Trademark

Federal Circuit: Disparagement Provision of Trademark Statute is Unconstitutional

December 23, 2015

The Court of Appeals for the Federal Circuit (“Federal Circuit”) has issued a typically fractured en banc decision (12 judges, 5 opinions) holding that the 70 year old disparagement provision of § 2(a) of the Lanham Act (the federal trademark statute) is unconstitutional under the First Amendment. This law states, in relevant part: No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it— (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute …. (emphasis added) The background of this decision is straightforward.  Simon Shiao Tam named his band, “The Slants”, and attempted to register it as a trademark.  Tam asserted that he had chosen this name to make a statement about racial and cultural issues in the United States, and by chosing this name his band sought to “reclaim” or “take ownership” of Asian stereotypes. The Patent and Trademark Office denied registration, finding the name disparaging to persons of Asian descent. After the usual appeals, during the course of which the trademark office’s denial of registration was affirmed, the Federal Circuit took the case “en banc” (meaning all judges in the circuit would rule on…

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Initial Interest Confusion – It’s Back

July 31, 2015

[Note: The decision discussed below turned out to be short-lived.  On October 21, 2015, less than three months after its publication dated, the decision was withdrawn and a new opinion was issued, upholding the district court’s ruling that Amazon’s search results did not violate the Lanham Act. ] In an unusual decision the Ninth Circuit Court of Appeals has held that the Amazon search results page for an “MTM Special Ops” watch — a product Amazon does not sell — has the potential to violate the Lanham Act. The Ninth Circuit reversed a decision holding to the contrary by the Federal District Court for the Central District of California, and remanded the case for trial. MTM’s dealer agreements prohibit them from selling to Amazon, and MTM does not sell to Amazon directly. However, at issue were Amazon search engine results obtained when consumers searched for MTM’s Special Ops watch on Amazon. While Amazon was unable to offer its customers Special Ops watches, it brought them to a page displaying watches by MTM competitors such as  Luminox and Chase-Durer. MTM sued Amazon, but this was not a case of trademark infringement in the conventional sense – instead, of claiming that Amazon illegally used MTM’s trademark, MTM alleged that when consumers searched for MTM watches on Amazon, Amazon illegally misled them by merchandising competitive watches. The district court dismissed the case, holding that the search…

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The U.S. Supreme Court IP Year in Review

September 3, 2014

[As initially published in the September 1, 2014 issue of Massachusetts Lawyers Weekly] A lot has changed in the realm of intellectual property law following the record-breaking ten intellectual property cases decided by the U.S. Supreme Court in its 2013 term. Highlights of the six unanimously decided patent cases include suits in which the Court narrowed the scope of patent protection for inventions implemented on computers, made it easier to invalidate a patent for indefiniteness, and made it easier for the district courts to shift attorneys’ fees to prevailing defendants. The Court issued two copyright decisions, including an important ruling that may have implications for cloud computing. And, one of the Court’s two Lanham Act opinions established a new doctrine for standing in false advertising cases. Patent Medtronic v. Mirowski Family Ventures (Jan. 22, 2014) was the first of five decisions overruling the Federal Circuit outright. The Court held that in a declaratory judgment action for non-infringement brought by a patent licensee, the burden of proving infringement lies with the licensor/patent holder, not the licensee. Medtronic can be seen as an extension of the Court’s 2007 decision in MedImmune, Inc. v. Genentech, holding that patent licensees have standing to bring declaratory judgment actions for non-infringement or invalidity, even as they continue to make royalty payments for the product in controversy. By placing the burden of proving infringement on patent owners, the Court has made it…

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Lexmark v. Static Control – 12 Years and Still Going Strong

March 31, 2014

Jarndyce and Jarndyce drones on. This scarecrow of a suit has, in course of time, become so complicated, that no man alive knows what it means. The parties to it understand it least; but it has been observed that no two Chancery lawyers can talk about it for five minutes, without coming to a total disagreement as to all the premises. Innumerable children have been born into the cause; innumerable young people have married into it; innumerable old people have died out of it.  . . . Bleak House, Charles Dickens We were writing about Lexmark v. Static Control 9 years ago. (2005 article). The case itself dates back to 2002. And, after the Supreme Court decision on March 25, 2014, it is not yet over. Lovers of Bleak House may want to shift their gaze in the direction of this case. At its outset this case involved allegations of copyright infringement and violation of the DMCA’s anti-circumvention provisions. Those issues were resolved by court decisions, but one issue lingered on: whether Static Control could proceed with its false advertising counterclaim against Lexmark under Section 43(a) of the Lanham Act, even though the parties are not direct competitors.  The Sixth Circuit held it could not, but the Supreme Court reversed, holding that it could. The Court ruled that a plaintiff who alleges injury to a commercial interest in reputation or sales flowing directly from…

