Showing posts with label Use In Commerce. Show all posts
Showing posts with label Use In Commerce. Show all posts

Thursday, April 8, 2010

District Court finds that Casino De Monte Carlo owner has no enforceable trademark rights to CASINO DE MONACO


The Casino de Monte Carlo in Monaco

A New York District Court has determined that the owner of the Casino De Monte Carlo does not have enforceable trademark rights in the mark CASINO DE MONACO and has granted summary judgment in favor of a UK company that had been sued for trademark infringement and cybersquatting over its use of the name GRAND MONACO CASINO in connection with an online casino. See In re. Casino de Monaco Trademark Litigation, 2010 U.S. Dist. LEXIS 33950 (S.D.N.Y. March 31, 2010).

Societe des Bains de Mer et du Cercle des Etrangers a Monaco’s (“SBM”) is the operator of all casino properties in the Principality of Monaco, most notably the Casino De Monte Carlo. Playshare PLC (“Playshare”) is a UK company that acquired an online casino that has used or is using various online designations including GRAND MONACO, GRAND MONACO CASINO, GRAND MONDIAL and GRAND MONDIAL CASINO and related domain names.

SBM holds a U.S. trademark registration for the mark CASINO DE MONACO for “providing casino services within a hotel resort environment” which issued on December 20, 2005, under Section 44(e) of the Lanham Act based on SBM’s registration of the mark in Monaco but also with a claim of acquired distinctiveness based on Section 2(f) of the Lanham Act. SBM also has a second application pending for CASINO DE MONACO for “casino services” but that application (filed in the midst of the dispute at issue) has been opposed by Playshare. See Societe Anonyme Des Bains De Mer Et Du Cercle Des Etrangers v. PlayShare PLC, Opposition No. 91188636 (T.T.A.B. Filed Jan. 30, 2009).

On March 21, 2007, SBM filed a Uniform Domain Name Dispute Resolution Policy (“UDRP”) complaint with the World Intellectual Property Organization (“WIPO”) against the approximately 65 domain names that Playshare acquired as part of the online casino it acquired which included the words “grand” and/or “monaco” with “casino” as part of a URL that led to Playshare’s online casino. In response to SBM’s UDRP complaint, Playshare made a decision to change the name of its online casino to GRAND MONDIAL and even registered the name as a trademark (although the opinion is not clear where the mark was registered and no records appear with the PTO). Despite the name change, SBM continued forward with its claims regarding the “monaco casino” domain names. On May 25, 2007, the WIPO arbitration panel decided in favor of SBM finding Playshare’s domain names confusingly similar to SBM’s trademark and ordered Playshare’s domain names transferred to SBM. See Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Lucan Toh and Max Wright, Case No. D2007-0249 (WIPO May 25, 2007).

On June 6, 2007, SBM sued Playshare alleging that Playshare’s use of the aforementioned names and domain names infringed its trademark rights to the mark CASINO DE MONACO, including even Playshare’s new name GRAND MONDIAL. On June 19, 2007, Playshare filed its own declaratory judgment action against SBM in Arizona district court seeking a declaratory judgment that its use of the domain names did not violate the Anticybersquatting Consumer Protection Act (“ACPA”) and that SBM’s registered mark for CASINO DE MONACO is invalid and unenforceable. The Arizona action was consolidated with the New York action and Playshare’s declaratory judgment causes of actions were treated as counterclaims.

Both sides filed cross motions for summary judgment. The Court denied SBM’s motion and granted Playshare’s motion with respect to SBM’s claims and Playshare’s counterclaims related to CASINO DE MONACO.

The court first addressed the validity of SBM’s CASINO DE MONACO mark. Playshare argued that despite SBM’s registration of CASINO DE MONACO, SBM has no protectable rights under the Lanham Act in its mark since it does not provide any goods or services using the mark in the U.S. SBM does not operate an on-line gaming business, does not operate any casinos in the U.S and has no casino by the name of Casino de Monaco

Nonetheless, SBM argued that it did use the mark as a service mark in the U.S. in connection with an established business or trade.SBM focused on its New York subsidiary that engages in “sales offerings” to U.S. residents of casino services at SBM’s casinos in Monaco. SBM also contended that the name CASINO DE MONACO is an umbrella term for all its Monaco-based casinos, that the mark is used on SBM’s website and verbally when promoting its casino and casino-related services, and that CASINO DE MONACO is a nickname for the Casino de Monte-Carlo, and many people, including Americans, use the name CASINO DE MONACO to refer to the Casino de Monte-Carlo “which embodies tremendous goodwill, glamour, elegance and style in the gaming industry.”

In the end, however, the court rejected SBM’s arguments and concluded that SBM’s activities in the United States relating to SBM’s mark CASINO DE MONACO did not constitute “services” within the meaning of the Lanham Act (services that are not “solely for the benefit of the performer” but rather services “rendered to others”). The court also rejected SBM’s attempt to conflate its CASINO DE MONACO mark with its more established CASINO DE MONTE-CARLO service mark. CASINO DE MONACO is not an actual casino unlike Casino de Monte-Carlo. The court also noted that “any secondary meaning that the mark CASINO DE MONACO can acquire vis-a-vis the use of the mark CASINO DE MONTE-CARLO is limited by the fact that SBM is in an on-going dispute with U.S.-based Victoria Partners over the Monte-Carlo designation when used with the casino business. Without some resolution, the mark CASINO DE MONTE-CARLO can be reasonably construed as not “identifying a single source of origin.” (italics in original). [For prior blog posts on this ongoing dispute, click here and here].

The court noted that SBM’s Section 44(e) based registration only required it to affirm that it had a bona fide intent to use its foreign registered mark. The court went on the state:

However, regardless of SBM’s intent, which is disputed, SBM has not used the mark in any meaningful way anywhere. And SBM has not shown that it has used the mark in the United States at all. SBM argues that its “U.S. based direct sales activities represent ‘material aspects’ of SBM’s casino business...and thus are properly considered ‘services...rendered in commerce.” for SBM’s mark CASINO DE MONACO. However, the record is devoid of evidence that would create a genuine issue of material fact that SBM uses the mark CASINO DE MONACO to identify its services, anywhere, but particularly in the United States. First, there does not exist in Monaco, or anywhere else, a casino identified by the name Casino de Monaco. Nevertheless, SBM asserts that the mark CASINO DE MONACO is: (1) used as a nickname or moniker for Casino de Monte-Carlo; (2) employed on casino website(s); and (3) an umbrella term/brand to refer to SBM’s five casinos in Monaco. However, all that SBM can show to support these representations are self-serving affidavits. Even if this claimed use of the mark CASINO DE MONACO was not insignificant on this record, which it is, all of its use of the mark occurs outside of the United States. There is no real evidence that the claimed nickname/moniker/umbrella term that signifies CASINO DE MONACO has ever existed in the United States.

(internal citations omitted) (emphasis in original).

Furthermore, regarding the one example that SBM could show of use in the United States of the mark CASINO DE MONACO on SBM’s own website, it turns out that such webpages were created on or after April 14, 2008 (almost a year after the lawsuit was filed) and SBM did not show any evidence that anyone in the U.S. ever viewed the pages. The court added that “[i]t does not bolster SMB’s [sic] position that all activity SBM engages in the United States amounts to nothing more than advertising and promotion of SBM’s operations outside the U.S., i.e., in Monaco. What is clear is that there is no evidence on the record that this limited activity ever implicated the mark CASINO DE MONACO.” (emphasis in original).

