Search Keywords & Trademark Rights: Where is the Balance?

Fourth Circuit Court of Appeals Reverses Summary Judgment for Google in Rosetta Stone’s AdWordsLawsuit

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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.

ALERT: BEWARE OF SUSPICIOUS NOTICES REGARDING YOUR TRADEMARK APPLICATIONS & REGISTRATION

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.

Lawyers Top 10 Tricks for Managing Intellectual Property

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Get the handout here!

Intellectual property is often the most significant driver of value among a company’s assets. Therefore, it is increasingly important for companies to actively manage their intellectual property assets to identify, categorize, register and enforce IP assets while minimizing the possibility of legal disputes.

Whether acquiring technology, developing new products or taking stock of the company’s intangible assets, companies must develop ways to protect their assets better, determine ways to realize more revenue from such assets, and reduce risks of costly litigation.

Below are ten intellectual property management tips that will help Companies and their counsel identify and protect IP assets and address infringement issues, among other key steps.

1. Identify: Simply put, think about what patents, trademarks and copyrights you might have and categorize them appropriately. This includes ideas in development.

2. Organize: Once categorized, review the relevant creation and publication/use dates. Determine registration status. File necessary maintenance documents as appropriate and create calendar/docket future due dates for supplemental filings.

3. Monitor: Review the USPTO and Copyright office databases periodically to ensure no junior users may weaken your rights.

4. Conduct a USPTO “Basic Search”: Start your search here. Individual results pages will include direct links to the mark’s records in TARR (best way to check current status of application/mark), ASSIGN (best way to see if the mark has been assigned), TDR (best way to retrieve relevant documents), TTAB (search and review board proceedings).

5. Conduct a USPTO Document Search: Use this database to determine existence of and locate documents related to specific applications.

6. Conduct a Copyright.gov Search: This is the best place to start with any copyright related questions. Includes searched for copies of registered works.

7. Google- search: Great secondary, broad-stroke search. Tends to return higher percentage of irrelevant results, but good at finding that needle-in-a-haystack type rip-off/con artist.

8. Create Google alerts: Use these to stay abreast of relevant changes in the database. Narrow alert criteria to specific keywords/phrases.

9. Conduct a State Trademark Databases Search: Don’t forget your own back yard. Search state databases for d/b/as, etc. (IL=cyberdriveillinois.com).

10. Ask you lawyer about specific concerns. Every situation is different and the only way to properly asses the risks/costs of any course of action is to discuss your matter with a competent attorney who practices in this area.

©2012 David M. Adler, Esq. All Rights Reserved.

When Hiring a Lawyer For Small Business Legal Needs What Questions Should I Ask?

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Hiring a lawyer

While small businesses often need some legal advice, they can’t always find a professional with the right expertise at a budget the small business can afford.  Since small businesses usually don’t need lawyers that often, when it comes time to review a contract, buy out a partner or protect their brand and trademark, they often don’t know where to start.  The purpose of this article is to give executives a business owners a guide on how to ask a prospective lawyer the right questions to get the service one needs at a price that one can afford.

To get answers to questions about hiring a lawyer, please select one of the links below.


How do I hire a lawyer?

Lawyers are highly-trained professionals who counsel individuals and businesses in a full range of personal and corporate legal matters. Many business transactions have legal implications, so you should try to find a lawyer whom you can treat as a trusted advisor. These questions are designed to help you choose the right lawyer for your situation.


What can a lawyer do for me?

Lawyers provide legal guidance. This doesn’t mean that they can make your business decisions for you. A lawyer should identify legal issues of concern to you or your small business, tell you what the law says about these issues, and advise you on how to address them.


How can a lawyer help me in setting up a business?

A lawyer can:

  • Explain the advantages and disadvantages of a sole proprietorship, a partnership or a corporation;
  • draft a partnership agreement or incorporate your company;
  • review financial documents for your business such as a loan;
  • review leases of premises or equipment;
  • act for you in the purchase of property;
  • review franchise agreements;
  • draft standard form contracts for use in your business;
  • advise you how to best protect your ideas, trademarks, designs and know-how.

