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Category Archives: Trademarks

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gTLD weekly update: .nyc is ready for salida del sol, are you?

Posted in gTLDs, Intellectual Property, Trademarks

The sun sets on several new gTLDs

The Sunrise period has ended, or will by Monday, for the new gTLDs listed below.

gTLD

Sunrise Opens

Sunrise Closes

.red

03-11-2014

04-11-2014

.kim

03-11-2014

04-11-2014

.shiksha

03-11-2014

04-11-2014

.pink

03-11-2014

04-11-2014

.farm

02-11-2014

04-12-2014

.viajes

02-11-2014

04-14-201

.codes

02-11-2014

04-14-2014

.blue

03-14-2014

04-13-2014

.wed

03-17-2014

04-18-2014

.zone

02-18-2014

04-19-2014

.boutique

02-18-2014

04-19-2014

.bargains

02-18-2014

04-19-2014

.agency

02-18-2014

04-19-2014

.cheap

02-18-2014

04-19-2014

.immobilien

02-19-2014

04-21-2014

.ninja

02-19-2014

04-21-2014

After Sunrise, gTLDs enter a Landrush period — when individuals seeking second-level domains within a new gTLD can pay for pre-registration — before they become available to the general public. (Read more about Landrush in last week’s gTLD post.) If any of these gTLDs are of interest to your brands or business, now is the time to take action.…


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Another sunrise, another new beginning. New gTLDs delegated and set to launch; are you ready?

Posted in gTLDs, Information Technology, Intellectual Property, Trademarks

New to the delegation pool

ICANN delegates new gTLDs daily, which keeps trademark owners on their toes. Since our last blog article, new gTLD delegations include:

  • .gop
  • .ryukya
  • .yokohama
  • .rest
  • .saarland
  • .consulting
  • .vodka
  • .haus
  • .cooking
  • .moe
  • .rodeo
  • .country
  • .商城(xn--czru2d) – Chinese for “mall”
  • .horse
  • .fishing
  • .vegas
  • .miami
  • .archi
  • .black
  • .ren
  • .meet
  • .sohu

The most recent additions will join the growing list of gTLDs that can begin their Sunrise periods. It is important to remember that though many gTLDs are allowing Sunrise periods to last longer than 30 days, they are required to have only a 30-day period.

gTLDs beginning Sunrise

Sunrise periods can quickly come and go — notice to the unwary. Following is a list of gTLDs set to launch and their corresponding Sunrise periods.…


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“You, you, and you: Panic. The rest of you: Come with me.” – It’s time for trademark owners to arm themselves against the dot’s new friends.

Posted in gTLDs, Information Technology, Intellectual Property, Trademarks

The Internet Corporation for Assigned Names and Numbers (ICANN) announced this week at ICANN 49 Singapore that the number of new generic top levels domains (gTLDs) that have been “delegated” — i.e., designated as ready for launch — now tops 175. Recently delegated gTLDs include:

  • .london
  •  .nyc
  • .cologne
  •  .trade
  •  . 世界 (Chinese for “world/shijie”)
  •  .bid
  • .vote
  • .reviews
  • .events
  • .democrat
  • .education
  • .coffee
  • .florist

The ICANN website shows the complete list of delegated gTLDs. As this number climbs, it becomes increasingly and even alarmingly important for trademark owners, regardless of whether they have vast or small trademark portfolios, to take action so they have the ability to receive notice and protect their registered marks in the rapidly expanding Internet.

What does delegation mean to brand owners?

Logistically, delegation means that the gTLD registry can begin the “Sunrise” period. For trademark owners however, delegation signals that the battle to quash unauthorized use of domain names has begun.…


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The next big fight: 3D printing and intellectual property

Posted in Copyright, Intellectual Property, Patents, Trademarks

Its time for our ink jet printers to move aside and begin to collect dust because there is a new kid in town: 3D printers. 3D printers are not technically “new” technology; they have been used by engineers since the 1980s. However, they are new to everyday consumers, and they threaten to become mainstream in 2014. This technology was mentioned in the President’s 2013 State of the Union speech, and even the cast of “Grey’s Anatomy” has been fighting over their 3D printer to build new life-saving organs. It is a hot topic and technology beginning to permeate news media and our everyday lives.

Our classic printers read information from digital documents and print the formatted text in ink, line by line, onto paper. A 3D printer, however, interprets CAD, or computer aided design, files — similar to a blueprint. These blueprints allow the 3D printers to “print” by building objects up layer-by-layer out of plastic, metal or other materials. This method of manufacturing allows for the elimination of older techniques such as injection molding.

