Tag: Trademark

Sweeping Changes in EU Trademark Law and the Brexit Unknown

EU brexit referendum Brexit Street SignsBy now you have undoubtedly heard that in the Brexit Referendum held on June 23, 2016, the majority vote was in favor of United Kingdom leaving the European Union. Notwithstanding the outcome of the vote, it is presently unclear when, or even if, the UK government will give notification to the EU of its intention to leave the EU in accordance with Article 50 of the Lisbon Treaty. If notice is given, there will be a two-year period (which may be extended) to complete negotiations of the terms of UK’s exit from the EU.

Rights in existing EU Trade Marks (EUTM) and Registered Community Designs (RCD) remain unaffected until the UK exits the EU. Once the UK’s departure from the EU has been finalized, it is likely that existing EUTMs and RCDs will no longer automatically provide coverage in the UK. Although impact of the Brexit in that regard is unclear at present, it is anticipated that UK legislation will be implemented to ensure that such rights continue to have effect in the UK, for example, by converting existing EUTM rights to UK national rights enjoying the same priority/filing dates.

In terms of filing new applications during this transitional period, an EUTM remains a cost efficient option for brand owners wishing to obtain protection across the EU. Until we have further information as to how EUTMs and RCDs will be addressed after the UK exits the EU, brand owners seeking protection in the UK may wish to consider filing both an EUTM and a UK application.

EU TRADEMARK REFORM

Recently, there have been several other noteworthy changes in the EU pertinent to trademarks that also deserve consideration by trademark holders. On March 23, 2016, European Union Trademark Regulation No. 2015/2424 came into force bringing substantial changes to Community Trade Mark registrations and procedures. Some of the most relevant changes are as follows:

  • The names have changed. The Office for Harmonization in the Internal Market (OHIM) has changed its name to the European Union Intellectual Property Office (EUIPO), and the Community Trade Mark (CTM) was changed to the European Union Trade Mark (EUTM).

  • There is a change in the fee structure for trademark applications and renewals. The “three classes for the price of one” arrangement has been replaced by a “one-fee-per-class” system. Under the new system, the official fees for three classes are higher, while registration renewal fees have been slightly reduced.

  • Under the old system, all CTM applications filed prior to June 20, 2012 that used the complete Class heading as the specification of the goods and/or services were held to include all of the goods and services in the particular class. Under the new system, all registrations that use Class headings will be interpreted according to their literal meaning, irrespective of their filing date. Therefore, registrations filed prior to June 20, 2012 may not adequately cover the trademark holder’s goods and services.

  • The new regulation allows for a transitional period of six months, from March 23, 2016 to September 23, 2016, for owners of EU registrations which cover the entire Class heading, to amend the specification of goods and services. Therefore, owners of EU registrations that cover the Class heading should check if the Class heading covers everything they want to protect. If not, they should seek to amend their registration before September 23, 2016.

GENUINE USE OF A MARK IN THE EU

Under European Union Trademark Law, an EUTM registration may be revoked if “within a period of five years, following registration, the proprietor has not put the mark to genuine use in the Community in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years.”

An EUTM mark has been found to be in “genuine use” within the meaning of current authority if it is used for the purpose of maintaining or creating market share within the European Community for the goods or services covered by the registration. This usage standard would be assessed by considering the characteristics of the market concerned, the nature of the goods or services, the territorial extent and the scale of use, as well as the frequency and regularity of use.

It has long been generally understood that use of a EUTM mark in any one EU member country would satisfy this use requirement. However, this has been called into question by a recent UK decision, The Sofa Workshop Ltd v. Sofaworks Ltd [2015] EWHC 1773 (IPEC), that found use of a mark in only the UK only was not sufficient to maintain the CTM registration. Instead, that court and other recent decisions have called into question whether use of a trademark in only one country of the EU is sufficient and have instead looked at other indicia of “use” such as percentage of market share over the entire EU.

These recent assessments of genuine use from courts located in the currently-constituted EU should be noted by brand owners and may provide additional rationale for brand owners seeking protection in the EU to consider filing for national rights (as opposed to EUTMs) where use of the mark may be limited.

