From mondaq.com, this discussion of “certification marks” and the current state of the law.
Archive for April, 2005
Certification Marks: A Primer
Friday, April 29th, 2005Apple: Sued
Friday, April 29th, 2005TigerDirect.com has sued Apple Computer for trademark infringement.
The lawsuit alleges that Apple’s use of the trademark Tiger for its Mac OS X 10.4 operating system infringes its own TigerDirect mark.
The suit, which was filed in the United States District Court for the District of Florida, asks for a temporary restraining order and injunction to stop Apple from using the word “tiger” online or in printed materials.
The suit also cites unfair trade practices in connection with its recent marketing campaign. TigerDirect says Apple’s use of Tiger “is causing confusion, mistake and deception among the general purchasing public.”
A preliminary injunction hearing has been scheduled for Tuesday, May 3, 2005.
Jupiter Research analyst Joe Wilcox cogitates: “I see plenty of other ‘tigers’ placing ahead of TigerDirect in the three major search engines. My question is, why single out Apple when a government agency, a non-profit organization, a famous golf pro and a magazine all placed before TigerDirect with the keyword ‘tiger’?”
Umm…because in this case both Tiger marks are being used in connection with computer products or services.
Big TM Award in China
Wednesday, April 27th, 2005Bonneterie Cevenole SARL, a French fashion company won $93,000 judgment against three local Chinese companies.
Though the case appears confusing, it’s good to see IP being safeguarded in China.
Gallup Struggling To Keep TM
Sunday, April 24th, 2005This article from law.com discusses the difficultly The Gallup Organization is having difficulty protecting its Gallup trademark around the world.
The Gallup Organization is now fighting to regain control of a trademark it believes it ought to control worldwide. Gallup’s main foe is a London-based market research company, Taylor Nelson Sofres plc, which in the 1990s and early 2000s acquired several Gallup-branded companies in Argentina, Denmark, Estonia, Finland, Latvia, Lithuania, Norway and Sweden. TNS also owns a majority stake in EOS Gallup Europe in Belgium, and holds Gallup trademarks in Germany. Many of these companies acquired the right to the Gallup name through letters — not formal licenses — signed by Gallup.
The battle between Gallup and TNS is now playing out in courtrooms in Belgium, Germany, Russia and even Kazakhstan — almost everywhere except the United States. TNS is adamant that The Gallup Organization has no worldwide claim to the Gallup name. “The [Gallup] brand is diffuse,” says Raj Afghan, TNS’ group IP counsel. “The company has established rights in the United States,” says TNS in-house legal counsel David Stanley. “But it isn’t the whole world.”
Again, an interesting read from trademark practitoners.
Sly Sued…
Friday, April 22nd, 2005by…well…Sly. Story here.
It would seem that Sylvester Stallone recently launched a men’s lifestyle magazine that he called Sly. However, just over a month after the launch of the magazine, Sly [the man] has been slapped with a $1 million dollar lawsuit by an upstart magazine with the same name that targets women.
In its lawsuit filed Tuesday in Manhattan Federal Court, Sly Magazine LLC is accusing American Media, publisher of Stallone’s Sly, of jumping the bell and swiping the moniker before the former’s own planned roll out later this year.
This should prove to be interesting since Sly (for women) isn’t slated to launch its premiere issue until later this year. Sly‘s (for men) premiere issue debuted on March 5th. On the other hand, Sly (for women) launched its web site announcing its magazine in November 2004.
The case involves a number of trademark issues – some less defined and certain than others. If the suit doesn’t settle, it should be interesting to watch.
My research indicates that the published of Sly (for women) filed a trademark application for SLY covering magazines, journals, newsletters, newspapers, pamphlets, books, and other published materials in the nature of websites, online and printed materials which offer information or services on fashion, accessories, gadgets, career and other lifestyle interest subjects on July 1, 2004. However, it does claim a date of first use of June 30, 2003. Hmm? Curiouser and curiouser…
On the other hand, it seems that Sylvester (and his publisher) have not yet filed a federal trademark application for his version of Sly. Perhaps they were aware of the prior application and sought to launch first? Most interesting…for trademark lawyers, anyway.
For those who are interested, the Sly (for women) web site can be viewed here.
Isn’t It Obvious?
Friday, April 22nd, 2005According to Pharmabiz.com,
The [Indian]Intellectual Property Appellate Board (IPAB) has upheld the decision of the Assistant Registrar of Trademarks, Ahmedabad to reject the trademark ‘Dopamine’ applied by Torrent Pharmaceuticals, as it is a non proprietary generic name of a single chemical compound and as such it cannot be registered as a trade mark.
The opposer, Reddy’s Labs, claimed that Dopamine is a non-proprietary generic name and as such, it should not be allowed as a trademark under any circumstances. It is the name of a particular chemical compound which has a therapeutic property of being an ‘ad energic’ and this fact is well known to the doctors, chemists, pharmacists and all other persons associated with the pharmaceutical trade, and thus does not qualify for registration under section 9 of the Trade and Merchandise Marks Act, 1958. Further, the mark is descriptive of goods, which also disqualify for registration.
