By Rebecca Kay
This Tuesday, members of DLA Piper's Fashion, Retail and Design Group assembled in Washington with retail clients from around the globe, for a working lunch entitled "Around the retail world in sixty minutes: Reflecting the top branding issues for retailers in 2012". As well as being a fantastic opportunity to catch up with industry peers, the event was a fascinating insight into topical issues and concerns.
More and more frequently, private companies which are not associated with the United States Patent and Trademark Office (USPTO) have been aggressively sending out misleading notices to trademark applicants and registrants seeking substantial fees for trademark-related “services” including but not limited to legal services, trademark monitoring services, recordation of trademarks with the U.S. Customs and Border Protection Agency, and private company registrations. These “notifications” (with invoices usually included) are typically sent via mail or e-mail and display names and official-looking letterhead resembling that of the USPTO. In addition to the confusingly similar names and/or graphics used by the soliciting entities, these come-ons also usually include accurate official USPTO data such as the trademark application serial number, registration number, classifications, filing dates, etc. – all of which is publicly available information.
World Intellectual Property Organization (WIPO) Director General Francis Gurry said the day “is an opportunity to celebrate the contribution that intellectual property makes to innovation and cultural creation – and the immense good that these two social phenomena bring to the world.” WIPO posted a number of suggestions for celebrating World IP Day. This year’s theme is “visionary innovators – people whose innovations transform our lives.”
What are you doing to celebrate World IP Day?
The Spring Edition of Law à la Mode is now available online: click here to view the e-magazine.
Reposted from YouTube
Mark Radcliffe, a partner at DLA Piper, talks with Bloomberg Law's Spencer Mazyck about protecting intellectual property for technology start-ups.
(Source: Bloomberg)
Reposted from DLA Piper's Law à la Mode Edition 4 - Winter 2011
By: Stefania Baldazzi and Annalaura Avanzi (Milan)
In 1967, the well-known Italian fashion designer Elio Fiorucci founded the fashion brand Fiorucci S.p.A. After more than two decades of success in Italy and around the world, Mr. Fiorucci sold the company and all of its creative assets to the Tokyo Company Edwin Co. Ltd in 1990. The sale encompassed all the Fiorucci trademarks, including numerous marks containing the element “FIORUCCI.”
In 1999, Edwin Co. registered the mark “ELIO FIORUCCI,” by filing an application with the Office for Harmonization for the Internal Market (OHIM), which is a body of the European Commission, for a broad category of goods, including cosmetics, apparel, footwear and leather products.
Reposted from DLA Piper's Law à la Mode Edition 4 - Winter 2011
By: Tamar Duvdevani (New York)
Aspirin. Thermos. Escalator. Cellophane. What do all of these items have in common? If your answer is “objects that MacGyver needs to get out of a sticky situation,” you may be correct, but that is not what we were looking for.
Each of these commonplace, generic terms for the objects that they define were once valuable intellectual property before they lost protection through “genericide,” the process by which trademark rights are diminished or lost as a result of overuse in the marketplace. Genericide can happen in a variety of ways. A trademark owner’s failure to police its mark, for example, can result in widespread use of the term by other sellers, thereby reducing the trademark’s ability to identify source. In other instances, a term intended by the seller to be a trademark for its novel product is understood by the public to be a generic name because there is no other word in the vernacular to describe the product. Both of these fates can be avoided by thoughtful branding strategies.
Reposted from DLA Piper's Law à la Mode Edition 4 - Winter 2011
By: Michael K. Barron, Sarah Phillips and Nadea Taylor (Boston and London)
“AdWords,” the paid, subscription-based Google referencing service which allows users to advertise their companies alongside Google search results, has recently been the subject of much legal scrutiny. In late September, the European Court of Justice (ECJ) gave a preliminary ruling on questions referred to it by the English High Court in the case between Interflora and Marks & Spencer (“M&S”), regarding the purchase by M&S of the Google AdWord “Interflora” and other similar AdWords.
In answering the questions referred to it, the ECJ repeated much of the recent jurisprudence in this area, in particular from the Google France case. Previous cases established that purchasing a third parties’ trademark as an AdWord would only amount to trademark infringement if such use would have an adverse effect on one of the functions of the trademark.
This e-newsletter is written by the DLA Piper Trademarks team. For more information about the articles or the trademark services of DLA Piper, please contact trademarkemea@dlapiper.com.
DLA Piper's Fashion Retail Design Group recently published Law a la Mode - Edition 4 Winter 2011, a legal fashion-style magazine that is distributed to clients and friends of the firm worldwide. Law a la Mode has a revolving editorialship and Edition 4 is the first to be edited by the U.S. offices.
Members of the U.S. editorial board include Ann K. Ford, Gina Durham, Tamar Duvdevani, Kiran N. Gore, Melissa Reinckens, Debbie Rosenbaum, Michelle Schaefer, Radiance A. Walters, and Job Seese (New York, Washington DC, and Chicago).
The magazine is available here.
We welcome your thoughts and comments on our latest edition.
Reposted from DLA Piper's Media & Sport Group Bulletin
Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell
UK Business Secretary Dr Vince Cable and Brazilian Minister Fernando Pimentel have signed a Memorandum of Understanding to improve cooperation between the UK and Brazil on intellectual property issues ("the Agreement").
Whilst attending the sixth annual Joint Economic Trade Committee ("JETCO") in London on 8 November 2011, Vince Cable and Fernando Pimentel signed the Agreement to cement ties between the UK and Brazil in relation to intellectual property. The Agreement confirms a commitment from both the UK and Brazil to work closely together to ensure that the intellectual property systems in the two countries promote innovation and growth.
