Jay Hollander's Weblog - Intellectual Property

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Tue Nov 29, 2005

Breakthrough Issue on Registrability of a taste

Can a product's taste be the subject of a trademark application on the theory that it serves as an identifying and branding aspect of the product, distinguishing it from competitors and acting as a source identifier?

That's what the US Trade mark Trial and Appeals Board will decide in an appeal of the USPTO's rejection of the trademark application for the orange taste that disguises the real taste of a liquid anti-depressant.

Talk about depressing news! The applicant, Akzo-Nobel subsidiary Organon, unsuccessfully tried to register the orange flavor of its soluble antidepressant, Remeron SolTab, as a trade mark.

When presented with office action saying the flavor was a functional aspect of the product and did not serve as a branding feature, the registrant claimed that, since the flavor did not affect the efficacy or purpose of the drug, it was not functional and basically claimed that, among the market of anti-depressant users, they would take one sip and know whose product it was, by its flavor.

I'm thinking this may not be number one on the mind of a depressed person looking for medicine, but that's just me.

If the appeal succeeds, a whole new spate of trademark applications could come flooding in, claiming taste to be a brand identifier.

Presumably, all those people who can tell Coke from Pepsi with blindfolds on, will agree.

http://www.managingip.com/default.asp?page=9&PubID=198&SID=600424&ISS=20855&LS=EMS58256

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Sun Nov 13, 2005

More Useless Litigation by Overanxious Trademark Holders

With the help of the Electronic Frontier Foundation, a non-commercial medical news website, dedicated to objectively reporting the pros and cons of an experintal drug for treatment of obesity and smoking, was able to settle charges brought by the drug's trademark holder that the use of the drug name, Acomplia, in the Acompliareport.com web site infringed its mark.

Even though the website was not commercial in nature and carried a conspicuous notation at the top of the home page that the website was an "independent source of news" about the drug, the mark holder maintined that there was a likeliood of confusion regarding the use of the mark.

When the EFF brought suit, a settlement was reached by allowing the website to keep its domain name in exchange for an "additional" disclaimer that the report is not affiliated or endorsed by the mark holder.

Makes one wonder what the meaning of the word "independent" on a non-commercial site means anymore?

http://www.eff.org/news/archives/2005_11.php#004143

The formerly offending website can be found at http://www.acompliareport.com/

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Sun Feb 13, 2005

Jewish Rock 'n Roll Hall of Fame Sued in TM Dispute

So, you thought you'd heard everything, maybe? Not yet.

Law.com is reporting that the Rock and Roll Hall of Fame is suing a soon-to-be-launched website, JewsRock.org, over it's "The Jewish Rock 'n Roll Hall of Fame" mark, alleging trademark infringement. The mark is a drawing of a man playing a guitar, with the logo beneath. Like we'd be confused between a website and a museum, and think they are one and the same. The Rock and Roll Hall of Fame is seeking damages from a nonprofit website that hasn't launched yet, in the amount in excess of $100,000, as well as asking the court to halt the use of the name.

The article states that the lawsuit states it was filed after the USPTO rejected "Jewish Rock and Roll Hall of Fame" as a mark, and a non-final action notice was mailed, according to a status report last month, requesting additional information and/or making an initial refusal. However, a search of the USPTO.gov database shows a "Jewish Rock 'n Roll Hall of Fame" drawing still listed as a live application as of February 13, 2005, Serial Number 78424668.

It's listed for the following goods and services:
IC 025. US 022 039. G & S: Apparel, namely, shirts, golf shirts, t-shirts, sweatshirts, tank tops, sweaters, jerseys, turtle-necks, golf shirts, shorts, sweatpants, warm-up suits, blazers, sport coats, pants, jeans, skirts, suits, overalls, vests, jackets, coats, parkas, ponchos, swimwear, bikinis, swim trunks, overcoats, rainwear, wind resistant jackets, sleepwear, robes, underwear, lingerie, boxer shorts, ties, scarves, and pajamas; belts; footwear; and headgear, namely, hats, baseball caps, yarmulkes, winter hats, ear muffs, headbands.

Herein may lie the problem. The Rock and Roll Hall of Fame has sold around $5 million in licensed items in the last decade, and they worry that the new mark endangers that revenue stream. However, their trademark is listed for the following goods and services:

IC 009. US 021 023 026 036 038. G & S: portable audio products, namely radios, audio cassette recorders, stereo head phones; portable component systems, namely stereo amplifiers; receivers, and tuners; radios for vehicles; compact disc players; audio cassette decks; phonograph record players; audio speakers; television receivers and video monitors; video cassette recorders and players; video cameras and camcorders; pre-recorded compact discs and cassette tapes featuring contemporary music; blank CD-ROM discs; blank audio tapes, sunglasses, and parts for the aforementioned products.

