Category Archives: Trademarks

Blackberry and Twitter in a trademark tussle?

In April 2007, Twitter, Inc. filed application no. 77166246 to register the trademark TWITTER with the U.S. Patent and Trademark Office. (Twitter is the ever-more-popular tool that enables “friends, family, and co–workers to communicate and stay connected through the exchange of quick, frequent answers to one simple question: What are you doing?” It’s fun. You should try it if you’re not using it already. And you can start by following me.)

Anyway, in February the application reached the point where it was published for opposition. That means that any other trademark owner out there who feels it would be damaged by the TWITTER mark being registered can oppose the application in the Trademark Office.

On March 14, 2008, Research in Motion (of Blackberry fame) stepped up and requested an extention of time to oppose the TWITTER application. I ran a quick search for registered marks owned by Research in Motion (you can do that yourself here), but didn’t see anything close to “Twitter”. Can anyone think of an unregistered mark that RIM owns that is similar to TWITTER? Or any other reason why RIM would want to oppose this application? Comments are open, as they have been for some time.

1-800-SKI-VAIL found not to infringe VAIL ski resort mark

Vail Associates, Inc. v. Vend-Tel-Co., Ltd., — F.3d —-, 2008 WL 342272, (10th Cir. February 7, 2008)

[Brian Beckham is a contributor to Internet Cases and can be contacted at brian.beckham [at] gmail dot com.]

Vail Associates, owner of the incontestable service mark VAIL (which is used in connection with a wide variety of skiing and resort-related services), sued Vend-Tel-Co, the operator of the “1-800-SKI-VAIL” phone number, for infringement. After trial, the District Court entered judgment in Vend-Tel-Co’s favor, and Vail Associates sought review.

The Court of Appeals for the Tenth Circuit affirmed the lower court’s judgment, holding that use of Vend-Tel-Co’s “1-800-SKI-VAIL” mark (registered in 2001) was not likely to cause confusion with Vail Associates’s VAIL mark (registered in 1989).

Key to the appellate court’s decision was witness testimony from the proceedings. Vail Associates’s vice-president of marketing and sales testified that customers dialing the phone number would mistakenly think they were reaching Vail Associates, but acknowledged “hundreds of uses of the letters V-A-I-L in the names of [other] businesses in the Vail Valley.” As for the descriptive term “ski,” testimony from another witness revealed ownership of no less than 23 vanity phone numbers incorporating that term. Also important was the testimony of a travel agent who fielded calls to the number 1-800-SKI-VAIL. She testified that the typical caller would ask questions of a general nature (e.g., about products, directions, lift prices, ski conditions, etc.).

Vend-Tel-Co’s main witness, trademark attorney Kenneth Germain, testified that in the context of ski resorts, the VAIL mark was a “world renowned” strong mark, but that in the context of goods and services offered by businesses in the Vail area, it was weak (being geographically descriptive). Germain further testified that he did not deduce an intent to infringe (Vend-Tel-Co’s advertising materials promoted area businesses), and that use of the VAIL mark was a necessary, good faith component of the Vend-Tel-Co’s marketing activities.

Viewing the evidence in the light most favorable to the Vail Associates, the Court of Appeals was satisfied that the District Court did not err in finding that consumers perceive the VAIL mark as referring to a particular geographic location, namely, a Colorado skiing destination. It held that Vail Associates failed to prove consumers associate the word “Vail” exclusively with its resort services.

As to the likelihood of confusion factors, the court found none favored Vail Associates. It observed that (1) Vail Associates offered little evidence of actual confusion, and the testimony reflected that consumers recognized Vail as a destination, not a specific service provider, (2) despite some showing of secondary meaning, the VAIL mark was found to be “not particularly strong”, (3) Vail Associates did not prove that in creating the phone number Vend-Tel-Co intended to deceive the public, trade on Vail Associates’s goodwill or reputation, or infringe its mark, (4) the marks were not similar in sight, sound, or meaning, (5) the parties’ services were not similar, but rather “symbiotic”, and were not marketed in a similar manner, or with similar connotations, and (6) consumers exercised great care in purchasing Vail Associates’s services which the court termed “first class accommodations at first class prices” in contrast to dialing a toll-free number.

