Trademark Blogs

Alice is Harsh - Understanding Alice Corp for Patent Ineligible Subject Matter

TM Blog of TM Lawyer's Mind - Wed, 01/28/2015 - 15:20

The US Supreme Court’s decision in Alice Corp. v. CLS Bank, which came down last June elaborated on patent ineligible subject matter, particularly as it applies to software patents.  But the scope of these 101 type rejections has expanded to business method patents as well.  We have been noticing an uptick in these rejections just in the past few months.  The ABA just posted this article discussing Alice’s wrath.


 


http://www.abajournal.com/magazine/article/business_method_and_software_patents_may_go_through_the_looking_glass_after/?utm_source=maestro&utm_medium=email&utm_campaign=tech_monthly


Los Angeles Trademark Lawyer
Categories: Trademark Blogs

Would You Feel Friendly Toward Freddy?

Duets Blog - Wed, 01/28/2015 - 10:56

As the brand manager or trademark counsel for Friendly’s, would you be friendly toward Freddy’s?

I remember the Friendly’s restaurant chain when we lived in Columbia, Maryland, back in the days when I clerked for a Senior Judge on the Court of Appeals for the Federal Circuit in Washington, D.C., so at my first sighting of the about-to-open Freddy’s restaurant location in Maple, Grove, Minnesota (shown above), it brought memories of Friendly’s to mind:

 

 

 

 

 

 

 

 

 

 

 

 

Beyond the similarities as to sound, appearance, and cadence of the names, the graphic design of the cursive logos, the possessive forms, the color schemes, and trade dress, they seem to have a similar menu focus too:

 

 

 

 

 

 

 

 

Yet, they appear to peacefully coexist on the Principal Register at the USPTO (Friendly’s and Freddy’s), and it further appears from the location maps for each restaurant chain (Friendly’s v. Freddy’s) that there are some areas of geographic overlap too, although I haven’t studied the maps closely enough to determine how many miles separate the actual locations within a particular state.

Now, I’m not suggesting a brand manager or trademark counsel go all out crazy here — Freddy-Krueger-style, but I’ve also seen far worse cases pursued too.

What do you think, is there a plausible case of likelihood of confusion here, or would this be another example of trademark bullying?

Do you suppose these growing chains will ever bump into each other, and if so, will there be polite exchanges of, “excuse me” — is there any possibility of real friendship in their futures?

Categories: Trademark Blogs

False PAC advertising?

43 Blog - Wed, 01/28/2015 - 07:13
This detailed Politico story suggests that there's a fraudulent misrepresentation problem, but that the FEC can't do much about it.http://tushnet.blogspot.com/feeds/posts/default?alt=rss
Categories: Trademark Blogs

Looking Behind The Different Invalidation Rates Of Oppositions And IPRs

IP Watch - Wed, 01/28/2015 - 07:09
Opposition proceedings in Europe have long served as a powerful tool for third parties to challenge the validity of a patent before the European Patent Office (EPO). Now, under the America Invents Act (effective September 2012), the United States (US) has two new procedures for challenging the validity of a patent before the US Patent and Trademark Office (USPTO): inter partes review (IPR) and post-grant review. Current statistics indicate a higher invalidation rate for IPRs as compared to EPO oppositions.
Categories: Trademark Blogs

internetcases turns 10 years old today

Internet Cases - Wed, 01/28/2015 - 07:08

Ten years ago today, somewhat on a whim, yet to fulfill a need I saw for discussion about the law of the internet in the “blogosphere” (a term we loved dearly back then), I launched internetcases.

What started as a one-page handwritten pamphlet that I would mimeograph in the basement of my one-bedroom apartment and then foist upon unsuspecting people on street corners has in ten years turned into a billion dollar conglomerate and network. internetcases is now translated into 7 languages daily and employs a staff of thousands to do the Lord’s work fighting Ebola and terrorism on 4 continents. Or it’s a WordPress install on some cheap GoDaddy space and I write when I can.