This new technology has the promise to allow anyone to create almost anything wherever and whenever they want. Examples include the production of replacement parts for appliances, tools, medical prosthetics and potentially building biological organs out of organic material. One of the major patents protecting a specific type of 3D printer expired this week. The cost of 3D printers have decreased steadily due to the expiration of such patents on the 3D printers themselves. …


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Dawn of a new Internet — mechanisms to protect your brand

Posted in Domain Names, gTLDs, Information Technology, Intellectual Property, Trademarks

Many people have not yet heard or may not understand, but the Internet will expand vastly and quickly beyond the familiar .com, .org, and .edu top level domain names. The Internet Corporation for Assigned Names and Numbers (ICANN) launched an initiative in 2008 to enable the introduction of new generic topic level domains (gTLDs). The primary reason for the expansion is to promote competition in the domain name market while continuing to ensure the Internet’s security and stability. Though ICANN’s efforts have not been without criticism, the objective is to expand the number of new gTLDs to increase competition among registry service providers and, in turn, provide greater consumer choice.

ICANN reported receiving 1,930 new gTLD applications during the application window, which closed March 29, 2012. Of those applications 1,815 are active. Most of these new gTLD applications are for generic terms such as .app, .auto, .car, .music, .shopping, .singles. But ICANN also received a subset of applications known as “.brands” created submitted on behalf of brand owners to operate as closed registries (not open to the public) designated specifically for the brand’s use — such as .apple, .chevrolet, .goodyear and .samsclub.…


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China’s new trademark law

Posted in Intellectual Property, Trademarks

China has passed a new trademark law that becomes effective May 1, 2014. The new law includes:

  1. A requirement that trademarks shall be registered and used “by the principle of honesty and credibility;”
  2. Some important changes to the trademark application and appeal processes; and
  3. As discussed here, several notable provisions designed to improve trademark enforcement in China.

A. Mechanism designed to discourage trademark hijacking by business partners

Trademark “hijacking” in China refers to the situation in which a third party registers a company’s established trademark in China, often before the company enters the Chinese marketplace, then attempts to sell the trademark registration to the company when the company begins conducting business in China. Trademark hijacking has been a serious problem in China and, in some cases, trademarks have been hijacked by individuals assisting the legitimate trademark owner in manufacturing or otherwise.…


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Revised filing fees for Europe should be in place by early 2014

Posted in Intellectual Property, Trademarks

The ability to register a trademark in the member countries of the European Union (currently 30) in a single application has been available under the Community Trademark system (CTM) since the mid-1990’s. The basic fee (900€, currently about $1,215US) for filing a CTM covers the cost of filing in up to three classes.1

The European Commission (EC) proposed revisions to the current CTM system in March 2013. Among other revisions was a change to the fee schedule. Under the proposal, fees would be payable per class — 775€ for one class, 825€ for two classes and 900€ for three classes. Renewal fees are proposed at 1,000€ for one class, 1,100€ for two classes and 1,250€ for three classes.

The EC’s proposed revisions should assist most brand owners. Under the existing system, trademark owners typically select coverage in all three classes even though the mark may only be used in a single class. For example, a business may include class 16 (paper goods) even though it only uses paper goods for marketing the actual product. By moving to a one-class system, businesses will pay less when seeking to obtain protection for only one or two classes. In addition, proposed marks will face less barriers from unused marks on the register in classes arbitrarily picked under the old system. Lastly, the need to file unnecessary oppositions (actions to remove unused marks) should decrease.

While most of the EC’s proposed revisions must be adopted by the European Parliament and the European Council, …


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Arbitrator did not exceed his powers by awarding perpetual license in all intellectual property rights for video game

Posted in Intellectual Property, Trademarks

The Fifth Circuit Court of Appeals recently held that an arbitrator did not exceed his powers when he expanded an eight-year license to use a video game’s trademarks into a perpetual license to use all the intellectual property rights associated with the game. See Timegate Studios, Inc. v. Southpeak Interactive, L.L.C., ___ F.3d ___, 2013 U.S. App. LEXIS 7184, No. 12-20256 (5th Cir. Apr. 9, 2013).

Under the Federal Arbitration Act, an arbitrator does not exceed his powers unless “he has utterly contorted the evident purpose and intent of the parties—the ‘essence’ of the contract.” Timegate Studios, slip op. at 9. The Fifth Circuit found that the arbitrator’s remedy of a perpetual license was “rationally rooted” in the agreement between the parties and therefore reinstated the arbitrator’s award after the district court had vacated it.

