San Fernando Valley Los Angeles Attorneys
Navigation Two
Phone Number

Entries in trademark protection (4)

Monday
Jun192017

Trademark Law & Genericide: Google's Not Dead Yet

 

Intellectual Property and Franchise Agreement LawyerTrademark Attorney

by Tal Grinblat

(818) 907-3284

 

Domain name registration is usually a good first step to cement trade name and mark ownership. In a previous blog we reminded readers that possession, even in Intellectual Property matters, is nine-tenths of the law (read Why Register a Domain Name? for more info).

Trademark logo designerSo when Chris Gillespie registered over 700 web domain names, we would normally applaud his ambition as well as his efforts.

Except for one problem: Gillespie registered various domain names that included the word “google”. For example, Gillespie registered: “googlenewtvs.com”, “googledisney.com”, and “googlebarackobama.net” without Google’s permission. The REAL Google, who is the registered owner of the mark, filed a complaint with the National Arbitration Forum (NAF), which decides domain name disputes.

Google complained Gillespie: 

  1. Violated the Uniform Domain Name Dispute Resolution Policy (via trademark infringement, also known as cybersquatting); and

  2. Registered names that were confusingly similar to Google’s trademark, in bad faith. 

The agency agreed – NAF transferred the domain names to the web service company in 2012.

Not long after the NAF decision, David Elliott filed a petition in an Arizona Court to cancel the Google trademark registration under the Lanham Act, arguing “google” is now a generic verb for internet searching. Gillespie joined in the action. In September, 2013, the parties filed cross motions for summary judgment. Google prevailed and plaintiffs appealed.

But before we can deconstruct the respective parties' positions and the courts' decisions in Elliott v. Google, Inc., we must first understand the basics of genericide.

What is Trademark Genericide?

Trademark Infringement AttorneyGenericide is a term used when a trademark begins with strong trademark significance, but over time becomes generic and no longer identifies the source of products or services. Some examples of marks that started out as strong trademarks but later lost their significance include Aspirin and Escalator.  

These marks at one point were protectable as arbitrary or fanciful marks because they were primarily understood by the public to refer to specific products—a brand of headache reliever and a specific brand of moving stairs, respectively. But over time, these words became generic and the public now understands these words to describe the actual goods rather than the source of the goods.

Failing the Trademark Genericide Test

On June 14, 2017 the Ninth Circuit Court of Appeals upheld the lower court’s decision and found that appellants’ arguments regarding the genericizing of “google” had two flaws: 

  1. “A claim of genericide must always relate to a particular good or service.”

  2. Appellants “erroneously assumed that verb use automatically constituted generic use.” 

The Appellate Court noted:

If there were no requirement that a claim of genericide relate to a particular type of good, then a mark like IVORY, which is “arbitrary as applied to soap,” could be cancelled outright because it is “generic when used to describe a product made from the tusks of elephants.” Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 n.6 (2d Cir. 1976).

As to the Appellants’ second argument, the Court decided it contradicted fundamental trademark protection principles, in reference to source identification.

Elliott contended that trademarks perform source-identifying functions only when used as adjectives. The court disagreed and upheld the lower court’s ruling that the relevant inquiry is not whether the public used “google” as a verb indiscriminately, but rather whether the primary significance of the word “google” to the public was a generic name for internet search engines (in which case the word became generic) or as a mark identifying Google’s search engine in particular (in which case was still protectable as a trademark). 

In other words, the court held that a word could be used as a verb, yet retain trademark significance.

Citing the terms “indiscriminate” and “discriminate” coined by the District Court in this case, the 9th Circuit said:

We have already acknowledged that a customer might use the noun “coke” in an indiscriminate sense, with no particular cola beverage in mind {in which case the mark was likely generic}; or in a discriminate sense, with a Coca-Cola beverage in mind. In the same way, we now recognize that an internet user might use the verb “google” in an indiscriminate sense, with no particular search engine in mind; or in a discriminate sense, with the Google search engine in mind.

The relevant question to ask is how the relevant public primarily understands the word itself. The court therefore denied appellants’ claims, holding that based on the evidence presented, even though some members of the public used “google” in a generic manner, the relevant public still primarily understood the word to refer to the Google search engine in particular.

Generic Lessons Learned

Intellectual Property Litigation

So what can budding business owners establishing trademarks learn from this case?

