News & Updates

The Ninth Circuit issued an ironic ruling last month regarding levying domain names to satisfy a prior judgment. In Office Depot, Inc. v. Zuccarini (9th Cir., Feb. 2010), the Ninth Circuit ruled that a creditor can levy a domain name of a debtor to satisfy a judgment. 

John Zuccarini registered hundreds of domain names incorporating other individual’s trademarks, including “officedepot.com.” Office Depot successfully sued Zuccarini under the Anticybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. § 1125(d). The ACPA provides a cause of action for trademark owners against persons who register their mark(s) as domain name(s) to profit from the trademark. Office Depot obtained a judgment against Zuccarini, but was unable to collect and subsequently assigned the judgment to DS Holdings. 

DS initially sought to have 109 “.com” domain names that were registered to Zuccarini transferred directly to it. However, a California statue prohibited the court from ordering transfer of property held by a third party (a registrar maintains domain name registrations). DS then successfully had the court appoint a receiver to take possession of the domain names and sell them to satisfy the judgment. 

The irony is that this judgment arose from Zuccarini’s liability from registering these domain names to sell to trademark owners for profit. Now, DS will presumably sell the same domain names to the same trademark owners to satisfy the judgment. While this situation likely does not meet the definition of bad faith required under the ACPA, the end result is the same: a third party selling a domain name confusingly similar to another party’s trademark. 

In any event, this decision provides a roadmap to levying domain names to satisfy a judgment. In many cases, domain names would not be worth the effort to seize. But in other cases, domain names can have significant commercial value, making such efforts worthwhile.

In case you don’t have enough videos to watch, the United States Patent and Trademark Office (“USPTO”) launched a portion of its new Trademark Information Network where anyone can view news broadcast-style videos on its website that cover important topics and can teach you about the various phases of the trademark registration process. The site, which is not yet fully populated, will provide video walk-through of the entire trademark application process. Examples of the videos that will be available include: 

•  Before You File – overview of the most important issues you should be aware of when filing a trademark application, including trademark availability searching, ownership information, differences between drawings and specimens, identifications of goods and services, and filing bases.
•  Searching – use of the Trademark Electronic Search System (TESS) and an overview of the system and tips for how to use the system effectively.
•  Applicant Information – focuses on what is meant by the term “applicant.”
•  Drawing Issues – focuses on what is meant by the term “drawing” and how to comply with the requirements for submitting a drawing to the USPTO.
•  Goods and Services Issues – focuses on identifying the correct “goods and services” for filing in association with your application.
•  Basis Information – provides specifics about the filing requirements for both Section 1(a), Use-in-Commerce, and Section 1(b), Intent-to-Use-in-Commerce, filing bases.
•  Specimen Issues – provides examples of acceptable specimens and highlights the differences between a “drawing” and a “specimen.”
•  After You File – provides an overview of the most important issues you should be aware of after filing your application. It covers such topics as using the USPTO’s electronic resources to keep your application current, who to contact with questions, and what you must do to avoid abandonment.
•  Post-Registration Issues – provides an overview of the most important issues you should be aware of after your application has matured into a registration. The video explains the required maintenance documents that you must file to keep your registration alive, as well as discusses an optional filing to enhance the legal strength of your registration. 

The Anchor in the videos is the Trademark Information Network’s Mark Trademan. We will leave it to you as to whether his name is either a great coincidence or an attempt at humor.

ICANN (the body responsible for regulating domain names) is planning to expand the domain name system to better reach an international audience.  Domain names consisting of non-latin characters are currently set to be launched on November 16, 2009.  These characters will include Chinese, Arabic, and Hebrew.

In addition, ICANN is considering removing the cap on the current number of generic top level domains (gTLDs) (e.g., .com, .net, .gov) to allow for an unlimited number of gTLDs.  The current proposal would allow applicants to register domain names with any extension such as “.car”, “.restaurant”, or “.movie”.  Given the proposed opening of this new online frontier, ICANN will attempt to address current brand owner’s concerns by implementing a “sunrise” period which would allow verified mark owners first access to domains including their mark as well as expanded WHOIS listings and dispute resolution policies.  ICANN is currently accepting comments on these proposed policies.

In the event ICANN’s proposed policies are adopted, we will likely see a flurry of activity as brand owners seek to protect their brands and third-parties seek to establish their place in this newly opened space.  However, given the nearly unlimited number of combinations, prioritization will almost certainly be a key strategy.

The Trademark Trial and Appeal Board (TTAB) has ruled, precedentially, that the correction of a false statement regarding use of a trademark in commerce, if made before a registration has been challenged, creates a rebuttable presumption that the registrant did not intend to commit fraud. As background, a trademark applicant must file a statement with the Trademark Office alleging that the applicant’s mark is being used in interstate commerce with the specified goods and/or services identified in the trademark application before a trademark can be registered. Such statements are also required to be made post-registration as part of the renewal process of a trademark registration. In this particular case, the registrant corrected its registrations by omitting the unused items from the Section 8 Declaration. This encouraging decision from the TTAB makes it vitally important to continually review trademark registrations to ensure that each good or service named in the registration is being used in commerce and, if not, remove such items from the registration before the registration is challenged. Zanella Ltd. v. Nordstrom, Inc., Opposition No. 91177858 (TTAB 2008) [precedential].

