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Maintaining Trademark Rights: Policing and Educational Efforts

April 8, 2011

Below is a presentation discussing the various ways courts have evaluated a trademark owner’s efforts (or lack thereof) to police its mark, as well as efforts that should be taken to prevent a trademark from becoming generic. Click here to download a copy.


March 2011 Trademark Group Lunch

March 30, 2011

Topics covered in this month’s trademark group presentation include the forthcoming update to the Trademark Trial and Appeal Board Manual of Procedure (TBMP), case law updates concerning topics including fraud in the context of a statement of use, tacking, relation of goods and services, and the Visual Artists Rights Act. Click here to download a copy of the presentation.

 




January 2011 Trademark Prosecution Lunch

January 28, 2011

Topics covered in this month’s trademark prosecution presentation include discussions of recent changes to the TEAS system, Patent and Trademark Office alerts, trademark foreign equivalents, scandalous marks, and state sovereign immunity. Click here to download a copy of this presentation. 


October 2010 Prosecution Lunch – Trademark

November 3, 2010

Topics covered in this month’s trademark prosecution presentation include discussions of a recent Federal Circuit case about contributory liability, a Ninth Circuit case about the first sale doctrine and copyright linceses, a Seventh Circuit case regarding standing and what is a commercial interest under the Lanham Act, and a Federal Circuit case addressing inherent disctinctiveness of trade dress.  Click here to download a copy of this presentation.


September 2010 Prosecution Lunch – Trademark

September 29, 2010

Topics covered in this month’s trademark prosecution presentation include a discussion of the latest Trademark Public Advisory Meeting, potential changes to the Trademark Electronic Search System (TESS), a Trademark Trial and Appeal Board (TTAB) update, case discussions concerning disclaimers as well as packaging that failed to function as a trademark, and a discussion of TTAB case that concerns discovery issues. Click here to download a copy of the presentation.


Presentation- Take Down Provisions: Copyright First. Now Trademark. What Next?

September 16, 2010

Below is a presentation that discusses how the take down provisions of the Digital Millennium Copyright Act (DMCA) have been expanded to not only cover copyrights but other forms of intellectual property, such as trademarks, rights of publicity, patents, etc. The presentation compares the different take down procedures used by major websites as well as provides sample take down forms and policies. Click here to download the PowerPoint presentation.


August 2010 Prosecution Lunch – Trademark

August 20, 2010

For the latest in trademark news, please view the PowerPoint below from our August 2010 Patent & Trademark Prosecution Group meeting.  Topics covered in this month’s presentation include the creation of the new U.S. Intellectual Property Enforcement Agency and a recent 9th Circuit ruling on trademark dilution.  Click here to download the PowerPoint presentation.

Trademark Office Consistency Program Extended

August 20, 2010

After assessing the Trademark Consistency Initiative Pilot Program, the United States Patent and Trademark Office (USPTO) has decided to extend and expand the program.  The USPTO is expanding the parameters of the program so that a Request for Consistency Review on substantive or procedural issues (excluding issues involving identifications of goods and services) may include registrations that have issued within the past five years.  Additionally, for at least a period of four months, commencing on June 23, 2010, the Office will accept Requests concerning inconsistency issues with respect to identifications of goods and services.  Please note that applications and registrations based on the Madrid Protocol are excluded and registrations relied upon must have issued within the two years prior to the Request.  Additionally, the pending application at issue must have a final identification or classification requirement outstanding.  

 If you would like more information on the Trademark Office’s Consistency Program, please contact us.


Case Law Update: Enforcing a Judgment by Levying a Domain Name

June 30, 2010

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.


Trademark Videos on Demand

June 30, 2010

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.

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