Trademark Attorney, Lawyer: Trademark Registration & Trademark Infringement

New gTLDs Registrations Cause Eye-Brow Raising Results!

Since the onset of the new gTLDs being offered, it is being reported that the Trademark Clearinghouse (TMCH) program may be causing a negative effect on the registrations of domains.  A report released by ICANN on February 2, 2015 has reported that of the new 297 TLDs initiated in the Claims period, that there were 25,221,479 Claim Notices generated for the 4.2 million domains registered, which resulted in only 96,471 completed domain registrations.  That is a 6:1 ratio, a significant change from the 4:3 previously reported registration ratio.  These numbers also show that there has been more than a 90% decreased in completed registrations since the start of the TMCH program.  Those in the industry are stating that the TMCH program is having a very negative ‘chilling effect’ towards those that try to register a domain under one of the new gTLDs.  

The IP Audit - Newsletter Update

The IP Audit

We are now a month or so into 2015, and as we normally do, we are completing several Intellectual Property Audits on behalf of clients, big and small.  As we do so, we always wonder why all businesses do not have an IP Audit completed, especially when embarking on a new year with new opportunities.  It is the perfect time to take inventory of your trademarks, copyrights, patents, domain names and trade secrets.  It also gives us the opportunity to educate you about what you have and what you should have; what you are doing and what you should be doing.

If you are wondering if an IP Audit even applies to you, the answer is a resounding yes.  How can you leverage and monetize what you have created when you do not even know what you truly have?  How can you protect against infringers and cybersquatters, and even unlawful competitors, when you aren't monitoring what is rightfully yours?  Do you really want to wait until a prospective purchaser of your business is performing due diligence to learn that you have failed to take the necessary steps to acquire, maintain and enforce your IP, and possibly lose the deal?

Let Traverse Legal's experienced IP attorneys and leveraged software tools provide you with an efficient and cost-effective IP Audit.  Once complete, you can rest easy knowing that all of your IP is:

1. Identified;
2. Applied for and/or registered in the United States and/or internationally;
3. Docketed for maintenance and renewal;
4. Monitored to identify infringers; and
5. Treated like the valuable asset it is, with proper licensing or other treatment.

Give us a call today at 866-936-7447 or email us directly to discuss your IP Audit. 

 

What is the Trademark Clearinghouse?

Welcome to Internet Law Radio where we discuss the hottest topics in internet law.  If you are facing an internet law issue, cyber-law complaint, website or ecommerce issue, we have an internet lawyer ready to help. 

GTLD Trademark Clearinghouse

Matt:  Hi, It’s Matt Plessner, and welcome back to Internet Law Radio.  Today, we’re going to be talking about some recent updates in Internet Law, specifically, regarding the gTLD Trademark Clearinghouse.  What is that exactly?  Well, we are going to talk about that, and, of course, also what’s going on with that as we speak once again with Attorney at Law from Traverse City, Enrico Schaefer.  Enrico, nice to see you.

Enrico:  Great to be here, Matt.

Matt:  Well, great to have you here.  So, for those people who don’t know, Enrico, what is the Trademark Clearinghouse?

Trademark Clearinghouse Information from Service Providers Deloitte and IBM – YouTube Video

Representatives from Trademark Verification Service Provider Deloitte and Sunrise/Claims Service Provider IBM discuss the Trademark Clearinghouse.

My name is Jan Corstens and I am with Deloitte. I am overall responsible for the Trademark Clearinghouse as has been set up by ICANN. The Trademark Clearinghouse is ICANN’s cornerstone of their right protections mechanisms for the new gTLD program. It is going to be really central point where trademark owners will be able to add their protection for the new gTLDs program. What does that mean? Well, in principle it’s going to be a centralized database with validated trademarks.

TTAB Rulings Effect on Federal Trademark Litigation

The determination by the Trademark Trial and Appeal Board, or TTAB, as to whether or not a mark creates a likelihood of confusion with another mark has historically not been binding upon a federal court in any subsequent trademark litigation. However, the United States Supreme Court has been asked to decide whether federal courts are bound by the findings of the TTAB related to the likelihood of confusion matters. This petition is the result of federal district court and Eighth Circuit Court of Appeals rulings that were contrary to what the TTAB had found. It will be interesting to see whether or not the Supreme Court entertains the issue in changes the binding of that, or lack thereof, in TTAB likelihood of confusion matters.