There are three founders of the website, which is described as an exercise in ethnic pride, and it will include articles about famous Jewish musicians. One of them, Jeffrey Goldberg, who writes for the New Yorker magazine questions whether "rock 'n roll" and "hall of fame" can be valid trademarks. I guess we are about to find out.

http://www.law.com/jsp/article.jsp?id=1107783331682
http://lists.essential.org/pipermail/upd-discuss/2005q1/000966.html

Jewish Rock 'n Roll Hall of Fame mark:
USPTO: http://tess2.uspto.gov/bin/showfield?f=doc&state=a1egpl.2.14

January status report: http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=78424668

Rock and Roll Hall of Fame mark:
http://tess2.uspto.gov/bin/showfield?f=doc&state=37ms2h.3.8

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Mon Jan 10, 2005

NY Federal Judge Stops Listerine Ads

Your mom was right. You need to floss, according to a federal judge in New York.

Listerine's new advertising campaign has been ordered stopped by Southern District of New York Judge Denny Chin, on the grounds that the ads are misleading and could pose a public health risk. The ads, which make claims that using Listerine is "as effective as" flossing at fighting plaque and gum disease and that clinical studies prove it, will have to stop airing, and banners on the mouthwash bottles removed or covered over.

Listerine was sued by McNeil-PPC, a subsidiary of Johnson & Johnson and the nation's largest manufacturer of dental floss for false advertising and unfair competition, the Plaintiff claiming that the ads were causing irreparable harm to it's business.

The judge concluded that the ads were not only implicitly false or misleading but literally false. He held that the clinical studies "were not sufficiently reliable to permit one to conclude with reasonable certainty that Listerine is as effective as floss in fighting plaque and gingivitis" and that what the studies do show is that Listerine is as effective as floss but only if you don't floss properly.

Listerine pointed out that most people don't floss properly, but the judge found surveys showing that people viewing the ads, despite Listerine's disclaimers that you should continue to floss, thought that it meant that mouthwash was a replacement for flossing, and on that basis he granted the injunction against Listerine.

It's enough to make you spit!

http://www.law.com/jsp/article.jsp?id=1104759373958

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Thu Dec 16, 2004

Google Wins over Geico in Dispute over Keyword Ads

Google has won a summary judgment motion against Geico, validating Google's right to sell contextual text ads, in its Adwords program, that you see on your screen as "Sponsored Links". Geico, a unit of Warren Buffett's Berkshire Hathaway Inc., had alleged that displaying competitors' ads when users typed in "Geico" in the search engine resulted in exploitation of its brand and customer confusion.

After Geico finished presenting its case, Google filed the motion for summary judgment, asking for a ruling that selling and showing sponsored links triggered by trademarked keywords does not cause confusion and infringe on trademarks.

US District Judge Leonie Brinkema granted Google's motion, saying there was insufficient evidence of any consumer confusion. Google derives the bulk of its income, estimated as 95%, from such ads. David Drummond, vice president and general counsel at Google said: "This is a clear signal to other litigants that our key-word policy is lawful."

With the major claim settled, it leaves only one remaining issue, whether popup ads that use "Geico" in their text violate trademark law. Google has maintained that they do all they can to prevent such occurances, and that their policies strictly forbid it. The judge encouraged the parties to try to settle the matter, while she writes up her order.

Geico had brought suit against Yahoo's Overture Services as well, but the case settled last month. This case may be appealed, and there is another, similar case still pending against Google, but this ruling may well have persuasive influence on the decision in the case brought by American Blind and Wallpaper Factory Inc. over the same issue.

http://www.law.com/jsp/article.jsp?id=1102944938577
http://www.eweek.com/article2/0,1759,1742231,00.asp
http://www.indystar.com/articles/1/202511-2521-223.html
http://www.theregister.co.uk/2004/12/16/google_adwords/
http://www.clickz.com/news/article.php/3448471

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Mon Dec 13, 2004

Changes to US PTO filing fees for trademarks and patents

Courtesy of the American Intellectual Property Lawyers Association, a concise listing of increases to filing fees for patent and trademark applications.

Effective as of December 8th, the day the bill was signed into law by President Bush, the new and higher filing scheme rewards electronic filing with lower fees when compared to paper filings.

On the other hand, increased patent application fees are not only higher but split into different categories ( filing fee, search fee and examination fee), and are subject to still more fees for "excessive " claims.

For more detail, see the itemization summary found at

http://www.aipla.com/Template.cfm?template=/ContentManagement/ContentDisplay.cfm&ContentID=6137

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Thu Dec 09, 2004

Trademark Generic or Descriptive Terms At Your Own Risk

There is a new ruling from the Supreme Court that conveys the clear message that you trademark descriptive and generic terms at your own risk because competitors can use similar names descriptively as fair use, even if some consumer confusion ensues.

