Sunday, December 19, 2010

"Eclipse": It's a movie, it's a chewing gum stick; or it's a natural occurrence

I saw a Spearmint chewing gum with the “Eclipse” brand in a 7-11, with pictures of the young stars from the third movie (“Eclipse”) of Summit Entertainment’s famous fantasy “Twilight” movie franchise (and Stephenie Meyer’s novels). (By the way, “Breaking Dawn” is now filming, according to imdb.)

I don’t know what the legalities were, but I wonder if Spearmint needed to pay for permission to brand its chewing gum product? Or is Summit Entertainment just advertising its DVD’s?

Generally, in trademark law, unrelated products can use the same brand name, but what happens when one product advertises another?

There’s also “right of publicity” considerations.

This is a good one for comments.

Wednesday, December 01, 2010

Recent government raids, upcoming COICA bill raises trademark issues, too

So here we go. The government has shut down 82 or more websites for primarily trafficking in counterfeit goods (there were copyright issues, too), as explained on a Nov. 30 post on the “BillBoushka” blog.

So the government has certainly stepped in on what obviously amounts to “trademark dilution” – to sell counterfeits of goods under established brand names. But here it’s government stepping in, not the individual companies; a number of the sites were involved in multiple brand infringements.

I’ve covered there the COICA bill in Congress, which would address trademark issues as well as copyright. I’ve also covered the idea that it’s a bad bill because it allows shutdown of sites (and forfeiture of domains) on trademark (and copyright) claims without due process.

Thursday, November 18, 2010

Recent book on online reputation brings up some trademark issues

I plan to review the 2008 book “Radically Transparent: Monitoring and Managing Reputations Online” (Andy Beal and Dr. Judy Strauss) soon on the books blog, but I wanted to note that some of the advice in the book bears on the ongoing debate on trademark law, Internet search engines, and domain names.

The authors provide a detailed discussion of how to take advantage of SEO, or search engine optimization, so for companies – especially smaller ones trying to become established with “brands” – wordmarks identifying companies and their products or services become very critical because their use is so likely to affect search engine results. Issues with this have sometimes appeared in court already. Skillful choice of workmarks and their use in metatags on the web is probably more effective than paying for placement.

The authors also discuss the best way for individuals to brand themselves (Ok “pinning a label on yourself” as my father used to say, as if I were Chicken Little) with domain names. To make your domain name unique, add your hometown and profession. That would answer problems where you have the same name as a celebrity. Now I can immediately think of some questions. If your profession is IT, should you get down to something like “mainframe” or “Web”? People’s careers have to shift gears so frequently these days that it sounds like you could put yourself in a box, even quicksand.

Tuesday, November 02, 2010

Can "Jisgsaw's" mask be trademarked?

Okay, you have a great idea for a movie “Saw 8”, or maybe “Hacksaw”, and you want to use Jigsaw’s mask in your movie.

Well, Lionsgate (and/or Twisted Pictures) surely owns a trademark on the “Saw” brand of films since it is a series, and also one on “Jigsaw” as a character, with the particular mask. (Curiously, I couldn’t find either one readily at USPTO.)

What may be more relevant is that there have been numerous defunct television series that aspiring writers would want to adapt for indie films. “Everwood” (Warner Brothers) would be a good example; another is “Jake 2.0” (UPN/CBS). It’s always seemed to me that television networks and media companies ought to set up clearinghouses to sell legal rights to characters or series they no longer want to produce. I do know that comic book publishers jealousy guard the rights to their characters.

Just a thought for the “creative.”

Now, if I wrote my own horror movie, I’d make up my own villain. I don’t need Jigsaw. (“Do you want to play a game?”)

Saturday, October 23, 2010

Halloween attraction called "Field of Screams" creates trademark battle in Maryland with a nonprofit

Here’s a curious trademark battle going on, between the Mountville, PA “Field of Screams” attraction, and a non-profit “Field of Screams” fundraiser by the Olney, MD Boys and Girls Community Sports Association. It’s wound up as a trademark claim in a Maryland court, with some urgency. The Oct. 17 Washington Post story by Maria Glod is here.

