Blog — Beyond the Virtual Law Firm
Category: Trademark Law
Apple’s Continued Attempts to Trademark “App Store” may Fall Short
Earlier this year in March, Amazon launched the Amazon Appstore, which was then a new avenue for buying Android apps. Almost immediately after the launch, Apple proceeded to file a trademark infringement suit against Amazon over the usage of the “Appstore” phrase. The case is contingent upon whether “app store” can be deemed a generic term that simply describes any app marketplace, as opposed to one of Apple’s trademarks – a unique, company-specific element that identifies the company’s brand and distinguishes its products and services from that of other companies.
Geek in Trouble — Best Buy Believes Geeks will Get it in Trademark Infringement Dispute with Newegg
Being that my brand is BrandGeek®, when I saw the Wall Street Journal headline, “Now That Everyone Wants to Be a Geek, Lawyers Have Been Called,” I thought trouble surely was headed my way. Thankfully, I’m not pedaling electronics, nor religion via VW Beetle, so it appears I’m safe. For now. Imagine the panic when I first saw the headline in an e-mail from my friend Julie Markham at Greenlighted. I could only imagine tomorrow’s headline, “Trademark Attorney Tried for Infringement,” but I knew I’d done my due diligence, so it had to be something else.
ICANN Approves Open Season on new gTLDs for 2013
On June 20, 2011, the Internet Corporation for Assigned Names and Numbers (ICANN) approved a new generic top-level domain (gTLD) program, first introduced in 2008. The program will greatly increase the number of gTLDs allowed for use on the internet, which is currently limited to 22 (such as .com, .org, and .net).
Interpreting the Startup Visa Act
On March 14, 2011, Senators John Kerry and Richard Lugar introduced a bill titled the Startup Visa Act of 2011, which is an updated version of a 2010 bill. If passed, the act would provide temporary work visas to various kinds of foreign workers if certain financial benchmarks are met.
NAD Teaches TransFair USA to fine tune Fair Trade Seals & Asks Avon to Amend Advertising
As discussed in my December 13, 2010 post, the National Advertising Division (NAD) of the Council of Better Business Bureaus (BBBs) offers a streamlined, self-regulatory mechanism for remedying false advertising claims made in nationally distributed advertisements. While NAD has a 95% success rate, those advertisers who fail to follow NAD’s recommendations may find themselves before the FTC upon NAD’s recommendation.
On February 16, 2011, I reported on NAD’s recommendation that Nano-Tex cease making several (green and other) advertising claims in connection with three of its fabric coating products. On January 24, 2011, I discussed NAD’s recommendation that Sherwin-Williams modify its no-VOC claims for its HARMONY brand paints.
Senate Passes Patent Reform Bill
The Senate recently passed "The America Invents Act" which, if completed, would be the first major overhaul to U.S. patent law in more than half a century.
Has the PTO Gone to Pot?
Pipe dreams of trademark protection for marijuana go up in smoke . . .
On April 20, 2010 the USPTO issued a federal service mark registration to Sunny Chan d/ba Good Leaf Collective for the mark GOOD LEAF COLLECTIVE for "Retail store and on-line retail store services featuring medical marijuana". Ironically (and probably much to the delight of Mr. Chan), April 20 is a counter-culture holiday amongst marijuana users. Unfortunately for Mr. Chan and the nearly 100 other applicants who are waiting for the USPTO to issue registrations for their marijuana related products and services, on July 20, 2010 the PTO had a change of heart and the applicant's pipe dreams may have gone up in smoke.
On July 20, 2010, the USPTO sent Mr. Chan a letter informing him that his federal service mark registration was issued mistakenly and has since been canceled. The letter continues to state that Mr. Chan's application has been restored to pendency and the file returned to the Examining Attorney to issue a refusal.
In a related twist, the USPTO publishes a Manual of Acceptable Identifications of Goods and Services on its website for use by federal trademark registration applicants . According to a July 19, 2010 WSJ article, on April 1, 2010 the PTO approved an ID for "Processed plant matter for medicinal purposes, namely medical marijuana". The USPTO offers a public service whereby applicants (or their counsel) can suggest IDs to be added to the manual. I have used this service many times to assist clients in the sustainabiltiy space get their innovative product and service descriptions pre-approved by the PTO. Apparently, someone suggested the medicinal marijuana ID, which the PTO approved given that there are fifteen states in which medical marijuana is legal (AK, CA, CO, DC, HI, ME, MI, MO, NV, NJ, NM, OR, RI, VT, WA). The addition of marijuana to the manual apparently created a rush on the PTO with several new applications filed for marijuana and marijuana related products and services. Apparently, the marijuana ID was removed in mid-July admist questions from the Wall Street Journal about its prudence.
Thus, for now, legal medical marijuana growers and purveyors will have to rely on common law rights, or use broader categories in their trademark applications -- such as dried plants or agricultural seeds -- to protect their trademarks nationwide.
Ninth Circuit Broadens Definition of “Copyright Registration” for Litigation Purposes
In order to initiate an infringement action in federal court, the Copyright Act requires the litigating party to hold a copyright registration. While the circuits are split on what constitutes a copyright registration, the Ninth Circuit recently joined the Fifth and Seventh Circuits in Cosmetic Ideas v. IAC in holding that anapplication for copyright registration suffices for a registration for litigation purposes.