The dissenting opinion offered that: (1) the marks were confusingly similar (indeed, the additional “1-800-SKI” elements furthered consumer confusion), (2) Vend-Tel-Co intended to trade on the goodwill and reputation of Vail Associates, (3) there was ample testimonial evidence of actual confusion (namely the travel agent’s testimony), (4) the services and their marketing “appeal to exactly the same class of consumers,” (5) despite care exercised by consumers in purchasing ski packages, there was significant, uncured initial interest confusion, and (6) VAIL is an incontestible descriptive mark whose strength was proven by evidence of secondary meaning, and that Vend-Tel-Co did not take VAIL out of the ski resort services context; instead, it emphasized that context with their choice of mark.

NASCAR beat to checkered flag in domain name dispute

[Brian Beckham is a contributor to Internet Cases and can be contacted at brian.beckham [at] gmail dot com.]

Complainant NASCAR filed a complaint under the Uniform Domain Name Dispute Resolution Policy (“UDRP”) against The Racin’ Connection, Inc. over the domain name nascartours.com. In the stock car racing business since 1948, NASCAR is a household name in U.S. motor sports. Its DAYTONA 500 attracted 30 million television viewers in 2007. NASCAR licensed its various marks to over 200 licensees to the tune of USD 2 billion in 2006. An entire industry revolves around providing tickets and packages to NASCAR-sanctioned events. One such entity, The Racin’ Connection, Inc. has provided such tour packages for over 30,000 customers in part through its website at the nascartours.com domain name since 1996.

NASCAR alleged in its complaint that the unlicensed domain name was confusingly similar to its NASCAR mark, that The Racin’ Connection, Inc. had no rights or legitimate interests in the domain name, and that the domain name was registered and was being used in bad faith. NASCAR further asserted that use of its marks in a domain name (as opposed to on a website) was not a fair use, and that such use was intended to “entice…[and] misleadingly divert consumers for [] commercial gain.”

The Racin’ Connection, Inc. argued that the domain name was not confusingly similar to the NASCAR marks, but that its use of the marks was a fair use as part of a bona fide offering of services as a “race package reseller”. It further pointed out that it promoted only NASCAR events and displayed a disclaimer on its website.

Finding the The Racin’ Connection, Inc.’s argument of laches unavailing, the 3-member Panel found that the domain name was confusingly similar to the NASCAR mark. The Panel noted that there is a split in URPD cases regarding whether a bona fide offering of goods or services on a reseller’s (authorized or not) website using a mark in a domain name confers a legitimate interest on the reseller. In this case, the Panel found that The Racin’ Connection, Inc.’s use of the NASCAR mark in its domain name did confer such rights. (The Panel considered several factors from the previous Oki Data case paramount: The Racin’ Connection, Inc. was only offering NASCAR tours; the website disclosed the parties’ relationship; and the respondent did not try to “corner the market” in domain names incorporating the mark). Finally, the Panel found that The Racin’ Connection, Inc.’s sales of NASCAR tours since 1992 and disclaimer on its website coupled with a lack of evidence from NASCAR as to any actual consumer confusion negated a finding of bad faith in its registration or use of the domain name.

Ultimately, despite confusing similarity between the domain name and the NASCAR mark, given the good faith use of the mark in connection with a bona fide offering of services and the rights created thereby, NASCAR was not able to stop the use of its mark in a domain name.

The Full text of the Decision is available at: http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-1524.html

Alienware goes after “free” computer offer

Alienware Corporation v. Online Gift Rewards, No. 08-1560, S.D.N.Y. (Filed February 14, 2008).