The court decided that SBM’s “utter lack of use of the mark CASINO DE MONACO anywhere, let alone in the United States,” required it to refuse to enforce any purported trademarks rights by SBM in the mark. Accordingly, the court did not have to engage in any likelihood of confusion analysis. The court did find enough limited activity to protect SBM’s purported right to the unregistered mark CASINO DE MONTE-CARLO because SBM actually utilizes that mark in the United States – but since SBM’s complaint did not allege any infringement of this mark, such rights were irrelevant for purposes of deciding the motions.

Based on its determination that SBM held no enforceable trademark rights to the mark CASINO DE MONACO, the court granted summary judgment on Playshare’s declaratory judgment causes of actions direct to SBM’s CASINO DE MONACO mark. The court found SBM’s trademark registration for CASINO DE MONACO invalid and unenforceable and ordered it to be canceled. The court further granted Playshare’s Motion for Summary Judgment on all of SBM’s federal claims based on the CASINO DE MONACO mark (and choosing to dismiss all state claims by declining to exercise supplemental jurisdiction). Moreover, the court declared that Playshare’s use of the designations GRAND MONACO, GRAND MONACO CASINO, GRAND MONDIAL CASINO and GRAND MONDIAL does not infringe on SBM’s (now cancelled) mark CASINO DE MONACO. Finally, because SBM’s entire basis for its cybersquatting claim was based on rights to the mark CASINO DE MONACO and since the mark was found invalid and unenforceable, then, as a matter of law, Playshare cannot be in violation of the ACPA with respect to its domain names. The court vacated the WIPO decision and ordered the domain names to remain with Playshare.

Wednesday, March 10, 2010

A New Chapter Opens in the “Who Dat” Trademark Story

Earlier this year, the “Super Bowl” trademark story of the year centered not around the NFL’s usual efforts to crack down on unauthorized use of the SUPER BOWL trademark, but instead about purported efforts by the NFL to claim ownership to the mark WHO DAT (coverage of the dispute here and here)

On March 4, 2010, Who Dat? Inc. (“WDI”) filed a lawsuit against the NFL, the New Orleans Saints, the Louisiana Secretary of State and the State of Louisiana. See Who Dat?, Inc. v. NFL Properties, LLC et al, Case No. 10-cv-00154 (M. D. La. March 4, 2010). A copy of the complaint can be downloaded here (or here). Other press coverage here, here and here.

Courthousenews provides an excellent summary of the pertinent allegations of the 60 page, 189 paragraph, 16 count action complaint (which includes pictures) which tells quite a story about the two men who created the “Who Dat” fight song for the New Orleans Saints back in 1983 and began the dream of creating a name that would make them millions . . . and how the dream became a “nightmare.” But the following paragraph near the beginning of the complaint summarizes the crux of the dispute:

Who Dat?, Inc. developed and nurtured “WHO DAT” for over twenty-five years and was uniquely positioned to reap substantial financial rewards in connection with the 2009-2010 National Football League season. On the eve of that success, NFLP and the Saints filed public documents falsely claiming ownership and first use of the phrase. As anyone would have anticipated, the public voiced outrage and State of Louisiana officials publically challenged the claims made by the NFLP and Saints. Since those entities were not the first users of the phrase and had no standing to make the claims made, they publically conceded that they did not own the phrase. With that concession in hand, state officials declared victory and further declared that the phrase belongs to the people as it is in the public domain. As a natural consequence of these actions, Who Dat?, Inc. was not able to obtain the financial fruits of its labor.

Interestingly, while several Louisiana state trademark registrations are noted throughout the complaint as evidence of WDI’s trademark rights, WDI had very few federal registrations to evidence its trademark rights. One was for soft drinks, but it has since been canceled (the 5 year statement of use was not filed). Another was for the mark WHO DAT BLUE BAND, but as noted in the complaint, this was registered by a third party in 2004, and only assigned to WDI in December 2009 in order to resolve a cancellation proceeding filed by WDI.

WDI had several other intent-to-use trademark applications pending, but each went abandoned for lack of any Statement of Use, including two applications for clothing (here and here) and two applications for potato chips (here and here) – all filed on the basis of intent-to-use and all went abandoned after no Statement of Use was filed. One additional use-in-commerce application for bumper stickers went abandoned after failing to respond to an office action.

More recently, WDI filed another use-in-commerce application for WHO DAT on January 7, 2010, covering musical sound recordings and various clothing items (claiming date of first use going back to October 1983). Unfortunately, WDI’s application to register the mark for its clothing goods will inevitably be suspended pending the outcome of two earlier filed applications for WHO DAT (currently allowed and awaiting a Statement of Use from the applicant and WHO DAT' JE CROIS.

One has to wonder why WDI did not follow through with its federal trademark registrations for clothing if, as stated in the complaint, it was licensing the mark to third parties for use in connection with shirts and other products. It certainly recognized the importance of seeking federal registrations – as evidenced by its prior applications. And while it’s not clear how WDI may have sold its goods throughout the years, it currently sells its goods through the website – whodatstuff.com – a domain name registered on August 13, 2009.

The situation serves as lesson that a trademark is only as good as its ability to serve as a unique source identifier for a particular source of goods or services. Just because you come up with a unique phrase does not mean that you have any exclusive rights to the term to the extent you are not actually using it in a manner that would be recognized as a source identifier in connection with particular goods and services. As for WDI, it's one thing to talk about having created a unique term or phrase – its quite another to have the evidence to show that it has always served as a unique identifier for WDI's goods and services. We shall see.

Friday, April 3, 2009

Second Circuit Overturns Google’s District Court Victory on Trademark Keyword Sales

Yesterday I posted (link here) about a Massachusetts district court decision finding that a party’s purchase of a trademarked keyword to trigger sponsored links constitutes a "use" within the meaning of the Lanham Act. That court’s decision noted that the “the Second Circuit stands alone in holding that the purchase of a competitor's trademark to trigger internet advertising does not constitute a use for the purposes of the Lanham Act.” (emphasis in original).

Today, the Second Circuit appears to have decided to join the other Circuits which have held that the purchase of trademarks to trigger sponsored links on a search results page is a "use" under the Lanham Act (while at the same time distinguishing, and drastically limiting its prior decision in 1-800 Contacts, Inc. v. WhenU.Com, Inc., 414 F.3d 400 (2nd Cir. 2005) which heretofore had been relied upon by many trademark attorneys and Second Circuit district courts as the basis for dismissing trademark infringement lawsuits involving keywords).

In Rescuecom Corp. v. Google Inc., No. 06-4881-cv (2nd Cir. April 3, 2009), the Second Circuit reversed a lower court’s decision to dismiss Rescuecom’s trademark infringement action against Google Inc. under Rule 12(b)(6) for failure to state a claim on the grounds that Google did not use Rescuecom’s trademark in commerce within the meaning of the Lanham Act. The decision received a plethora of media coverage (NY Times, WSJ, Law.com, ZDnet, PC World, Techcrunch).