The Agreement aims to make it both easier and cheaper for UK businesses to manage their intellectual property in Brazil and follows similar agreements signed by the UK with Nigeria and Mexico this year.
Reprinted from La A La Mode, DLA Piper's Fashion, Retail and Design E-zine
by Louis Puts (Brussels)
Online marketplaces such as auction sites are often used as platforms for selling unlawful fashion products. On 12 July, 2011, the CJEU rendered an important decision concerning the unlawful offers of cosmetic products with L'Oréal's trademarks on eBay. For the first time, the decision has clarified the circumstances under which online marketplace operators may be held responsible for unlawful trade-marked products offered for sale on their platform site, under trade-mark law, the E-Commerce and the IP Enforcement Directives.
The Autumn Edition of Law à la Mode is now available online: click here to view the e-magazine.
With a Belgian editorial team for this edition, we wanted to give a flavour of an up and coming fashion capital in the heart of Europe. With a mix of cultures from Europe and beyond, Belgium is fast becoming a key location for new design and innovation in fashion. More than just moules, frites and beer, we are fortunate enough to have some of the most renowned fashion academies in Antwerp and Brussels generating internationally known designers such as Dries Van Noten, Ann Demeulemeester, Martin Margiela and Olivier Theyskens.
As Belgium is also the hub of EU policy development and creation, we share with you our thoughts on the trends around policy making - steering you through the agenda and potential activity (page 4).
Sustainability being the buzz word of the moment in relation to product development, we have an insight from our UK team on the interplay between the sustainability debate and the fashion industry (page 5).
Reposted from DLA Piper's Media & Sport Group Bulletin
Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell
Ate My Heart Inc v (1) Mind Candy Ltd (2) Moshi Music Ltd (2011) - interim junction granted against online children's game company and its subsidiary
The High Court has granted an interim injunction preventing the promotion of an animated character known as "Lady Goo Goo" and its associated song due to the risk that the public would confuse it with the music artist Lady Gaga and her associated trademark.
Occupy Wall Street has filed a U.S. federal application for the trademark OCCUPY WALL STREET (U.S. App. No. 85454550) for use in connection with clothing and bags, periodicals and newsletters, and "a web site featuring photographic, audio, video and prose presentations featuring educational and entertaining materials relating to Occupy Wall Street and the Occupy Movement". On the same date, Fer-Eng Investments, LLC also filed an intent-to-use application for the trademark OCCUPY WALL STREET covering clothing and bags (U.S. App. No. 85454831).
For more information: http://money.cnn.com/2011/10/31/news/economy/occupy_wall_street_trademark/index.htm
Reposted from DLA Piper's Media & Sport Group Bulletin
Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell
Arsenal have successfully persuaded the Spanish Patent and Trademark Office to force a shop owner in Seville to change the name of her shop from 'Arsenale'.
Arsenal succeeded in demonstrating that the use of the name Arsenale for a hat, shoe and clothes store in Seville constituted a breach of Arsenal's trademark due to the risk of confusion between the two names.
The owner, Alicia Simon, registered the name Arsenale in 2007 and has faced a legal pursuit from the London club ever since. She claims that the name had nothing to do with the club and is in fact a reference to the Italian word given to shipbuilders' yards in medieval Pisa and Venice. Indeed, Ms Simon's assertion of cultural influences are supported by the location of the shop in the Arenal de Sevilla district, where Seville's medieval shipyards were historically located.
Ms Simon has subsequently appealed the decision to a Madrid tribunal.
Reposted from DLA Piper's Media & Sport Group Bulletin
Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell
The social networking site brings action against Twittad, an online advertising service, for use of the trademark "Let Your Ad Meet Tweets" in a battle to win trademark registration of the term "tweet".
Twittad, a provider of online advertising was granted registration of the mark LET YOUR AD MEET TWEETS in 2008. However, in a move to claim "tweet" as its own, Twitter has filed a complaint with the United States District Court in Northern California for the cancellation of Twittad's registration.
Giving its reasons for bringing the action, Twitter stated that Twittad's use of the mark "exploits the widespread association by the consuming public of the mark TWEET with Twitter and threatens to block Twitter from its registration and legitimate uses of its own mark."
The lawsuit argues that "tweet" became widely adopted by consumers and media outlets to refer to Twitter immediately after its launch. Prior to this, "tweet" was not generally known to the consuming public beyond its dictionary meaning and had no association with web-based social networking and communications services.
A recent decision of the Wenzhou Intermediate People's Court in China should put Western brand owners on their guard when being sued in China. It also provides yet another reminder of the importance to Western brand owners of filing first in China.
By Siân Croxon, John Wilks, and Damian Herrington
The Court of Justice of the European Union (CJEU) has given its ruling in the long-running Interflora v Marks & Spencer Adwords case. The CJEU has followed the Advocate General's opinion on this case and its own ruling in Google France by stating that trade mark owners can prohibit the purchase of their trade marks as keywords on web search engines, if the advertisements triggered do not allow users to ascertain the origin of the goods or services referred to in such advertisements. The ruling will be of particular significance to brand owners which - like Interflora - operate through a network of independent commercial enterprises. While the decision is largely beneficial to such brand owners, the Court's new guidance on the 'investment function' of a trade mark leaves open the possibility that some businesses will be able to continue to reserve competitors' trade marks as Adwords without being liable. The Court has left much of the application of its guidance to the case for the national court. The case will now go back to the English High Court for its final determination based on the judgment.
Reposted from Intellectual Property and Technology News, Issue 11, Q3 2011
By Darius C. Gambino and Tiffany Nichols
When companies form legal strategies to protect their IP assets and trade secrets, employment agreements are an essential part of the overall structure. Today’s work force is increasingly specialized, and companies extend across jurisdictions with different laws. In this competitive, potentially litigious environment, companies should consider customizing employment agreements for each position, and in some cases, for each individual employee, especially those in executive and leadership roles.
