Railroad Alleges Dilution By Law Firm's Commissioned Painting:
A law firm representing railroad workers commissioned, among others, the image above, which depicts a Burlington Northern Santa Fe train. BNSF protested the usage alleging dilution. Demand letters and response linked to in this article from Public Citizen Litigation Group (which is representing the law firm).
Google ducks a legal bullet | Perspectives | CNET News.com:
In the mostly uncharted territory of Internet jurisprudence, Google's policy of selling keywords has won a legal reprieve--at least for now.
A recent court ruling says Google is within its rights to include Internet links from competitors to a trademark holder when people search on the corporate name.
In a trademark lawsuit, computer franchiser Rescuecom had complained that when people typed its name into the Google search engine, the results would include URLs from competing Web sites. While U.S. District Court Judge Norman Mordue accepted the allegations in the trademark lawsuit Rescuecom filed against Google as true, he still dismissed the case.
The Columbus Dispatch - Business:
For decades, the yellow happy-face symbol has encouraged millions to smile.
But now a bitter legal battle over smiley could be enough to make the happy little symbol frown.
Wal-Mart Stores Inc., which uses a yellow happy face as a signature image, is saying that it has exclusive rights to the familiar image, at least among department stores.
It is fighting a French native who has earned millions in licensing fees on smiley’s back since the early 1970s, when he began securing trademarks for the happy face around the world.
The two sides are expected to wrap up their cases before the U.S. Patent and Trademark Office in the summer, with a ruling sure to bring a smile to one side or another.
If Wal-Mart prevails, it could keep its competitors from festooning the symbol on plastic bags, name badges, balloons, handbags and just about anything else sold in stores, or the ads used to promote them.
Beatles lose Apple court battle:
The Beatles lose their High Court battle with Apple Computer over its iTunes download store.
Trademarks Are A Means To Extend Leverage Beyond Patent Expiration:
Creation of a comprehensive trademark portfolio is no easy task. In essence the process is akin to developing a no-holds-barred media awareness program. That is why more and more pharmaceutical companies advertise their products on television and in the print media. Educating the public in addition to the doctors and pharmacists clearly adds an advantage as the images of products play into the minds of the consumers. In home-care medical devices are also heavily advertised.
In Brand New Challenge (see winter 2006 issue of IP Review), Pfizer is mentioned as a company doing just that. Pfizer has built an instantly recognizable brand for Viagra through key trademark registrations. Who doesn’t know about the little blue diamond shaped pill?
It seems that the trick is to trademark all of the distinctive elements of a product, such as the name, logo, shape and color of the product. At the very least, this will make it difficult for knock-off companies to produce products that have similar attributes.
Of course, there are some drawbacks. As more and more trademarks are filed, it will become increasingly difficult to secure federal protection for brands. Also, developing names for products, especially for pharmaceuticals, will become more difficult – the Food and Drug Administration has a stringent policy for accepting new product names.
An interesting question is whether a trademark protection policy could work for products in other technology industries? In fast-paced technology sectors, products may die off before the expiration of a patent, so it seems less necessary to invest in this type of brand development. However, for other technology areas where products have longer life cycles, it may seem fitting to invest in the development of a strong brand identity.
One key element to remember is that trademark protection can last well beyond the twenty year patent limit, so long as the trademark remains in use. It will be interesting to see how well trademarks continue to protect products long after their associated patents have expired.
DesMoinesRegister.com:
Two Des Moines companies have found themselves in the middle of separate trademark disputes, with one also being accused of patent infringement by one of the nation's largest makers of health care products.
Johnson & Johnson and a subsidiary, McNeil-PPC Inc., sued Qualis Inc. last week in U.S. District Court in Des Moines. They alleged that Qualis has spent the past two years selling "warming liquid personal lubricants" to three major pharmacy chains in packages that look remarkably like those produced by McNeil's K-Y brand.
Johnson & Johnson also alleged that since February, Qualis has violated its patent on the composition and methods of use for the K-Y Warming Liquid. The plaintiffs said their product is used, among other things, to "enhance the intimacy of the sexual experience."
Could Holograms Be The Next Generation Of Trademarks?:
One untapped source for trademarks are holograms. Holograms are most notably used for anti-counterfeiting purposes. Businesses use them to distinguish their products from fakes. Take drivers’ licenses as an example. Most, if not all states, issue drivers’ licenses with state specific holograms to signify that the license is authentic.
Similarly, businesses should be able to use holograms as a source identifier and a means to distinguish goods or services from others in the marketplace. All of the existing trademark laws should still apply. Therefore, a useful hologram should be distinctive enough to be used to uniquely identify itself and its products or services to consumers.
In Holograms The next generation of trademarks? (appearing in the latested issue of IP Review), Dr. Ralf Sieckmann offers the following advice for registering a holographic device as a trademark:
-Describe the hologram in as much detail as possible, providing visual views of the hologram in various frames with descriptions of angle and appearance.
-File holograms in countries that have a liberal view on the registration of simple holograms, such as in France, Australia and the United States.
-If a country’s trademark procedures are too restrictive, consider filing an international application through one of these countries first. Once registered, WIPO will simply duplicate the trademark as an international trademark, and it will be up to each country to determine the registerability of the hologram mark.
