A recent ruling by the Trademark Trial and Appeal Board (“TTAB”) serves as a good reminder of the importance of ensuring proper and sufficient trademark use on the goods and services for which a registration is sought. Albeit a seemingly simple concept, it threatens to be the achilles heel for many trademark owners who find their registrations canceled, refused, and/or in jeopardy due to inadequate or improper trademark use.

Take for instance, the case of In re Foster’s Wine Estates Americas Company. Serial No. 77018496 (June 16, 2010) [not precedential]. In support of its application to register the mark CELLAR 360 for wine, the company submitted as a specimen of use its retail catalog (which depicted applicant’s wine throughout) with the mark CELLAR 360 prominently displayed on front cover.

Rejecting applicant’s argument that the specimen served as a display associated with the goods, the TTAB refused registration of the mark. It found that the specimen showed use of the mark CELLAR 360 as a service mark for retail store services but not for wine.

Relying on the fundamental tenets of trademark law regarding what constitutes a trademark, the TTAB explained, the relevant issue is not simply whether applicant produced wine but rather whether consumers would recognize the mark CELLAR 360 as a source indicator for applicant’s wine (a trademark must identify the source of the goods).

Virtually sealing its own fate and guaranteeing a refusal of the registration, applicant did not use the mark on its wine bottles but rather on its retail catalog. This, the TTAB held, was insufficient to support a registration for wine (as the mark did not serve as a source identifier for wine). Accordingly, the board upheld the refusal to register the mark, finding that the specimen did not show use of the applied-for mark as a trademark for the goods.

Practice Note: Prior to seeking a trademark registration, clients should be counseled to carefully evaluate and consider the branding strategy that will be used in connection with the desired products/services and to, where possible, involve legal counsel in the marketing decisions regarding the manner in which the trademark will be used. Here applicant clearly intended to produce wine and was desirous of obtaining a registration for wine; however, in not using the mark on its wine labels, it failed to implement a branding strategy that would assure registration for wine. Problems such as these can often be avoided with careful planning, oversight and foresight.

Just when he thought it was safe to go back in the water (or the boxing ring as the case may be), it appears that Mike Tyson’s legal troubles continue to fight on. The latest contender is Michael Wayne Landrum, a former boxer (turned paralegal according to his complaint) who probably wouldn’t last long in the ring with Mike Tyson but is suing the former champ for $115,000,000 for trademark infringement based on Tyson’s use of the name “Iron Mike”.

In round one of the recently filed complaint with the California Central District Court, Landrum, who is duking out his own legal representation, contends he owns trademark rights in the name “Iron Mike.” Although Landrum claims to have a federal trademark registration for the mark IRON MIKE, the court is likely to call foul as Landrum appears to have confused his California state trademark registration (which he does apparently own) with the national protection of federal registration (which he does not appear to own).

While Landrum does attach a 1996 letter from the California State Athletic Commission, which states his professional ring name was “Iron Mike Landrum,” and his California state registration (which claims a date of first use of November 1983), it remains to be seen whether such evidence will be enough to deliver TKO.

Stay tuned as the two contenders duke it out over several issues. Did Mike Tyson use the mark IRON MIKE to offer good/services or was it just a nickname bestowed upon him by his fans? Who used the mark first and in connection with what goods/services? Does Mike Tyson’s fame make confusion unlikely? Did Landrum wait to long to bring these claims? Are Landrum’s rights limited to California only?

If the author were of the betting type, the wager would certainly be placed in Tyson’s corner! Stay tuned for round two.

The song “Down Under” by the band “Men at Work” has been hugely popular since the early 1980s, even becoming the unofficial anthem of Australia (it was played during the closing ceremony of the Sydney Olympics). The whimsical lyrics affectionately celebrate Australian culture, “where women glow, and men plunder.”

The song also features a famous flute riff, which was at issue in this copyright infringement case decided under Australian law.

