In a decision that is not citable, the TTAB, reversed a final refusal by the examining attorney, and found that INTELICASH for consumer debit card services, and INTELECASH for electronic tracking and accounting for businesses of prepayed debit card transactions were not confusingly similar. While the Board found that the marks were visually and aurally identical, or nearly so, it determined that the consumers and channels of trade in which each company operated were distinct. Accordingly, and notwithstanding the similarities in the marks, the Board reversed the decision of the examining attorney.

While on its face the case does not reveal any new or interesting law, it does remind the trademark world that many factors are considered when determining whether marks are confusingly similar. In this case, the marks were practically identical, but the board turned to other factors to conclude that co-existence without confusion is possible.

Practice Tip: The proceeding is not citable, but it is worth reviewing for the citable trademark law outlined by the Board.

George Gleeson, taking a page from the case of Three Boys Music v Bolton (9th Cir, 2000), claimed that the statute of limitations (3 years) must be tolled for his case as he was unaware of his right to pursue his copyright claim. Gleeson claims to have been the author of the popular dance step ‘moonwalk’ and that Michael Jackson and Quincy Jones stole those specific choreography steps from him..

George Gleeson filed hand written, ‘pro per’ pleading in August of 2005; and documented that he contacted federal officials in 1984 and 1985 about the copyright infringement allegations.

The federal court in Fargo, North Dakota issued summary judgement on behalf of defendants holding the $75 million dollar claim to be time barred:

“Gleeson should have commenced a civil action within three years of when he first contacted the federal officials and became aware of his right to pursue the claim. ”

George Gleeson v. Michael Jackson and Quincy Jones. No. 1:05-cv-088, D. N.D.; 2006 U.S. Dist Lexis 8125.

The Robert Lappin Charitable Foundation retained Gil Baker to produce a documentary dedicated to celebrating the contributions and accomplishments of notable Jews entitled, “Great Jewish Achievers” (JGA). The deal provided that Lappin was to provide specific suggestions, be responsible for all “final decisions” as the movie was Lappins’ “brain child”. Lappin paid $177,500; however Baker sued claiming that the payment was instead to have been funding an unrelated full length film “Bungalow Six”.

Baker sued claiming total ownership of the GJA film and damages of $500,000 both for copyright infringement and failure to fund the “Bungalow Six”. Baker claimed to own the movie as sole author.

The federal trial judge dismissed the action in Gil Baker v. The Robert L. Chappin Charitable Foundation No. 04-Civ-426, S.D. N.; 2006 U.S. Dist. LEXIS 7113 holding that plaintiff and defendant are co-authors and as such, Baker had no standing to sue defendant.

Specifically, the court held that defendant non profit was a copyright author ‘even assuming that Chappin was not present in the editing room when the film was edited, as Baker alleges, the law does not require that joint authors work together in the same place or contribute to every aspect of the project.” That the nonprofit contributed material to the movie that were independent copyrightable contributions which were more than ‘de minimis’ and that were intended to form a ‘unitary whole’ with Baker’s contribution made the work a jointly authored one.

In a decision that is not citable, the TTAB upheld the examining attorney’s refusal to register Midwest Bus Company’s mark BYK-RAK for vehicle bicycle racks, on the grounds that the term was generic.

Although the applicant argued that the term was not merely a misspelling, but rather a “creative and distinguishing makeup of words”, the Board found the argument so much back-peddling. The Board first noted that a term is generic if it identifies the class of goods or services to which it applies. In applying the test for genericness, namely, whether the relevant public sees the term as defining a class of goods, the Board determined that consumers would identify the term BYK-RAK to mean that class of goods that holds bicycles to cars. Accordingly, the mark, despite its creative spelling, was generic.

Longstanding case law is clear that a slight misspelling of a word doesn’t turn an otherwise descriptive or generic term into a protectible mark. For a detailed discussion of the issues related to generic terms and misspellings See, In re Hubbard Milling Company 6 USPQ 2d 1239 (TTAB 1987), in which the board held that MINERAL LYX was generic for “mineral licks” for livestock.

Although various parodies and unauthorized uses of the Sesame Street characters have plagued Sesame Workshop over the years (including the recent Bert is Evil site), a Chicago mall store has taken the cake (or cookie, if you will), and is selling t-shirts that show the muppet characters in a rather unsettling manner.