The Second Circuit held that Rescuecom’s allegations that Google’s recommendation and sale of Rescuecom’s trademark to Google Adword advertisers in order to trigger sponsored links in a manner that could likely cause consumer confusion from Google search engine user searching Rescuecom’s trademark were sufficient to allege a claim under the Lanham Act (i.e., such allegations were sufficient to allege that Google’s use of Rescuecom’s trademark was a “use in commerce” within the meaning of § 45 of the Lanham Act).

Eric Goldman provides his excellent overview of the impact of the court’s decision. Meanwhile, the Electronic Frontier Foundation paints its own dire picture of the implications of the decision on e-commerce.

In short, the Second Circuit appears to have brought to an end the debate about whether trademark keyword purchases and sales constitute “use in commerce” under the Lanham Act. With the Second Circuit now on board, all Circuits that have not previously addressed the issue will likely follow suit. The Second Circuit’s opinion even includes an Appendix discussing the phrase “use in commerce” in the Lanham Act (which while much more detailed and scholarly, nonetheless reaches the same conclusion as the Massachusetts district court did in the Hearts on Fire case yesterday).

And now the battle turns to where most trademark battles end up – addressing the issue of likelihood of confusion. The biggest defeat here is that purchasers and sellers of trademark keyword advertising can no longer get a trademark infringement lawsuit dismissed at an early state for failure to state a claim – and will instead have to endure some discovery and fight through to summary judgment or maybe even trial. The end result is that more parites will probably reach settlements earlier, and more online retailers will avoid purchasing another party’s trademarks as an advertising keyword which is the result that trademark owners ultimately wanted anyway.

Thursday, April 2, 2009

Massachusetts District Court Finds Keyword Purchase Constitutes Trademark Use

A Massachusetts District Court has held that the purchase of a trademarked keyword to trigger sponsored links constitutes a "use" within the meaning of the Lanham Act. See Hearts on Fire Company, LLC v. Blue Nile, Inc., Case No. 08-cv-11053 (D. Mass. March 27, 2009).


I previously blogged about this case here. Hearts on Fire Company, LLC (“HOF”), the company behind the “Hearts On Fire” diamond (a/k/a The World's Most Perfectly Cut Diamond) (pictured above), filed a trademark infringement lawsuit against Blue Nile, Inc. (“Blue Nile”), an online retailer of certified diamonds and jewelry, based on Blue Nile’s purchase of the mark “Hearts On Fire” as webcrawler.com keyword which generated a Blue Nile sponsored link for searchers who searched for “Hearts On Fire”. Blue Nile had filed a Motion to Dismiss HOF’s complaint in part based on the argument that its purchase of the keyword “Hearts On Fire” was not trademark use.

After reviewing the conflicting circuit court decisions on the matter (the First Circuit Court of Appeals has yet to address this issue), United States District Judge Nancy Gertner, in denying Blue Nile’s Motion to Dismiss, decided to follow the Ninth and Tenth Circuit precedents on the purchase of trademarks triggering banner ads as constituting use under the Lanham Act (Playboy Enterprises, Inc. v. Netscape Commc'ns Corp., 354 F.3d 1020 (9th Cir. 2004); Australian Gold, Inc. v. Hatfield, 436 F.3d 1228 (10th Cir. 2006)) which have been applied by other district courts to the purchase of trademarked keywords to trigger sponsored links. See Boston Duck Tours, LP v. Super Duck Tours, LLC, 527 F. Supp. 2d 205, 207 (D. Mass. 2007) (finding keyword-purchasing a "use" for trademark purposes); J.G. Wentworth, S.S.C. Ltd. P'ship v. Settlement Funding LLC, 2007 WL 30115 (E.D. Pa. 2007) (finding trademark use in sponsored linking); Buying for the Home, LLC v. Humble Abode, LLC, 459 F. Supp. 2d 310 (D.N.J. 2006); Gov't Employees Ins. Co. v. Google, Inc., 330 F. Supp. 2d 700 (E.D. Va. 2004).

The Court noted that courts finding the purchase of keywords to be trademark "use" focused more on the broader definition of “use” in 15 U.S.C. § 1114 compared to the definition in the Lanham Act’s definition section (15 U.S.C. § 1127):
Rather than relying only on the Act's definitions section as the Second Circuit has done, see note 5, supra, these courts often look also to its civil remedies provision, which defines "use" more broadly. Compare 15 U.S.C. § 1127 (definitions section), with 15 U.S.C. § 1114 (civil remedies provision); see also Boston Duck Tours, 527 F. Supp. 2d at 207 (finding that "sponsored linking necessarily entails the 'use' of the plaintiff's mark as part of a mechanism for advertising," based on the statute's "plain language"). In particular, the civil remedies provision penalizes the "use in commerce" of "any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services." 15 U.S.C. § 1114 (emphasis added); see also note 2, supra. The purchase of a competitor's trademark to trigger search-engine advertising is precisely such a use in commerce, even if the trademark is never affixed to the goods themselves. In effect, one company has relied on its competitor's trademark to place advertisements for its own products in front of consumers searching for that exact mark. The Lanham Act's use requirement is not so narrow or cramped that it would fail to treat this conduct as a "use in commerce."
Even the Act's definitions section, which pre-dates the advent of internet commerce and advertising, treats as a "use in commerce" any use of the trademark on "displays associated" with the goods offered for sale. 15 U.S.C. § 1127. On the facts of this case, by contrast to 1-800 Contacts, 414 F.3d 400, a computer user's search for the trademarked phrase necessarily involves a display of that trademark as part of the search-results list. For instance, if a computer user searches for the "hearts on fire" trademark at www.webcrawler.com, the text "Web search results for 'hearts on fire'" is prominently displayed above the search results, including the sponsored links. Indeed, this display is exactly what the Defendant paid for: the association of Blue Nile's sponsored link with the searched-for trademark.
(emphasis in original)

The court held that given the Lanham Act's language and the broader purposes of the trademark statute, “there is little question that the purchase of a trademarked keyword to trigger sponsored links constitutes a ‘use’ within the meaning of the Lanham Act.”

The court went on to find that HOF’s allegations were sufficient at this stage to state a claim for trademark infringement (including a claim of infringement based on initial interest confusion). Even though none of Blue Nile’s sponsored links displayed the “Hearts On Fire” mark, HOF alleged sufficient allegations that consumers would likely to be confused based on the surrounding context in which the results appear.

Vegas™Comments:
Another victory for trademark owners looking to go after sponsored link purchasers who buy trademarks as search engine keywords.

Monday, October 13, 2008

Cosmopolitan Loses "Reverse" Cybersquatting Claim But Trademark Infringement Claims Move On


I’ve previously written (here and here) about the lawsuits filed by 3700 Associates, LLC (“3700 Associates”) – the owner of the troubled (but still under construction) “The Cosmopolitan Resort & Casino” condo-hotel project in Las Vegas, Nevada – against a Florida domainer in a case that epitomizes reverse cybersquatting while at the same time exploring the boundaries of trademark law by claiming that a “web directory” website (those websites featuring a multiple click-through links) constitutes use in commerce for purposes of causes of action for trademark infringement and unfair competition (click here for previous blog entry on this type of trademark infringement litigation). Click here for Sept. 8, 2008 Las Vegas Sun article about the troubled project.