All seriousness aside, on this 10th anniversary, I want to sincerely thank my loyal readers and followers. Writing this blog has been the single most satisfying thing I’ve done in my professional life, and I am immensely grateful for the knowledge it has helped me develop, the opportunities for personal brand development it has given (speaking, press, media opportunities), but most of all, I’m grateful for the hundreds of people it has enabled me to connect with and get to know.

Blogging (and the web in general) has changed a lot in 10 years. And the legal issues arising from the internet continue to challenge us to stretch our thinking and amp up our powers of analysis. It’s great to have a platform on the web from which to share news and thoughts about the role that technology plays in shaping our legal rules and our culture.

Thanks all.

Categories: Trademark Blogs

The Challenge Of Complying (Or Not) With Communication Laws Online

IP Watch - Wed, 01/28/2015 - 04:33
Is it possible to fully comply with all the laws surrounding online communication? Michel Jaccard, founder of id est avocats says, “The answer is, ‘no.’” Speaking last week at the Club Suisse de la Presse, Jaccard made the case that when it comes to the online world, we should look beyond legal compliance and start thinking more strategically.
Categories: Trademark Blogs

Precedential No. 2: Applicant's Third-Party Registrations Show That RV Trailers and Trucks are Not Related

TTABLog - Wed, 01/28/2015 - 03:38
The differences in the goods and their channels of trade and the high degree of purchaser care led the Board to conclude that the mark TERRAIN for “recreational vehicles, namely, towable trailers” is not likely to cause confusion with the identical mark registered for “motor land vehicles, namely, trucks.” Applicant Thor Tech's  evidence of dozens of third-party registrations for the same or very similar marks, owned by different entities, for vehicles and recreational vehicle trailers suggested to the Board that "businesses in these two industries believe that their respective goods are distinct enough that confusion between even identical marks is unlikely." In re Thor Tech, Inc., Serial No. 85667188 (January 26, 2015) [precedential].


The evidence established that towable RVs (see illustration below) are essentially travel trailers equipped with electric and water capacities, as well as toilet facilities. The examining attorney submitted seven third-party registrations covering "trucks" and "trailers," but five of them listed trailers that were not recreational vehicles. The other two, however, served to suggest that trucks, conversion kits, trailer hitches and trailers may emanate from the same source.

Applicant Thor Tech countered with fifty sets of third-party registrations for the same or similar marks, owned by different entities, and covering automobiles, trucks or sport utility vehicles on the one hand and recreational vehicles, travel trailers, and/or motor homes on the other. The Board found that this "pattern of registrations" rebutted the two registrations submitted by the examining attorney. The Board came to a similar conclusion in In re Keebler Company v. Associated Biscuits Limited, 207 U.S.P.Q. 1034, 1038 (TTAB 1980) ("The mutual respect and restraint exhibited toward each other by the owners of the plethora of marks, evidenced by their coexistence on the Register, are akin to the opinion manifested by knowledgeable businessmen .... "). These third-party registrations "suggest that consumers are aware that [the goods] are offered by different companies under the same or similar marks."

The examining attorney, relying on a number of Internet websites, contended that the involved goods travel in the same channels of trade, but the Board was unpersuaded. It found that, at best, this evidence indicated that two small retailers that sell a wide variety of vehicles also sell used trucks and recreational vehicle towable trailers, and another retailer sells automobiles (and presumably trucks) and recreational vehicles. "While trucks and recreational towable trailers may occasionally be sold by the same retailers, we cannot overlook the facts that the products are, at least on this record, noncompetitive, differ completely in utility, have nothing in common with respect to their essential characteristics or sales appeal, and ... are expensive."


Because the involved goods are costly - the TERRAIN vehicle was sold by registrant GM for $26,23, while towable trailers cost in the $8,000 to $24,000 range - the Board inferred that purchasers would exercise a high degree of care in making their purchasing decisions. Trucks and towable RVs are not everyday purchases, and a consumer would be expected to closely examine the products, probably after conducting some research regarding the vehicles. In short, this du Pont factor weighed against a finding of likely confusion.