Larrikin Music, who acquired the rights to the traditional children’s song “Kookaburra Sits in the Old Gumtree” in the 1980s, sued the band “Men at Work”, claiming that the flute tune in “Down Under” infringed their work. “Kookaburra” was written in 1932 by an Australian teacher, Marion Sinclair, for a girl scout competition and became a favorite around campfires from New Zealand to Canada.

A few months ago, a Federal Court in Sydney agreed with plaintiffs that, under Australian law, the flute melody did in fact infringe the copyright in “Kookaburra”. However, when ruling on damages earlier this month, the Court rejected plaintiffs’ demand of 60% of royalties as “excessive, overreaching and unrealistic.” Instead, the court ordered defendants to pay a reduced 5% of royalties collected for “Down Under”, and only those royalties collected in Australia (not worldwide) since 2002; probably not the millions plaintiffs expected…

Interestingly, defendants admitted that “Down Under” made “unconscious” reference to the children song. The band member who wrote the flute melody said he did so to inject some “Australian flavor” into the song. He reportedly admitted to have heard “Kookaburra” growing up in the late 1950s and was “pretty sure” that “Kookaburra” was in his school’s song book.

Comments: This case reminds us of the landmark copyright opinion in Tunes Music Corp. v. Harrisongs Music, Ltd., 420 F. Supp. 177, 178 (S.D.N.Y. 1976), in which the U.S. judge found that George Harrison had “subconsciously” infringed the Chiffon’s song “She’s So Fine” when writing ” My Sweet Lord.”

On a different note, it is worth noting that, if the “Down Under” case had been decided under U.S. law, laches might have been an available defense. After all, the song has been almost inescapable hit for over 30 years. Why didn’t the plaintiffs move quicker? Larrikin claimed that it wasn’t until a quiz show in 2007 that it became aware of the songs’ similarities… That claim may not have been sufficient to overcome a laches argument under U.S. law. (As a reminder, laches is an equitable defense that plaintiff has “slept on its rights” and is no longer entitled to the claim.)

Practice Tip: Even though this case was decided under Australian, not U.S., law, it provides a universal reminder that traditional works (such as childhood songs or rhymes) might not always be in the public domain. Under the U.S. Copyright Act, works published or registered before 1923 are the only works clearly in the public domain. For more recent works, advice your clients not to assume the work is out of copyright and to clear rights if needed.

Fiat Group Automobiles S.p.A. v. ISM, Inc., 94 USPQ2d 1111 (TTAB 2010) [precedential]

While FIAT is quite a well-known brand in Europe and other regions of the world, cars made by the Italian company aren’t all available in the U.S.… yet (Fiat reportedly has plans to bring more of its small car models to the U.S. market by the end of 2010). In truth, unless they are foreign car aficionados, most American consumers might not have heard of the brand, at least not extensively; at best, some may remember the tiny Fiat 500 fondly from European movies from the 50s and 60s (or the Pixar film “Cars;” Luigi, the tire shop owner was a 1959 Fiat 500). I personally remember (not so fondly!) the Fiat shown below as my very first car but, again, I grew up in a European country.

In the present case, Fiat filed an opposition at the Trademark Trial and Appeal Board (“TTAB”) against an applicant who filed to register the mark PANDA in conjunction with “automobiles,” based on, among other claims, dilution of Fiat’s “internationally famous” identical mark. Fiat owned a pending intent-to-use application at the PTO for the mark (not a registration) and used it internationally in conjunction with its hugely popular Fiat PANDA model, However, the Italian company was not using the mark in the U.S. commerce quite yet.

Applicant filed a motion to dismiss under FRCP 12(b)(6) for failure to state a claim upon which relief can be granted, arguing that Opposer Fiat had “no reasonable basis for damage in the absence of an allegation of ‘continuing prior use of any form of ‘Panda’ in the United States.’”

While the TTAB notes that activity solely outside of the U.S. is generally ineffective to create or maintain rights in marks within the U.S., it recognizes the possibility “in unusual cases” that activity outside of the U.S. could result in a mark becoming well-known within the U.S., even without actual use in commerce in the U.S.