ARTICLE BY Lee J. Eulgen & Cynthia B. Stevens of Neal, Gerber & Eisenberg LLP

© 2016 Neal, Gerber & Eisenberg LLP.

Artist Formerly Known as a Trademark: Prince

Prince logoI’m sure his name came immediately to mind when you read that title: Prince. That was, at least, before he changed it to the unpronounceable, androgynous “Love Symbol.” While many thought this was a marketing stunt, Prince’s “formerly known as” campaign was actually an attempt to skirt a heated legal battle with his record label, Warner Bros., by creating and producing music under a new trademark. Now that the regal record-breaking artist has passed, however, it will be interesting to see where the royalty chips will fall.

Sleepless in Seattle was in, Cheers was out and Haddaway asked the all-important question, “What is Love?” We were all a little Dazed and Confused. It was 1993 when the very public trademark battle began. “Why You Wanna Treat Me So Bad?” Prince asked Warner Bros. when they refused to release his extensive back-log of music. It seemed Warner was more focused on going “Round and Round” the promotion circuit than producing more Prince records, leaving a pile of his hand-crafted gems to sit and collect dust. Finding Warner “Delirious” in this regard and seeing their refusal as a “Sign o’ the Times,” Prince decided to “Kiss” his label goodbye and produce music under a new trademark, the unpronounceable Love Symbol, subsequently copyrighted as “Love Symbol #2.”

“The first step I have taken toward the ultimate goal of emancipation from the chains that bind me to Warner Bros. was to change my name from Prince to the Love Symbol. Prince is the name that my mother gave me at birth. Warner Bros. took the name, trademarked it, and used it as the main marketing tool to promote all of the music that I wrote. The company owns the name Prince and all related music marketed under Prince. I became merely a pawn used to produce more money for Warner Bros.”

Prince claimed in a public statement about the trademark dispute, boldly sporting the word “SLAVE” on his cheek.

While the Love Symbol album didn’t really earn him “Diamonds and Pearls,” it did garner some attention, selling millions of copies worldwide, and laid down some heavy “Purple Rain” on Warner’s Prince promo-party. Prince was waiting for the sun to set on “1999” when his contract with Warner Bros. would expire so he could begin producing music once again under his rightful, trademarked name—Prince—in 2000. Post-“Emancipation,” Prince embarked on a long and lustrous music-making career, earning world-wide critical acclaim and induction into the Rock Star Hall of Fame when he was first eligible in 2004.

With the royal Prince’s passing and his songs playing on every satellite station right now, we couldn’t help but mull over this old trademark tango and wonder what you thought? Was Prince’s bold Love Symbol move successful? Do you predict any royalty fall-out, now that he has passed, over royalties that were earned under the “Love Symbol” trademark as opposed to “Prince?”

Article By Annie Dike of IMS ExpertServices
© Copyright 2002-2016 IMS ExpertServices, All Rights Reserved.

Artist Formerly Known as a Trademark: Prince

TrademarkI’m sure his name came immediately to mind when you read that title: Prince. That was, at least, before he changed it to the unpronounceable, androgynous “Love Symbol.” While many thought this was a marketing stunt, Prince’s “formerly known as” campaign was actually an attempt to skirt a heated legal battle with his record label, Warner Bros., by creating and producing music under a new trademark. Now that the regal record-breaking artist has passed, however, it will be interesting to see where the royalty chips will fall.

Sleepless in Seattle was in, Cheers was out and Haddaway asked the all-important question, “What is Love?” We were all a little Dazed and Confused. It was 1993 when the very public trademark battle began. “Why You Wanna Treat Me So Bad?” Prince asked Warner Bros. when they refused to release his extensive back-log of music. It seemed Warner was more focused on going “Round and Round” the promotion circuit than producing more Prince records, leaving a pile of his hand-crafted gems to sit and collect dust. Finding Warner “Delirious” in this regard and seeing their refusal as a “Sign o’ the Times,” Prince decided to “Kiss” his label goodbye and produce music under a new trademark, the unpronounceable Love Symbol, subsequently copyrighted as “Love Symbol #2.”