-Last, but not least, if such an approach does not work, an alternative is to file a national or Community Design. Such designs can be registered on packaging, as a film or on other parts, provided the hologram is new or less than 12 months on the market.
When considering your next tradmark, think about using holograms. The are a vast number of options... at least for now, anyway.
ag-ip-news.com (Intellectual Property News Agency)AGIPNEWS2816:
GENEVA - The World Intellectual Property Organization (WIPO) announced in a Tuesday press release that the Director General Dr. Kamil Idris, in the presence of Singapore’s Deputy Prime Minister, Professor S. Jayakumar, opened on March 13, 2006, a diplomatic conference on intellectual property (IP) for a new treaty in the field of trademarks.
It is the first time that a diplomatic conference organized by WIPO is held in Asia. On March 14, 2006, Dr. Idris attended the first plenary session, which resulted in the election of Singapore’s Permanent Representative to the United Nations in Geneva Ambassador Burhan Gafoor, as President of the Diplomatic Conference for the Adoption of a Revised Trademark Law Treaty (TLT).
ag-ip-news.com (Intellectual Property News Agency)AGIPNEWS2807:
GENEVA - A major conference to revise a key international treaty in the field of trademarks, convened by the World Intellectual Property Organization (WIPO), opens on Monday in Singapore in the presence of top officials.
According to a press release by the Organization, the three-week conference will be formally launched by WIPO Director General, Dr. Kamil Idris, in the presence of Singapore’s Deputy Prime Minister and Minister for Law, Professor S. Jayakumar. High-ranking diplomatic delegations from the 183 WIPO member states, many led by senior officials, as well as observer delegations representing the branded goods industry and the trademark profession, will be attending the conference.
Yahoo To Ban Bidding On Competitor Trademarks To Stop Comparison Advertising:
Yahoo No Longer Allow Bidding On Trademarked Terms on our SEW Forums has news that Yahoo will no longer be allowing companies to purchase ads linked to the trademarks of their competitors. From what's being sent to advertisers:
On March 1, 2006, Yahoo! Search Marketing will modify its editorial guidelines regarding the use of keywords containing trademarks. Previously, we allowed competitive advertising by allowing advertisers to bid on third-party trademarks if those advertisers offered detailed comparative information about the trademark owner's products or services in comparison to the competitive products and services that were offered or promoted on the advertiser's site.
In order to more easily deliver quality user experiences when users search on terms that are trademarks, Yahoo! Search Marketing has determined that we will no longer allow bidding on keywords containing competitor trademarks.
Company Files Trademark Suit Against Google Over...:
Company Files Trademark Suit Against Google Over Ads
Logo Not Copyright Management Information Under DMCA:
Removal of a trademark logo and link is not 'removal of copyright management information' as barred by the DMCA. The District Court for New Jersey dimissed a copyright claim, interpretating 'copyright management information' as being part of an automated system, not part of a manual system (such as affixation of a copyright notice).
IQ Group v. Weisner Publishing, 03-5221 (D NJ Jan. 10, 2006) (via Rutgers, via BNA).
Domain Name Containing Trademark Translation is Determined Confusingly Similar:
Interesting WIPO case (D2005-1085): Complainant (Saint-Exupery estate) owns "Le Petit Prince" in EU, US, and other countries. The translation of "Le Petit Prince" is "The little prince". Respondent registered 'thelittleprince.com'. Is such a domain name confusingly similar to the trademark?
The Million TM-infringement homepage? (Wendy Seltzer):
How many trademark infringements can you spot in the The Million Dollar Homepage? Among all the ads for free porn, free domain names, and free gambling (only the first click is free), I spot least eBay and Yahoo! logos that don't go to those companies' websites. I can't tell whether they're associated listing services, click-through affiliate links, or phishing expeditions, but I imagine the companies would have a decent trademark claim against someone who used the logos for unrelated commercial gain. Even those offering companion services, such as eBay listing facilitators, might not win with a TM fair use defense.
See this Washington Post story for more on the site and its bubble-story.
Jury Rules for Polo Group in Logo Suit: "NEW YORK-A jury found Thursday that the United States Polo Association and Jordache Limited can use horse logos that Polo Ralph Lauren said infringed on the trademarks of its famous horsemen logos."
(Via FindLaw: Top Legal Headlines.)
JBoss denies running a trademark monopoly | CNET News.com: "BARCELONA, Spain--JBoss has been accused of using its trademark to create a monopoly, but the company insists that it is merely protecting its brand. Rickard Oberg, who claims to be a co-founder of JBoss, said in a blog last week that JBoss' trademark policy contradicts the open-source ideology. 'The use of trademarks, which, in the case of 'JBoss,' covers both the product and any related services, to stifle competition is a practice which very much defeats the purpose of open source and FOSS (free and open-source software), and is designed to create a monopoly situation whereby only JBoss Inc. and partners can offer such services, coupled with a pricing strategy that is quite aggressive and far from 'free,'' Oberg wrote. But Marc Fleury, co-founder and chief executive of JBoss, denied that its trademark policy prevents companies from offering support around open-source products covered by the JBoss trademark."
(Via Cnet.)