Specializing In Trademark & IP Issues: Traverse Legal's attorneys handle a wide variety of trademark, copyright, patent and idea protection issues. We regularly assist clients in the filing and protection of trademark rights, responding to trademark infringement threat letters
and drafting infringement letters on behalf of our clients. We also
handle complex trademark infringement litigation under both the Lanham Act, UDRP and the Anti-Cybersquatting Protection Act.
Managing Partner Enrico Schaefer: "Traverse
Legal's attorneys know trademark law and pride
themselves on advanced litigation techniques which are both
cost-effective and budget oriented. When it comes to technology, there
are very few firms that can match our capabilities. Because we are a
boutique litigation law firm, we know how to strategically and
efficiently accomplish our client's goals. "
If you have a trademark issue, or wish to register a trademark, you may contact one of our trademark attorneys for a free evaluation or call 866.936.7447 (International Toll Free).
  
 We just finished a very interesting presentation titled "Trademarks in Virtual Worlds."
Explore the challenges facing brand owners in virtual
worlds like Second Life, where real world trademarks and other
intellectual property are regularly used - both with and without
authorization. The panel will address trademark and other fascinating
issues affecting businesses that arise in virtual world environments.
Whether or not you own an avatar, this session will be of interest.
Continue reading "Trademarks, Copyrights, Defamation & Contracts in a Virtual World" »
 Our trademark attorneys are all over the International Trademark Association’s (“INTA”) Annual Meeting and Conference in Seattle Washington. We will be providing resources and interviews from the most influential people on issues from global trademark protection, online brand protection, Madrid Protocol issues, and challenges faced by trademark holders in this new age.
Click HERE for full coverage from Seattle Washington, including radio interviews, video feeds and live coverage from the “Meet the Bloggers” Conference sponsored by the Seattle Trademark Lawyer and his firm Graham & Dunn.
In the past, Google has blocked people from bidding on trademarks and keyword triggers in many foreign countries. In the United States, it simply blocks the use of the trademark term in the header of the ad text itself. Now, Eric Goldman reports in his Technology and Marketing Blog that Google has liberalized its trademark policy in 190 countries to conform with the policies in the US, Canada, Ireland and the United Kingdom. Google will no longer block the sales of trademarked keywords.
Notorious litigation hot-spot France remains on the list of places
where Google will block trademarked keyword sales. For more information on trademark infringement and keyword advertising, check out these links:
As reported on thedomains.com blog, Google is being sued for trademark infringement over the term Android. Here is the full article concerning the lawsuit:
Continue reading " Google Sued For Trademark Infrigement Over Android" »
Community trademark fees, fees for registering a trademark in the European Union, will drop 40% in May. This will bring the cost of Community trademarks down to about €900, or approximately $786.00 USD. The European Commission is currently working on a community trademark fee that merges the application fee and the registration fees into one payment. Applications that are currently under consideration for which a request for payment has not been issued by the European Commission will pay the new, lower fee.
Traverse Legal's Trademark Attorney Brian A. Hall discusses several benefits of obtaining federal trademark registration in his article titled "Five Common Situations Where You Would Want a Federal Trademark Registration,” wherein he discusses the following top five situations where a federal trademark registration is helpful.
Continue reading "Five Reasons to Obtain a Federal Trademark Registration" »
We often receive questions from clients about the copyright law implications of content aggregators. Content aggregators, to be clear, are business models in which content from the web produced by others is repackaged in a value-added manner. Value is added to the aggregated content through the addition of user voting schemes, social networking, message boards, or other community building methods. The question we most often receive: “Is this fair use under the Copyright Act?”
As with many legal questions, the answer is, “It depends.” Unfortunately, the Copyright Act is purposely vague when it comes to its definition of fair use. One thing is clear, however: fair use is not infringement. Section 107 of the Copyright Act states:
Continue reading "How to Know Whether Content Aggregators’ Use of Third Party Content is Fair Use Under Copyright Law " »
Listen to Traverse Legal, PLC attorney Brian A. Hall talk about the differences between federal trademark registrations with the United States Patent and Trademark Office (USPTO) and state trademark registrations as well as the benefits and drawbacks of both trademark registrations. Mr. Hall reviews the requirements of trademark registrations at the federal and state levels while reflecting upon what common elements of each. Ultimately, Mr. Hall provides practical considerations for entities seeking a trademark registration, discusses why to choose a federal trademark registration over a state trademark registration, and expresses when a state trademark registration may be selected.
