Category: Trademark

THE SIMPSONS’ “DUFF” BEER TRADEMARK FIGHT

Friday, 20 April, 2012 17:40 Written by danieldavidson 0 Comments
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By Daniel Davidson

German Brew Masters, Duff Beer UG, are putting News Corp’s Twentieth Century Fox’s (“TCF”) European trademarks for “Duff” to the test.  In a recent suit filed by Duff Beer UG, the actual beer maker, which does not have anything to do with The Simpsons, is asking a European court to reverse a previous decision, by the EU trademark office, that the beer maker could not register “Duff.”

Is it fair to say that it is a little absurd that a trademark exists for a fictional beer?  Don’t get me wrong, the Simpsons has made me chuckle for a long time now, but seriously?  I’m no expert on EU trademark law, but I would have to assume that it is somewhat similar to U.S. trademark law.  If not, I apologize.  So, how is it that TCF was able to allege use of their mark for beer?  Are they selling their “Duff” beer in commerce?  I’ve never bought one (though that would be awesome).

It doesn’t seem to be crazy that TCF could come out on top.  In 1996, TCF was able to cease an Australian beer distributer from “cheersing” their “Duff” beer.  I did a quick google search to make sure that TCF isn’t selling “Duff” beer.  In doing so, I came across an article in which they claim that the creator of the Simpsons, Matt Groening, is against making a real beer called “Duff” because it would encourage kids to drink.

It will be fun to see which way the European court goes with this one.  Here is to the weekend.  Cheers.

Protecting Yourself, Being the Bad Guy

Thursday, 19 April, 2012 06:00 Written by Dan Pierron 0 Comments
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I recently had a protracted discussion with some friends and acquaintances regarding this case.  It involves the unfortunate circumstance of a very noble non-profit organization losing a trademark infringement suit to a private veterinary clinic and being forced to rename itself.  I’ll address a few aspects of this suit, explain why the plaintiff did what they did, and offer advice for how to avoid similar circumstances.

The parties in question are the trademark holder, “Heartland Animal Clinic” (“HAC”), and “Heartland SPCA” (“HSPCA”).  Both provide veterinary services, with the former operating as a private clinic and the latter as a non-profit, charitable organization.  The suit arises because HAC feels, rightly so, that they have invested in their name and deserve the rights afforded under trademark law to prevent others from using that name.  HAC began using its name before HSPCA, and thus, unless there is another vet using a name similar to HAC’s, HAC likely can claim trademark protection.

A trademark can only be obtained when the mark is used in commerce.  When that mark is obtained, it is limited to those goods and services for which it has been used commercially.  In this instance, HAC’s mark is limited to veterinary services.  It just so happens that HSPCA not only uses a similar name, but is also engaged in providing veterinary services.

Every good-hearted person will feel some distaste with this situation and ask “How can HAC act so insensitively to such a noble institution such as HSPCA?”  The unfortunate truth is, if HAC wants to have a defensible trademark, they have no choice except to go after HSPCA.  If HAC were seen to permit HSPCA to use such a similar name for their business, HAC would not be “policing” their trademark, meaning keeping other people from using the same or similar marks.  A trademark’s value is in its ability to identify a particular entity with a particular mark.  If a mark becomes associated with more than one entity, it loses its value and can no longer be protected by trademark law.  In this instance, if the term “Heartland” were to become associated with both HAC and HSPCA, HAC could hardly claim “Heartland” was unique to them in the veterinary services world.  Therefore, HAC must choose between going after everyone and going after no one.  When viewed from this perspective, HAC’s actions seem more understandable.

In my view, the fault in this situation rests squarely with HSPCA.  Please hear me out before closing this page.  Before HSPCA adopted its new name, HAC was happily conducting its business and building its reputation and its brand.  It is a safe assumption that a quick online search would have revealed HAC’s existence.  When deciding on a new name, HSPCA could have conducted such an online search and learned about HAC.  At that point, HSPCA could have gone to HAC and asked for permission to use “Heartland.”  HAC would have almost certainly said no, given the litigation that has occurred.  But, at least both sides could have avoided the expense, headache and heartache of litigation that has arisen as a consequence of HSPCA’s uninformed choices.

