Posts Tagged ‘trademark lawsuit’

Facebook Settles Trademark Infringement Lawsuit With Lamebook

Friday, 02 September, 2011 16:39 Written by Mark Malek 0 Comments
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By: Mark R. Malek

Many of you may recall that last November I wrote an article about how Facebook was on the receiving end of a trademark lawsuit wherein Lamebook asked the court to determine that Lamebook was not infringing the Facebook mark and that Lamebook was a parody.  As expected, this case has now settled (source).

In the settlement, Lamebook will be able to continue to use their website, and there is no danger to Facebook losing their trademarks.  Sounds fair enough, right?  WRONG!  In this particular case, Facebook lost, Lamebook won, and all the attorneys involved in the case (where I am sure that the bill was several hundred thousand dollars combined) also won.  Some would say that Facebook had nothing to lose.  In this case, however, it was proven that the Facebook’s litigation tactics didn’t work.

Every time that a trademark owner sends out a “cease and desist” notice, they expose themselves to the filing of a lawsuit.  The reason is that these cease and desist notices generally come with some threat of litigation.  The threat of litigation itself is enough to raise a “case or controversy” which the court can hear.  As you know, we have reported several of the Facebook trademark cases here on TacticalIP.com.  Check out our stories here, here, here, here, and here.  It is clear that Facebook vigorously enforces their trademark, and I cannot blame them for that, but sometimes, it is my opinion that their tactics are a little over the top.

Although it probably cost Lamebook a fortune to get to this point, they just proved to the world that Facebook does not own the exclusive rights to the words “Face” and “Book.”  It is ok to make fun of Facebook.  The most important thing about the case is that Lamebook gets to stay in business.  The litigation costs for Facebook are really not a factor.  If they have to spend a few hundred thousand dollars, or even millions, to protect their trademarks, then it is worth every dime.  They have very valuable trademarks.  I think they just need a little policing to make sure they don’t cross over into the trademark bully camp.

 

USPTO Appoints New Deputy Commissioner for Trademark Operations

Friday, 17 June, 2011 08:48 Written by Mark Malek 0 Comments
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By: Mark R. Malek

In a press release dated June 15, 2011, the USPTO announced the appointment of Mary Boney Denison as deputy commissioner for trademark operations. Ms. Denison will oversee the examination and processing of applications throughout the trademark operation.  Ms. Denison was one of the founding partners of Manelli Denison & Selter and focused her practice on trademark prosecution and litigation.

This is just another example of the way things are changing in the USPTO for the better.  First we have a director (David Kappos) that has a background in intellectual property as the Chief IP Counsel for IBM, the largest patent filer in the US for as long as I can remember.  Now we have supplemented that experience with a seasoned trademark attorney to run trademark operations.  Things are on the upswing at the USPTO.

 

Apple to Turn Over Thunderbolt Trademark to Intel

Saturday, 04 June, 2011 14:48 Written by Mark Malek 0 Comments
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By: Mark R. Malek

Seems as though every time I turn around, Apple is in the intellectual property news once again.  This time, I understand that Apple will be turning over ownership of the “Thunderbolt” trademark to Intel.

Apple originally filed for the “Thunderbolt” trademark to be used in connection with its new high speed data port.  Intel, however, worked with Apple to develop this new standard.  The deal allows Apple to have unrestricted use of the trademark.  As I was reading through this story, it does not seem as though there was any sort of “dispute” with respect to the trademark.  Instead, it looks as though Apple and Intel worked together on this new standard, and part of Apple’s contribution was to take care of the initial trademark filing.  Of course, any type of intellectual property story with Apple involved always seems like a dispute.

This almost seems like a cross licensing deal, and I am sure that the “Thunderbolt” trademark was not the only piece of intellectual property involved in the deal.  There may have been some patents or patent applications involved, and certainly some copyright issues raised in the licensing deal.

These are some of the things that companies need to think about when entering into collaborative agreements with one another.  Before entering into collaborative agreements with other companies, these types of terms should be agreed upon.  Taking the time to think of these terms and making sure that everything is as clear as possible is a sure way to substantially reduce the likelihood of litigation at a later date.

You will notice that I did not say that litigation could be eliminated.  I wish that were the case, but it is just not feasible.  If someone thinks that they have a right to something, and they have $350 to file a lawsuit (that’s about the going rate for a filing fee for a complaint) then they can sue you.  With the proper agreements in place, however, you will likely have a good defense.

 

 

John Elway demands punk band changes name, still hated by Clevelanders

Sunday, 29 May, 2011 20:05 Written by Scott Nyman 0 Comments
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Scott Nyman

 

I grew up in a small town situated on the border of Ohio and Pennsylvania. Half of the locals were fans of the Cleveland Browns. The other half were Pittsburgh Steelers fanatics. Raised as a Browns fan, I learned to hate two things, the Steelers and John Elway. The dislike of the Steelers was more or less a friendly exchange of jabs, all in good fun over the local rivalry. The hatred towards John Elway and the Denver Broncos was much more real, beginning in the mid-80’s, particularly after “The Drive.”