How can a lawyer help when my business is up and running?

A lawyer can:

  • help you negotiate contracts and put them in writing;
  • advise you on hiring and firing employees;
  • advise you about doing business in other provinces and countries;
  • help you collect unpaid bills;
  • defend any lawsuits against you;
  • advise you about taxes.

If I decide to get out of business, how can a lawyer help me?

A lawyer can:

  • help you sell your business;
  • help you sell you ownership interest if you are one of several owners;
  • arrange for the transfer of the business to your children;
  • dissolve a corporation or LLC.

When do you need a lawyer?

The recommended approach is to seek the advice of a lawyer whenever a legal issue arises that involves your business. Since it is not always clear when that happens, many problems are solved without resorting to lawyers. When an issue arises, you must first decide whether you need a lawyer at all. In order to know if you should solve your problem on your own, ask yourself the following questions:

  1. What are the consequences if you are unsuccessful?
  2. How complex is the law in your situation?
  3. Do you have the time and energy?

If you are still unsure, some outside professionals, advisors or para-professionals may be useful:

Check with your Board of Directors or Board of Advisors; they can provide information about the steps they went through and the resources they used in solving their problems. Contact government and non-profit organizations for income tax, legal aid, consumer protection, employment standards, etc.

Check with other professionals: accountants, bank officers, insurance agents. For some routine matters, legal assistants, para-legals and notaries public are useful. While not allowed to give legal advice, they can provide added value in familiarity with standard corporate forms and filing requirements.

Also, don’t forget public libraries, legal aid services, student legal services, small claims courts, reading self-help books and other resources such as books, pamphlets and videos.


How do I contact a lawyer?

Give him a call. Most lawyers are happy to steer people in the right direction and calm fears about the legal process. There are several advantages to this approach. The main one is that a lawyer can quickly cut to the heart of your problem, distinguish between legal and non-legal problems. Another advantage is that you usually will not be charged for this phone call. Finally, a lawyer will not only keep your problem confidential, but has the ability to assess it from a less emotional perspective.

Please feel free to call us at (866) 734-2568 should you have any questions.


How do I find a lawyer?

First, try to identify the areas of law in which your problems fall so that you can find a lawyer capable with dealing with all these areas. Some of the main areas of legal practice linked to business are:

  • Corporate/commercial/securities law (incorporation, buying/selling a business, drafting shareholders/partnership agreement)
  • Labor/employment law (negotiating and interpreting collective agreements, resolving disputes, explaining obligations, advising about restrictive covenants, dismissals)
  • Civil litigation law (suing, being sued, collecting debts, negotiating and settling)
  • Real Estate law (buying or selling land or property, negotiating a lease, solving landlord/tenant disputes, mortgaging property)
  • Wills and estates (drafting or challenging a will, probate)

What should I ask a prospective lawyer?

Some questions you should ask a prospective lawyer are:

  • How many years are you in practice?
  • How long have you been with your current firm?
  • What areas of law do you practice?
  • Are you a partner or an associate?
  • Time and accessibility
  • How quickly can I expect a resolution?
  • When can we meet?
  • How much can I expect top pay?
  • How do you charge for your services?
  • Do you provide your clients with a detailed written statement of fees?
  • Do you charge anything for the first meeting?
  • Do you communicate via telephone, cell phone, fax or email?

How can I help my lawyer?

