Trademarks

Facebook is Accepting No Friend Requests: Trademark of “Generic Plus” Words Makes Fast Adversaries

By Tiffany R. Johnson *

“At the end of the day, we weren’t aware Facebook owned the internet or the word ‘book’.”  When Greg Shrader, founder of Teachbook.com, uttered these words on a Chicago news program, he wasn’t just being coy for the sake of the cameras.  Facebook filed a complaint in a California District Court against the small start up on August 18, 2010 alleging eight violations of common and federal law, including trademark infringement, trademark dilution, and cybersquatting.  Just type in “facebook v. teachbook” in any search engine, and it quickly becomes apparent that small companies are frustrated by Facebook’s allegation that the use of the word “book” is both dilution and infringement of its trademark.  But Mark Zuckerberg, infinitely more recognizable by name after the success of The Social Network, isn’t pulling any punches for websites that even suggest a riff on Facebook’s marks, including the use of words like “wall” or, the ever-popular, “face.” Continue reading »

Trademarking USC: Did You Mean the University of Southern California or South Carolina?

By Alayna R. Ness *

Sometime during my first year at Wake Forest, I had a conversation that went a little something like this:

Classmate: “Do you know Joe Smith?  Did you know he went to USC?”

Me: “He did?  I didn’t know he’d spent time in LA.”

Classmate (with look of confusion): “I don’t think he did.”

Me (also confused): “But you said he went to USC.”

Classmate: “Right.  The University of South Carolina.”

Me (still confused): “Oh.  But you said USC.  You know that’s in LA, right?”

And on it goes, like a bad round of “Who’s on First.”  (There’s another variation where my friend is super excited because Clemson is playing USC and I get very confused about why the game is in Greenville.)  Continue reading »

The Godfather of Facebook: A Possible Trademark Infringement Suit in the Burgeoning Social Gaming Sector

 By Vlad Vidaeff *

The emergence of social media over the past few years has been truly unprecedented.  It took the radio 38 years to reach five million users; the television, 13 years; the internet, four years; and the iPod, three years.  For Facebook, it took less than one year to reach over 200 million users. Facebook now tops Google for weekly traffic in the United States.  As Facebook has developed new features over the past few years, one emerging trend has been the addition of social games produced by third parties.  The most notable of these applications have been Farmville and Mafia Wars; the latter being the center of a complaint filed in the Northern District of California by Digital Chocolate. Continue reading »

Plain Packaging on Tobacco for Australia: A Model for Reducing Healthcare Costs, or a Violation of Intellectual Property Rights?

By Lauren M. Tozzi

In 2006, when I was backpacking with friends in Eastern Europe, we went to Ljubljana, Slovenia.  We were not expecting much nightlife in this small city, so we were surprised to find a red carpet entrance, lined with velvet rope, and surrounded by flashing lights.  We were even more surprised when the bouncer admitted us despite our not-so-hip traveler attire.  Inside, servers were making their way through the crowd with trays of free drinks.  Why was there a chic club in a city that is otherwise known for its bridges and medieval castle? Continue reading »

WTO Resolves IP Conflicts after Uncle Sam TRIPS on the Great Wall of China

By Blake P. Hurt

In my opinion, the difference in Intellectual Property (“IP”) protections between nations has been a thorn in the side of the business community since globalization became the name of the game after WWII.  I believe this issue is especially vexing to countries like the United States, who gained economic superiority through industrialization in the last century and now seeks to maintain its position in the new millennium.  Perhaps the most difficult challenge facing this pursuit is how to protect valuable innovation while outsourcing manufacturing and production overseas to maintain low costs.  A perfect example of this struggle is the current dispute between China and the United States in the World Trade Organization (“WTO”). Continue reading »

A Crushing Tackle by the Supreme Court: Why the NFL's Dreams of Antitrust Exemption Were Shattered

By Vlad Vidaeff *

1922. This was the year the Supreme Court of the United States ruled that Major League Baseball (“MLB”) was not subject to the provisions of the Sherman Antitrust Act.  Baseball’s antitrust exemption essentially meant that each team, such as the Boston Red Sox or the New York Yankees, was part of a single entity—MLB.  Due to baseball’s antitrust exemption, MLB is able to engage in practices that would often be illegal in other businesses.  After this monumental ruling, common sense dictated that the antitrust exemption would soon be extended to other professional sports leagues such as the National Football League (NFL), the National Basketball Association (NBA), and the National Hockey League (NHL).

However, since the Federal Baseball decision, the Supreme Court has repeatedly refused to extend this antitrust exemption to other sport leagues.  Another opportunity for possible antitrust exemption presented itself in the Supreme Court’s recent decision on May 24, 2010. Continue reading »

“Use in commerce” or “Use in the course of trade”: The Conflict Between U.S. and E.U. Trademark Protection

By Luke Peterson

Google continued its recent string of IP litigation with a favorable decision before the European Union Court of Justice Grand Chamber. Google France v. LVMH, Case 236-08 (2010). The controversy focused on AdWords, one of Google’s most irritating if not remarkably successful features. AdWords functions by allowing advertisers to link their advertisements to keywords entered in a search; each search including that word triggers a tailored list of sponsors on the results page. For example, a search for “ties” might yield a list of “Sponsored Links” including “Men’s Warehouse” and “Buy ties at Tieguys.com.” Advertisers select the keywords, insert a description, and link to their sites. Google arranges ads according to the price-per-click contract rate, number of clicks, and overall quality. Continue reading »

The Department Of Justice Stakes Out a New Battlefront in IP Law: A Look at the New Task Force on Intellectual Property

By Luke Peterson

In another maneuver in the on-going battle to curb cybercrime the Department of Justice has established a new Task Force on Intellectual Property focused on developing and implementing strategies to prevent intellectual property crimes. Emphasis is placed on the word “new” because both the Clinton and Bush administrations each created task forces to demonstrate their respective commitments to intellectual property. But what can the Task Force do that is not already being done? No one will contend that the previous administrations thought lightly of IP crime, especially in a nation where property rights, while not quite rising to the level of a right to life (with all apologies to Mr. Locke), form a basic element of our conception of freedom. Continue reading »

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 »