The evidence to prove a mark is generic must be overwhelming. Elliott provided three consumer surveys to bolster his claim that “googling” simply means performing internet searches, but some were not conducted by qualified companies or individuals, and two were rejected by both courts out of hand.

Additionally, both Google and Elliott provided competing evidence as to the public’s use of the word “google” and “Google” as generic terms and trademarks. Since there were enough examples of trademarked use, Elliot lost this argument as well.

Last, Elliot failed to show “google” was used to describe internet search engines generally, such as Bing and Yahoo. This demonstrated to the Court that the death of Google as a trademark was greatly exaggerated.

Tal Grinblat is an Intellectual Property Attorney, Certified Franchise & Distribution Law Specialist, and a Shareholder at our firm. 

Disclaimer:
This Blog/Web Site is made available by the lawyer or law firm publisher for educational purposes only, to provide general information and a general understanding of the law, not to provide specific legal advice. By using this blog site you understand there is no attorney client relationship between you and the Blog/Web Site publisher. The Blog/Web Site should not be used as a substitute for obtaining legal advice from a licensed professional attorney in your state.

Monday
Nov142016

Half Baked: The Brave New World of Branding Weed

 

Franchise Agreement LawyerIntellectual Property Attorney

by Tal Grinblat

(818) 907-3284

 

In last week’s election, California voters passed Prop 64, which means recreational marijuana can be sold and used by persons over 21 within the state.

Trademark Protections PotBut don’t get excited about the gold rush just yet. Recreational users won’t be able to buy from medical dispensaries without a prescription; and cultivators won’t be able to sell marijuana until they get licensed. Barring the unforeseen, we’re looking at January 2018 for the first legal sales transactions of recreational marijuana.

Still, entrepreneurs are examining the legal concerns related to the recreational marijuana trade now; and some have been setting up for voter approval long before the November 8th vote.

Rapper Snoop Dogg for example, is already running into problems, including an opposition in the Trademark Trial and Appeal Board over his application for Leafs by Snoop. He filed the application in November 2015 with the U.S. Trademark and Patent Office (USTPO).

Leafs by Snoop is a company whose intended mark is a 7-pointed green leaf. The mark is intended to be used on cigarette lighters, clothing and hemp products, and is already being used on marijuana products in Colorado.

The company opposing the application is Maple Leaf Sports & Entertainment (MLSE), parent company of the National Hockey League’s Toronto Maple Leafs. MLSE filed an opposition in the U.S. Trademark Office on November 7, 2016 claiming there is a risk customers will confuse Snoop’s mark with their own. Below is each company’s trademark for comparison. See: Trademark Trial & Appeal Board Opposition.

California Pot Approval Up in Smoke?

No matter what individual states decide regarding recreational or medical marijuana use, cannabis is still a Schedule I illegal drug in the eyes of the Feds. Since the USPTO is a federal agency, they refuse registering marks that identify illegal products and services. The agency generally assumes an applicant’s use of a mark will be for legal goods and services, unless:

(1) a violation of federal law is indicated by the application record or other evidence, such as when a court or a federal agency responsible for overseeing activity in which the applicant is involved, and which activity is relevant to its application, has issued a finding of noncompliance under the relevant statute or regulation, or

(2) when the applicant's application-identifies goods or services that are a per se violation of a federal law." In re Brown, 119 USPQ2d at 1351; see also Kellogg Co. v. New Generation Foods Inc., 6 USPQ2d 2045, 2047 (TTAB 1988).

So what are the ways companies may obtain trademark rights in marijuana related products?

from MLSE Notice of Opposition

Intellectual Property Protections for Pot Products

Entrepreneurs who want to cash in on cannabis have a few options for now.

1. The best way to protect a brand nationally, is through trademark registration at the USPTO. Though it is currently not possible to trademark product names directly related to marijuana, it is possible to gain approval if you follow the example of the Dogg:

Sell products besides marijuana – parsley, sage, rosemary & thyme, for example, and come up with a catchy name and logo that encompasses everything. While a company would not get protection specifically for marijuana products, it could get protection for tangential legal products it sells.

2. Register the trademark in states where marijuana sales are legal. In California, the Secretary of State’s Trademark Unit handles trademark registrations.

3. Use the mark. To obtain common law trademark rights, a retailer need only use their name, such as through sales in an online store (no, marijuana can’t be sold online, but other products can be), on packaging, and in advertising. No formal registration is required to obtain common law rights. Unfortunately, common law rights are limited, in that trademark rights are only obtained in geographies where the retailer has actually used the mark. 