When we last left the story, 3700 Associates had its Nevada District Court case dismissed on jurisdictional grounds. 3700 Associates decided to refile its trademark infringement and cybersquatting lawsuit in Florida (to overcome personal jurisdiction problems) against Tim Griffin, Sr. and Griffin IT Median, Inc. (together “Griffin”) over Griffin’s ownership and use of the Internet domain name “cosmopolitanresort.com” which Griffin registered on or about August 15, 2003 – approximately 16 months before 3700 Associates began using the mark “Cosmopolitan” in connection with its planned condo-hotel project. See 3700 Associates, LLC v. Griffin et al, Case No. 08-cv-80158 (S.D. Fla. Feb. 14, 2008).

On October 6, 2008, U.S. District Court Judge Donald M. Middlebrooks granted in part and denied in part Griffin’s Motion for Summary Judgment. See 3700 Associates, LLC v. Griffin et al, 2008 U.S. Dist. LEXIS 79721 (S.D. Fla. Oct. 6, 2008)

As one would expect given the timeframe in which Griffin registered the domain name compared to when 3700 Associates announced its intent to use the Cosmopolitan name, the court dismissed 3700 Associates’ cybersquatting claim. 3700 Associates attempted to argue that “the fact that Defendants registered the Domain Name a little over a year before Plaintiff began its COSMOPOLITAN Marks is of no consequence to the analysis of whether Defendants violated the ACPA.” Well, the court begged to differ:

Contrary to Plaintiff's assertion, I find that this is a critical fact. It is evident to me--and agreed by all parties--that Plaintiff's Marks did not exist at the time that Defendants registered the domain name in August, 2003. Plaintiff weakly proposes that “[a]t the time Defendants registered the [Domain Name at issue], 'Cosmopolitan' was distinctive as a mark for resort services.” See id. at P 16. However, I find this to be a conclusory assertion unsupported by the record. The term “Cosmopolitan” is a descriptive word meaning “international,” “multinational, or “sophisticated.” Clearly, the term itself is not distinctive or famous standing alone in the context of resort services; arguably, it is most distinct in another context, as the title of a woman's magazine. Moreover, even assuming that Plaintiff has developed the term such that it has become distinctive or famous with regard to its Marks and resort services, this has only occurred since February 2005, approximately 16 months after Defendants registered the Domain Name. To prevail on an ACPA claim, the Act plainly requires that the plaintiff's mark is “distinctive” or “famous” at the time of registration of the domain name. According to the parties' agreed-upon timeline, I find as a matter of law that Plaintiff cannot prevail on its ACPA claim. Simply put, at the time that Defendants registered the Domain Name, Plaintiff's COSMOPOLITAN Marks were not distinctive or famous because the Marks did not exist, and the term “Cosmopolitan” standing alone was not distinctive or famous in real estate services.

(footnotes omitted) (emphasis in original)

Unfortunately for Griffin, however, the court denied summary judgment on 3700 Associates’ federal and common law trademark infringement and unfair competition claims on the basis of too many issues of material fact in dispute.

3700 Associates argued that Griffin was attempting to trade on 3700 Associates’ goodwill by using the domain name to host a directory website containing multiple advertising links, with pop-up advertisements that redirected consumers to various other Las Vegas-oriented websites. Griffin countered that its website did not constitute “use in commerce” of the Cosmopolitan mark because it does not compete with Plaintiff for the sale of hotel, resort, or condo services.

The court stated that while the Eleventh Circuit has quoted another court's language that establishing a web page on the Internet satisfies the Lanham Act's “in commerce” requirement (see Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1195 (11th Cir. 2001) (quoting Planned Parenthodd Fed'n of Am., Inc. v. Bucci, 1997 WL 133313 (S.D.N.Y. 1997), aff'd, 152 F.3d 920 (2nd. Cir.), cert. denied, 525 U.S. 834 (1998)), the Eleventh Circuit has not yet “squarely” determined whether directory websites such as Griffin’s qualifies as a “commercial use” and other circuits have been split on the issue. As such, whether Griffin’s use of the domain name in connection with a web directory website constitute “use in commerce” remained an issue of material fact.

In addition, the court determined that there existed genuine issues of material fact as to whether 3700 Associates even possessed a valid mark for purposes of maintaining an infringement action against Griffin. While 3700 Associates attempted to argue that its COSMOPOLITAN marks were inherently distinctive, the court found that the evidence demonstrated that the marks were merely descriptive:

First, the words in the Marks consist of (1) “Cosmopolitan,” a term frequently used to describe a hotel or resort; and (2) “Resort and Casino” or “Resort Casino,” words that describe the goods that Plaintiff is providing. Second, evidence of myriad hotels and resorts around the world using the term “Cosmopolitan” indicates that the term is not a particularly innovative idea. Third, although not determinative, Plaintiff disclaimed the exclusive use of the terms in its trademark applications. Finally, Plaintiff has not had more than five years of continuous, exclusive use, as it first began promoting its resort hotel casino and condominiums in 2005.

(footnotes and citations omitted). As such, 3700 Associates faces the burden of showing evidence of secondary meaning prior to the date when Griffin began using its domain name (a date that also has yet to be ascertained) in order to maintain its infringement claims against Griffin.

The court did not even bother addressing likelihood of confusion given the other issues of material fact in dispute.

Monday, June 2, 2008

Tenth Circuit affirms dismissal of trademark infringement lawsuit by LDS Church critic against parody website

The Tenth Circuit Court of Appeals affirmed a lower court decision denying claims of trademark infringement, unfair competition, and cybersquatting by an organization critical of the Church of Jesus Christ of Latter-day Saints (LDS Church). See Utah Lighthouse Ministry v. Foundation for Apologetic Information and Research et al., Appeal No. 07-4095 (10th Cir. May 29, 2008). A copy of the decision can be downloaded here.

Jerald and Sandra Tanner founded the Utah Lighthouse Ministry (UTLM) in 1982 as an organization dedicate to critiquing the LDS Church. UTLM sells books critical of the LDS Church both at its Utah bookstore and online through its website (http://www.utlm.org/).

The Foundation for Apologetic Information and Research (FAIR) is an organization dedicated to responding to criticisms of the LDS Church. In November 2003, Allen Wyatt, the vice president and webmaster for FAIR, created a website (the “Wyatt website”) parodying the UTLM website which was similar in appearance (image of a lighthouse with black and white barbershop stripes), but with “different, though suggestively parallel, content”:

Prominent text on the Wyatt website consists of a slight modification of the language located in the same position on the UTLM website. For example, the UTLM website states: "Welcome to the Official Website of the Utah Lighthouse Ministry, founded by Jerald and Sandra Tanner." In comparison, the Wyatt website states: "Welcome to an official website about the Utah Lighthouse Ministry, which was founded by Jerald and Sandra Tanner." (emphasis added.) The Wyatt website does not have any kind of disclaimer that it is not associated with UTLM.

Slip op. at 3.

The Wyatt website did not contain any advertising or offer any goods or services for sale, and included hyperlinks to an organization at Brigham Young University, articles on FAIR’s website criticizing the Tanners, and links to FAIR’s website and the LDS Church. In addition, Wyatt, through his company Discovery Computing, Inc. (“Discovery”), registered ten domain names -- combinations of the words “Utah Lighthouse Ministry," "Sandra Tanner," "Gerald Tanner," "Jerald Tanner," and ".com" and ".org." Wyatt’s website was first publicized to FAIR members in April 2004. Presumably in response to UTLM’s complaint, Wyatt later shut down the website and began transferring the domain names to UTLM in April 2005.