“The first step I have taken toward the ultimate goal of emancipation from the chains that bind me to Warner Bros. was to change my name from Prince to the Love Symbol. Prince is the name that my mother gave me at birth. Warner Bros. took the name, trademarked it, and used it as the main marketing tool to promote all of the music that I wrote. The company owns the name Prince and all related music marketed under Prince. I became merely a pawn used to produce more money for Warner Bros.”

Prince claimed in a public statement about the trademark dispute, boldly sporting the word “SLAVE” on his cheek.

While the Love Symbol album didn’t really earn him “Diamonds and Pearls,” it did garner some attention, selling millions of copies worldwide, and laid down some heavy “Purple Rain” on Warner’s Prince promo-party. Prince was waiting for the sun to set on “1999” when his contract with Warner Bros. would expire so he could begin producing music once again under his rightful, trademarked name—Prince—in 2000. Post-“Emancipation,” Prince embarked on a long and lustrous music-making career, earning world-wide critical acclaim and induction into the Rock Star Hall of Fame when he was first eligible in 2004.

With the royal Prince’s passing and his songs playing on every satellite station right now, we couldn’t help but mull over this old trademark tango and wonder what you thought? Was Prince’s bold Love Symbol move successful? Do you predict any royalty fall-out, now that he has passed, over royalties that were earned under the “Love Symbol” trademark as opposed to “Prince?”

Article By Annie Dike of IMS ExpertServices

© Copyright 2002-2016 IMS ExpertServices, All Rights Reserved.

October 2015 – gTLD Sunrise Periods Now Open

The first new generic top-level domains (gTLDs, the group of letters after the “dot” in a domain name) have launched their “Sunrise” registration periods.

As of the date of this post, Sunrise periods are open for the following new gTLDs:

.pohl

.allfinanz

.trading

.spreadbetting

.cfd

.swiss

.xn--45q11c (八卦 for “gossip” in Chinese)

.forex

.broker

.earth

.gdn

.kyoto

.feedback

ICANN maintains an up-to-date list of all open Sunrise periods here. This list also provides the closing date of the Sunrise period. We will endeavor to provide information regarding new gTLD launches via this monthly newsletter, but please refer to the list on ICANN’s website for the most up-to-date information – as the list of approved/launched domains can change daily.

Because new gTLD options will be coming on the market over the next year, brand owners should review the list of new gTLDs (a full list can be found here) to identify those that are of interest.

Article By Monica Riva Talley, Tracy-Gene G. Durkin, Ivy Clarice Estoesta, Lauriel F. Dalier & Shana L. Olson of
Sterne, Kessler, Goldstein & Fox P.L.L.C.

© 2015 Sterne Kessler

With This Ring, I Thee Infringe re: Tiffany’s Jewelry Trademark

Fake Tiffany Ring - InfringementIf you’re ready to really do it─to get down on one knee and take the plunge─Costco has made the whole process much simpler.  Stop by and pick up an authentic Tiffany engagement ring. She’ll never know you didn’t get it at Tiffany & Co. It has the Tiffany name right on the box.  That was the case a few years back and Costco reportedly had a good Tiffany-ring run.  According to the suit Tiffany & Co. filed against Costco, the bond of hundreds, if not thousands, of unsuspecting young couples out there was sadly forged over a sham “Tiffany ring” purchased at Costco.  The only way to rectify the love lost here, Tiffany claims, will be recovery of the profits Costco made on its sale of “Tiffany rings,” punitive damages, costs, and attorney’s fees.

