Archive for January, 2012

NEWT GINGRICH SUED FOR USE OF ‘EYE OF THE TIGER’

Tuesday, 31 January, 2012 17:50 Written by danieldavidson 0 Comments
Share via email

By Daniel Davidson

These past few years, musicians have made it no secret that they prefer that the Republican Party not use their music.  Last year I reported on a story that consisted of David Byrne, lead singer of the Talking Heads, against Charlie Crist, Florida Govener.  You may recall, Crist was running for the U.S. Senate and ran an ad which contained Talking Head’s song “Road to Nowhere.”  In that case, Crist accepted settlement of a YouTube video where he “sincerely” apologizes for his misappropriation of the song.

In a recent case filed by Frank Sullivan, co-author of the inspirational song “Eye of the Tiger,” another Republican politician has become a target, this time Newt Gingrich.  This instance smells vaguely familiar to John McCain’s run in with musician Jackson Brown for he and the Ohio Republican Party’s use of “Running on Empty” at a rally.

No response has been filed on behalf of Newt, yet, but I would expect a fair use defense to be applied.  In most of the cases filed against politicians involving unauthorized use of songs (since fair use isn’t a defense to rendezvous in the oval office), a fair use defense has been raised, but no opinion has ever been given by the courts.  This leaves the question of whether politicians are able to use a song under the fair use blanket.  Also, if the campaign had purchased an ASCAP or SESAC license, a defense that they have authorized use is also plausible.  Newt’s worker bees have yet to comment on this present situation.

I would imagine that a quick resolution will be reached between the parties since Newt has no time to deal with a lawsuit while trailing in the polls.  This is unfortunate because I would like to see one of these taken all the way to the end.  That way the long running question will be answered.  Cheers.

Can I Trademark a Color?

Monday, 30 January, 2012 05:57 Written by Aaron B. Thalwitzer 1 Comment
Share via email

Fiskars has registered the orange of their scissors.

Many products use a particular color to distinguish themselves.

The definition section of the Lanham Act, 15 U.S.C. § 1127, defines trademarks as including “any word, name, symbol, or device, or any combination thereof”. Further, the Court held that a product feature is only functional, and thereby barred from trademark protection, “if it is essential to the purpose of the article or if it affects the cost or quality of the article”. 514 U.S. at 165. Under this case, products with potentially confusing colors would be denied protection under the so-called “functionality doctrine”.

There are generally two reasons for this, which often overlap. First, the color may be useful or have a function, for example, chewing gum may match color with flavor — think red cherry gum. Second, the color may purely aesthetic, like a black iPhone; color here serves no functional purpose but is an aesthetic consideration. The United States Supreme Court in Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995) held that a color could meet the legal requirements for trademark registration under the Lanham Act, provided that it has acquired secondary meaning in the market. That means that a color alone could be a trademark, if it isn’t a useful feature of the product (and usefulness doesn’t include identifying the product’s brand).

This leads to problems that defy common sense. Why should you be forced to pick a less useful color in order to get trademark-type protections? The flip side of this is that there are only so many colors distinguishable by the human eye. We all know Coca-Cola red, but if that red was shifted only slightly, you’ve got a new color, but is there a likelihood of confusion? US intellectual property law is behind the times on this issue. Colors have been increasingly used as trade marks in the marketplace, but color was was not considered to be a distinctive ‘trademark’ until the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) was ratified. TRIPS created minimum standards of protection and regulation for most forms of intellectual property in all member countries of the WTO. TRIPS also broadened the legal definition of trademark to encompass “any sign…capable of distinguishing the goods or services of one undertaking from those of other undertakings” (article 15(1)).

Most if not all major corporations have registered trademarks with the USPTO, and why not? Trademark protection is some of the best bank for your buck around relating to property rights. When I drive around my hometown of Melbourne, Florida, I can’t help but think of all the businesses that should register at least some aspect of their trademark.

I Didn’t Respond To An Office Action and now My Patent Is Abandoned – Now What?

Friday, 27 January, 2012 08:36 Written by Mark Malek 1 Comment
Share via email

By: Mark R. Malek

If you haven’t noticed, many of my posts lately have revolved around the questions that I get from various clients.  This one was a tough one. Not necessarily from the perspective of not knowing what to do, but having to hear the horror story from this client.  Unfortunately, it is a horror story that I have heard numerous times. I received a call recently from someone that was going the patent process alone.  At least he was until he received a “Notice of Abandonment” from the Patent Office.  How could this happen?  All those years of hard work down the drain?  Is there anything he can do?  Yes.

First and foremost, the patent process is not a simple one.  There are several nuances, and the process itself is very unforgiving.  There really is not much room for error.  For example, the deadlines are real deadlines.  These are not suggestions.  It is not ok to submit something one day late.  That’s not going to cut it in the patent prosecution system.  The one great thing about the patent system, however, is that you always have plenty of time to respond to any issue that may arise during the patent process.