High-performance computer manufacturer Alienware has filed suit against an online marketer alleging trademark infringement, dilution, and other theories of unfair competition. Alienware claims that the defendant has “disseminated mass unsolicited electronic solicitations” and posted Web pages offering “free” Alienware laptops, when in reality, one has to perform some “onerous” tasks to get them.

According to Alienware, after accepting the offer, users must purchase a specified amount of goods from various other sites. And this obligation is not clearly communicated, but is “presented to the consumer, if at all, only after he or she expends significant time and effort in responding to inquiries and navigating the multiple prompts.”

One may be tempted to speculate that the defendant in this case could raise some kind of defense based on fair use of the trademark. (How could you let people know what you’re offering unless you tell them; and giving away actual Alienware computers also seems like it could be protected under the first sale doctrine.)

And Alienware may have anticipated this defense, by alleging that it’s only “Alienware” serving as the source identifier for the offer, and “[t]here is no other recognizable or identifiable indication of source.” The defendant is an entity called “Online Gift Rewards.” Alienware claims that the designation is “likely to be perceived as a generic description of the offering rather than a source indicator.”

[Download the complaint]

Sponsored listing trademark action survives motion to dismiss

T.D.I. Intern., Inc. v. Golf Preservations, Inc., (Slip Op.) 2008 WL 294531 (E.D.Ky. January 31, 2008)

Plaintiffs T.D.I. International and XGD Systems sued their former employee Samson Bailey and his company Golf Preservations for, among other things, violation of the Lanham Act, 15 U.S.C. §1051 et seq. Plaintiffs alleged that defendants’ purchase of plaintiffs’ trademarks to trigger competitive advertising on Google and Yahoo was trademark infringement and unfair competition.

Defendants moved pursuant to Fed. R. Civ. P. 12(b)(6) to dismiss the complaint, but the court denied the motion. It found that under the Twombly standard, plaintiffs had alleged facts sufficient to state a claim to relief that was plausible on its face.

Predictably, defendants had argued that the purchase of plaintiffs’ marks as keywords did not constitute a “use” of the marks as provided in the Lanham Act at 15 U.S.C. § 1127. They relied heavily on Interactive Products Corp. v. a2z Mobile Office Solutions, Inc., 326 F.3d 687, 695 (6th Cir.2003) (a case involving the appearance of a mark in the post-domain path of a URL), and 1-800 Contacts, Inc. v. When U.com, Inc., 414 F.3d 400 (2d Cir.2005) (involving pop-up advertisements triggered by page content and user activities).

Plaintiffs relied on a number of cases to argue that the purchase of keywords was a use as defined in the Lanham Act, and also (correctly) asserted that the scenario of buying keywords to trigger advertising is notably different from use in a post-domain URL (as in Interactive Products) and unseen triggering of pop-up advertisements (as in 1-800 Contacts). Given the split of authority and the corresponding “uncertain state of the law on the specific issue presented in [the] case,” the Court sided with plaintiffs and found that defendants’ arguments were not sufficient to warrant dismissal.

Finding ATLAS COPCO and ATLAS CASPIAN confusingly similar, court awards in rem ACPA relief to unopposed plaintiff

Atlas Copco AB v. Atlascopcoiran.com, No. 07-1208, 2008 WL 149128 (E.D. Va. January 8, 2008)

Unable to hail the overseas registrants of domain names, including atlascaspian.com and atlascopcoiran.com into a U.S. court, plaintiff Atlas Copco AB sought in rem relief against the domain names under 15 U.S.C. §1125(d)(2)(a). After the defendants failed to answer the complaint, Atlas Copco moved for summary judgment, relying on the allegations of its verified complaint.

The court granted the motion and ordered the domain names transferred.

In finding that the defendants had engaged in cyberpiracy, the court looked at the “dominant or salient portions of the marks” at issue – the plaintiff’s mark and the marks comprising the offending domain names.