Accordingly, a cannabis retailer in California may have a difficult time enforcing its trademark rights outside the state, should a retailer in another state decide to use the same or similar branding.

None of these three protection methods are fool-proof. The first is the best method as it provides nationwide rights, but barring that, a combination of options two and three will also afford some protections and are better than nothing. As for Snoop Dogg…we’ll just have to wait for the smoke to clear to see if Leafs by Snoop gets crushed by the opposition.

Tal Grinblat is an Intellectual Property Attorney and Shareholder at our firm. 

Disclaimer:
This Blog/Web Site is made available by the lawyer or law firm publisher for educational purposes only, to provide general information and a general understanding of the law, not to provide specific legal advice. By using this blog site you understand there is no attorney client relationship between you and the Blog/Web Site publisher. The Blog/Web Site should not be used as a substitute for obtaining legal advice from a licensed professional attorney in your state.

Thursday
Jun192014

2nd Down: Washington Redskins Franchise Loses Trademark Territory

 

Franchise Agreement LawyerState Bar Certified Specialist, Franchise & Distribution Lawby Tal Grinblat
818.907.3284

 

Yesterday's U.S. Trademark Office's ruling that six of the Washington Redskins' trademark registrations – some  owned since 1967 – are disparaging and should be cancelled, have some wondering whether any trademark is safe.

Trademark AttorneyWhat’s to prevent a group of people in the future coming together and claiming that the Minnesota Vikings or New York Yankees registrations are disparaging to people of Scandinavian descent, or to those who reside in the North Eastern United States? Should they be cancelled as well?

With the promised appeal of this decision, it is clear the Redskins franchise won't have to change their name anytime soon.  But the question persists: can marks be deemed disparaging over time, and then be subject to attack?   

In its ruling, the USPTO’s Trademark Trial and Appeal Board, found the following:


  • The word REDSKIN on its face is and always has been a racial designation.

  • The word REDSKINS is a plural of the word REDSKIN.

  • The word REDSKIN on its face refers to the real or imagined skin color of Native Americans.
  • Racial slurs often refer to real or imagined physical differences.

  • Before 1966 no dictionary in the record included a usage label for the term REDSKIN.

  • Beginning in 1966 and continuing to 1990, usage labels in dictionaries indicating the term REDSKIN to be offensive, disparaging, contemptuous or not preferred, first appear and then grow in number.

  • From the mid-1960’s to 1996, the word ‘redskin(s)’ has dropped out of written and most spoken language as a reference to Native Americans.

  • From at least the mid-1960’s to 1996, the words ‘Native American,’ ‘Indian,’ and ‘American Indian’ are used in spoken and written language to refer to Native Americans.

  • The usage labels appear and the use of the word redskin(s) disappears because it is increasingly recognized that the term is offensive and disparaging during the relevant time period as Native Americans raise awareness about the offensive nature of the term redskin(s).

The Board concluded that “petitioners have shown by a preponderance of the evidence that a substantial composite of Native Americans found the term REDSKINS to be disparaging in connection with respondent’s services during the relevant time frame of 1967-1990." Accordingly, the Board held the six registrations must be cancelled as required under Sections 2(a) and 14(3) of the Trademark Act.

 

USPTO: Second Down and Years to Go

So what is the import of the Board’s decision?

First, much will depend on the appeal and whether the Redskins franchise is able to persuade the Federal Circuit that the Board was wrong again (this is the second time the Board held the marks disparaging, the first decision was later overturned by the courts due to the equitable defense of laches).  The Redskin registrations will remain effective while the case is on appeal.

Second, even if the Board’s ruling is upheld, the Board’s power is limited to cancelling the registrations.   The team will continue to own and be able to protect its marks without the registrations based on common law rights. So while the team will lose some presumptions and statutory benefits of owning their registrations – even without the registrations – the team can still monitor, police and pursue infringers.

 

The Red Zone: Political Correction, Tradition, and Federal Law

But there are other factors at work as well. 

Growing pressure from notable politicians – including 50 senators asking the NFL to initiate name change efforts – civil rights groups like the NAACP, and coalitions representing Native Americans, is on the rise. Proponents for the change say the league should be more politically correct overall, since the NFL is the recipient of federal tax breaks. 