The initial findings as to patentability of your invention are usually contained in an Office Action, which is a decision on patentability as expressed by the patent Examiner.  Many times, Office Actions include rejections of the claims that define the scope of the invention.  There are several ways to respond to an Office Action.  For example, you may chose to amend the claims, add new claims, or simply present arguments to the Examiner as to why the claims as filed define over any prior art that was cited.  No matter what you decide to do, however, you need to respond to the Office Action within three months from the date that the Office Action was mailed.  This is generally the case – sometimes it is two months, sometimes it is one month, and there are always extensions of time that can be filed (for a fee).

As you have probably guessed, if you do not timely respond to an Office Action, the application goes abandoned.  This is outlined in 711.02 of the Manual of Patent Examining Procedures (MPEP).  Is that it?  Is all lost?  Not necessarily.  If your application goes abandoned, there is a mechanism to revive the application.  You can file a petition to revive the application, which is not at all cheap.  The same section of the MPEP mentioned above also outlines the two types of petitions to revive – a petition to revive because the application was unintentionally abandoned (the expensive, and more common one) and a petition to revive because the application was unavoidably abandoned (less expensive, but nearly impossible to prove).

Upon filing the petition to revive, along with the appropriate fee, the application will generally be revived by the PTO.  For a petition to revive an application that was unavoidably abandoned, you will need to provide some kind of story as to why the application was unavoidably abandoned.  For a petition to revive an application that was unintentionally abandoned, all you pretty much need to say is “my bad” and the petition will be granted.  Personally, I have only seen one petition to revive for an unavoidable abandonment that was granted.  In that case, it turns out that the Applicant never received the Office Action because it got stuck somewhere in  patent office mail room limbo.  How could you possibly have avoided that?  I have filed plenty of petitions to revive based on unintentional abandonment (these are for clients that have come to me with an abandoned application and a check), and these are generally very smooth and simple to get granted.

Terms of Service and Your Copyrights

Thursday, 26 January, 2012 07:52 Written by Scott Nyman 3 Comments
Share via email

Upon logging into my Gmail this morning, a mandatory step in my daily routine, I noticed an alert that Google is consolidating the privacy policies and terms of service for all of its various online offerings. Being in the business of law, I felt compelled to read through the changes to see how Google will handle managing information about a user.

For those that are unaware, a privacy policy generally comprises a statement from a company regarding the handling of a user’s personally identifying information. The privacy policy is typically accompanied by a terms of service, which sets out the rules a user must abide by to gain access to a service. The terms of service may often define the legal relationship between a user and a service provider, the ways in which the service may be used, and the procedure to follow in the event the terms are violated.

Of course, being an intellectual property attorney, I immediately look to see how the rights relating to user owned copyrights and other IP is handled. Google’s terms of service reads:

Some of our Services allow you to submit content. You retain ownership of any intellectual property rights that you hold in that content. In short, what belongs to you stays yours.

Sounds amazing, right? But, if you read on…

When you upload or otherwise submit content to our Services, you give Google (and those we work with) a worldwide license to use, host, store, reproduce, modify, create derivative works (such as those resulting from translations, adaptations or other changes we make so that your content works better with our Services), communicate, publish, publicly perform, publicly display and distribute such content. The rights you grant in this license are for the limited purpose of operating, promoting, and improving our Services, and to develop new ones. This license continues even if you stop using our Services (for example, for a business listing you have added to Google Maps).

So, if a user posts one of his or her copyrighted materials on onc of Google’s services, the user in effect grants Google a non-revocable license to use the material, essentially, how they see fit, for “operating, promoting, and improving service, and develop new services,” a pretty broad group of categories.

This peaked my interest as to how a user’s copyrighted materials are handled on other popular social sites, such as Facebook.  Again, things start out rosy:

You own all of the content and information you post on Facebook, and you can control how it is shared through your privacy and application settings.

 But the devil is in the details:

For content that is covered by intellectual property rights, like photos and videos (IP content), you specifically give us the following permission, subject to your privacy and application settings: you grant us a non-exclusive, transferable, sub-licensable, royalty-free, worldwide license to use any IP content that you post on or in connection with Facebook (IP License). This IP License ends when you delete your IP content or your account unless your content has been shared with others, and they have not deleted it.

When you delete IP content, it is deleted in a manner similar to emptying the recycle bin on a computer. However, you understand that removed content may persist in backup copies for a reasonable period of time (but will not be available to others).

To my surprise, Facebook seems to make less of a grab on your copyrighted materials than Google. Of concern, Facebook claims the right to transfer and sub-license your content. However, it appears that any and all of Facebook’s rights in your content ends upon deletion of the content from Facebook’s system by the copyright holder and those with whom the content has been shared.

As a little bonus, section 5.6 of Facebook’s terms of service states, “You will not use our copyrights or trademarks (including Facebook, the Facebook and F Logos, FB, Face, Poke, Wall and 32665), or any confusingly similar marks, without our written permission.” So, allegedly, the word “face” is now owned by Facebook. If this turns out like the Superbowl-”Big Game” situation, we may have to start referring to our faces as our “head fronts.”

