Free for a Fee

IP Watchdog
Amy Hsiao
August 26, 2022

As the concept of a unified “metaverse” is gaining traction, savvy brand owners are shifting their focus to securing rights in this emerging sector. In pursuit of intellectual property (IP) rights, individuals and corporations are turning to metaverse trademark filings to provide protection for goods and services in the virtual world. As of the summer of 2022, the China National Intellectual Property Administration (CNIPA) has received more than 16,000 applications that either contain the word “METAVERSE” (in English or its Chinese translation: “YUAN YUZHOU,” or both) or that include descriptions of goods and services in the virtual world, or both. These applications were filed by individuals as well as companies (big and small, both foreign and domestic). The rejection rate for traditional trademark applications in China is typically high, around 60-70%, at least in the first instance. However, the rejection rate for these new metaverse applications is even higher, hovering around 80%.

[ed: I know the article is about China, but the issue raises the same question here:

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Tech Dirt
Timothy Geigner
Aug 16th 2022

. . .

Which brings us to the present, where Harpo Inc. is suing a podcast put out by history professors as a journalistic product covering the history of Oprah and her show.

Harpo Inc., which owns her trademarks, carefully vets any licensing opportunity. Now it’s taking a podcasting duo to court over what it says is an unauthorized attempt to capitalize on “The Oprah Effect.” Harpo Inc. is suing Kellie Carter Jackson and Leah Wright Rigueur over their Oprahdemics podcast.

Roulette Productions launched Oprahdemics in March and ended its first season with a live show at the Tribeca Film Festival in June. Its key art, which is embedded below, includes a dictionary-style definition of the term — defined as “the study of the Queen of Talk” — as well as a large O and the outstretched arms of a woman. The defendants also operate oprahdemics.com and multiple social media sites.According to Harpo Inc., this branding misleads the public into thinking that Oprah is somehow involved in all of this. Please note that that’s the sole claim here. To Harpo’s credit, the company isn’t asking for monetary damages or profits from the podcast. It doesn’t want the podcast shut down or the subject matter to change.

“However, Harpo submits that the Court should enjoin Defendants from wrongfully creating a new brand incorporating Harpo’s trademarks and making trademark use which is dilutive of and constitutes misuse of Harpo’s OPRAH and O family of trademarks and explicitly misleads consumers as to the source and/or sponsorship of Defendants’ branded offerings.”

. . .
The content in this post was found at https://www.techdirt.com/2022/08/16/oprah-sues-podcast-about-oprah-for-branding-that-includes-oprah-trademarks/ Clicking the title link will take you to the source of the post and was not authored by the moderators of freeforafee.com

LexBlog/99 Park Row
Jessica R. Corpuz
August 18, 2022

Many people associate brands with particular colors – if you think of Tiffany & Co., you think of its famous robins-egg blue boxes and branding; if you think of Barbie, you can see the bright pink that came with so many childhood toys. Not many people realize, however, that brands can trademark those colors and prevent others from using them. . . .

However, not everyone can trademark a color. There are two key hurdles to obtaining a color trademark. First, the color has to distinguish the business’s goods and identify that business as the source of the goods. If the color is commonly used by all business in the space, the trademark may be rejected. For example, Cheerios was denied a trademark largely on the grounds that many kinds of breakfast cereal use the same or similar color yellow. The court found that it had not acquired enough “distinctiveness” in the eyes of consumers.

Second, the color cannot serve a functional purpose. For example, Pepto-Bismol was denied a trademark on the color pink because of the color’s “therapeutic value” in treating upset stomachs. The court reasoned that Pepto-Bismol’s competitors might want to use that color in order to compete effectively in the market.

New brands should be wary of using colors that are already trademarked or heavily identified with a particular brand.  . . .

[ed’s note: think John Deere Green and Cat Yellow]

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Technology & Marketing Law Blog
Eric Goldman
June 14, 2021

Starting in the mid-2000s, 1-800 Contacts sought to control how its competitors bought search engine advertising triggered by its (so-called) trademarks, a process I call competitive keyword advertising. To do this, 1-800 Contacts typically sued its competitors and then quickly entered into a no-money settlement agreement that required each party to stop bidding on each others’ trademarks.

