TRADEMARKS Archives - Page 5 of 5

COPYRIGHTS, INTELLECTUAL PROPERTY, PATENTS, TRADEMARKS, Uncategorized

Love and Litigation – Swarovski accused of Copyright Infringement of “Two In One Heart” Pendant Design

In December 2017, Galatea Jewelry filed suit against Swarovski in a California Federal Court alleging infringement of its copyrighted jewelry design entitled TWO IN ONE HEART. The TWO IN ONE HEART design was created in 2009 by Galatea principal Chi Huynh to “capture his vision of love as a union of two individuals, at once both separate and together, with an optical illusion of a single heart comprised of two overlapping hearts formed from the same continuous loop of metal.” Galatea claims that it began selling its TWO OF ONE HEART design in 2010, and that beginning in around January 2016, Swarovski began selling its infringing design. The two designs are depicted below:

Galatea	Swarovski

While the Swarovski design is not identical to the copyrighted Galatea design, Galatea alleges that Swarovski merely (1) horizontally flipped the Galatea design shown above left; (2) removed the existing diamonds; (3) covered a larger portion of the design with crystals; and (4) tapered the points and rounded the edges as follows:

In general, copyright infringement occurs when a copyrighted work is reproduced, distributed, performed, publicly displayed, or made into a derivative work without the permission of the copyright owner. Of primary concern where copyrights are concerned, is whether or not there was “copying” of the work. In theory, if two people create the exact same work completely independent from one another, there can be no copyright infringement. Copying can be proven by direct evidence (an admission, etc.) or circumstantial evidence. Circumstantial evidence of copying requires a showing of “substantial similarity”: (1) access by the alleged infringer to the copyrighted work and (2) similarity of the alleged infringing work to the original copyrighted work. While Galatea does not claim that it had any direct dealings with Swarovski, it does claim that Swarovski had access to the the TWO IN ONE HEART design through Galatea’s catalog, retail jeweler network and website as well as through various trade shows.

Assuming copying can be proven, a plaintiff must next demonstrate that it was the copyrightable elements of their design that were copied. This requires removing the ideas, scenes-a-faire (commonplace themes), facts, and public domain materials from the alleged infringing work. In the affirmative defenses raised by Swarovski in its answer filed in January 2018, the defense of Non-Copyrightable Material is asserted. Presumably, Swarovski is relying upon the scenes-a-faire doctrine, under which the courts will not protect commonplace elements of a work. Sequences of events which necessarily flow from a common theme or commonplace ideas where the elements of the work are indispensable or are standard in the treatment of a certain idea are considered to be scenes-a-faire and are not protectable under copyright law. For example, a court has held that a motion picture about the South Bronx would need to feature drunks, prostitutes, vermin, and derelict cars to be perceived as realistic, and therefore a later film that duplicated these features of an earlier film would not infringe. Scenes-a-faire are still entitled some level of protection, although it is relatively thin. Where scenes-a-faire are concerned, a plaintiff must prove that the infringing design is “virtually identical” to the copyrighted design.

So how does a jewelry designer or artist protect himself or herself against infringers? The first step is to identify what intellectual property protections are available. Jewelry designs, for the most part, are capable of being protected by copyright. Copyright protection attaches upon creation of the work. The designer should clearly mark each piece of jewelry with the appropriate copyright notice to place potential infringers on notice of his/her claim to protection under copyright laws.

In addition, design patent protection may be available for some jewelry designs. Design patents protect the ornamental features and overall design of an invention. Unlike copyrights, infringement of a design patent may be found in the absence of any proof of copying, so long as an ordinary observer who is familiar with the prior art would conclude that the allegedly infringing article is “substantially similar” to the patented design.

A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. While they normally would not be used to protect the jewelry design itself, trademarks can be used to distinguish the name of the design, or line of designs from others. For example, Galatea use the trademark Two of One Heart™ to identify its line of jewelry related to the copyright registration.

Once the intellectual property has been properly identified, steps must be taken to protect it. Under U.S. Patent Law, a design patent application must be filed within one year of the first public sale, use or disclosure of the invention or the inventor forfeits the ability to secure patent protection. Trademarks may be protected under common law without the need for a federal registration. However, there are several benefits to securing a federal trademark registration, including nationwide protection and incontestability of the mark after a certain period of time. Lastly, as discussed above, copyright protection begins upon creation of the work, but registration provides the owner with a number of additional benefits, including the right to sue alleged infringers in Federal Court.