Balancing the relevant du Pont factors, the Board concluded that applicant's mark is not likely to cause confusion with registrant's mark, and so it reversed the refusal.

Read comments and post your comment here

TTABlog note: Would the "pattern of registrations" argument be effective in the context of wine  versus other alcoholic beverages?

Text Copyright John L. Welch 2015.
Categories: Trademark Blogs

Best practices for providers of goods and services on the Internet of Things

Internet Cases - Tue, 01/27/2015 - 16:26

Today the United States Federal Trade Commission issued a report in which it detailed a number of consumer-focused issues arising from the growing Internet of Things (IoT). Companies should pay attention to the portion of the report detailing the Commission’s recommendations on best practices to participants (such as device manufacturers and service providers) in the IoT space.

The Commission structured its recommendations around four of the “FIPPS” – the Fair Information Practice Principles – which first appeared in the 1970’s and which inform much of the world’s regulation geared to protect personal data. The recommendations focused on data security, data minimization, notice and choice.

DATA SECURITY

IoT participants should implement reasonable data security. The Commission noted that “[o]f course, what constitutes reasonable security for a given device will depend on a number of factors, including the amount and sensitivity of data collected and the costs of remedying the security vulnerabilities.” Nonetheless, companies should:

  • Implement “security by design”
  • Ensure their personnel practices promote good security
  • Retain and oversee service providers that provide reasonable security
  • Implement “defense-in-depth” approach where appropriate
  • Implement reasonable access control measures
  • Monitor products in the marketplace and patch vulnerabilities

Security by Design

Companies should implement “security by design” into their devices at the outset, rather than as an afterthought by:

  • Conducting a privacy or security risk assessment to consider the risks presented by the collection and retention of consumer information.
  • Incorporating the use of “smart defaults” such as requiring consumers to change default passwords during the set-up process.
  • Considering how to minimize the data collected and retained.
  • Testing security measures before launching products.

Personnel Practices and Good Security

Companies should ensure their personnel practices promote good security by making security an executive-level concern and training employees about good security practices. A company should not assume that the ability to write code is equivalent to an understanding of the security of an embedded device.

Retain and Oversee Service Providers That Provide Reasonable Security

The Commission urged IoT participants to retain service providers that are capable of maintaining reasonable security and to oversee those companies’ performance to ensure that they do so. On this point, the Commission specifically noted that failure to do so could result in FTC law enforcement action. It pointed to a recent (non IoT) case in which a medical transcription company outsourced its services to independent typists in India who stored their notes in clear text on an unsecured server. Patients in the U.S. were shocked to find their confidential medical information showing up in web searches.

The “Defense-in-Depth” Approach

The Commission urged companies to take additional steps to protect particularly sensitive information (e.g., health information). For example, instead of relying on the user to ensure that data passing over his or her local wireless network is encrypted using the Wi-Fi password, companies should undertake additional efforts to ensure that data is not publicly available.

Reasonable Access Control Measures

While tools such as strong authentication could be used to permit or restrict IoT devices from interacting with other devices or systems, the Commission noted companies should ensure that they do not unduly impede the usability of the device.

Monitoring of Products and Patching of Vulnerabilities

Companies may reasonably decide to limit the time during which they provide security updates and software patches, but must weigh these decisions carefully. IoT participants should also be forthright in their representations about providing ongoing security updates and software patches to consumers. Disclosing the length of time companies plan to support and release software updates for a given product line will help consumers better understand the safe “expiration dates” for their commodity internet-connected devices.

DATA MINIMIZATION

Data minimization refers to the concept that companies should limit the data they collect and retain, and dispose of it once they no longer need it. The Commission acknowledged the concern that requiring data minimization might curtail innovative uses of data. A new enterprise may not be able to reasonably foresee the types of uses it may have for information gathered in the course of providing a connected device or operating a service in conjunction with connected devices. Despite certain concerns against data minimization, the Commission recommended that companies should consider reasonably limiting their collection and retention of consumer data.

