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Trademarks and the Internet
Internet Based Use
In re Sones, Serial No. 78717427 (September 30, 2008)
• Applied Land’s End standard for catalog pages to webpages: A webpage may be an acceptable specimen of use for a product if it:– (1) includes a picture of the relevant goods– (2) shows the mark associated with the goods– (3) contains the necessary ordering information
• If there is no picture of the goods, then the webpage is not acceptable as a specimen
• Also see In re Dell Inc., 71 USPQ2d 1725 (TTAB 2004)
Internet Based Use
In re Odom’s Tennessee Pride Sausages Serial No. 76581899 (July 28, 2009)
• Appeal re: adequacy of web-page as a specimen of use for a design mark
• The “Farm Boy” design mark only appeared at the bottom of the page near legal notice text
• TTAB: The design mark stands out from surrounding text as it is substantially larger and more prominent and not “standard”
• The design mark is recognizable as such• The design mark was presented sufficiently
close to the goods on the web-page
Internet Based Use
In re Mississippi Cheese Straw Factory, Serial No. 76617223 (3-2009) • Web page specimen of use was rejected
– Store page showed photo of the goods but photo was not directly associated with the mark
– Second page had order form but no photo of the goods
• The TTAB opined that a specimen that spans two or more pages is "too attenuated, particularly where the pages involved include multiple trademarks not all of which appear to be associated with the pictured goods."
Unacceptable 2-page Web Specimen of Use
Domain Name Registration ≠ Use
Gamers, Inc. v. Game-Xpert, Inc., Opposition No. 91164969 (Aug. 2008) • Applicant applied to register GOGAMER.COM• Opposer claimed prior rights in GAMERS and
GOGAMERS.COM• Applicant registered its domain name second,
but Applicant used its logo mark on the top of its web page while opposer use GAMERS on the top of its web page
• TTAB: “while a domain name may attain trademark status, its use as an address does not support trademark use”
Trademarks on the Internet• Starting in May, 2009, Google reversed its existing
trademark policy and now allows companies to purchase advertisements with 3rd party trademarks in the text of the search
• This will drive up “bid price” in auctions, e.g., a company will now have to bid higher to ensure that its ads appear first when its trademark is searched
• Google has the same policy in the UK and Ireland• Upon receiving a complaint, Google will stop use of a
competitor’s trademark in the text• However, it appears that Google will not enforce its
takedown policy if the mark at issue is not inherently distinctive
Trademarks on the Internet
Tiffany v. eBay, 576 F.Supp.2d 463 (S.D.N.Y. 2008)
• eBay used Tiffany name on its homepage and in sponsored Google links
• Held: This was nominative fair use– No other way to describe Tiffany jewelry – it’s
value as a luxury item is due to the Tiffany name
Tiffany v. eBay, continued
Tiffany v. eBay, 576 F.Supp.2d 463 (S.D.N.Y. 2008)
• Held: “eBay can’t be held liable for trademark infringement based solely on their generalized knowledge that trademark infringement might be occurring on their Web sites”
• eBay’s “take down” actions upon notice were sufficient, eBay did not have to preemptively monitor trademark usage
Trademarks on the Internet• Louis Vuitton and sister company Christian Dior
sued eBay in France for not taking the necessary steps to ensure that the accessories sold on its web site were not counterfeit
• A French Court ordered eBay to pay $63.1 million in damages for allowing auctions of fake goods and unauthorized sales of legitimate goods
• However, more recently, eBay prevailed in a trademark infringement suit brought by L’Oreal in France. This French Court held that eBay met its legal obligations to combat fake products and acted in good faith by establishing means to fight counterfeits
Trademarks on the Internet• Second Life ® is a virtual world that is akin to “real
world” society• It has a large and growing community of users who
interact with each other through personal “avatars”• Users own virtual “property” that they create• Second Life includes a self-sustaining economy fueled
by users creating, buying and selling virtual property• The Second Life economy runs on Linden dollars,
