Trademark

Thursday, 31 December 2009 18:55

LAST CALL AT TAVERN ON THE GREEN

Written by

 As we say farewell to 2009, we must recognize that even in its final hours this year continues to provide vivid examples of the value of intellectual property rights. 

Specifically, this New Year’s Eve, Tavern on the Green will close its doors after 75 years in New York City’s Central Park.  And while many question how this landmark that declared $38 million in gross revenue in 2007, making it the second highest grossing restaurant in the US, now finds itself in bankruptcy, we want you to consider that despite the Baccarat and Waterford Chandeliers, the restaurant’s most valuable asset may be its trademark. 

After the final service at the Tavern this evening, the Bankruptcy Court must decide if this $19 million asset belongs to the City of New York and is therefore outside the proceeding, or if it belongs to the LeRoys personally, also arguably putting it outside of bankruptcy, or if it is owned by the bankruptcy estate and should be liquidated.   To Read More Click Here

Wednesday, 18 December 2013 18:52

BRANDS GO BUST

Written by

Brands often tend to have life cycles.  Even longstanding or big-name brands may inevitably die out.  With trademarks and trademark law being strongly linked to brands (sometimes the terms "brand" and "trademark" are even used synonymously), the death of a brand can raise interesting trademark-related issues.  For example, questions arise as to whether, or when, others are free to pick up and start using the trademark of a defunct brand.  For a list of some familiar brands that appear to be on the brink, click here.

Yesterday the Washington Redskins beat the Oakland Raiders and broke the Redskins’ nine game losing streak. And while everyone is talking about their win and ability to keep their fourth quarter lead, we would like to discuss their other big win. Specifically, we are referring to the Supreme Court’s rejection of an appeal from a Native American group who challenged the team’s trademarks as disparaging. 
 
The lawsuit was first filed in 1992 and sought to cancel the Redskins’ name and logo which was adopted in 1933 when the team was in Boston. The United States Patent and Trademark Office issued the registration in 1967. Not surprisingly, the issue before the court was laches and the interpretation of the federal statute that allows the cancellation of a registration “at any time” if the trademark contains “matter which disparage . . .  persons, living or dead . . . or bring them into contempt, or disrepute.”
 

Many cases have been filed around the country, based on the offering for sale, or using of keywords, in connection with search engine-driven internet advertising.  One such case, which I wrote about in an article that was published recently, and which can be found here, involved American Airlines and Yahoo!, the popular internet search engine. 

In that case, American Airlines alleged that Yahoo's practice of offering its trademarks and brand names as keywords to advertisers, including to the airline's competitors, amounted to trademark infringement.  However, the lawsuit was recently settled before a decision could be reached in the case.   

Thursday, 05 November 2009 18:44

THERE’S A LAWSUIT FOR THAT

Written by
In October 2009, Verizon launched a series of commercial advertisements comparing coverage maps of Verizon’s 3G network with more sparse 3G coverage maps of competitor AT&T. Specifically, Verizon’s ads claim that AT&T is “out of touch” and that if someone wanted to know why an AT&T customer has spotty 3G coverage “there’s a map for that.” 
 
Based on these advertisements, AT&T has sued Verizon for violations of trademark law under the Lanham Act and local laws, claiming false advertising and deceptive trade practices. They are seeking a temporary restraining order and injunctions to prevent Verizon from continuing to use the ads, as well as for damages. (see AT&T Mobility LLC v. Cellco Partnership d/b/a Verizon Wireless, United District Court for the Northern District of Georgia, Atlanta Division, Case No. 1:09-cv-3057)
 
Notably, AT&T is the carrier for Apple’s iPhone which has the popular catch phrase “there’s an app for that.”
Friday, 09 October 2009 18:44

IS “HOTELS.COM” GENERIC?

Written by
In July 2009, the Federal Circuit affirmed a Trademark Trial and Appeal Board (TTAB) finding that the mark HOTELS.COM was generic when used in connection with information and reservation services for temporary lodging.
 