The Commission observed how data minimization mitigates risk in two ways. First, the less information in a database, the less attractive the database is as a target for hackers. Second, having less data reduces the risk that the company providing the device or service will use the information in a way that the consumer does not expect.

The Commission provided a useful example of how data minimization might work in practice. It discussed a hypothetical startup that develops a wearable device, such as a patch, that can assess a consumer’s skin condition. The device does not need to collect precise geolocation information in order to work, but it has that capability. The device manufacturer believes that such information could be useful for a future product feature that would enable users to find treatment options in their area. The Commission observed that as part of a data minimization exercise, the company should consider whether it should wait to collect geolocation information until after it begins to offer the new product feature, at which time it could disclose the new collection and seek consent. The company should also consider whether it could offer the same feature while collecting less information, such as by collecting zip code rather than precise geolocation. If the company does decide it needs the precise geolocation information, the Commission would recommend that the company provide a prominent disclosure about its collection and use of this information, and obtain consumers’ affirmative express consent. And the company should establish reasonable retention limits for the data it does collect.

As an aspect of data minimization, the Commission also discussed de-identification as a “viable option in some contexts” to help minimize data and the risk of potential consumer harm. But as with any conversation about de-identification, the Commission addressed the risks associated with the chances of re-identification. On this note, the Commission referred to its 2012 Privacy Report in which it said that companies should:

  • take reasonable steps to de-identify the data, including by keeping up with technological developments;
  • publicly commit not to re-identify the data; and
  • have enforceable contracts in place with any third parties with whom they share the data, requiring the third parties to commit not to re-identify the data.

This approach ensures that if the data is not reasonably de-identified and then is re-identified
in the future, regulators can hold the company responsible.

NOTICE AND CHOICE

Giving consumers notice that information is being collected, and the ability to make choices as to that collection is problematic in many IoT contexts. Data is collected continuously, by many integrated devices and systems, and getting a consumer’s consent in each context might discourage use of the technology. Moreover, often there is no easy user interface through which to provide notice and offer choice.

With these concerns in mind, the Commission noted that “not every data collection requires choice.” As an alternative, the Commission acknowledged the efficacy of a use-based approach. Companies should not be compelled, for example, to provide choice before collecting and using consumer data for practices that are consistent with the context of a transaction or the company’s relationship with a consumer. By way of example, the Commission discussed a hypothetical purchaser of a “smart oven”. The company could use temperature data to recommend another of the company’s kitchen products. The consumer would expect that. But a consumer would not expect the company to disclose information to a data broker or an ad network without having been given notice of that sharing and the ability to choose whether it should occur.

Given the practical difficulty of notice and choice on the IoT, the Commission acknowledged there is no one-size-fits all approach. But it did suggest a number of mechanisms for communications of this sort, including:

  • Choices at point of sale
  • Tutorials (like the one Facebook uses)
  • QR codes on the device
  • Choices during setup
  • Management portals or dashboards
  • Icons
  • Out-of-band notifications (e.g., via email or text)
  • User-experience approach – “learning” what the user wants, and adjusting automatically

Conclusion

The Commission’s report does not have the force of law, but is useful in a couple of ways. From a practical standpoint, it serves as a guide for how to avoid engaging in flagrant privacy and security abuses on the IoT. But it also serves to frame a larger discussion about how providers of goods and services can and should approach the innovation process for the development of the Internet of Things.

Categories: Trademark Blogs

The Complication of Government Forms

Property Intengible - Tue, 01/27/2015 - 08:03

When we file trademark applications electronically, there is a form declaration for the signatory. At the time Slep-Tone Entertainment filed its applications, this was the language:

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements, and the like, may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce; …

This language proved to be problematic for Slep-Tone in Slep-Tone Entertainment Corp. v. Coyne. Slep-Tone’s use of its trademark was through a licensee, not by Slep-Tone directly.* The rub is that the Code of Federal Regulations says “(b) If the mark is not in fact being used by the applicant but is being used by one or more related companies whose use inures to the benefit of the applicant under section 5 of the Act, such facts must be indicated in the application.” And what’s missing from the fill-in-the-blank form and declaration language quoted above? Anything about use of the mark through a licensee.