For you trademark experts out there, query whether you might characterize the following analysis as a bit of a stretch:

The dominant portion of each of the Defendant Domain Names is “ATLAS COPCO” or “ATLAS.” These “dominant” terms are paired with the generic terms “CASPIAN” and “IRAN,” which are generic geographic terms that do not distinguish the Defendant Domain Names from the ATLAS COPCO trademark. An internet user might reasonably assume that the geographic term “CASPIAN” and “IRAN” were added to the ATLAS COPCO trademark by the Plaintiffs to identify its geographic location.

It looks like another motivation for the court’s finding was some of the subterfuge on the sites at the offending domain names. Turns out some of them pointed to “copycat” websites bearing “Atlas Caspian” logos confusingly similar to the plaintiff’s trademark, and linked to phishing sites bearing the actual Atlas Copco mark.

Personal name must have trademark significance for protection under ACPA

Salle v. Meadows, No. 07-1089, 2007 WL 4463920 (M.D. Fla. December 17, 2007)

Defendant Meadows thought that Plaintiff Salle owed him about $9,500.  He was apparently having some trouble getting paid, so he registered the plaintiff’s personal name as a domain name – briansalle.com.  He then tried to sell it to Salle for the amount of the purported debt.  Being uninterested in the purchase, Salle filed a cybersquatting complaint against Meadows in federal court.

Salle asserted claims under both 15 U.S.C. §1125(d) and 15 U.S.C. §1129. Both parties moved for summary judgment. It was a mixed ruling, but largely a win for Salle.

The court addressed the §1129 claim first.  That portion of the Lanham Act provides:

Any person who registers a domain name that consists of the name of another living person, or a name substantially and confusingly similar thereto, without that person’s consent, with the specific intent to profit from such name by selling the domain name for financial gain to that person or any third party, shall be liable in a civil action by such person.

Meadows argued that in trying to sell the domain name and thus recover money owed to him, he was not trying to profit, and therefore not liable under §1129.  Despite some dispute over whether the debt was actually owed and to whom, the court ruled in Salle’s favor.  “[C]yber-extortion is not a permissible way to recover a debt,” the court warned.

As for the §1125(d) claim, the court ruled in Meadows’s favor.  Section 1125(d) provides, among other things, that a person shall be liable to the “owner of a mark, including a personal name which is protected as a mark under [§1125]” if that person has a bad faith intent to profit from that mark. 

Salle argued that §1125 provides that all personal names are subject to trademark protection. Meadows, on the other hand, argued that a personal name must have some sort of trademark significance, e.g., acquired distinctiveness, in order to fall with the protection of §1125. Agreeing with Meadows’s interpretation of the section, the court found that Salle failed to present enough evidence to survive summary judgment on the question of whether he had protectible trademark rights in his personal name.

Filter maker says Apple’s trademark threats a bunch of hot air

“Lowest perceptive capabilities.” Is that code for “a moron in a hurry“?

Chicago-based BlueAir, Inc. has apparently been getting some threats from Apple over BlueAir’s pending trademark registration for the mark AIRPOD, to be used in connection with desk top air purifiers. Apple says AIRPOD will infringe on the IPOD mark.

BlueAir has gone on the offensive, asking the U.S. District Court for the Northern District of Illinois to enter a declaratory judgment of no infringement.

The heart of BlueAir’s allegations are as follows:

“There is no reasonable likelihood of confusion, mistake, or error in the marketplace for persons of even the lowest perceptive capabilities who are seeking an iPod music player considering or buying an AIRPOD desktop air cleaner instead.”

This dispute has been going on for a few months, and it is interesting to see suit filed now, to essentially coincide with the introduction of the MacBook Air.

BlueAir, Inc. v. Apple, Inc., No. 08-427 (N.D. Ill. filed January 18, 2007)
[Download the Complaint]

Ownership of domain name grounds for civil contempt and award of attorney’s fees

But mere ownership of domain name, without “use,” was not enough to give rise to infringement.

