Traverse Legal Trademark News Alerts for Monday, July 21, 2008

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.

Traverse Legal Trademark News Alerts for Monday, July 14, 2008

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.

General Cigar prevails on claims of trademark infringement, dilution, counterfeiting, unlawful importation, unfair competition and cybersquatting.

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 Monitoring Identifies Third Party Use: A Qualified Trademark Attorney Will Help You Understand How To Protect Your Marks In Cyberspace

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.

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

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.”

Three Stripes? You're Out! Adidas Awarded $305 mil against Payless for Willful Infringement

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. 

Trademark Rights – Registration Alone Isn’t Enough: Filing a Statement of Use for a 1(b) Application

Protecting your trademarks through the United States Patent and Trademark Office is, of course, important, but application alone is not enough.  It is more important to see a trademark all the way through to the end of the registration process, especially when it is filed under a 1B “intent to use” application.  1B applications allow those that have yet to use their goods and services in interstate commerce to file for trademark protection.  A Statement of Use must be filed within six months after the application's Notice of Allowance is issued to show that the goods or services have been, in fact, used in commerce.  This process allows a trademark applicant to protect its mark before using it in commerce, which can be an effective strategy for protecting a mark from theft by another party.  But failing to file a timely Statement of Use, or an extension of time to file, can result in the loss of your trademark rights.

The Lifecycle of a Trademark Opposition: Understanding the Trademark Opposition Process at the Trademark Trial and Appeal Board (TTAB)

What do you do when you, or preferably your trademark-monitoring attorney, find a application in the United States’ Patent and Trademark Office’s database that is likely to confuse consumers because it is similar to your mark?  One possible solution is to file an opposition.  Every trademark must go through a series of stages on its way to registration, hopefully on the Principal Register.  One of these stages, titled publication for opposition, allows a party to oppose the registration of a trademark that it believes is likely to cause confusion with its mark.

First Circuit Holds "Duck Tours" is a Generic Trademark

Thinking about registering a trademark?  Make sure you have a competent attorney doing your pre-registration trademark search and think about selecting a mark that is not widely used.  Using a widely used mark will likely welcome other users of the same mark.   Showing that generic trademarks can arise from abbreviations, the First Circuit Court of Appeals recently held that the phrase “duck tours,” when used in a composite mark in relation to boat tours, is generic and causes no likelihood of confusion.  This decision reversed the district court's holding that the “Super Duck” trademark, in connection with boat tours in the Boston area, created a likelihood of confusion with the plaintiff's “Boston Duck” mark. 

Chateau Grand Traverse Sues Grand Traverse Distillery Over Name

The Traverse City Business News is reporting that Chateau Grand Traverse, a Michigan winery, has filed a federal lawsuit against vodka producer Grand Traverse Distillery alleging trademark infringement over the distillery's use of the "Grand Traverse" name.  The dispute arises from the winery's opposition to the Distillery's Trademark filing with the United States Patent and Trademark Office (USPTO) for registration of the mark "Grand Traverse Distillery" on the principal registrar. 

The winery claims trademark rights in the name since it has used the mark "Chateau Grand Traverse" since 1977 and had recently filed and was granted trademark registration in late 2007. Grand Traverse Distillery filed for its trademark protection July 2005.  However, trademark rights date back to the date of first use in commerce. 

This is an interesting lawsuit in that both companies deal in the manufacture and sale of alcohol beverages which Chateau Grand Traverse says has led to confusion among customers.

Read the full article below...

Trademark Law: "Initial Interest Confusion" Doctrine Applied

Technology & Marketing Law Blog: Adwords Ad Creates Initial Interest Confusion--Storus v. Aroa

Storus Corp. v. Aroa Marketing Inc., No. C-06-2454 (N.D. Cal. Feb. 15, 2008).

(Sorry for my delay blogging this one).

A federal district court has held that displaying a competitor's trademark in Adwords ad copy constitutes impermissible initial interest confusion, leading to a summary judgment win for the trademark owner. This is one of the first competitor-vs.-competitor search advertising cases where the plaintiff has won the trademark claims. This case also has an interesting and rare discussion about the trademark implications of a retailer’s internal search engine.

On the surface, this case looks problematic for the search
advertising industry. Any time a search advertising practice is deemed
infringing, it should promptly eliminate all similar ads from other
advertisers, taking a chunk of revenues out of search engine pockets.
Further, when advertisers are liable for trademark infringement, it
increases the risk that search engines will be contributorily liable
for those infringing ads.

... Aroa’s practices here (displaying a competitor’s trademark in the ad copy) are already restricted by all of the search engine trademark policies. Therefore, this ruling shouldn’t reduce much ad revenue for search engines.

Technorati Tags: trademark, trademarks, trade mark

Trademark Holders Beware: First In Time, First In Right Still Has Weight When It Comes to Domain Name Registrations

Owning a trademark, be it common law rights or a trademark registration, does not necessarily entitle a business or individual to the corresponding domain name.  A domain name registration of another's trademark or incorporating that trademark into a domain name does not always mean a trademark holder can successfully sue a domain name registrant for cybersquatting.  Domain name registration is still on a first come, first served basis.  A domain name registration that is first in time confers rights upon that domain name registrant if you are not a cybersquatter whereby a trademark holder can establish rights that predate the domain name registration. 

Top 5 Benefits of Trademark Registration

Traverse Legal Attorney Brian Hall provides an overview of the prerequisites needed to enforce trademark rights and obtain a valid trademark registration with the USPTO. Listen as he reviews the benefits of having a trademark registration, including nationwide priority, easy identification, deterrence, presumptions, and the availability of damages. Ultimately, Mr. Hall illustrates the return on investment for trademark registration while highlighting how trademark law can offer numerous benefits to registered trademark owners.