ANNOUNCER: Welcome to the Vertio Talk Radio Tech Spotlight with your host, Damien Allen.
Continue reading "Radio Interview of Attorney Brian Hall Discussing The Difference Between Federal and State Trademark Registrations" »
Effective January 16, 2009, applicants seeking a trademark registration should be aware of several rule changes when looking to register a trademark. The “Summary of Miscellaneous Changes to Trademark Rules” summarize changes that can affect whether or not an applicant is able to successfully register a trademark. Of particular note:
Continue reading "New USPTO Rules Affect Application Procedures for a Trademark Registration" »
Vince Young, quarterback for the Tennessee Titans, has filed suit against three people who applied for "VY" and "INVINCEABLE" as trademarks. Young argues that the trademark registration applications filed have prevented him from marketing deals, including one from Reebok. The suit was filed in U.S. District Court on December 12 by three individuals described as friends. If you are looking to register a trademark, it is important to have an availability search done by a lawyer familiar with the area. You should contact a trademark attorney if you seek trademark registration.
In today’s global marketplace, it is a virtual certainty that every brand describing a good or service has a trademark issues. There is essentially a shortage of available words and increased tension between use of those brands in different countries.
Continue reading "Trademark Clearance Search: What Trademark Databases Should I Be Searching?" »
Traverse Legal’s lawyers constantly monitor the latest information on the World Wide Web concerning Trademark and infringement issues. Here is this week's roundup: North American Investigations, Inc. Talks Trademark Infringement ...
PR Web (press release) - Ferndale,WA,USA
North American Investigations' Darrin Giglio recently sat down with American Public Media's Marketplace host to discuss the topic of trademark infringement. ...
INTERNET LAW - Romania's Trademark Law
IBLS INTERNET LAW (subscription) - Irvine,CA,USA
Trademark infringement constitutes a criminal offense under the Trademark Act, carrying a penalty of imprisonment of between three months and three years, ...
Control Screening Issues Retraction Concerning AS&E Litigation and ...
MarketWatch - USA
In that press release, Control Screening made representations concerning: 1) actions taken by the United States Patent and Trademark Office regarding AS&E's ...
Continue reading "Trademark Attorneys: Recent Trademark Issues across the World Wide Web" »
A recent domain dispute decision highlights the importance of doing a trademark clearance search before picking any business, brand or product name. The Parking Page Dilemma: Frank Schilling loses chillibeans.com domain under UDRP, illustrates that both courts and arbitration panels expect companies to proactively ensure that they are not infringing on someone else’s trademark rights and/or prior trademark registrations before picking a domain name. There are three lessons every domainer -- at least those who are willing to deal with the legal realities under the UDRP and ACPA -- should take from this decision. (1) do a trademark search for every valuable domain within your portfolio, (2) exclude ads to the extent you can from being served up on your parked pages which include products in trademark protected areas and (3) consider excluding your most valuable domains from parking programs all together (they are worth more 'for sale' than from parked revenue).
Traverse Legal Radio
Today's Guest - Brian Hall 
Today's Host - Damien Allen August 2007
ANNOUNCER: Welcome to Vertiotalk Radio Tech Spotlight. With your host Damien Allen.
Continue reading "Trademark Monitoring Is The Key To Trademark Protection" »
The battle over whether search engines can allow third parties to bid on and use keywords incorporating the trademarks of third parties has heated up once again, as blogged about at the Technology & Marketing Law Blog here. American Airlines has filed a trademark infringement lawsuit against Yahoo and Overture d/b/a Yahoo! Search Marketing over its handling of keywords. The counts include Lanham Act claims of trademark infringement, contributory trademark infringement, vicarious trademark infringement, false representation, dilution, equivalent Texas state law claims, and tortuous interference with contract.
