Trademarks and Trade Dress

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Social network Web site Facebook announced that, beginning this Saturday, June 13, at 12:01 am U.S. EDT, all Facebook users will be allowed to choose a personalized username for their Facebook profiles. This username will replace the numerical string that appears on the URL for each user’s profile page. Facebook users will be able to choose names on a "first-come first-served" basis. All at once, millions of Facebook users will be choosing usernames. If you are a registered trademark owner, or represent such an owner, it’s important that you immediately register your trademark(s) with Facebook at this link in order to prevent the trademark from being registered by others as a username on Facebook.Continue Reading Effective Immediately, Trademark Owners Need To Protect Their Trademarks From Registration As Usernames On Facebook

On April 3, 2009, the Second Circuit Court of Appeals handed down its decision in the matter of Rescuecom Corp. v. Google, Inc., reversing the United States District Court for the Northern District of New York’s dismissal of Rescuecom’s complaint on the grounds that it failed to state a valid claim for relief. The Court held that Google’s "sale" of Rescuecom’s trademark as a keyword in Google’s Adwords and Keyword Suggestion Tool Programs, which sends online search engine users targeted advertisements based on their formulation of search terms, constitutes the "use in commerce” for purposes of the Lanham Act, which governs federal trademark law. Under the Lanham Act, subject matter jurisdiction arises for enforcement of trademark rights against infringement when one party “uses” the trademark of another “in commerce” in a way that “is likely to cause confusion, or to cause mistake, or to deceive," "as to the affiliation, . . . or as to the origin, sponsorship, or approval of . . . goods [or] services.” 15 U.S.C. §§ 1114; 1125(a). By rendering this holding, the Court resolved a significant split between the Second Circuit and federal courts in the Third, Fourth, Fifth, Seventh, Eighth, Ninth, Tenth and Eleventh Circuits over the “use in commerce” issue.Continue Reading Second Circuit Resolves Split Between the Circuits Regarding Sale of Keywords to Trigger Sponsored Links and “Use in Commerce” Under the Lanham Act

Activision licensed the Gibson trademark and trade dress in November 2006 in connection with Guitar Hero’s "custom guitar controller peripheral." Activision paid a one-time fixed license fee to cover the term of the license and Gibson agreed to help promote the Guitar Hero product.Continue Reading Gibson’s Patent Action Against Activision Hits Wrong Chord With Court In “Guitar Hero” Dispute: Summary Judgment Granted

China has a bad reputation for IP protection, but the reputation might not be fully deserved. People often focus on occurrences of IP infringement in China and mistakenly conclude that there is little IP protection here.

China’s present IP dilemma is rooted in the concept of “rule of the man – Emperor.” China did not adopt the concept of “rule of law” until about 25 years ago when China joined the international community. Since then, China has been faced with a huge challenge of establishing an internationally acceptable legal framework. China has made significant progress in the enactment of laws, establishment of a court system, and training of legal personnel. But one cannot expect a perfect legal framework to be established in a short period of time. The fact is that IP protection is available in China today. This area has been a key focus of the Chinese government and China’s emerging high-tech industries. Significant progress in IP protection can be expected in the near future.Continue Reading Case Study: Protecting Your Brand in China

In Comedy Club v. Improv West Associates the Ninth Circuit held that an in-term covenant not to compete (a covenant that continues during the term of a contract or relationship) in a Trademark License agreement was overbroad, but enforced a more limited version of the covenant. The Court held that while there is no exception in California’s law against non-competition agreements for in-term covenants not to compete, they may be valid, at least in the context of a "franchise like" agreement.Continue Reading Ninth Circuit Limits the Scope of In-Term Covenants Not to Compete

In June 2006, the International Corporation for Assigned Names and Numbers (ICANN) approved a plan that would allow for the creation of hundreds of new domain names.  The Internet as we know it currently operates using 12 generic top-level domain names (gTLDs) to direct traffic.  Some of the more common gTLDs include .com, .net, .edu, .org, and .gov.  ICANN’s proposed changes would make it possible for applicants to create entirely new gTLDs, anywhere from 3 to 63 characters long and in nearly any alphabet, such as Arabic or Chinese.  ICANN released the draft plan for an open comment period, which ran from October 24 – December 15, 2008.  The response from the public has generally been negative and it remains to be seen how, if at all, that response will impact the final version of the plan.  In whatever form the plan does proceed, however, it presents both exciting opportunities and treacherous pitfalls for trademark owners.Continue Reading Brave New Web: Trademark Rights in the Expanding Internet

On July 16, 2008, the Northern District of California dismissed on summary judgment a lawsuit brought by the company that manufactures, markets and sells Crystal Geyser bottled water (CG Roxane LLC) against Fiji Water Company LLC, Fiji Water Company Holdings LLC and Paramount International Export, LTD.   The court also granted Fiji’s summary judgment motion for cancellation of Crystal Geyser’s "Bottled at the Source" federal trademark registration. Continue Reading Summary Judgment in Favor of Fiji Water – “Bottled At the Source” Held Generic

In a July 14, 2008, decision addressing the issue of who bears the burden in policing counterfeiting on online auction sites, Judge Richard J. Sullivan of the Southern District of New York held that "it is the trademark owner’s burden to police its mark and companies like eBay cannot be held liable for trademark infringement based solely on their generalized knowledge that trademark infringement might be occurring on their websites." The decision was rendered in Tiffany (NJ) Inc. v. eBay, Inc., No. 04 Civ. 4607 (RJS) (S.D.N.Y). The district court held that Tiffany had failed to meet its burden to hold eBay liable for direct and contributory trademark infringement, unfair competition, false advertising, and direct and contributory trademark dilution.Continue Reading S.D.N.Y Holds eBay Not Liable in Closely Watched Trademark Case

Since the Supreme Court’s decision in eBay v. Merc-Exchange, IP plaintiffs who plan on relying on the presumption of irreparable harm when seeking injunctive relief (whether a TRO, preliminary or permanent) may want to rethink that strategy.  The days of relying on a general "presumption" of irreparable harm, without actual proof of such harm, are essentially over—at least for cases that fall squarely within the eBay decision (i.e., patent infringement cases where injunctions are sought).  Less clear is eBay‘s holding to other traditional areas of intellectual property, like trademark and copyright infringement cases.  Nevertheless, the vigilant IP owner should be prepared to prove irreparable harm by way of compelling evidence.  Even if the court ultimately applies the presumption of irreparable harm, the effort will certainly pay off and may preclude attacks on appeal.Continue Reading Injunctions in Trademark and Copyright Infringement Cases: Trending Against the Irreparable Harm Presumption?

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.Continue Reading Consider the Venue: Significant Split Among Circuits In Findings of Liability for Trademark Infringement in Metatags and Keywords