Defendant Coyle challenged the validity of the registration, claiming that it was fraudulently procured. The court first expressed doubt that failing to disclose use through a licensee would be fraudulent:

As an initial matter, it is not clear that an applicant’s failure to disclose that a mark was used by a related company, standing alone, would constitute fraud on the USPTO. “Fraud in procuring a trademark registration … occurs when an applicant knowingly makes false, material representations of fact in connection with his application.” “To constitute ‘fraud’ the knowing misrepresentation to the PTO must be ‘material’ in the sense that but for the misrepresentation, the federal registration either would not or should not have issued…. And had Slep–Tone expressly stated in its application that it was relying on the related-company doctrine, the registration still would have issued. Accordingly, Slep–Tone’s alleged omission might not have been material in the first place.

But it didn’t matter, because Slep-tone had in fact disclosed that its use was through a licensee, in the part of the application where you describe the specimen:

Coyne tried, unsuccessfully, to argue that the disclosing a “licensee” isn’t the same as disclosing that a use was by a “related company.” The court relied on the Trademark Manual for Examining Procedure § 1201.03(a) to find that disclosing a “licensee” is good enough; the TMEP says “In an application under § 1(a) of the Trademark Act, the applicant should state in the body of the application that the applicant has adopted and is using the mark through its related company (or equivalent explanatory wording).”

So Slep-Tone successfully defeated this attempt at claiming a fraudulent registration. And the PTO has fixed the problem systemically, so we don’t have to remember to make a reference to a licensee somewhere. This is the language of the declaration now:

The signatory believes that: if the applicant is filing the application under 15 U.S.C. Section 1051(a), the applicant is the owner of the trademark/service mark sought to be registered; the applicant or the applicant’s related company or licensee is using the mark in commerce on or in connection with the goods/services in the application, and such use by the applicant’s related company or licensee inures to the benefit of the applicant; … and/or if the applicant filed an application under 15 U.S.C. Section 1051(b), Section 1126(d), and/or Section 1126(e), the applicant is entitled to use the mark in commerce; the applicant has a bona fide intention to use or use through the applicant’s related company or licensee the mark in commerce on or in connection with the goods/services in the application.

SlepTone Enter. Corp.v. Coyne, No. 13 C 2290 (N.D. Ill. Jan. 8, 2015)

* The fact that Slep-Tone claimed its only use was by a licensee puzzles me. Slep-Tone manufactures karaoke accompaniment tracks and sells them to karaoke jockeys (“KJs”) who are hired by bars and restaurants to provide karaoke entertainment. The main thrust of the many lawsuits Slep-Tone has filed is a claim that the KJs are making illicit copies of the tracks. But for trademark purposes (as distinguished from copyright purposes), the KJ is the purchaser of the original goods, not a licensee. A license would authorize the KJ to make new goods using the mark, but that’s not the relationship here.  So as I see it, Slep-Tone is fighting a battle it never needed to fight.


The text of this work is licensed under a Creative Commons Attribution-No Derivative Works 3.0 United States License.

Categories: Trademark Blogs

New Proposal To Extend WHO Action Plan On Innovation, IP Rights

IP Watch - Tue, 01/27/2015 - 07:54
At the World Health Organization Executive Board today, a group of countries tabled a proposal to extend the WHO plan of action on public health, innovation and intellectual property until 2022. Yesterday, the Executive Board took note of the Global Vaccine Action Plan while some countries remarked on issues of affordability and accessibility. And today, one of the key discussions of the week - on the engagement of WHO with lobbyists, donors, and other interested non-governmental parties - has begun.
Categories: Trademark Blogs

The NFL’s Super Bowl Trademark Nonsense

Duets Blog - Mon, 01/26/2015 - 23:44

It’s that time of year again. Time to tiptoe around and avoid use of or make any reference to the Super Bowl. Whoops. Anyway, we’ve discussed this phenomenon before:

Advertisers — fearful of NFL legal action — strain and contort to avoid the two words that could make out a nominative fair use of the Super Bowl trademark, opting instead for pairs of other code words like “Super Sunday,” the “Big Game,” “Super Party,” or “Superb Owl” coverage.

