redskins since that time.

The Meaning and Scope of the Trademark Fair Use Defense

Most intellectual property practitioners are familiar with the concept of a "fair use" defense in the context of copyright infringement actions. But the decision by the United States Supreme Court in KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004) devoted quality time to considering the meaning and scope of the fair use defense as it exists in the context of trademark infringement actions. In so doing, the High Court made its own "lasting impression" on trademark infringement analysis. 

Several attorneys from Sheppard Mullin attended the International Trademark Association Annual Meeting from May 7 through May 10, 2006 in Toronto, Canada. This year's meeting focused on cross-border protection, licensing, and registration of trademarks and service marks, with particular attention on the unique challenges trademark owners face with cross border protection.

Today, more than ever, companies are confronted with a broad array of electronic document issues, including data retention policies and e-discovery during litigation. Failing to comply with rules regarding such electronic data can cost millions of dollars.

For instance, in United States Securities and Exchange Commission v. Morgan Stanley & Co., Inc., No. 06 0882 (D.C., May 12, 2006), the SEC alleged that defendant failed to produce tens of thousands of emails sought by the SEC in two investigations. The court entered an 8-page consent judgment against defendant. Three of the major points in the judgment are:

1. Defendant was ordered to pay $15,000,000
2. Defendant was permanently enjoined from violating Section 17(b) of the Securities Exchange Act of 1934 (requiring a prompt document production, including electronic documents); and
3. For one year, Defendant, at its own cost, was ordered to hire an independent consultant (acceptable to the SEC) to review and evaluate defendant's policies, procedures, and training in order to comply with the judgment. The independent consultant is to make recommendations which must, absent undue burden or impracticality, be adopted by Defendant.

Last week the California Senate voted to give California wines a naming system similar to that protected so vigorously by the French. If passed, bill SB 1380 will allow wines to be named by region as well as by grape and label. This bill applies to wines grown in the regions of Sonoma, Mendocino, Monterey, San Benito, San Luis Obispo, and Santa Barbara. Wines from the Napa Valley region have been named in this way since 2001. In order to qualify for the appellation label, at least 75% of the grapes used in production must come from the labeled region.

The bill passed the Senate on May 11, 2006 and is waiting committee assignment prior to a vote in the state Assembly. If passed, the bill would create a new provision in California's business and professional code.

Click here to veiw the latest copy of the bill.

For over three decades, Franklin Loufrania, a French native, has raked in millions of dollars in licensing fees on smileys, now through his London-based company, SmileyWorld, when he began securing trademarks for the happy face in over 80 countries around the world. With the smiley already reproduced at least 50 million times in the U.S. by the early 1970’s, however, making it then part of the public domain, Loufrania’s trademark strategy could not penetrate the United States. Meanwhile, over the last 10 years, Wal-Mart has invested billions of dollars prominently displaying the iconic yellow happy face in its advertising, linking the Wal-Mart name to the yellow circle with two dotty eyes and a loopy grin. It wasn't until 1997 that Loufrania applied to control the symbol in the U.S. Now Wal-Mart and Loufrania are fighting it out in front of the U.S. Patent and Trademark Office.

On May 15-16, 2006, the U.S. Patent and Trademark Office will present a "Conference on Intellectual Property in the Global Marketplace."

The first day's presentations will "help conference attendees identify intellectual property assets and the steps needed to protect those assets in the United States and abroad." The second day's presentations will focus on "enforcement issues that may arise in protecting intellectual property rights in the United States and abroad."

In response to the Supreme Court's decision in Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003), the Senate Judiciary Committee has unanimously approved revisions to the dilution provisions of the Lanham Act which adopt a standard of likely dilution rather than actual dilution. The following changes were also made to the dilution provisions:

1. the “fair use” exemption was extended to the “facilitation of such fair use”;
2. the owner of unregistered trade dress would have to prove the fame of the trade dress itself; and 
3.  “non-commercial uses” would be expressly exempted from liability.

Trademark dilution by blurring is based on the theory that unauthorized junior uses of a "famous" trademark can diminish the mark's ability to identify and distinguish the goods and services of its owner, regardless of whether there exists consumer confusion. Dilution by tarnishment is achieved by attaching a negative connotation to a "famous" mark.

[The Trademark Dilution Revision Act of 2005 can be found at http://thomas.loc.gov/ as H.R.683 for the 109th Congress.]

Ruling on a recent trademark infringement lawsuit in which Surfvivor Media, Inc. (a purveyor of beach-themed merchandise) sued Survivor Productions (responsible for the popular "Survivor" television program and related merchandise) for reverse confusion, the Court of Appeals for the Ninth Circuit upheld summary judgment in favor of Survivor on the basis that confusion between the products of the parties was not likely. Surfvivor Media, Inc. et al. v. Survivor Productions et al., 406 F.3d 625 (9th Cir. 2005).

The court balanced the traditional factors enunciated in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-349 (9th Cir. 1979) to determine whether confusion was or was not likely. While the court found that a greater number of Sleekcraft factors favored Surfvivor somewhat meekly, it upheld summary judgment for Survivor based on the relative strength of the factors that favored Survivor, apparently including (in the court's analysis) a significant lack of demonstrable actual confusion.

One lesson to be drawn form Surfvivor Media is that trademark litigants should not focus solely upon how many factors from the traditional trademark infringement balancing test weigh in their favor, but should also pay attention to how heavily the courts will weigh each factor according to the particular circumstances, and structure their arguments accordingly.

Click here for full article.

Trademark infringement, the hallmark of which is the "likelihood of confusion" analysis, is determined in the Court of Appeals for the Ninth Circuit by applying the fluid, eight-factor balancing test of AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-349 (9th Cir. 1979). Rarely do all eight factors irrefutably fancy any one party. It seems there are usually at least some factors that leave room for divergent opinions as to whether a consumer is likely to be confused between the trademarks and products or services of the litigants. Because no single factor is supposed to be dispositive, trademark infringement cases are frequently and beautifully uncertain.

In a battle between the producers of reality television shows "Wife Swap" and "Trading Spouses," a California federal court held that trade dress cannot be invoked to provide perpetual protection for what are essentially copyright claims. As a result, the court dismissed plaintiff's claim that defendants have imitated the "total image and appearance," or trade dress, of the "Wife Swap" show.

The Court acknowledged that the same elements of a work may be protected as both copyrightable expression and trade dress. However, it held that such a finding in this case would lead to the misguided conclusion that "every incidence of visual expression would be subject to copyright and trademark protection and that protection would last in perpetuity." 372 F.Supp.2d at 564.

[This case is cited as: RDF Media Ltd. v. Fox Broad. Co., 372 F. Supp. 2d 556 (C.D. Cal. 2005).]