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

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. ┬áIn 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.…

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

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. …

Michael Jordan Shoots in China

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.…

Starbucks Makes News with Logo and Mobile Payment Option

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 …

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

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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