To property maximalists, 1-800 Contacts’ efforts may sound like run-of-the-mill trademark enforcement. However, the scheme was actually extremely unusual (few, if any, other trademark owners did anything similar), and it had several pernicious effects. The settlements deprived consumers of additional helpful information from competitive advertising. The settlements distorted the keyword ad auctions that the search engines were trying to conduct. Most importantly, the settlements helped 1-800 Contacts avoid competing on price, which has allowed 1-800 Contacts to systematically charge higher prices to consumers (a point 1-800 Contacts freely admits).

1-800 Contacts’ competitors “voluntarily” entered into the settlement agreements, but they were goaded in part by 1-800 Contacts’ threat to wage lawfare against them if they didn’t. This threat wasn’t idle. 1-800 Contacts likely spent $1M+ suing a holdout to its settlement “deal,” Lens.com, even though Lens.com made only $21 of profit from competitive keyword advertising. (Lens.com claimed it incurred at least $1.4M of defense costs). In other words, 1-800 Contacts proved to the industry that it would engage in economically irrational litigation to punish any competitors who tried to compete against it on price.

Five years ago, the FTC initiated an administrative complaint against 1-800 Contacts. The FTC won at the initial administrative hearing and then at the Commission level.

Last week, the Second Circuit reversed and dismissed the FTC’s administrative complaint, saying that the FTC misapplied the applicable antitrust standard and did not make a strong enough evidentiary showing of an antitrust violation. This opinion is mostly antitrust inside-baseball, but I want to highlight a few things.

Case citation: 1-800 Contacts, Inc. v. Federal Trade Commission, 2021 WL 2385274 (2d Cir. June 11, 2021)

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The content in this post was found at https://blog.ericgoldman.org/archives/2021/06/want-to-engage-in-anti-competitive-trademark-bullying-second-circuit-says-great-have-a-nice-day-1-800-contacts-v-ftc.htm Clicking the title link will take you to the source of the post and was not authored by the moderators of freeforafee.com

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.

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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

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.

 

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.

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LexBlog/99 park row
Mandour & Associates
November 24, 2020

IPNews® – On November 23rd, Marvel Characters, Inc. filed a trademark opposition against Spyder Active Sports, Inc’s trademark application for “Venom” which will be used to launch a new collection of ski gear.

Venom is the supervillain fictional character of Spider-Man comic books owned by Marvel. The American media franchise alleges that the trademark will cause consumer confusion, especially now that Marvel has recently launched its Venom 2 merchandise to the market.

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LexBlog
Paul Bost
April 21, 2020

On April 8, 2020, in In re: Forney Industries, Inc.,[1] the Federal Circuit reversed the Trademark Trial and Appeal Board’s finding that a color mark can never be inherently distinctive.  By so holding, the Federal Circuit controverts what had become conventional wisdom since the Supreme Court’s decisions in Qualitex Co. v. Jacobson Prod. Co., 514 U.S. 159 (1995) and Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205 (2000).

…

Based on its reading of the above precedent, the panel held that color marks on product packaging can be inherently distinctive.  In the instant case, Forney’s mark – a black bar followed by a yellow-to-red gradient – could be considered inherently distinctive.  Accordingly, the panel held that the Board erred by not assessing whether Forney’s mark was inherently distinctive.

The panel’s precedential decision is significant.  Persons interested in protecting color marks used on product packaging may now be able to obtain registration without showing secondary meaning.  Likewise, the holding may be adopted by other courts to allow plaintiffs asserting common law rights in color marks to do so without proof of secondary meaning.

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LexBlog
Sarah Bro
April 15, 2020

Reviewing a decision from the United States Patent and Trademark Office (“USPTO”) Trademark Trial and Appeal Board, the Federal Circuit vacated and remanded the Board’s refusal to register a trademark consisting of a gradient of multiple colors applied to product packaging, and relied on Supreme Court precedent in concluding that color marks can be inherently distinctive when used on product packaging “depending upon the character of the color design.” In re Forney Industries, Inc., Case No. 2019-1073 (Fed. Cir. Apr. 8, 2020) (O’Malley, J.)[precedential].

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