Trademarks – Page 2 – Attorney Evan Brown

July 9, 2015 Trademarks

What is required for a website design to be protectible as trade dress?

Plaintiff sued defendant for, among other things, trade dress misappropriation, asserting that plaintiff’s website had a particular look and feel that would convert leads to sales, and that defendant copied the look and feel of the website’s distinctive elements. Defendant moved to dismiss the trade dress claim for failure to state a claim. The court granted the motion.

It found that plaintiff had failed to meet the requirement of pleading how its website’s design was distinctive. It noted that a mere cataloguing of a website’s features does not give defendants adequate notice of a plaintiff’s trade dress claim, especially, when the list of features comprising the trade dress is not complete. Rather, a complaint must “synthesize” how those features combine to create the website’s protectable look and feel. In the court’s view, a complaint that lists only some, but not all, of the features of the plaintiff’s website that the plaintiff believes constitute its trade dress is insufficient to state a plausible claim for trade dress infringement under the Lanham Act.

FC Online Marketing, Inc. v. Burke’s Martial Arts, LLC, 2015 WL 4162757 (E.D.N.Y., July 8, 2015)

What should we do when trademarks offend?

Trademarks are symbols that convey meaning, and ostensibly that meaning is ontologically linked to the purveyor of the goods or services with which the trademark is connected. But those symbols can relate to different ontologies as well, be they freighted with racism/prejudice, religious offense, or plain old poor taste. Take for example the ongoing Redskins dispute, Muslims protesting a sacred symbol on perfume, and the weird attempt by a Malaysian company to get an Australian trademark for MH17.

The law and social advocacy step in to critique these brand owners’ selection of marks. For example, the USPTO found the Redskins marks to so disparage Native Americans that the football team should not enjoy the protections of a federal trademark registration. Ticked-off Sufis protested their holy symbol being used in a concupiscent manner. And we all sort of scratch our heads at why a company would think it should capitalize commercially on the tragedy of an airliner downed in a war zone.

But do the law and social advocacy really have any role to play here? Of course. So perhaps the more critical question is whether those roles should be primary ones. Trademarks exist to regulate commerce. More specifically, trademark law seeks primarily to ensure that a purchaser’s decision making process will be unmessed-with by others seeking to muddy that purchaser’s picture of who is providing the goods or services. If trademarks can have multiple meanings, which of course they sometimes will, shouldn’t we just let the marketplace sort that out? At the same time that trademark law is guiding a purchaser’s decision in an environment hopefully free of confusion, why not just let the sensibilities of the purchasing majority decide what products – some branded with offensive symbols while others not – be sustained?

Evan Brown is an attorney in Chicago advising clients on matters dealing with trademarks, copyright, technology, the internet and new media.

October 7, 2010 Trademarks

Personal name in web search results did not support Lanham Act claim

Stayart v. Yahoo, — F.3d —, 2010 WL 3785147 (September 30, 2010)

Plaintiff performed a vanity search of her own name on Yahoo and found some results on porn and pharmaceutical sites. When Yahoo would not remove the search results upon plaintiff’s request, plaintiff sued under Section 43(a) of the Lanham Act. She claimed that the results showed a false endorsement by her of the pornographic and pharmaceutical sites.

Yahoo moved to dismiss, arguing that plaintiff was without standing to challenge this use of her personal name under Section 43(a). The district court granted the motion. Plaintiff sought review with the Seventh Circuit. On appeal, the court affirmed.

It held that plaintiff had failed to show she had a commercial interest in her name. Such interests are the only ones protectible under Section 43(a). Attempting to overcome this hurdle, plaintiff urged the court to consider her online activities such as writing “scholarly articles” and some poetry to be commercial services.

The court rejected this argument, noting that while those goals may be passionate and well intentioned, they are not commercial. Absent commercial activity, plaintiff lacked standing under the Lanham Act.

Other coverage of this case:

May 12, 2010 Cybersquatting, Trademarks

Trademark holder not entitled to domain name registered years before

Arizona State Trailer Sales, Inc. d/b/a Little Dealer Little Prices RV v. World Wide RV, No. FA1003001315658 (Nat’l Arb. Forum, May 7, 2010)

Startups in the process of selecting a company or product name are often frustrated to see that someone else, years ago, registered the .com version of their newly thought-of name. Similarly, companies that have acquired a trademark registration wonder whether they can use their crisp new registration certificate to stomp out someone else who has been using a domain name similar to the company’s new mark.

