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Three Keyword Advertising Decisions in a Week, and the Trademark Owners Lost Them All

4 06 2021

Technology & Marketing Law Blog
Eric Goldman
August 17, 2020
If you are a trademark owner suing over competitive keyword ads, you are almost certainly making a bad business decision, and your attorney might be milking your bank account. If you are an attorney representing a trademark owner in a competitive keyword ad lawsuit, please reexamine your professional decision-making to ensure that you are, in fact, prioritizing the best interests of your clients.

This is my first time blogging keyword ad cases in almost a year. However, in an odd coincidence, we got three rulings in the same week. When it rains, it pours. This post rounds up how trademark owners are doing in these cases (TL;DR: they lose). I don’t have a conclusion at the end of this post because, honestly, what’s left to say? If the conclusion to this post isn’t obvious after reading it, take off your plaintiff-colored glasses.

Passport Health, LLC v. Avance Health System, Inc., 2020 WL 4700887 (4th Cir. Aug. 13, 2020). Prior blog post.

Smash Franchise Partners LLC v. Kanda Holdings Inc., 2020 WL 4692287 (Del. Ct. Chancery Aug. 13, 2020)

Sen v. Amazon.com, Inc., 2020 WL 4582678 (S.D. Cal. Aug. 10, 2020). Prior blog post; and also referenced here.

The content in this post was found at https://blog.ericgoldman.org/archives/2020/08/three-keyword-advertising-decisions-in-a-week-and-the-trademark-owners-lost-them-all.htm Clicking the title link will take you to the source of the post and was not authored by the moderators of freeforafee.com

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Categories : Domain Names, Keywords/Meta-tags, Trademarks

The Supreme Court’s Holding that Generic Terms Can Be Trademarks Is Not Fair to Struggling Startups

4 06 2021

IP Watchdog
Loletta Darden
August 17, 2020

At a time when small businesses are reeling, the Supreme Court decided to make life even more challenging for startups and mom and pop shops. The Court recently decided that a generic term combined with “.com” or “.net” could be registered as a federal trademark. If that sounds like no big deal to you, you have not thought it through. Based on the Court’s decision in United States Patent and Trademark Office et al. v. Booking.com, someone could register a trademark for autorepair.com. That would mean that Joe of Joe’s Auto Repair would have to get permission, and likely pay a licensing fee, to use the name Joe’s Auto Repair on his website and marketing materials. Multiply that by thousands of other generic business categories and the reality becomes clear.

The content in this post was found at https://www.ipwatchdog.com/2020/08/17/supreme-courts-holding-generic-terms-can-trademarks-not-fair-struggling-startups/id=124084/ Clicking the title link will take you to the source of the post and was not authored by the moderators of freeforafee.com

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Categories : Domain Names, Trademarks

A Generic Word Combined With “.Com” Can Create A Protectable Trademark

29 05 2021

LexBlog/99 park row
Felicia Boyd (US) & Andrea Shannon (US)
July 8, 2020

In United States Patent And Trademark Office, Et Al., v. Booking.Com B. V. (No. 19-46, Jun. 30, 2020), the Supreme Court held that the combination of a generic term with “.com”—referred to as a “generic.com term”–could be a protectable trademark.

The content in this post was found at https://www.lexblog.com/2020/07/08/a-generic-word-combined-with-com-can-create-a-protectable-trademark/ Clicking the title link will take you to the source of the post and was not authored by the moderators of freeforafee.com

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Categories : Domain Names, Trademarks

Supreme Court Holds Ban on Immoral or Scandalous Trademarks Unconstitutional

4 07 2019

Ira Sacks & Mark Lafayette
LexBlog
June 30, 2019

On June 24, 2019, the United States Supreme Court, in Iancu v. Brunetti, reviewing the trademark application for “FUCT”, held that the Lanham’s Act’s provision, prohibiting the registration of “immoral[] or scandalous” trademarks, 15 U.S.C. 1052(a)(1), violated the First Amendment to the United States Constitution.

The Supreme Court first reviewed its decision in Matal v. Tam, 137 S. Ct. 1744, 582 U.S. ___ (2017), which found unconstitutional the Lanham Act’s bar on the registration of “disparage[ing]” trademarks. The Court noted that although the eight-Justice Court divided evenly between two opinions and could not agree on the overall framework for deciding the case, all Justices agreed on two propositions. First, if a trademark registration bar is viewpoint-based, it is unconstitutional. Second, the disparagement bar was viewpoint-based. Thus, in Tam, the Justices found unanimous common ground in that the government may not discriminate against speech based on the ideas or opinions it conveys. Accordingly, the Court observed that, under Tam, that “[i]f the “immoral or scandalous” bar similarly discriminated on the basis of viewpoint, it must also collide with the First Amendment.” . . .

