Posts in Trademark

Earlier this year Intellectual Property Today announced its annual Top Patent Law Firms for 2011. Just recently they also announced the Top Trademark Firms for 2011. I thought it might also be interesting to see which firms were mentioned on both lists. In fact, there were 11 law firms that appeared on both the Top Patent Law Firms List and on the Top Trademark Law Firms List.

Criminals are finding that the penalties for intellectual property crimes pale in comparison to the penalties they would receive for trafficking drugs and engaging in other illicit activities. At the same time, the profit margin for counterfeit software is extremely high. So the combination of great riches, relatively low penalties and a low likelihood of being caught and you can see why criminal enterprises, including terrorist networks, are becoming major players in the counterfeit software black-market. In fact, one of the most vicious drug cartels in the world makes an estimated $2.4 million per day selling counterfeit software.

International trademark activity recovered during 2010, according to the World Intellectual Property Organization (WIPO), which received 39,687 applications under the 85-member Madrid System for the International Registration of Trademarks (“the Madrid system”). This increase in application from 2009 to 2010 represents a 12.8% rate of growth. Growth was the largest for the Republic of Korea (+42.2%), China (+42%), Italy (+38.7%), United States of America (+29.6%), European Union (+26.9%) and Japan (+20.2%).

The World Intellectual Property Organization (WIPO) recently announced that the number of cybersquatting cases has reached an all time high. In 2010, trademark holders filed 2,696 cybersquatting cases relating to some 4,370 domain names with the WIPO Arbitration and Mediation Center (WIPO Center) under procedures based on the Uniform Domain Name Dispute Resolution Policy (UDRP). This spike in the number of domain name disputes caused by cybersquatting represents an increase of 28% over the 2009 level and of 16% over the previous record year, 2008.

About 10 years ago, the NFLP decided that they wanted Reebok (and only Reebok) to make hats with the teams’ logos on them. American Needle, Inc., a competitor of Reebok, had been making these types of hats for the NFL for a really long time, and as a result of the NFLP’s deal with Reebok, it lost its contract with NFLP to make said hats. American Needle, Inc. did not have much of a sense of humor about this and sued the NFL under Antitrust principles. Enter American Needle v. National Football League et al. Needle is a big case because if the NFL had gotten what it asked for, the player’s union wouldn’t have been able to decertify and the players wouldn’t have been able to bring an antitrust suit.

Brand building can be defined as ‘Building the perceptions of your target audience.’ Those who work in marketing usually say that in order to really build your brand you need to be consistent in your marketing campaigns. Consistency and repetition are a sure way to ingrain your message into the minds of those you are trying to reach by creating a focused brand image. However, Geico, has shown that, when done right, you can break the widely accepted and customary brand building “rules” often having numerous different iconic ad campaigns running at once. So today I’d like to discuss 5 of the more memorable GEICO ad campaigns beginning with the GEICO Gecko® through the most recently added Mike McGlone Commercials and analyze what your business can learn from these ad campaigns.

Intellectual property law is premised on incentivizing innovative and creative activities by providing limited property rights for the fruits of such activities in order to increase the storehouse of creative and innovative knowledge for the betterment of society. Excessive overlapping protection undermines the careful balance individually developed under each body of intellectual property law. Expansion of the subject matter protected under either patent, copyright, or trademark law should only occur if it does not undermine the careful balances struck under each of the other bodies of intellectual property law. Being mindful of the balance between protection and public interest can prevent unintended over-protection of intellectual property that would work to skew the balance in favor of rights to creators and innovators at the expense of the public.

In June 2008 ICANN (the Internet Corporation for Assigned Names and Numbers), a non-profit technical coordination body for the Internet’s name and numbering systems, made headlines when it announced that it would allow an unlimited number of new gTLDs (generic top level domain names) to populate the web. While the process has been delayed several times, the current belief is that ICANN will begin accepting applications for these new gTLDs by July or August of 2011. However, many in the industry expect the start of the application process to be delayed further, as various trademark organizations have raised concerns about the award and dispute resolution process.

The Trademark act of 1946 specifically allows a person to obtain a trademark in her name provided the proposed name mark meets certain criteria. And the Trademark Manual of Examining Procedure (“TMEP”) tells you what those criteria are. As shocking as it may sound, people trademark their names all the time. It’s pretty much standard operating procedure for celebrities and athletes. Granted, it is a bit uncommon for politicians, but it’s not unheard of. Besides, last time I checked, Governor Palin is no longer serving in public office and is more of a public figure anyway, so what’s with the hullabaloo?

The stories of abusive cease and desist orders are legendary. In fact such letters are indeed typically referred to as being “a dime-a-dozen.” Trademark owners and their representatives have long been believed to grossly overstate the rights a trademark conveys when they send letters to unsuspecting and often legally unsophisticated individuals who are immediately petrified and will do nearly anything to resolve the matter. These individuals and small businesses are frequently coerced to give up legal rights they have without justification, which alters their business plans without justifiable reason.

A common misconception is that a website that just advertises your goods or services can be a trademark. It can’t. The domain has to be a unique source indicator all on its own, meaning it has to tell people what your goods or services are on its own. Basically, if your domain name is just an Internet address where your customers can find you, it can’t be registered. It just tells people where to find you. It is merely incidental to your primary business purpose.

It is unfortunate for businesses, but China is becoming practically synonymous with intellectual property theft, piracy and counterfeiting. On top of that, many technology companies are learning that doing licensing deals with the Chinese means they turn over the technologies and as soon as the Chinese corporation is capable of employing the technology the sever the relationship and then compete against American companies with American technology, they just don’t have to recoup the research and development costs and they have a cheap labor force.

The demographics on users of social media can be surprising – a large percentage are over 35, and have six-figure incomes. These users have a lot of buying power and are often making the purchasing decisions for their households. Once they know this, clients can grasp the importance of both using social media proactively. But what is the risk? In the trade secret arena you could lose everything through inappropriate use by you or your employees, and the same is true in the trademark context as well.

We shouldn’t fool ourselves and try and pretend that the lack of respect for intellectual property rights is limited to those who seek to share movies, music or make a buck selling knock-off products. Everyone who produces original content on the Internet is at risk of having that content stolen; simply cut and pasted onto some other website or blog. Even if it is not passed off as original content and you do get “credit” the copyist is using your work for their own benefit. They are stealing eyeballs, diverting traffic and likely costing you money. At the very least, they are free riding, which is a hard pill to swallow.

The Apple application for “APP STORE” is currently in opposition proceedings at the Trademark Trial and Appeal Board. Here’s the skinny in 4th grade prose. Back in ’08, Apple opened up its first app store. Shortly thereafter, it filed a trademark application for “APP STORE” in the United States Patent and Trademark Office (“USPTO”). The Examiner said “No way! That mark is descriptive!” Apple said “Nu-uh!” Examiner said “Yes huh!” Apple said, “Nu-uh!!!”, and appealed. Examiner said “OK, fine” and published the application for opposition. Then Microsoft said, “No way! That mark is descriptive!”