Much confusion remains about dilution after the Supreme Court's Mosley decision.  Perhaps there's even more than before.

M. Scott Donahey's recent article in the John Marshall Review of Intellectual Property Law helps us understand:

"Distinctiveness" and "Famous" - Separate Requirements Under the Federal Trademark Dilution Act?

   more »

The Preface of my book Guiding Rights: Trademarks, Copyright and the Internet opens with the following quote:

"They can't do that. We have a patent on the copyright in that trademark."

I use it as an example of the general confusion surrounding intellectual property rights, which I call "an increasingly regrettable situation" as these rights gain importance in our modern times.

Another example of this confusion is the following headline - No Patent on 'You're Fired' - posted today at www.thestate.com for Eric Dash's otherwise fine New York Times Article mentioned here yesterday.

Of course, "patents" do not protect words or ...   more »

Eric Dash reports for the New York Times that Donald Trump's application to register YOU'RE FIRED has received an initial refusal from the U.S. Trademark Office based on prior registration of YOU'RE HIRED for an educational board game. See "Fired Topped By Hired at the Trademark Office."

Do you suppose any of the participants fired on "The Apprentice" would be confused?

   more »

Creating Value During Consulting Engagements: IP Questions That Increase Market Value and Improve the Bottom Line

Suppose you could increase the value of your services and distinguish yourself from your competitors without added cost. Would you be interested?

If you are a business consultant (financial, legal or otherwise) the answer is obvious.

This article suggests some ideas that may allow you to bring added value to your consulting engagements by exploring intellectual asset management issues with your clients.

Failure to consider these issues yields adverse business consequences, including unrealized value, unnecessary expense and legal risk.

Routine attention to intellectual asset management can ...   more »

Thanks to Patrick Jones at www.UDRPlaw.net for bringing to our attention his compilation of ICANN UDRP cases and related news involving city and country names. 

See also his comment on previous posting about Mexico.com.

   more »

Film director Spike Lee was awarded the domain name www.spikelee.com in this UDRP decision by Panelist Edward Chaisson: Shelton J. Lee (a.k.a. Spike Lee) v. Mercedita Kyamko, Case No. D2004-0483 (WIPO August 17, 2004).

The defaulting respondent used the domain name to redirect Internet users to a "pornographic" website.

The SPIKE LEE name had been the subject of applications for U.S. trademark registration, but had never been registered as a trademark. Instead, the Panel recognized Spike Lee's common law rights in the name SPIKE LEE, stating that the name "has become famous and is unquestionably associated in the public's mind ...   more »

The Pattishall, McAuliffe Newsletter, Summer 2004, features an article by Matthew A. Griffin entitled "Can Fair Use Confuse?" regarding the KP Permanent Make-Up case pending before the Supreme Court.

Prior Pattishall, McAuliffe Newsletters are available here.

   more »

An article by Christina Passariello in the Wall Street Journal today entitled "Luxury-Goods Firms Hunt Copycats as Web Market Expands" discusses the hugh problem of trademark counterfeiting in the luxury goods market. Some highlights:

Counterfeits are estimated to cost the luxury watch industry about $600 million a year in lost revenue.

LVMH Moet Hennessy Louis Vuitton spent about $14.5 million last year to fight counterfeits.

Tiffany found that 73% of the Tiffany labeled items on eBay were counterfeit.

EBay's answer to a complaint filed June 21 in New York by Tiffany is due at the beginning of September.

See August 26, 2004, The ...   more »

Evan Hansen's article "JibJab beats copyright rap" on CNET News.com reports that the alleged owner of the copyright in Woody Guthrie's song "This Land is Your Land" has dropped its claim against the popular JibJab parody.  JibJab's attorneys at Electronic Frontier Foundation contend that the owner failed to renew the copyright registration allowing the song to fall into the public domain. 

 

   more »

I'd like to welcome my students to the Fall 2004 John Marshall Law School LLM Trademark Law class.  I look forward to sharing my Monday evenings for the next several months with you.

I've been teaching in the John Marshall LLM intellectual property program as an adjunct professor since the late 1980s.  It's a privilege to be part of one of the best IP programs in the country. If you'd like to see what we plan to cover this Fall, see the syllabus at GuidingRights.com (student page)..

This year we have a great mix of students: practicing attorneys, advanced third year ...   more »

When domain name conflicts between manufacturers and distributors rest on contractual disputes over the use of the trademark owners' marks, ICANN UDRP panels have frequently denied relief. 