Little known fact: at the time (2012) Costco was actually one of the largest sellers of fine jewelry in the United States.  They had a good share of the market on high-quality, discounted diamonds.  But when they started selling “Tiffany” engagement rings, Tiffany & Co. stepped in.  Whether it was spitefully intentional or ironically inadvertent, it was─at the very least─quite fitting that Tiffany filed the suit against Costco on Valentine’s Day, 2013.  Tiffany claimed Costco had been selling different styles of rings, falsely identified on in-store signs as “Tiffany rings” for years, but didn’t use the Tiffany trademark in their online promotions in order to avoid Tiffany’s rigorous trademark policing procedures.  Rather, Tiffany learned about the scheme when a shopper complained to Tiffany after seeing diamond engagement rings advertised as “Tiffany rings” in a Costco store in California.  When the shopper inquired about the rings, the Costco clerk represented them as “Tiffany rings.”  The real problem here was that Tiffany wasn’t dealing with a mere street vendor selling alleged “Tiffany rings” out of the trunk of his car.  This was Costco─a reputable, nationwide brand where members expect authentic, name-brand merchandise at discounted prices.  In other words, because it was Costco, not a nondescript trunk vendor, customers might believe.

Costco fired back, though, with a counterclaim alleging their rings were marketed with the Tiffany trademark merely because they had a “Tiffany setting,” which Costco claimed was such a generic term it could be used to describe any setting comprised of multiple slender prongs extending upward from a base to hold a single gemstone.  Costco claimed the trademark setting was so diluted that it should be declared invalid so Tiffany could no longer use it to prevent other retailers from selling the famed “Tiffany setting” ring.  The problem, though, was that the in-store Tiffany signs Costco was using did not say the rings merely had “Tiffany settings.” The signs, packaging, and even the words of one of Costco’s very own, showed Costco was portraying them as authentic “Tiffany rings.”  Scrambling for footing, Costco claimed the Tiffany mark itself was weak. The Manhattan judge in this case found that Tiffany put forth “uncontroverted evidence” establishing the strength of its mark.  One of the most significant pieces of evidence was a Bain & Co. report showing Tiffany “claims the largest share of the female mind in the U.S.” when it comes to name recognition in jewelry brands. Tiffany even located and interviewed six different consumers who had purchased alleged “Tiffany rings” at Costco and found that they all thought they had a genuine Tiffany & Co. ring.  One woman even reportedly cried when the diamond fell out of what she thought was her very own Tiffany & Co. ring.

The suit is a testament to Tiffany’s rigorous trademark policing procedures and the strength of a timeless, established brand.  Tiffany will likely implement more in-store, on-foot procedures in light of Costco’s initially-effective evasion of Tiffany’s internet monitoring.  Proof of intentional trademark infringement and establishment of a reputable, recognized brand clearly requires expert testimony.

Article By Annie Dike of IMS ExpertServices

© Copyright 2002-2015 IMS ExpertServices, All Rights Reserved.

With This Ring, I Thee Infringe re: Tiffany's Jewelry Trademark

Fake Tiffany Ring - InfringementIf you’re ready to really do it─to get down on one knee and take the plunge─Costco has made the whole process much simpler.  Stop by and pick up an authentic Tiffany engagement ring. She’ll never know you didn’t get it at Tiffany & Co. It has the Tiffany name right on the box.  That was the case a few years back and Costco reportedly had a good Tiffany-ring run.  According to the suit Tiffany & Co. filed against Costco, the bond of hundreds, if not thousands, of unsuspecting young couples out there was sadly forged over a sham “Tiffany ring” purchased at Costco.  The only way to rectify the love lost here, Tiffany claims, will be recovery of the profits Costco made on its sale of “Tiffany rings,” punitive damages, costs, and attorney’s fees.

Little known fact: at the time (2012) Costco was actually one of the largest sellers of fine jewelry in the United States.  They had a good share of the market on high-quality, discounted diamonds.  But when they started selling “Tiffany” engagement rings, Tiffany & Co. stepped in.  Whether it was spitefully intentional or ironically inadvertent, it was─at the very least─quite fitting that Tiffany filed the suit against Costco on Valentine’s Day, 2013.  Tiffany claimed Costco had been selling different styles of rings, falsely identified on in-store signs as “Tiffany rings” for years, but didn’t use the Tiffany trademark in their online promotions in order to avoid Tiffany’s rigorous trademark policing procedures.  Rather, Tiffany learned about the scheme when a shopper complained to Tiffany after seeing diamond engagement rings advertised as “Tiffany rings” in a Costco store in California.  When the shopper inquired about the rings, the Costco clerk represented them as “Tiffany rings.”  The real problem here was that Tiffany wasn’t dealing with a mere street vendor selling alleged “Tiffany rings” out of the trunk of his car.  This was Costco─a reputable, nationwide brand where members expect authentic, name-brand merchandise at discounted prices.  In other words, because it was Costco, not a nondescript trunk vendor, customers might believe.