A lesson to be learned is that whenever you are entering the marketplace, be it by starting a new business or releasing a new product, you would be well served by searching the USPTO database for registered trademarks as well as the Secretary of State website for your state for any state trademark registrations.  Foregoing these, simply conducting an online search could reveal conflicts with names you have been thinking of, and save yourself from lots of trouble later on.

Trademark Infringement of Your Name’s URL: Here’s What Can You Do

Monday, 16 April, 2012 08:32 Written by Aaron Thalwitzer 0 Comments
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It’s happened to everyone. You get the itch to register your name’s “.com” URL. Mine’s available (I need to get around to registering it), but my last name isn’t. My last name, thalwitzer.com, is taken by what appears to be a German printing business. There’s nothing I can do from a legal perspective to get that URL, though I could try to buy the name, if I really wanted to. But what if aaronthalwitzer.com was taken by one of those parking sites that offers no content, just ads, pop-ups, porn or all of the above — could you do something then?

Maybe. If you’ve got a relatively unique name (check) have some level of notoriety (well . . .), and the registrant registered the site in bad faith, you’ve got a good shot of getting your rightful site back. That’s because if your name has become well-enough known that people associate you with your name (as opposed to someone else, or no one), then you may have a trademark on your name.  According to the World Intellectual Property Organization (WIPO), the intellectual property arm of the United Nations:

“[Y]ou can register your name as a trademark provided the Trademark Office of your country or the country for which you are seeking protection considers it “distinctive.” As to whether a name is distinctive or not depends on a variety of factors. As a rule of thumb, the more common the name is the less likely it will be considered distinctive as there may be many others with the same name. Likewise, the more unusual the name is the greater the distinctiveness and the greater the likelihood that registration will be granted.

In any event, even if you have been refused registration of your name as a mark either for the reason that it was not considered distinctive or because someone else had already registered it you are not prevented from using your name in the course of your business for ordinary business purposes.”

In a famous case, the actor Morgan Freeman, noted for playing the role of the wizened old guy in every movie ever, sued a company that registered morganfreeman.com. WIPO arbitrated the case and held that based upon his long and illustrious career, Mr. Freeman was recognizable enough. Just as importantly for his case, WIPO held that the registrant, Mighty LLC had registered the URL “in bad faith to divert Internet traffic to a commercial search engine.”

To sum up, to prove cybersquatting infringement in order to have a URL canceled or transferred to its rightful trademark owner, you must prove that:

  1. the domain name is identical or confusingly similar to the trademark;
  2. the registrant has no right or legitimate interest in the domain name; and
  3. the domain name has been registered and is being used in bad faith.

There are no guarantees in litigation, but registering your name as a trademark could only bolster your case before a WIPO arbitrator. Do that, and hire a reputable trademark attorney to do it. That zoomy legal website place may save you a few bucks up front, but can’t give you any advice on your intellectual property issues, leaving you out in the cold, and possibly forcing you to spend thousands or more to protect your trademark. Do it right.

Aaron Thalwitzer is an attorney with Zies Widerman & Malek practicing civil litigation and intellectual property law in Melbourne, Brevard County, Florida.

What is trademark dilution?

Monday, 09 April, 2012 06:00 Written by Aaron Thalwitzer 0 Comments
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Does this dilute Starbucks' mark?

Trademark dilution gives the owner of a trademark standing to prevent others from using that mark in a way that would lessen the mark’s uniqueness. Usually this comes up when an unauthorized user puts the trademark on products generally unrelated to those of the trademark owner. For example, a famous trademark used by one person to refer to bottled water might be diluted if another company began using a similar mark to refer to pads of paper. Dilution is a specific type of trademark infringement that only applies to famous marks. Ordinary marks can be infringed only when there exists a likelihood of confusion as to the source of the product or service being identified by the allegedly infringing use. Non-famous marks are intrinsically unlikely to create confusion in unrelated markets. Famous marks, on the other hand, have a vast potential for confusion since it is inherently well-known by consumers. The idea is that consumers will assume that the diluting user has is affiliated with the owner of the mark, even if product or service is being sold in an entirely different market.