convertible to U.S. dollars as well as other currencies, and, according to one estimate, had an monthly turnover of $20-$35 million in 2007
• Predictably, user’s activities in Second Life include many instances of unauthorized trademark use
Second Life – cont.• For example, on May 4, 2007
– At least 16 “shops” advertised “Ferrari” cars with one model selling for $7.75
– At least 50 “stores” carried virtual sunglasses branded “Gucci,” “Prada,” “Rayban,” and “Oakley,” with pricing around $0.75
– Several “stores” sold virtual “iPods” including preloaded (and copyrighted) songs
– see “Rampart Trademark Infringement in Second Life Costs Millions…” Benjamin Duranski, www.virtuallyblind.com
• also see Taser Inter. Inc. v. Linden Research Inc. 2:09-cv-00811 (2009) – Complaint alleged trademark infringement and
that Taser’s reputation was damaged and sales hurt by the sale of virtual weapons sold under the Taser brand name
All “stores” selling Taser branded weapons also sold pornographic content
Other Items of Note
Items of Note - Laches
Klise v. Braided Accents, Cancellation No. 92045607 (July 3, 2008)
• “[T]he objection is to the rights which flow from registration of the mark”
• So latches begins from the publication date• Reliance by registrant was not required,
prejudice applied because of registrant’s expansion of use
• “[I]nevitable” confusion trumps laches• Delay of 62 months in filing cancellation
prejudice respondent and was unreasonable and unexcused
Items of Note: David Kappos’ Remarks to the AIPLA Annual Meeting, October 15, 2009
• “In another positive step for Trademarks, the CAFC decision in the Bose case ended what I think was a too aggressive and too broad interpretation of fraud on the TM office. The CAFC have given us good guidance in the Bose decision. Now we need to apply this guidance in the context of our use-based TM system.”
• “As a practical matter, the Office is seeing an increasing number of applications with huge lists of good and services, in both use and intent-to-use cases. Examining attorneys have a limited set of legal and practical tools to deal with such applications. And a use-based trademark system falls apart if the statements of use are unreliable.”
• “I have asked our TM management to engage trademark owners and the trademark bar in discussions on this matter. We look forward to reaching a long-term solution that works for the Office and the applicant community.”
USPTO TPAC Meeting Agenda - November 20, 2009
• Public Meeting and Webcast , 9:00 a.m. to 12:30 p.m. • 10:35 a.m. (60 minutes) – Discussion with Trademarks
Commissioner Lynne Beresford about: • Discussion of what steps the Trademark Operation should
take, if any, in the wake of the Federal Circuit decision in In re Bose Corp, to minimize the amount of “deadwood” on the trademark registers. (“Deadwood” is mark registrations for marks on which the mark was not in use in commerce as of use declaration.) Non-exclusive ideas for discussion: – Should any special action be taken regarding applications
claiming a large number of goods/services? – Should proof of mark usage be required on each item of
goods/services? – Should there be a procedure by which a third party can require an
interim proof of use of a mark by a mark registrant on some or all goods/services covered in a registration?
• Transcripts at http://www.uspto.gov/about/advisory/tpac/index.jsp
Items of Note
• New TMEP: 6th Edition Trademark Manual of Examining Procedure
• Issued October 2009– Available online at USPTO
• No New Rules:– Prior rule changes incorporated
– New case law incorporated
– Reorganizes various sections
Items of Note: New FTC Rules
• F.T.C. revising rules about endorsements and testimonials in advertising, effective Dec. 1
• Bloggers who review products must disclose “material connections” (payments or free products) between advertisers and endorsers.
• Celebrities will need to disclose any ties to companies, should they promote products on a talk show or on Twitter.
• Both advertisers and endorsers may be liable for false or unsubstantiated claims in an endorsement – or for failure to disclose material connections
Items of Note: Practice Tip
• Practice Tip: 7th Circuit Pattern Jury Instructions
• Available at: http://www.ca7.uscourts.gov/Pattern_Jury_Instr/7th_civ_instruc_2009.pdf
– Patents pp. 188-261– Copyright pp. 262-286– Trademark pp. 290-337
• Reference for elements of a claim • Summary of relevant authority