Lastly, after protections are secured, the designer must enforce his/her rights. While there is not necessarily a duty to actively seek out potential infringers, a copyright or patent owner who turns a blind eye to infringing activity is in danger of having his or her intellectual property rights diminished or extinguished.

A jewelry designer should seek the advice of a qualified intellectual property attorney to guide him/her through the process of identifying, protecting and enforcing his/her rights. While it may not seem too difficult to do it yourself, simple errors in that process can undermine protection. At Martin IP Law Group, we take the time to work with designers, artists and inventors to build the best plan to protect their valuable property. Contact us today to see how we can help you.

COPYRIGHTS, INTELLECTUAL PROPERTY, PATENTS, TRADEMARKS

A LOOK BACK AT 2017 AND A LOOK FORWARD TO 2018 IN THE WORLD OF INTELLECTUAL PROPERTY

As we say goodbye to 2017 and ring in 2018, we thought it would be a good idea to take a look back on some of the biggest game changing decisions from last year in intellectual property and look forward to how they might affect you and the world in 2018. While there were many to choose from, we selected three – a patent case, a trademark case, and a copyright case.

PATENTS

Since the passage of the America Invents Act (AIA) in 2012, there has existed a faster and cheaper alternative to the federal court system for attacking the validity of an issued U.S. Patent. An inter partes review is a trial proceeding conducted at the USPTO’s Patent Trial and Appeal Board to review the patentability of one or more claims in an issued patent under certain limited circumstances. A third party instituting an inter partes review must show that there is a reasonable likelihood that the petitioner would prevail with respect to at least one claim challenged. If the proceeding is instituted and not dismissed, a final determination by the Board will be issued within one year (much faster than the typical case in federal court).

The constitutionality of the inter partes review is under attack in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, which was argued before the U.S. Supreme Court in November 2017. The sole issue now being considered by the Supreme Court is whether inter partes review violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury. A few years back (120 to be exact), in McCormick Harvesting Machine v. Aultman, the U.S. Supreme Court addressed this issue under similar circumstances, holding that “[t]he only authority competent to set a patent aside, or to annul it, or to correct it for any reason whatever, is vested in the courts of the United States, and not in the department which issued the patent.” Stay tuned to see if this “ancient” interpretation of the Constitution holds up in 2018.

TRADEMARKS

In Our September 2017 Blog and Newsletter we reported to you on the death of disparagement in the world of trademarks. In Matal v. Tam, Supreme Court ruled that the United States Patent & Trademark Office (PTO) could not refuse registration of the name “The Slants” to an Asian-American dance rock band from Portland, Oregon on the grounds that the phrase constitutes a slur and is offensive to Asian-Americans. In doing so, the Supreme Court ruled that the trademark law barring disparaging terms infringes on free speech rights, and, as such is unconstitutional.

The issue was raised again last month in In re Brunetti, a decision by the U.S. Court of Appeals for the Federal Circuit. The Federal Circuit held that the “immoral” or “scandalous” marks provision of the Lanham Act is also facially invalid under the First Amendment. Brunetti
is the owner and founder of FUCT – a clothing brand that has been referred to as one of the pioneering brands of modern streetwear, often incorporating various elements and icons of pop culture alongside anti-government and anti-religious campaigns into their designs. It is worth noting that, in its opinion, the Federal Circuit concluded that strict scrutiny (high burden of proof), rather than intermediate scrutiny (intermediate burden of scrutiny as the name implies) is the applicable standard in assessing the issue because the law “regulates the expressive components of speech, not the commercial components of speech”. Even if the government concludes that the “immoral” or “scandalous” provision cannot be saved in light of Tam, there may be good reason to request review by the entire panel of the Federal Circuit or the U.S. Supreme Court on the proper level of scrutiny to be applied, particularly since federal trademarks are. by there very nature, “commercial”. Stay tuned!

COPYRIGHTS
Section 411 of the Copyright Act has long provided that “no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made”. At present, there exists a split between the various Circuit Courts of the United States as to just exactly when such a registration or preregistration “has been made”. In the Fifth Circuit (Texas, Louisiana, Mississippi) and Ninth Circuit (California, Arizona, Nevada, Oregon, Washington, Idaho, Montana) this is considered to have occurred when the copyright holder delivers the required application, deposit and fee to the Copyright Office. In contrast, the Tenth Circuit (Colorado, Utah, Wyoming, Kansas, Oklahoma, New Mexico) and Eleventh Circuit (Alabama, Georgia, Florida) require that the Copyright Office “act” on the application before registration or preregistration is considered to have been made. To complicate things further, our own Seventh Circuit (Indiana, Illinois, Wisconsin) has issued conflicting opinions on the issue.