In this case, Cosmetic Ideas developed, manufactured, and sold a unique piece of costume jewelry starting in 1999. Sometime thereafter, another company, HSN, started manufacturing and distributing a "virtually identical" piece of jewelry. Cosmetic applied for copyright registration of its jewelry on March 6, 2008 and received confirmation from the Copyright Office of receipt of the application on March 12. Cosmetic filed its infringement action on March 27, before the Copyright Office had issued a registration certificate for the jewelry (which it subsequently did). Despite that fact, the Ninth Circuit held that the application sufficed for the purposes of initiating an action in court.
This decision by the Ninth Circuit is beneficial to plaintiffs who can now proceed with infringement actions without worrying about their cases being dismissed or impeded for lack of subject-matter jurisdiction if they have not yet been granted a copyright registration from the Copyright Office.
Is It a Barbie World?
We all can agree that Barbie is a famous brand, regardless of what we may think of her or the thin values she espouses. Barbie dolls have been around since May 9, 1958. The first Barbie trademark registration (Reg. No. 0,689,055) for a “doll” was issued on December 1, 1959.
This is interesting because “doll” in the singular form is no longer allowed to be used in the listing of goods and services in trademark applications. Rather, applicants must state “dolls” in the plural because using a mark in only one transaction is not enough for trademark rights to attach. In other words, you must sell multiple items (even if the items are identical dolls) for trademark rights to attach.
OK, back to Barbie.
In 1997, Aqua produced the song Barbie Girl on its album Aquarium. The song, somewhat surprisingly, made it into the Top 40. The Chorus goes like this –
“Barbie Girl”
I’m a barbie girl, in the barbie world
Life in plastic, it’s fantastic!
you can brush my hair, undress me everywhere
Imagination, life is your creation
Come on Barbie, let’s go party!
* * *
Come on Barbie, let’s go party!
(Ah-ah-ah-yeah)
Come on Barbie, let’s go party!
(uu-oooh-u)
Come on Barbie, let’s go party!
(Ah-ah-ah-yeah)
Come on Barbie, let’s go party!
(uu-oooh-u)
* * *
In September, 1997, Mattel brought a trademark infringement lawsuit against the music companies who produced, marketed and sold the Barbie Girl song, including the band Aqua and its record label, MCA Records. In July, 2002, the 9th Circuit upheld the District Court’s ruling in favor of Defendants, finding use of the Barbie mark in the Barbie Girl song to be a nominative fair use and a parody. The court found that “the song pokes fun at Barbie and the values that Aqua contends she represents.” The case was publicly contentious, which led Judge Kozinzki to end with the best final sentence ever written in a judicial opinion, “The parties are advised to chill.”
In an ironic twist, Mattel apparently recently licensed Aqua’s song. It re-wrote the lyrics and released the song this year as its The Barbie® Official Music Video 2009. The video is part of a promotion to celebrate Mattel’s October 2009 release of new poseable Barbie dolls. The video is intended to teach you how to “Do The Barbie” dance. Look out country fans — the Barbie is soon to take over line dances everywhere! I wonder who owns the copyright on that choreography The next line of Barbie lawsuits awaits.
How did I find myself Blogging about Barbie on a Friday night It started this morning with the e-mail digest from the VERB LinkedIn Group asking for guesses on which song has the most brand mentions. Not knowing that the question really meant how many different brands were mentioned in a single song, I guessed Barbie Girl, which repeats Barbie over and over and over and over and over . . .
After posting to LinkedIn, I read the linked article and learned that the question originated with one of my favorite blogs, DuetsBlog, as the culmination to an entertaining blog about brands in songs.
The Skinny (Cow) on Weight Watchers v. Nestle
This posting is about the recently filed trademark case Weight Watchers International Inc. v. Nestle U.S.A. Inc., 09-07964, U.S. District Court, Southern District of New York (Manhattan).
MY DISCLAIMER — I have not read the complaint.
Instead, I saw Joel Rosenblatt’s article in the news section on the e INTA LinkedIn Group.
Joel’s article states that Weight Watchers sued Nestle because it’s Dryer’s ice cream sub-brand, SKINNY COW, improperly displays the Weight Watchers POINTS mark on the SKINNY COW packaging. So, next I looked at a package of SKINNY COW ice cream sandwhiches.
It states:
WEIGHT WATCHERS* POINTS=3
* Weight Watchers(R) and POINTS(R) are registered trademarks
of Weight Watchers Int’l, Inc. The points provided here were
calculated by Dryer’s Grand Ice Cream, Inc. based on published
Weight Watchers information and do not imply sponsorship or
endorsement of those points or of The Skinny Cow(R) by Weight
Watchers Int’l, Inc.
I don’t think this is a trademark use, especially with Nestle’s disclaimer (albeit in smaller font than the Nutrition Facts,may people would need glasses or a magnifying glass to read it). If consumers actually read the language below the POINTS, then none will be confused into believing that a sponsorship or endorsement exists between Weight Watchers & Nestle. I won’t speculate as to whether anyone other than curious trademark counsel actually reads that teeny, weeny disclaimer.
I do think it is unfair for Nestle to benefit from using Weight Watcher’s POINT system without permission. Nestle must have intended to and likely will lure customers away from Weight Watcher’s by use of Weight Watcher’s nutrition measurement POINTS brand. Further, presuming that Weight Watchers licenses its POINTS brand to competitors, then Nestle’s unauthorized use hasthe demonstrable effect of denying Weight Watchers’ licensing revenue.
It will be intresting to see how this case boils down.