UTLM’s complaint against FAIR, Wyatt, and Discovery asserted six causes of action—federal trademark infringement, federal unfair competition, federal trademark dilution, cybersquatting, federal trade dress infringement, and unfair competition under Utah state law. The parties filed cross-motions for summary judgment, and the district court denied Plaintiff's motion and granted Defendants' motion on all six counts. See Utah Lighthouse Ministry v. Foundation for Apologetic Information and Research et al., Case No. 05-CV-00380 (D. Utah). UTLM appealed the district court’s decision on all claims except dilution, but only briefed the issues of trademark infringement, unfair competition, and cybersquatting, so the court only addressed those three claims on appeal.

Trademark Infringement & Unfair Competition
Addressing the trademark infringement and unfair competition claims together, the court started its analysis by noting that UTLM, to make out a case for trademark infringement, must show that the mark is protectable, must demonstrate the Defendant’s use of the mark in connection with any goods or services, and must establish that such use is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person. See 15 U.S.C. § 1125(a).

Protectable Interest
UTLM argued that it was entitled to a presumption of protectability because the UTAH LIGHTHOUSE is a registered trademark/servicemark. However, as the district court noted, the mark was registered on July 25, 2006 – after UTLM had filed its lawsuit – and thus not entitled to the presumption of validity afforded to registered marks under 15 U.S.C. § 1115(a). [The court, in a footnote, stated “It is not clear that a mark must be registered at the time the suit is filed to benefit from the statutory presumption, but it is not necessary to decide that issue on this appeal.” Slip op. at 8, fn. 3.] The district court further found that UTLM had failed to show evidence that its mark had acquired a secondary meaning.

While UTLM argued on appeal that its mark is distinctive by virtue of it being arbitrary, and thus no showing of secondary meaning is necessary, UTLM did not raise this argument at the district court level, instead relying entirely on its federal registration. The court declined to exercise its discretion to consider UTLM’s arguments raised for the first time on appeal. The court also noted that UTLM’s evidence to the district court, which could be construed as an argument of acquired secondary meaning, consisted solely on the number of "hits" generated by searches for UTAH LIGHTHOUSE on the Yahoo and Google search engines and on the websites of other organizations associated with the LDS Church. The court found such evidence lacked any accompanying evidence showing that the relevant market of consumers had visited the websites containing these hits, and thus was insufficient to show that the mark had acquired a secondary meaning.

Commercial Use
The court next addressed UTLM attempts to prove the second factor – Defendant’s use of the mark in connection with any goods or services, specifically, that Wyatt’s website was “commercial” and thus his use of UTLM’s mark was “in connection with any goods or services." 15 U.S.C. § 1125(a)(1)).

UTLM first argued that Wyatt’s website was commercial because it hyperlinked to the FAIR website, which contains an online bookstore. While the issue of when hyperlinking renders an otherwise noncommercial website subject to the Lanham Act was one of first impression for the Tenth Circuit, the court cited favorably to the Ninth Circuit’s decision in Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672, 677 (9th Cir. 2005) (defendant’s gripe website was not in connection with the sale of goods or services where the “roundabout and attenuated” commercial use connection was that the defendant’s website contained a link to a second website by the defendant, which linked to a newsgroup which in turn contained advertisements for plaintiff’s competitors). The court further noted that Wyatt’s use of UTLM’s mark was not in connection with a sale of goods or services, but rather in connection with the expression of an opinion about UTLM’s goods and services. The court also noted that none of Wyatt’s hyperlinks linked directly to the FAIR bookstore, but rather to specific articles on the FAIR website and to the FAIR homepage, which the court stated was “overwhelmingly noncommercial in nature.” As such, the court found the district court’s decision that the Wyatt website was not a commercial use because it "provided no goods or services, earned no revenue, and had no direct links to any commercial sites” consistent with the Bosley case as the court found the connection to commercial use to be “roundabout” and “too attenuated,” and thus

UTLM’s second argument was that the Wyatt website and use of the UTLM mark was commercial because it prevented consumers from accessing UTLM's own goods and services – the so-called “interference” theory of commercial use where a party’s use of a trademark is in such a way that it frustrate users and prevents them from reaching the goods and services of the trademark owner. The court commented that such a theory of commercial use (i.e., use in connection with the trademark owner's sale of goods or services is commercial use) eliminates the requirement of an economic competitor and thus is inconsistent with Lanham Act’s purpose of protecting the ability of consumers to distinguish among competitors. The court also stated that this theory was criticized by the Ninth Circuit in the Bosley case on the basis that it would subject otherwise protected critical consumer commentary to the provisions of the Lanham Act.

UTLM’s final argument was that Wyatt’s use of the trademark on the Internet itself constituted commercial use. However, the court rejected UTLM’s argument that any use of a trademark on the Internet is a use "in connection with goods or services." The court, responding to UTLM’s arguments, clarified that while use of a trademark on the Internet may be sufficient use in interstate commerce to satisfy a jurisdictional requirement, such use does not automatically satisfy the “commercial use” necessary for liability under the Lanham Act.

In the end, the court found that Wyatt’s use of UTLM's UTAH LIGHTHOUSE mark was not in connection with any goods or services, and thus such use could not be the basis for UTLM's trademark infringement and unfair competition claims.

Likelihood of Confusion
In order to cover all its bases, the court went on to conduct a likelihood of confusion analysis “even if” Wyatt’s use were determined to be commercial and UTLM were found to have a protectable interest. The court first cited Sally Beauty Co., Inc. v. Beautyco, Inc., 304 F.3d 964 (10th Cir. 2002) for the six factors used by the Tenth Circuit to determine likelihood of confusion, but also noted that parody is an additional factor (and not an affirmative defense that must be asserted) to consider – one which “casts several of the above-cited six factors in a different light.”

The district court had found no likelihood of confusion based on its analysis of the six factors and its determination that the Wyatt website was a parody of the UTLM website. The court, in balancing the six Sally Beauty Co. factors, found the factors weighed in favor of a finding of no likelihood of confusion.

There was no dispute regarding similarity of the marks, which favored UTLM. As for the intent on Wyatt’s part in choosing the UTLM’s mark, no inference of confusion could be drawn from Wyatt’s intentional use of UTLM’s mark since his use was that of a parody and the benefit derived by Wyatt in using UTLM’s mark was the benefit from the “humorous association, not from public confusion as to the source of the marks. . . .” Slip op. at 19. The court agreed that there was no credible evidence of actual confusion.

Regarding similarity of goods/services offered and of marketing channels, the court noted some similarity between the goods sold by UTLM and FAIR, but that “any potential for confusion created by the similarity in goods and manner of marketing is mitigated by the lengthy path a consumer must take to reach the goods offered for sale. The FAIR bookstore does not use UTLM's trademark, and a searcher must click through a website that does not resemble the UTLM website in order to reach FAIR's bookstore.” Slip op. at 20.

As for degree of consumer sophistication, the court held that one could infer that potential customers of the UTLM bookstore are discerning and sophisticated about where they purchase books on controversial religious subjects. While the district court found the factor irrelevant, the court found the factor to favor FAIR because, much like with the fourth factor, “the absence of the UTLM trademark on the FAIR website or the FAIR bookstore lessens the chance that a consumer would be mislead into believing that she is visiting the UTLM online bookstore. Therefore, this factor does not weigh in favor of a finding of likelihood of confusion.” Slip op. at 21.

