Verizon has reached a tentative settlement with 2Cool Guys, LLC, Warren Weitzman, and Arnold Trebach over alleged trademark infringement from domain name typos.
Typo domain names involved in the case included varizon.com, vierzon.com, and virazon.com.
Verizon has frequently sued entities that allegedly register and monetize typos of its trademarks.
Section 1(b) of the Trademark Law Revision Act of 1988 allows an applicant to file a trademark application based on an intent-to-use the mark in commerce. Assuming the application meets all other requirements of registration and proof of use of the mark in commerce is properly submitted, registration can be achieved. The applicant’s priority rights would then be established back to the filing date of the application.
A U.S. trademark application filed on an intent-to-use basis must include a statement that the applicant has a “bona fide intention” to use the mark in commerce. Likewise, if a trademark applicant relies on a foreign registration under Section 44(e) of the Lanham Act as a basis for U.S. registration, it must declare a bona fide intention to use the mark in commerce. A request for extension of protection of an international registration to the U.S. under Section 66 of the Lanham Act is also subject to the bona fide intent to use requirement.
If an applicant has filed an intent-to-use trademark application under Section 1(b) (or under Sections 44(e) or 66), it’s important to put itself in a position to be able to prove its bona fide intent to use the trademark in commerce as of the date the trademark application was filed.
The applicant’s bona fide intent to use the trademark should be documented as much reasonably possible. For example, a system should be created to organize and store proof of any of the following:
Feel free to contact our office at any time to discuss how your company can develop a system for memorializing the existence of a bona fide intention to use a trademark, or any other trademark law questions that you may have.
Darren M. Geliebter – dgeliebter@lgtrademark.com
G. Mathew Lombard – mlombard@lgtrademark.com
Phone: 212-551-1755
Yesterday’s New York Times contained an article by Alan Feuer entitled “A Study in Why Major Law Firms Are Shrinking“. In sum, like many other industries, it has to do with the economy. It has to do with clients demanding lower rates. It has to do with clients demanding that more work be done at flat rates. It has to do with clients refusing to pay exorbitant fees to support the lavish lifestyles of law firm partners who, at the example chosen by the author, White & Case, reported a drop in partner profits in 2008: “the average profit per partner last year [2008] was $1.6 million, down from $1.7 million the previous year, according to AmLawDaily, the Web site of The American Lawyer.”
Indeed, in the last two years White & Case has laid off 270 lawyers. Of those, 200 were recently notified that their jobs at White & Case had been eliminated. And the firm does not discriminate: junior associates as well as established partners have been let go. “Sometimes it was people who had recently joined the firm, but sometimes it was much-more-senior people at what seemed to be a natural break in their careers,” Mr. Verrier said of those who were let go.
Mr. Feuer laments that, “[t]he gentleman’s profession of the law is becoming a vestige of the past, removed enough from reality to be remembered, like phone booths or fedoras.”
Celebrity gossip Perez Hilton (né Mario Lavandeira) has won an injunction against those who operate the site PerezRevenge. The PerezRevenge site styled itself as an antidote to Lavandiera’s mean-spiritedness.
Here’s the rub: When Lavandeira started his blogging career he called his site PageSixSixSix (a rather obvious play on the New York Post’s Page Six gossip column). The Post objected, and won.
Then he adopted the moniker Perez Hilton, an obvious reference to Hilton heiress, Paris Hilton. Indeed, a good choice since both are famous for nothing.
“He also routinely doctors celebrity photos, arguing that sprinkling cocaine dots on them is a transformative use, entitling him to publish them.” Ugh.
It is ironic that one becomes famous “borrowing” from others, but when others borrow from you when seeking fame, you object like it’s nobody’s business… With any luck, Perez (and Paris) will just be a flash in the pan.
How ‘bout that picture?
Yesterday, McKool Smith announced a partial summary judgment award in favor of its client against fashion house Liz Claiborne.
The court’s ruling may be found here.
According to Bloomberg.com, corporatations are dropping high-priced Wall Street law firms in favor of mid-size and boutique firms (like us) who, most agree, offer far more value for the cost.
This is something we’ve known for a while. Unfortunately, it took a global recession for the corporate to realize this.
Not satisfied with dominating the amusement park and film industries (let’s not forget the plush toy and clothing markets), Disney is now selling Disney brand…[drumroll]…eggs. Yes, that’s right Disney’s selling its own brand of eggs.
You can see one of the TV ads below:
Pepsico (owner of the Tropicana brand) has done a 180 concerning its Tropicana packaging. I agree. The new packaging was very generic looking. It looked like a private label store brand – not the OJ leader.
In fact, I accidentally came home with grapefruit juice instead of orange juice one day. I wasn’t happy. I am not sure how Arnell thought this was a step forward for the brand’s image or how Pepsi execs approved this.
In trying to find some information about an Examining Attorney, I stumbled across a new (to me) site. It is http://www.usptoexaminers.com. According to USPTO Examiners, its mission is:
USPTO Examiners is a website designed for professionals to anonymously review, rank, and learn about a patent examiner or a trademark examining attorney who works at the United States Patent and Trademark Office (USPTO).
Patent examiners and trademark examining attorneys are public employees who help determine the technological and economical future growth of each industry and business in the world. A simple word such as “allowed” or “rejected” from a patent examiner or a trademark examining attorney could grow or financially burden a company, business, or individual. Accordingly, it is extremely important for the USPTO to have well trained patent examiners and trademark examining attorneys who understand that each of their decisions could benefit and/or harm an industry, business, and/or individual. Having highly competent patent examiners and trademark examining attorneys will result in the USPTO issuing high quality patents and trademarks.
I agree. I hope this site flourishes and becomes a useful resource for practitioners and the supervisors at the USPTO.
My former employer, Bristol-Myers Squibb Co., has announced it is selling its ConvaTec unit for $4.1 billion to two private equity firms: Nordic Capital and Avista Capital Partners. ConvaTec had been Bristol-Myers’ ostomy and surgical equipment.
Apparently, cash will be used to help finance Bristol-Myers’s strategy to shift its focus to biopharmaceuticals.