Reports on trademark law developments from Seattle and beyond. Covers trademark infringement, dilution, cybersquatting, right to publicity, domain name disputes, and the like, with an emphasis on happenings in the Seattle area and Ninth Circuit.
By Michael Atkins
Posted on September 08, 2014
The owner of a federally-registered trademark is presumed to be the exclusive, nationwide user of the mark in connection with the goods or services listed in the registration.
However, that presumption does not usually extend to generic or descriptive elements of a mark, apart from the mark as a whole...
Posted on August 10, 2014
Before a trademark can be registered, it has to be used.
There’s one exception to that — if a mark is registered in a foreign country, it can be registered in the States without having been used here. But even then, the registration eventually will cancelled if the owner does not prove the mark has been used...
Posted on June 01, 2014
During Washington’s last legislative session, Olympia considered taxing marijuana trademarks.
It’s a bad idea.
But first, a little background on the bill.
If passed, House Bill 1976, would have levied a “tax of three dollars and sixty cents per thousand dollars of assessed value upon the assessed valuation of all trademarks, trade names, brand names, patents, and copyrights that are related to marijuana...
Posted on April 13, 2014
Trademarks are source identifiers. They tell consumers where a good or service comes from. So when a mark consists of descriptive words, it really doesn’t function as a trademark. It tells consumers about the product — not who sells it.
For this reason, the U...
Posted on April 01, 2014
I’m now back from Germany, where I traveled to help with a program sponsored by the University of Washington School of Law.
It combined UW law students with law students from Europe. The Europeans learned about American intellectual property law, and the Americans learned how they do things in Europe...
Posted on March 04, 2014
I’ve got some clients who are interested in protecting their (legal) marijuana trademarks: both medical and recreational.
Since they’re interested, I’m interested.
And, besides, I think it’s just plain interesting. Illegal on the federal level...
Posted on February 10, 2014
I’ve had a few clients recently who regretted waiting to apply to register their trademarks.
This isn’t about scaring anyone. Waiting a while often doesn’t have a downside. Indeed, deciding not to register a trademark at all might be the right thing to do...
Posted on January 28, 2014
No need to call it the “Big Game.”
If you’re having people over to watch the Super Bowl, feel free to say you’re having a Super Bowl party.
There’s much in the news about NFL’s heavy-handed trademark enforcement...
Posted on January 14, 2014
What’s a trademark owner to do if the PTO denies an application for federal trademark registration because it finds the mark is “merely descriptive”?
A mark is merely descrptive under U.S. trademark law if it immediately conveys information about the good or service being sold in connection with the mark...
Posted on January 07, 2014
Foreign owners may not have any trademark rights in the United States.
Despite treaty provisions that say otherwise, U.S. courts generally do not recognize foreign trademark rights in the States — no matter how well-known those marks might be abroad...
Posted on December 02, 2013
Trademark dilution is a creature of statute.
As incorporated in the federal Lanham Act, it prohibits a later-adopter from using a trademark that is likely to dilute the earlier-adopter’s famous trademark. It doesn’t matter if the later use is likely to cause confusion — the standard for trademark infringement...
Posted on November 13, 2013
A client that obtained a federal trademark registration recently asked me a good, but basic question.
Now that I’m registered, when do I use the Circle-R symbol (®)? And when do I use “Inc.”?
Once a registration issues, the trademark owner should stop using the TM symbol if it has previously made such use and replace it with the Circle-R symbol...
Posted on October 27, 2013
There’s an election today here in Buenos Aires. To an American, this is interesting for several reasons. First, the election is held on a Sunday, so everyone can vote. Second, voting is mandatory. Third, you can’t buy booze today, in order to promote clear decision-making...
Posted on October 20, 2013
STL’s been in Buenos Aires.
It’s awesome. And it’s summer!
But for this blog, a trip to Buenos Aires can only mean one thing: infringement safari. When traveling, it’s great fun to find examples of blatant trademark infringement, counterfeiting, descriptive marks, and the like...
Posted on September 24, 2013
New York reportedly is cracking down on fake online reviews.
It’s about time. Others should follow suit.
Let’s say you’re an honest business owner. Your biggest competitor is not. It writes negative reviews about your company and glowing reviews about itself...