Continue reading "Will the Latest Trademark Infringement Lawsuit Determine Whether the Use of Keywords Trademarked by Another Is Legal?" »
The United States Patent and Trademark Office (USPTO) has issued a Consistency Initiative. The goal of the Initiative is to avoid the inconsistent handling of an applicant’s recently registered and pending trademarks or service marks. During this one-year pilot, applicants may submit a Request for Consistency Review when a substantive or procedural issue has been addressed differently by examining attorneys within the USPTO. Four requirements must be met to file such a request, including:
Continue reading "USPTO’s New Initiative Aims at Consistent Treatment of Federal Trademark Applications" »
We have said it time and time again: trademarks are increasingly important in today’s digital age. Eric Schmidt, CEO of Google, appears to echo our urgings when, as reported, he said: “Brands are the solution, not the problem, . . . Brands are how you sort out the cesspool.” He went on to state: “The fundamental way to increase your rank is to increase your relevance. . ."
While Mr. Schmidt is talking about the need for quality content in order to appear relevant within the Google search engine, he also appears to be stressing the need for a reputable brand that consumers will recognize and trust.
Continue reading "Brands (Trademarks) are the Way to Distinguish Yourself and the Quality of Your Goods or Services on the Internet" »
 Traverse Legal's Attorney, Brian Hall, discusses the issue of the unauthorized use of one's trademark in online keyword advertisements in this Vtalk Radio interview.
ANNOUNCER: Today's program is brought to you by Traverse Legal, PLC, a law firm specializing in internet law, domain disputes, and technology company representation. That's Traverse Legal. www.traverselegal.com. Welcome to VTalk Radio Tech Spotlight.
DAMIEN: Welcome to the VTalk Radio Tech Spotlight. Good morning and welcome to the VTalk Radio Tech Spotlight. I'm Damien Allen in the studio and on the phone we have Brian Hall. Brian Hall is an attorney with Traverse Legal, PLC. Brian's practice focuses on trademark matters including trademark clearances and registrations, opposition and cancellation proceedings in front of the TTAB, licensing issues, and federal court litigation. Brian also regularly handles domain dispute resolutions, internet law matters, and related business representation matters. Good afternoon and welcome to the program, Brian.
BRIAN: Thanks a lot, Damien. I appreciate it.
DAMIEN: Well today we are going to be talking about unauthorized use of one's trademark and online keyword advertisements which is known as keyword infringement. So let's start off with the basics. What is a trademark?
BRIAN: Well a trademark is a word, sometimes a symbol, phrase, could be a local, an image, whatever it might be and it's used to identify a particular manufacturer or seller's products and really the whole point of a trademark or service mark is to distinguish one manufacturer's products or services from that of another.
Continue reading "Online Trademark Infringement: The Unauthorized Use of Trademarks as Keywords for Online Advertisements" »
In a recent post, we discussed a Community Trade Mark (CTM), and how it allows a trademark applicant to have protection within all countries of the European Union (EU). When filing a Community Trade Mark, it can be done through The Office for Harmonization in the Internal Market, also known as OHIM. However, that is not the only option.
The Madrid Protocol allows a trademark owner to file an international application for registration under the Madrid Protocol. This can be done through the United States Patent and Trademark Office (USPTO) as long as the applicant is a national of the United States, a domicile within the United States, or has a real and effective commercial establishment within the United States. The benefit of such an international application is that there is one filing fee, the CTM Trade Mark through the EU is an option, and all other members of the Madrid Protocol can be selected in order to give you protection in each of those countries.
Continue reading "If You Plan To Do Business Internationally, You Should Consider an International Application for Registration of a Trademark under the Madrid Protocol" »
With the advent of the Internet, most businesses with a website can be doing business internationally. Any e-commerce site would definitely have the potential, and likelihood, of reaching consumers in foreign countries. Who truly knows where your product or service may be the most successful. As such, it the prudent decision is to file for a Community Trade Mark (CTM). A Community Trade Mark allows a registrant to protect a trademark in all of the countries of the European Union (EU) by filing a single trademark application with one single office, the Office for Harmonization in the Internal Market (OHIM).