With any luck, the U.S. Supreme Court will resolve this difference sometime in 2018. The loser of the 2017 decision of the Eleventh Circuit Court of Appeal in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC is requesting the U.S. Supreme Court review the case and resolve the split between the circuits once and for all. At the present time, the U.S. Supreme Court has not yet determined whether it will hear the case, and has asked the U.S. Solicitor General to weigh in with his views on the issue. Hopefully this is a sign that the Supreme Court is considering hearing the case, particularly for those of us situated in the Seventh Circuit where there is no clear answer to this question.

Do you have issues involving patents, trademarks, copyrights, or trade secrets, or want to know more about protecting your valuable intellectual property? If so, contact us to discuss how we can help you protect these valuable assets and make 2018 your most successful and profitable year ever. Happy New Year!

ENTREPRENEUR, INTELLECTUAL PROPERTY, TRADEMARKS

Final Score on Issue of Trademark Disparagement: REDSKINS 8 USPTO 0

The 98th season of the National Football League (NFL) kicked off earlier this month with the Kansas City Chiefs defeating the defending Super Bowl LI champion New England Patriots 42–27. But before the season was even underway, the Washington Redskins scored a victory that may be more controversial than Deflategate, and is arguably more valuable to the Redskins franchise than the Patriots’ five Lombardi Trophies.

Earlier this Summer, in Matal v. Tam, a decision totally unrelated to the sport of football, the United States Supreme Court ruled that the United States Patent & Trademark Office (PTO) could not refuse registration of the name “The Slants” to an Asian-American dance rock band from Portland, Oregon on the grounds that the phrase constitutes a slur and is offensive to Asian-Americans. In doing so, the Supreme Court ruled that the trademark law barring disparaging terms infringes on free speech rights, and, as such is unconstitutional.

Curiously, as was raised by the Redskins in an amicus brief filed in the Tam case, the PTO previously registered marks such as WHITE TRASH COWBOYS and OFF-WHITE TRASH for two all-white rock bands, and N.W.A. for an all-African American rap group, as well as a number of other marks that could be considered by various groups to be disparaging. In the majority opinion, Justice Samuel Alito found that trademarks constitute private speech—not government speech—and federal registration of trademarks does not convert such marks into government speech. Alito went on to conclude that, because trademarks are private speech, the government cannot choose which speech it finds offensive and which it does not find offensive without running afoul of the First Amendment.

Prior to this unanimous decision of the Supreme Court, the so called disparagement clause of the Lanham Act had authorized the PTO to refuse registration to, or even cancel a trademark if it disparages a substantial percentage of a distinct group of people, be it a racial, ethnic, religious or political group. In 2013, five Native Americans sought to cancel six (6) federal trademark registrations issued to the Washington Redskins between 1967 and 1990 on the ground that the registrations were obtained contrary to the disparagement clause of the Lanham Act which prohibits registration of marks that may disparage persons or bring them into contempt or disrepute. In a June 2014 decision, the Trademark Trial and Appeal Board (TTAB) sided with the petitioners and canceled the marks because “they were disparaging to Native Americans at the respective times they were registered”. The Redskins organization has been pursuing appeals of that decision ever since, so the ruling has never gone into effect. In light of the Tam decision, it is expected that the Redskins will seek further review of the cancellation of their marks by the TTAB, and that those efforts will be successful.

While preservation of the federal trademarks is not required for the Redskins to continue use of the Redskins name, logos and marks, those registrations confer some significant benefits and advantages to the owner which would not otherwise be available without the registrations. Chief among those benefits is the exclusive right to use the marks in connection with the specified goods and services throughout the entire United States. Because the marks have been continuously in use and registered for more than five (5) years, they are considered to be “incontestible”, which, under normal circumstances, renders the marks immune from being challenged. Federal registration of a trademark also comes with the ability to utilize the services of the U.S. Customs and Border Protection Services to prevent infringing merchandise from entering the United States. Federal law also allows owners of federally registered marks to seek, and in some circumstances recover treble (3X) damages against infringers in certain circumstances.

The benefits conferred upon the owner of a federal trademark registration far exceed the time, money and effort invested in acquiring those rights. Most small businesses spend thousands of dollars or more each year on branding tasks such as logo creation, signage, social media, advertising and search engine optimization (SEO). If that branding strategy is not properly coordinated with a strategy to adequately protect the associated intellectual property rights, you may be throwing money away. At Martin IP Law Group, our approach is to work with clients to identify and protect their valuable intellectual property rights, including federal trademarks. If your business has an image and identity to protect (HINT: It does), contact us today to discuss how we can help you identify and protect these valuable assets in a way that will make your business stand out from the competition.