Costco fired back, though, with a counterclaim alleging their rings were marketed with the Tiffany trademark merely because they had a “Tiffany setting,” which Costco claimed was such a generic term it could be used to describe any setting comprised of multiple slender prongs extending upward from a base to hold a single gemstone.  Costco claimed the trademark setting was so diluted that it should be declared invalid so Tiffany could no longer use it to prevent other retailers from selling the famed “Tiffany setting” ring.  The problem, though, was that the in-store Tiffany signs Costco was using did not say the rings merely had “Tiffany settings.” The signs, packaging, and even the words of one of Costco’s very own, showed Costco was portraying them as authentic “Tiffany rings.”  Scrambling for footing, Costco claimed the Tiffany mark itself was weak. The Manhattan judge in this case found that Tiffany put forth “uncontroverted evidence” establishing the strength of its mark.  One of the most significant pieces of evidence was a Bain & Co. report showing Tiffany “claims the largest share of the female mind in the U.S.” when it comes to name recognition in jewelry brands. Tiffany even located and interviewed six different consumers who had purchased alleged “Tiffany rings” at Costco and found that they all thought they had a genuine Tiffany & Co. ring.  One woman even reportedly cried when the diamond fell out of what she thought was her very own Tiffany & Co. ring.

The suit is a testament to Tiffany’s rigorous trademark policing procedures and the strength of a timeless, established brand.  Tiffany will likely implement more in-store, on-foot procedures in light of Costco’s initially-effective evasion of Tiffany’s internet monitoring.  Proof of intentional trademark infringement and establishment of a reputable, recognized brand clearly requires expert testimony.

Article By Annie Dike of IMS ExpertServices

© Copyright 2002-2015 IMS ExpertServices, All Rights Reserved.

Disparaging Marks: The Washington Redskins Made a Foul Play

Related to our recent blog post on immoral marks, U.S. trademark law also prohibits registration of trademarks that consist of “matter which may disparage … persons, … institutions, beliefs, or national symbols.”  This Section of the Lanham Act is central to the long-running controversy over the name of the well-known professional football team, theWashington “Redskins,” which some critics label as a racial epithet.  Although the team name has been in use since 1933 and was first registered in 1976, at a climactic point in the controversy last year theTrademark Trial and Appeal Board (TTAB) ordered those registrations to be cancelled pursuant to this Section. TTAB held that “redskins” is a racial slur that was disparaging to “a substantial composite” of Native Americans at the time of registration.  Just today, on July 8, a federal judge upheld this decision, not only affirming that the marks violate Section 2(a) of the Lanham Act, but also that Section 2(a) itself does not violate the First Amendment.

The saga over the trademark registrations began when a group of Native American petitioned to cancel the federal registrations for the Washington Redskins’ name.  The litigation has continued for over two decades as the case (and a companion case) bounced around the TTAB, the district court, and the D.C. Circuit.  Most recently, the owner of the registrations, Pro-Football Inc., appealed last year’s TTAB order cancelling its registrations to the District Court for the Eastern District of Virginia.

In today’s ruling, the District Court held that the Native American challengers met the legal requirements to prove that the marks indeed “may disparage” a substantial composite of Native Americans at the time of their registration.  Additionally, the Court addressed the major issue of whether Section 2(a) of the Lanham Act violates the First Amendment by restricting protected speech.  The Court held that it did not, because cancelling the federal registrations under Section 2(a) does not implicate the First Amendment, as the cancellations do nothing to burden, restrict or prohibit Pro-Football’s ability to use the marks in commerce.  Indeed, a federal registration is not required in order for one to use trademarks in commerce, and thus nothing in Section 2(a) impedes the ability of members of society to discuss unregistered marks.  In addition, the Court found that the federal registration program is government speech (as opposed to commercial or private speech) and is thus exempt from First Amendment scrutiny.