Welcome to the advent of “Bowl Viewing Parties,” not Super ones, but Lavo and Tao ones:

Please, would someone just lawyer up, and call it the Super Bowl, while calling the NFL’s bluff?

Categories: Trademark Blogs

Distributor's TM registration blocks manufacturer's claim

43 Blog - Mon, 01/26/2015 - 08:04
Mighty Enterprises, Inc. v. She Hong Indus. Co. Ltd., 2015 WL 276771, No. 2:14–cv–06516 (C.D. Cal. Jan. 22, 2015) Mighty distributes and services heavy machinery. She Hong makes heavy machinery under the name “Hartford.” Mighty sued She Hong for breach of contract and related claims, based on alleged breach of an oral contract granting Mighty exclusive rights to distribute and service Hartford machinery in the US. She Hong counterclaimed for false advertising and violation of California’s UCL. She Hong alleged first sales of Hartford machinery in the US in 1982.  But in 2014, Mighty applied to register the Hartford mark in the US, attaching pictures of She Hong’s machinery to its application.  The registration was approved, and She Hong alleged that Mighty wrongfully applied for it.  Mighty allegedly used the Hartford marks in its advertising to attract She Hong’s consumers, falsely suggesting association with She Hong or that Mighty was the manufacturer of Hartford products. The court rejected She Hong’s legal theory as alleged, because She Hong doesn’t “presently own” the rights to the Hartford mark.  Mighty’s registration was prima facie evidence of the validity of its mark.  Given that “admitted” ownership, the theory that use of the mark was false advertising couldn’t work.  It “put the cart before the horse—there can be no claim for false advertising against a company that advertises with a registered trademark it owns.” She Hong’s position was “understandable,” but its legal theory depended on owning the rights to a mark it didn’t own.  Since the counterclaim was permissible, the court wouldn’t let She Hong amend without an “exceedingly persuasive” argument.  Comment: wouldn’t an “exceedingly persuasive” argument be: this registration is invalid because She Hong is the true owner; the registration should be cancelled/She Hong’s allegations if true would overcome the presumption of validity; after that the infringement/false advertising claims are cognizable?  I wonder why the court didn’t point to this alternative theory.http://tushnet.blogspot.com/feeds/posts/default?alt=rss
Categories: Trademark Blogs