Here, the TTAB found that Fiat failed to allege “any particular type of use or specific facts which could be proved at trial as demonstrating widespread recognition of its mark in the United States.” The TTAB gave Fiat 30 days to amend its dilution claim accordingly.

Practice Note: Pleading the dilution claim properly was key in this case. The TTAB makes clear that a foreign company seeking to oppose a U.S. mark but hasn’t yet started to use its mark in the U.S. market will need more than mere fame outside of the U.S. to be successful. In this case, the TTAB required:
1) specific pleading of intent to use;
2) filing of an application for registration; AND
3) some basis for concluding that recognition of the mark in the U.S. is “sufficiently widespread as to create an association of the mark with particular products or services, even if the source of the same is anonymous and even if the products are not available in the United States.”
Luckily for Fiat, it was given a second chance to meet all three requirements.

Today the iPad goes on sale. David Pogue and others have given this revolutionary device a big thumbs up. Some have predicted it will galvanize the end of Kindle. The speculation is rampant. This opinion piece in today’s New York Times by Marc Aronson includes an analysis on how the delivery of content is challenged by the historic limitations of copyright:

“We treat copyrights as individual possessions, jewels that exist entirely by themselves. I’m obviously sympathetic to that point of view. But source material also takes on another life when it’s repurposed. It becomes part of the flow, the narration, the interweaving of text and art in books and e-books. It’s essential that we take this into account as we re-imagine permissions in a digital age.

When we have a new model for permissions, we will have new media. Then all of us — authors, readers, new-media innovators, rights holders — will really see the stories that words and images can tell.”

The seminar next week organized and hosted by the Berkeley Center for Law and Technology is an excellent venue to explore this and other copyright topics.

Like Verizon did last year on the same day, Google has announced that it is changing its company name to Topeka. From a trademark law perspective, Google is acutely aware that the public must be educated on proper use of its new mark, so as to lower the risk that TOPEKA might become generic and lose its trademark status as so many marks have before it (such as cellophane, escalator or aspirin). To that end, the Google has posted these helpful trademark usage guidelines:

Further information about the TOPEKA re-branding effort is available here.

The term ‘upgrade’ is thought to ‘improve or step-up the performance or parts of an experience’. Take the experience of flying, as an example. It would trigger outrage to be told that you have qualified for an ‘upgrade’ only to learn that your experience is deteriorated.

How many of us have been invited to ‘upgrade’ our licensed software with an internet service or product provider only to find that it was not an upgrade but instead triggered a reduction or elimination of privileges or access? The number is long of companies who do that. Not just once but repeatedly…. iTunes, Amazon…..to name just two.

TechDirt has a good analysis here of the most recent which Sony is rolling out for the PlayStation 3, including a backstory on EFF’s participation and comment.

“It used to be when you bought a product, you owned it. Simple, right? And once you owned it, you could do what you want with it? But, lately, thanks to digital products and an always connected world, many companies have changed things around — so the products you thought you owned, you actually rent. But, it can go even further than that, where a product you thought you owned can be irrevocably changed without your permission, long after you bought it. Take, for example, the recent story of Sony deleting a feature on the PS3 that let users (not owners, apparently) install other operating systems, such as Linux. It’s going away. Sony announced that when the next PS3 firmware upgrade comes along, it’ll wipe out this feature, whether you used it or not. The only way to avoid that is not to upgrade, but that will also greatly limit what you can do with your PS3.”

In what many think proves the point that electronic and print publishing will be symbiotic, the E-print publisher, Ravenous Romance, has licensed the P-print publisher Red Wheel the world English rights to twelve Ravenous paranormal romance e-books in trade paperback editions to be retailed at $12.95

Proof perhaps that the ’subsidiary rights’ clause of the old publishing agreement might better be termed, “outsourced rights”. It will unsettled for awhile as to which is ’subsidiary’ to what.

Musicians, retailers, music labels, songwriters, and managers have united under a new collective named Music Matters designed to educate consumers about the value of music and to encourage and assist consumers in identifying and purchasing online music from legal sources.