The Agreement

In 2007, Timegate Studios, Inc. (“Timegate”) entered into a 46-page video game publishing agreement with Gone Off Deep, L.L.C. d/b/a Gamecock Media Group (“Gamecock”). The agreement obligated Timegate to develop a futuristic military-style video game entitled “Section 8,” and it obligated Gamecock to publish the game. As the publisher, Gamecock agreed to provide most of the investment funding for the game’s development and to manufacture, market, distribute, and sell the game after its development.…


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Hong Kong website can continue selling alleged counterfeit fashion apparel after court declines to exercise extraterritorial jurisdiction under Lanham Act

Posted in Trademarks

A court in the Southern District of New York enjoined the defendants from selling fashion apparel in the United States that allegedly infringed the plaintiff’s trademarks, but it declined to exercise extraterritorial jurisdiction to stop the defendants from using their Hong Kong website to continue selling the same apparel to the rest of the world. See Juicy Couture, Inc. v. Bella Int’l Ltd. , No. 12 Civ. 5801, 2013 U.S. Dist. LEXIS 34846 (S.D.N.Y. Mar. 12, 2013). The court reasoned that it had to “proceed with caution in determining” whether to apply the Lanham Act extraterritorially because the parties were currently litigating in Hong Kong over whether the defendants had valid trademark rights there.

This case illustrates the difficulties U.S. companies can face when trying to stop infringing conduct that is happening abroad. Though trademark owners may use the Lanham Act to enjoin infringing activities outside the United States, U.S. courts will grant this relief only when the trademark owner can show it is necessary to prevent harm to commerce in the United States. Because this can be a tough standard to meet, it is important for U.S. businesses to consider the need for registering their trademarks domestically as well as internationally and for having a strategy to enforce their trademark rights in foreign countries.…


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Court orders production of defendant’s entire business database in contentious trademark infringement case

Posted in Information Technology, Trademarks

Though the Federal Rules of Civil Procedure are “not meant to create a routine right of direct access to a party’s electronic information system,” a federal district court recently held that the benefits of allowing the plaintiff direct access to the defendant’s entire business database outweighed the burden of producing it. [See Advanced Tactical Ordnance Systems LLC v. Real Action Paintball Inc., No. 1:12-CV-296, Doc. 222, 2013 U.S. Dist. LEXIS 25022 (N.D. Ind. Feb. 25, 2013).] The court reasoned that the information in the database was highly relevant to the plaintiff’s claims — including the plaintiff’s contention that the defendant was using hidden “metatags” referencing the plaintiff’s trademark to drive higher search engine results for the defendant’s website and thus draw the plaintiff’s potential customers to the defendant — and that the defendant failed to demonstrate how the information in its database constituted a trade secret or how its disclosure would harm the defendant’s competitive advantage.

Plaintiff’s Claims
The plaintiff, Advanced Tactical Ordnance Systems LLC (“ATO”), markets and sells irritant powder filled projectiles under the mark PepperBall®. ATO acquired the mark when it acquired all of the assets of PepperBall Technologies Inc. ATO alleges that the former Chief Operating Officer of PepperBall Technologies misappropriated the trade secrets that ATO had acquired (including powder formulas, projectile shell designs and customer lists), then conspired with another defendant, Real Action Paintball Inc. (“RAP4”), to start selling counterfeit PepperBall® projectiles around the world. ATO also alleges that the defendants …


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Sixth Circuit decides trademark rights in dispute arising after two asset sales involving an unregistered trademark

Posted in Trademarks

Stating that it “will not presume the creation of jointly owned or non-exclusively licensed trademark rights,” the Sixth Circuit Court of Appeals recently held that an individual defendant and his company did not retain any ownership rights in an unregistered trademark his company had acquired in an asset sale and then transferred in another asset sale. [See Yellowbook Inc. v. Brandeberry, No. 11-4267 (6th Cir. Feb. 27, 2013).] The Sixth Circuit reversed the district court’s finding of no trademark infringement and remanded the case to the district court to enter appropriate injunctive relief and determine damages for trademark infringement.

The Sixth Circuit’s holding reinforces the importance of:

  1. Identifying all the trademark rights being purchased and by whom in a purchase agreement
  2. Purchasing the goodwill associated with the trademark rights being purchased
  3. Researching the chain of title of the trademarks being purchased and potential claims of ownership of those marks

It also illustrates why it is recommended that businesses register their trademarks with the U.S. Patent and Trademark Office and/or at the state level to secure a presumption of ownership of a mark.…


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IP Translator: The EU Trademark Case Decision’s Affect on Applications

Posted in Trademarks

On June 19, 2012, the Court of Justice of the European Union issued a decision in a trademark case where the applicant sought registration for IP TRANSLATOR, using a class heading of “educational services” to identify the services.  Prior to this decision, an applicant for trademark protection in the European Union could use a class heading under the Nice Agreement – which sets out classes for goods/services, each of which are designated by a class headings that covers an alphabetical list of goods or services – rather than listing each good or service in the application.…


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HOW IS AN AUTOMILE LIKE A DUCK TOUR? THINK GENERIC.