Continue reading "If You Plan to do Business Internationally, You Should File a Community Trade Mark" »
There is a delicate balance a trademark applicant must achieve when filing for a trademark registration with the United States Patent and Trademark Office (USPTO). On one hand, the description of goods/services must be broad enough to offer as much trademark protection as possible. On the other hand, the description should not be so broad that it impairs the trademark applicant’s ability to distinguish its goods and services from that of another. Case in point, the recent Trademark Trial and Appeal Board (TTAB) decision, as discussed here, held that the trademark application for the design plus words mark “17” as it pertained to various clothing items, including shirts related to the field of professional automobile racing, created a likelihood of confusion with the registered mark “SEVENTEEN” as it pertained to shirts. The TTAB did not find the trademark applicant’s arguments regarding the difference between the kinds of consumers who would purchase the different shirts to be relevant. Instead, the TTAB noted that “[e]xtrinsic evidence that may tend to limit the scope of registrant’s goods is essentially a collateral attack on the cited registration, which is not appropriate . . ..”
Continue reading "The Importance of the Description of Goods and Services in a Trademark or Service Mark Application with the USPTO" »
While the law surrounding a third party’s use of a trademark owner’s trademark as a keyword so as to trigger an online advertisements is still in flux, a recent United States District Court decision illustrates that the mere purchase of the trademark as a keyword is actionable trademark infringement. While the defendant attempted to argue that Plaintiff’s trademark infringement claim must fail because it simply purchased a keyword rather than displaying the Plaintiff’s trademark in the text of the online advertisement, the court disagreed and held that the Plaintiff had established all necessary elements for trademark infringement. In particular, the court held that the mere purchase of the keyword satisfies the “use in commerce” requirement for trademark infringement. While the question of whether the mere purchase of a keyword satisfies the use in commerce requirement is hotly debated currently, it appears that courts are willing to find that a third party does not have to use another’s trademark in the actual text of the online advertisement to be held liable.
Continue reading "Purchasing a Keyword that is the Trademark of Another for Online Advertisements Held to be Use in Commerce and Trademark Infringement" »
This post will examine a basic trademark availability search. If you have a more complex trademark issue, or are investing significant funds in your trademark, you should search additional databases beyond those described herein.
Q. What is a tradmeark availability search?
A.
In General, trademark availability is a search done by a qualified
trademark attorney or staff member under that attorney’s direction to
identify other possible uses of the market of your proposed trademark,
or words which may create customer confusion as related to your
proposed trademark in your proposed industry.
Continue reading "What is a Trademark Availability Search?" »
In a July 30, 2008 radio interview (you can listen at http://www.tcchamber.org/programs/wef.php), Attorney Enrico Schaefer of Traverse Legal answered questions regarding the protection of intellectual property. The following is a transcript of that interview:
Welcome to the Traverse City Area Chamber of Commerce’s Entrepreneurial Focus, sponsored by the Traverse City State Bank. Now, here’s another success story with your host, Ron Jolly.
Announcer: Welcome to the Traverse City Area Chamber of Commerce’s Entrepreneurial Focus, sponsored by the Traverse City State Bank. Now, here’s another success story with your host, Ron Jolly.
Ron Jolly: WTCM News Talk 580. Welcome to the Traverse City Chamber of Commerce Enterpreneur Focus brought to you by the Traverse City State Bank, and every week we feature an actual entrepreneur, somebody who has gone out there, taken the risk and started their own business, created jobs in the marketplace, and continues to grow the business, and when we’re not hearing their stories every other week, we have experts in to talk about various issues in the business community, some free advice as we like to say. Today, Enrico Schaefer is our guest. He is an expert with copyright law, trademark and patents, and he is with traverselegal.com. We’ll meet Enrico Schaefer in a moment and talk a bit about that. If you have questions related to that in your business, you can call us today, too, with your questions. 947-0023 or 800-817-0580. We’ll be right back on the Traverse City Chamber of Commerce Entrepreneur Focus.