The saga is not over, however, until Pro-Football exhausts its appellate options.  Even then, assuming today’s decision stands, will the team adopt a new name that is eligible for federal trademark registration?  Not likely.  Pro-Football can still rely on its long-standing common law rights in the mark, stemming back to its first use in 1933.  The only thing the team will lose is its ability to enjoy the benefits of federal registration, including the ability to use the coveted ® symbol.

ARTICLE BY Beth A. Seals of Squire Patton Boggs (US) LLP

© Copyright 2015 Squire Patton Boggs (US) LLP

New Amendments to USPTO Post-Grant Regulations

OUS-PatentTrademarkOffice-Sealn May 19, 2015, the United States Patent and Trademark Office (USPTO) issued a final rule amending its regulations that apply to post-grant proceedings. These new rules deal with ministerial changes such as increasing page limits and making the regulations reflect the current practices used by the Patent Trial and Appeal Board (PTAB).

A second set of rule changes—to be issued later this year—will be more substantive and issued in proposed form first with an opportunity for public comment. We will issue an On the Subject when the second set of rules is issued, and we will be happy to assist with the submission of any comments. Below is a brief overview of the major provisions of this first amendment to the regulations.

  • Motions to Amend. The page limit for motions to amend, and oppositions to motions to amend, is increased from 15 pages to 25 pages. The required claim listing may now be made in an appendix accompanying the motion to amend, and the appendix is not counted toward the 25-page limit.

  • Petitioner’s Reply Brief. The page limit for the petitioner’s reply to patent owner’s response after institution is increased from 15 pages to 25 pages.

  • Font Style. All filings must be in 14-point, Times New Roman proportional font.

  • Back-Up Counsel. The rules are modified to make it clear that there can be more than one back-up counsel. There may be only one lead counsel.

  • Fees. The rules clarify that you must include in the number of claims in the petition when calculating the required fees each challenged claim as well as any claim from which a challenged claim depends, unless that claim is separately challenged. The USPTO explains that the claims from which the dependent claim depends must be construed along with the dependent claim.

  • Right to Depose. The rules make clear that routine or automatic discovery only includes affidavit testimony prepared for the post-grant proceeding. Consequently, if an affidavit is submitted from a district court proceeding, a motion must be filed to depose that affiant.

  • Objections to Evidence. The rule makes it clear that objections to evidence must be filed with the PTAB and served on opposing counsel.

  • Covered Business Method Proceedings. The rule explicitly provides that a covered business method proceeding may not be instituted where the petitioner filed a civil action challenging the validity of a claim of the patent before filing the petition. The change was made to track the statute.

ARTICLE BY Bernard Knight & Carey C. Jordan of McDermott Will & Emery
© 2015 McDermott Will & Emery

.CASINO gTLD Launches Sunrise

Lewis Roca Rothgerber LLP

The new gTLD .casino opens to the public on June 3. Trademark owners may be able to register their trademark as a .casino domain name ahead of the public launch. The “sunrise” early registration period for trademark owners opened March 24 and ends May 23. .casino domain name registrations are available now for trademark owners that have already recorded their marks with the trademark clearinghouse (TMCH). As explained below, there is still time for mark owners that have not yet recorded marks with the TMCH to participate in the sunrise registration period.

Gaming enterprises should do what they can to protect their trademarks in the .casino gTLD prior to June 3. Given the proliferation of online gaming, the new gTLD .casino poses a particularly high risk to trademark owners in the gaming industry. The .casino gTLD is a regulated gTLD, meaning registrants must represent that they have the appropriate licenses and credentials and must report any material changes to the registry. However, in many jurisdictions, the licensing process is far less strict than it is in the U.S. and it is not clear how the registry plans to verify such representations.

