Acceptance of Building Signage as Specimens Evidencing Use of a Trademark Remains Industry Specific by William Brees, Esq.

The Trademark Trial and Appeal Board (“TTAB”) refused to accept the following photographs of a trademark displayed on the front door of a building as acceptable specimens for real estate investment and acquisition services:bill 1

In re Republic National LLC, Serial No. 86513101 (February 23, 2017) [not precedential].

The board held that the signage on the front door was not actually used in providing the real estate investment and acquisition services and therefore must be considered advertisement. While it may seem strange that the door through which customers must enter to receive the cited services would not be considered as being used in connection with the services, the outcome of this case is consistent with earlier rulings by the board. For example, in In re R & B Receivables Management, Inc., Serial No. 77855168 (September 23, 2011) [not precedential] the TTAB refused to accept the following specimen for various financial advisory services based on the same reasoning:bill2

Because the two cases above did not involve use of the mark in actually providing the services, they were treated as advertisements for which there must be some link to the services shown in the specimen itself. Neither of the specimens show any description of the services provided. It would appear the non-descript nature of the building is the important factor in these decisions, because there is a long history of allowing photographs of building signage as specimens of use for service marks that appear to be buildings where the type of service applied for would be expected from that type of building. One example, randomly chosen from marks registered in 2016, is the specimen below, which was accepted as a specimen of use for restaurant services. bill3

United States Trademark Registration No. 5,109,887.

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Don’t View an Infringement as a Lottery Ticket by William Brees, Esq.

 

The United States District Court for the Northern District of California recently granted a Motion for Summary Judgment in case that should remind potential plaintiffs not to sleep on their rights. In Dropbox, Inc. v. Thru Inc., the Court granted Dropbox, Inc. summary judgment on Thru, Inc.’s counterclaims for trademark infringement under the Lanham Act (Federal Law), trademark infringement under California common law, unfair competition under California Law, and cancellation of Dropbox, Inc.’s Federal trademark registration.

In trademark law, if one party used a trademark prior to another party in for similar goods or services and in the same region, the first party will usually be able to stop the second party from using the trademark with those goods or services. Thru Inc. used the trademark DROPBOX for file sharing software in 2004, four years prior to use of the DROPBOX trademark by Dropbox, Inc. Thru Inc. learned about Dropbox and its use of the DROPBOX trademark in 2009. But Thru Inc. didn’t take any action until 2008 when Counsel for Thru Inc. asserted its priority in communications with Dropbox, Inc. Thru failed to file any sort of action until 2014 when it filed a Petition for Cancellation against the Federal Trademark Registration that had by that time issued to Dropbox, Inc. for the DROPBOX trademark. Dropbox, Inc. eventually countered by filing the suit in the Northern District of California.

Through discovery, Dropbox, Inc. learned that Thru Inc. was well aware of its use of the DROPBOX trademark as well as its business dealings from 2009 to 2014, when it eventually filed the Petition for Cancellation. Several Email chains involving Thru Inc. executives referred the perceived infringement of the DROPBOX trademark as a “lottery ticket” to be cashed in by filing a lawsuit at the time when Dropbox, Inc. was attempting to take its business public through an Initial Public Offering. Rather than filing a lawsuit to enforce the rights the facts show it should have had in the trademark, Thru Inc. waited until the most opportune time as it watched Dropbox, Inc. gain in both popularity and users.

Watching Dropbox, Inc. grow wound up costing Thru Inc. the ability to enforce the rights it had in the DROPBOX trademark. Trademark owners need to be mindful that acting in a timely fashion to stop an infringement is usually going to be a more effective approach than counting on a big payday down the road.

Getting Too Cute with an Acronym Could Cost You Your Trademark Registration by William Brees, Esq.

Generally the concern with an acronym is that the words the acronym stands for may be merely descriptive or generic and that the meaning of those words will be used as a basis for a finding that the acronym itself is merely descriptive or generic. As explained by the Trademark Manual of Examining Procedure, this can happen if the acronym is “readily understood by relevant purchasers to be ‘substantially synonymous’ with the merely descriptive wording it represents.” TMEP § 1209.03(h).