With such partners and supporting sites as iTunes, Rough Trade, Spotify and Play.com, and even former music pirate Napster, Music Matters carries out its mission through two main avenues, the first of which is providing a series of short animated films by several renowned artists regarding what inspired them to make music, and the second is the launch of the MUSIC MASTTERS trustmark (or certification mark) which uses a elaborate certification regime to identify legitimate legal music services for consumers. The gold e-badge MUSIC MATTER mark functions as stamp of approval for music retailers who display the mark on their websites to identify themselves as certified provider of legal music.

Certification marks, however, are neither new nor exclusive to the music industry and should be an important consideration for brand owners. Unlike a trademark, which is used to identify the commercial source of goods and services, a certification mark is used to certify the nature, quality, regional origin or characteristics of the goods or services and/or that the provision of services was by members of a union or other organization that meet certain standards. Examples include the GROWN IN IDAHO mark (owned by the Idaho Potato Commission), the UL logo (owned by Underwriters Laboratories) and the GOOD HOUSEKEEPING SEAL OF APPROVAL (created by the Good Housekeeping Institute).

Certification marks are of great value to both their owners as well the merchants who display them, allowing consumers to identify products that meet certain criteria and allowing brand owners to set themselves apart in the industry. There are, however, significant legal considerations and requirements which should be carefully explored and understood before seeking a certification mark. For instance, for the owner of certification mark cannot use the mark in connection with its own goods and services for which is it certifying others. Moreover, the owner is required to create and implement objective testing standards and criteria against which goods and services may be measured and may not discriminate against those who meet the criteria. Additionally, the owner must monitor and control other’s use of the mark to ensure its proper use.

Whether Music Matters will have any significant effect on the wave of pirated music remains to be seen…but in this author’s humble opinion, it’s a good start and serves to remind us all that music really does matter. You can read more about the collective here.

Unless you’ve been living under a rock lately, you probably know that in a matter of days, Apple will be releasing its much anticipated iPad tablet. What you may not know, however, is up until now, there has been a feud simmering in the background over who owns the rights to the IPAD trademark in the U.S.

At the time Apple filed its U.S. trademark application for IPAD, Fujitsu owned a pending application for the IPAD trademark for a wireless handheld retail inventory management device, filed in March 2003. The application went abandoned in April 2009 after Fujitsu failed to respond to a request for additional information. Fujitsu successfully revised the application in June 2009, and shortly thereafter, the application was published for opposition.

In what looked to be a looming trademark battle, Apple filed multiple extensions of time over several months to oppose Fujitsu’s pending application. Fujitsu, seemingly prepared for a fight, explaining through its director of public relations in January of this year that the company was consulting its lawyers because “[i]t’s our understanding that the name is ours.”

In a rather anti-climatic end, however, the battle is seemingly over before it really got started. On March 17, Fujitsu assigned the IPAD application and trademark to Apple, leaving plenty of speculation such as how many zeros were at the end of Apple’s check or did Fujitsu’s legal team conclude that its right in the mark paled in comparison to Apple’s (not likely since Fujitsu claimed rights in the mark dating back to January 2002).

Apple is no stranger to the name game as it had a similar dispute with Cisco over the IPHONE mark after it introduced the phone in 2007, resulting in a lawsuit which eventually settled with the companies agreeing to share the name on their respective products.

This case reminds us of the benefits of fully exploring the risks and costs likely to be associated with a particular trademark prior to its selection and use. Here there is no doubt that Apple was fully aware of, contemplated (and even opposed) Fujitsu’s trademark application prior to filing its IPAD application. Indeed, Apple probably calculated the cost of acquiring the trademark from Fujitsu as part of its business expense.
Few of us, however, have the deep pockets of a Steve Jobs, and as such, would be wise to carefully consider the results of a search, and particularly any potentially problematic marks, when creating a trademark filing strategy.

A Wisconsin district court has determined the red knobs on the workhorse Wolf Stove have acquired secondary meaning.

