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ICANN Set to Expand Domain Name Space

November 4, 2009

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 Importance of Conducting Post-Registration “Fraudits” of Trademark Registrations

July 29, 2009

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].

Tips to Avoid the Pitfalls for Madrid Protocol Trademark Applications

June 16, 2009

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.

Doctrine of Foreign Equivalents

June 1, 2009

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).

Family-of-Marks Argument Not Available Against Likelihood of Confusion Refusal

May 26, 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].

Another Loss for the New England Patriots

May 11, 2009

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].

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