Ways you can help your lawyer include:

  • Be honesty and open
  • Tell the lawyer all the facts, even the ones that you think are “bad”.
  • Keep your lawyer up to date on any events or any changes relating to your file.
  • Ask for advice in plain language and summarize how you understand it.
  • Ask to be directed to any reading that you could do to better understand.
  • Ask for a description of the steps your lawyer plans to take and think about the way you could help at each step.
  • Stay informed and keep track of what transpires on your file.
  • Take notes at all meetings and list tasks to be completed.
  • Ask for copies of all correspondence on file.
  • Have confidence in your lawyer’s advice and follow his/her instructions.
  • Do not harass your lawyer. If you need more attention, discuss way in which he/she can keep you informed.
  • Be prepared to accept both positive and negative advice.
  • Never do anything concerning your case without consulting your lawyer.
  • Provide information to your lawyer as soon as possible after he/she requests it.
  • Pay your bills on time and be available if your lawyer needs you.

How do lawyers calculate their fees?

Depending on the complexity of the issues, the services required, and the degree of experience of the lawyer, fees can be charged in different ways:

  • Billed hourly: charged a rate for the time they spend working for you (e.g. the time spent reading a letter or talking on the phone).
  • Flat Fee: charge a flat rate for a particular matter, usually when they can predict how long the work will take: incorporations, trademarks.
  • Contingency Fee: in some matters, the lawyer’s fee will be a stated percentage of the amount of money collected from the lawsuit.
  • Retainer: provide a range of specified services for a fixed monthly or annual fee.

In addition, lawyers will also bill for disbursements such as long distance phone calls, photocopies, document filling fees, experts’ reports and travel expenses.


Safeguarding Ideas, Relationships & Talent®

Executives face an often confusing and changing set of challenges trying to ensure that their business remains legally compliant. Yet few can afford the highly-qualified and versatile legal staff needed to deal with today’s complex and inconstant legal and regulatory environment. Adler & Franczyk is a boutique law firm created with a specific mission in mind: to provide businesses with a competitive advantage by enabling them to leverage their intangible assets and creative content in a way that drives innovation and increases the overall value of the business.

We approach our relationship with each client as a true partnership and we view our firm as an extension of their capabilities. Our primary value is our specialization on relevant and complex issues that maintain the leading edge for our clients. We invite you to learn more about the services we offer and how we differ.

On the web: www.ecommerceattorney.com
On Twitter: http://www.twitter.com/adlerlaw
On LinkedIn: http://www.linkedin.com/in/adlerlaw

Subscribe to Ping® The Legal eNewsletter

We look forward to the opportunity to discuss any questions you may have regarding the range of business, technology and intellectual property services we offer. Please feel free to call us at (866) 734-2568 should you have any questions.

Risks & Rewards of Green Branding

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Confused by what is and is not Green? You’re not alone.

Part 1 of 5

The last few years have seen a dramatic increase in consumer awareness and concern for environmentally-conscious or “green” consumerism. Coincidentally, as consumers join the movement to be more eco-friendly, businesses have likewise embraced both being green and being perceived as green in their marketing practices. The rapid proliferation of “green” brands begs the question “How do consumers and institutional buyers know if something is “green” or “eco-friendly”?”

To address such concerns, companies and industries have launched “ecolabels” and “eco-certification” schemes to add credibility to green claims, guide eco-friendly purchasing, and improve environmental performance standards. Demand for products with ecolabels is growing, though confusion about which companies are truly environmentally responsible persists.

Since environmental claims made in advertisements are often intangible, businesses need to make them resonate to consumers beyond just feeling good about what they are buying. Consumers and businesses can benefit from eco-labels by: (1) understanding how certification marks, labels and logos can be used to signal green credentials, (2) using and maintaining proper best practices and guidelines to which companies must adhere in order to meet a certified standard, (3) understanding which companies have succeeded in branding and why, (4) understanding how to avoid accusations of “greenwashing”, or exaggerated claims in their marketing, and (5) keeping informed about the changes in the legal and regulatory environment, such as the FTC‘s Green Guides for marketers.

This five-part series on “green” branding will discuss how to identify these issues, provide guidance on proper use of “green” certification marks, a/k/a “eco-labels,” develop policies and procedures to avoid misleading or unproven environmental claims and keep informed about the current trends, marketing strategies and regulatory regimes.