The Assistant Registrar agreed with Reddy’s Labs and rejected Torrent’s application for DOPAMINE. Torrent appealed and the IPAB upheld the rejection.
Though we do not have access to the USP online, we have confirmed – in our 2001 edition – that dopamine hydrochloride is in fact a generic/INN/USAN name. So, the IPAB’s decision would appear to be correct.
Macy*s Enforces TM
Friday, April 22nd, 2005According this article,
Lisa and Paul Wendler never expected they’d be corresponding with a New York law firm when they named their floral design business.
Then, the overnight express letter from Macy’s arrived last winter accusing them of trademark infringement.
About three years ago, the Wendlers chose the name Macy’s Floral Design in honor of the family beagle, Macy. At the time, the parent company of Macy’s had not yet changed the name of The Bon Marche to Macy’s. That occurred earlier this year.
The Macy’s chain has stores that sell flowers, so the similar names could, according to the company, confuse customers.
“We didn’t know we were trying to infringe on anything,” Lisa Wendler said this week.
That was until a letter arrived from the New York firm of Amster Rothstein & Ebenstein. It explained that the name Macy’s is federally protected “intellectual property” and asked the Wendlers to change their business name.
They have; to Amour De Fleurs, French for “Love of Flowers.”
The change wasn’t simple, however.
Empty Threats
Friday, April 22nd, 2005From Newszap.com in Florida, this story:
Focused in the crosshairs of what he wouldn’t hesitate to describe as trigger-happy lawyers out to make a quick buck, Guy Bising and his partners at Jellyroll’s in Pahokee found themselves in an unusual predicament earlier this year.
It turns out the small restaurant and coffee shop posed a threat for someone out there in North Florida, and Jellyroll’s was asked to drop its name.
Representatives of the company in question contacted owner Ann Rust regarding her position on the matter, explained Mr. Bising.
“I don’t know that we have to do anything,” Ann, who liked the name, inspired by a childhood friend, told them. “You’re going to have to take on the whole city of Pahokee if you want to take on Jellyroll’s.”
The threat seems to have been enough.
After two letters asking Jellyroll’s to cease and desist from using the name any further, oh, and a lot of publicity later, Mr. Bising said the lawyers have kept pretty much quiet. Nothing more has been mentioned of the potential lawsuit, and Mr. Bising and his staff say they can now focus their energy on continuing to build up their local eatery.
It’s Coming: .eu
Friday, April 22nd, 2005It’s coming in 2006: .eu!
However, be wary:
The “.eu” domain will go live in December but the commission is warning potential cybersquatters to keep away. Registration for any domains will initially be limited to businesses and trademark owners.
If you want more information about the new gTLD, there is an information page here. You may want to check it out.
Also be wary of companies offering to register a .eu domain name on your behalf:
Some companies are already offering and charging individuals to register for a .eu Internet address in advance.
Martin Selmayr, the Commission’s spokesman for information society and media, said European citizens should be wary of such services.
“We are warning EU citizens to check carefully … It can’t be a completely serious offer,” Selmayr said, adding that only public bodies and companies with a trademark can register in advance, during a so-called sunrise period lasting four months.
“A commercial operation cannot register you today and cannot register you better than you can do yourself. You can register at the start of 2006,” Selmayr said.
DON’T PAY UPFRONT
Hans Peter Oswald, director of domainregistry.de, a company that helps companies and individuals register Internet names, said consumers should not be paying in advance for registration.
“The main concern is people asking for a pre-registration fee,” Oswald said, adding that people should pay only after they can see their .eu name is live.
TM Investigations
Friday, April 22nd, 2005Not Just For IP Lawyers Anymore
According to this article from Markenbusiness.com,
The Games Community are puzzled at the moment. What lies behind the name “Nintendo V-Pocket”? The company itself is maintaining a silence. Yet already, in Japan, an application has been made for a trademark for this name. Product class 28, games and toys.
The article concludes the above paragraph with, “This case emphasizes the fact that not only fans but also competitors can make use of trademark investigations.”
Really, however, this is less a trademark investigation and more of a simple search at the trademark office, which is many cases is online and free.
Relevant to our clients, the article notes:
Knowledge about the competition makes your own strategic planning easier- in the struggle for survival it is sometimes even essential. As trademarks become more and more important in competition, professional trademark observation has come into its own as a new instrument for watching the competition. But beware – not every marketing agency who deal in competition observing have the proper building blocks in place.
Trademark observation can be an important component of sound competition watching. Sometimes knowledge of old and new trademarks belonging to competitors is even decisive. Because, by virtue of trademark investigations, the instant at which a company becomes aware of any new activities on the part of the competition can be advanced far forward in time.
The general idea is straightforward. Whosoever applies for a trademark has a plan. However, the description of content pertaining to the trademark can be examined to ascertain the purposes for which the trademark is to be used. Are the competition working on a new product or are trademarks being bought and sold and does this indicate a new strategic alignment ?
There are only a few ways to gain knowledge of the plans of the competition from early on. You could try dealing surreptitiously with employees and risk paying high penalties for revealing company secrets. Or you get your information from sources which are freely accessible. That would be a more sound method and sometimes just as effective.