The media sometimes called it a copyright claim, but it is not; titles can’t be copyrighted. They can be trademarked when they are repeated in a series or at various locations, to the point of becoming a commercial “brand”.

Tuesday, October 05, 2010

Tradenark dilution might occur among different lines of business

WiseGeek has a good layman’s explanation of “trademark dilution”, authored by S.E. Smith (no date given, but I presume since the prospective dilution law passed in the fall of 2006. The link is here.

He correctly points out that trademark law protects both consumers and businesses, which must invest in building a publicly identifiable brand.

Smith writes that trademark dilution may occur among unrelated products or services. He gives an example of a breakfast cereal getting linked in consumers’ minds with a tire company. That raises the prospect of negative linking. This idea is more controversial. For example, I am not confused by the fact that there is a Lowe’s home improvement company and that at one time there was a Loew’s hotel company and theater chain. (I once almost got a computer programming contracting gig with Lowe’s.) However, the degree of cognition and education expected of consumers seems like a critical point. The problem can become more serious because it is so easy for an individual to register a domain name that accidentally is confused with a company the individual did not know about, even after making reasonable efforts to look for the name or similar names on the USPTO database. I know that in many cases USPTO allows similar names to be registered in different business lines, but not always.

Another problem is that a brand name becomes a generic word or noun for a product, like Kleenex, resulting in brand dilution.

Wednesday, September 08, 2010

In copyright or libel litigation, plaintiffs could seize a domain name or brand identity on a court order

Today, in discussing a new “spamigation” or “mass litigation” threat against news aggregation websites and blogs for alleged copyright infringement, I noted that a particular plaintiff was also demanding that the domain name and apparently future content of the site be turned over to the plaintiff by the court.

In the past, this has happened with libel cases, where an organization has been put out of business in a libel case, and the plaintiff took ownership of the organization’s assets.

This does mean that, in a legal sense, a plaintiff is making a claim on the defendant’s “brand” in some cases, that is, the right to do any business under that or similar brand in the future. And that’s a scary thought.

The main story was posted on the “BillBoushka” blog today.

Wednesday, August 04, 2010

Counterfeiters target midlist brands rather than super-luxury ones

Here’s a story by Barry Silverstein on the “Brand Channel”: “New Counterfeit Gambit: Knock Off Cheaper Brands”, link here

Rather than going after the most exclusive and overpriced handbags and shoes, the counterfeiters are targeting the midrange brands, where the price downdraft is less and where the counterfeiting on the web (with fake sites to resemble the real ones, rather like bank phishing) is harder to pursue or less worth the aggressive effort to stop.

Nevertheless, the counterfeiters will surely face a lot of cease-and-desist and litigation even from the midlist companies.

Thursday, July 01, 2010

Supreme Court draws middle road on patent eligibility

On Monday June 28 the Supreme Court took a middle road in patent law, according to a Washington Post story by Peter Whoriskey on June 29 on p A7, “Supreme Court relaxes limits on patents; but it rejects a claim for a business method”, link here.

The Court rejected a patent on an algorithm for hedging risk in buying energy as too “abstract” but it also rejected a lower court’s claim that valid patents require machinery (like the Lionsgate trademark!) or “physical transformations”.

Electronic Frontier Foundation is criticial of a 1998 ruling from the US Court of Appeals for the Federal Circuit (CAFC) in State Street Bank & Trust Co. v. Signature Financial Group and warned that the Court "knocked patent law loose from its historical moorings and injected patents into business areas where they were neither needed nor wanted", in a piece by Michael Barclay here.

This case (2010) is Bilski v. Kappos, link here.

Thursday, June 24, 2010

Small businesses have to worry about possibly frivolous trademark claims from large companies

Emily Maltby has an interesting piece in the Small Business Page, B13, of the Wall Street Journal Marketplace today (June 24), “Name choices spark lawsuits: Start-ups can get mired in costly trademark scuffles with bigger firms,” link here.