Plaintiff Wolf Appliance, Inc. (“Wolf”), famous for its professional and home cooking ranges, filed suit against competitor Viking Range Corp. allegiing federal trademark infringement for Vikings recent use of red knobs for its range handles, and asking the court to grant a preliminary injunction, requiring Viking to cease use of the red knobs.

In finding that the color red on the Wolf knobs had acquired secondary meaning, the court gave little weight to declaration from dealers and customers and instead based its opinion on the following facts:

LONG-TERM CONTINUOUS USE: Wolf has been selling ranges with red knobs since 1933.

LOOK-FOR ADVERTISING: Wolf has been calling attention to its red knobs in advertising for years. For instance, in a recent catalog, Wolf states, “Knob appeal. This is, perhaps, the first thing one notices about a Wolf product. The red knobs serve as a reminder of its distinctive nature.”

RECOGNITION BY THIRD PARTIES OF THE KNOB: The court found that major news articles all seemed to reference the “red knobs” a integral to easily identifying a Wolf Range over other high-end cooking products.

FEDERAL TRADEMARK REGISTRATION: The PTO granted a trademark registration for the color mark in 2008. Notwithstanding the evidence submitted at trial that the red knobs had been in use since 1933, the registration claims a first use date of at least as early as 2000.

SIGNIFICANT SALES OF THE “RED KNOB” STOVE: Since 2000 alone (the claimed first use date), Wolf has sold more than $800 million in stoves and spent more than $41 million in advertising and promotions, many of which include “look for” advertising.

Practice Note: This case serves as a beautifully written primer on what a client has to show to establish secondary meaning in a color or other trade dress. It also shows that while a trademark registration does establish prima facia distinctiveness, many judges will not rely solely on its validity, and will give a defendant wide latitude to overcome the presumptions established with a federal registration. Clients who want to use trade dress to distinguish themselves in the marketplace should be advised to put in place a marketing and sales plan that supports the goal.

The author would like to draw attention to the great restraint she exercised in refraining from making fairy tale jokes. Red? Wolf? Slow pitch down the middle.

We’ve posted here about the ongoing legal battles in the courts between copyright owners and the popular Sweden-based file sharing site The Pirate Bay.

The appeal in Sweden is currently on hold, pending resolution of the defendants’ allegations of bias against two of the three appellate judges (based on their membership in “pro-copyright” organizations). The Swedish Supreme Court recently agreed to hear the bias allegations. At this time, the appeal appears to be suspended indefinitely, pending the Swedish Supreme Court decision. Stay tuned…

In related news, over the summer, three founders of The Pirate Bay were sued in The Netherlands by the Dutch anti-piracy trade association BREIN (fun fact: the papers were served through Facebook and Twitter because the defendants could allegedly not be physically located). The case resulted last month in an adverse ruling ordering the web site to remove all links to copyrighted content and block Dutch users. The compliance deadline is March 1, 2010. The Pirate Bay will reportedly not appeal the decision.

In re General Technologies, Inc., Serial Nos. 77052472 and 77052485 (July 23, 2009)

While never inherently distinctive, a color can function (and register) as a trademark if the applicant can show that the color has acquired secondary meaning and that it is not functional; meaning that the purchasing public identifies the color with the source of applicant’s products or services.

As this case illustrates, applicant’s burden to proof is notoriously difficult to meet, especially when it comes to use of color on a product. Two years ago, the company 3M attempted to register the color purple for sandpaper and failed as well (Saint-Gobain Corp. v. 3M Company, 90 USPQ2d 1425 (TTAB 2007)).

The landmark cases in this area are: In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985) (color pink registrable for fiber glass insulation) and Qualitex Co. v. Jacobson Products Co., Inc, 514 U.S. 159 (1995 (green-gold color registrable for dry cleaning press pads). Color can also function as a service mark, which tends to be easier to prove; for example, Tiffany & So. owns a trademark registration for their color blue in conjunction with retail services; UPS owns the color brown for shipping services.

