Tuesday, December 12, 2006

USPTO announces changes to design search codes


The United States Patent and Trademark Office has announced modifications to design search codes, effective in early 2007. "The new design codes will be applied to all new incoming trademark applications and to currently active (live) trademark applications and registrations in USPTO’s automated trademark systems. They will not be applied to inactive (dead) registrations." In many cases designs are split into separate codes, and some symbols that are considered socially negative (drug symbols) do appear acceptable in trademarks or trade dress.

The link is here. The main site is this. Visitors are requested to log out properly after leaving.

Saturday, December 09, 2006

Motion picture studios should use their music trademarks, too.


I've wondered why movie studios aren't more proud of their own musical signatures. 20th Century Fox and Fox Searchlight (though not Fox Atomic) always starts with the famous fanfare. Warner Brothers has the wonderful Casablanca Theme to offer over the orange shot of the studio, but often omits both the music and even the studio shot to blend in with the opening director's shot of the film. Columbia has the Statue of Liberty but often omits the rising scale (TriStar always uses its fanfare). New Line often omits its downward pulling theme. Dreamworks isn't always dreamy. MGM, however, always proudly displays its cat with the lion's roar. Touchstone and Miramax don't have musical signatures at all.

I would have thought that, for branding reasons, distribution companies would always display their full trademarks as fully as possible. You would think that their own laywers (given their history of aggressiveness with copyright) would insist on that.

If "Do Ask Do Tell" became a movie distributor, the picture shows what the mark could look like.

Update: (9/7/2007)

The bill was renamed with the year "2006" and actually passed in Oct. 2006. The posting discussing this appears on June 7, 2007 (please check archives) and postings after that. Because of the "name change" I did not detect it in the search engines for a while.

Friday, September 15, 2006

Senator Leahy's statement as of March 8

Here is a link to Senator Patrick Leahy's statement on March 8, 2006 when the bill passed the Senate.

It must go into committee. I called the Senate sometime in May and it had not yet been heard in the Judiciary Committee. I am starting to follow this, but so far I cannot find any evidence that it has yet been heard.

Anyone who knows is welcome to comment here on the progress of the bill on committee.

A compromise bill must be reported out and voted on by the House and Senate. According to anecdoctal reports, the Senate bill may have more protections for potential defendants in prospective trademark dilution claims.

Thursday, June 08, 2006

General discussion of the Trademark Dilution Revision Act of 2005

In early 2005 the House introduced this bill, Trademark Dilution Revision Act of 2005. Trademark law exists mainly to protect the idea of a brand name of any product or service, in order that companies that sell these may easily advertise and maintain persistency with customers. Trademarks prevent other companies or individuals from intentionally adopting similar marks in the same line of business. Trademarks consist of both “wordmarks” (the names of businesses and products associated with businesses) and trade dress, which can include illustrative logos. Generally, companies in totally different lines of business may use similar names.

Generally, the name of a book or of a movie cannot be trademarked, but the name of a series of books or movies may be. This concept, especially in the movie business, is generally known as a “franchise.” A good example is the Harry Potter series (both the books and movies). Another good example is the “… for Dummies” books. But in the publishing and movies businesses, it is acceptable for individual movies and books to duplicate names already used before (one can see this quickly on imdb.com).

Internet domain names are generally issued to individuals, organizations and companies by registrant companies as long as they are requested in good faith. There have been some problems when some domain names have accidentally, or sometimes intentionally, trampled upon an existing trademark. There obviously issues when someone registers a name mimicking that of a celebrity. ICANN has an administrative arbitration procedure to resolve domain name disputes for low cost, but an important concept is registration and use of a domain name “in good faith”.

In 1996, Congress passed a law targeting entities that deliberate try to tarnish or dilute an existing trademark held by another. In 2005, Congress introduced the bill noted above, to reduce the burden of proof on plaintiff companies that in the past have had to show actual harm to their trademarks; under the new bill, a plaintiff would need to show only the likelihood of future dilution. The most recent activity for this bill that I can find is a Senate Subcommittee and Mark Up hearing on November 3, 2005.