One t-shirt shows Bert downing what appears to be a 40 ounce bottle of malt liquor inside a paper bag, with his pal Ernie brandishing a gun. Still another depicts Big Bird, complete with head-rag, and accompanied by the usual Sesame Street suspect in various hoodlum attire, near the phrase DONT MESSWITHME ST. In addition to the muppet characters, there were shirts using the Coco-Puff’s logo from General Mills (“filled with the good S#%*”), and a Kellogg’s shirt featuring Tony the Tiger over the phrase “Totally Frosted.” While the store originally hid behind the parody defense, lawyers from all companies (notified by an outraged school teacher in the area) made quick work of them (and the shirts).

Practice Pointer: While there is a split in the circuits with regard to how the parody defense should be applied in cases of trademark infringement, courts generally agree that parody is not an absolute defense to trademark infringement and is generally still subject to a confusion analysis. In copyright, it is generally accepted that the parody must — at least in part — comment upon or make fun of that from which it was taken in the first place.

Go Pro Ltd, which makes embroidered clothing for promotional purposes, sued River Graphics, Inc., for trademark infringement for its use of the mark HERE FISHY FISHY on t-shirts for a fly fishing store. Go Pro had been embroidering the phrase on t-shirts since 1997. River Graphics did not use the phrase until 1998, when a fly-fishing store requested the design of a new t-shirt. River Graphics did not claim exclusive rights to the phrase HERE FISHY FISHY and in fact, claimed that Go Pro was casting too wide a net over its rights, noting that the phrase was not trademark use because it was not a source indicator, but instead simply a decorative use.

Notwithstanding Go Pro’s evidence that third parties had come to associate the term with Go Pro, the Judge wasn’t buying that fish story and found that Go Pro’s use was, in fact, merely decorative.

Practice Pointer: As a general rule, a company’s use of a catch-phrase on a t-shirt is likely to be considered merely decorative.

In 1982, the book “Holy Blood, Holy Grail” (HBHG) advanced a centuries old story that Mary and Jesus were married and that their blood line both survives into the present and has a guardian cult. The book, HBHG, was headed into the usual destination: obscurity, when Dan Brown’s “The Da Vinci Code” was published in 2003. In the year before Brown’s book was published, 2002, the total number of copies of HBHB sold in the UK reached 357.

After The Da Vinci Code published, sales of HBHG went up over one thousand times (1,000+). Even with that spike in sales, HBHG did not generate the 77 million dollars in royalties that The Da Vinci Code generated for Brown (that’s just the book sales, not including the movie deal)

Both books are published by the same house, Harper Collins.

The HBHG authors sued Brown for copyright infringement. Brown not only included parts of the centuries old story in The Da Vinci Code, but also cited and gave credit to HBHG.

Last week, the HBHG plaintiffs got a double loss. First the court ruled against them stating that the architecture that Brown took was “not crucial or important text in the creation of “The Da Vinci Code” framework. Then, following the UK tradition of loser pays both parties legal fees, the HBHG plaintiffs will foot 85% of the legal bills of both Brown and Harper which are reported to exceed 2.5 million dollars.

The downside of this case for some of us is Dan Brown’s statement that he can now get back to writing more books.

Flea World, Inc., one of the largest flea market hosts in the country, was found liable for both contributory and vicarious copyright infringement last month by a New Jersey district court. The case, a rehash of the old flea market cases of the 90s, was brought by Arista Records, Sony Music, and a number of other recording industry organizations. The plaintiffs sued Flea World for allowing vendors to sell pirated copies of music CDs and videos, even though it knew, or should have known, that these vendors were marketing illegal copies of plaintiffs’ products.

Both plaintiffs and defendants used as evidence the rules created by the defendant for its vendors, pointing to the fact that it a) prohibited counterfeit sales, b) regularly policed and reviewed merchandise, and c) often removed vendors from the flea market for violating those rules, at least in some areas. The court found that the evidence put forth at trial showed that defendants exercised substantial control over each of the vendors in question and also provided the vendors with amenities such as free parking, advertising, tables, maintenance, and security. Given that the defendants maintained a well-controlled environment, should have known that the piracy was taking place (and did, at least selectively), and received a substantial financial benefit from these pirated materials, liability was found.