  1. Certification marks, and their role in signaling green credentials

A certification mark “certifies” the nature or origin of the goods or services to which it has been applied. This includes, for example, region or location or origin, materials of construction, method or mode of manufacture or provision, quality assurance, accuracy of the goods or services or any definable characteristic of the goods or services. It can also certify manufacture or provision of services by members of a union or other organization to certain standards.

For example, the Fair Trade Certified™ label applied to food products ensures that farmers and farm workers in developing nations receive a fair price for their product, have direct trade relations with buyers and access to credit, and encourage sustainable farming methods, without the use of a dozen of the most harmful pesticides, and forced child labor. The seal is viewed as a meaningful and clear signal that the producer supports the concepts of social responsibility, pest management and sustainable agriculture.

Under U.S. federal trademark law, a certification mark has a specific definition and certain characteristics. The term “certification mark” means any word, name, symbol, or device, or any combination thereof that is used by a person other than its owner to certify origin, material, manufacture, quality, accuracy, or other characteristics of goods or services.

There are generally three types of certification marks. First, there are geographic certification marks that signal that goods or services originate in a specific region (e.g., ROQUEFORT for cheese). Second, there are quality certification marks that indicate goods or services meet certain standards in relation to quality, materials, or mode of manufacture (e.g., approval by Underwriters Laboratories). Third, there are labor certification marks that certify (i) services performed or labor used in the manufacture of a product were provided by a member of a union or other organization, or (ii) the service provider meets certain standards.

Certification marks possess two distinct characteristics that set them apart from trademarks or service marks. First, unlike a trademark, a certification mark is used by someone other than the owner. The mark is generally applied by other persons to their goods or services, with authorization from the owner of the mark. Second, while the exclusive purpose of a trademark is to indicate commercial source or distinguish the goods or services of one person from another, a certification mark has no such purpose.

A certification mark is not used in the trademark sense of “used.” Rather, it may be used only by persons other than the owner of the mark. That is, the owner of a certification mark does not apply the mark to his or her goods or services and, in fact, usually does not attach or apply the mark at all. The owner of a certification mark does not produce the goods or perform the services in connection with which the mark is used, and thus does not control their nature and quality. Rather, “control” consists of ensure that users of the mark meet the standards established by the certifier.  The purpose of a certification mark is to inform purchasers that the goods or services of a person possess certain characteristics or meet certain qualifications or standards established by another person.

Proper us of “eco-friendly” certification marks can help businesses and marketers to add credibility to “green” marketing claims. As noted above, since the user of a certification mark is not the owner, the organization doing the certifying cannot itself engage in the production or marketing of the goods or services. Furthermore, the organization must be competent to certify that the requirements have been met. This is achieved by confirming adherence to the rules and regulations, providing methods of testing and quality control, and employing appointed individuals or bodies to periodically ensure conformance by a user.

Help! My trademarks are being used on eBay. How can I stop them?

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What can I do to stop others from using my Trademarks on eBay?

What is eBay’s Verified Owner Registration Program (VeRO)?

What should I include on my VeRO page?

How I do to stop others from using my Trademarks on eBay?

eBay is one of the world’s leading online marketplaces. It’s a place where “anyone can trade practically anything.” As a result, eBay has enjoyed widespread use from both legitimate and illegitimate merchants. eBay does not authenticate merchandise before sale. Unfortunately, unscrupulous sellers use eBay to auction off inferior branded-products, whether passing them off as genuine or claiming that they are fake, faux, replicas or look-alikes.  Manufacture and sale of these goods can constitute counterfeiting, a crime and a civil action punishable under federal and state laws with steep penalties.

What is eBay’s Verified Owner Registration Program (VeRO)?

eBay has created a program to help rights owners report auction listings that infringe their rights. This program is called the Verified Rights Owner (VeRO) Program, and includes “companies and individuals representing every type of intellectual property – from major software companies to video game developers to rock bands to luxury good manufacturers.” Any intellectual property (such as a copyright, trademark or patent) rights holder whose rights may be infringed by listings or items sold on eBay may participate in the Program.

