Posts Tagged ‘trademark’

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L&G Wins Injunction

Friday, November 16th, 2012

Lombard & Geliebter LLP partners, Mathew Lombard and Darren Geliebter, secured a trademark victory for Aventis Pharmaceuticals Inc.

After an opposition proceeding at the U.S. Patent & Trademark Office’s Trademark Trial & Appeal Board (“TTAB”), Aventis Pharmaceuticals filed an appeal with the District Court for the Southern District of New York seeking review of the TTAB’s decision.

When negotiations with the applicant/infringer failed to achieve a settlement, Aventis pursued the action in court.  On September 28, 2012, Judge Engelmayer issued a default judgment in favor of Aventis.   The order finds that Heal the World, Inc.’s applied-for trademarks LAZACOR and LAZACOR+ infringe and dilute Aventis’ NASACORT mark.

Accordingly, the court ordered the U.S. Patent & Trademark Office to refuse registration of LAZACOR and LAZACOR+, enjoined Heal the World from ongoing use of the marks and ordered Heal the World to destroy existing products, labels and advertising and to take down any and all web sites using the LAZACOR marks.

The deadline to appeal has expired, and the court’s order stands.

We congratulate Aventis Pharmaceuticals and its parent company, Sanofi, for a successful action.

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Madrid Protocol Tip: Calculating Office Action Deadlines

Tuesday, September 27th, 2011

Don’t get tripped up when calculating the deadline within which to respond to an Office action issued in connection a Section 66(a) application at the U.S. Patent & Trademark Office. A response to an Office action issued by the USPTO is due within six months of the date on which the USPTO sent the action to the International Bureau (IB), not the date on which the refusal was processed by the IB.

You can find and confirm the date on which the USPTO sent the action to the International Bureau on the USPTO’s TARR database record for the subject application. It will likely look something like this:

2011-05-29 – Non-Final Action Mailed – Refusal Sent To IB

To be clear, the six-month deadline within which to respond to the Office action must be calculated from this date (using our example, from March 29, 2011). Not from the date the Office action was written, which is also typically noted in the TARR Prosecution History, looking like this:

2011-05-28 – Non-Final Action Written
I suppose that it’s not the worst thing in the world to mistakenly rely on the earlier date on which the Office action was written, as submitting a response within that time period will not result in a late filing. Things can get a little more confusing when you receive official notification of the provisional refusal of protection from WIPO. In this notification, you will see the following dates set forth:

Date on which the notification was sent to WIPO (mailing date): 29/05/2011

Date of receipt by WIPO: 29/05/2011

Date of notification by WIPO to the holder: 31/05/2011

This is where a little sloppiness or simple lack of sophisticated knowledge of the intricacies of the Madrid Protocol rules can really cause trouble. If an unsuspecting docketing clerk calculates the response deadline using the “Date of notification by WIPO to the holder” date (which is also the date indicated at the top of the letter on which the notification is sent), then there is a real danger that the applicable deadline will be missed.

In summary, be aware that a response to an Office action issued by the USPTO in connection with a Section 66(a) application is due within six months of the date on which the USPTO sent the action to the International Bureau (IB), not the date on which the refusal was processed by the IB, and not on the date of notification by WIPO to the holder (the applicant).

 

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Spin Master Sues Crayola for Trademark Infringement

Thursday, July 1st, 2010

Spin Master Sues Crayola for Trademark Infringement http://bit.ly/9Kgyxw

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Israel Joins the Madrid Protocol International Trademark Treaty

Thursday, July 1st, 2010

Effective September 1, 2010, Israel officially accedes to the Madrid Protocol.

The Madrid Protocol is an international treaty that aims to facilitate the securing and maintenance of trademark protection on an international basis. The Protocol is administered by the International Bureau of WIPO – the World Intellectual Property Organization. The Madrid Protocol is intended to be a simple mechanism to obtain and maintain registration of trademarks and service marks in multiple jurisdictions through a single trademark office.  So if utilized effectively, for example, it eliminates the need to file separate national trademark applications in each respective jurisdiction. For an updated list of members of the Madrid Protocol trademark treaty, visit www.wipo.org.

Generally speaking, the Madrid Protocol is a useful and cost-effective tool to utilize when seeking trademark registration in approximately five or more Member Countries.  Among the 76+ Members are the U.S., the European Union, Australia, Japan, and China.

