Posts Tagged: "trademarks"

Yesterday Leason Ellis announced that the case has been resolved with the signing of a consent decree and Settlement Agreement. Without a doubt this can be characterized as nothing short of a complete and total victory. The judgment was entered by the Hon. Edgardo Ramos of the United States District Court for the Southern District of New York.

With the advent and rise of the Internet, digital property rights have become an increasingly hot-topic in the Board rooms and Executive Offices of major companies, particularly those in the hi-tech industry. Much like the information protected under intellectual property rights, digital products provide their creators with certain protections under the law. The problems and legal challenges facing major companies like Yahoo and Facebook will help better define the laws surrounding digital property rights, and likely present opportunities as well as a whole host of new legal questions.

Colombia became the 87th member of the international trademark system following the deposit of its instrument of accession to the Madrid Protocol for the International Registration of Marks by Vice President Angelino Garzón with WIPO Director General Francis Gurry on May 29, 2012. Colombia is the second country in the Latin American region to join the Madrid trademark filing system. The treaty will enter into force with respect to Colombia, on August 29, 2012. The Madrid System for the International Registration of Marks (Madrid system) offers trademark owners a cost effective, user friendly and streamlined means of protecting and managing their trademark portfolio internationally.

Trademark owners who attempt to file and prosecute their own trademark applications are really being pennywise and pound foolish. I appreciate the reasons for filing your own trademark applications, particularly in this economy. Many times, trademark owners are small companies in their infancy, or individuals that are trying to minimize legal fees while attempting to obtain valuable trademark protection. Nevertheless, there is significant long term damage that can be caused by filing your own trademark, or relying on a one-size-fits-all service provided by non-attorneys.

Which brings us to the recent gem of an opinion from the Sixth Circuit. Maker’s Mark has been using red sealing wax on its bourbon bottles since the 1950’s, which it trademarked in 1985 (Reg. No. 1469925). Then, in 1997, the company making Jose Cuervo brand tequila started using red sealing wax on some of its special bottles, which were sold beginning in 2001. Needless to say, the Kentucky bourbon company took issue with the tequila company’s use of dripping red sealing wax and requested that such practice immediately stop. Cuervo said “Nope”, so in 2003, Maker’s Mark sued them. It appears that Cuervo stopped using the dripping wax seal in favor of a straight edged seal around 2006, but it countersued to cancel the mark.

Each state has its own unique rules pertaining to trade names that are very close, if not identical, to the federal rules. It naturally follows, then, that an application for a Florida state trade name for a sushi restaurant is a pretty boring subject. Unless the applied for mark is “Fuku” and the application is rejected on the grounds that the mark is scandalous.

Today I attended the an event on Intellectual Property and the US Economy which was held in the Eisenhower Executive Office Building on the White House grounds. The purpose of the event was to unveil a study — Intellectual Property and the U.S. Economy: Industries in Focus — prepared by the Economics and Statistics Administration and the United States Patent and Trademark Office. The study found that intellectual property intensive industries support at least 40 million jobs in the United States and contribute more than $5 trillion dollars to U.S. gross domestic product (GDP). That is to say that 27.7% of all jobs in the U.S. were either directly or indirectly attributable to IP-intensive industries, and the amount contributed to the U.S. economy represents a staggering 34.8% of GDP.

The United States Patent and Trademark Office (USPTO) will host the 2012 National Trademark Expo on Friday, Oct. 19, and Saturday, Oct. 20, at the USPTO’s headquarters in Alexandria, Virginia. The free two-day event is designed to educate the public about trademarks and their importance in the global marketplace. Last year’s Trademark Expo attracted more than 15,000 visitors of all ages.

Despite difficult economic conditions worldwide, international patent filings under the WIPO-administered Patent Cooperation Treaty (PCT) set a new record in 2011 with 181,900 applications – a growth of 10.7% when compared with 2010, and the fastest growth since 2005. China, Japan and the United States accounted for 82% of the total growth, and the Chinese telecommunications company ZTE Corporation was the largest filer of PCT applications in 2011. 2011 also saw the highest number of international trademark applications ever filed under WIPO’s Madrid System for the International Registration of Marks (“Madrid system”) with 42,270 applications, or a 6.5 % increase compared to 2010.

On January 12, 2012, the Internet Corporation for Assigned Names and Numbers, more commonly known simply as ICANN, began accepting applications for new gTLDs. Until March 29, 2011, entrepreneurs, businesses, governments and communities around the world can apply to introduce and operate a generic Top-Level Domain of their own choosing. Currently there are approximately two dozen gTLDs, but as the result of ICANN’s decision to expand the number of gTLDs there could be hundreds in the not too distant future.

On February 3, 2012, I had the pleasure of interviewing Deborah Cohn, the Commissioner for Trademarks at the United States Patent and Trademark Office. Part 1 of the interview was published yesterday. What follows is the remainder of the interview. We discussed a range of topics in this segment, including average pendency of trademark applications, cease and desist practice and some of the misleading letters sent to trademark owners and applicants from various third-parties that provide dubious publication services.

On February 3, 2012, I had the pleasure of interviewing Deborah Cohn, the Commissioner for Trademarks at the United States Patent and Trademark Office. Cohn oversees all aspects of the USPTO’s Trademarks organization including policy, operations and budget relating to trademark examination, registration and maintenance. We spoke in her office on the 10th floor of the Madison Building for approximately 55 minutes.

The United States Patent and Trademark Office (USPTO) will host the 2011 National Trademark Expo on Friday, October 14th, and Saturday, October 15th, at the USPTO’s headquarters in Alexandria, Virginia. The free two-day event is designed to educate the public about the value of trademarks in the global marketplace. If you have young children and are looking for something exceptionally fun, and free, I highly recommend the Trademark Expo. While there are seminars aimed at adults, which are quite good, children will have a blast because costumed characters will be walking about and mugging for photos with children, families and adults too!

People have been arguing about the Internet since Al Gore invented it (sorry, I just couldn’t resist). One would think this issue would have been well settled by now but it’s not. The courts are starting to move toward some sort of congruency but there is still a very decided split in the decisions. And, as with oh-so-many issues in intellectual property, there is a litany of case law on the subject and not one bright line rule. It all boils down to what we consider a “use in commerce” and if we can call that “use” a source of confusion in the consumer. Briefly, in order to make a claim of trademark infringement stick, you have to show the defendant used your mark in commerce and you have to show that that use likely confused the purchasing public as to which company was actually selling that service or those goods. Since a metatag isn’t technically visible on the web page, federal courts haven’t agreed whether a metatag is “used or displayed in the sale or advertising of a service rendered in commerce or “placed in any manner” on a good transported in commerce”. See Lanham Act 15 U.S.C. 1127 .

According to the Maya Archaeology Initiative press release, a detailed response was sent by their legal representative to Kellogg’s, which among other things asserted that the toucan in MAI’s logo looks nothing like Kellogg’s cartoon character and said the two entities are not in competition. The press release goes on to say that the MAI’s logo is based upon a realistic toucan native to Mesoamerica, while Kellogg’s Toucan Sam is a cartoon character with colors that represent the Froot Loops® food coloring. Really? Wow! Let’s take those one at a time.