Excerpts from DLA Piper's INTELLECTUAL PROPERTY AND TECHNOLOGY NEWS - ASIA PACIFIC | Issue 2, Q2 2011
INTELLECTUAL PROPERTY AND TECHNOLOGY ALERT
The “dot-xxx” (.XXX) top-level domain is just days from its launch as the new home for adult content on the Internet.
As part of the launch, ICM Registry, the registry selected to maintain the .XXX top-level domain, is providing an opportunity for companies that do not want their brands associated with adult content to block their registered trademarks from being registered as .XXX domains, during a period named Sunrise B.
Whether or not your brand participated in the pre-sunrise reservation “wish list,” you will need to submit an application during Sunrise B, which runs from September 7 to October 28, 2011.
Reposted from DLA Piper's Media & Sport Group bulletin
Editorial Team: Nick Fitzpatrick, Duncan Calow and Patrick Mitchell
The goods were seized at a car boot sale, as part of a regular inspection by Trading Standards officers. The lighters displayed the Olympic symbol and London 2012, which are protected trade marks, and did so without the authority of the controller of those marks, The London Organising Committee of the Olympic Games. Various Olympic-related words and marks are given elevated protection under the Olympic Symbol (Protection) Act 1995 and the London Olympic Games and Paralympic Games Act 2006.
This seizure provides another example of trading standards officers working in conjunction with the organisers of the 2012 Games to seek to prevent so-called ambush marketing. We understand that steps are now being taken to trace the supply of these lighters.
Fashion designers and companies can seek to protect their jewelry and other accessory designs through copyright, trademark and/or design patent registrations. Copyrights, trademarks, and patents are separate and independent forms of law and protection; therefore, protection can be obtained in one or all of the three ways discussed in more detail below.
“Real World” MTV reality star Johnny Devenanzio has allegedly threatened to sue producers of the popular HBO show “Entourage,” claiming that they stole his nickname “Johnny Bananas” without his permission. Devenanzio claims that he has diligently developed the nickname over the course of five years on television through his “jerk-off” antics on various MTV reality shows.
Under U.S. trademark law, personal names are often considered “merely descriptive” and, thus, are generally not protectable trademarks absent a showing of acquired distinctiveness. Acquired distinctiveness (also known as "secondary meaning") is evidence that the proposed mark, which in this case is “Johnny Bananas”, has become distinctive as applied to the specified goods or services through exclusive and continuous use in commerce for at least five years.
In this instance, does Devenanzio have a valid claim of acquired distinctiveness in his nickname “Johnny Bananas” in connection with, perhaps, entertainment and/or television-related goods and services based on his alleged five-years use in commerce?
Follow up to my blog post SUING OVER THOSE INFAMOUS RED SOLES
The fashion world may have received yet another stifling blow from the federal court's decision in Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., et al., in which the court refused to grant Louboutin's request for a preliminary injunction against YSL on claims of alleged trademark infringement resulting from YSL's red-soled fashion heels arguably similar to Louboutin's. The court ruled that Louboutin's claim to "the color red" and its 2008 U.S. federal registration covering "women's high fashion designer footwear" were "overly broad" and "inconsistent with the scheme of trademark registration established by the Lanham Act." The court further reasoned that, "[a]warding one participant in the designer shoe market a monopoly on the color red would impermissibly hinder competition among other participants."
In light of the court's analysis, it is arguable whether this decision has, in fact, encouraged or stifled fashion innovation. On the one hand, this decision may have opened the door for other shoe designers to start using the color red or another arguably distinctive color on the soles of their fancy (or not-so-fancy) footwear, which in turn may further competition in the marketplace, as the court intended. On the other hand, this decision could potentially discourage fashion designers from maximizing their creativity and innovation in designing apparel and footwear out of fear that third-party copy cats will seek to imitate or trade off of their designs.
Undoubtedly, the court's decision presents both opportunities and risks in the fashion industry that are yet to be revealed. However, as for those fashionistas who paid a pretty penny for Louboutin's signature red soles and for Louboutin himself, does this decision have the potential to negatively impact the value and/or notoriety of Louboutin's precious footwear?
DLA Piper ranked #5 among the Top 100 trademark filing law firms in 2010, in a joint study recently released by Corporation Service Company and World Trademark Review. The study reports that in 2010 DLA Piper filed a total ofnearly 1,000 trademark applications for its clients, according to USPTO filing data. Since 2004, DLA Piper has consistently ranked among the top five law firm filers in similar surveys. Our own Ann Ford, US Chair of our Trademark, Copyright, and Media practice, ranked in the Top 20 in the nation for top individual trademark filing lawyers.
Guest blog post by Melanie Garcia. Melanie is a Summer Associate in the Washington, D.C. office of DLA Piper LLP. She is a J.D. Candidate at the Georgetown University Law Center.
Unhappy customers have been embracing the Internet for years to vent their frustrations with companies. Lately, several bloggers have capitalized on websites that lampoon popular companies and companies are beginning to fight back.
Recently, Forever 21 threatened to sue fashion blogger Rachel Kane for diluting its brand and trademark with her blog, WTForever21.com. Forever 21, a global retail chain of clothing and accessories for young men and women, reportedly sent cease-and-desist letters to Ms. Kane regarding her blog. On WTForever21.com, Ms. Kane posts and satirizes images of clothing from Forever21.com. For example, on April 14, 2011 Ms. Kane posted a picture of earrings from Forever 21 with the following caption, “Those bead curtains that provide no privacy and serve no other purpose than to get tangled around each other, or in your hair when you walk through them, came back from 1973 and decided to become earrings.” While this is understandably offensive to the company, it seems Forever 21 has chosen not to pursue further action against Ms. Kane.