The 50 senators who signed the letter to NFL commissioner Roger Goodell cite several laws protecting Native American Culture, including the American Indian Religious Freedom Act, the Native American Languages Act, the Indian Arts and Crafts Act, and the Native American Graves Protection and Repatriation Act. They also cited the Donald Sterling/Clippers controversy as reason to get professional sports leagues to clean up their branding.

So in the end, even if the Redskins can legally continue to use their name (with or without a registration), the ultimate question will be whether the political pressure will be too overwhelming and change becomes inevitable. 

Tal Grinblat is a Trademark Attorney and Shareholder at our firm. Contact him via email: tgrinblat@lewitthackman.com, or 818.907.3284.

 

Disclaimer:
This Blog/Web Site is made available by the lawyer or law firm publisher for educational purposes only, to provide general information and a general understanding of the law, not to provide specific legal advice. By using this blog site you understand there is no attorney client relationship between you and the Blog/Web Site publisher. The Blog/Web Site should not be used as a substitute for obtaining legal advice from a licensed professional attorney in your state.

Thursday
Feb162012

Intellectual Property Law - The Madrid Protocol Promotes Global Trademark Protections

 

Franchise Agreement LawyerState Bar Certified Specialist, Franchise & Distribution Lawby Tal Grinblat
818.907.3284

 

American based companies wanting to protect their trademarks internationally have been able to do so fairly easily since 2003, when the United States adopted the Madrid Protocol.

The Madrid Protocol is an international treaty currently recognized by 84 countries. It allows a U.S. based business that has a pending trademark application or registration in the U.S. Trademark Office apply to register the identical mark in other member countries of the Protocol, using a fairly simplified procedure.

The benefits of using the Protocol are fairly extensive. Instead of applying to register a mark separately in various countries, the applicant can file one application with the US Trademark Office which then automatically gets sent to the countries designated.

You no longer need to hire local trademark counsel in individual territories (unless objections are raised to the application at any stage). You also pay for the applications in US currency, thereby eliminating the need for wire transfers. Once an international registration is issued, there is also a simplified process to renew the trademark and a simplified manner to record address changes and other information, such as a sale of the mark to other parties. In addition, after an international registration issues, it’s possible to request an extension of protection to other member countries without having to start the process again.

Which countries are members of the Madrid Protocol? They range from Albania, Bhutan and China, to Uzbekistan, Vietnam and Zambia – but you can access the complete Madrid Protocol List of Countries here. Application fees vary by country.

 

Your Trademark: Meeting International Requirements

 

Your international application must be based on a U.S. (or local) application or registration, called a "basic application" — you cannot file internationally without it.

  1. The mark and the owner of the international application must be the same as the mark and the owner of the basic application.
  2. The international application must include a list of goods and services identical to or more narrow than the list on the basic application.
  3. The applicant must pay the U.S. certification fees at the time of submission as well as the application filing fees for all countries to which protection is sought.
  4. The applicant must identify at least one Contracting Party for an extension of protection.

If the application meets these requirements, the World Intellectual Property Organization (WIPO) located in Geneva, Switzerland, will register your mark, publish it in the WIPO Gazette of International Marks, and send you a certificate as the "holder of the international registration."

The International Bureau will then notify the Contracting Parties you designated in the international application. The designated countries will then review the application (as they would review any other application filed directly with them). And if no impediments or objections are raised, a registration ultimately is issued and forwarded to the applicant.

Due to the pitfalls involved in this multi-step process, trademark owners are encouraged to consult with experienced trademark counsel to provide guidance on, explain the process and assist with filing the international application. And if any objections or impediments are raised during the prosecution, trademark counsel can also direct the applicant to local counsel in the countries involved for assistance.

Tal Grinblat is an Intellectual Property Attorney, and a Certified Specialist in Franchise and Distribution Law, as designated by the State Bar of California's Board of Legal Specialization. If you have questions regarding intellectual property, trademark protection or franchising a business, call him at 818.990.2120.

 

 

 

Disclaimer:
This Blog/Web Site is made available by the lawyer or law firm publisher for educational purposes only, to provide general information and a general understanding of the law, not to provide specific legal advice. By using this blog site you understand there is no attorney client relationship between you and the Blog/Web Site publisher. The Blog/Web Site should not be used as a substitute for obtaining legal advice from a licensed professional attorney in your state.

LEWITT HACKMAN | 16633 Ventura Boulevard, Eleventh Floor, Encino, California 91436-1865 | 818.990.2120