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Massachusetts Quick Links – October 2012

November 5, 2012

Oriental Financial Group, Inc. v.  Cooperativa De Ahorro y Crédito Oriental (1st Cir. October 18, 2012) — In this case the First Circuit adopts the trademark law “progressive encroachment doctrine,” joining the 6th, 7th, 8th, 9th and 11th circuits. The progressive encroachment doctrine may be used as an offensive countermeasure to the affirmative defense of laches (delay in brining suit) where the trademark owner can show that “(1) during the period of the delay the plaintiff could reasonably conclude that it should not bring suit to challenge the allegedly infringing activity; (2) the defendant materially altered its infringing activities; and (3) suit was not unreasonably delayed after the alteration in infringing activity” (quoting Oriental Financial). Harlan Laboratories, Inc. v. Gerald Campbell (D. Mass. October 25, 2012) — Applying Indiana law, Judge Patti Saris issues a preliminary injunction enforcing a one year non-compete agreement. However, the opinion makes liberal use of Massachusetts and First Circuit precedents. Blake v. Professional Coin Grading Service (D. Mass. October 6, 2012) — In this case, which involves alleged trade secrets associated with a method to grade the “eye appeal” of coins, Judge William Young concluded that the “method” was not subject to trade secret protection due to the fact it had been publicly disseminated before being disclosed to the defendants. However, Judge Young ruled that the case could proceed based on the alleged misappropriation of a proposed marketing plan.  In addition to…

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Yes, You Can Trademark the Color Red (on the sole of a shoe)

September 13, 2012

One of the thorniest issues in trademark law is whether and when trademark law will protect the use of a single color. After all, there are an infinite number of colors, and it would hardly be fair if one company could obtain a theoretically perpetual right to exclude others from using a color. So, the law makes it difficult to achieve this. Cases involving color marks are rare, but the Second Circuit released an important decision last week in Christian Louboutin S.A. v. Yves Saint Laurent Am., Inc., (2nd Cir. 2012). The court held that Louboutin’s trademark, consisting of a red, lacquered outsole on a high fashion woman’s shoe (the “Red Sole Mark”), has acquired limited “secondary meaning” as a distinctive symbol that identifies the Louboutin brand, but (oddly) only where the red outsole contrasts with the color of the remainder of the shoe. The heart of the decision is the court’s functionality analysis. Trademark law recognizes two types of functionality, “utilitarian” functionality, and “aesthetic” functionality. Utilitarian functionality occurs when a product feature is essential to the use or purpose of the article, or if it affects the cost or quality of the article. The court had no difficulty finding that the red outsole was not precluded from trademark protection by reason of utilitarian functionality, since the color serves no utilitarian purpose. However, that did not end the inquiry. The court had to determine whether Louboutin’s Red Sole…

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Slides From Copyright/Trademark CLE

April 27, 2012

I’ve posted the slides from a CLE talk I gave on Wednesday, April 25th.  Hopefully, the  slides are informative standing alone.  They address the very recent DMCA decisions by the 9th Circuit (Veoh) and 2nd Circuit (Youtube), the copyright “first sale” doctrine as applied to digital files in the Redigi case pending in SDNY, and recent trademark “keyword advertising” cases decided in the 4th and 9th Circuits (Rosetta Stone in the 4th Circuit, Network Automation and Louis Vuitton in the 9th).  There are also some slides devoted to the CFAA, including the 9th Circuit’s en banc decision in the Nosal case. If the embedded Scribd document doesn’t appear on your computer directly below, click here to go directly to Scribd Copyright and Trademark Issues on the Internet

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Second Circuit: Google Keyword Ad Practices Are "Use in Commerce"