If you have a good faith belief that a listing on eBay infringes your copyright, trademark, or other intellectual property rights, download eBay’s Notice of Claimed Infringement (NOCI) form, fill it out, and fax it to eBay.

Create an About Me page. You can create a free “About Me” page on eBay to communicate directly with eBay users about your company, your products and the intellectual property rights you own. eBay will include it in its list of VeRO Participant About Me pages.

What should I include on my VeRO page?

Here are some suggested statement that should be on your eBay VeRO page:

  1. BUYER BEWARE: Most of the purported YOUR BRAND NAME HERE products and packaging available on eBay is counterfeit.
  2. Genuine, new BRAND merchandise is available only through BRAND stores and boutiques, BRAND catalogs and via the web at http://www.——.com.  BRAND carefully controls distribution of its high-quality merchandise.
  3. Unfortunately, unscrupulous sellers are auctioning on eBay inferior products marked with the BRAND trademarks, whether passing them off as genuine or claiming that they are fake, faux, replicas or look-alikes.  Manufacture and sale of these goods in any such case constitutes counterfeiting, a crime and a civil action punishable under federal and state laws with steep penalties.
  4. BRAND marketing materials are graphically distinct, appealing and copyrighted.
  5. Unauthorized use of BRAND photography and graphics constitutes copyright infringement.
  6. BRAND has established a worldwide reputation for its products. It has invested significant time, effort and money over more than ##### years to promote its trademarks and trade name BRAND and its distinctive packaging.  As a result of these efforts, the BRAND trademarks and copyrights have enjoyed widespread fame and recognition throughout the world.
  7. The Company works diligently to protect its reputation for providing the highest quality products and to protect its customers from duplicitous sellers who offer fake merchandise that is inferior to genuine BRAND merchandise. BRAND files lawsuits and works closely with law enforcement, the F.B.I., customs and investigative agencies to protect its intellectual property rights.
  8. BRAND RIGOROUSLY PROTECTS ITS TRADEMARKS AND COPYRIGHTS.
  9. Frequently Asked Questions (FAQ)
  • Q: Why was my auction suspended/cancelled? A: BRAND has a good faith belief that the merchandise that you posted for auction or sale is counterfeit or otherwise infringes BRAND trademarks or copyrights.
  • Q: Why did eBay allow me to post my auction? A: eBay does not authenticate merchandise before sale.
  • Q: How can I tell if the item I offered or purchased is real? A: The only way you can be certain that you are purchasing a genuine BRAND product is to purchase it from a BRAND retail store, via our website (www.—–.com) or though a BRAND catalogue.  BRAND stores do not authenticate merchandise. A good jeweler or appraiser may be able to do this for you.
  • Q: Why can’t I use BRAND graphics to sell my merchandise? A: BRAND marketing materials are protected under copyright law. Unauthorized use or reproduction is strictly prohibited.

About The Author

Safeguarding Ideas, Relationships & Talent®

Executives face an often confusing and changing set of challenges trying to ensure that their business remains legally compliant. Yet few can afford the highly-qualified and versatile legal staff needed to deal with today’s complex and inconstant legal and regulatory environment. Adler & Franczyk is a boutique law firm created with a specific mission in mind: to provide businesses with a competitive advantage by enabling them to leverage their intangible assets and creative content in a way that drives innovation and increases the overall value of the business.

We approach our relationship with each client as a true partnership and we view our firm as an extension of their capabilities. Our primary value is our specialization on relevant and complex issues that maintain the leading edge for our clients. We invite you to learn more about the services we offer and how we differ.

On the web: www.ecommerceattorney.com
On Twitter: http://www.twitter.com/adlerlaw
On LinkedIn: http://www.linkedin.com/in/adlerlaw