Continue reading "Attorney Enrico Schaefer Discusses Copyrights, Trademarks" »
Financial service provider H&R Block has filed suit against American Express for the use of its I GOT PEOPLE trademark. H&R Block contends that an American Express commercial featuring Beyonce Knowles and Ellen Degeneres infringed upon its I GOT PEOPLE trademark because it featured Ellen Degeneres searching for her own “people.” Beyonce Knowles asked Ellen to have her “people” contact Beyonce’s “people” so that Ellen could attend Beyonce’s concert. Ellen eventually finds that her “people” is American Express, and uses her Amex card to purchase tickets to Beyonce’s concert.
Continue reading "Famous Trademarks Have Greater Protection: H&R Block Sues American Express Over I GOT PEOPLE Trademark" »
The TTAB has found that JELLY CLIMAX MAXIMIZER and CLIMAX are not confusingly similar, despite the fact that they are used for similar goods, namely, vibrators. Applicant Topoco Sales was initially rejected registration by the examining attorney because he found that the dominant portion of registrant’s JELLY CLIMAX MAXIMIZER mark was the term “climax” and, therefore, the two marks were confusingly similar. The fact that the terms “jelly” and “maximizer” were also in the mark was not enough distinguish the two because jelly is properly disclaimed as descriptive and maximizer serves as a modifier that enhances “climax.”
Continue reading "It Appears Weak Marks are Less Likely to be Afforded Protection, Even when Some Similarity" »
The computing industry is upset that Dell has applied for the trademark CLOUD COMPUTING. People cry the mark is generic, has been used in the industry for years, and should not be the sole property of Dell. Unfortunately, these cries are coming after the mark has successfully made it through the opposition period and appears headed for registration. Moreover, it is not entirely clear whether or not such arguments will ultimately be successful.
Continue reading "Dell’s CLOUD COMPUTING Trademark: Misappropriating a Common Term Used In the Industry or Brilliant, Proactive Brand Development?" »
If a Business’ Brand is its Greatest Asset... - Domain Name News, The Domain Industry News, ICANN News, Registry News, Domainer News, Domain
"A business’ brand is its greatest asset in driving sales. Not its IP. Not its sales team. Brand. Brand is what gives a customer trust that the product (and service behind it) is worth buying, even when another product is cheaper, easier, etc. Vendors need to invest heavily in their brands (through public relations, for example), and it’s the primary area that lawyers become supremely helpful, i.e., through trademark law. A brand should be earned and protected at all costs."
Intellectual Property Rights Act of 2008: What Does it Mean?
The Enforcement of Intellectual Property Rights Act of 2008 was introduced in the Senate last week. The law would increase penalties for counterfeiting, with damages as high as $2 million for “willful” trademark violations, empower federal prosecutors to bring civil suits against copyright infringers, provide for the seizure of property used to violate copyrights and trademarks. The law allows the President to appoint an Intellectual Property Enforcement Coordinator (or “copyright czar”), who would develop a “joint strategic plan” to harmonize the IP enforcement efforts of diverse federal agencies, including the Department of Justice, Patent Office, State Department, and Department of Homeland Security.
The Domains is correct. With phishing and trademark issues continuing to attract attention, increased enforcement and new laws seem inevitable. Technorati Tags: Intellectual Property Rights Act, trademark, IP, counterfeit
Trademark infringement rains on children's birthday parties -- baltimoresun.com In planning birthday parties for their children, parents are facing stumbling blocks that include trademark infringement.
For children's parties, many companies around the country provide
costumed characters popular with kids -- characters like Dora the
Explorer, Bob the Builder and Hannah Montana.
In recent years, corporations that own the rights to some of the more
popular characters, companies that include Marvel Entertainment Inc., Scholastic Inc.,
and HIT Entertainment, have sent cease-and-desist letters, threatened
lawsuits and in some cases received settlements from companies that
market unauthorized character impersonators.