While the recently enacted Madrid Protocol System allows trademark owners to seek protection for their respective marks in multiple countries by filing a single application, there are some pitfalls to avoid.

For large-scale coverage of your trademark in many countries, you may want to consider filing an application for an international Madrid Protocol trademark registration. Benefits of the Madrid Protocol registration include the filing of a single application designating many countries, one expiration date, and one place for renewal and for filing changes of names/addresses, license agreements, assignments, etc. As long as the application meets all formal requirements, the filing date of the Madrid Protocol application is the date of registration. The cost of a one-class application filed directly with all 78 Madrid Protocol countries would be around $70,000 US, whereas a Madrid Protocol application designating all the member countries is only about $18,000 US.

However, a few issues have been encountered with the Madrid Protocol system.

* An application must be based on a valid home (e.g., United States) application or registration. (The international registration is dependent on the home application for five years, after which it stands alone.)
* The classification and identification of goods/services in the international application must be identical to the home application. This can create problems if not considered ahead of time, because an acceptable goods and services identification internationally varies somewhat from an acceptable goods and services identification in the United States.
* Some foreign trademark offices will correspond directly with the client, even though a foreign agent has been retained.
* Notifications of partial or total refusal from designated countries are transmitted to the International Bureau and then to the foreign agent, in some cases leaving a short time between receipt of the Notification and the deadline for responding.
* Some countries publish the Notifications, giving rise to solicitation letters from foreign associates. To respond to the Notifications, the services of a foreign agent must be secured.

Strong consideration can be given to the Madrid Protocol system if you desire widespread trademark coverage, especially where cost is a concern. Many countries automatically extend the international registration into their country without further examination. Even though a foreign associate may be needed for responding to a refusal, cost savings can still be realized at the filing stage.

Please contact us if you are interested in further information regarding the Madrid Protocol.

The Federal Circuit recently reversed a Trademark Trial and Appeal Board (TTAB) decision affirming an Examining Attorney’s refusal to register the mark MOSCOVSKAYA as primarily geographically deceptively misdescriptive. In Russian, MOSCOVSKAYA means “from Moscow.” The Examining Attorney relied on the Doctrine of Foreign Equivalents which is a guideline providing that foreign words from modern languages be translated into English when it is likely that the ordinary American purchaser would stop and translate the foreign word into English. The third prong of the test for primarily geographically deceptively misdescriptive is that the misrepresentation is a material factor in the consumer’s decision. Joining the Doctrine of Foreign Equivalents and the 3rd prong of the test, the TTAB found that Russian speakers are an appreciable number of consumers and found that the mark met the materiality test of the 3rd prong based on the deception to Russian speakers. The Fed. Cir. ruled that the materiality test requires that a substantial portion of the relevant consumers is likely to be deceived, not whether any particular segment (Russian speakers) is likely to be deceived. The Fed. Cir. went on to state that Russian speakers may in fact be a substantial portion of the intended audience, but this needs to be considered by the TTAB on remand. We will have to wait and see if this decision will expand to other trademark principles (likelihood of confusion, descriptiveness, surnames, etc.) or be limited to primarily geographically deceptively misdescriptive refusals? In re Spirits International, N.V., Appeal No. 2008-1369 (Fed. Cir. April 29, 2009).

In a recent Trademark Trial and Appeal Board (TTAB) decision, the Applicant attempted to register the mark CYNERGY and in response received a section 2(d) likelihood of confusion refusal in light of a prior registration for SYNERGIE PEEL. In responding to the rejection, the Applicant argued that familiarity with its family of marks would cause consumers to pronounce the mark with a long “I”, rendering the mark sufficiently different from the cited registration. The TTAB held that a family-of-marks argument is not available in seeking to overcome a likelihood of confusion refusal. Further, the TTAB dismissed the Applicant’s remaining arguments, holding that the marks and goods are sufficiently similar and that sophisticated consumers may still be confused. In re Cynosure, Inc., Serial No. 76653359 (TTAB 2009) [precedential].

The Applicant in this case filed an application for “19-0 THE PERFECT SEASON” on November 8, 2007, seeking registration on the Supplemental Register, and amended the application on April 22, 2008 to seek registration on the Principal Register. In the meantime, the Patriots filed an intent-to-use application on January 17, 2008, for the same mark for registration on the Principal Register. The Patriots opposed the Applicant’s mark. To succeed in the opposition, the Patriots needed priority and thus attempted to knock out the prior application. The Patriots argued that the Applicant had admittedly not used the mark by its first filing date for registration on the Supplemental Register and did not specify use-in-commerce as the filing basis, and the application was void on those bases. In response, the TTAB held that the prior application met all the requirements to receive a filing date and the Patriots were attempting to conflate the requirements for filing a trademark application with the requirements for registration. The TTAB commented that applicants are allowed to add missing information to an application without losing the original filing date. Kraft Group LLC v. William A. Harpole, Opposition No. 91185033 (TTAB 2009) [precedential].