Trademark Infringement: One Name, Two Restaurants, Two Blocks Away

Monday, 23 January, 2012 05:29 Written by Aaron B. Thalwitzer 0 Comments
Share via email

You are not alone!

I’m in Orlando, Florida, this weekend, visiting my family, and an old friend has asked me a question.

Question: I’ve owned and operated a restaurant under the name [JR's] for 20 years. A month ago a restaurant opened up less than a mile away with the exact same name, [JR's] [ed. note - names have been changed to protect the innocent]. They serve barbecue, we serve Tex-Mex. Both are casual, moderately-priced, serve beer, and are generally ‘fun’ places to eat. They stole my name, right?

Answer: You are alleging trademark infringement, which, once proved, could warrant an injunction, damages, or both. You have a good claim.

First, let’s again review the Lanham Act, which creates a cause of action against any person who, in connection with goods or services, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin … which (A) is likely to cause confusion, or to cause mistake, or to deceive as to the… connection … of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, [or] services… See 15 U.S.C. § 1125(a)(1).

The key for a plaintiff in proving infringement of its trademark is to show the likelihood of consumer confusion. See Restatement (Third) of Unfair Competition § 21 cmt. a (1995) (“The test for infringement is whether the actor’s use of a designation as a trademark … creates a likelihood of confusion ….”).

An injunction will force the new JR’s to stop using the mark “JR’s”. A party seeking a preliminary injunction must establish (1) irreparable harm and (2) either (a) a likelihood of success on the merits or (b) a sufficiently serious question going to the merits and a balance of hardships tipping decidedly in the moving party’s favor. See Jackson Dairy, Inc. v. H.P. Hood & Sons, Inc., 596 F.2d 70, 72 (2d Cir.1979) (per curiam). In a trademark infringement case, proof of a likelihood of confusion establishes both a likelihood of success on the merits and irreparable harm. See Hasbro, Inc. v. Lanard Toys, Ltd., 858 F.2d 70, 73 (2d Cir.1988).

Relief may be available under 15 U.S.C. §§ 1114 (imitation of registered mark) and 1125(a) (false designation of origin). To prevail on a claim of trademark infringement, a plaintiff must show, first, that its mark merits protection, and, second, that the defendant’s use of a similar mark is likely to cause consumer confusion. I will assume you have have validly registered your mark (if not please do so; a registered mark in continuous use for five consecutive years after registration, and still in use, becomes incontestable under 15 U.S.C. § 1065) and turn consider the pivotal question: the likelihood of confusion.

Now we apply the multi-factor test, which requires analysis of several non-exclusive factors, including: (1) the strength of the mark, (2) the degree of similarity between the two marks, (3) the competitive proximity of the products, (4) actual confusion, (5) the likelihood the plaintiff will bridge the gap, (6) the defendant’s good faith in adopting its mark, (7) the quality of the defendant’s products, and (8) the sophistication of the purchasers. This will give us a good idea of the likelihood of confusion, but the court is not limited to these factors, and all must be viewed in the context of whether the consumer will be confused as to the source of the product.

I’ll go factor by factor.

(1) Your restaurant has been around for 30 years, so I will assume you have a strong mark. (2) The marks are identical. (3) You are directly competing geographically (6) and in terms of markets and could walk from one location to the other. (7) Good faith is impossible to determine without additional facts, but it may be inferred that the new JR’s is aware of your mark. (7) I don’t know anything about the quality of Defendant’s products. (8) I’ll assume the purchasers are an average sampling of the population, since the prices are moderate and you both serve beer.

There is an additional factor. The mark, “JR’s” probably derives from someone’s proper name. If both restaurants have proprietors named “JR”, things get mucked up. “[C]ourts generally are hesitant to afford strong protection to proper names, since to do so preempts others with the same name from trading on their own reputation. ‘To prevent all use of [a man's personal name] is to take away his identity; without it he cannot make known who he is to those who may wish to deal with him; and that is so grievous an injury that courts will avoid imposing it, if they possibly can.’” Brennan’s Inc. v. Brennan’s Restaurant, L.L.C., 360 F. 3d 125 (2d. Cir. 2004). The name of a person, therefore, like other descriptive marks, is protectible only if it has acquired secondary meaning.

The ultimate answer will depend on the overall impression of the name. I believe, on these facts, that you would probably prevail on an infringement claim. However, if the new JR’s added “BBQ” to their name, you would have an uphill battle. You will have to show that consumers will be confused by the names. Given the extreme proximity of the restaurants, one can envision two people meeting at disparate JR’s if an address wasn’t specified. You may want to consider hiring a trademark attorney. There are other claims and options beyond the scope of this article.

« Older Entries

Subscribe

Login



MONDAY, MAY 20, 2013

Bad Behavior has blocked 11264 access attempts in the last 7 days.