Risks Associated with .CASINO

The gTLD .casino is one of hundreds of new gTLDs launched as part of the first phase of the Internet Corporation for Assigned Names and Numbers (ICANN’s) new gTLD program. The new gTLDs offer more registration options to the public than existing “traditional” gTLDs such as .com, .net, .org, .biz and .info. But with hundreds of new gTLDs comes an increase in risk for trademark owners. For gaming enterprises, the highest risk posed by the new gTLDs is the new gTLD .casino. Third party registration of your mark or brand as a .casino domain name could cause immense damage to your brand and company. Imagine third party operation of the domainwww.YOURBRAND.casino for an offshore gaming site, a site that redirects consumers to your legitimate or illegitimate competitors, or a site that otherwise tarnishes your brand.

Mark owners can prevent this scenario by recording their marks with the TMCH and participating in the .casino sunrise and/or landrush domain registration periods. Although there are options for enforcement “after the fact” of a third party registration for your brand, these may face difficult proof problems (especially as to the necessary showing of “bad faith”) and can be expensive.

The Trademark Clearinghouse (TMCH)

Generally, only trademarks registered with a national trademark office, such as the U.S. Patent and Trademark Office (USPTO), are eligible for registration with the TMCH. Recordation with the TMCH offers several benefits, but the critical benefit of TMCH recordation is eligibility to register the recorded mark as a domain name during the sunrise registration period for any new gTLD, including .casino. Trademark owners may not participate in the sunrise registration period for .casino without first recording their trademark(s) with the TMCH.

In our experience, it takes up to three weeks for the TMCH to complete the recordal process. Accordingly, for companies planning on participating in the .casino sunrise period, we recommend filing TMCH recordal(s) by no later than April 30. Please contact us to discuss the recordal of marks with the TMCH.

Sunrise Registration

Mark owners who have recorded trademark(s) with the TMCH are eligible to participate in the sunrise registration period for .casino. We expect the sunrise registration fees for a .casino domain name to fall between $200 and $300. The sunrise period is open until May 23 but validation of your trademark registration and specimen of use may take two to three weeks. During the sunrise period, mark owners may only register a domain name consisting of the identical mark recorded with the TMCH. For example, the owner of the TMCH recorded mark MYMARK is eligible to register the domain www.mymark.casino during the sunrise period, but is not eligible to register the domain www.mymarkslots.casino absent a separate TMCH recordation for the mark MYMARK SLOTS. In the latter case, we would recommend that the owner of the HOUSE mark consider the landrush registration period if it believes there is a high risk associated with the domain www.mymarkslots.casino. Further, please note that USPTO Supplemental Register registrations are not eligible for recording in the TMCH.

Landrush Period

Another advance registration period, known as the “landrush period” or “early access phase,” opens May 27. The landrush period is open to anyone willing to pay the fees associated with obtaining a landrush registration. Trademark registrations and TMCH recordation are not required for eligibility to participate in the landrush period.

Landrush registration fees depend on the date of registration. The registration fees start at $12,500 per domain on the first day of landrush, when demand for .casino domain names is presumably highest. The fees decrease to $4,500 on the second day, $1,500 on day three, $950 on day four, and $250.00 on days five through seven. These fees are in addition to the general registration fees for a .casino domain name.

The landrush period may be a good option for mark owners seeking to register domain strings that are not eligible for recordal with the TMCH. Such strings may consist of common law marks, or of a registered mark plus a generic term such as “slots.” The decision of whether and when to register domains during the landrush period is a business decision, weighing the potential risk of third party ownership of a given domain against the registration fees for a given day of the period.

Summary of .CASINO Deadlines

The .casino sunrise registration period is open now and closes May 23. TMCH recordals for marks intended for .casino sunrise registration should be filed by no later than April 30. The landrush period opens May 7 and closes June 2, with landrush fees decreasing daily over the period. .casino opens for general registration on June 3.