Accordingly, the Court found the “immoral and scandalous” bar viewpoint-based and violative of the First Amendment.

The content in this post was found at https://www.lexblog.com/2019/06/30/supreme-court-holds-ban-on-immoral-or-scandalous-trademarks-unconstitutional Clicking the title link will take you to the source of the post. and was not authored by the moderators of freeforafee.com

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Categories : Domain Names, Trademarks

Domain Names: The dangers of “snapping”

14 03 2018

Lime Green IP news

MARCH 12TH, 2018 BY DAVID TAYLOR AND SEAN KELLY

DNS Belgium, the Registry operating the .BE country code Top Level Domain (ccTLD), recently published an article warning domain name owners of the risks inherent in the practice of “snapping”. Although anyone can legitimately snap up an expired domain name, problems can arise when cybercriminals grab expired domain names and then use them in damaging ways, such as pointing them to fake retail websites or re-creating email addresses based on them.

The practice of “snapping” (also known as backorders or snapbacks) has been around for some time and domain name owners should carefully consider the potential risks before allowing their domain names to expire. The cost of renewing a domain name is, after all, small in comparison with the cost of legal action to recover one that has been registered by a third party who is using the domain name in a way that is damaging.

The content in this post was found at https://www.limegreenipnews.com/2018/03/domain-names-the-dangers-of-snapping/ Clicking the title link will take you to the source of the post. and was not authored by the moderators of freeforafee.com.

Clicking the title link will take you to the source of the post.

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Categories : Cybersquatting, Domain Names, Trademarks, Uncategorized

Trademark Lawsuit Claiming Organic Search Results Create Initial Interest Confusion Falls Apart–Larsen v. Larson

19 12 2017

Disclosure note: I provided an expert report in this now-dismissed case, so you might consider my comments to be advocacy. I’ll explain my expert role in a bit.

The Court Opinion

Susan Larsen practices business law in the Denver, Colorado metro area under the name Larsen Law Offices. She claims she’s been using the name since 2003, though she did not register the name as a trademark (and would need to address the obvious secondary meaning issues to do so). David Larson practices estate planning law (and more) in the Denver metro area as well. In 2013, Larson set up a website at the domain name davidlarsonlawoffice.com, and he used the domain name larsonlawoffice.com starting in 2016. In 2016, Larsen sued Larson for trademark infringement, ACPA and more. After the complaint, Larson’s website removed references to Larson Law Offices, adopting the name David M. Larson, PLLC. Larson partially moved to dismiss.

Cybersquatting. The court says “Plaintiff does not allege that Mr. Larson had actual knowledge of Larsen Law Offices’ existence in 2013, or that he has ever conducted a Google search that returned plaintiff’s name.” Further (cites omitted):

Case citation: Larsen Law Offices v. David Larson, 2017 WL 1131885 (D. Colo. Mar. 14, 2017). The complaint.

The content in this post was found at http://blog.ericgoldman.org/archives/2017/03/trademark-lawsuit-claiming-organic-search-results-create-initial-interest-confusion-falls-apart-larsen-v-larson.htm and was not authored by the moderators of freeforafee.com. Clicking the title link will take you to the source of the post.

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Categories : Cybersquatting, Keywords/Meta-tags, Trademarks

Project management company files trademark lawsuit against potential scam artists

12 10 2017

Plaintiff operates a project management training company called “Project Management Academy.” Plaintiff has used the trademark since 2009 and owns several related federal trademark registrations.

The Defendants are accused of operating a similar company (some call it a scam) using the “Project Management Academy” or “PMA” trademarks.

Educate 360, LLC v. Patchree Patchrint et al.

Court Case Number: 4:17-cv-00078
File Date: Friday, October 6, 2017
Plaintiff: Educate 360, LLC
Plaintiff Counsel: William P. Kelley, David M. Stupich of Stuart & Branigin LLP
Defendant: Patchree Patchrint a/k/a Patty Jones and Anthony Christopher Jones
Cause: Declaratory Relief, Trademark Infringement, False Designation of Origin, Cybersquatting, Common Law Trademark Infringement, Common Law Passing Off/Unfair Competition
Court: Northern District of Indiana
Judge: TBD
Referred To: TBD

Complaint:

View this document on Scribd

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The content in this post was found at https://indianaintellectualproperty.com/2017/10/09/project-management-company-files-trademark-lawsuit-against-potential-scam-artists/and was not authored by the moderators of freeforafee.com. Clicking the title link will take you to the source of the post.

