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ELECTRONIC NEWSLETTER

July 16, 2002

Volume 1, Issue 3

Topics: News

Calendar (See Below)

Trademarks

Copyrights

Domain Names and Other Internet Matters

Discussions

Calendar   top

July 15-30, 2002 International Trademark Association (INTA) - U.S. Roundtable Program: Dilution. Various U.S. Cities.
September 10-13, 2002 Marques (Association of European Trademark Owners) - Annual Conference: "TRADE MARKS: TRADITION - TRANSITION - TARGETS". Inter*Continental & Hyatt Hotels, Budapest, Hungary.
September 19-20, 2002 INTA - Trademarks in Cyberspace 2002 Forum. Sheraton Brussels Hotel & Towers, Brussels, Belgium.
September 25-26, 2002 INTA - Trademarks in Cyberspace 2002 Forum. Millennium Broadway Hotel, New York, New York.
September 26-27, 2002 The Institute of Trademark Attorneys (UK) (ITMA) - Autumn Conference: "Unregistered Rights". Golden Tulip Barbizon Palace Hotel, Amsterdam, Netherlands.
September 27, 2002 INTA - Roundtable Program: New Trademark Forms in European Community Trademark Practice. Germany.
October 21-22, 2002 Practicing Law Institute (PLI) - "Understanding the Intellectual Property License 2002". Live at 810 Seventh Avenue, New York, NY and by video conference in Boston.
November 8, 2002 Marques - "Corporate Intellectual Property Enforcement Practices". Hilton Brussels Hotel, Belgium.
November 14-15, 2002 World Intellectual Property Orgainzation (WIPO) - Workshop on Domain Name Dispute Resolution. WIPO headquarters, Geneva.
November 21-22, 2002 PLI - "Understanding the Intellectual Property License 2002". University of Chicago Gleacher Center, 450 North City, Front Plaza Drive, Chicago, IL.

Trademarks

United Kingdom - Arsenal Football Club plc v. Reed Revisited   top

We previously reported on this case in our Newsletter of May 15. As the Advocate General of the European Court of Justice has issued his opinion and a decision should issue in the near future, we again summarize the facts of the case and provide a summary of the Advocate General's opinion.

Arsenal Football Club plc ("AFC") is the owner of the registered United Kingdom trademarks ARSENAL and GUNNERS and two designs marks composed of a cannon and a crest covering clothing (collectively "the ARSENAL marks"). Reed has sold AFC memorabilia for 30 years without a license from AFC. Reed's goods include scarves bearing the ARSENAL marks.

AFC brought an action against Reed for passing-off and trademark infringement. The claim for passing-off was dismissed. In respect to the infringement action, Reed defended by asserting that his use of the ARSENAL marks did not constitute "use in a trade mark sense" but served as "badges of allegiance". The court indicated it accepted Reed's arguments, but citing conflicting precedent, has referred the case to the European Court of Justice for instruction on the issue.

The Advocate General argues that the right of a trademark owner to prevent third parties from using an identical mark for identical goods is not limited to cases where the third party use may mislead as to source or origin but may also exists where such unauthorized use may give rise to confusion over quality or reputation of the goods. The Advocate General concludes that the use of a mark as a badge of loyalty or affiliation may indeed constitute trademark infringement. The Advocate General's opinion, which is normally followed by the court, must now be considered by a court which has previously indicated that the purpose of a trademark is as a "source indicator", not an indicator of quality or reputation.

United Kingdom - Product Shapes as Trademarks - Decision of the European Court of Justice in Philips v. Remington   top

On June 18, 2002 the European Court of Justice issued its decision in the Philips case. This case is a milestone in the European law on the protection of product shapes as trademarks.

in 1966 Philips developed a new type of electric razor composed of three rotary heads in a triangular arrangement. Philips registered the triangular configuration as a trademark in the United Kingdom in 1985. In 1995 Remington introduced a similarly shaped razor and Philips sued claiming trademark infringement. Remington successfully moved to cancel Philips trademark registration on the grounds that the product configuration did not meet the statutory requirements of a trademark. Philips appealed and the court of Appeals referred the question to registrability of product designs to the European Court of Justice.

The European Court of Justice holds that it is possible for the shape of a product to be registrable if the shape has acquired distinctiveness through use. However, a mark consisting solely of the shape of a product may not be protected as a trademark if that shape is essential to the way the product functions even if the function could be achieved through other shapes

The case will now return to the court of appeals for a decision.