Finally, with respect to the strength of the mark, UTLM had not submitted any evidence to the district court regarding the strength of the mark and the district court determined that UTLM's evidence of search engine hits did not demonstrate that the mark had significant recognition in the marketplace. The court found the evidence to support a finding that the commercial strength of the mark weighed against a finding of confusion. The court noted that even if it were to consider UTLM’s arguments of strength made for the first time on appeal, this alone would not suffice to find a likelihood of confusion.

The court added that while it concluded no likelihood of confusion based on the conventional balancing of the factors, the fact that Wyatt’s website was a parody website provided “an even more convincing explanation of why consumers are unlikely to be confused.” Slip op. at 22. The court found no error on the district court’s part in finding that the Wyatt website was a parody because it would be immediately apparent to anyone visiting the Wyatt website that it was not the UTLM website due to the differences in content. The court noted that there were sufficient differences between the content and style of the two websites to avoid the possibility of confusion.

In the end, the court found that UTLM had failed to produce sufficient evidence to support a finding that its UTAH LIGHTHOUSE mark is protectable, that Defendants' use of the mark was in connection with any goods or services, and that Defendants' use of the mark was likely to cause confusion among consumers as to the source of the goods sold on the FAIR online bookstore.

Cybersquatting
In analyzing UTLM’s claim under the Anti-Cybersquatting Protection Act (ACPA), 15 U.S.C. § 1125(d), the court first cited the three elements that UTLM must establish to prevail on its cybersquatting claim:

1) that its trademark, UTAH LIGHTHOUSE, was distinctive at the time of registration of the domain name, (2) that the domain names registered by Wyatt, including utahlighthouse.com and utahlighthouse.org, are identical or confusingly similar to the trademark, and (3) that Wyatt used or registered the domain names with a bad faith intent to profit.

Slip op. at *24.

The second element had been established because Wyatt admittedly registered utahlighthouse.com and utahlighthouse.org, which are confusingly similar to the UTAH LIGHTHOUSE mark. However, based on the court’s determination above that the UTAH LIGHTHOUSE was not distinctive, the court found that UTLM had not established the first element.

In addition, UTLM failed to demonstrate the third element – a bad faith intent to profit. The court, looking at the nine nonexclusive factors set forth in the ACPA (see 15 U.S.C. § 1125(d)(1)(B)(i)), found several of factors which the court stated readily defeated an inference that the Wyatt intended to profit by using domain names similar to UTLM's trademark.

The first such factor was the domain name registrant’s “bona fide noncommercial or fair use of the mark in a site accessible under the domain name.” See 15 U.S.C. §1125(d)(1)(B)(i)(IV). The court agreed with the district court’s determination that Wyatt’s use was both entirely noncommercial and a fair use parody, and thus was not use of the mark in bad faith. Wyatt’s website was a parody that offered an indirect critique and lacked an overt commercial purpose.

The second factor critical to the court’s determination was the defendant’s intent to divert consumers to a website that “could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site.” See 15 U.S.C. § 1125(d)(1)(B)(i)(V). The court agreed with the district court’s conclusion that Wyatt’s website created no likelihood of confusion as to its source, or whether it was affiliated with or endorsed by UTLM, and thus did not evidence any intent on the part of the Defendants to divert consumers and to take advantage of or harm the goodwill of UTLM’s mark.

The court concluded that Wyatt lacked a bad faith intent to profit from the use of UTLM's trademark in several domain names linked to the Wyatt website. The court added that Wyatt’s website, as a parody, fits within the "safe harbor" provision of the ACPA (see 15 U.S.C. § 1125(d)(1)(B)(ii): precluding a finding of bad faith intent if “the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.”). Because Wyatt’s website was deemed a parody, Wyatt could have reasonably believed that use of the domain names incorporating UTLM’s trademark was legal, and thus the safe harbor provision applied to Wyatt’s use.

As such, the court concluded that the district court properly granted summary judgment on UTLM's cybersquatting claim


The LDS Church in Las Vegas

Friday, February 1, 2008

NFL remains aggressive over SUPER BOWL while Patriots go for 19-0 THE PERFECT SEASON

Every year as the date of the Super Bowl draws near, it has become a perennial favorite topic in the trademark law arena to discuss the National Football League’s (“NFL’s”) notoriously aggressively enforcement of its SUPER BOWL trademark.

Numerous stories in the past (see, e.g., USA Today story from 2004) have reported on the Las Vegas hotels cancelling their Super Bowl parties after receiving cease-and desist letters from the NFL. Then there are the stories about the Super Bowl parties organized by churches (see yesterday’s Washington Post article) that are facing the same cease and desist threats by the NFL

The NFL’s policy is to ban any public exhibitions of its football games on large movie screens or TVs with a screen size larger than 55 inches (although sports bars are apparently exempt from the prohibition). The NFL’s rationale is understandable given that a large group of viewers watching the game outside of their home affects TV ratings, which in turns affects advertising revenue (although no one apparently has told that to the many advertisers who are still lining up to pay a record $2.7 million for a 30 second spot this year – see story here).

And then there is the use of the SUPER BOWL mark itself. Most businesses, after either receiving notice directly from the NFL or otherwise hearing stories of other businesses receiving such notices from the NFL, began referring to the Super Bowl football game event as “The Big Game.” This allowed businesses to capitalize on the event that has become a holiday of its own without coming under the wrath of the NFL for trademark infringement. In addition, use of “The Big Game” served to reinforce the NFL’s exclusive ownership of the Super Bowl name and worked to prevent false association and “genericide.” As more businesses became more aware of the NFL’s trademark rights (and its aggressiveness in enforcing such rights), more and more adopted the substitute phrase.

And that’s why the NFL looked really bad when it applied to register THE BIG GAME mark as its own trademark. It looked pretty unfair for the NFL, after aggressively forcing merchants to adopt another phrase that would not infringe its SUPER BOWL mark, to then seek to claim proprietary rights to such mark after such wide-scale adoption. The NFL ultimately (and wisely so) abandoned the application. An article today in Forbes magazine (link here) recounts the effort by one law firm to oppose the NFL’s application. And there is fellow blogger Ron Coleman who (rightly so) gives himself a pat on the back for saying the same thing (link here) months earlier – and who also deserve credit as the originator of the Super Bowl® Watch and Contest I.

But the same old Super Bowl trademark enforcement story was not the only trademark news today. There was another Super Bowl-themed trademark story this year to go along with the usual fun.


Photo by Patrick Whittemore (Boston Herald)

Now comes news (courtesy of the Boston Herald) that the Patriots are so confident in their victory on Sunday that they have already filed trademark applications to register the marks 19-0 and 19-0 THE PERFECT SEASON. Kraft Group, LLC (“Kraft”), the owner of the New England Patriots NFL franchise, filed the Section 1(b) intent-to-use applications on January 17, 2008, listing the same five classes of goods in each application, including DVDs and video games; calendars, posters, and bumper stickers; clothing; toys; and providing sports and entertainment information and online computer games.

For those who think that the Patriots don’t have a chance in getting either mark registered, there was a Section 1(b) intent-to-use application filed back in 1998 by Bill and John Harpole for THE PERFECT SEASON 19-0, which received a notice of allowance, although a statement of use was never filed and the application went abandoned. There was another Seciton 1(b) intent-to-use application for the mark 19-0 filed in 1998 (for two classes of goods), but it was abandoned for failure to respond to the USPTO's non-final action.