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Categories : Cybersquatting, Trademarks

2H 2016 Quick Links, Part 3 (Trademarks and Domain Names)

3 01 2017

Trademarks

* Evoqua Water Technologies LLC v. M.W. Watermark LLC, 2016 WL 4727432 (W.D. Mich. Sept. 12, 2016)

* Board of Regents of the University of Houston System v. Houston College of Law, 2016 WL 6037243 (S.D. Tex. Oct. 14, 2016):

* Search Engine Land: Bidding on the competition: Is it really worth it? In many industries, competitive keyword advertising is a prisoner’s dilemma. The article’s suggestion to negotiate a cease-fire with competitors is a high-risk strategy. See FTC v. 1-800 Contacts.

* Cedar Valley Exteriors, Inc. v. Professional Exteriors, Inc., Case No. 13?CV?2537 (PJS/TNL) (D. Minn. June 29, 2016):

* IFS Financial Services v. Touchstone Financial of Midvale, 2016 WL 4750173 (D. Utah Sept. 12, 2016)

* Merriam Webster on why the word “skittles” is in the dictionary

* WSJ: Hopportunity Cost: Craft Brewers Brawl Over Catchy Names as Puns Run Dry

* Austin American-Statesman: UT to doughnut shop: Yeast and desist

* CNN: Iceland is suing a supermarket that’s using its name

* Shontavia Johnson, Trademark Territoriality in Cyberspace: an Internet Framework for Common-Law Trademarks, 29 Berkeley Tech. L.J. (2015). Related blog post.

Domain Names

* Doug Isenberg: What We Can Learn from URS Decisions (Hint: Not Much)

* The Register: Simply not credible: The extraordinary verdict against the body that hopes to run the internet. Independent review tears into ICANN board and staff.

The content in this post was found at http://blog.ericgoldman.org/archives/2016/12/2h-2016-quick-links-part-3-trademarks-and-domain-names.htm and was not authored by the moderators of freeforafee.com. Clicking the title link will take you to the source of the post.

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Categories : Domain Names, Trademarks

TP-Link forgets to register domain name, leaves config pages open to hijack

12 07 2016

In common with many other vendors, TP-Link, one of the world’s biggest sellers of Wi-Fi access points and home routers, has a domain name that owners of the hardware can use to quickly get to their router’s configuration page. Unlike most other vendors, however, it appears that TP-Link has failed to renew its registration for the domain, leaving it available for anyone to buy. Any owner of the domain could feasibly use it for fake administration pages to phish credentials or upload bogus firmware. This omission was spotted by Amitay Dan, CEO of Cybermoon, and posted to the Bugtraq mailing list last week.

Two domain names used by TP-Link appear to be affected. tplinklogin-dot-net was used, according to TP-Link, on devices sold until 2014. . . .

Together, these domain names appear to be quite busy; estimates based on Alexa’s ranking suggest that tplinklogin-dot-net sees about 4.4 million visits per month, with another 800,000 for tplinkextender-dot-net.

The content in this post was found at http://arstechnica.com/security/2016/07/tp-link-forgets-to-register-domain-name-leaves-config-pages-open-to-hijack/ and was not authored by the moderators of freeforafee.com. Clicking the title link will take you to the source of the post.

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Categories : Domain Names, Trademarks

Michelin Domain Challenge

20 11 2015

Dear Rich: An Intellectual Property Blog

October 12, 2015

The Dear Rich Staff

Dear Rich: Two years ago, my mother received a medical diagnosis and was expected to live about nine months to a year. In order to pass the time, and take her mind off of things, she decided she wanted to eat at all the Michelin star restaurants in London and write a blog critiquing their vegetarian offerings. (My stepfather is vegetarian and she felt this would be a fun bucket list item, that would also help people). In order to help her with her project, I bought the domain “MeatFreeMichelin.com.” I was shocked when I received a communication from Michelin’s legal representative saying that I was running the site in bad faith (he’s basing this on the fact I didn’t respond to the email he sent – I didn’t see it because it went to junk mail) and has started proceedings to seize the domain. He also threatened I would have to pay attorney’s fees – all for a site that was put up for fun- with no commercial interest- that used very little other than the name. The site didn’t look anything like Michelin’s, no logo’s were used, we did not imply that we had any kind of sponsorship and my mother chose the Michelin name because that’s how she decided which restaurants. In other words there was little other way to identify them. We believe this was fair use. However, even though we believe we are right with the fair use part — and I have taken down the site as a precautionary measure — we are still getting communications from Michelin’s attorney who continues to ignore our repeated requests that he explain why this is not fair use.

more.
The content in this post was found at http://dearrichblog.blogspot.com/2015/10/michelin-domain-challenge.html and was not authored by the moderators of freeforafee.com. Clicking the title link will take you to the source of the post.

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Categories : Domain Names

Educate 360, LLC v. Patchree Patchrint et al.

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