A diluted trademark loses its capacity to symbolize a single source. But, to qualify for dilution protection, a mark must be unusually strong. Many “brand names” would qualify, especially the ones with unique or made-up names like Coca-Cola or Motorola, as opposed to marks using existing words or surnames like Apple or Zenith.

Dilution protection was previously used to attack domain name infringement of trademarks, i.e. cybersquatting. However, the Trademark Dilution Revision Act of 2006 overturned the Supreme Court decision in Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003). Moseley required the plaintiff needed to prove actual dilution under the Federal Trademark Dilution Act (“FTDA”). The TDRA only requires the plaintiff to show the defendant’s mark is likely to cause dilution, but reduced the scope of marks falling under its protection by requiring that marks be nationally well known to qualify for protection.

In a well-known example, Wolfe’s Borough Coffee, Inc. sold its coffee under the marks “Charbucks Blend” and “Mr. Charbucks,” Starbucks Corporation sued for dilution, claiming that Wolfe’s blurred and tarnished their marks. The Second Circuit Court of Appeals decided that marks need not be “substantially similar” for dilution to occur when other factors supporting a finding of dilution, such as the distinctiveness of the famous mark and the degree of its recognition, were present. The court found that these other factors may be sufficient to support a dilution claim and remanded the case to the district court in order to determine whether dilution had in fact occurred.

The TDRA requires courts to consider the following factors when analyzing whether dilution by blurring has occurred:

  1. the degree of similarity between the mark and the famous mark,
  2. the degree of inherent or acquired distinctiveness of the famous mark,
  3. the extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark,
  4. the degree of recognition of the famous mark,
  5. whether the user of the non-famous mark intended to create an association with the famous mark, and
  6. any actual association between the non-famous mark and the famous mark.

15 U.S.C. §1125(c)(2)(B).

In another post, we will explore defenses to claims of dilution, in case you just can’t resist tempting fate when deciding on a mark for your product or service.

Attorney Aaron Thalwitzer practices civil litigation and intellectual property law in Melbourne, Brevard County, Florida.

Does trademark classification matter?

Monday, 02 April, 2012 06:00 Written by Aaron Thalwitzer 0 Comments
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Q:  If someone registers a mark in one class, can I register that same mark in a different class, does it really matter?

Yes.  The same words can relate to completely different goods or services without a likelihood of confusion in the minds of consumers. The examples are legion: Apple computers and Apple records, Delta faucets and Delta Airlines, the San Francisco Giants and the NY Giants. Choosing a trademark used in one class for use in another may be legal, but it isn’t always a good idea. The holder of the existing trademark may not like someone moving in on what they perceive as their territory — try to find one that’s truly unique without being descriptive.

Besides, the USPTO rejects about half of the submissions they receive, and a different classification alone won’t win the day — simply put, you should try harder to find your own mark. Additionally, a product’s trademark naturally extends to related markets, so if you insist on using an existing mark, at least make sure your product is in no way related to the existing product.

It’s important to remember that the 45 trademark classes are an artificial and sometimes arbitrary structure created, in part, to make it easier for trademark registrars like the USPTO more efficiently do their jobs. Courts have determined that the structure cannot limit an applicant’s or registrant’s rights. See 15 U.S.C. §1112 (“The Director may establish a classification of goods and services, for convenience of Patent and Trademark Office administration, but not to limit or extend the applicant’s or registrant’s rights.”); In re Inca Textiles, LLC (Fed. Cir. 2009) (“The PTO correctly points out that likelihood of confusion to the consuming public is independent of the classification manual, and that classification schedules do not alter the scope of the registration.”); Jean Patou, Inc. v. Theon, Inc., 9 F. 3d 971, 975 (Fed. Cir. 1993)(“[C]lassification is wholly irrelevant to the issue of registrability under section 1052(d), which makes no reference to classification.”).

As with many things trademark, the key is whether the goods or services offered are “related” to goods or services already on the market. The classification scheme is important but secondary. If consumers would result in relevant consumers mistakenly believing that the goods originate from or are associated with the same source. The proper inquiry is not whether the goods could be confused, but whether the source of the goods is likely to be confused.

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THURSDAY, MAY 17, 2012

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