There are many reasons why Forever 21 may have chosen not to bring a suit against Ms. Kane.
Guest blog post by Megan A. Cosgrove and Carissa L. Bouwer. Megan and Carissa are summer associates in the Sacramento office of DLA Piper. They attend University of the Pacific, McGeorge School of Law and will graduate in 2012.
Last weekend, we decided to host a wine and cheese party for a small group of friends. We ran down the list of everything we needed. Small plates? Check. Wine glasses? Check. Napkins? Check. Those little wine glass charms so people can identify their glasses? Check check. Brie? Check. Parmesan? Che…wait…we have a hard white pungent cheese, but I’m not sure that it’s from Parma. Does it need to be? And that pastry…we can’t just assume it’s Cornish. What if it’s not? We’d be liars. All of our closest friends would find out that our Cornish pastries weren’t from the UK and they would never come back for wine, cheese, and delish appetizers again.
Perhaps this isn’t a conversation you’ve had before a party. But let’s be honest, our tastes, and our conversations, have changed quite a bit since our college days. I’m pretty sure I never bothered asking where the beer in that keg came from, but it might be time we ask where our wine, cheese, and other food products come from. And interestingly enough, the birthplace of many foods and beverages we consume are actually revealed in the name. And a lot of imposters are going to have to change.
In 2000, the California Legislature agreed with Napa Valley wine producers that the term “Napa” signified quality in wine. They were concerned that novice wine buyers would be duped into paying more for a lower quality wine if the term “Napa” did not designate that the wine was actually from the well-known grape growing region of California. As a result, the legislature passed Bus. & Prof. Code § 25241, providing that wine made from grapes grown in other regions could not be branded “Napa wines.”
NEWS
Costa Rica: Ratification of Hague Apostille Convention
Greece: New Draft Trademark Law to Be Submitted to Parliament
New Zealand: Changes to New Zealand Designs Practice
Portugal: Creation of a Specialized Court of Intellectual Property, The IP Court
CASE LAW
CA Paris, Pôle 5 ch. 2, April 1st, 2011, Sté Elytel v/ Sté Univers Poche
CheapFlights International Ltd v OHIM, Cases T-460/09 and T-461/09, 5 May 2011.
DHL Express France v Chronopost SA, Case C-235/09, 12 April 2011.
In June, our team was asked to contribute to a Managing Intellectual Property Magazine feature on trademark protection for slogans/phrases. Our responses were provided alongside responses from seven other practitioners from around the world as part of a global practice feature MIP runs on a monthly basis. Here are our answers, and we encourage you to read the others in the June 2011 edition of MIP here.
Date: Thursday 14 July 2011
Time: 14:00-16:15
Location: Vrije Universiteit Amsterdam, Gebouw Initium, De Boelelaan 1077.
Language: English
Admission: Free
Information
On 14 July 2011 the Trademark Law Institute organizes a seminar on the ruling L'Oreal v. eBay (case C-324/09). This ruling of the European Court of Justice is expected on 12 July 2011. This seminar will discuss the liability of operators of electronic marketplaces, such as eBay, etc. Apart from this recent ruling of the European Court of Justice, the seminar will also touch upon the legal landscape in the US and elsewhere in Europe.
The seminar is organised by the Trademark Law Institute (TLI), a cooperation of the universities of Groningen, Leiden and the Radboud Universiteit Nijmegen.
The seminar is open to the public and intended for lawyers, company lawyers, trade mark attorneys, students, lecturers and others who are interested in the legal aspects surrounding trade mark law and the internet.
At a special meeting in Singapore, the board of directors of the Internet Corporation for Assigned Names and Numbers (ICANN) approved a plan that will bring wide-reaching changes to the Internet's generic top-level domain structure.
The measure, which allows private companies and other organizations to create new website domain name suffixes (such as dot-movie, dot-insurance, dot-brand, or dot-dlapiper, for example), passed by a vote of 13-1, with two members abstaining. With the plan approved, ICANN now launches a six-month Global Communication Campaign designed to raise awareness about the coming changes among consumers and potential applicants.
Reposted from DLA Piper's IPT ITALY BLOG
According to rumors coming from the Italian Patent and Trademark Office (UIBM) it is only a matter of weeks before the much awaited activation of a trademark opposition procedure in Italy.
An administrative procedure to oppose to applications for identical or similar trademarks was actually introduced in the Italian system back in 2005, with the enactment of the Industrial Property Code. However, it then remained dead letter, waiting for implementing ministerial decrees. Following the recent adoption, on 11 May 2011, of a decree which also incorporates the draft standard form to be used for filing the opposition, everything seems now ready for the official launch of the new procedure as of July 2011, when the UIBM will also start publishing its monthly online Official Trademarks Bulletin.
The opposition procedure will be open to owners of earlier trademarks registration/application and exclusive licensees. According to the above-mentioned decree of May 2011, the procedure is applicable in respect of (i) any trademark application filed in Italy as of 1 May 2011 and of (ii) the Italian designation of any international trademarks published on the first July issue of the WIPO Gazette of International Marks.
As the timeframe within which the opposition can be filed is rather tight (3 months from the publication of the relevant application), it is highly advisable that trademark owners and exclusive licensees have in place an adequate surveillance system to be able to promptly detect any trademark applications potentially conflicting with their earlier rights. Moreover, whoever intends to file an opposition on account of an earlier trademark must be ready to provide evidence of its use. Lacking evidence of genuine use of the earlier trademark the opposition will be rejected The notice of opposition to registration of a trademark is to be filed in Italian, using a standard form. Once completed, the form needs to be transmitted in 3 copies to the UIBM by hand, registered letter or authenticated e-mail.