However, if an acronym itself is a term that is merely descriptive or generic of the Applicant’s goods or services, that in and of itself may be the basis for a refusal by the United States Patent and Trademark Office to register the trademark. Rieker Instrument Company, Inc. recently learned this lesson after it attempted to trademark the acronym “CARS” for computer software used for capturing road data and determining safe curve speeds for automobiles; computer hardware used for capturing telemetry and road data; and software as a service featuring software for capturing road data and determining safe curve speeds for automobiles. Rieker Instrument Company, Inc. stated that the CARS trademark was an acronym for the words “Curve Advisory Reporting System.”

In a non-precedential opinion, the Trademark Trial and Appeal Board upheld the Examining Attorney’s refusal to register the CARS acronym because the goods and services cited in the Federal Trademark Application were related to automobiles, which the Board found to be synonymous with the word “cars.” Rieker Instrument Company, Inc. was not able to show adequate proof that consumers would understand the term CARS to be an acronym. Therefore, the board held that consumers would understand the term CARS instead to hold it’s ordinary and customary meaning of automobiles.

“Attention Trademark Owners: The Internet is Expanding” by William Brees, Esq.

By now everyone is familiar with the most common generic top-level domains (gTLD); even though many may not have an idea what they are called. A gTLD is the part of an internet domain name that comes after the last dot, such as .com, .net, and .org. However, the gTLD landscape is rapidly growing, bringing new challenges for Trademark owners.

The Internet Corporation for Assigned Names and Numbers (ICANN), which oversees the gTLDs, has begun an expansion that will increase the number of gTLDs from 22 to over 1,300. Examples of new gTLDs include .web, .shop, and .law. The expansion began with ICANN’s January 2014 launch of the first group of new gTLDs. Following this launch, ICANN will release new gTLDs weekly until all of the new gTLDs have been released.

The new domains provide flexibility to businesses and individuals using the internet, but they also raise serious issues for trademark owners. Not only will there be more opportunities for infringement, dilution and other traditional trademark concerns, some of the gTLDs, such as .sex or .xxx, may also create an unwanted connection for some brands. One way to protect a trademark in the wake of these new gTLDs is to register the trademark as a domain under each gTLD. But, this would be prohibitively expensive for most trademark owners. For this reason, several monitoring and policing mechanisms have been developed.

ICANN has developed the Trademark Clearinghouse, which provides an owner of a registered trademark, who can prove the mark is in use, two very important benefits. First, the owner receives an opportunity to register the domain name identical to the registered trademark in new gTLDs during a period of time before the gTLD becomes available to the general public. The period of time open to owners of registered trademarks also registered with the Trademark Clearinghouse lasts a minimum of 30 days and is called the Sunrise period. Second, the owner will receive notification if a third party registers a second level domain (the part before the last dot in a domain name) that is identical to the Registered Trademark. The notifications are provided by the notification service of the Trademark Clearinghouse, which is called the Trademark Claims Service. Trademark Clearinghouse does not actively block any registrations, so Trademark Owners or their representatives must take active steps to respond to any communications from Trademark Clearinghouse.

A company called Donuts, which was one of the three largest gTLD applicants, offers a blocking service called the Domain Name Protected Mark List (DPML). The DPML actively blocks third parties from registering second level domains that are identical to a trademark that is registered with the Trademark Clearinghouse and enrolled in the DPML service. There are a few exceptions to DPML service and the service also only applies to gTLDs owned by Donut so the DPML is not a complete blocking solution.

Trademark monitoring services are another way for the owner of a trademark to receive notice of the registration of any domain names that are confusingly similar to the owner’s trademark. Trademark monitoring services do not provide any benefits beyond providing notice. However, once the he receives notice of the infringing domain registration, a plurality of options are available to the trademark owner. Beyond traditional cease and desist letters and litigation, the trademark owner may also institute a proceeding under the Uniform Domain Name Resolution Policy (UDRP). If the trademark owner is successful in the UDRP proceeding, the infringing domain will be canceled or transferred to him.