In addition to its copyright troubles, Flea World may also have some trademark challenges ahead, since a number of organizations claim trademark rights in the term FLEAWORLD. Save a little for your next, battle guys.

The recent case of Van Well Nursery, Inc. v. Mony Life Ins. Co, VC-04-0425 LRS (ED Wash,. March 16, 2006) makes clear that that IP holders may well only get one bite of the . . .

In the case, Plaintiff apple grower owned two trademark registrations (and associated patents) for the marks SMOOTHEE and SCARLET SPUR, both for apples. The Plaintiff asserted, inter alia, that Defendant used the marks SCARLET SPUR and SMOOTHEE in marketing its own apples, which were of the same variety, but which were not Plaintiff’s apples. Defendant did not deny using the marks, but argued that the terms “Scarlet Spur” and “Smoothee” were varietal designations and accordingly, could not be given trademark protection. Essentially, defendant argued that the marks — despite the federal registrations — were generic for the types of apples they identified.

In applying the “what are you” test, the district court found that while the scientific name for the two types of apples was known, the terms SCARLET SPUR and SMOOTHEE were widely used in the apple industry to identify the fruits. The Court did not find pursuasive the Plaintiff’s evidence that it always used the mark with the appropriate ® marking, and that its intent was never to have these names used in conjunction with all uses of the patented apple varietal, but rather its own brand of the patented varietal. Instead, the court correctly found that the prevailing industry use of the mark was controlling and deemed the mark generic.

Practice Pointer: Clients should be advised when seeking patent protection to identify the patent under a differnt name than the brand name under which it proposes to separately market the product. Such a division makes it easier to separate the two property rights appropriately, and insures that the trademark rights survive the patent rights. The “What Are You” test is commonly used to determine whether a mark has become generic. This test is fully outlined in Filipino Yellow Pages, Inc. v. Asian Publications, Inc., 198 F.3d 1385 (9th Cir. 1999).

In a decision that is not citable, the Trademark Trial and Appeal Board (“TTAB”), held that COOL CAT PRODUCTS for pet collars and COOL CAT WHEATGRASS JUICE for a pet supplement are not confusingly similar, despite the fact that both products are marketed to pets.

The TTAB established that the opposer was the senior user of the mark COOL CAT, as it maintained, but found, using the duPont factors, that the products were marketed in different channels (the wheatgrass juice was found in health food stores), the nature of the goods was distinct, and the manner in which the products were marketed was distinct.

While the decision is not citable, the case can be valuable to practitioners for the TTAB decisions cited therein, particularly in cases where the marks are visually identical.

State Attorneys General throughout the country are seeing an increase in the number of consumers getting bamboozled out of thousands from a new scheme that is a remake on an old sweepstakes scam: the wire transfer.

The old scam works like this: you receive an email from a “National Sweepstakes” representative, typically in Canada, who informs you that you’ve won a million dollar lottery. All that’s needed to transfer the money to your account is a wire transfer of a few hundred dollars for “handling.” The wire transfer is a favorite of con artists because once the cash leaves the mark’s account, it’s often impossible to trace.

The new scam still involves a wire transfer, but instead of an email from a representative of a country showering you with sweepstakes winnings, an exiled royal family member begs for your help in reuniting her with her money. In exchange for accepting her funds into your U.S. account, she will split it with you. She assures you that a small fee will be charged from your account, but only if you provide a confirmation code. The code is bogus, and so is the royal family member. But the get-rich-quick scheme is enticing enough that many consumers are forking over their cash without asking questions (like why it is that the princess is writing to you).

The same rules apply to sweepstakes and money schemes that always have: don’t accept candy from strangers.

On April 6, 2006, the FTC entered judgement against OptIn Global, which advertised, inter alia, home mortgages via e-mail, in violation of the Federal CAN-SPAM Act. Under the Act, companies may not send e-mails that are primarily advertisements unless the e-mail contains an opt-out provision, and truthfully informs the e-mail recipient who is sending the communication and for what purpose.

The judgment calls for OptIn to return the roughly half million in revenue that it made running the advertisements, and adds a penalty of $2.4 million, effectively gutting the company. Finally, it imposes on the company and its affiliated companies (of which there are at least 12 DBAs) specific duties should it advertise in the future, that go beyond the provisions of CAN-SPAM, making it so they Can’t Spam any longer.

