Trademarks, Copyrights, and Business Law
Charbucks – Trademark Dilution?
Is the use of the term “Charbucks” by a coffee company trademark dilution of the famous “Starbucks” coffee mark? The United States District Court for the Southern District of New York said that the use of “Charbucks Blend” and “Mister Charbucks” marks by Black Bear (a coffee company and micro roastery) had not been sufficiently proven by plaintiff Starbucks to be trademark dilution under the Lanham Act. Plaintiff then appealed to the United States Court of Appeals for the Second Circuit. Trademark Dilution is addressed by the Lanham Act. Condensing a somewhat complicated situation, during the pendency of various iterations of the lawsuit, Congress...
Read MoreWIPO / ICANN Adjudication for Domain Name Disputes
After a great deal of hue and cry, the US government asked the World IP Organization (WIPO) to come up with a way to regulate internet domain name disputes. After much debate, the idea of a non-profit corporation with a mandate to regulate domain names came about. This corporation was called ICANN: Internet Corporation for Assigned Names & Numbers. ICANN has steadily shed any pretense at oversight or external control. The US Department of Commerce has repeatedly given it more power and less oversight. In October, 1999, ICANN approved the Uniform Domain Name Dispute Resolution Policy (“The Policy.”) This administrative procedure is mandatory in the case...
Read MoreInternational Trademark Protection – The Madrid Protocol
There are multiple ways to protect your brand overseas, but the most commonly referenced method is the Madrid Protocol. The United States is a signatory to the Madrid Protocol, an international treaty that covers the mutual recognition of trademarks by its various member nations. In broad scope, it provides a single, relatively convenient way for a trademark holder to obtain protection in multiple nations. Domestic Registration The first basis for international protection is receiving a valid trademark in one’s own country. Actually the treaty is slightly more complicated than that, because theoretically one could obtain protection in a foreign country and then...
Read MoreTrademark Abandonment
Under section 45 of the Lanham Act a mark will be abandoned under certain circumstances: (1) When its use has been discontinued with intent not to resume such use. There are two parts to this element. “Intent” may be an actual statement, or implied by circumstances. What continues a discontinuation of use is tougher to determine by implication, but we have a bright line rule that three consecutive years of nonuse is prima facie evidence of abandonment. Prima facie is a fancy Latin expression generally taken to mean ‘legally sufficient’ but with the caveat that the presumption of sufficiency can be overcome or rebutted by counter-evidence of sufficient...
Read MoreDavid Versus Goliath in Whiskey Bottle Showdown
One of the iconic, uniquely American products out there is Tennessee Whiskey. With rugged, outlaw roots stemming from the days of moonshining and prohibition but now accepted the world over as a highly sought after beverage, even the term Tennessee Whiskey tends to evoke a certain image, perhaps even a certain nostalgia. Certainly these mental images, or customer associations in trademark-speak, can give rise to legal problems. One such case was recently filed by Jack Daniel’s, maker of the iconic black-and-white labeled bottles of Sour Mash whiskey found in bars and restaurants the world over. In their lawsuit for trademark infringement, the holders of the Jack...
Read MoreThe Trademark Registration Process Part 3
In Part 2 we looked at the process for obtaining Federal registration of a mark. Today we conclude with some miscellaneous, but still important, issues in trademark registration. State Registration The first is state registration. State registration is not as ‘strong’ as federal registration, mainly because there isn’t the kind of strong examination for conflicts with prior marks or abandoned or cancelled marks that there is via the USPTO examination. However, there is one good reason to obtain state trademark registration – the idea of putting others on notice. State registration is often very fast – a matter of weeks, instead of the six to twelve...
Read MoreCan a Government Entity Trademark their Insignia?
Today we look at an interesting case, In Re City of Houston, before the United States Court of Appeals for the Federal Circuit. This case consolidated two cases, one brought by the city of Houston, Texas, and the other by the government of the District of Columbia, that asked the same basic question. In both cases the local governmental entity sought federal trademark registration of their official insignia, e.g. their seal. Background of the Cases Both Houston and DC sought to trademark their seals as a moneymaking and merchandising endeavor. The United States Patent and Trademark Office (“Trademark Office”) refused both registrations. The reason cited by...
Read MoreThe Trademark Registration Process Part 2
Once the use in commerce (or intent to use) requirement is satisfied by the aspiring trademark registrant, the next step is to file an application for Federal registration with the United States Patent and Trademark Office (“USPTO” or “Trademark Office”). The use requirement is referred to as the “basis for filing” by the USPTO. Trademark Application The application covers formalistic requirements that identify both the filer and necessary details about the trademark. For instance the name of the filer, correspondence address, drawing of the mark, type of goods/services, dates of use, color features, and sound features are all features of an...
Read MoreThe Trademark Registration Process – Part 1
How does one go about registering a trademark? What are some of the requirements in order to obtain protection? There are many steps and several issues to consider, but overall the process is not arcane or excessively complicated (unlike, for instance, the steps necessary to obtain a utility patent). Federal Trademark registration is handled by the United States Patent and Trademark Office. Trademark Search To be registrable, a trademark cannot already be owned by someone else. Thus the first step is to conduct a trademark search. Various private companies and even some attorneys offer trademark search services and will generate for you a search report. ...
Read More“Nominative” Fair Use
The United States Court of Appeals for the First Circuit recently decided the very interesting case of Swarovski Aktiengesellschaft v. Building No. 19. This case highlighted the fact that trademark law is constantly evolving – the major issue was so-called “nominative” use of a trademark, i.e., use of a trademark to refer to the trademark holder’s own goods in an advertisement by a seller not affiliated with the trademark holder. As the First Circuit noted, different circuits of the United States have fashioned different rules for dealing with this type of use – thus the matter may well have to be resolved by the Supreme Court at some point. Background of...
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