If you are interested in this topic and you want to know more, feel free to contact me, Chiara Garofoli (chiara.garofoli@dlapiper.com)
Posted by Alexander Tsoutsanis, senior associate with DLA Piper in Amsterdam.
On Monday 23rd May, Alexander Tsoutsanis spoke at Stanford during the Stanford Intellectual Property Seminar for IP Judges from the People's Republic of China. Alexander was a panelist speaking about recent developments in Europe on the protection of well-known marks. Apart from explaining the European approach on determining blurring, tarnishment and free-riding associated with well-known marks, Alexander also discussed the general impact of the recent decision of the European Court of Justice in DHL v. Chronopost of 12 april 2011. This decision about Community Trade Marks basically obliges European courts to limit a cross-border injuction to (only) those jurisdictions where the functions of the plaintiff's mark are harmed (and e.g. confusion in the market place occurs). This ruling may therefore require brand owners to revise their litigation strategy in cross-border trade mark injunctions in the European market. The panel session was part of a week-long visit of Chinese IP Judges to Stanford, in which leading scholars and legal counsels explained the current developments and best practices in protecting Intellectual Property.
Alexander is a senior associate with DLA Piper in Amsterdam and also a part-time assistant professor in Intellectual Property Law at Leiden Law School.
The Internet and social media feed our seemingly insatiable appetite for round-the-clock celebrity news and gossip. In the process, they have radically transformed the playing field for celebrities, and wannabe celebrities, by making them more readily accessible to the public and more famous than ever before. The savvy celebrity, recognizing that fame can be so fleeting, is keen to take advantage of a sudden spike in interest before the flame sparks out and the crowds have moved on to the next big thing.
It is no surprise, then, that actor Charlie Sheen, who has been much in the news lately, has apparently been busy filing trademark applications through what is believed to be a related company, Hyro-gliff. Sheen has received much notoriety for statements he has made in recent interviews, which statements have caught on with the public at large and entered into the lexicon of pop culture. In particular, Hyro-gliff has filed the following twenty-six intent-to-use based trademark applications at the United States Patent and Trademark Office for a variety of goods and services:
|
App. No. |
Mark |
|
85302835 |
MASHEEN |
|
85287333 |
SHEENIUS |
|
85274004 |
Design |
|
85272939 |
VIOLENT TORPEDO OF TRUTH |
|
85272938 |
CHARLIE SHEEN |
|
85272934 |
SURPRISE. THAT'S WHAT WINNERS DO |
|
85272930 |
PARK YOUR NONSENSE |
|
85272929 |
YOU'VE BEEN WARNED |
|
85272927 |
|
|
85272926 |
DEFEAT IS NOT AN OPTION |
|
85272925 |
LIVING THE SHEEN DREAM |
|
85272923 |
GODDESS SUITE |
|
85272922 |
WARLOCK LOUNGE |
|
85272918 |
ADONIS DNA |
|
85272917 |
TORPEDO OF TRUTH |
|
85272915 |
SHEEN'S GODDESSES |
|
85272913 |
S¢K |
|
85271461 |
WINNING |
|
85271460 |
SOBER VALLEY LODGE |
|
85271458 |
VATICAN ASSASSIN |
|
85271457 |
TIGER WATER |
|
85271456 |
ROCK STAR FROM MARS |
|
85271455 |
|
|
85271454 |
TIGER BLOOD |
|
85271453 |
TIGER PLASMA |
|
85271452 |
Sheen is not the first, and will certainly not be the last, celebrity to apply for trademark protection in the United States for terms and phrases that they have made popular. Other celebrities who have registered trademarks for phrases they popularized include football star Terrell Owens (I LOVE ME SOME ME for clothing) and socialite Paris Hilton (THAT’S HOT! for men’s and women’s clothing). Celebrities use and/or license their marks for, among other things, merchandising, so as to capitalize on their economic value.
The catchiness of a unique term or phrase is a double-edged sword for a celebrity, as the very thing that makes it such a success – widespread recognition and use by the public – also poses the greatest risk to its undoing as a propriety trademark. So how does a celebrity maintain that fine line between protecting a term or phrase they coined and widespread use by the public of that same term?
Posted by Scott Buchanan, Partner DLA Piper Australia
In the battle for co-existence between national brands and private brands (in Australia, known as home or house brands), several truths emerge:
During a constructive INTA panel discussion of representatives from manufacturers, private and national brand owners, valuable insight was provided today into the challenges for business in adopting new brand names which don't infringe upon third party rights. Target's in-house counsel revealed that several hundred brand concepts were considered and searched before settling on their UP and UP brand. Unless you, as a national brand owner, take the positive steps of registering your trade marks then your marks will not be revealed on these searches and a battle with a private label inevitably looms.
Posted by Scott Buchanan, Partner DLA Piper Australia
Comparative advertising is one of those issues that underscores the importance of having your company's marketing team work closely with the legal team.
What do you think? Is comparative advertising effective? Which country has it "right"?
By Ann Ford and Ryan Compton
Today, May 11, 2011, marks the opening of the Sunrise period for reservation of the newly-created .ASIA domain names utilizing characters from the Chinese, Japanese and Korean written language. Referred to as "Internationalized Domain Names" or "IDNs," these domains will allow for companies to register their company names in, for example, Chinese Kanji script followed by the .ASIA top-level domain. Today's opening of the sunrise period allows registered businesses, registered trademark owners and existing owners of .ASIA top-level domains to register these new IDNs.