April 6, 2009

A few days ago I discussed a decision by Massachusetts U.S. District Court Judge Nancy Gertner holding that purchase of a trademarked keyword to trigger a sponsored link on a search engine constitutes a “use in commerce” of the trademark under the Lanham Act (the Federal Trademark statute). (Earlier post here). In that post I mentioned that among cases addressing this issues, only the Second Circuit had held otherwise. Now the Second Circuit seems to have changed its position on this issue. In Rescuecom v. Google, issued on April 3, 2009, the court reversed a motion to dismiss by the trial court, holding that Rescuecom properly alleged that Google’s keyword ad practices constituted a “use in commerce” under the Lanham Act. In a somewhat unusual step, the court attached to its opinion an Appendix entitled “On the Meaning of “Use in Commerce” in Sections 32 and 43 of the Lanham Act.” The Appendix, which is described as dicta, discusses at some length the statutory history of the “use in commerce” phrase in the Lanham Act. This decision appears to be a game-changer for Google, and will require it to modify its policies on selling key word search ads to competitors.

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Hearts on Fire v. Blue Nile: Judge Gertner Rules That Keyword to Trigger Search Engine Ads Is a "Use" Under Lanham Act

April 1, 2009

The issue here, presented in the context of a motion to dismiss, is whether adoption of a trademark as a search engine keyword constitutes a “use” under the Lanham Act.  The Lanham Act requires “use in commerce” as a condition of infringement, and as Judge Gertner points out, various courts have taken different positions on whether purchase of a trademarked keyword to trigger a sponsored link on a search engine is a “use” of the trademark.  Judge Gertner surveyed the field and noted that most of the courts that have considered this issue have found that utilizing a trademark in this manner does constitute “use” under the Act, and she sided with what she considers to be the majority view (the significant exception being the Second Circuit’s decision in 1-800 Contacts v. WhenU). Hearts of Fire v. Blue Nile For earlier postings on this issue click here and here.

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Decision Denying Dismissal in Jones Day v. Blockshopper

December 12, 2008

Here is a link to the decision of federal district court judge John W. Darrah (N.D. Ill.), denying the defendants motion to dismiss in the trademark suit brought by the Jones Day law firm against the web site Blockshopper.com, which reports on upscale residential real estate transactions in Chicago and other cities. I wrote about this case in some detail here. Jones Day’s assertion that a post on the site describing real estate purchases by two Jones Day attorneys could create confusion (and therefore constitute trademark infringement) has been widely ridiculed. The judge, however, disagreed. His decision is highly legalistic, and takes Jones Days’ allegations at face value, despite the fact that they are (in the opinion of many knowledgeable observers) implausible on their face (to put it mildly).  Go figure.

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A Great UDRP Decision Search Engine

October 17, 2008

USpeakWeType Technologies, LLC has done the trademark bar a big favor by creating a UDRP search engine. This is the first time we have had access to the enormous volume of material that has been decided in the UDRP arbitrations. An example: assume that you are involved in an arbitration that has been assigned to panelist Ian Bradshaw. A search on his name shows that he has decided nine cases, involving brands as well known as Volvo and Chivas. He has ruled in favor of the complainant (either via tranfer or cancellation of the respondent’s domain) in every case. It would be nice to know this, wouldn’t it?

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"Brandsucks.com"

October 17, 2008

Did you ever wonder how many large companies register their own “sucks” domain names (as in “microsoftsucks.com” or “AIGsucks.com”) in order to prevent someone else from doing so? Like, some unfriendly nasty that wants to use the site to bash the company? How many “CIOs” (“chief information officer,” for the uninitiated; don’t blame yourself if you didn’t know this), wish they had registered variations of their companies’ names before the “gripers” got ahold of them? Many, I suspect. Check out ebaysucks.com or alitaliasucks.com for example. Nasty stuff, for sure. Not good corporate publicity, for sure. Bet the folks at eBay and Alitalia wish they’d grabbed these domain names before they were picked up by gripers. The cost of buying “ebaysucks.com” before someone else does is close to zero. It’s just a matter of anticipation. Of course, its hard for companies to challenge the ownership of sites like these, since a clever owner can claim First Amendment protection as long as he or she doesn’t misstep and use the domain in a way that results in consumer confusion. We often tell clients to buy up all the “surrounding” names for their domain of choice. The dot-COM, dot-ORG, dot-NET top level domains, and any offensive variations.  Sometimes they do, sometimes they don’t. Occasionally, I’ve wondered how many of the large, Fortune 500-type U.S. companies create this kind of protection for themselves. Well,…

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