Acquired distinctiveness can be established by direct evidence (like testimonies or consumer surveys) or circumstantial evidence (like years of use or sales and advertising figures) and there is no fixed rule as to the amount of proof necessary. In this case, the TTAB found that the evidence proffered by applicant (use of the color for 10 years) was insufficient to support acquired distinctiveness of the maroon color in conjunction with applicant’s industrial products. Applicant provided no evidence that the public identified or recognized applicant’s maroon anchors. The TTAB found that there was “nothing in the record that show[ed] the the alleged mark [was] being promoted as a source indicator” and affirmed the refusal to register the color as a trademark.

Practice Note: If you are seeking registration of a non-traditional trademark (such as color, sound or trade dress), use it and feature it as a trademark. In the case of color, this might include identifying and highlighting the trademark significance of the color on the company’s web site and in advertising as applied to the goods. This case confirms that, especially in the case of a product color, consumer perception is key.

While the King of Pop has passed to his eternal resting place, he leaves behind more than devastated fans, mourning family members, legendary dance moves, and record breaking statistics. With his demise, we have learned that Michael Jackson amassed a substantial intellectual property portfolio, demonstrating a creativity well beyond his musical talents and leaving some to refer to him as an “Intellectual Property Goldmine.”

A little known fact about Jackson, he co-owned a patent for an invention he created that allows dancers to lean forward at a 45 degree angle beyond their center of gravity by wearing specially designed shoes. (U.S. Patent No. 5,255,425, titled “Method and Means For Creating Anti-Gravity”).

His famous gravity defying “lean” can be seen in the music video for the song Smooth Criminal.

Jackson also registering his name with the U.S. Patent and Trademark Office and owned numerous other trademarks for goods and services ranging from merchandise to fan clubs.

And, of course, let’s not forget about the copyrights. In addition to securing copyrights to his own works, Jackson famously outbid Paul McCartney and purchased rights to the Beatles song-copyright catalog for $47 million dollars in what many claim to be his best business decisions, later selling the rights to Sony for $90 million.

Although often maligned for his lifestyle choices and actions, Jackson’s dedication to creating and protecting his art and talents cannot be denied. Love him or hate him, he leveraged his superstardom (and that of others) into substantial intellectual property assets.

Netflix, the web based DVD rental service, launched as contest in 2006 offering a 1 million dollar prize to team that develops a recommendation algorithm that is shown to be 10% better that Netflix’s current recommendation engine. To those in the programming community, the challenge has been compared to scaling Mount Everest. Has the summit been reached?

It seems the two contest front runners, Team Pragmatic Theory and Team Bellkor in BigChaos, have joined forces and submitted an algorithm that was 10.05 percent better than the one Netflix uses to recommend movies to its subscribers. The result was published on the Netflix Prize leader board on June 26, 2009.

From a promotion law point of view, the contest winner must grant to Netflix, an irrevocable, royalty free, worldwide non-exclusive license under the contest entrant’s copyrights, patents or other intellectual property rights in the winning algorithm. In addition, a description of the algorithm, but not the source code, will be published on the Netflix site. I.e., the winners will “describe to the world how [they] did it and why it works.” Like all well conceived contests, the official rules provide a mechanism for determining the contest entrants actually created the entry submitted. It appears however, that the winners are not prohibited patenting their entry and winners are not prohibited from charging others for the use the algorithm.

This contest, where competitive incentives are offered as an alternative to in-house research and development, looks like a new, workable model to foster innovation.

In a long and hard fought battle, the Second Circuit Court of Appeals has given renowned fashion designer, Joseph Abboud, a chance to reclaim his name.

Issuing a sweeping injunction in June 2008, a Southern District of New York court enjoined Abboud from using his name to sell, market or promote his own business, goods and/or services, finding Abboud’s intended use constituted a breach of contract and would constitute trademark infringement. The Second Circuit, in J.A. Apparel Corp. v. Abboud, et al No. 08-3181-cv (Second Cir.) found here reversed and remanded.

