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 Serial No. 77018496 (June 16, 2010) [not precedential].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.

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.

The Trademark Trial and Appeal Board has sustained Opposer, shoe maven Kenneth Cole’s contention that LE TIGRE for clothing is confusingly similar to Applicant’s use of LE TIGRE for pens.

Cole failed to establish that its LE TIGRE mark was famous. The Board pointed out that Cole had not provided sales data or advertising information sufficient to show that the mark was famous. Nevertheless, Cole did provide the Board with evidence of its vast licensing program and unsolicited newspaper articles relating to its LE TIGRE brand, as well as an article entitled “Licensing Seen as a Key to Strong Brand Presence.”

The rather rambling decision serves as a reminder that procedure is as important as argument at the TTAB. Not until page 12 of the 23-page report does the Board begin to address the merits of the case, spending the prior pages addressing issues related to the admissibility of evidence and objections raised by both parties.

On the basis of its 23 year use of the mark LE TIGRE for clothing, coupled with its licensing program and the fact that numerous leather companies also have lines of writing instruments, the Board determined the weight of the evidence suggested consumers would likely believe pens and clothing bearing the LE TIGRE mark emanated from the same source.

The case underscores the convergence of industry that companies and their lawyers are facing when trying to clear trademarks for use. Given the diversity that some companies maintain in their product offerings, the ability to predict whether a mark is confusingly similar is becoming more difficult.

Practice Note The lengthy discussion in this case related to procedure is worth noting, if only as a reminder to check (and re-check) what is admissible under a notice of reliance and what requires a deposition; and further, how to properly time objections

Abadin v. Marvel Entertainment Inc. got its final ZOW-POW! from a federal judge in New York who dismissed the action for copyright infringement and Lanham Act violations on a number of technical grounds, including no standing to sue. In a case that works as a “what not to do” checklist for plaintiff’s, it appears it’s safe to walk the streets again for Stan Lee.

Plaintiffs purchased Stan Lee Entertainment in 1999, which Stan Lee (the purported creator of many of the Marvel Comics characters) formed as a management company for his characters. In its lawsuit, Plaintiff claimed Stan Lee had transferred his most famous characters, including Spider-Man, Iron Man, Hulk, and the X-men (the “Characters”) to Stan Lee Entertainment prior to Plaintiff’s purchase of Stan Lee Entertainment. Plaintiff’s claim that Stan Lee Entertainment – and not Stan Lee himself – owned the Characters at the time that Stan Lee entered into an agreement to sell them to Marvel.

Defendant Marvel Entertainment and Stan Lee himself claimed that although Stan Lee had planned to transfer the Characters to Stan Lee Entertainment, the deal fell through, and instead Lee entered into an agreement in 1998 with Marvel – a year before Plaintiff’s purchased Stan Lee Entertainment – wherein Lee, as owner of the Characters, transferred the rights to the characters to Marvel.

In addition to finding that Plaintiffs were barred from their claims by the statute of limitations (“Plaintiffs cannot wait a decade to enforce their rights”), and further finding that procedurally, Plaintiff’s had failed to timely file its amended complaint (the 4th one), the Judge Crotty found that Plaintiffs did not have standing to sue because, a “plaintiff must have owned stock in the corporation throughout the course of the activities that constitute the primary basis of the complaint.” Since Plaintiffs did not purchase Stan Lee Entertainment until a year after the transfer to Marvel was complete, they did not have standing to sue.

Practice Note: Intellectual property due diligence at the outset of this deal might have avoided this suit altogether. Plaintiffs had a duty to carefully conduct the appropriate due diligence to determine what intellectual property was actually owned by the company they were purchasing and further, to request specific representations about what they were buying. In this case, a simple review of the PTO assignment database, freely accessible by the public reveals no fewer than 17 assignments of one SPIDER-MAN trademark, and Mavel’s involvement dating as far back as 1972.

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.

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.

Or “Cher,” or even “Carrot Top.” Either The Cobalt lawyers are not up on just how cool Lindsay Lohan is, or she needs to check back into rehab for delusional thoughts.

According to the Wall Street Journal Law Blog, Ms. Lohan has sued E-trade in New York Supreme Court for misappropriation of her name and characterization for one of its “baby” commercials in which a girl baby refers to another girl baby as “that milkaholic lindsay.” According to Lohan’s attorney, such a reference clearly is an attempt to trade off the good name of Lindsay Lohan.

A couple of things her attorney might want to think about: First, all roads do not lead to your client simply because her name is Lindsay. Second, publicly giving the defendants a defense by saying the commercial is a “parody” is probably not a good way to really drive home your own case. Finally, Lindsay may have a hard time establishing that she’s known only by her first name given the fact that she’s never advertised or marketed herself solely as Lindsay, there are over 300,000 women in the country with the name Lindsay. Besides, she was never and abuser of — oh wait, she’s got one strong piece of evidence.

We’re betting this case gets the New York Heave Ho.

Gary Benson might not remember Serpentine Fire, but he sure felt the heat when the Trademark Trial and Appeal Board sided with Maurice White and rejected Benson’s application to register “WE NEED A REBIRTH OF THE EARTH. EARTH, WIND, AND FIRE (and Design)”.