It is important to note that this sunrise period is not a landrush, wherein registration would be first-come-first-served. Rather, applications will be accepted from today until July 20, 2011, after which point any contested domains will be put to auction. Nonetheless, clients are encouraged to apply for their names as soon as possible, as the July 20 deadline will approach quickly. Shortly thereafter, on August 2, 2011, the landrush period will open, at which point registration will be granted first-come-first-served.
As always, please feel free to contact us at DLA Piper with any questions or concerns you might have concerning this or any other domain name registration or enforcement issues.
Reposted from our DLA Piper Italian IPT team blog.
The Summer Edition of Law à la Mode is now available online: click here to view the e-magazine.
As some fashion operators choose Hong Kong for their IPOs, in this Summer edition of Law à la Mode you can read about how the introduction of a competition bill in Asia’s fashion hub may have an impact on its ever booming fashion and luxury market (pages 6-7). If legal updates are what you are looking for and you love shoes, you can’t miss the article on the red soles dispute (pages 10-11) and a report about trade mark distinctiveness for sneakers (pages 12-13). Our opinion articles explore the theme of fashion trade secrets (page 4) and reputation management of brands (page 5). Talking about (super)brands, see how you can benefit from extended protection in Russia (pages 8-9).
Again, we spoke with representatives of the fashion business (“A word from the Industry’s Mouth”, pages 14-15), including Kirstie Clements, editor of Vogue Australia. Moreover, this issue sees the addition of a new column devoted to fashion and social media, in which we will consider the pros and cons of establishing a presence in the social media arena and attempt to give some legal guidance to avoid potential pitfalls (page 16).
Law à la Mode brings together the latest news, comment and legal updates in the fashion, retail and design sector.
If you want to know more about Law à La Mode feel free to contact Ann Ford or Chiara Garofoli.
By Ann K. Ford & Ryan Compton
After many years of debate and consideration, the Internet Corporation for Assigned Names and Numbers (ICANN) has approved a new top-level domain, "dot-xxx" (.XXX), for the purpose of hosting adult content.
As part of the launch, ICM Registry, the registry selected to maintain the .XXX top-level domain, is providing an opportunity for companies that do not want their brands associated with adult content to block their registered trademarks from being registered as .XXX domains, during a period named "Sunrise B."
While it is unclear when the official domain name registration sunrise will kick off, reports are suggesting that Sunrise B could open as early as June 2011.
In advance of the official Sunrise B period, ICM has set up a free name reservation service where trademark owners outside the adult content industry can pre-request that their trademarks be blocked from registration as a .XXX top-level domain by filling out a form here. While a proper sunrise registration and one-time fees (fees have not yet been announced) will be necessary to permanently reserve and block .XXX domains, a benefit of pre-registering is that ICM will contact pre-registered brand owners with all the necessary information, such as required forms, as soon as the sunrise period opens.
Once your name or mark has been successfully blocked, Internet users who attempt to access YourTrademark.XXX will get a generic parked web page with a message to the effect of: "This name has been reserved from registration under the ICM registry IP protection program."
Please let us know if we can help you protect your trademarks during this process or if you have any questions or concerns.
For more information, please contact Ann Ford and Ryan Compton.
On March 17, 2010, President Obama signed S. 2968, Trademark Technical and Conforming Amendment Act of 2010, into law as Public Law 111-146. Included in the new law was the requirement for a study and report, due one year later, on the effect of abusive trademark litigation tactics on small businesses. The study and report was to be completed by the Department of Commerce (DOC), in consultation with the Intellectual Property Enforcement Coordinator (IPEC).
Check out the full study and report to Congress here.
Some of the latest news on copyright and trademark from around the web:
As always, we are eager to share publications from DLA Piper's Trademark teams across the world. Here is the latest version of France's Trademark and Design February/March newsletter.
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Over the last two weeks, I blogged about the overview of the gTLD expansion, the application process, and the intellectual property issues. In the last post of the series, we thought it would be helpful to outline some of the opportunities and risks associated with such a decision.
Opportunities and Risks of Brand-Based gTLDs (e.g. “dot-dlapiper”):
Opportunities and Risks of Generic gTLDs (e.g. “dot-law”):
We hope that our series on the ICANN gTLD process has been useful. As noted, the gTLD application process is extremely complex and cooperation between the Legal, Marketing and IT departments will be required to determine the best course of action. Given the technology-dependant nature of the process we strongly recommend consulting immediately with the CIO or IT department head to determine the feasibility to implementing the necessary IT infrastructure. Of course, we also welcome the opportunity to discuss the issues associated with the process in more detail at your convenience.
Some of the latest copyright and trademark happenings from around the Internet:
My colleague David Kramer has been blogging about the gTLD process announced by the Internet Corporation for Assigned Names and Numbers (ICANN). But ICANN is making other waves this month with the approval of .xxx as the "progressive new home for adult entertainment online".
The new domain will be administered, managed, and supported by ICM Registry, which says it is a "completely independent entity with no affiliation, current or historic, with the adult entertainment industry."
The .xxx TLD was first proposed in 2000 by ICM Registry and resubmitted in 2004, but it faced strong opposition from politicians and conservative groups. ICANN’s board of directors ultimately rejected .xxx in 2006, concerned that the TLD might make ICANN responsible for enforcing laws and regulations over Internet porn. However, supporters of the domain brought it back for consideration in 2007 and again in 2010. After many years of debate, on March 18 2011, ICANN's board approved the execution of the registry agreement for the .xxx top level domain.
CM Registry has argued that the .xxx domain is beneficial to the public, because it indicates a clear signal that the domain contains pornography. Others argue that the creation of a top-level domain for adult-themed sites may not have the impact on internet security some hope.