Unsurprisingly, I couldn’t pass on the chance to cover the latest actions of that jerk us Clevelanders call, “horse face.” Recently, Mr. Elway has demanded that a local punk band of Fort Collins, Colorado refrain from playing under their current band name, “Elway.” The band seems unmoved by Elway’s threats. They have since released a statement to punknews.org.

“We have no intention of changing the name again. We love the name, regardless of what connotations are inferred by the listener. Surely, if the Dead Kennedys could become one of punk’s most popular bands without incurring litigation, Elway can keep their moniker and continue making so-so music for our dozens of fans to enjoy.”

It’s hard to say with which side the court may rule if this matter were to make it to trial. However, I doubt this issue will ever be argued before a judge. Staff writer and intellectual property attorney John Gentile sums up the situation well in his response to the article. I am in total agreement with his assessment of the financial hurdle the band may face in defending its right to use the mark. Gentile says,

“However, victory in court probably won’t be so much of a threat to the band Elway as money will. Trademark litigation not only involves lawyers fees, but almost always involves experts. In a trademark case, hiring an expert often starts out with a $15,000 retainer and can rapidly increase. Often, larger parties that hold a mark will threaten smaller parties with a similar mark in order to protect their own mark. Knowing that smaller parties can not afford to litigate, the larger party will force the smaller party to change its mark and therefore strengthen its own for future litigation, even if it would have lost in court. If the band Elway chooses to fight the famed footballer, they’ll likely have quite the battle ahead of them. If not, then they’ll likely agree with John Elway that if they change their name, he’ll drop his pending suit.”

A link to the punk news article has been included below:

http://www.punknews.org/article/42773

 

Entrepreneur Magazine a Trademark Bully… to Entrepreneurs

Saturday, 28 May, 2011 08:55 Written by Mark Malek 2 Comments
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By: Mark R. Malek

I came across a story on the Businessweek Magazine Website that rang my trademark bully alarm.  It seems as though Entrepreneur Magazine, which publishes a magazine geared towards the interests of, wait for it, wait for it – entrepreneurs, is suing  entrepreneurs for trademark infringement.  As I was initially reading the story, I was thinking – ok, this author might not have it right.  Entrepreneur Magazine is probably only really going after folks who are putting out competing magazines and using the “Entrepreneur” trademark for their magazines.  Unfortunately, Paul Barrett did understand and was right on.

Entrepreneur Magazine’s latest victim is Daniel Castro, who operates the website EntrepreneurOlogy.com.  Daniel is described as being a serial entrepreneur, having started several different businesses. EntrepreneurOlogy.com is website that, essentially, promotes Mr. Castro as an aid to entrepreneurs and provides tools to “corporate executives to get back to the basics of entrepreneurship.”  Entrepreneur Magazine does have a trademark for “Entrepreneur,” among many others, as used in relation to “advertising and business services, namely, arranging for the promotion of the goods and services of others by means of a global computer network and other computer online services providers; providing business information for the use of customers in the field of starting and operating small businesses and permitting customers to obtain information via a global computer network and other computer online service providers and; web advertising services, namely, providing active links to the websites of other.”

Point of order – isn’t this exactly what entrepreneurship is?  At least a part of it?  For example, “providing business information for the use of customers in the field of starting and operating small businesses.”  Is that not the same as saying “providing business information to entrepreneurs?” Seems to me that, if I were Entrepreneur Magazine, I would be somewhat careful about trying to flex some trademark muscle against folks…especially against my own customer base.  Has this trademark registration been put to the test yet?  Seems to me as though suing your target audience is not a very bright idea.  How are entrepreneurs supposed to trust anything in a magazine for entrepreneurs that involves the advice of “sue your target audience?”

Time to play devil’s advocate.  Let’s say that I am the trademark attorney for Entrepreneur Magazine, and let’s say that my client comes to me with a list of potential infringers.  On that list are three magazine publishers that include the mark “Entrepreneur” in their title, and three websites that are titled “Entrepreneur” and that each provide business information for the use of customers in the field of starting and operating businesses.  I probably advise my client to ask the magazines to stop immediately.  I probably then tell my client that it is time to do a very in-depth analysis of the websites.  My question to my client is the following: “how else do you think this website should describe their target audience, i.e., how else would you refer to someone that is starting a new business?”  If the answer is anything remotely close to “it wouldn’t make sense to call them anything but entrepreneurs,” then I ask my clients to probably reconsider going after the website, especially if the website merely incorporates the word “entrepreneur” into their title.

If your trademark is the only way to say a particular thing, i.e., your trademark becomes the generic term, then it is not protectable.  For example, the following used to be trademarks: aspirin, trampoline and escalator.  Here are a few that I just can’t believe are still around: Band Aid, Popsicle and Jacuzzi.  Seems to me as though Entrepreneur needs to watch its step here.  I’m not saying that entrepreneur is becoming generic as to magazines for business start ups, I’m just saying that a trademark registration does not give them the ability to remove the word from the lexicon.

 

 

 

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