The story starts with the saga of Jimmy Winkelmann, founder of South Butt, which got a cease-and-desist from North Face for imitating its trade dress. Small businesses don’t have the money to fight even unfounded trademark claims (which almost can resemble SLAPP lawsuits!), and large companies hire staff to troll the marketplace (especially the Internet) for possible infringements, since they believe that they have spent so much money building up their brands and have a fiduciary responsibility to protect them.

Friday, June 11, 2010

TiVo-EchoStar-Dish case seen as important by some

I got a tweet this week from a party I didn’t recognize about the USPTO’s decision to reject two patnet claims by TiVo against the Dish Network and Echo Star over digital video recorders that record one program while another is being watched. The best Reuter’s story, dated June 10, is here.

A US Court of Appeals will hear the case en banc. The case is TiVo v. EchoStar, 2009-1374, U.S. Court of Appeals for the Federal Circuit (Washington, DC Circuit). A federal court had found earlier that Dish had infringed on the patent of TiVo.

The Comcast recorder that I lease can record two programs at a time, but c you cannot watch a third program if two other programs are being recorded simultaneously.

Susan Decker has a more detailed story for Bloomberg here.

Friday, June 04, 2010

A company offers high-end trademark searches, especially for international use

Besides the USPTO "free form" trademark search, there is a site called (belonging to Thomson) that will allow users to do professional searches.

From a quick glance, it seems a bit pricey. Here is the subscription page for one day’s service for 12 hours of searching, link.  The cheapest is $50 for 12 hours for US Federal only, and in an international world for media ventures, that may well be insufficient, say, if you’re starting a new film distribution company (where the UK, Canada, Australia and Europe would matter a lot). The services deserves exploring.

Tuesday, May 04, 2010

RapidShare goes after customers who abuse its trademark to facilitate copyright infringement

A site called TorrentFreak has a story about litigation or cease-and-desist actions taken by RapidShare against other sites that either mimic its wordmark or “misappropriate” its trademark to encourage users to engage in copyright infringement. The story by “Ernesto” is (web url) here.

RapidShare Easy File Hosting has this home page (link) with a demo video. Several sites with clone-like names have been contacted, including “RapidFind” which is at this link and some others, some of which do not work now when tried.

The article suggests that RapidShare is “collaborating” with the entertainment industry to go after repeat copyright infringers.

Friday, April 02, 2010

Keyword technology raises trademark questions in Europe

The Grand Chamber of the European Court of Justice (ECI) has held that some Internet companies are guilty of trademark infringement by keying competitors ads based on search results (or by allowing advertisers to purchase keywords based on competitors’ trademarks); but in an update, Google is not, partly because it follows the principles of safe harbor processing. However, advertising schemes based on keywords must not be deceptive and must allow consumers the opportunity to purchase goods or services based on the original company’s mark.

The story by Steve O’Hear had appeared on European Techcrunch (web url) (here) but had to be updated.

Monday, March 22, 2010

Facebook, Twitter go after domain names containing their "character strings"

Jesse Stay has a story on the site “Stay ‘N’ Alive” (remember how John Travolta looked in that 1983 movie?) about Facebook’s recent campaign against some (but maybe not all) domain names that incorporate the character string “Facebook” in the name. Mari Smith’s “” was surrendered and now that domain (if you try it) takes you to facebook. Jesse writes that protection of trademarks is a “common and perhaps necessary” practice. The story is here.

Twitter has gone after names including Tweet and Twit. It makes it hard to check online at USPTO with the beginning of a character string.

Friday, March 12, 2010

ICANN announces it will develop a trademark clearinghouse for domain name issues

ICANN (The Internet Corporation for Assigned Names and Numbers), in a meeting in Nairobi, Kenya, announced March 12 that it had approved creating a “trademark clearinghouse”, that is, “an extensive database of trademarks for their protection on the Internet”. The link for the press release in PDF format is here and it was sent to email subscribers today.

The Board rejected a pre-registration process called “Expression of Interest” or EOI, for setting up new gTLD’s, or the last node of a domain name (“.com”).

It appears that ICANN is interested in assisting parties that believe that legitimate trademarks are threatened by new domain names, but another part of the press release appears to distance it from concerns over the main node of the domain name, often perceived by many people as indicative of branding.