A recent case arising under the Uniform Domain Name Dispute Resolution Policy (UDRP for short) shows us that the earlier domain name registration is usually going to be on solid ground against a later-arriving trademark owner.

In the case of Arizona State Trailer Sales, Inc. d/b/a Little Dealer Little Prices RV v. World Wide RV, a National Arbitration Forum panelist denied the trademark owner’s cybersquatting claim against another company who had registered the domain name version of the trademark in 2006.

To be successful under the UDRP, the complainant would have had to show:

the domain name registered by the respondent was identical or confusingly similar to a trademark or service mark in which the complainint had rights;
the respondent had no rights or legitimate interests in respect of the domain name; and
the domain name had been registered and was being used in bad faith.

The complaint failed on the first of these three elements. The panel found that the requirement of being identical or confusingly similiar “necessarily implies that Complainant’s rights must predate the registration of Registrant’s domain name.” Since the domain name in this case was registered years before, there was no relief to be had. The request to transfer the domain name was denied.

January 28, 2010 Trademarks

File extensions cannot be trademarks

Autodesk, Inc. v. Dassault Systemes Solidworks Corp., 2009 WL 5218009 (N.D. Cal. December 31, 2009)

One of the issues in the case of Autodesk, Inc. v. Dassault Systemes Solidworks was whether Autodesk could claim trademark rights and the letters “DWG”. The .dwg (“drawing”) file extension is the native file format for Autodesk’s flagship product AutoCAD.

File types

Plaintiff Autodesk moved for summary judgment on the trademark issue. The defendant pointed out that the trademark laws do not permit one to claim exclusive rights in trademarks that are merely functional.

During the hearing on the motion, the court asked Autodesk’s counsel to disavow any claim to trademark protection for the letters “DWG” when used for the file extension. Counsel did disavow such claim but held onto Autodesk’s argument that the letters could serve as a word mark to be used on packaging and advertising and marketing materials.

The Court agreed and sided with Autodesk and included in its order language that expressly stated “anyone in the world is free to use .dwg as a file extension as far as Autodesk is concerned.”

Autodesk filed a motion and asked the court to reconsider its holding, arguing that what Autodesk really meant when it disavowed the claim of exclusive rights was that anyone else could use the extension so long as the use was being made with Autodesk’s proprietary technology, or was interoperable with that technology.

The court rejected this argument holding:

File extensions are functional, and functional uses cannot be trademarked. To rule otherwise would invite a clog on commerce, given the millions of software applications. The limited universe of extension permutations would soon be encumbered with claimants and squatters purporting to own exclusive rights to file extensions.

The court went on to say there would be no consumer confusion because,

[T]he primary purpose of a file extension is to tell the computer the type of the file it is handling. A computer is not a consumer. Its “reading” of the file extension is not in connection with a commercial transaction. It doesn’t care who made the file format it is trying to read.

This isn’t the first time the question of whether machine perception of information has been held to not give rise to trademark protection. An analogous situation is the 1-800 Contacts v. WhenU decision in which the Second Circuit held that WhenU did not “use” another company’s trademarks within the meaning of the Lanham Act when it included trademarked terms in an unpublished directory that triggered delivery of contextually relevant advertising.

October 7, 2008 Trademarks

Court enjoins transfer of trademarks associated with domain name booty

1st Technology v. Bodog Entertainment Group, S.A., No. 08-0872, (W.D. Wash. September 30, 2008).

After plaintiff 1st Technology won a $46 million default judgment against defendant BEGSA, 1st Technology began its collection efforts by seeking to obtain possession of thousands of BEGSA domain names registered through the Washington-state based registrar eNom. A state court ordered the domain names transferred to a receiver, but the judge, unsure of the degree of the state court’s jurisdiction, did not transfer the ownership of the corresponding federally-registered trademarks associated with the domain names.

Thereafter, BEGSA purported to assign the trademarks to various subsidiaries and related entities. 1st Technology filed a federal lawsuit against BEGSA and these other entities, asking the court to set aside the later transfers as fraudulent conveyances. 1st Technology sought a preliminary injunction to prevent further transfer of the trademarks, and to prevent defendants from using the trademarks in connection with online gambling.