Benson applied to register the foregoing mark for arranging concerts with ecological themes. The examining attorney must have had her Reasons for passing the application to publication (perhaps she was living in a Fantasy), but in September, Maurice White, singer for the multi-platinum band, opposed the application on the grounds of likelihood of confusion with the band’s trademark for EARTH, WIND & FIRE. While the band was no longer actively producing records, they were still touring due to the incredible Devotion of its fans. The TTAB agreed to Rock That decision in favor of EWF. Sorry, Benson, That’s the Way of the World.

Practice Note: What is interesting about this case (besides the author’s age-revealing bad puns) is primarily procedural in nature. First, the Board notes that Applicant (representing himself) filed an answer that was “argumentative in nature, and does not actually respond to the notice of opposing by affirming or denying opposer’s allegations.” This is a violation of Rule 8(b) of the Federal Rules of Civil Procedure. The TTAB is generally more lenient to non-represented clients and often it does not make financial sense to file a motion asking the Board to strike the answer. That said, attorneys should review improperly filed answers to make certain information is not contained in the answer that is inappropriate (such as letters written in consideration of settlement). Even if the Board grants the applicant leave to refile its answer, the record is cleaner for the Opposer.

The decision also points out another important procedural misstep. Once an Opposition has proceeded to the trial stage, edits to the identification of goods by the Applicant will not generally be accepted unless agreed to by the Opposer (there are some exceptions). TBMP § 514.03. Such an amendment can therefore be used as a bargaining chip with Opposers in cases where the Applicant could refile and likely prevail, thus its significance should not be overlooked.

The Board also notes the applicant tried to introduce evidence in the case by attaching it to his brief. Notwithstanding the Board’s leniency toward pro per parties, it generally does not allow parties to blatantly disregard its rules. The consequence of improperly introduced evidence is to give it no consideration.

Finally, the Board here – and in many other cases – gives great weight to the fact that the Opposer’s mark is fully incorporated into Applicant’s mark. Clients should be advised that “adding” elements to an existing mark (especially one that is arbitrary or fanciful) is not likely to reduce confusion between a client’s mark and an existing mark.

Major League Baseball is calling foul on Don Mattingly and has let him know with their own sentiment: an opposition. MLB is not happy with Mattingly’s choice of logo, claiming in large part that the logo is confusingly similar to its well-recognized MLB logo.

This is not the first inning. In fact, MLB took its original swing against Mattingly’s company, Mattingly Hitting Products, Inc., in mid 2007, when it filed an opposition at the U.S. Patent and Trademark Office. Proceedings were suspended, however, until last month, when Mattingly filed his answer.

Mattingly, aka “Donnie Baseball,” who both began and ended his career with the New York Yankees and was purported to be as popular as Babe Ruth, had a career batting average of .307 and over 220 RBIs. Mattingly also holds the MLB Grand Slam record, His logo contains his retired number, 23, which Mattingly also used for his restaurant, Mattingly’s 23 (which closed down in the late 90s). Mattingly, also maintains an eBay store, called Don Mattingly’s 23.

Mattingly’s logo in question, features the trademark “23” in the shadow image of a player taking a swing. The MLB logo shows a shadow image of a player facing the same direction, and poised for a swing, begging the question of how many ways one can depict a hitter.

Surely, this matter is not over ‘til it’s over, but of note (and also called into question on the TTABlog), is Mattingly’s attorney’s first affirmative defense that “Opposer may have failed to mitigate losses and damages.” Must be American League rules, because that’s a new one for us.

The Sycamore Family Bakery (“SFB”) sold his rights in the trademark GRANDMA SYCAMORE and GRANDMA SYCAMORE’S HOME MAID BREAD to Sara Lee for a bucket o’ money. Apparently, granny wasn’t ready for retirement, however.

SFB thought it would be a good idea – and not a violation of its agreement with Sara Lee (predecessor in interest to the original party) – to market a new bread under the name SYCAMORE FAMILY BAKERY, with SYCAMORE as the dominant feature of the mark. For good measure, it added the tagline “The Original Granny Bread” and incorporated a “heart” logo (hearts are also incorporated into the GRANDMA SYCAMORE bread logo sold to Sara Lee).

Sara Lee sued for trademark infringement and for creating a false impression and the court agreed. In Sara Lee Corp. v. Sycamore Family Bakery, the court ruled that he dominant feature of the mark was highly distinctive, and found SFB had clearly taken pains to highlight the SYCAMORE component of the mark while subjugating the other terms. Second, by calling attention to its origin, SFB was deliberately trying to increase the likelihood consumers would get the very false impression the Sycamore Family products were related to and under the control of the trademark now owned by Sara Lee.

In granting the preliminary injunction, the court paid particular attention to the “intentional copying” element of the likelihood of confusion test, suggesting that SFB and “intimate knowledge” of the GRANDMA SYCAMORE family of trademarks made clear it was deliberately trying to trade off the goodwill of the marks. Moreover, the court cited employee “joking about cease and desist letters” from Sara Lee as clear disregard for Sara Lee’s rights.