A new Uniform Rapid Suspension System (URS) also provides a means for a trademark owner to have an identical or confusingly similar second level domain suspended until the end of the remaining registration period. Post-Delegation Dispute Resolution Procedure (PDDRP) is another dispute resolution procedure that allows trademark owners to file an objection against a registry if its gTLD is alleged to be infringing or to aid in infringement.

While none of the available mechanisms provide a complete solution for a trademark owner, proper planning and use of these mechanisms can provide cost-effective protection for the owner’s Trademark in the new expanding environment of internet domain names.

Dolce & Gabbana Does Not Find Humor Appealing

Luxury brands are very protective of their names (e.g., the movie “The Hangover Part II” and Louis Vuitton, anyone?). Perhaps, then, it should come as no surprise to hear that Milanese fashion label Dolce & Gabbana filed a trademark infringement suit against a small boutique in Cape Town, South Africa, that decided to name itself “Dolce & Banana,” and sells jewelry made out of driftwood and shells. The Italian company filed its suit in the Western Cape High Court and alleged that the boutique “makes a mockery of the well-known trademark, Dolce & Gabbana” and demanded that Dolce & Banana change its name.

Perhaps Dolce & Gabbana considered the offense of making jewelry out of driftwood and shells as more of the mockery than the use of the Dolce & Banana name. Regardless, Mijou Beller, the owner of Dolce & Banana, said she was first contacted by the fashion house six years ago and sought the help of an attorney to tell it that it did not have a trademark on jewelry, or any stores in South Africa, for that matter.

When she heard from the company again last year, at the end of November, Beller states that she changed her sign to read “… & Banana” in hopes of avoiding damages and has spent a great deal of money to change the branding. Unsatisfied, Dolce & Gabbana is demanding that Beller reimburse it for about half of its legal fees. Beller, claiming that such a payment would destroy her financially, took to Twitter to offer a plea:

Dear Stefano, please let us be. And visit us in Cape Town. I have always admired your famous sense of humor so present in your brand and in your designs. And although I appreciate that Dolce & Gabbana is a very successful commercial enterprise, I fail to understand why Dolce and Banana is a threat.

Perhaps Beller’s last words are most relevant.  Is Dolce & Gabbana merely doing its job to police protect  its mark, or is it just bullying a small business?  Oddly enough, here in the U.S., Dolce & Gabbana opposed the trademark of a children’s clothing line for … “DOLCE & BANANA” … in 2009. The trademark, as seen here, however, has since been registered in 2010.

Oh, G’s: Guess, Who Is Being Sued, by Gucci…

On March 28, following close behind Fashion Week in New York City, U.S. District Judge Shira Scheindlin began conducting a trial on Gucci America Inc.’s (“Gucci”) infringement claims against Guess? Inc. (“Guess”). In the case, Gucci alleges that Guess was involved in a “massive, complicated scheme to knock off Gucci’s best-known and iconic designs” and claims that over $220 million in Guess products infringed Gucci’s designs. Among the “studied imitations of the Gucci trademarks” in question are:

  • a green, red, and green stripe design (“GRG stripe”);
  • a script Guess mark;
  • a square G design; and
  • a quattro G design, which features repeating interlocking G’s in a diamond pattern.

Gucci is seeking monetary damages totaling over $124 million.

In the court’s order denying Guess’ motion for summary judgment (with a few exceptions), the court found that Gucci presented reasonable assertions that: Guess produced goods that either copied or closely mimicked its designs; Guess acted in bad faith and developed designs that might cause consumer confusion through their “meticulous copying”; and Gucci produced evidence showing that actual confusion did occur.

The case is particularly interesting because Guess also sought summary judgment that Gucci was not entitled to monetary damages based on its trademark infringement claims because Gucci could not prove any actual lost sales.  The court’s opinion provides a thorough analysis of Gucci’s “post-sale confusion” claims. Post-sale confusion claims make trademark infringement actionable, not because the consumer was confused by the similar goods, but because the consumer purposely purchased a cheaper alternative that looked similar, expecting the public to be deceived into thinking it was the genuine article in order “to gain the same prestige at a lower price.”