See generally the cases cited and discussed in Western Holdings, LLC v. JPC Enterprise, LLC d/b/a Cutting Edge Fitness and d/b/a Strivectin SD Sales & Distribution, D2004-0426 (WIPO August 5, 2004) by Mark Partridge as sole panelist.

The decision summarizes other ICANN UDRP decisions involving contractual disputes. The Complainant tends to prevail if there is a clear contractual prohibition against the use of the mark as a domain name. But that is not typically so if the contractual prohibition ...   more »

This article from Reuters reports on the decision issued today by the Ninth Circuit in the Grokster litigation: US Court Rejects Movie, Music Makers' Piracy Claims.  Modern technology says: "Get on board or get out of the way."   more »

Further an earlier post, this article by Javad Heydary for eCommerce Times on the Mexico.com UDRP decision illustrates the conflicting views around the world over protection of geographic indications, perhaps the hot international trademark issue for the next decade. Domain Name Geography: Mexico Loses Fight over Mexico.com.    more »

The law firm of Oppedahl & Larson sought trademark registration of PATENTS.COM as a mark for services offered by the firm at its website www.patents.com. 

The Federal Circuit affirmed the Examiner's refusal on the grounds that the mark as a whole was merely descriptive for "computer software for managing a database of records and for tracking the status of the records by means of the Internet."  In re Oppedahl & Larson LLP, 71 U.S. P.Q.2d 1370 (Fed. Cir. 2004).

The Court holds that the PTO must evaluate the commerical impression of the mark as a whole, including the TLD indicator. Normally, ...   more »

Rodney Weidemann with ITWeb in South Africa provides this article entitled "Helluva Case for Freedom of Speech" highlighting the conflict often present when trademarks are used to criticize the trademark owner.

 

   more »

The Intellectual Property Law Association of Chicago and DePaul University College of Law are hosting an afternoon seminar entitled "Untangling the Web-Trademark And Domain Name Issues" on September 21, 2004.

Speakers include:

Steve Stolfi, CCH CORSEARCH

Michael Pollack, Register.com

Laura H. Covington, Yahoo! Inc.

Michael Palage

Florent Gevers, Gevers

Ryan Kaatz, National Arbitration Forum (NAF)

Mark V. B. Partridge, Pattishall McAuliffe Newbury Hilliard & Geraldson LLP

For more details see this announcement.   more »

Many years ago, Uzi Nissan innocently registered the name www.nissan.com for his computer business. All was fine until he added advertising links for cars. Nissan Motors was not amused, leading to a long running dispute.

The Ninth Circuit has the latest word here with noteworthy comments on dilution, commercial speech, and initial interest confusion. Nissan Motor Co. v. Nissan Computer Corporation, Case No. 02-57148 (9th Cir. August 6, 2004). 

At the start, did Uzi have the right to register his last name as a domain name? There is no real question about that: it was his last name. But is that ...   more »

Charters Macdonald-Brown, Simon Chalkley and Sara Ashby have opened a new firm in London named Redd. These alumni of Gouldens and Jones Day will focus on intellectual property and technology related advice and litigation. Visit their site at www.reddlaw.co.uk

Congratulations! We wish you well.

   more »

Last week I had lunch with a young attorney with a local IP firm to discuss her career goals. We were paired through the AIPLA mentor program. I find it a pleasure to chat with attorneys at the start of their careers, when everything is possible.

During our lunch, she asked for my thoughts on the three things every young attorney needs to know to be a success in private practice.

The three keys to success? A provacative question. I've been practicing for over twenty-three years, and to repeat an old joke, I still don't have it right, that's why I'm ...   more »

Hurricane Charley struck Orlando in the evening on Friday the 13th, taking the server for this site out of commission for several days.  As you can see, we're back online Monday afternoon and glad to be. 

Our condolences to the residents of Florida for losses more significant than the temporary inconvenience of a downed website. We're sorry for the suffering you face in Charley's wake.

   more »

After Houbigant sued Dana Perfumes for infringement of the HOUBIGANT trademark, Dana filed for bankruptcy.  The parties settled the infringement dispute giving Houbigant the right to pursue indemnification under Dana's insurance policy.  The lower court granted summary judgment upholding the carrier's denial of coverage.  The Third Circuit reversed, holding that trademark infringement was covered as "Advertising Injury" under the Policy.  Houbigant Inc. v. Federal Insurance Co., Case No. 03-1286 (July 6, 2004).

The case follows Frog, Switch & Mfg. v. Travelers Ins. Co., 193 F.3d 742 (3d. Cir. 1999), in departing from the pro carrier decision Advance Watch Co. v. ...   more »