Careylicensing, Inc. v. Erlich, No. 05-1194, 2007 WL 3146559 (E.D. Mo. October 25, 2007)

Plaintiff Carey International and defendant International Chauffeured Services are competitors in the limousine industry. Carey sued International back in 2005 for trademark infringement, and the parties settled the case. They entered into a consent judgment, which is, essentially, like a contract between the parties that was made an order of the court. The consent judgment prohibited, among other things, the defendant from owning any domain name containing the word “Carey.”

In February 2007, the plaintiff noticed that the defendant owned a domain name careylimousine.net. The plaintiff eventually went back into court, asking that the defendant be held in contempt for violating the consent judgment and, pursuant to the terms of the consent judgment, be awarded attorneys fees and “liquidated damages,” for breaching the agreement.

The court found that ownership of the domain name by the defendant warranted a contempt citation. It also found that that ownership was a breach that made an award of attorney’s fees proper. But the court declined to award liquidated damages.

The consent judgment provided that liquidated damages be awarded for any “infringement” of the plaintiff’s mark. But in this case, there was no infringement. The court found that merely owning the domain name, without having an active site there, was not a “use” in commerce as required by the Lanham Act. Without the requisite element of use, there could be no infringement.

Ninth Circuit rejects “disparagement of trademark” claim

The Freecycle Network, Inc. v. Oey, — F.3d —-, 2007 WL 2781902 (9th Cir. September 26, 2007)

“Freecycling” is a collaborative online effort of people working to share and trade items they no longer want. The Freecycle Network is at the forefront of these efforts, providing a website that facilitates the exchange of information and the subsequent exchange of stuff. Read more about the organization in the group’s Wikipedia entry.

freecycle.jpg

Tim Oey was one of the early forces of the Freecycle Network. At first he encouraged the group to take seriously what rights it may have in the word “freecycle.” Some time later he changed his mind, and began advocating online, through message boards and other fora, that the term should be left to the public domain. The Freecyle Network disagreed with this approach, and ultimately sued Oey for infringement and “defamation of trademark” under Section 43(a) of the Lanham Act.

The district court entered a preliminary injunction against Oey. But Oey sought review with the Ninth Circuit, which reversed.

The court provided three reasons why the Freecycling Network’s claim for trademark infringement failed. First, Oey’s conduct did not constitute a “use” of the mark in commerce, as the record in the case did not indicate they were made to promote any competing service or reap any commercial benefit whatsoever. Rather, Oey simply expressed an opinion that the plaintiff lacked trademark rights in the term “freecycle” and encouraged like-minded individuals to continue to use the term in its generic sense and to inform the USPTO of their opinions.

Second, even if Oey’s statements could somehow have been construed to be a “use in commerce,” that use was not likely to cause confusion, mistake, or deceive anyone as to the connection of Oey’s services (or any other) with those of the plaintiff.

Finally, Oey’s statements did not satisfy the requirements for false advertising, misrepresentation, or unfair competition under § 1125(a)(1)(B). There was no evidence that Oey’s statements were made in “commercial advertising or promotion.” And, even if such evidence existed, § 43(a) creates liability only for product disparagement — i.e., misrepresentation of “the nature, characteristics, qualities, or geographic origin” of “another person’s goods, services, or commercial activities.” In this case, the plaintiff did not allege or show that Oey made any statements disparaging its goods or services. Instead, he merely talked about the nature of the mark itself. Indeed, many of his remarks were aimed at ensuring the ongoing success of the plaintiff’s organization and its services.

As for the claim of “trademark disparagement,” the court held that no such cause of action existed under the Lanham Act. It further held that even if trademark disparagement were a viable claim under the law, Oey’s conduct did not satisfy the elements of such a tort that the Freecycling Network asserted. The statements were not “false.” At worst, Oey offered an erroneous legal opinion (by a layperson) that the Freecycle Network lacked trademark rights in the term “Freecycle.” But under the Lanham Act, statements of opinion are not generally actionable.

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