A sample of some countries and regions that are not a part of the Madrid Protocol include: Canada, Egypt, Hong Kong, Indonesia, Malaysia, Mexico, New Zealand, the Philippines, South Africa, Taiwan, Thailand, the Arab Region (Lebanon, Iraq, etc.), and the Latin American region (Brazil, Argentina, Chile, etc.).  Therefore, in order to obtain trademark protection in those countries, separate trademark applications would have to be filed in each country through the respective national trademark offices.

If you have any questions relating to the Madrid Protocol or trademark law in general, please call Darren Geliebter or Mathew Lombard at 212-551-1755.

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Domain Name Disputes: UDRP Basics

Wednesday, June 30th, 2010

If another person or company has registered a domain name that consists of your trademark, you may be in a position to avail yourself of an effective administrative procedure called the Uniform Domain-Name Dispute Resolution Policy (often referred to as the “UDRP”).  All registrars must follow the UDRP.  Under this policy, most types of trademark-based domain-name disputes must be resolved by agreement, court action, or arbitration before a registrar will cancel, suspend, or transfer a domain name.

The UDRP is typically a 2-month procedure to be used against cybersquatters, the abusive registration of domain names that copy or play off of trademarks owned by other companies, and similar disputes.

A UDRP proceeding is initiated when the holder of trademark rights files a complaint with a dispute resolution service provider approved by ICANN (Internet Corporation for Assigned Names and Numbers).  In order to succeed (a successful outcome being the panel ordering transfer of the domain name to the complainant), a 3-part test must be met:

  1. the respondent’s domain name is identical or confusingly similar to a TM or SM in which the complainant has rights;
  2. the respondent has no RIGHTS OR LEGITIMATE INTERESTS in respect to the domain name; and
  3. the respondent’s domain name has been REGISTERED and is being USED IN BAD FAITH.

The Respondent (the party that allegedly registered the domain name in bad faith) is deemed to have rights or legitimate interests in domain name if, before receiving notice of the dispute, it has used, or has made demonstrable preparations to use, the domain name or a name corresponding thereto in connection with a BONA FIDE offering of goods/services.

If you have any questions relating to trademarks, domain names, copyrights, trade secrets, or any other intellectual property issues, please call Darren Geliebter or Mathew Lombard at 212-551-1755.

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Failblog.Org Finally Hits the TM Field

Saturday, June 26th, 2010

With a cease and desist letter concerning “Unicorn:  The New White Meat”.  More here.

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Reasons for Registering a Trademark both with the USPTO & Internationally

Friday, June 25th, 2010
  • Valuable Asset – The most important reason to register your trademark is to preserve your rights in this valuable asset. In many countries of the world, even though you have created a trademark and are using the trademark, if you do not register that trademark, you have no rights in it. A third party can misappropriate “your” trademark and obtain ownership rights by registering before you do. Although there are many other countries, in addition to the United States, which provide certain rights to mere trademark users (i.e., common law rights that commence as of first use), asserting trademark rights based on mere use of a trademark is expensive and time consuming, not to mention the fact that you may fail if your usage is not sufficiently notorious. Thus, a trademark registration is a valuable asset for use in asserting your trademark rights against other parties. Furthermore, since a trademark registration is viewed as an asset, it can be used to collateralize a loan or it can often be sold to a third party.
  • Fend Off Other Parties – Trademarks can be misappropriated innocently by coincidence, or intentionally, by competitors, distributors, or professional trademark pirates. Trademark pirates can learn about new and upcoming trademarks by attending trade shows and watching the media and thereafter seeking to register these trademarks in strategic foreign countries. They hope to sell these trademarks at a handsome profit to the companies which introduced the trademark. If you register first, you not only foil the trademark pirate, you also make it easier for other parties to determine that the trademark is already protected when they do a trademark search on a new trademark that they are considering using.
  • Prevent Trademark Dilution – Another important reason to register trademarks is to prevent what is known as “dilution”. Dilution occurs when a number of companies use similar trademarks on similar goods. Potential purchasers are then exposed to numerous trademarks that have certain similarities as to these related goods, and this minimizes the legal and practical value of a trademark as a source identifier. Other companies are much less likely to adopt a trademark which is similar to or identical to your trademark if you have taken the necessary steps to register it. If you do not register your trademark, it is much more difficult for other parties to become aware of your interest in the trademark.
  • Potential Loss of Goodwill – Another danger is the loss of good will which can arise by an infringing product or service of poor quality. This can happen when someone else enters the marketplace and commences the sale of goods or services with the same or a similar mark. If those goods or services are of poor quality, purchasers may well associate the poor quality item with your company, resulting in your loss of good will and sales. However, this is less likely to occur if you register your trademarks, since many companies take steps to avoid infringing a trademark of which they are aware.
  • Defensive Registrations – Trademarks can also be registered in nearly all countries in the world outside the United States as a defensive measure. In those countries, a company or individual need not use its trademark prior to obtaining a registration. Therefore, even in potential markets, you can prevent a third party from registering or using a trademark if you are the first party to obtain a registration. By obtaining a registration in advance of your use, you can be virtually assured of the unfettered ability to exclusively use your trademark in that country provided you begin use before the registration is subject to cancellation for non use.
  • Licensing the Trademark – Another reason for registering trademarks is the monetary value of a trademark registration per se. Besides being a property right which can be sold or collateralized, a trademark can be licensed. Quite often, companies enjoy substantial revenue in royalties from licensing their trademarks. If a trademark is licensed, however, it is very important, not only to register the trademark, but also to record the license agreements, where possible. License agreements must be carefully drafted to assure quality control of the licensed products and/or services by the trademark owner. A trademark license should be reviewed by an attorney who is knowledgeable in these matters, since the improper drafting or enforcement of a license agreement or the failure to record a license agreement can result in the invalidity of the trademark.