Guess argued that unless Gucci can produce evidence that a potential purchaser actually bought an allegedly-infringing Guess product instead of an authentic Gucci product in order to take advantage of confusion in the post-sale environment, Gucci’s post-sale trademark and trade dress infringement claims should fail. The court, however, held that Gucci need only show that post-sale observers are likely to confuse the allegedly infringing Guess products with Gucci products in order to avoid summary judgment on its infringement claims. The court further held that the test for post-sale confusion turns on an analysis of the several factors set forth in Polaroid Corp. v. Polared Elecs. Corp., 287 F.2d 492 (2d. Cir. 1961), including, in this case, any bad faith by the defendant and the relative quality of the products.

The suit, originally filed by Gucci in 2009, has been delayed until recently because the two parties have been litigating over privileged communications, which Guess lost. The case, Gucci America v. Guess Inc., 09-4373, U.S. District Court, Southern District of New York (Manhattan), is likely to be resolved in the next two or three weeks. As an interesting side note, it has been almost a year since Gucci’s sister company, Yves Saint Laurent, became embroiled in a trademark battle with shoemaker Christian Louboutin over his trademark red lacquered soles.

Establishing Your Business Presence on the Internet

With the globalization of the Internet, businesses have realized the value in registering their names or their trademarks as domain names to prevent “cybersquatting” and trademark infringement. Some well-publicized examples of domain name disputes to prove this point include:

  • Candyland.com: an adult entertainment provider originally registered the candyland.com domain name. Hasbro, which owned the candyland trademark, sued the adult entertainment provider for the domain name and now owns the domain.
  • Micros0ft.com: Zero Micro Software registered the micr0soft.com domain name with a zero in place of the second ‘o’. After Microsoft filed a protest, Zero Micro Software ultimately abandoned the domain. Vision Enterprises of Roanoke, TX then registered the domain, and it expired in 2007.
  • Peta.org: The “People Eating Tasty Animals” organization obtained the peta.org domain name. To the disdain of the “People for the Ethical Treatment of Animals,” the domain name was suspended. Today, however, the domain name is in the hands of the “People for the Ethical Treatment of Animals” organization.

Recognizing the potential of social media and/or social networking websites to serve as tools to enhance their businesses, businesses have also taken to develop their online presence on social sites such as Facebook, MySpace, Twitter, and YouTube. It is therefore becoming all the more important for businesses to be proactive in protecting their valuable IP assets in the age of social media.

Seeking trademark protection is merely the first step for savvy businesses. Businesses would do well to register all of their trademarks as domains or as user names, page names, and group names with every social media site. As an example, Facebook allows its users to register URLs for their accounts that follow the format http://www.facebook.com/yourusername. IP-savvy businesses should register each of their trademarks as separate user names.  Businesses should then implement monitoring services to detect instances of infringement.

If, however, another party already has a domain, user name, page name, or group name that may infringe on your trademark, it is essential to understand the remedies that are available to you. When disputes over a domain name occur, an attorney may assist you to bring the domain dispute to arbitration pursuant to the Uniform Domain Name Dispute Resolution Procedures (UDRP) of ICANN. Parties may also turn to the courts, for more serious issues, by bringing federal claims of cybersquatting in a United States District Court pursuant to the Anti-cybersquatting Consumer Protection Act (ACPA).

When a party violates your intellectual property on a social media website, the social media website may have internal dispute resolution mechanisms in place to report instances of infringement. The caveat, however, is that the website will typically attend to such complaints as they see fit. If the internal dispute resolution mechanism proves insufficient to address your needs, your intellectual property rights may also be enforced through more traditional dispute resolution mechanisms such as a cease and desist letter and/or litigation. Contact Maxey Law Offices to help you build and maintain your business’ online presence.