The threats rattle the costume industry. Some companies hire lawyers to
advise them on how to stay out of trouble and remain in business.
Others are now commissioning costumes that only slightly resemble
characters owned by media companies. They have names like "Big Red
Tickle Monster," instead of Elmo, and "Explorer Girl with Backpack,"
rather than Dora.
Leslie Ann Hooker, a Fort Lauderdale
costume-company owner, thought she had found a way to run her business
without running into trouble. "I try to make my costumes look 40
percent different," she said early this month, adding that she didn't
explicitly offer trademarked characters: "I don't have SpongeBob. I
have SquishyGuy."
Continue reading "Trademark Infringement Threat Letters Spoil Children's Birthday Fun" »
Bidding on Competitor Trademarks is Bad Business : StraightUpSearch
Last week, American Airlines dropped its lawsuit against Google for allowing competitors to bid on trademark names via Google AdWords. The out-of-court settlement ends a nearly year-long battle between the airline and the search giant...
While ads served on competitor name searches did see an expected number of impressions, click-through rates were very low and conversions nonexistent. Disappointing results that didn't justify the click spend. And certainly didn't justify the time spent adding the competitor keywords to the paid search campaigns. The Moral of the Story: Be more efficient with your PPC account management. Don't waste your time and money bidding on competitor names, and give your legal team the rest of the year off. Technorati Tags: google, adwords, trademark, PPC
 As I was reading back through some old blog posts, I stumbled across this Vtalk Radio interview sponsored by my firm Traverse Legal, PLC of Alan Drewsen, the executive director of the International Trademark Association (INTA). As many of you who follow this blog know, we specialize in internet law. A significant portion of our practice deals specifically with domain name disputes.
Mr. Drewsen provides an extremely cogent and comprehensible view of what the trademark community believes about cybersquatting. Listen to the radio interview and read the transcript.
Continue reading "INTA Executive Director Alan Drewsen Talks Trademark Protection and Cybersquatting. " »
Donna Rosser at the Barefoot Photography Blog has an interesting post about her difficulties in enforcing her registered trademark rights on the Internet. Her problems are similar to the problems that many small business owners face when protecting their intellectual property rights on the web. She rightly recognizes the importance of documenting any infringing actions, as well as the importance of taking swift action to protect your rights.
Continue reading "Traverse Legal Trademark News Alerts for Monday, July 21, 2008" »
The Chicago Tribune has posted a great introductory article on the benefits of trademark registration. The article describes the availability search, the registration process, and even the geographic limitation of common law rights. Most importantly, it recognizes that trademark registration isn't an easy or risk free process:
Continue reading "Chicago Tribune Says That Trademark Registration Is Important to Protect Brand Identity" »
The Madrid Protocol, also known as the Madrid System for the International Registration of Marks, is an international trademark registration system administered by the World Intellectual Property Organization (WIPO) that allows a mark holder to register a trademark in multiple jurisdictions at the same time. Filing a trademark under the Madrid Protocol can be difficult, as it differs significantly from a normal trademark filing with the United States Patent and Trademark Office.
Continue reading "Filing Under the Madrid Protocol Protects Trademark Rights Internationally" »
Failing to assert your trademark rights within a timely fashion will prejudice you down the road. The doctrine of laches, an affirmative defense in trademark proceedings, is used by courts or the TTAB to refuse to hear a claim or recognize a right that was not asserted within a reasonable amount of time. The Trademark Trial and Appeal Board has used the doctrine of laches to refuse a petition for cancellation that was filed 62 months after a registration was issued.
Continue reading "Failing To Assert Trademark Rights in Timely Fashion Will Give Opponent Doctrine of Laches Affirmative Defense" »
Apple has filed suit against Psystar, maker of the Mac OS X compatible Open Computer, for copyright infringement, induced copyright infringement, trademark infringement, breach of contract for a violation of its shrink-wrap End User License Agreement (EULA), trade dress infringement, and unfair competition The suit, which was filed on July 3 in the Northern District of California, stems from Psystar’s sale of computers that contain pre-installed versions of Apple’s Mac OS X Leopard operating system.
