April 16, 2012
Fourth Circuit Court of Appeals Reverses Summary Judgment for Google in Rosetta Stone’s AdWordsLawsuit
For Trademark lawyers and brand owners, Google’s AdWords program has engendered no small amount of debate. Many companies have tried, unsuccessfully, to hold Google liable for keyword advertising triggered when a brand-owner’s competitor buys keyword advertisements under the AdWords program by purchasing the brand-owner’s trademarks as keywords. Rosetta Stone’s lawsuit is no different.
However, what is different this time is that Google will have to defend at trial its program of selling companies’ well-known trademarks to the highest bidder. In the widely watched ruling, the Court reinstated most of Rosetta Stone’s claims relating to infringement and dilution.
On the claim of direct trademark infringement, the Court found that there was evidence in the record to create a question of fact as to whether “a reasonable trier of fact could find that Google intended to cause confusion in that it acted with the knowledge that confusion was very likely to result.” Google’s own internal studies suggested that it was likely confusion would result from the use of third-party trademarks.
On the claim of contributory infringement, the appeals court stated that the district court had improperly shifted the burden from Google to Rosetta Stone on the issue of whether Google allowed known infringers and counterfeiters to bid on Rosetta Stone’s trademarks as keywords
On the claim of trademark dilution, the appellate court reversed the district courts approval of Google’s “fair use” defense finding that the district court had not addressed Google’s good faith, and wrongly placed the burden of proof on Rosetta Stone, when the it was Google that was the party asserting fair use as a defense.
Lastly, the appeals court addressed the functionality doctrine which is the use of a product design considered necessary by the nature of the product itself. Such aspects of the product design are not protectable and others are free to use it. The court of appeals stated “[t]he functionality doctrine simply does not apply in these circumstances,” since Rosetta Stone’s trademarks were not a “functional” feature of its software.
You can read the opinion here.
March 26, 2012
It seems that every few months my clients get a raft of notices from very “official” sounding business, like “United States Trademark Protection Agency” seeking payment for services that appear to be necessary to maintain a trademark application or registration. As technology improves speed and efficiency, more of these opportunists are appearing.
U.S. Trademark Applications & Registrations are Public Records.
Filing an application for U.S. trademark registration makes certain information publicly available in the U.S. Trademark Office records. Several companies have been scraping these records and generating “official looking” notices and even invoices to unsuspecting companies. These notices appear strikingly similar to governmental agency communications and direct you to pay fees for registration, monitoring (keeping an eye out for applications similar to yours) and for filing with domestic or international lists, directories, etc.
MANY OF THESE ARE SCAMS.
Despite claims otherwise, the United States Trademark Protection Agency (USTPA) is NOT a governmental agency and the U.S. Trademark Office (USPTO) web site even showed a warning that the USTPA is NOT affiliated with the USPTO.
Some companies charge fees to be listed in their worldwide trademark registration directories. These are not official filings, their usefulness is limited and they have no legal effect.
Other companies hire non-legal administrators to do trademark filings without proper supervision or training. These companies can prove very costly due to filing problems. I hope you are not confused by such mailings. Often, if you are represented by counsel, the U.S. Patent & Trademark Office will not send mailings directly to you, they will be sent to your attorney of record. While some of these companies offer legitimate services, you should seek advice from legal counsel before utilizing them. Some examples of these companies include the following:
- Globus Edition S.L. in Spain
- Trademark Renewal Service in Washington, D.C.
- Company of Economic Publications Ltd. in Austria
- Edition The Marks KFT in Hungary
- United States Trademark Protection Agency located in Seattle, Washington
- Institute of Commerce for Industry, Trade, and Commerce located in Switzerland
- CPI (Company for Publications and Information Anstalt) in Liechtenstein (a phantom company which says it works with
- The Publication of Brand Names of the International Economy – another phantom company)
- IDM International Data Medium AnsbH in Liechtenstein
- S.A.R.L. – Societe pour Publications et Information located in Austria
- TMI Trademark Info Corporation located in Pearland, Texas
- ZDR – Datenregister GmbH in Germany
Many of these organizations send notices that look like invoices. I suggest that you not make payments without first consulting your attorney.
June 8, 2011
Recent Decisions Highlight Need For Objective Evidence of Intent to Use Mark
Two recent decisions at the Trademark Trial & Appeal Board (TTAB) indicate what may be an emerging trend in Trademark practice: challenges based on lack of evidence of a “bona fide” intent to use a mark for which a Section 2(b) Intent-to-Use (ITU) application has been filed. The two relevant decisions are Kaplan v. Brady and Nintendo of America, Inc. v. Adar Golad.
Every ITU Applicant makes a legal averment, under oath, that it has a “bona fide” intent to use the mark in commerce. “To show a bona fide intent to use, there must be ‘objective evidence,’ that is evidence in the form of ‘real life facts and by the actions of the applicant.’ J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, Sec. 19:14 (4th ed. 2009). There should be some ‘definite’ (if not necessarily ‘concrete’) plan by applicant. For example, ‘written plan of action for a new product or service,’ or a ‘re-branding of an existing line of goods or services.’ Id.” In the two cited cases, lack of such definite evidence proved fatal.
The first decision is a Cancellation action where one party (Kaplan) sought to have the registration of another party (Brady) cancelled. Kaplan’s claim for cancellation of Brady’s FUNNY-FACE mark was based on the existence of Kaplan’s ITU application for the mark FUNNY FACE FIZZY BLAST! Although the parties exchanged several motions, of interest here is the Board’s determination that Kaplan lacked standing to prosecute the cancellation because Kaplan had “produced no documentation supporting his alleged bona fide intent to use such mark other than a “completely phony” and undated business plan that is merely a “slightly altered version” of a business plan for use of the mark BAKE OFF! on a “cleansing product.”
The second decision is an Opposition proceeding where one party (Nintendo) sought to prevent the registration of another party’s (Golad) mark by opposing the application. Golad filed an ITU application to register the mark FLASHBOY for “plug and play interactive video games … comprised of computer hardware and software.” Nintendo opposed the registration on the ground that FLASHBOY is likely to cause confusion with its Registration for the mark GAMEBOY for game equipment, etc.
During discovery, Golad admitted that he did not have a business plan or any other documentation reflecting plans to “advertise, manufacture or otherwise use the mark FLASHBOY in commerce on the goods for which applicant seeks registration.” That was enough to establish a lack of bona fide intent.
Summary: Practice Tip
Both applicants and trademark counsel need to be aware of the requirement that an ITU application be supported by at least some definite evidence of the applicant’s bona fide intent to use the mark. While it remains unclear whether a business plan alone is sufficient to meet this burden, an applicant must be able to produce some type of evidence, through documents or testimony, indicating plans to advertise, manufacture, distribute, license or otherwise use the mark.