COPYRIGHTS, ENTREPRENEUR, PATENTS, TRADE SECRETS, TRADEMARKS

Student Inventions that are Making an Impact

Each year in April, Edison Universe celebrates student inventors with a contest that allows students to showcase their inventions for an opportunity to win one of several scholarships. Many students submitted entries, and the following three inventions were selected as student recipients of the 2017 Edison Award.

NOVA Personal UV Sensor

Invented by students Kali Watkins, Connor French and Brooke Mitchell of Park City, Utah, the NOVA Personal UV Sensor was developed to help prevent skin cancer and to help people develop healthy sun-exposure habits. The commercial version of the invention measures the sunburning portion of the UV spectrum. It allows the user to display UV index, dose rate, and daily accumulated dose. It is available online and sells for $375 at NovaLynx.

Intonation Portable Piano Keyboard

Piano keyboards, even the modern electronic versions, are bulky and difficult to store and transport. The Intonation Portable Piano Keyboard invented by students Hannah Chen and Seth Mazza of Peoria, Arizona can be broken down into designated segments for easy storage and transportation. Our search of the internet did not reveal any information regarding patents on this invention, nor did it reveal any commercially available version of the invention. However, there are a few videos on YouTube which suggest that others are working on similar concepts – Portable Piano First Prototype and Travel anywhere with real portable piano keyboard. Hopefully Chen and Mazza timely filed a patent application for their invention and a trademark application to protect that catchy name to protect their valuable intellectual property!

IKOS Toys

Park City, Utah is home to a program called CAPS, a hands-on engineering program that allows students to explore the real world during high school hours. It is also the home of the third 2017 student Edison Award winners who created IKOS™, a modular spherical construction toy for innovative kids of all ages. This innovative product has won multiple consumer awards, including Creative Child Magazine’s 2016 Puzzle of the Year and Product of the Year Awards. It is available online at IKOS Toys.

These student winners of the Edison Award have looked at problems within their community and have come up with innovative solutions. With the assistance of the Edison scholarship, they will be able to take their innovative spirit to the next level at the college of their choice.

Does your student have a great idea? The final deadline for 2018 Edison Award Nominations is November 17, 2017. To qualify for consideration, the product or service must be launched and available to end-users between July 1, 2016 and February 28, 2018. Winners are announced at the Edison Awards Gala in New York, NY in April 2008.

Before getting too far down the road, it’s important to identify and protect any intellectual property (patents, trademarks, copyrights and/or trade secrets) associated with your student’s innovative product or service. Contact us today to see how we can help you identify and protect these valuable assets.

DOMAIN NAMES, TRADEMARKS

Protect Yourself from Cybersquatters like a Tour de France Champion

Embed from Getty Images

Reminiscent of an ascent up the legendary Alpe d’Huez, three time Tour de France champion Greg Lemond has launched a brutal attack against two Minnesota businessmen under the Anticybersquatting Consumer Protection Act (“ACPA”). Lemond is seeking a permanent injunction and $6.6 million in damages for their alleged unauthorized control over 66 web addresses associated with Lemond’s trademarked name and business, called Grail (such as lemondgrail.com and grailcarbon.us). U.S. District Judge John Tunheim has already found partially in Lemond’s favor by granting a temporary restraining order barring the businessmen from registering any additional domain names tied to Lemond or his business or transferring or selling the ones they already control.

Lemond’s actions provide a good example of one way to effectively combat cybersquatting – the practice of registering names, especially well-known company or brand names, as Internet domains, in the hope of reselling them at a profit. Like the lead out train for Mario Cipollini, the ACPA is a powerful tool for trademark owners. Not only does the ACPA allow successful litigants to wrest ownership of the domain name from the wrongdoer, it provides statutory damages of $1,000 to $100,000 per domain name (hence Lemond’s claim for $6.6 million for 66 web addresses). While an award of statutory damages in discretionary, the ACPA does not require additional proof of actual harm caused by the violations. Add to that the possibility of treble (3x) damages and attorney fees, and a cybersquatter found liable under the ACPA could be looking at a serious case of road rash.