The domains will be limited to the adult industry, and ICM says adult sites that already own .com TLDs will be able to reserve their .xxx domains early so that they can "protect their brand names and intellectual property rights within .xxx."
Over the last few months, many of our clients have asked us about ICANN’s expansion of generic top-level domains (gTLDs), and we thought it would be beneficial to blog about our garnered knowledge.
In the past, entities have had the opportunity to register second level domain names under existing top level domains such as “dot-com,” “dot-net” and “dot-mobi,” resulting in domain names in the commonly accepted format <dlapiper.com>. However, sometime this year private entities will have the opportunity to apply to create and manage completely new generic Top Level Domains (“gTLDs”).
Obtaining and managing a gTLD is not as simple as registering a second level domain name. Rather, by obtaining a gTLD a company would be entering the business of domain name Registry and a large investment in expertise and technology would likely be necessary. As such, when deciding whether to move forward with a gTLD application, close cooperation will be necessary between the Legal, Marketing and IT departments, at a minimum. We also strongly recommend Executive involvement in the decision-making process given the scope of this undertaking.
It is important to note that no trademark rights are required to apply for a particular gTLD. Therefore, while consideration of brand-centric gTLDs such as “dot-dlapiper” is important, it is also critical to consider the opportunities associated with more generic gTLDs such as “dot-lawfirm” or “dot-law,” for example.
Another important consideration is the intended breadth of Registry activities once the gTLD has been delegated. Specifically, if the Company successfully acquires a new gTLD, it must decide whether second level domain registrations will be available to the public at large, to a specific subgroup of the public, or only for internal use.
For example, the “dot-com” and “dot-net” gTLDs are public, so any individual or entity can register a second level domain name under those gTLDs. However, the “dot-museum” and “dot-aero” gTLDs have specific requirements that Registrants must meet before becoming eligible to obtain second level domains (i.e. must be an official museum organization, etc…). In the case of new gTLDs, it will be possible to limit second level registrations even further such that only the proprietor of the gTLD could use second level domain names.
In our next post, we will lay out the key aspects of the application procedure, as well as a discussion of the rights protection mechanisms that have been put in place to protect intellectual property from third-party infringement.
Annnndddd we're back from a small hiatus. Since the last IP Roundup, there have been a ton of great stories and analyses on Trademark and Copyright Law around the Internet.
Our team's weekly roundup of top stories on Copyright and Trademark from around the Internet:
Our team's weekly roundup of top stories on Copyright and Trademark from around the Internet:
In a move to match Google's trademark policy in selling search advertising, Microsoft announced this week that it will follow suit and allow customers to bid on trademarked keywords which trigger competitive advertising. The line in the sand will be drawn at trademarks still not being allowed in the text of any advertisement.
The policy, which goes into effect March 3, continues to raise interesting trademark "use in commerce" questions for clients around the world. Google has been involved in litigation on the issue, but court decisions in combination with industry standard seem to indicate that the practice is becoming the internet standard moving forward.
Eric Goldman, our friend at the Technology and Marketing Law Blog, was among the first to report the change. He has also had some of the best coverage of the Trademark Law and Google AdWords cases over the years.
One of our group's newest sector-focus groups is DLA Piper's Fashion, Retail & Design Group. We wanted to share the group's inaugural quarterly e-magazine, Law à la Mode, which brings together the latest industry news, comment and legal updates.
Our Fashion, Retail & Design Group is made up of lawyers from around the globe, who combine legal expertise with a passion for the fashion, retail and design sectors.
Be sure to check out our group's article about Copyrighting Fashion Design in the United States!
Copyrighting Fashion Design in the United States
Reprinted from La A La Mode,
DLA Piper's Fashion, Retail and Design E-zine
While design, patent and trade dress laws have long been used to enforce fashion rights, copyright laws in the United States have thus far been unavailable. Last summer, New York Senator Charles E. Schumer introduced legislation that could change this. In December, the Senate Judiciary Committee passed the Innovative Design Protection and Piracy Prevention Act, or Senate Bill S. 3728 (IDPPPA), and the next step is for the full Senate to vote on it.
The IDPPPA calls for the extension of copyright laws to the fashion industry, a commercial sector that has existed without protection in the United States to date. The legislation is supported by the American Apparel & Footwear Association (AAFA) and the Council of Fashion Designers of America (CFDA). The bill covers apparel, footwear, and accessories such as scarves, belts, and handbags.
The IDPPPA takes a very narrow approach to applying copyright law. First, IDPPPA will provide a three-year term of protection to new and original fashion designs commencing from the time the item is displayed publicly. Second, it will protect only “unique” designs that are truly distinguishable. Third, it will only cover designs created after its enactment, leaving earlier designs in the public domain.
One of the advantages to being an international firm is that our expertise and experience is global. We are delighted and eager to share our European, Asian, and African colleagues' recently published Winter Design and Trademark Newsletter.
Here are just some of the important alerts relevant to our clients worldwide.
I originally wrote about the Bratz copyright case for my overview of 2010 cases blog post, and wanted to post an update as the story develops.
January Update: In the dispute for the intellectual property rights to The Bratz Dolls, conceptualized during an individual’s scope of employment at Mattel but fleshed out and marketed elsewhere (Mattel-competitor MGA), Chief Judge Kozinski (who, in a prior opinion, had advised Mattel to "chill") remanded this case back to the district court. Kozinski ruled that even though the employee’s contract assigned his ideas to Mattel, the value of the trademarks the company eventually acquired for the entire Bratz line was significantly greater because of MGA’s own development efforts, marketing and investment.