The European Court of Justice's decision appears to exclude from trademark protection technical inventions and functional designs which are the scope of patent and design protection. The decision may well result in trademark applications for functional items being subjected to heightened scrutiny.

Spain: New Trademark Law   top

A new trademark law went into effect in Spain on January 1, 2002. A significant element of the new law is the abolition of official examination for prior possible conflicting rights. Companies who previously were refused on the basis of official actions should consider refiling as it will be up to third party right-holders to object.

Copyrights

Librarian of Congress Issues Royalty Rates for Webcasting   top

The Library of Congress has set a royalty to be paid to music rights holders by webcasters for web-streamed music at $0.70 per song for each 1,000 listeners. This is a rejection of the Copyright Arbitration Royalty Panel's proposal that up to $1.40 per song and apparently resolves the issue for the moment.

United States Congressman to Introduce Legislation to Codify Fair Use   top

US Congressman Rick Boucher is set to introduce a bill to codify fair use provisions under copyright law and restrict the recording industry from selling copy-protected CDs. The Congressman's proposals are intended to ensure fair use provisions under statute and to ease some of the copy-restrictive provisions of the Digital Millennium Copyright Act.

Domain Names and Other Internet Matters

Domain Name Registrar GoDaddy Sues Competing Registrar Verisign Claiming Unfair Trade Practices   top

GoDaddy, an ICANN approved domain name registrar filed suit against Verisign, another ICANN approved registrar, claiming a variety of unfair competition claims related to Verisign's direct mail marketing practices. This is the second suit filed against Verisign regarding its marketing practices. See the story as reported by The Register at http://www.theregister.co.uk/content/6/25613.html .

United States Provides Native American Tribes Own Domain Space Identifier   top

Under an agreement with the United States General Services Administration and the Department of the Interior, the United States has granted Federally recognized native American tribes a domain name suffix identifying them as government entities within the .gov domain space.

The new domain name designation is part of the Interior Department's Bureau of Indian Affairs initiative to foster relations between the federal government and Native Americans. The domain space is designed to facilitate the provision of information regarding Native American programs and agencies, enable e-business transaction capabilities, and provide continuous services to individuals over the Internet.

A tribal domain name will appear as 'nameoftribe-nsn.gov', where 'nsn' stands for 'native sovereign nation'. In order to obtain the domain name designation, a tribe needs to apply to the Office of Assistant Secretary-Indian Affairs or register at www.gov-registration.gov.

Surinam Markets Its ccTLD .SR As The Home For "seniors"   top

Suriname is promoting its .SR ccTLD domain space as the domain space for "seniors" seeking to attract registrants related to the market for people 50 and over.

International Olympic Committee Recovers Domain Name OLYMPIC.BIZ   top

The International Olympic Committee, owner of the famous OLYMPIC mark, brought an action pursuant to the .BIZ registry domain name dispute policy seeking an order to transfer the domain name OLYMPIC.BIZ from More Virtual Agency.

Stating that "it would be difficult to find a person [other than the Committee] who could show rights or legitimate interests in an internationally renowned mark that has been in use since 1894", the arbitrator concluded that (a) the failure of More Virtual Agency to respond to the complaint could be interpreted as an admission of no legitimate interest in the domain name; (b) because of the international fame, recognition and longevity of the OLYMPIC mark, More Virtual Agency could not register or own an identical mark; (c) More Virtual Agency had constructive notice of the OLYMPIC mark because of its international prominence; and (d) the high likelihood of confusion among internet users as to the association of the domain name with the OLYMPIC mark meant that the mere registration of the domain name constituted bad faith.

The arbitrator ordered the name transferred to the Olympic Committee. Discussions

Slogans - Are There Trademarks Hiding in Them?   top
Stephen J. Quigley, Abelman, Frayne & Schwab

"Hair color so natural only her hairdresser knows for sure." "We try harder." "Where's the beef?" "Just do it." Don't leave home without it." "Got milk?" These are among the most widely recognized commercial slogans of our day. They are also registered trademarks entitled to the same rights and protections as any other word or design mark. Slogans are often overlooked as potentially valuable intellectual property, yet a succinct and memorable phrase can do as much to sell a product or service as any name or logo.