Posted in Copyright, Intellectual Property, Trademarks

Co-Authored By: Robert J. Morgan
For those businesses that might be tempted to enjoin another’s use of a common name, be advised: you might be inviting unexpected grief.  In a “where the rubber hits the road decision,” the Cuyahoga County (Ohio) Court of Appeals ruled recently in the case of Bedford Auto Dealers Ass’n v. Mercedes Benz of North Olmsted, 2012-Ohio-927, 2012 WL 760626 (Cuyahoga App. March 8, 2012), that the relatively common term “automile” is generic and not entitled to trademark protection.…


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WAGO v. Rockwell; When is a Gerund not a Gerund; Pass on Twombly/Iqbal Mandate

Posted in Trademarks

Think choice of grammar or poor word choice is not relevant in patent claims? Think again. Indifferent word selection nearly sunk this infringement action as well as the patent. Judge Christopher A. Boyko of the Northern District of Ohio recently tackled the difficult issue of patent indefiniteness following IPXL Holdings, L.L.C. v. Amazon. com, Inc., 430 F.3d 1377 (Fed. Circ. 2005), in the case of WAGO Verwaltungsgesellschaft MBH v. Rockwell Automation, No. 1:11-cv-00756, 2012 WL 775683 (N.D. Ohio March 7, 2012). The WAGO decision, however, is notable as much for what it didn’t address as for what it did. …


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Michael Jordan Shoots in China

Posted in Trademarks

Remember to register transliterations as well as English versions of your trademarks in China and elsewhere.  NBA legend Michael Jordan initiated a suit in China alleging the unauthorized use of  his name by a Chinese sportswear and footwear manufacturer.  Michael Jordan became a worldwide basketball star in the 1980s and 1990s.  Qiaodan Sports Company Ltd., changed its name to "Qiaodon", the transliteration of "Jordan", in 2000.  Not only does Qiaodon use the name Jordan, it often has used Michael Jordan’s iconic number 23 and a logo which greatly resembles Nike’s “Jumpman” logo (which Nike uses on Michael Jordan related products) on its products and advertisements.

Nike registered the trademark "Jordan" (in English) in China in 1993 but failed to register the Chinese version allowing Qiaodon to register the Chinese version in 1998.  Jordan appears to have acted after all of these years because other NBA players (such as Yao Ming) have had recent victories under similar circumstances.  Things appear to be looking brighter on the intellectual property front in China.  However, you should still take Michael Jordan’s situation as a lesson/reminder to register transliterations as well as English versions of your trademarks in China and elsewhere.…


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Starbucks Makes News with Logo and Mobile Payment Option

Posted in Trademarks

When Starbucks recently announced a change to their iconic logo, I took interest not only as an attorney specializing in trademark and advertising law, but also as a fairly regular consumer of Starbucks coffee (and, I confess, a Starbucks "Gold Level" card holder).

This article discusses issues pertinent to both and addresses some interesting theories behind the reasons and implications of logo revisions generally, as well as some thoughtful observations on the Starbucks logo change and the advantages of a wordless logo for a global marketplace.

Also, Starbucks has launched a mobile application allowing users to track the funds in their Starbucks stored value cards and to use their phones for payment—with the phone essentially taking the place of the card.  It’s a cool and useful application, and seems to be perfectly suited for its targeted audience.  I have the application downloaded and use it to track or reload my own card balance, which I am starting to find surprisingly useful.  I’ve had a mixed experience with baristas who either handle my phone or refuse to handle my phone citing company policy.  While the latter makes for a somewhat awkward counter transaction, I find it preferable.  There is something very personal about handing over my phone (as compared to a credit card or Starbucks card), and given the amount of information we carry around on our phones, it seems like a security concern—especially  if that phone is going in through a drive-through window.  In any case, this functionality perhaps brings …


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Opening of .co ccTLD Draws Interest as .com Typo Variant

Posted in Domain Names, Intellectual Property, Trademarks

A country code top-level domain (ccTLD) is an Internet top-level domain generally used or reserved for a sovereign state or territory. There are currently over 270 such domain extensions— from the Ascension Island (.ac) to Zimbabwe (.zw)—delegated by the Internet Assigned Numbers Authority (IANA). A number of the world’s countries have licensed their TLDs for worldwide commercial use—usually when the TLD has coincidental alternative meanings making it especially marketable. Examples include Tuvalu and the Federated States of Micronesia, small island-states in the Pacific, sell domain names using the .tv and .fm TLDs respectively.

The .co top level domain extension is the latest ccTLD to draw interests from domain registrants not located in the country indicated by the domain extension. The .co extension, the country code top-level domain assigned to the nation of Colombia, is significant to brand owners because Internet users searching for brand owners’ Web sites frequently mistype ".com” as ".co."…


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