No standing for injunction-only class

43 Blog - Mon, 01/26/2015 - 07:54
Graiser v. Visionworks of America, 2015 WL 248003, No. 1:14–CV–01641 (N.D. Ohio Jan. 20, 2015) Graiser sought an injunction on behalf of a putative class based on his false advertising claims, which alleged that Visionworks’s buy one get one free campaign for glasses was deceptive; Visionworks allegedly offered a single pair of glasses at a discounted price to customers who declined the “free” pair, and its disclaimers didn’t work.  Graiser was quoted a price of $410 for the BOGO offer, but then told he could get one pair for $246 if he gave up a claim for the “free” second pair.  He sought only injunctive relief under the Ohio Consumer Sales Practices Act. Visionworks removed his state court complaint on the basis of diversity jurisdiction.  The court found that Graiser lacked Article III standing to pursue a claim for injunctive relief and remanded.  At least one named plaintiff in a putative class needs Article III standing: injury, caused by the defendant, that can be redressed by a favorable resolution of the lawsuit. Although Graiser didn’t disclaim an intention to purchase the product again, the court still found that he wasn’t likely to suffer future injury—a future injury can’t be conjectural or hypothetical.  He wasn’t at risk of being deceived again. A consumer not at risk of deception might still have standing—if the consumer prefers the product at issue for other reasons anyway, but is forced to pay a higher price because the deception allows the manufacturer to charge more.  The court thought that sort of analysis would provide Article III standing to “many” false advertising claims, when the false claim is about the product itself and the plaintiff intends to buy the product again.  If Visionworks’s ad campaign allowed it to charge a higher price for the single pair without the “free” pair, Graiser would likely have Article III standing, but it was “far from clear” that the BOGO campaign would have any effect on the price of a single pair, or whether it would make the single pair cheaper or more expensive.  (OK, that doesn’t make much sense.  Presumably, if Visionworks had a relatively cheap single-pair offer to tout, it would do so instead. Also, the whole point of regulating bait-and-switch tactics is that they allow the seller to charge more, by interfering with consumers’ search costs.) Moreover, mere exposure to false advertising isn’t a harm for Article III purposes.  It doesn’t “guarantee the concrete adverseness that Article III standing requirements are meant to ensure.”   Finally, one could argue that the BOGO campaign compelled Visionworks to offer a free pair when someone bought at the lower price Graiser paid.  This harm rests not on the misleading ad, but on Graiser’s failure to receive two pairs of glasses at the lower price.  Yet Visionworks was under no obligation to sell two pairs at the lower price unless it continues the BOGO campaign and continues to offer a single pair at a lower price, so “an unconditional injunction requiring Visionworks to offer two pairs of glasses at the lower price would be improper.” A conditional injunction against continuing both practices “would have virtually no chance of remedying Graiser’s harm,” since Visionworks could respond in a number of ways: it could discontinue the BOGO offer; it could change it to a permissible volume discount (e.g., 1 pair for $200, 2 pairs for $350), or by discontinuing the lower price single pair. “But Visionworks would certainly not begin offering two pairs of glasses for the discounted price.”  (If true, this seems to establish the misleadingness of the campaign.) Thus, Graiser lacked standing in federal court.  And he lacked standing to seek an injunction based on likely future harm to unnamed class members. Damages would be available in federal court if sufficient amounts were in controversy, and state courts aren’t bound by Article III so they might still offer relief after remand.http://tushnet.blogspot.com/feeds/posts/default?alt=rss
Categories: Trademark Blogs

Ebola, Reform High On WHO Executive Board Agenda This Week

IP Watch - Mon, 01/26/2015 - 07:44
The World Health Organization Executive Board yesterday adopted a resolution on Ebola, on the eve of today’s opening of its 10-day meeting addressing a broad range of health issues, including several of relevance to the intellectual property and innovation community. Today, Italy requested that member states be involved in the setting of WHO guidelines, raising governance issues, while WHO Director General Margaret Chan called for strong health systems and reform to the WHO structure, and asked for room to move on WHO relations with industry.
Categories: Trademark Blogs

Mapping the law prof twitterverse

43 Blog - Mon, 01/26/2015 - 05:58
Ryan Whalen maps the law prof Twitterverse.  My eccentricity turns out to be 4.0.  I’m not sure what that means, but based on the name, I probably would have guessed higher.http://tushnet.blogspot.com/feeds/posts/default?alt=rss
Categories: Trademark Blogs

Recommended Reading: Aaron and Nordemann: The Concepts of Trademark Use in the EU and the USA

TTABLog - Mon, 01/26/2015 - 04:25
Tara M. Aaron and Axel Nordemann consider the role of trademark "use" in the United States and the European Union, in "The Concepts of Use of a Trademark Under European Union and United States Trademark Law." Of course, "use in commerce" is a fundamental principle in American trademark law, the Constitutional keystone of the federal registration system. In the European Union, registration is available without actual use of the mark, and revocation may occur only after five years if a third-party challenges the registration for non-use. But the systems differ not only in technical aspects but in underlying philosophies, and the authors explain and evaluate the many differences.


The legal differences between the concept of use in the United States and in the EU are not merely technical. While in the United States, generally, "the owner of a mark may not monopolize markets that his trade has never reached," this may be possible in the EU In this article, we will look at the European and U.S. treatments of "use" as a trademark concept and consider which (if either) is better, and why.

