Trademark

Lies, Damn Lies, and Statistics

October 19, 2006

I’ve been meaning to post some statistics reported by Price Waterhouse Coopers at the MCLE 9th Annual Intellectual Property Conference earlier this year. PWC has done a rigorous study of patent and trademark cases in the Federal District Courts and at the Court of Appeals for the Federal Circuit (CAFC) over the last 25 years. A few highlights and trends: In 2005, 4% of patent cases and 1.5% of trademark cases went through trial. (Presumably the balance were resolved via settlement or summary judgment). Juries award more damages in patent cases than bench trials. On the other hand, bench trials are more popular in trademark cases. The CAFC is a tough court: only 30% of damage awards are affirmed by the CAFC. Patent damage awards far exceed trademark damage awards. Patent awards’ fastest growth has been in the computer business services and electronics components sectors. Reasonable royalties (rather than lost profits) has become the most frequent measure of damages awarded in patent cases. (This may reflect the fact that more plaintiffs are nonpracticing inventors (sometimes referred to as “patent trolls“).

Read the full article →

American Girl Attempts to Shut Down AmercanGirl.com Porno Site

November 21, 2005

Trademark. What do you do when someone sets up a web site almost identical to yours, but you can’t find the owner of the site in order to sue them? This was the problem faced by American Girl , which sells wholesome girls dolls, clothing and books targeted at pre-adolescent girls, when it discovered that someone was publishing pornography on www.amercangirl.com. (Note the missing letter). American Girl sued the registrar and “John Doe” (legalese for, “I’ll name you when I identify you”) but was rebuffed by a Federal District Court Judge in Wisconsin, who held that a John Doe suit was inappropriate in these circumstances. However, this judge really did his homework, and the decision is an excellent road map on how to go about obtaining an injunction under these circumstances, including remedies such as an in rem action against Verisign under the ACPA or arbitration under the UDRP. The decision also provides an excellent summary of the domain name system and the laws that regulate it. Read the full decision here. p.s. Rest easy parents. www.amercangirl.com now links to the American Girl site.

Read the full article →

Yet Another Google Keyword Trademark Case

October 27, 2005

Office Depot, the office supply giant, has filed a lawsuit against arch rival Staples in U.S. District Court in West Palm Beach, Florida. Office Depot’s complaint alleges that Staples has engaged in trademark infringement, unfair competition, false advertising, and deceptive trade practices by buying VIKING, a trademark owned by one of Office Depot’s subsidiaries, as an advertising keyword from Google. Google has successfully defended its right to use third party trademarks in its keyword advertising program in a number of recent suits, including the recent GEICO v. Google case that we first discussed here, and reported settled here, but this is the first time that a trademark owner has bypassed Google and gone directly after the company actually buying the keywords. Assuming this case doesn’t settle, we expect that Staples ultimately will prevail, as keyword advertising on the Internet these days is analogous to the completely legal practice of Burger King putting up a billboard next to a McDonald’s in the brick-and-mortar world. However, at the present time a search of VIKING does not return a paid advertisement for Staples, suggesting that Staples may be negotiating a settlement with Office Depot, or is attempting to mitigate future damages.

Read the full article →

Rev. Jerry Falwell Loses FALLWELL.COM Domain Name Dispute, but Bill Cosby Prevails in Dispute over FATALBERT.ORG

September 14, 2005

Trademarks/Domain Names. Why did Jerry Falwell lose and Bill Cosby win? Bill Cosby prevailed this week in a domain name dispute involving FATALBERT.ORG (William H. Cosby, Jr. v. Sterling Davenport). This dispute was resolved in an ICANN arbitration, which requires that the complainant prove both that the domain name was registered and used in bad faith in order to succeed. The arbitrator found that Mr. Davenport had no legitimate interest in the domain name, that he had registered it solely with the intention of trading on the fame of Cosby’s Fat Albert character, and that he sold sexually explicit products and drugs on the site, which the arbitrator found particularly offensive since the Fat Albert mark is so closely associated with children. Mr. Davenport’s for-profit conduct clearly constituted bad faith use and registration of the domain name, and he was ordered to transfer the domain name to Cosby. Compare this with The Reverend Jerry Falwell’s attempt to gain control over FALLWELL.COM, a “gripe” site highly critical of Falwell’s conservative beliefs (Lamparello v. Falwell). In this case the US Court of Appeals for the 4th Circuit rejected Reverend Falwell’s trademark infringement claims, finding that there was no likelihood of consumer confusion, the standard for finding infringement, between Falwell’s web site and Mr. Lamparello’s gripe site. The court held that the registration and use of a domain name must be viewed in…

Read the full article →

Geico and Google Settle Lawsuit

September 9, 2005

Trademark. Geico and Google have reported a settlement of the trademark suit we reported on on August 19th. The terms of the settlement were not disclosed.

Read the full article →

GEICO v. Google Over Adlinks

August 19, 2005

Trademarks. Google sells other companies’ trademarks as “keywords” on its Internet search engine. Whenever someone types in one of these keywords, such as GEICO, not only will Google’s search results show links to GEICO’s web site, but Google also will show advertising for other insurance companies under a banner called “Sponsored Links.” For example, when writing this blog, we searched “GEICO” on Google’s site and were shown paid links to two of GEICO’s competitors, USInsuranceonline.com and InsureMe.com. Understandably, GEICO protested this practice of using its trademarks to direct consumers to its competitors. Given that 80% of Google’s revenues derive from this “AdWord” program (in turn causing Google to become a Wall Street darling, up three-fold in a year), Google refused to cease and desist, at which point GEICO sued for trademark infringement and unfair competition. After a bench trial (translation: no jury) in federal court in the Eastern District of Virginia in December 2004, the Judge ruled “from the bench” (translation: she delivered her decision orally in court) that GEICO had failed to establish that the use of its trademarks only to direct Google searchers to competitors created consumer confusion (the talisman of a trademark violation). However, she ruled that Google had violated the law when a competitor used GEICO’s name in the heading or the text of the ads. Judges can be very slow, and the Judge’s written opinion…

Read the full article →

Second Circuit Holds that Use of Competitor's Name to Trigger Pop-Up Ads Does Not Violate Trademark Law

July 12, 2005

Trademark Law. Last year I wrote (together with Susan Mulholland, an attorney at my firm), an article on the WhenU line of cases. We reviewed the three legal decisions that had been published to date on the WhenU technology: two from the district courts in Virginia and Michigan holding that WhenU’s practice was permissible; and one, from the federal district court in New York holding that WhenU had violated the Lanham Act, the federal trademark statute. What does WhenU do that resulted in three federal court cases? In brief, once downloaded by a user (concealed in a “Trojan Horse” application), WhenU’s software will continuously monitor (invisibly, to the user) the user’s Internet browser to determine whether content accessed by the user matches key words stored in WhenU’s client directory. When the software finds a match for an associated key word – often a trademark or service mark – it triggers the SaveNow program to transmit a WhenU-branded pop-up ad to the user’s computer. The pop-up ad is selected from a list supplied by WhenU’s advertising clients, and may be a competitor of the owner of the mark that triggered the pop-up. The pop-up ad provides a hyperlink to the web site of WhenU’s client that, if clicked on, results in the competitor’s web site opening on the user’s computer. That was enough to send U-Haul, Wells Fargo and 1-800 CONTACTS…

Read the full article →
Page 2 of 2
1
2