Posted on September 09, 2013
I’m giving a talk next week about protecting your brand on social networks.
The theme of my talk is that a trademark owner’s ability to stop others from saying bad things about its brand is limited.
Just ask Kenneth Seaton, owner of the Grand Resort Hotel and Convention Center...
Posted on August 31, 2013
Now that the feds say they’re not going to challenge Washington’s statute legalizing recreational use of marijuana, does that mean you can get a federal registration for your marijuana-related trademark?
Nope. I would expect the U.S. Patent and Trademark Office to continue to deny applications for federal registration of any drug-related trademark that the feds deem to be illegal...
Posted on August 19, 2013
Plaintiff Dereck Seltzer is an artist. In 2003, he created ?Scream Icon,? a drawing of a screaming, contorted face. Since then, he moved on to other projects, but at times used his drawing to identify himself and his work?s presence by placing it on advertisements for his gallery appearances, and once licensed it for use in a music video...
Posted on August 11, 2013
Celebrities’ right of publicity claims are stronger than their Lanham Act claims, the Ninth Circuit recently found. At least in some situations.
On July 31, the court decided two cases former football players brought against Electronic Arts, Inc...
Posted on July 29, 2013
Every party filing a new trademark lawsuit must complete “Form AO 120,” titled, “Report on the Filing or Determination of an Action Regarding a Patent or Trademark.”
The form asks the plaintiff to provide information about the trademark at issue in the suit, including its “date...
Posted on July 15, 2013
Abercrombie & Fitch beat the rap.
It made fun of Jersey Shore star Michael “The Situation” Sorrentino by selling shirts that used the phrase “The Fitchuation.”
Sorrentino and his company, MPS Entertainment, sued Abercrombie for trademark infringement...
Posted on July 03, 2013
Again from the New York Times, a good look at trademark infringement lawsuits involving Ivy League schools.
The article features a lawsuit Yale University recently filed against Yale Academy, a SAT test prep school. Yale Academy said it chose its name by combining the names of its owners, Mr...
Posted on July 01, 2013
The New York Times ran a disturbing story on Thursday: “Counterfeit Food More Widespread Than Suspected.”
That’s right. Counterfeit food.
The article talked about how a Russian gang faked vodka. It put booze in “genuine vodka bottles with near-perfect counterfeit labels and duty stamps,” which they sold in stores in England...
Posted on June 10, 2013
One of the things a client gets when he hires a lawyer is loyalty. Undivided loyalty.
That means the lawyer can’t use things he learns in the course of representing a client against that client in the future while representing someone else.
This principle was reflected in a recent case decided in the Central District for California...
Posted on June 03, 2013
The Ninth Circuit?s May 21 decision in U.S. v. Chen says a lot about the folks who make money selling counterfeit goods. Not surprisingly, they make money a whole lot of nasty ways.
Mr. Chen was convicted of trafficking in counterfeit Marlboro cigarettes...
Posted on May 14, 2013
A STL first: a reader’s infringement safari!
Seattle lawyer Kevin Halverson just returned from an enviable vacation to Mexico. “Warm-water surfing,” as he put it. Seriously, that right there is reason enough to practice law. I’m super-jealous...
Posted on May 12, 2013
Counterfeit goods. They were everywhere at the International Trademark Association’s annual meeting.
That’s where I was last week: in Dallas, meeting with trademark colleagues from around the world. There were 9,500 of us. And a lot of counterfeit goods...
Posted on May 10, 2013
Costco advertised some rings in its store as being “Tiffany” rings.
Problem is, Tiffany didn’t make them.
Costco says it wasn’t confusing anyone. It was just describing the setting style, which it says is known as a “Tiffany” setting...
Posted on April 28, 2013
Newsboys, Inc. v. Warner Music Inc., illustrates that similar marks paired with similar goods or services may not create a likelihood of confusion.
The secret is enough of a difference in the goods or services.
Plaintiff’s mark is NEWSBOYS. Defendants’ mark is NEW BOYZ...
Posted on April 23, 2013
Folks who talk with a lawyer for the first time often wonder, “Is this confidential?”
I know they wonder it, because they often wonder it out loud.
The answer is yes. Even if you haven’t signed anything, or paid your lawyer anything, what you tell your lawyer in that first phone call or during that first meeting is completely confidential...