At this point, you may be asking “how, as a mere weekend warrior do I protect my name, business, product or brand from unscrupulous cybersquatters?” If you are in the early stages of starting your business or launching your product or brand, you should definitely file an application to register your mark with the U.S. Trademark Office. You should also register your domain name at or near the time you file your trademark application, as would be squatters may troll new trademark filings in hopes of registering the corresponding domain name and selling it to you at a profit. Preferably, you should secure not only your preferred domain name, but those with alternative top level domains (i.e., .net, .org, .biz), those with similar spellings and common misspellings. In addition, if your name, business or product consists of more than one word, secure the domain for the name with all of the words run together and with the words separated by hyphens.

If you already have an existing name, product or brand, start by typing in the domain name for your name or mark and see where it takes you. As mentioned previously, you should also type in alternative spellings, common misspellings, variations in the TLD and hyphenated domain names. If your check does not take you to a functioning website, but rather to a site stating that “this domain name is for sale”, or “under construction”, or “can’t find server”, the possibility of squatting exists. If, on the other hand, the domain takes you to a functioning website that includes advertisements for products or services that are similar to your trademarked products or services, the presence of a squatter is likely (not to mention the possibility of trademark infringement too). It is also possible that the domain will take you to a functioning website that has nothing to do with your trademarked product or service, but does bear some rational relationship to the domain name. In such a case, you likely don’t have a case of cybersquatting, but may still have a case for trademark infringement.

Before jumping to conclusions or making any allegations, check to see who owns the domain. The best source for this information is WHOIS Lookup. From there, you should contact the domain registrant to ascertain whether there is a reasonable explanation for their use of the name, or if they are willing to sell it for a price you are willing to pay. Even if the domain name registrant is clearly in the wrong, it is often faster and less costly to purchase the domain that to institute legal action.

If all else fails, get yourself a good IP attorney! In the United States, cybersquatting victims may either sue under the ACPA discussed above or use an international arbitration system created by the Internet Corporation of Assigned Names and Numbers (ICANN). While proceeding under ICANN is often less expensive than action under the ACPA, damages are not available. Given all of the circumstances of your particular situation, an experienced IP attorney can advise you on which approach would be best for your particular situation.

Like winning the Tour de France, starting a company, launching a new product or brand or protecting your name requires preparation, effort and a good team around you. At Martin IP Law Group we serve as your domestiques by helping you launch your company, product or brand to victory. Call us today to see how we can be a part of your team.

TRADEMARKS

Where have all the good craft beer names gone?

In 1899, then Commissioner of the US Patent Office Charles H. Duell commented that “everything that can be invented has been invented.” One wonders if Duell were alive today whether he would feel the same way about names for craft beers.

According to the Brewers Association, there were 4,225 brew pubs, microbreweries and regional craft breweries in the United States in 2015. That compares to a mere 794 in 1995. As you might imagine, each new craft brewery strives to choose a name for its brewery that attract and invites potential customers. In addition, as each craft brewery produces new and unique beers, these beers need catchy names as well.

A recent search of the records of the US Trademark Office revealed over 22,000 active registrations and published applications for beer names alone. With so many craft breweries, it seems like nearly every beer and brewery name imaginable has been taken. This presents significant challenges for new breweries as well as existing breweries looking for names for its new and unique brews. As crowded as the market has become, it is increasingly difficult to come up with a new beer name without an ensuing legal battle.

To further complicate things, US trademark law includes wineries and distilleries in the same class as breweries. So not only does a brewer need to navigate the mine field of 22,000+ other beer names, but it must also ensure that its chosen name is not too similar to the name of a wine or spirit. US trademark law also allows for imagery in a logo to be protected. For example, Bell’s Brewery is the owner of a US trademark registration for an image of a sun representing a human face or an animal.

Disputes over naming rights to beers are often settled in quasi-judicial proceedings before the US Trademark Office. In 2013 Tin Man Brewing Company lost its bid to trademark the name TIN MAN based on a challenge filed by Turner Entertainment Co., the owner of the rights to the trademarks associated with the Wizard of Oz motion picture. Litigation before the courts is not uncommon either. Earlier this year the Brooklyn Brewery Corporation of New York successfully enjoined Black Ops Brewing Inc of California from using “Black Ops”, “Black Ops Brewery” and all similar marks in connection with its brewery and beers.

So how does a responsible brewer navigate this minefield? First, it is a good practice to conduct internet and other trademark availability searches for the name and/or logo prior to investing in marketing or beginning sales of a new brew. An assessment of any similar or conflicting marks should be made before proceeding. If a search determines that a name is available, the brewer should seek to protect the name and/or logo with a US Trademark. If sales are not imminent, it might even be advisable to file an intent-to-use trademark application to seek clearance prior to going to market. By investing in a good pre-production trademark strategy, a brewer just might avoid a costly dispute down the road.