The court granted the motion inasmuch as it sought prevention of further transfer. But it denied the motion as to the use in connection with online gambling.

BEGSA argued, among other things, that the court could not order the forced sale of the trademarks and their goodwill, and that federal trademark law preempted the state fraudulent conveyance law under which 1st Technology sought relief. The court rejected both of these arguments, citing to Seventh Circuit authority providing that the “assertion that a trademark is not subject to an involuntary judicial sale is incorrect.” Adams Apple Distrib. Co. v. Papeleras Reunidas, S.A., 773 F.2d 925, 931 (7th Cir. 1985). On the preemption question, the court noted the absence of any authority cited by BEGSA providing for preemption, and looked to the language of 15 U.S.C. §1119, which gives the court broad authority to affect the federal trademark register.

In denying injunctive relief against the use of the trademarks in connection with online gambling, the court concluded that at such an early stage in the litigation, it was not prepared to distinguish which conduct on the part of the defendants was illegal or legal. Of significant importance was the likelihood of harm to both parties if the trademarks could not be used in the way they traditionally had (that is, for online gambling). Defendants argued that “disjoining the marks from their most commonly known use hopelessly dilutes them and destroys their value – to anyone.”

May 9, 2008 Trademarks, Uncategorized

A look at some keyword cases and a PPC class action suit

Court orders use of “negative keywords”

Orion Bancorp, Inc. v. Orion Residential Finance, LLC, No. 07-1753, 2008 WL 816794 (M.D. Fla., March 25, 2008)

Plaintiff Orion Bancorp, Inc. is a bank operating under the ORION name and registered trademark since 2002. Defendant Orion Residential Finance, LLC provides financial and real estate related services, and used the term “Orion” in interstate advertising and in the domain name “orionresidentialfinance.com” without Orion Bancorp’s authorization or consent.

The court entered an agreed permanent injunction, ordering Orion Residential Finance to refrain from any and all use of the term “Orion”. The defendant was prohibited from purchasing the word “Orion” as a keyword to trigger sponsored advertising. Moreover, it was required to activate “Orion” as a “negative keyword” (specifically preventing Orion Residential Finance’s ads from appearing when one searches using the terms “Orion”).

N.D. Cal.: Competitor’s trademark as keyword causes initial interest confusion

Storus Corp. v. Aroa Marketing Inc., 2008 WL 449835 (N.D. Cal. Feb. 15, 2008).

Plaintiff Storus Corporation (“Storus”) sued Defendants Aroa Marketing, Inc. (“Aroa”) and Skymall, Inc. (“Skymall”) for trademark infringement based on the defendants’ use of Storus’ mark “Smart Money Clip” to trigger sponsored listings. Storus sells its patented Smart Money Clip, and Aroa sold competing products under its Steinhausen mark which were marketed as the “Smart Money Clip”. Aroa tried unsuccessfully to argue that Storus’ mark was a descriptive term not entitled to protection (but offered no evidence of lack of secondary meaning, i.e., it did not prove consumers do not think of Storus when they see the Smart Money Clip mark).

The Court found that Aroa’s use of Storus’ mark in the sponsored ad caused initial interest confusion. In 11 months, the ad was displayed 36,164 times in response to a search for “smart money clip,” resulting in 1,374 clicks on Aroa’s ad. The court found that the marks were identical, were used on the same type of product, and were marketed via the Internet. (Even though Aroa’s mark appeared in the ad, Storus’ mark appeared first, was larger, and was underlined).

11th Circuit: Competitor’s Trademark as Keyword Likely to Cause Confusion

North American Medical Corp. v. Axiom Worldwide, Inc., 2008 WL 918411 (11th Cir. April 7, 2008)

Eric Goldman has a thorough report on his Technology & Marketing Law Blog of a case where the defendant’s use of the plaintiff’s ACCU-SPINA and IDD THERAPY trademarks in metatags constituted use in commerce, and thus trademark infringement where a Google search listed the defendant as the second most relevant organic search result (below the plaintiff). In a footnote, the court did hint that if the defendant’s website included an explicit comparative advertisement, things might have come out differently.