In an unanimous ruling, the Supreme Court in KP Permanent Make-Up v. Lasting Impression said that the law tolerates "a certain degree of confusion on the part of consumers," but that specific evidence of actual consumer confusion can be presented by trademark holders in suing infringers. In 1993, Lasting Impression registered a trademark that included the term "Micro Colors", which it used as a logo, to describe its products. The mark is now incontestable.

KP also used a single-word version of the term, since 1990 or 1991, descriptively, as "microcolors", and Lasting demanded they stop using the word. KP sued for declaratory relief and Lasting counterclaimed for trademark infringement.

The US District Court for the Central District of California ruled that they used it in good faith, since they had used it prior to Lasting's trademark registration, and could make use of the statutory affirmative defense of fair use, becuse they used it to describe their goods and not as a mark. The appeals court reversed, on the ground that there can be no fair use when there is the possibility of consumer confusion, and seemed to indicate that KP had the burden of proving that there was no such confusion.

Read more »

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Mon Jul 19, 2004

Microsoft and Lindows Settle TM Dispute

In what some are viewing as a move to protect their "Windows" trademark against the possibility of being considered generic or descriptive and, hence, not protectable, Microsoft has agreed to pay Lindows $20 million in settlement of its trademark lawsuit against the fledgling company over use of its name, which Microsoft alleged was infringing on the Windows trademark.

Lindows won a major point earlier this year, when the court ruled that the issue of whether the term "Windows" is generic should be decided by the jury based on the term's usage in 1985, not according to its usage today. Evidently, Microsoft decided to take no chances.

Lindows has agreed to change its name to Linspire within 60 days, and to refrain from using a name that includes -indows or -indoz, although it can retain certain domain names as redirect sites for 4 years, after which it will turn over all domain names with the Lindows mark incorporated in them.

Lindows will also publicly announce with Microsoft that they acknowledge the validity of the Microsoft trademark on the word Windows, will remove four copyrighted Windows Media Files from its products, and will abandon with prejudice all pending trademark applications involving the Lindows mark. Microsoft will enter into a Windows Media Format Components License with Lindows.

http://www.internetnews.com/dev-news/article.php/3383071

http://online.wsj.com/article/0,,SB109024423192767317,00.html?mod=dartTAR
(Subscription req'd.)

Agreement filed with the SEC:
http://tinyurl.com/3zpf3

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Fri May 28, 2004

Google Again Sued for TM Infringement Over Contextual Ads; Changes Policy

Search engine company Google has been sued again, this time by Geico, for selling ads to competitors of Geico based on terms trademarked by Geico. American Blind and Wallpaper Factory, Inc. are already suing Google over the same issue.

If, for example, you typed in "car insurance" in Google's search engine, you would be served, along with the search results, a list of paid ads, which could be from any car insurance company that has purchased such contextual ads. Ads like this are considered very powerful simply because you've already indicated an interest in the topic. And, of course, even more so since you might be searching because you plan to buy.

American Blind, however, is suing over the use of the word "American" and Wallpaper Factory over the word "wallpaper". These are normally generic words, usable by anyone. In the American Blind case, Google late last year asked the court for a declaratory judgment that use of the word "American" does not infringe.

When Google was new, it acceded to companies' requests to cease using trademarked words as keywords, but now there has been a change in policy. The company says it will only review trademark complaints that deal directly with the actual text in an ad, not the keywords used to decide what ad to show. These keywords are never actually seen by the public. So the issue has now crystalized, and more lawsuits can be expected, until this new area of law has been clearly decided. http://www.abanet.org/journal/ereport/my28trademark.html

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Thu May 27, 2004

Netherlands Court Rules Lindows Can Keep Its Company Name

The same court that earlier ruled in favor of Microsoft and against Lindows, the fledgling Linux software company, has now ruled that the embattled company may keep the name Lindows as its corporate name.

After the earlier ruling, Lindows stopped selling products with the corporate name, using Linspire instead. It uses the corporate name only in small print on its web site and has a disclaimer, letting all know it is not affiliated with Microsoft. Microsoft's original trademark complaint was that the name Lindows, being similar to Windows, might confuse the martketplace.

Not satisfied, Microsoft pursued with a second lawsuit, asking the same Netherlands court to rule that this, too, was a trademark violation and that the use of the corporate name was still infringing. The court disagreed, and now Lindows does not have to change its corporate name worldwide.

"Not every use of the business name Lindows infringes on the Windows trademark," Judge Sj. A. Rullmann said in the decision.

http://tinyurl.com/2u6sh

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