J.A. Apparel Corporation (“JA”), a former joint venture of Joseph Abboud, sued the designer in federal court alleging breach of contract, trademark infringement, and related claims over Abboud’s plans to use his name in the marketing and advertising of his then new JAZZ line, which he intended to promote using with such phrases as “a new composition by designer Joseph Abboud.”

Underlying the dispute, in 2000 JA entered into a sales agreement with Abboud, paying Abboud 65 million dollars for the exclusive rights to the ABBOUD label and related JOSEPH ABBOUD trademarks. While Abboud claimed the agreement only transferred rights in the ABBOUD trademarks but not the rights in his name, JA asserted the contract sold both the trademarks and the exclusive rights to use the Joseph Abboud name for commercial purposes. The district court ruled Abboud had unambiguously conveyed to J.A. all of Abboud’s rights to use his personal name, trademarks, and trade names for commercial purposes and also found Abboud’s planned use of his name would constitute trademark infringement, as it was likely to cause consumer confusion.

Vacating the injunction, the Second Circuit remanded the case, ruling the district court: 1) erred in ruling the sales agreement unambiguously conveyed all of Abboud’s rights to use his name commercially; and 2) erred in rejecting Abboud’s fair use claim as a defense to trademark infringement. The appellate court specifically found that given the conflicting interpretations of the sales agreement, the district court should have considered the parties’ extrinsic evidence to more fully understand the parties’ intent and that the district court should have examined Abboud’s actual or proposed use to resolve his fair use defense.

COMMENTARY: This case highlights the risks inherent in licensing or selling a brand name which also happens to be an individual’s name. Because the parties failed to clearly and precisely define the scope of their agreement, Joseph Abboud stands to lose the right to his very valuable name. Granted, he was paid 65 million dollars, which may seem like more than adequate compensation….but how much is your name worth, and what would it take for you to sell it? As some might say, “priceless.” Take the time to get it right.

St. Louis Cardinals manager Tony La Russa has sued Twitter, the popular micro-blogging service in San Francisco Superior Court alleging: Trademark Infringement, False Designation of Origin, Trademark Dilution, Cybersquatting, Misappropriation of Name, and Misappropriation of Likeness. In the Complaint, Mr. La Russa states the defendant owns the domain name twitter.com, and pursuant thereto, twitter.com/TonyLaRussa. Mr. La Russa contends an unknown user, pretending to be La Russa, began posting updates as Mr. La Russa. One line of the “profile” suggested it was all a fake: “Bio Parodies are fun for everyone.”

According to the San Francisco Chronicle, La Russa’s attorney tried to contact Twitter before filing the lawsuit, but got no response. Hours after the lawsuit was filed, Twitter removed the fake La Russa page and its postings. It is being reported that the case has already settled. “La Russa said Friday [6/5/09] that Twitter has agreed to pay legal fees and make a donation to his Animal Rescue Foundation. The organization is likely to take control of the name www.twitter.com/TonyLaRussa. However, the Wall Street Journal is reporting the opposite.

The truth is out there.

Trademark Note: Using a trademark and then simply claiming “parody” is not a “get outta jail free card.” In trademark cases, when a parody defense is raised, the defendant justifies his use on the grounds of humorous social comment. Funny or not, a defendant’s use may still be enjoined if it is likely to cause confusion with plaintiff’s trademark. Courts must balance the public interest in poking fun at trademarks and the institutions they represent, with the trademark owner’s investment and good will. Courts must also protect consumers from likely confusion.

As of last Saturday, Facebook users have been able to register personalized URLs of their choice for their Facebook home page (e.g., facebook.com/myusername). Approximately 5.75 million users signed up for their own URL over the weekend (also called “Vanity URLs”).

These new usernames could potentially be anything, including someone else’s trademark. To help trademark owners prevent hijacking of their marks, Facebook put in place a temporary procedure for trademark owners to “reserve” their registered trademarks with Facebook in advance and prevent the creation of URLs associated with those marks. Facebook has now closed this reservation period.