I personally think that it is important to maintain the concept that companies or individuals in different kinds of businesses may use similar wordmarks. I also think that the law should increase the level of consumer awareness required in understanding the meaning of a brand. One should not always look at the lowest common denominator, although publicly held companies often feel a fiduciary responsibility to do just that in pursuing litigation. I would have a concern that a trademark law revision overly indulgent of existing large corporate trademark holders will severely hamper small business, particularly on the Internet.

One possible solution with respect to domain names would be for ICANN to further refine the use of the last TLD node in the domain name. “Dot com” is overused and lazily used, and it could well be that individuals should be encouraged to use a different suffix (.name).

See my letter to Representative Jim Moran in Virginia. This is an ongoing issue, and I welcome comments. Also visit We can stop the big box stores. This site reports that the bill has passed the House of Representatives as of early 2006. It was reported out of a Senate committee favorably on Feb 16 2006 with some revision (substitute wording) that would strengthen "fair use" defenses particularly with non-commercial comment and reporting and probably strengthen the requirements that plaintiffs properly register their marks first. As of 3/1/2006 the Senate had not yet published this bill.

Also, note well: In early 2006, it appears that trademark searching technology has been advancing rapidly. Some ISPs (such as Verio) now offer much more comprehensive trademark research facilities to subscribers (some of them without extra fees) than before. One such service is ActiveIP . NameProtect (SearchSmart), both of which are themselves trademarks and servicemarks. You can learn more at http://www.activeip.com/about.html . These services can do USPTO searches but aslo search internet content, and can also (for fees) do international searches. Again, you can also do reasonable searches at http://www.uspto.gov/ and follow the links; generally the information is current within about a month and is updated most mornings Tue-Sat.

Here is the March 4, 2003 Supreme Court ruling
http://www.supremecourtus.gov/opinions/02pdf/01-1015.pdf “Moseley et al. DBA Victoria’s Little Secret v. Secret Catalogue, Inc., et. al.”

The text of the act is this link: Trademark Dilution Revision Act of 2005

Here is a comment posted from a user (the comment is on a different blog). This is the link.

Text of the proposed bill (from 2005)

Here is the text of the bill as I can best find it today:

AMENDMENT IN THE NATURE OF A SUBSTITUTE TO H.R. 683, AS REPORTED BY THE SUBCOMMITTEE ON COURTS, THE INTERNET, AND INTELLECTUAL PROPERTY

(or visit http://www.govtrack.us/congress/billtext.xpd?bill=h109-683 )

Strike all after the enacting clause and insert the following:

SECTION 1. SHORT TITLE.

(a) SHORT TITLE.--This Act may be cited as the "Trademark Dilution Revision Act of 2005".

(b) REFERENCES.--Any reference in this Act to the Trademark Act of 1946 shall be a reference to the Act entitled "An Act to provide for the registration and protection of trademarks used in commerce, to carry out the provisions of certain international conventions, and for other purposes", approved July 5, 1946 (15 U.S.C. 1051 et seq.).

SEC. 2. DILUTION BY BLURRING; DILUTION BY TARNISHMENT.

Section 43 of the Trademark Act of 1946 (15 U.S.C. 1125) is amended--


(1) by striking subsection (c) and inserting the following:


"(c) DILUTION BY BLURRING; DILUTION BY TARNISHMENT.--


"(1) INJUNCTIVE RELIEF.--Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner's mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.

"(2) DEFINITIONS.--(A) For purposes of paragraph (1), a mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark's owner. In determining whether a mark possesses the requisite degree of recognition, the court may consider all relevant factors, including the following:


"(i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties.

"(ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark.

"(iii) The extent of actual recognition of the mark.


"(B) For purposes of paragraph (1), 'dilution by blurring' is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the following:


"(i) The degree of similarity between the mark or trade name and the famous mark.

"(ii) The degree of inherent or acquired distinctiveness of the famous mark.

"(iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.

"(iv) The degree of recognition of the famous mark.

"(v) Whether the user of the mark or trade name intended to create an association with the famous mark.

"(vi) Any actual association between the mark or trade name and the famous mark.


"(C) For purposes of paragraph (1), 'dilution by tarnishment' is association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.