Stay tuned as more clarifications come about.

Friday, March 05, 2010

The Anti-Cybersquatting Consumer Protection Act (ACPA) does have limits: important case in Michigan with a personnel business

In a case in Michigan, a federal court ruled that a defendant could register a domain name(s) with the purpose of criticizing another business, when the original business (the plaintiff) had minimal presence on the web. Doing so did not constitute trademark dilution, even prospectively. The case is “Career Agents Network, Inc.” vs. “,, Lawrence R. White and Aeromedia Marketing”. The order granted a defendant’s motion for a summary judgment and denied the plaintiff’s motion. The papers can be read on the Scribd website here. The opinion was linked on Mixx under trademark law.

Apparently the case involved a “Career Agents Network” and another company in Missouri called “Health Career Agents” which offered franchise opportunity to set up recruiting businesses under these names.

The opinion does discuss the Anti-Cybersquatting Consumer Protection Act (ACPA) (1999). An ACPA lawsuit is more costly that an administrative mediation with ICANN under the Uniform Domain Name Dispute Policy (UDRP). The ACPA had been intended to supplement the original Federal Trademark Dilution Act. Wikipedia’s entry with the “nine tests” is here.

Here is an FAQ on the ACPA at Keytlaw (link).

The Cornell University Law School Text for USC 15-1125 is here.

Friday, February 19, 2010

Maalox has the "opposite" trademark problem

Here’s a bizarre twist on the “trademark problem”. The Food and Drug Administration (FDA) is ordering Novartis to use a different brand name for its most potent form of “Maalox”, that is, “Maalox Total Relief” because some consumers might not realize it could have other side effects due to containing ingredients chemically similar to aspirin.

A typical story is with Portland OR station KGW and the AP, link (web url) here.

It’s perfectly appropriate for companies to own multiple brands, and sometimes they need to use separate brands to avoid confusing consumers.

I didn’t have any Maalox at home for a picture.

Thursday, February 04, 2010

A note on my use of "do ask do tell" as a domain name, maybe a movie name

Let me reiterate my use of the phrase “Do Ask Do Tell” in my 1997 and 2002 books, and of my largest website

It’s possible that future employment opportunities could force me to scale back my personal web presence, in ways that I may discuss later. In some situations that I can envision, it might not be possible for me to display my own material in a “free entry” fashion indefinitely. Furthermore, some time in 2010, my material may very well be restructured and simplified.

I don’t claim that “do ask do tell” is a trademark, but I am committed personally to using the term for the foreseeable future in conjunction with a certain social mindset, that has arisen in reaction to the military’s “don’t ask don’t tell” policy.

I do envision a motion picture based loosely on some materials in the 1997 book (greatly reorganized) and I would want to be able to use the “Do Ask Do Tell” to lead off the movie title. If there were to be considerable trimming or removal of material from sites to avoid potential employment conflicts, they would not go so far as to credibly prevent my keeping the registration of the doaskdotell domain. More details may come later if necessary.

USPTO still shows only one DEAD registration of the phrase from the middle 1990s.

IMDB does not show any film names starting with this phrase, neither does Sundance. However, there are films called "Ask Not" and "Do Tell".

Generally, movie and book titles are not regarded as trademarks until they have sequels and become “franchises” (like Lionsgate’s “Saw” franchise).

Saturday, January 02, 2010

Delta may give up its NWA brand

Just as I’ve criticized movie studios for letting go of their indie brands, so I wonder about the airlines. The FAA has given Delta the permission to operate Northwest as part of itself and to phase out the Northwest brand. Here’s the Commercial Appeal story from Dec. 31, 2009 (link).

I wouldn’t reserve a domain name “northwest” any time soon. I think it was a great brand, that helped the Twin Cities attract other business while I lived there 2007-2003. (As I've said, ReliaStar was a great brand before ING.) I’m sorry to see it go. I don’t know if Delta kept its Comair brand for small jets either. Sometimes small airline brands (like Mesaba) have been kept.

But if major companies want to protect themselves from prospective trademark dilution, they should keep their brands alive.