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Benefits of Trademark Registration with the USPTO

Friday, June 25th, 2010

Every now and then I think it’s worthwhile to remind everyone of the benefits of registering your trademark with the U.S. Patent & Trademark Office:

  • Prima facie evidence of the validity of the registered mark and registration, the registrant’s ownership of the mark, and the exclusive right to use the mark in commerce in connection with the specified goods or services.
  • Prima facie evidence of continued use since the filing date of the application.
  • “Incontestability” after five (5) years of continuous use and the filing of an affidavit conforming to the requirements of 15 U.S.C. § 1065. Incontestability precludes cancellation of the registration on the basis of prior use or descriptiveness.
  • Constructive notice of the registrant’s claim of ownership of the mark.
  • Mark will be easily found on searches conducted by third parties.
  • Nationwide rights (with certain qualifications).
  • The right to bring suit in federal court regardless of diversity.
  • Constructive “first use” date as of the filing date of the application (applies to intent-to-use applications).
  • Statutory remedies, such as mandatory treble damages and criminal penalties in counterfeit cases.
  • The ability to bar importation of goods bearing infringing trademarks by depositing the registration with U.S. Customs Service.
  • Rights under the Paris Convention, including Convention priority rights on foreign filings and the right to registration abroad based upon registration in the United States.
  • Deter a second comer from adopting a similar mark, thus avoiding expensive and time-consuming litigation.
  • Allowed to use the ® designation in connection with the registered mark.

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ICANN Establishes 1st Internet Top-Level Domains in Cyrillic characters

Friday, May 28th, 2010

ICANN approved use of non-Latin characters in Internet domains last Fall and has now established the 1st Internet Top-Level Domain (TLD) in Cyrillic characters, assigning Russia the .рф (.rf, for Russian Federation) TLD. TLDs in Chinese and Arabic language characters are on deck.

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Facebook allowing users to create personalized URLs/usernames for their Facebook Pages

Friday, June 12th, 2009
Facebook Inc., the online social network, will soon allow users to create personalized usernames for their Facebook pages (e.g. facebook.com/[your name]).  The introduction of this new feature will commence at 12:01 AM EDT on Saturday June 13, 2009.  This new feature poses significant risks of cybersquatting to trademark owners, just as the unlawful registration of domain names has done over the past years.
Facebook has offered trademark and brand owners an opportunity to prevent Facebook users from using their trademarks as part of their usernames by providing a form, which can be accessed at:

http://www.facebook.com/help/contact.php?show_form=username_rights
At this time we strongly urge our clients, as trademark owners, to visit the Facebook site and register trademarks before any cybersquatters get there first.  The clock is ticking so please act quickly.

For Facebook’s Notice of Intellectual Property Infringement (Non-Copyright Claim), please go to:  http://www.facebook.com/copyright.php?noncopyright_notice=1

If you have any questions about this recent development or need any assistance, Matt and I are here to help.

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