Practice Pointer: The Federal CAN-SPAM Act lays out specific guidelines for commercial advertising that must be adhered to in sending e-mail communications that are primarily commercial in nature. Most notably, those guidelines state that the email must:

The Internet Optimization Bureau, an official sounding organization bearing a government-like seal, has been fowarding invoices to unsuspecting domain name owners, directing them to pay upwards of $300.00 to maintain a service these holders never bought in the first place.

The scam seeks to target people who fear that their domain name will be canceled if they don’t renew. The company has used several unfair business practices, including using a government style seal, not properly disclosing that what they are sending is an advertisement, referring to the ad as an “invoice,” and directing it to accounts payable. According to a spokesperson at the FTC, these phony invoices scam great numbers of consumers. This law firm was recently sent 3 separate “invoices” to pay for domain name maintenance that was never purchased in the first place. To download a copy of the invoice, please click here

Under federal and state law, there are specific provisions that address and proscribe using, distributing, or selling a written communication that simulates or is represented falsely to be a document authorized, issued, or approved by a court, an official, a governmental agency, or any other governmental authority, or that creates a false impression about the communication’s source, authorization, or approval. This document has been forwarded to the state attorney general and to the FTC for possible prosecution.

Interestingly, soon after receiving the invoice, this firm received a second communication, rescinding the “invoice,” most likely because it realized it was trying to scam a law firm. To download a copy of this correspondence, click here.

Practice Pointer: Warn clients that they may receive such phony communications, either in the form of an Internet Renewal/Domain Name Renewal, or in the form of a Trademark Maintenance Service. Our policy is to have clienst forward any and all communications requesting money for trademark work or internet work directly to the firm for review. In 100% of the cases, they have been money scams.

Nautilus Group, Inc., which makes the BOWFLEX exercise machine, has just been ordered to pay damages in the millions to plaintiff Icon Health and Fitness.

Judge Tena Campbell upheld the jury’s award ($375,000 for trademark infringement and $7.5 million for false advertising), despite both parties’ motions to adjust the award, finding that the amounts were “supported by the record.”

Icon originally sued Nautilus in 2005 for using the Icon trademark SOFT STRIDER on Nautilus’ exercise machines, and for falsely advertising (in 650 documented instances) that its “power rod” feature was a patented feature. Nautilus plans to appeal the ruling.

Practice Pointer: A quick review of the U.S. Patent and Trademark Office database would have revealed a valid trademark registration for the mark SOFT STRIDER for treadmills. While treadmills and universal-style fitness machines may not be identical, they are sufficiently close to cause confusion.

In a citable decision from the Trademark Trial and Appeal Board at the U.S. Patent and Trademark Office (“PTO”), the Board held inter alia, that (1) an opposer may not maintain a claim of fraud against an applicant if the opposer does not actually allege fraud in its opposition; and (2) an applicant does not automatically commit fraud if it does not use all the goods listed in the application.

In the opposition, the Hualapai Tribe (“Opposer”) sought to remove a mark from consideration at the PTO on the grounds that the applicant (Grand Canyon West Ranch) did not use the mark on all the services listed, as of the filing date of the application. The Opposer, however, asserted that it was not seeking summary judgment based upon fraud. The Board, therefore, dismissed this claim in relevant part.

In looking at whether the applicant’s application for the mark was void for non-use reasons, the Board outlined the distinctions it sees between fraud and simple non-use. In short, the Board stated that “a defendant commits fraud by knowingly making false statements as to a material fact in conjunction with a trademark application or registration”[.] and showing a “complete failure to make use of the mark before filing the application on any of its identified services.” In the instant case, applicant was using the mark for most of the services. Accordingly, the Board accepted the applicant’s amended identification of goods as the appropriate remedy for the infraction. The case is resumed for other reasons.

Practioner query: On the one hand, it seems a reasonable enough remedy to require an applicant to amend its goods based upon actual use, or, in the alternative, amend its application to a 1(b) (intent-to-use) application and file an appropriate statement of use once all the goods in question are being used. On the other hand, if an applicant’s liability for embellishing its goods and services is a hand-slap and a requirement that it amend its goods only if it gets caught, we question the motivation for client to be honest about their actual use.

Download decision Here