Continue reading "Apple Sues Computer Maker Psystar for Copyright Infringement, Trademark Infringement, and Violation of End User License Agreement (EULA)" »
Even the most trivial of deviations between one’s trademark application and the trademark actually used in commerce will doom an application with the US Patent and Trademark Office. As Yale Sportswear recently found, trademark examining attorneys will find that a specimen is not a “substantially exact representation” of the mark as used under Trademark Rule 2.51(a) if an applicant excludes even the most seemingly miniscule part of a mark when filing a statement of use.
Continue reading "Trademark Trial and Appeal Board Denies Registration for Failure to File Perfect Statement of Use" »
The Washington Redskins have won a ruling on their REDSKINS trademark, foreclosing a cancellation suit because of the statute of limitations. This ruling is the result of a suit by seven Native Americans who attempted to cancel the REDSKINS mark because is offensive.
Continue reading "Traverse Legal Trademark News Alerts for Monday, July 14, 2008" »
One of the worst things that can happen to a creative person is finding out that someone else is infringing on your trademark or copyright. After spending countless hours developing a work or branding your business, finding that another has pirated your intellectual property and good will can be disheartening. Preventing trademark and copyright infringement on eBay is one of the more difficult problems an intellectual property holder can face because infringers will often create new accounts and relist or reuse infringing materials. Thankfully, eBay has finally taken steps in the right direction to stop infringement with its new Verified Rights Owner (VeRO) program. The VeRO program is the first step in protecting your intellectual property rights on eBay.
Continue reading "eBay's VeRO Program: The First Step To Protecting Your Trademark and Copyright Rights on eBay" »
General Cigar Prevails in Trademark Infringement and Counterfeiting
Suit Relating to "COHIBA Caribbean's Finest" Cigars and Rum - MarketWatch
RICHMOND, Va., Jul 10, 2008 (BUSINESS WIRE) -- General Cigar Co. Inc. announced today that the United States District Court for the District of Nevada has ruled in its favor, granting its motion for summary judgment, awarding damages and permanently prohibiting the import, marketing, distribution and sale of infringing "COHIBA Caribbean's Finest" cigars and rum.
General Cigar prevailed on its claims which held the defendants liable for trademark infringement, dilution, counterfeiting, unlawful importation, unfair competition and cybersquatting. As a result, the court awarded General Cigar a permanent injunction, plus compensatory and treble damages. This resolves a lawsuit filed in 2006 but does not resolve General Cigar's enforcement activities against counterfeit good. General Cigar continues to retain a special task force consisting of trademark attorneys to assist it in its trademark enforcement efforts. Technorati Tags: General Cigar, trademark infringement, dilution, counterfeiting, unlawful importation, unfair competition, cybersquatting.
Trademark Protection: The Necessary Evil of Analytics : StraightUpSearch At the start of the 3rd quarter, marketing plans and budgets will be made, debated and negotiated for 2009. Marketers, executives and business owners need to consider not only how marketing and advertising strategies from the past have performed but also what important elements are missing from your plan. One often overlooked item in online marketing plans is trademark monitoring services, as a part of your comprehensive analytics package.
Trademark monitoring is only part of the effort required to protect your brands in cyberspace. Further, monitoring uses of your trademark protected words in keyword advertising represents a small niche of potential infringing uses.
You need a qualified trademark attorney to analyze the results of the trademark monitoring effort. Only a qualified trademark attorney can offer competent legal advice about what uses of your trademark protected words may qualify of trademark infringement, send a trademark cease and desist letter where applicable and guide your company through the myriad of issues related to potential on-line trademark infringement. Contact a trademark attorney to learn more about on-line brand protection and trademark monitoring services.
When registering a trademark with the United States Patent and Trademark Office (USPTO) one must submit a specimen, that is, something showing the use of the mark in commerce. But what qualifies as a specimen? According to the USPTO, a specimen is “an actual example of how you are using the mark in commerce on or in connection with the identified goods and/or services.” The USPTO requires a “proper specimen,” which “shows the mark on the actual goods or packaging for the goods.” These proper specimens for goods include “a tag or label for the goods; a container for the goods; a display associated with the goods; or a photograph of the goods that shows use of the mark on the goods.”