Much depends on how the Patriots will actually use the mark on the aforementioned goods and services. As so often happens with trademark applications seeking to register a slogan or phrase to put on various items such as clothes and video games, the USPTO may refuse registration on the grounds that the mark is merely ornamentation that consumers are likely to perceive as conveying a message rather than indicating the source of the goods or to distinguish the goods from those of others. See In re Owens-Corning Fiberglass Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985); Damn I’m Good Inc. v. Sakowitz, Inc., 514 F. Supp. 1357, 212 USPQ 684 (S.D.N.Y. 1981). In order to overcome such an ornamental rejection, an applicant typically must -- a) argue and submit evidence showing that the mark has become distinctive of applicant’s goods (Section 2(f) acquired distinctiveness argument); b) submit evidence that the mark would be recognized by the public as a trademark through applicant’s use of the mark with goods or services other than those identified in the application (the mark is an indicator of secondary source or sponsorship); c) amend the application to seek registration on the Supplemental Register; or d) submit a new specimen showing non-ornamental use. In this case, Kraft may be able to argue effectively either indicator of secondary source or sponsorship (namely, the New England Patriots) or acquired distinctiveness. Otherwise, it may be left with registration on the Supplemental Register.

While some have decried Kraft’s applications as smug and snooty, Kraft representatives assert that the filing is merely defensive mechanism to prevent people from profiting from the Patriot’s historic season. And based on another application that was pending at the time of Kraft’s filing, they may have a point.

On November 8, 2007, William Harpole again filed an application to register the mark THE PERFECT SEASON 19-0 (for hats, jackets, sport shirts, sports jackets, sports shirts [sic], t-shirts in Class 25) on the Supplemental Register. Because Harpole is seeking registration on the Supplemental Register, the aforementioned ornamental rejection will not be an issue. However, Harpole has a different issue he must face – namely, registration on the Supplemental Register can only be sought when the mark is being used in commerce. If Harpole’s application was supposed to be a §1(b) application requesting registration on the Supplemental Register, the application will be rejected under §23 of the Lanham Act – a refusal that can only be satisfied by filing an acceptable allegation of use. See TMEP 815.02. However, the effective filing date of Harpole’s application will be the date on which Harpole files his allegation of use – not the filing date. Kraft’s applications, on the other hand, will have a constructive date as of the filing date of the applications. Depending on if and when Harpole was actually using the mark in commerce, this could set up an interesting priority contest between the two parties.

Assuming the Patriots win (I can’t imagine they would want to use the marks if they lose) and desire to follow through with using the mark in commerce, Kraft’s trademark applications are likely to be suspended pending the outcome of the prosecution of Harpole’s applications – at least with respect to the Class 25 goods (which Kraft could divide out should it so desire). Nonetheless, if Harpole is somehow able to get his mark registered on the Supplemental Register, it could still prevent the registration of any confusingly similar mark by Kraft (I suspect that Kraft’s 19-0 mark would be confusingly similar to Harpole’s THE PERFECT SEASON 19-0).

Of course, the New York Post (ever defensive of its hometown team, the New York Giants) responded to the news of Kraft’s trademark applications (see article here) with what has to be one of the best arch-rival responses ever – in the form of a trademark application to register the mark 18-1 (Serial No. 77385477 – not yet available on TARR). While I doubt the New York Post has any honest “intent-to-use,” it sure does make for a good laugh – and it only cost $325 ($275 if they were smart enough to use TEAS Plus).

Vegas™Esq Prediction:
Being in Vegas, it’s not about who wins or loses – it’s about who covers the spread. With the Giants getting 12 points, I think Patriots will win, but they won’t cover (although I am tempted to put a small Moneyline bet on the Giants – Super Bowl’s tend to be wacky games and you never know – the Giants may just pull it off).

Thursday, January 10, 2008

Barack Obama faces trademark infringement threat over “Change Rocks” campaign slogan



In 2004, Stefan Doyno, currently a 19-year-old student at SUNY-Buffalo, came up with an idea for jewelry with interchangeable stones. As he states on his Change Rocks website, he got the idea for the ring after creating a homemade gift for his mother: "I wanted to create a high-quality, yet affordable ring that women could change to match what they were wearing or how they were feeling. There was nothing out there like it, and I've been developing the high-end design ever since."

He thought the idea was novel enough that, after consulting a patent attorney, he filed a provisional patent application on August 11, 2004 (U.S. Provisional Application No. 60/600,513). A year later, on August 10, 2005, he filed his patent application for “Adaptable jewelry apparatus” (U.S. Patent Application No. 20060032270), which is still pending and can be viewed here). The following is from the abstract:

An adaptive jewelry apparatus includes a mechanism for allowing quick and secure interchange between stones or stone and base assemblies. In one embodiment, a stone is fixably joined to a base assembly, and the combined assembly is threadably interchanged with a receiving socket on a jewelry member. In an alternative embodiment the base assembly remains fixed to the jewelry member and includes mechanical or other means for release-ably securing a variety of interchangeable stones. In each embodiment the interchangeable stone is retained securely to the jewelry member while allowing ready release and replacement.

Approximately one month later on October 7, 2005, Doyno, recognizing the value of intellectual property, filed a Section 1(b) intent-to-use trademark application, to register the mark CHANGE ROCKS (for jewelry). His mark was registered on July 17, 2007.

Doyno’s business has been growing and his jewelry is now being sold in select stores in New York, New Jersey, Pennsylvania, Texas, and even Canada. Doyno has stated that he has also come out with pendants and is planning a line of T-shirts.

Doyno was surprised when one day last month, after doing a Google search for “Change Rocks,” discovered that Barack Obama’s campaign had used the phrase for a December 7th concert and fundraiser in Chicago. A poster on an Iowa campaign headquarters website indicated that Obama had at least one other “Change Rocks” concert in Des Moines, Iowa on December 29th.

On December 18th, Doyno’s lawyers sent Obama’s campaign a letter regarding Doyno’s registered mark warning Obama that use of the slogan on any T-shirts or campaign memorabilia may constitute trademark infringement.

Doyno’s lawyers apparently suggested pursuing an arrangement whereby Obama could continue to use the mark:

Mr. Doyno is far more interested in exploring possible synergies between Mr. Obama's use of Change Rocks as a slogan or theme and the Change Rocks mark and products than he is in preventing Mr. Obama from using the mark in connection with the campaign.

While Obama’s campaign has not responded to Doyno, one Obama spokeswoman has stated that no merchandise has been sold with the slogan “Change Rocks” and wished Doyno the best of luck with his business.

Vegas™Esq. Comments:
Doyno has what looks like a very promising venture based on a very creative idea that is likely to spawn numerous Chinese knockoffs, which hopefully Doyno can combat if his patent is issued. With an issued patent, Doyno can is also likely to find several licensees who will license his patent.

And while I praise Doyno’s ingenuity and appreciation for intellectual property and wish him the best of luck with his business, I doubt very much that any court would find Obama’s use of the slogan “Change Rocks” to be likely to cause confusion with Doyno’s jewelry goods.