"(3) EXCLUSIONS.--The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection:


"(A) Fair use of a famous mark by another person in comparative commercial advertising or promotion to identify the competing goods or services of the owner of the famous mark.

"(B) Fair use of a famous mark by another person, other than as a designation of source for the person's goods or services, including for purposes of identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.

"(C) All forms of news reporting and news commentary.


"(4) ADDITIONAL REMEDIES.--In an action brought under this subsection, the owner of the famous mark shall be entitled only to injunctive relief as set forth in section 34, except that, if--


"(A) the person against whom the injunction is sought did not use in commerce, prior to the date of the enactment of the Trademark Dilution Revision Act of 2005, the mark or trade name that is likely to cause dilution by blurring or dilution by tarnishment, and

"(B) in a claim arising under this subsection--

"(i) by reason of dilution by blurring, the person against whom the injunction is sought willfully intended to trade on the recognition of the famous mark, or

"(ii) by reason of dilution by tarnishment, the person against whom the injunction is sought willfully intended to harm the reputation of the famous mark,

the owner of the famous mark shall also be entitled to the remedies set forth in sections 35(a) and 36, subject to the discretion of the court and the principles of equity.


"(5) OWNERSHIP OF VALID REGISTRATION A COMPLETE BAR TO ACTION.--The ownership by a person of a valid registration under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register under this Act shall be a complete bar to an action against that person, with respect to that mark, that is brought by another person under the common law or a statute of a State and that seeks to prevent dilution by blurring or dilution by tarnishment, or that asserts any claim of actual or likely damage or harm to the distinctiveness or reputation of a mark, label, or form of advertisement."; and

(2) in subsection (d)(1)(B)(i)(IX), by striking "(c)(1) of section 43" and inserting "(e)".


SEC. 3. CONFORMING AMENDMENTS.

(a) MARKS REGISTRABLE ON THE PRINCIPAL REGISTER.--Section 2(f) of the Trademark Act of 1946 (15 U.S.C. 1052(f)) is amended--


(1) by striking the last two sentences; and

(2) adding at the end the following: "A mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 43(c), may be refused registration only pursuant to a proceeding brought under section 13. A registration for a mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 43(c), may be canceled pursuant to a proceeding brought under either section 14 or section 24.''


(b) OPPOSITION.--Section 13(a) of the Trademark Act of 1946 (15 U.S.C. 1063(a)) is amended in the first sentence by striking "as a result of dilution" and inserting "the registration of any mark which would be likely to cause dilution by blurring or dilution by tarnishment".

(c) CANCELLATION. Section 14 of the Trademark Act of 1946 (15 U.S.C. 1064) is amended, in the matter preceding paragraph (1)--


(1) by striking ", including as a result of dilution under section 43(c),"; and

(2) inserting "(A) for which the constructive use date is after the date on which the petitioner's mark became famous and which would be likely to cause dilution by blurring or dilution by tarnishment under section 43(c), or (B) on grounds other than dilution by blurring or dilution by tarnishment" after "February 20, 1905".


(d) MARKS FOR THE SUPPLEMENTAL REGISTER.--The second sentence of section 24 of the Trademark Act of 1946 (15 U.S.C. 1092) is amended to read as follows: "Whenever any person believes that such person is or will be damaged by the registration of a mark on the supplemental register--


"(1) for which the effective filing date is after the date on which such person's mark became famous and which would be likely to cause dilution by blurring or dilution by tarnishment under section 43(c), or

"(2) on grounds other than dilution by blurring or dilution by tarnishment, such person may at any time, upon payment of the prescribed fee and the filing of a petition stating the ground therefor, apply to the Director to cancel such registration.".


(e) DEFINITIONS.--Section 45 of the Trademark Act of 1946 (15 U.S.C. 1127) is amended by striking the definition relating to "dilution".

(See also my Wordpress blog for links; see June 2007 on this blog for more up to date text).

Welcome to my discussion of the Trademark Dilution Revision Act of 2005

Welcome to my blog on the Trademark Dilution Revision Act of 2005, HR 683

The bill has passed both House and Senate and now goes to a conference committee to work out the differences between the bills. I will try to find more specific information on these differences.

Here is a link on the bill's progress.