Trademark attorneys know that when there is a potential for likelihood of consumer confusion, the matter can be addressed via an opposition proceeding or a cancelation proceeding before the TTAB. Unfortunately, trademark lawyers have to advise their clients that the TTAB decision may lead to federal trademark litigation, and the result of that federal trademark litigation may be different from what the TTAB had found. Therefore, it is not out of the ordinary for trademark owners, or those subject to a trademark dispute, to choose to go directly to a federal court. Should the United States Supreme Court change precedent, the TTAB may become a more attractive option, especially since any TTAB ruling would have binding effect on federal court.

The TTAB is sometimes seen as a better option since it typically can cost less and lead to a faster resolution. That said, that is not always the case and a tradmark attorney should be consulted in order to identify whether a TTAB or federal trademark litigation is the best course of action. Among the considerations is obviously the fact that the TTAB does not afford damages but instead simply makes the determination as to whether or not a mark is registered. As such, a plaintiff looking to recover statutory damages, attorney's fees, or other injunctiive relief may look directly to federal court. Regardless, this trademark development is something worth keeping an eye on, both for trademark owners as well as trademark attorneys. 

Related articles

Can a TTAB Decision Preclude Subsequent Trademark Litigation in Federal Court?

The Requirement Of Use As A Mark For Trademark Infringement Claims

The 6th Circuit has required that a defendant make use of a trademark in a trademark sense in order to be subject to liability for trademark infringement. However, the 2nd Circuit recently held that a plaintiff does not have to allege that the defendant used the plaintiff's mark in a trademark sense in order to state a claim for trademark infringement. Given the diverging views of these two circuits, and until a Supreme Court decision resolves such issues, trademark owners would be well served consulting with trademark attorneys prior to proceeding with an action for trademark infringement where the trademark use is unclear. 

Zynga's Trademark Infringement Lawsuit Concerning "With Friends"

The mobile application developer of "Words With Friends", namely Zynga, has sued the developer and author of another mobile application known as "Bang With Friends". The lawsuit, which involves trademark claims, will require that Zynga is able to effectively establish trademark rights to its mark "Words With Friends", which is a federally registered trademark with the USPTO. However, the larger issue becomes whether or not "Bang With Friends", or any other application that utilizes the "With Friends" portion of the mark, creates the likelihood of consumer confusion. At a high level, the mobile application services are arguably similar, but as you drill down, the question becomes whether or not consumers would view these services to be emanating from the same source. Ultimately, if Zynga is able to establish its presumptive trademark rights in "Words With Friends", there is a very real chance that "Bang With Friends" may constitute trademark infringement. This will be a case worth keeping an eye on, and trademark attorneys may have differing opinions as it relates to the merits of this case. Whether or not Zynga faces any real risk with its "Words With Friends" , or other "With Friends" marks, being deemed unprotectable as a trademark remains to be seen.

 

No Trademark Protection for Generic Marks

A generic term is the weakest type of mark and can not, under any circumstances, become a protectable trademark.  Likewise, a generic mark is not entitled to trademark registration with the United States Patent and Trademark Office (USPTO).  If the public perceives the term primarily as the designation of the good itself, then the term is generic.  Put simply, if a mark is primarily associated with a type of product rather than with the producer, it is generic.

Google Trademark Under Attack. Lawsuit filed claiming “Google” as Generic.

what a lot of folks understand is that we use common terms to refer to things, actions verbs and nouns for objects, so things that were trademarked in the past; such as escalator, aspirin, things like that. Those are objects, obviously. They became commonly used by the public and so became actually the word to use to refer to that object. So, here we have a situation where my client, our clients, I should say, are looking at the word Google and have recognized the fact or come to the realization that the public is using that term in a generic sense, really using it to refer to a search, to conduct a search, to search for something, whether it be on the Internet or elsewhere.

 

Play: Google Trademark Under Attack. Lawsuit filed claiming "Google" as Generic.
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With: Richard Wirtz,Tom Foster

Sponsored by: Traverse Trademark Law

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Trademark a Name: Intent to Use Trademark Application

The recent death of Trayvon Martin once again highlights the importance of timely filing an intent to use trademark application for any name or slogan you wish to secure exclusive rights in and enforce against others.  Intent to use trademark applications for I AM TRAYVON and JUSTICE FOR TRAYVON were filed by family for use in connection with DVD related goods.  Feelings or opinions related to the underlying incident aside, there is a trademark lesson here.