Continue reading "What is a Trademark Specimen? You'll need to Know What a Trademark Specimen Is and What the USPTO Requires If You Want to Register Your Trademark" »
The United States Patent and Trademark Office, like most government offices, survives on the accuracy of its data. Trademark applications and other submissions to the USPTO are expected to be accurate. A simple mistake in the listing of goods and services can be seen as perpetrating a fraud on the USPTO and will completely invalidate an application, even where the other listed goods and services were not affected by the mistake. This makes trademark auditing an extremely important part of any trademark holder's intellectual property protection strategy. Trademark auditing is an evaluation of a company or individual's marks to ensure that those marks remain accurately registered in association with the correct classes of goods or services. Failing to accurately register or monitor your marks can result in losing one of your most valuable assets: the goodwill associated with your trademark.
Continue reading "Trademark Auditing is More Important than Ever: Trademark Registration Requires a Lot More than Simply Filing with the USPTO" »
When the public speaks colloquially about trademark law it often refers to all types of words or marks as “trademarks.” But not all words qualify as trademarks. A trade name, the name under which a business operates, can often be registered as a trademark, but the use of a trade name alone is not enough to protect others from appropriating that mark. Businesses often believe that they are protected from the misappropriation of their trade name just by virtue of its use, but the Trademark Trial and Appeal Board has held differently.
Continue reading "Trade Name vs. Trademark: TTAB Clarifies the Difference Between Words Used to Describe Products and Services and Those Indicating a Business Name" »
Can competitors use your trademark as a keyword or metatag? Is there a difference between purchasing a trademark as a keyword and simply using the trademark of a competitor in a metatag to divert searchers to your site? These are the million dollar questions in internet law these days, and trademark holders are looking for answers. A recent filing by Hearts on Fire contends that purchasing keywords for the purposes of directing consumers to a competitor's website is trademark infringement.
Continue reading "Use of Trademarks Within Keywords and Metatags: An Emerging Area of the Law" »
What types of creative words can be registered as trademarks? Are double entrendes merely descriptive, or are they entitled to protection under trademark law? The Trademark Trial and Appeal Board (TTAB) felt the latter when they recently ruled that double entrendes are not merely descriptive and are entitled to trademark protection. In In re Tea and Sympathy, Inc., the TTAB held that “The Farmacy,” when used in connection with medical marijuana in International Class 035 (retail sales) and 044 (on-site health services), is more than just a misspelling of “the farm” and “the pharmacy.” It suggests a wholly different commercial impression, and is thus a registrable trademark.
Continue reading "Double Entrendes Entitled to Trademark Protection" »
Many businesses and individuals do not know that trademark rights arise not only from registration with the United States Patent and Trademark Office, but from simply use of a trademark in connection with goods or services. These rights, or common law trademark rights as they are known to lawyers, come from the continuous prior use of a mark in commerce. But common law trademark rights are not preferred, as they extend only to the places where a trademark has been used in commerce. Additionally, they do not offer the benefits of federal registration with the United States Patent and Trademark Office, such as the ability to recover profits, statutory damages, attorneys fees, treble (triple) damages for willful infringement, national priority, and the right to use the ® to give notice of rights in a mark.
Continue reading "What Are Common Law Trademark Rights? You Don't Need Have a Trademark Registered with the USPTO in Order to Protect Your Common Law Trademark Rights in Commerce" »
An experienced trademark attorney can help you avoid the mistakes of those that have come before you. Experienced trademark attorneys understand how to help businesses abide by the terms of settlement agreements, and what actions are likely to be found infringing in the aftermath of a negotiated settlement in a trademark dispute. Failing to understand the mistakes of the past can be a costly misstep in trademark law, and in the case of Payless Shoes it proved to be a $305 million disaster.
Continue reading "Three Stripes? You're Out! Adidas Awarded $305 mil against Payless for Willful Infringement" »
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