Traditionally, “generic” terms or phrases are defined as being incapable of carrying trademark significance, meaning that they are so highly descriptive of the pertinent goods or services that they are not capable of ever achieving enough distinctiveness to serve as a source indicator. Accordingly, a common test for determining genericness of a service mark involves an analysis of whether the term or phrase at issue is used by the relevant public primarily to refer to the class or “genus” of services. 
 

The administrators of Michael Jackson's estate have filed a lawsuit in federal court against the Heal the World Foundation on the grounds that the foundation is illegally using trademarks and websites that give the false impression that Michael Jackson is associated with the foundation. In 1992, Jackson founded a Heal the World Foundation based on his hit single, but that enterprise was abandoned a decade later. The suit claims that "Defendants' acts of infringement and unfair competition have been committed with the intent to cause confusion, mistake and to deceive" by including photos and trademarks of Michael Jackson, and statements made by Melissa Johnson, the founder of the Heal the World Foundation, which falsely suggest she had a history of working with Jackson's charity. Additionally, the lawsuit alleges that the defendants violated "cybersquatting" laws by registering domain names such as “mjaid.net,” “healtheworldfoundation.net,” and “mjquotes.net” that imply legitimate ties to Jackson and his estate. The website "healtheworldfoundation.net" has numerous sections devoted to Mr. Jackson and his charitable work. The defendants were also subject to a recent CBS investigative report, which concluded that their cause had become a "magnet for fans searching for a Michael Jackson charity."This lawsuit is part of a continuing effort by Jackson's estate to control unauthorized use of Michael Jackson's name and likeness.

Adam Goldman contributed to this entry.

As we help clients navigate through the trademark application process we are careful to always explain the risks as well as the rewards associated with the breath of their registration.  Not surprisingly, afterwards we also emphasize the need to routinely maintain and update ones Intellectual Property portfolio because it is after all an investment that should not be neglected.  However, when the TTAB decided Bose Corp. v. Hexawave, Inc., 88 USPQ2d 1332 (TTAB 2007), we hoped that the appeal of the decision would result in an interpretation that was more in line with the policies of public disclosure that the USPTO has consistently applied. 

Specially, the concern was that the Board had found that Bose’s 2001 renewal of its registration for the word-mark WAVE in connection with audio tape recorders and players was fraudulent because the company no longer manufactured those products. The issue of actual use, however, arose after the renewal when Bose opposed the registration of the HEXAWAVE mark and Hexawave fired back accusing Bose of committing fraud on the PTO.  In essence, the Board’s finding of fraud hinged on the determination that Bose “should have known” which in essence established a standard of subjective intent.  This finding led to the coining of the term fraudit, which are audits on Intellectual Property portfolios that seek to uncover what the owner “should have known.” 

Pursuant to Florida SB 872 the sate ficticious name statute 865.09, F.S, is being amended to require that a business publish its intent to use said ficticious name.  While some have noted some exceptions to this requirement, such as a valid Florida Trademark Registration, here, certaily the publication requirement offers a new way to police existing Sate and Federal Trademark rights. 

Until recent times, countries like Brazil, Russia, India, and China have sometimes been viewed by foreign brand owners as offering insufficient trademark protection.  Increasingly, however, the economic successes of these rapidly developing economies appear to be nurturing increasingly sophisticated and responsive legal systems, and particularly with respect to trademark law.  Moreover, as these economies become increasingly consumer-oriented, their success appears to be opening new markets for foreign brands, while concurrently providing improved legal protection.
 
One article of interest that summarizes related issues for brand owners can be found at Managing Intellectual Property.  As noted, brand owners will want to become familiar with the law and culture for each jurisdiction and, in many instances, will want to plan on securing trademark (and other IP) protection before doing business in a particular jurisdiction. 
 
Page 9 of 10