February Update: The trial started Jan. 18 and was expected to last until late spring. But the story continued this week when Mattel asked a federal judge to declare a mistrial because the trial was tainted when MGA's Isaac Larian testified that Mattel caused the stress that led to his father's death and destroyed his family, among other things.
What’s at stake: This case has huge implications for employment contracts and intellectual property developed during the scope of employment. The original case opinion focuses on whether corporations can claim ownership of their employee’s ideas, particularly where those ideas are conceived in a private context but during the employment period. This decision will have huge implications for companies whose main assets are ideas – and how they can continue to protect intangible assets in the future.
Last Friday, we attended an INTA roundtable on Trademark Law in the Fashion Industry at Arent Fox in Washington D.C. It was a great discussion, and we want to send a special thanks to INTA for organizing and Arent Fox for hosting. As our team engages in more work in the fashion industry, we aim to keep our clients up-to-date with the latest trends in fashion law.
From this roundtable discussion, I gathered three takeaways that I wanted to share.
First, for fashion companies, the company name and logo are the most valuable assets, so fashion companies should federally register their name and logo to ensure nationwide protection and exclusivity. Since U.S. law does not currently afford much protection for fashion designs, designers can at least utilize trademark law to protect two aspects-- its company name and logo.
Second, major fashion brand companies, such as Chanel and Louis Vuitton, are moving into different (and arguably unforeseeable) markets. For example, Chanel now sells guitars and Louis Vuitton sells chopsticks under its trademarks. With these companies expanding into these, at one point, unforeseeable and far-fetched markets, claims of trademark infringement are even more foreseeable.
Third, fashion is cyclical, which means it is constantly evolving and revisiting past innovations, so it is unclear whether proposed legislation, such as the Innovative Design Protection and Piracy Prevention Act, will encourage or stifle fashion innovation.
Have questions or comments about Re:Marks on Copyright and Trademark? Email us at remarks@dlapiper.com.
Our group spends a significant amount of time working on issues relating to the transformation of copyright and trademark laws in the 21st century. I am particularly passionate about and interested in how the Internet and other new technologies challenge these dynamic areas of law. For my first blog post, I revisited a few of what I see as the most influential cases of 2010.
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Capitol Records Inc. v. Thomas-Rasset, No. 06-1497*
680 F.Supp.2d 1045 (D. Minn. Jan. 22, 2010)
Overview: In January, U.S. District Court Chief Judge Michael Davis for the District of Minnesota remitted a 2009 jury award of statutory damages totaling $1.92 million against defendant Jammie Thomas-Rasset by 97% to $54,000. This damages award arose from claims that Thomas-Rasset willfully infringed plaintiffs’ copyrights by downloading 24 songs using the Kazaa peer-to-peer network. Judge Davis held that although Plaintiffs highlight valid reasons that Thomas‐Rasset should pay a statutory damages award, the Judge ruled that these facts simply could not justify a $2 million verdict in this case. He further opined that although this new award was still three times the statutory minimum, this reduced award remains “significant and harsh” and should sufficiently serve both the deterrent and the compensatory purposes of statutory damages.
Judgment in a Civil Case: Civil File No. 06‐1497 (MJD/LIB)
Overview: The plaintiffs rejected the reduced damage award and, instead, asked for a new trial on damages. On November 4, the jury returned a verdict awarding statutory damages in the amount of $62,500 for each of 24 songs for a total amount of $1.5 million.
Takeaways: P2P file-sharing cases are having a profound impact on the future of copyright as applied to individual users of online platforms. Judges in at least two jurisdictions have changed the jury awards -- both citing them unconscionable -- potentially leading to not only a split in future appeals but also calls for legislation from all sides.
Every quarter our team publishes an Intellectual Property and Technology newsletter, in which we regularly analyze and explore issues related to trademark, copyright and advertising law along with the other areas of IP. Allyn Taylor, one of our partners, wrote an article for the last edition that we'd like to reshare.
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Protecting your brand on a global scale
By Allyn Taylor
Back when products and services were sold via brick and mortar stores, only large corporations or conglomerates seriously considered seeking global protection for valued brand names. Now, however, in the age of the Internet and Cloud, goods and services can be delivered virtually anywhere. Seeking trademark protection on a global basis is often a logical option for even a small company. Yet the question inevitably arises: “How do I accomplish this in an efficient, cost-effective manner?”
Although this case is from 2009, it is still highly relevant and useful to clients who regularly expand or are looking to expand their trademark portfolios to foreign jurisdictions.
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A 2009 U.S. Trademark Trial and Appeal Board (the "board") decision broke down the intent-to-use requirement under Lanham Act’s Section 44(e), which allows for foreign registrations as the basis for U.S. trademark registration. In Honda Motor Co., Ltd. v. Winkelmann, the Board concluded that, in filing an intention to use (ITU) application, Section 44(e) requires more than the foreign registration of a mark to demonstrate a good faith bona fide intent to use that mark in U.S. commerce. It also requires objective evidence that the applicant intended to use the mark at the time of filing the application. Mere statements of subjective intent and a foreign registration alone are insufficient.
Filing an ITU application based on a foreign registration, however, does not require actual use of the mark in U.S. commerce. Rather, the applicant must produce evidence, such as a written business plan or report, contracts, or records of ongoing discussions or promotional activities, to demonstrate a bona fide intent to use the mark. Where no such evidence exists, the applicant must explain why no documents exist and offer other evidence demonstrating an intent. Otherwise, the applicant risks denial of his application or loss of the pending registration.
To avoid this dilemma, before filing for U.S. trademark registrations based on foreign registrations and use, the applicant should be prepared to produce written evidence of a bona fide intention to use the mark in U.S. commerce.
DLA Piper’s Intellectual Property and Technology practice group is among the ten largest IP practices in the US and enjoys...
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