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Archive for February, 2010
Apple Encounters iPad Trademark Obstacles
Friday, February 12th, 2010Verizon Settles Trademark Domain Case
Thursday, February 11th, 2010Verizon 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.
Best Practices To Prove Bona Fide Intent to Use a Trademark
Tuesday, February 9th, 2010Section 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:
- trademark searches conducted;
- logo design work;
- proposed and preliminary marketing plans and test-marketing efforts;
- steps to develop packaging;
- product or service research or development;
- steps to obtain required governmental approval;
- steps to secure suppliers and/or acquire distributors;
- business plans connected to the mark;
- any executive feedback;
- any related domain name registrations;
- consumer surveys;
- correspondence with third party vendors;
- visits with realtors to view potential sites on which to offer the applied-for goods or services;
- quotes for necessary equipment to deliver the applied-for goods and services;
- web site development;
- collaborators or potential investors;
- any correspondence relating to the proposed goods or services;
- any actual current uses of the mark;
- a list of any company personnel involved in the steps taken to effectuate use of the trademark in commerce.
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
Second Circuit’s Important Decision Addressing Dilution Under Federal Trademark Dilution Revision Act
Tuesday, February 2nd, 2010The Second Circuit recently issued a decision holding that dilution claims can prevail even when the marks at issue are not substantially similar. Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 2009 WL 4349537, No. 08-3331 (2d Cir. Dec. 3, 2009). The extent of similarity remains, of course, a significant factor, but one that must be considered along with the other factors as set forth in the 2005 Federal Trademark Dilution Revision Act (“TDRA”) in determining whether or not likelihood of dilution by blurring has occurred. The six factors set forth in the TDRA are:
- The degree of similarity between the mark or trade name and the famous mark.
- The degree of inherent or acquired distinctiveness of the famous mark.
- The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.
- The degree of recognition of the famous mark.
- Whether the user of the mark or trade name intended to create an association with the famous mark.
- Any actual association between the mark or trade name and the famous mark. 15 U.S.C. Sec. 1125(c)(2)(B).
In the Starbucks case, the district court found that the lack of substantial similarity between STARBUCKS and CHARBUCKS was sufficient, in and of itself, to defeat Starbucks’ blurring claim. The Second Circuit reversed, instead holding that it was error to require “substantial similarity.” Instead, the degree of similarity is but one of six factors to be considered in the dilution by blurring analysis.
Feel free to contact our office at any time to discuss this case and how it may impact your business and intellectual property rights.
Darren M. Geliebter – dgeliebter@lgtrademark.com
G. Mathew Lombard – mlombard@lgtrademark.com
By Phone: 212-551-1755
Save The Date || May 25, 2010
Tuesday, February 2nd, 2010