ARTICLE BY

Nathaniel W. Edwards
Lewis Roca Rothgerber LLP

B&B Hardware, Inc. v. Hargis Industries, Inc.: Trademark Litigation Might Get Simpler

Vedder Price

Trademark litigation includes two similar types of proceedings. First, and most common, issues of trademark infringement and cancellation of a mark may be raised in a trial (i.e., a traditional fight in either State Court or Federal District Court before a judge or jury involving oral testimony). Second, and less common, issues of trademark registration may be raised in a trademark opposition or cancellation proceeding before the Trademark Office. These proceedings are primarily conducted in writing and are governed by administrative rules published in the Federal Register based on the Federal Rules of Civil Procedure. While a trial may result in monetary damages or an injunction preventing a party from using a mark, the Trademark Office merely has the authority to grant or cancel federal trademark registrations.

Since the Trademark Office’s process does not allow for litigants to receive monetary awards, injunctions, or even a determination of infringement, entering the Trademark Office for a cancellation or opposition simplifies the proceedings to focus on a limited number of key issues, such as whether a likelihood of confusion exists between a registered mark and another mark. Along with their limited focus and less formal nature, litigants often found comfort in a the lower costs involved in proceedings before the Trademark Office. Generally, once a trademark registration was cancelled, the owner of the mark that was cancelled would understand that a claim for infringement in court was not likely to succeed and would stop using the mark.

In B&B Hardware, Inc. v. Hargis Industries, Inc., the United States Supreme Court was faced with the question of “[w]hether the Trademark Trial and Appeal Board’s (the “TTAB” or the “Board”) finding of a likelihood of confusion precludes Hargis from relitigating that issue in infringement litigation, in which likelihood of confusion is an element.” The long-standing dispute (almost 20 years) between the parties involved in the decision regarded the trademarks SEALTIGHT and SEALTITE. In 1996, Hargis applied for registration of its mark, SEALTITE. B&B opposed the registration based on an alleged likelihood of confusion of Hargis’s trademark with B&B’s own federally registered mark, SEALTIGHT. After applying the standard multi-factor likelihood of confusion test, the TTAB decided in favor of B&B and held that a likelihood of confusion existed between the marks.

At the same time as the proceedings before the TTAB, B&B sued Hargis for trademark infringement in Federal District Court. After receiving a favorable outcome in the proceeding before the TTAB, B&B argued in District Court that Hargis could not contest the TTAB’s determination that a likelihood of confusion existed due to the preclusive effect of the TTAB’s decision. The District Court disagreed with B&B and allowed the jury to hear the evidence and decide on the issue of confusion. The jury returned a verdict for Hargis, finding that there was no likelihood of confusion between the marks. The parties appealed the verdict, including the issue of the preclusive effect of the TTAB decision. The Eighth Circuit affirmed the decision of the District Court. The parties then petitioned for, and were granted, certiorari on the issue by the U.S. Supreme Court.

The Supreme Court reversed the decision of the Eighth Circuit and remanded the case for further proceedings, holding that as long as the ordinary elements of issue preclusion are met and the usages of the marks are materially the same, a finding that a likelihood of confusion exists by the TTAB should have preclusive effect in District Court proceedings.

The doctrine of “res judicata” or “issue preclusion” states that litigants should not get two bites at the same apple, or two chances to argue over the same issue. Thus, if the Trademark Trial and Appeal Board found overlap (i.e., likelihood of confusion) between two marks (despite using the simplified tools involved in proceedings before the Trademark Office), then a District Court should honor the TTAB’s determination and not force the parties to relitigate the issue.

Prior to this decision, if a case was simultaneously pending in District Court and before the TTAB, the TTAB would readily stay its determination until the litigation in District Court was resolved. Because of this, any time one of the parties to an opposition or cancellation proceeding became agitated, they would file a concurrent action before a District Court. Following the Supreme Court’s decision, it is unclear if the TTAB will continue to grant this courtesy.

Trademark oppositions and cancellations must now be taken very seriously. While the TTAB cannot award damages or find infringement, its decisions could now be used as grounds for finding infringement in District Court. For example, a party who defaults in a cancellation proceeding may well lose the right to defend itself properly in District Court if a subsequent action is filed. Going forward, mark owners with proceedings before the TTAB must consider whether to intentionally abandon a trademark application or registration in order to avoid an adverse decision that could have far-reaching effects.

ARTICLE BY

John E. Munro
Alain Villeneuve
Vedder Price