Practice Pointer: Selling trademarks and then attempting to re-use them is never a good idea. Though obvious enough, clients often believe they have an inalienable right to use their own names, even after entering into a deal with another party to sell them. Attorneys will want to make sure clients understand the full magnitude of what they are selling before they sell it.

Moreover, clients often believe that once a buyer is no longer a going concern, any agreement made with that buyer dissolves. This is rarely the case, since most agreements contain a provision expressly allowing the obligations under the agreement to be transferred.

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.

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.

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.

Linden Labs, the host of the immensely popular site Second Life, an online virtual world, has been sued in an Arizona district court for trademark infringement and unfair competition. The complaint, filed by Taser International, makers of non-lethal (and sometimes lethal) weapons, claims Linden Labs allows third parties to sell TASER guns inside the virtual world.

Just so we’re clear, no one on Second Life is actively selling real TASER guns; rather Taser is suing Linden (who doesn’t sell anything), for letting people sell virtual (digitally created) guns that look like TASER weapons, and that use the TASER brand. The suit also alleges unfair competition, trade dress infringement, and false designation of origin, among other claims.

For those uninitiated few, users of the Second Life world can use their credit card to buy digital currency (“Linden Dollars”). They can then use that currency to make purchases in Second Life. For instance, if a user would like to dress up his/her avatar in a ball gown, s/he can use the Linden Dollars to shop at a virtual prom store. Similarly, if a user wants “protection” (you know, from digital thugs), s/he can buy a virtual weapon. Linden gets its revenue from a small percentage taken during the currency exchange.

It’s not the first time a company has sued Linden; neither is it the first time a company has sued a hosting site for trademark infringement by third parties (think: Google). It may, however, be the first time a company has sued another company for hosting a site where third parties selling products that aren’t even real. Is it time for a Digital Millennium Trademark Act?

Practice Note: Notwithstanding the fact that there is no DMTMA, companies may want to consider adopting a policy that allows them to stay an arms length away from disputes between users when it comes to trademarks. It’s not a fail-safe method of safe harbor protection, but it may make would-be plaintiffs feel they have an option short of filing a lawsuit, for getting hard-to-find users to stop using their marks.

Follow Tsan’s Legal Updates on or Subscribe to the Cobalt Blog

OpBiz, LLC hearts The TTAB, which ruled recently that OpBiz’ application to register HEART for “cocktail lounges, restaurant and bar services” was not confusingly similar to the registration KOKORO for “restaurant service.” In deciding the matter, the TTAB underscored a position it has taken in the past, namely, that the doctrine of foreign equivalents may not apply when the foreign word has more than one meaning. In this case, although the KOKORO registration identified the translation as “heart,” evidence submitted by the Applicant showed the term has multiple meanings. It was not sufficient for the examiner to rely solely on the translation identified in the application.

The case does not present particularly new law, but is a cavalcade of great procedural reminders. First, the Board finds a good deal of evidence otherwise submitted by the examining attorney was not timely filed, holding her to the same rigorous standard to which it holds the applicant (TBMP 1207.01 (2d ed. Rev. 2004)).

Next, in considering whether the evidence can come in under the judicial notice standard, the Board determines that the examiner has not met her burden. Her dictionary references do not rise to the level of online dictionaries for which the Board will take judicial notice (see, eg, In re Hotels.com L.P., 87 USPQ2d 1100, 1103 (TTAB 2008)). The Board also reminds the examining attorney that her Wikipedia submissions are “not proper subject matter for judicial notice because of its inherent lack of trustworthiness” and are not admissible because the applicant had no opportunity to rebut the evidence. ( see, In re IP Carrier Consulting Group, 84 USPQ2d 1028, 1032 (TTAB 2007)).

With the examining attorney’s record fairly gutted, the Board reviewed the issue under both a likelihood of confusion standard (for which confusion is arguably found) and a doctrine of foreign equivalent standard. Because the mark KOKORO has multiple meanings, and the examiner did not submit evidence that Japanese is routinely spoken in U.S. households, the Board ultimately found for Applicant and reversed the decision of the examiner.

Practice Note: In addition to the foregoing, the final lesson here is “Thank Your Paralegal.” As with many TTAB decisions, the case itself does not particularly espouse new law, but the decision nevertheless is worth reading because the Board reminds us how important procedure, protocol, and immaculate record keeping can be to the final decision. The examiner in this case raises the objection that the evidence submitted by applicant in the appeal should not have been considered because it was not filed prior to the appeal. In fact, there was a computer glitch and the evidence was filed, but did not get uploaded to the TDR. A thorough review of the paralegal’s record-keeping convinced the Board of this fact and the evidence submitted was sufficient for the Board to render a decision in favor of the applicant. The Board also found that the Examiner had been negligent in not notifying the Applicant that she had never received the exhibits, notwithstanding the fact that they were referenced in the Office Action Responses.

Follow Tsan’s Legal Updates on or Subscribe to the Cobalt Blog