Possible Class Action Suit against Google and PPC Groups

Finally, Sarah Bird reports on SEOmoz.org that a class action trademark and ACPA lawsuit against Google and other domain parking agencies will move ahead. (Goolge’s adsense program contributes to the pay-per-click links on “parked”, i.e., recently acquired, or tasted domain names). The Plaintiff’s are seeking to hold them liable for these PPC links which may offer competing goods. Though for Google’s part, it notes on its FAQ that it is not responsible for the domain names on which its adsense ads appear, it seems disingenuous to suggest that their algorithms are not behind the PPC links that appear. Google’s method for trademark owners to object to sponsored links places the burden for policing this practice on mark owners.

April 2, 2008 Trademarks

Blackberry and Twitter in a trademark tussle?

In April 2007, Twitter, Inc. filed application no. 77166246 to register the trademark TWITTER with the U.S. Patent and Trademark Office. (Twitter is the ever-more-popular tool that enables “friends, family, and co–workers to communicate and stay connected through the exchange of quick, frequent answers to one simple question: What are you doing?” It’s fun. You should try it if you’re not using it already. And you can start by following me.)

Anyway, in February the application reached the point where it was published for opposition. That means that any other trademark owner out there who feels it would be damaged by the TWITTER mark being registered can oppose the application in the Trademark Office.

On March 14, 2008, Research in Motion (of Blackberry fame) stepped up and requested an extention of time to oppose the TWITTER application. I ran a quick search for registered marks owned by Research in Motion (you can do that yourself here), but didn’t see anything close to “Twitter”. Can anyone think of an unregistered mark that RIM owns that is similar to TWITTER? Or any other reason why RIM would want to oppose this application? Comments are open, as they have been for some time.

March 25, 2008 Cybersquatting, Trademarks

NASCAR beat to checkered flag in domain name dispute

[Brian Beckham is a contributor to Internet Cases and can be contacted at brian.beckham [at] gmail dot com.]

Complainant NASCAR filed a complaint under the Uniform Domain Name Dispute Resolution Policy (“UDRP”) against The Racin’ Connection, Inc. over the domain name nascartours.com. In the stock car racing business since 1948, NASCAR is a household name in U.S. motor sports. Its DAYTONA 500 attracted 30 million television viewers in 2007. NASCAR licensed its various marks to over 200 licensees to the tune of USD 2 billion in 2006. An entire industry revolves around providing tickets and packages to NASCAR-sanctioned events. One such entity, The Racin’ Connection, Inc. has provided such tour packages for over 30,000 customers in part through its website at the nascartours.com domain name since 1996.

NASCAR alleged in its complaint that the unlicensed domain name was confusingly similar to its NASCAR mark, that The Racin’ Connection, Inc. had no rights or legitimate interests in the domain name, and that the domain name was registered and was being used in bad faith. NASCAR further asserted that use of its marks in a domain name (as opposed to on a website) was not a fair use, and that such use was intended to “entice…[and] misleadingly divert consumers for [] commercial gain.”

The Racin’ Connection, Inc. argued that the domain name was not confusingly similar to the NASCAR marks, but that its use of the marks was a fair use as part of a bona fide offering of services as a “race package reseller”. It further pointed out that it promoted only NASCAR events and displayed a disclaimer on its website.

Finding the The Racin’ Connection, Inc.’s argument of laches unavailing, the 3-member Panel found that the domain name was confusingly similar to the NASCAR mark. The Panel noted that there is a split in URPD cases regarding whether a bona fide offering of goods or services on a reseller’s (authorized or not) website using a mark in a domain name confers a legitimate interest on the reseller. In this case, the Panel found that The Racin’ Connection, Inc.’s use of the NASCAR mark in its domain name did confer such rights. (The Panel considered several factors from the previous Oki Data case paramount: The Racin’ Connection, Inc. was only offering NASCAR tours; the website disclosed the parties’ relationship; and the respondent did not try to “corner the market” in domain names incorporating the mark). Finally, the Panel found that The Racin’ Connection, Inc.’s sales of NASCAR tours since 1992 and disclaimer on its website coupled with a lack of evidence from NASCAR as to any actual consumer confusion negated a finding of bad faith in its registration or use of the domain name.

Ultimately, despite confusing similarity between the domain name and the NASCAR mark, given the good faith use of the mark in connection with a bona fide offering of services and the rights created thereby, NASCAR was not able to stop the use of its mark in a domain name.

The Full text of the Decision is available at: http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-1524.html