First, while the marks are identical, there is little chance of any likelihood of confusion because Doyno’s mark is not very strong or distinctive and the "goods" at issue are completely unrelated. Even if Doyno sells T-shirts with his “Change Rocks” mark on them, such use is likely to be deemed ornamental, and not as a source identifier, and the mark has not been so widely used for Doyno’s goods that the public would recognize the phrase on a T-shirt as an indicator of secondary source or sponsorship.

Second, Obama’s use may not even be actionable “use in commerce” given that its use is as a campaign slogan (even when placed on T-shirts and buttons sold at the campaign event) and not as a mark “in the ordinary course of trade.” See 15 U.S.C. §1127.

Finally, Obama’s use is likely protected by the First Amendment and would be considered “fair use” since the campaign is using the phrase for an expressive purpose – people will recognize the word “Change” to be associated with political change (after all, aren’t the candidates always saying this election is about “change”) and the term “Rocks” to be a reference to the rock music being played at the concert or a suggestion about “change” being something “cool” that the likely younger voters attending the campaign event should support.

It was perhaps serendipitous that Doyna discovered Obama’s campaign using the phrase because it allowed Doyna to use the coincidence to get some wide-scale attention for his product. The subsequent media attention to Doyno’s product has probably helped him sell more of his goods than any harm that could possibly come from Obama’s use (either in the past or even in the future) of the slogan. The publicity also helps strengthen his mark should real infringer decide to infringe the mark.

So while there is not much of a trademark controversy here, I would not be surprised if this letter to Obama’s campaign warning of trademark infringement was actually an ingenuous way to garner attention for his product (he is certainly smart enough to have considered entertained the thought).

Rock on!

Monday, October 15, 2007

FIRST NIAGARA Trademark Dispute Moves to the Big Leagues

Several New York State papers reported over the last few days (Times Union, Buffalo News, and Syracuse.com) about a $2 billion trademark infringement lawsuit filed by a Canadian insurance brokerage firm against a Lockport, New York banking company over the name FIRST NIAGARA.

On October 10, 2007, First Niagara Insurance Brokers, Inc. (“FN Insurance”), located in Niagara Falls, Ontario, filed a lawsuit in the U.S. District Court in for the Southern District of New York against First Niagara Financial Group, Inc. (“FN Financial”). See First Niagara Insurance Brokers, Inc. v. First Niagara Financial Group, Inc., Case 7:07-cv-08720 (SDNY). FN Insurance is seeking an injunction against FN Financial to stop the company from using the First Niagara name and also seeking $532 million in actual damages (pre-tax net revenues the bank has taken in since adopting the name in January 2000) and treble damages of $1.5 billion.

The trademark dispute has been on ongoing one for several years – with the two parties fighting over the First Niagara name in the U.S. Patent and Trademark Office for some time. When the decision was made back in January 2000 for Lockport Savings Bank to change its name to First Niagara Financial, FN Financial filed intent-to-use trademark registration applications right away on January 7, 2000, including FIRST NIAGARA, FIRST NIAGARA (and design), FIRST NIAGARA FINANCIAL GROUP (each application covering four classes of goods and services, including insurance services in Class 36)

In February 2001, FN Insurance instituted oppositions with the Trademark Trial and Appeal Board (“TTAB”) against FN Financial’s applications seeking to prevent registration on the grounds of Section 2(d) likelihood of confusion. See Opposition Nos. 91122072, 91122193, 91122224, 91122450, 91122712 and 91150237.

Meanwhile, on September 27, 2002, FN Insurance filed its own trademark applications, FIRST NIAGARA INSURANCE BROKERS and FIRST NIAGARA (both for insurance agency services), claiming use in commerce back to 1984. FN Financial filed its own opposition against FN Insurance’s application for FIRST NIAGARA INSURANCE BROKERS (Opposition No. 91163457, which was suspended pending the outcome of the other consolidated oppositions) while prosecution on FN Insurance’s other application was suspended.

On October 21, 2005, the TTAB, in a precedential decision, decided against FN Insurance finding that FN Insurance could not establish use of its marks for insurance brokerage services “regulable by Congress.” See First Niagara Insurance Brokers Inc. v. First Niagara Financial Group, Inc., 77 USPQ2d 1334 (TTAB 2005) (decision here). In essence, because FN Insurance only offered its services in Canada, and not in the U.S., its use could not constitute use in commerce because Congress does not regulate use in commerce outside of its borders. The TTAB disregarded evidence of FN Insurance’s advertising efforts in the United States as use in commerce within the United States. Without such use, the TTAB found FN Insurance could not establish priority, could not make out a claim for Section 2(d) likelihood of confusion, and dismissed the oppositions.

However, that decision was reversed by the Court of Appeals for the Federal Circuit (“CAFC”) in its own precedential ruling holding that the TTAB had used the wrong standard in holding that use must be use “regulable by Congress.” First Niagara Insurance Brokers, Inc. v. First Niagara Financial Group, Inc., Appeal No. 06-1202, 81 USPQ2d 1375 (Fed. Cir. Jan. 9, 2007). The CAFC, finding that FN Insurance had submitted sufficient evidence to demonstrate use of its mark in the United States to satisfy the requirements of Section 2(d), found that the TTAB had clearly erred in dismissing the oppositions and remanded the case back to the TTAB for further proceedings.

On remand, the TTAB sustained three of the oppositions in part and dismissed the oppositions in the other three cases. See First Niagara Insurance Brokers Inc. v. First Niagara Financial Group, Inc. (TTAB June 6, 2007) (decision here). The Board found a likelihood of confusion between FN Insurance’s marks and three of FN Financial’s applications when used in conjunction with insurance services (class 36). The court did not find such a likelihood of confusion with respect to the other classes of goods in those three FN Financial’s applications nor with FN Financial’s other three trademark applications (which were directed only to banking services).

Both parties have appealed this recent TTAB decision to the CAFC. FN Insurance is apparently not satisfied that FN Financial will continue to use the name First Niagara in association with banking services (which FN Insurance maintains is closely related to insurance services). On the other side, FN Financial is apparently not satisfied that FN Insurance has shown sufficient use within the United States to establish Section 2(d) likelihood of confusion.

FN Insurance, however, appears to have gotten impatient with the wait and has decided to take much more drastic action. By going straight to District Court, FN Insurance can seek an injunction to stop FN Financial from using the name FN Insurance. Of course, given the fact that the two businesses have coexisted for some time, FN Insurance may be hard pressed to show that it now faces irreparable harm, much less a strong showing of likelihood of confusion to justify a presumption of irreparable harm in order to obtain a quick preliminary injunction against FN Financial. After all, the TTAB in its second decision found that so-called evidence of actual confusion (the 2600 misdirected e-mails) may have been more the result of confusion over the parties similar domain names and not from a confusion as to source. In addition, the emails were apparently addressed to specific individuals, and not general inquiries searching for insurance policies.

There is also some question of whether a presumption of irreparable harm should follow a finding of likelihood of confusion or whether the holding of the U.S. Supreme Court in eBay, Inc. v. MercExchange, L.L.C., 126 S. Ct. 1837 (U.S. 2006), which involved an injunction in the area of patents, has set a new standard by which federal courts should abide in deciding whether to grant injunctions for trademark infringement. For an interesting article on this uncertainty, see “The Unsettled State of Preliminary Injunctions for Trademark Infringement,” Day Pitney LLP Alert (July 26, 2007) (link here).