A hot topic of late in the world of IP is the controversy over Google AdWords and its policy of allowing, and in some instances suggesting, that advertisers purchase the trademarks of their competitors as “AdWords” so that they will come up as a sponsored link when the competitor’s brand is searched. Now a recently published Patent application filed by Google in June 2008 may signal a practice that could put an entirely new wrinkle on the AdWord controversy.
In its patent application, Google is essentially seeking to protect a method for identifying potential advertising locations within “an online geographic view”, such as its Street View feature within Google Maps, so as to allow for real time advertising to be positioned or superimposed into that view. For example, if you are looking at an image of Times Square, Google could cover an actual billboard image with a targeted advertisement of its own. While at first blush some might question whether replacing an old stale ad from an old image with a new fresh ad is a cause for concern, regardless of whether a patent ever issues, the practice described therein could be a virtual Pandora’s box of IP related issues.
The French fashion house, Balenciaga Corp. has sued New York shoe company, Steve Madden Ltd. in the U.S. District Court for the Eastern District of New York claiming infringment of its trade dress and copyrights for manufacturing and selling knockoffs of its "Lego" shoe. Interestingly, "LEGO" is a registered trademark of Lego Juris A/S/ Corp.
To attain legal status as a trademark, a term must be deemed to be "distinctive" as used in connection with the goods and/or services being offered. However, the degree of distinctiveness – and, therefore, the strength of a mark – can range from marks that are inherently distinctive (arbitrary, fanciful, and suggestive marks) to marks deemed unworthy of protection (generic marks and descriptive marks lacking secondary meaning.) The middle ground is occupied by descriptive marks that have achieved secondary meaning among the consuming public. Because a party cannot prevail on a trademark claim unless its mark is distinctive, determining where a particular mark falls within the “distinctiveness” scale is a crucial determination in any trademark infringement suit.
As such, the recently decided Lahoti v. Vericheck – which overturned a lower court’s more rigid application of the “descriptiveness” analysis – has the potential to significantly impact future trademark litigation. In Lahoti, the 9th Circuit Court of Appeals held that the lower District Court had made several errors of law in its descriptiveness analysis. Specifically, the lower court had held (1) that a trademark was descriptive only if it described all of the trademark owner’s businesses; and (2) that a trademark could be examined only by taking the entire mark into account. Using this analysis, the lower held that the mark “VERICHECK” was not descriptive – even though one of the services offered was ‘check verification’ – as the mark did not “immediately call to mind the broad array of electronic transaction processing services” offered by the trademark owner.
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
The federal false patent marking statute, 35 U.S.C. § 292, prohibits the false marking of "any unpatented article" with the word "patent" or other suggestions, such as advertising, that would indicate that the article is patented. The goal of the statute is to avoid public deception as to whether a particular good is in fact patented.
Several qui tam lawsuits, which are generally lawsuits brought by private individuals on behalf of the government, have been filed based on alleged violations of the false marking statute, and seek to impose up to a $500 penalty for each article that has been falsely marked. For example, some of these lawsuits have been brought by consumers who have noticed expired patent numbers or false patent markings on everyday products, including paper cups and plastic utensils.
There has been much debate over the appropriate penalty for falsely marking a patent number on a manufactured article. On the one side of the debate are those, such as the consumers that filed the above-mentioned lawsuits, who contend that a penalty should be assessed for each and every manufactured article that bears the false marking. They contend that, if a manufacturer decides to mark 1,000 products with a false patent marking, then the maximum penalty under the statute should be $500,000, or $500 per article, for each of the 1,000 items marked.
On the other side of the debate are those, accused of false marking, that contend that the penalty should be imposed for each decision to mark a quantity of manufactured articles. According to their contention, the statute should be interpreted such that, if a manufacturer were to decide to mark 1,000 items with a patent number, and the marking was later ruled to be a false marking, then the maximum penalty would be $500, based on the one decision to mark the articles.
Earlier today, the Court of Appeals for the Federal Circuit issued a ruling that should clear up much of the debate. In today's decision, the appellate court interpeted the false patent marking statute, 35 U.S.C. § 292, to require a penalty for each article or good that is falsely marked with a patent number, and not for each decision to mark a number of goods, as suggested by one of the parties. The appellate court did note, however, that $500 is the maximum penalty for each falsely marked article, and that judges will continue to have discretion to assess a lower penalty, according to the circumstances of a given case.
You can read the Federal Circuit's decision in Forest Group, Inc. v. Bon Tool Company et. al., here.
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.