Trademark

Lawyers love to have cases on the “cutting edge” – they thirst for it in law school, and brag about it when they get into practice. No law, no precedents, difficult issues? Bring it on! they say.

Clients, of course, feel exactly the opposite – no law, no precedents, no predictability? How is that possible?, they complain.

For the last few years Internet search engines have repeatedly found themselves astride this proverbial cutting edge. One of the “issues de jour” faced by the search industry is the sale of advertising triggered by trademarks owned by a competitor. Is it a violation of trademark law for Nissan to pay Google to have ads for Nissan appear when you search for Ford? (The last time I checked this actually occurred).

In evaluating legal challenges to this practice courts have focused on a somewhat narrow legal issue: is a search company’s sale of a company’s trademark as a keyword triggering third-party advertising “trademark use”?… Read the full article

Lies, Damn Lies, and Statistics

by Lee Gesmer on 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.
Read the full article

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 article

Yet Another Google Keyword Trademark Case

by Lee Gesmer on October 27, 2005

Yet Another Google Keyword Trademark Case

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.… Read the full article