How low can we go? An overview of “use in commerce” requirement in trademark registration

By Arlene Mu

For trademark registration and renewal, one needs to establish that the trademark is “used in commerce”. If you read my previous blog entry, you may have the impression that this is a very low standard. The standard is indeed low and it’s become lower and lower in recent years. However, the question remains, how low can it go? Can it fall so low that there is virtually no requirement at all? Continue reading »

The Washington Redskins, the Laches Doctrine and Secondary Meaning: Why Time Doesn’t Heal All Wounds

By Luke MacDowall

Time: it’s a concept that seemingly presents little difficulty. For centuries, it seemed to be continuous, predictable, and simple. Then, Albert Einstein uncovered the reality that time was not a linear pathway along which history unfolded, but rather something very complex that depended on how one approached it and where one stood in relation to it. Although time’s complexity has no bearing on an individual during daily life as it behaves in that simple and predictable way for all of us, a recent case might be understood as bringing the importance of time’s relativity to the forefront. In Harjo v. Pro Football Inc., 565 F.3d 880 (D.C. Cir. 2009), cert. denied, 130 S.Ct. 631 (2009), the importance time plays in the lawsuit becomes obvious when one considers the arguments used by the NFL. Two common defenses used in trademark cases, the doctrine of laches and secondary meaning, rely on a determination of how time has affected the central issue in Harjo: Does the term “Redskins” as a trademark of the NFL disparage Native American peoples? Although the differing outcomes reached by the Trademark Trial and Appeal Board and the District Court on the question can be understood as simple differences in opinion that arose from a rather dicey set of facts, this blog offers a different explanation. Namely, the jurists understood time differently because they analyzed from different parties’ positions, which gave rise to different perspectives on the importance of time. Continue reading »

The Intersection of Trademark and Antitrust: Why Centralized Licensing Agreements Protect Consumers

By Luke MacDowall

The case of American Needle, Inc. v. NFL, presently before the Supreme Court, primarily challenges the use of centralized licensing agreements under antitrust law, but it also raise important questions about the function of trademark law as means to protect consumers.  The move to centralized licensing agreements between sports leagues and the vendors of their merchandise raise two legal concerns: (1) the balance of trademark owners’ free licensing rights of their trademark property against antitrust challenges by vendors and (2) increasing customer certainty about the source of the products bearing the distinct marks. Although the arguments in American Needle focus on the antitrust concerns of allowing trademark owners within a sports league to jointly contract with vendors, this side of the story only reveals the first of the two legal concerns in the case. In contrast, this post looks at how the second concern is a legitimate goal that should be remembered in these cases. Continue reading »

Now Trademark Attorneys Can Sleep Easier at Night: Federal Circuit Raised Standard on Proving “Fraud” in Trademark Renewals

By Arlene Mu

For years, trademark attorneys had to be super-careful because a simple mistake could lead to a finding of fraud and subsequent cancellation of a trademark registration. There are two reasons for this. First, under federal law, a third party may file a petition to cancel a registered trademark if the registration was obtained fraudulently. See 15 U.S.C. § 1064. Second, and more importantly, the United States Patent and Trademark Office (“PTO”) was tough regarding fraud in trademark registration. The Trademark Trial and Appeal Board (“TTAB”) of PTO set the “fraud” standard as low as negligence: “a trademark applicant commits fraud in procuring a registration when it makes material representations of fact in its declaration which it knows or should know to be false or misleading.” Medinol v. Neuro Vasx, Inc., 67 USPQ2d 1205, 1209 (T.T.A.B 2003). This means even an accidental mistake could lead to cancellation of a trademark.

The recent ruling of In re Bose Corp. (the “Bose case”) has changed this landscape. In re Bose Corp., Opposition No. 91/157,315, 2009 WL 2709312 (Fed. Cir. Aug 31, 2009). On August 31, 2009, the Federal Circuit decided that, in order for a trademark registration to be canceled on the basis of fraud, the party challenging the registration must prove that the registrant had actual intent to deceive the PTO. Continue reading »

One Box, Two Buttons, and Lots of IP Rights: Google’s Design Patent on its Search Page Interface

By Arlene Mu

On September 1, 2009, Google received a design patent on its familiar search page interface (Pat. No. D. 599,372). The awarded design patent covers the “ornamental design for a graphical user interface … as shown and described.” The dashed lines indicate features that are not claimed. In addition to the design patent, there is a circle-c © at the bottom of the design patent drawing, which indicates that Google is also claiming copyright protection for this layout. Moreover, in the design patent, Google indicates that it is also claiming trademark protection for portions of or possibly, the whole layout. Continue reading »

Target: Fashionistas Benefit from Lax Copyright & Trademark Laws

By:  Lauren Metcalf

With the economy still on the rebound, more and more consumers are cutting luxury items out of their budgets and instead looking for ways to save on items that previously might have been a splurge. Discount retailer Target has attempted to attract thrifty yet style conscious buyers by offering designer-inspired clothing and home furnishings at the low prices its customers expect. But has the retail giant gone too far in copying designs of the luxury brands its customers covet?

In late September, luxury handbag and accessory designer Coach sued Target alleging that the retailer is selling handbags that copy two of its designs, the Ergo fold-over handbag and its Signature Patchwork line. Coach Services, Inc. v. Target Corp., No. 09 CV 8329 (S.D.N.Y. filed September 28, 2009). The lawsuit includes claims of trademark infringement and unfair competition. In its complaint, Coach claims the bags sold at Target are “exact and/or confusingly similar reproductions” of Coach designs.

The practice of copying original fashion designs and then selling the reproductions under a different label is known as design piracy. The practice is all too common, but unfortunately for the original designers, current U.S. intellectual property law offers only limited protection for fashion designs. Continue reading »