So what can trademark owners do who did not register their trademarks with Facebook and discover unauthorized URLs? They can request removal by contacting Facebook via this notice form. The procedure is fairly straightforward. You do not need to be registered on Facebook to use it.

So go to Facebook, check possible URLs containing your marks and, if you discover unauthorized uses, take action sooner rather than later.

Copyright infringement claims can often be reduced to a formula. In instances where the copyright infringement is less obvious and direct, a copyright owner asserts both a valid copyright registration and a theory of how access occurred and then conjectures that because of the substantial similarity between the two works, it may be concluded that defendant’s work infringes. Such a formula is the basis of a copyright complaint filed this week in the Eastern District of New York by a fine art book designer against Urban Outfitters and its subsidiary, Anthropologie. The copyright registration upon which the case relies was effective February 13, 2009, well after the date of alleged infringement. That’s a problem because the Copyright Statute explicitly prohibits the plaintiff from recovering attorney’s fees or statutory damages when the copyright registration is obtained after infringement.

Here are the facts: Purgatory Pie Press attended the fall 2008 Artists Book Fair in New York. Visiting their booth, an Urban Outfitter representative signed the guest book with effusive praise. According to the complaint, the Urban Outfitter representative was “observed surreptitiously taking pictures using small digital cameras and mobile telephone cameras.” But there is no clarity as to whether the surreptitiously taken pictures were of the disputed work.

The complaint includes a blend of claims, not just copyright. Other claims include unfair competition as well as trademark dilution, which is particularly interesting as there is no assertion that the work at issue rises to the level of a trademark.

The prayer for relief includes a demand for attorney’s fees and damages in the amount of $150,000 (the upper statutory damage limit.) This will be hard for the Plaintiff to obtain given that their post-infringement registration bars both attorney’s fees and statutory damages.

This is a complaint by an angry artist who obviously feels ripped off and is seeking orderly revenge. Unfortunately, there is little likelihood of getting more than an injunction and perhaps some modest, actual monetary damages given the late filing of the copyright application and the absence of the image at issue having been used as a trademark. It is a complaint that expresses the emotion, but fails to have many teeth.

Practice tip: Register those copyrights early and often. Having a registration in hand before an infringement occurs empowers the complaint, making it more fierce. The Copyright Statute favors the proactive.

A new website has launched whose purpose is to connect potential buyers and sellers of trademarks. Trademarks are words, signs or symbols used by businesses as a source identifier of goods and and services. Trademarks are valuable not only for the consumer goodwill they engender (see, MCDONALD’S, GOOGLE, BMW, HBO), but also as a barrier to market entry of similar products (or services) with confusingly similar trademarks.

According to its press release:

USTrademarkExchange.com was launched earlier this month as a dedicated trademark sales portal . . . Owners can list and promote their registered trademarks, while potential buyers including investors can easily search through a variety of available trademarks in one location.”

Sounds like a great idea, right? Hmmm, not so fast. There are a few basic, but important concepts worth noting. When a trademark is assigned (ownership transferred) from one party to another, the purchasor generally succeeds to all of the previous owner’s rights (e.g., dates of first use, etc.). However, a maxim of trademark law states a valid trademark assignment must include the goodwill of the business. What is goodwill?

A trademark stands for a certain standard of quality. The mark symbolized that level of quality that the public has come to associate with the products bearing the mark. That said, an assignee (or purchasor) of a trademark must be sure she has the implements necessary to maintain this quality. If she does not, the trademark becomes separated from its goodwill. When goodwill does not accompany the mark, the assignment may be called an assignment in gross or a naked assignment. Generally speaking, an assignment without goodwill is invalid.

It is too soon to tell how USTrademarkExchange.com intends to handle its trademark assignments and how potential buyers and sellers will see the benefits of their respective bargains. Like many things in life, “an ounce of prevention is worth a pound of cure.” When it comes to assigning or purchasing trademarks, conferring with competent trademark counsel is always a good bet.