* * *
The European registration-based system is a natural result of a philosophy of open and equal competition across the Community. The U.S. use-based system is a direct result of the United States Constitution and the understanding of trademarks as nothing outside of an identifier of source for goods or services and primarily a method of protecting the consuming public from confusion. Both systems require use to a lesser or greater extent, and both systems are flexible in varying degrees. But the differences are stark and only become greater as the trajectories of these different philosophies become clear.
Read comments and post your comment here

TTABlog note: Again I thank The Trademark Reporter for granting permission to provide links to these two commentaries, which are Copyright © 2014 the International Trademark Association and reprinted with permission from The Trademark Reporter®, 106 TMR No. 6 (November-December 2014).

Text Copyright John L. Welch 2015.
Categories: Trademark Blogs

Brave New World

Duets Blog - Mon, 01/26/2015 - 03:27

Tiffany & Co. made some waves over the past several weeks when it featured a same sex couple in its “Will You?” engagement campaign.  Tiffany is the first “famous” brands to take this path, and they are undoubtedly hoping this campaign will pay high dividends after disappointing holiday sales.

Personally, I applaud Tiffany for taking a bold step in the advertising world.  Although, as the Wall Street Journal noted, the legalization of gay marriage in numerous states has created new opportunities for wedding related goods to be sold.  While somewhat ground breaking, this campaign was certainly sensible from an economic standpoint.

The question that it raises for me is whether we will shortly see more mainstream advertising catering to gay and lesbian consumers.  Of course, such advertising has taken place in publications catering to the LGBT community, but perhaps its time that such advertising start taking place in more of our everyday channels.  Regular print publications and television commercial could all start providing more inclusive campaigns.  Indeed, while the Tiffany ad seems to be garnering the most attention, there was a nice bit of publicity generated for a DirecTV Sunday Ticket ad which “apparently” featured a gay couple.  I say “apparently,” because you’d miss it if you weren’t paying attention.

I’m sure there are those out there that think catering explicitly to same sex couples and/or members of the LGBT community risks alienating more “conservative” consumers.  Admittedly, I think this could be an unfortunate problem that is difficult to quantify in advance.  But seriously, if the NFL and Sunday Ticket are comfortable with the idea, how bad could that downside really be.  I think advertisers need to be prepared to make that leap if they’re not already there.

Categories: Trademark Blogs

The Year Ahead In Internet Governance: Of Competing Institutions, IANA Transition, And A New Crypto War

IP Watch - Sun, 01/25/2015 - 08:51
For many years Electronic Frontier Foundation Policy Analyst Jeremy Malcolm has been predicting the next year would be the pivotal year for the UN-led Internet Governance Forum (IGF). With the NetMundial Initiative being constructed these coming months and governments having not yet agreed to prolong the IGF mandate, the decade-old forum might be challenged to either move or become just one of many internet governance conference venues. And while some hope the future oversight over the internet’s underlying IANA function could become an experiment in shared global governance, others point out that more and more of the interesting questions of internet politics are decided elsewhere: national governments, trade negotiators, big data giants and cyberdominance strategists.
Categories: Trademark Blogs

The Latest News In Intellectual Property From ANEPI Ecuador

IP Watch - Sat, 01/24/2015 - 12:55
Welcome to (ANEPI), the first Intellectual Property News Agency of Ecuador. The Agencia de Noticias Especializada en Propiedad Intelectual (ANEPI) publishes news, analysis, interviews, feature articles, a weekly update and more on Ecuador and the region, at http://www.anepi.ec. Articles are primarily in Spanish with some translation. Below is the list of the week’s stories on […]
Categories: Trademark Blogs

Transformative use of the day: Washington's football team edition

43 Blog - Fri, 01/23/2015 - 14:08
This ad uses footage of Washington's team to make the point that its racially inflammatory name and mascot are unnecessary.  Consider the TM and copyright implications!http://tushnet.blogspot.com/feeds/posts/default?alt=rss
Categories: Trademark Blogs