Whether a slogan functions as a trademark is determined by the same standard applied to all marks - does the slogan convey to consumers that there is a single entity behind the goods or services promoted by the slogan? The slogans mentioned in the previous paragraph clearly do. On the other hand there can be no trademark protection for slogans that are

· Purely informational. For example, the U.S. Patent and Trademark Office rejected applications filed by Remington Products for "Proudly Made in USA"; by Volvo for "Drive Safely"; and by Manco Inc. for "Think Green".

·Merely a merchandising tool. For example, applications filed by Vehicle Information Network Inc. for "The Nation's Local Electronic Classifieds"; by Boston Beer Company for "The Best Beer in America"; and by Melville Corporation for "Brand Names for Less" were all rejected by the U.S. Patent and Trademark Office.

Not every slogan must rise to the level of "Where's the beef" to be recognized and protected as a trademark. The Patent and Trademark Office has stated that slogans "may be ingenious, clever, catchy, trite, dull, nonsensical and the like but to be registrable, a slogan need not be a work of art." For example, trademark registrations issued for "The Real Difference is the Price" for gasoline service stations; "Tools for Thought" for computers; and "Your Financial Security is our Business" for insurance and estate planning services.

In scrutinizing a slogan for its trademark potential, the following questions should be considered:

  • Is the slogan used in a trademark sense and not merely in a manner which describes the goods and services?
  • Is the slogan an expression that would be commonly used to describe the goods or services?
  • Does the slogan possess some degree of ingenuity in its phraseology?
  • Does the slogan say something a little differently than what might be expected about the goods or services? In other words, does it say expected things in an unexpected way?
  • Does the slogan possess more than a single meaning, i.e., is there a double entendre which conveys a degree of ingenuity and successfully masks or somewhat obscures the intended commercial message?

Trademarks: Suggestive and Descriptive   top
Lori Cohen, Abelman, Frayne & Schwab

You are a marketing executive for a consumer products corporation and have been assigned the task of naming a new body cleanser. You are advised that the product will have a fresh scent and that the name should provide some indication to the consumer as to the nature of the product. A fresh, clean scent is often associated with springtime. What would be an appropriate name for a product used for cleansing, perhaps made of natural ingredients, for use with water, having a springy, fresh fragrance? Scarborough and Company, Inc. came up with SPRING RAIN and obtained a U.S. trademark registration for that mark, covering personal cleansing products.

A trademark is a designation, whether it is a word, slogan, symbol, logo or any combination of these, adopted to identify and distinguish one trademark owner's goods and/or services from others. Selection of an appropriate name for a product can be a critical factor in the success of the product since the functions of a trademark are:

  • to identify a manufacturer's or retailer's goods or services and distinguish them from goods or services sold by others;
  • to alert the public that goods and/or services bearing a particular trademark are manufactured, sold and/or controlled by a particular source;
  • to let the public know that goods/services manufactured and/or sold under a mark are of a particular quality level.

To achieve these functions, a proposed mark must be distinctive and can not merely describe an "ingredient, characteristic, function or feature of the goods or services in connection with which it is used." See In re Bright Quest Ltd. 204 USPQ 591 (TTAB 1979). A mark can not merely describe a particular feature of the product or service as a descriptive mark does no identify or distinguish the goods or services of a particular seller.

This does not mean that a mark should not suggest to consumers that the product has certain characteristics. In fact, the Court of Customs and Patent Appeals has stated that the best marks are often suggestive. See Van Camp Sea Food Co. v. Alexander B. Stewart Organizations, 50 F.2d 976 (CCPA 1931).

A mark is suggestive if it conveys two or more possible meanings, one possibly descriptive and one only suggestive of another possible meaning. The standard for determining whether a mark is suggestive (and registrable) or merely descriptive has been formulated as follows:

A term is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of the goods. A term is descriptive if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods Stix Products, Inc. v. United Merchants & Mfrs., Inc. 295 F. Supp. 479, 160 USPQ 777 (S.D.N.Y. 1968)

In applying this standard, one of our clients filed an application for BIOPROTECTIVE CLOTHING & Design for wearing apparel. The Examiner initially refused the application, stating that BIO means life and BIOPROTECTIVE merely describes the type, purpose and use of the goods, namely, apparel to protect the life of the wearer. In response, we explained that BIOPROTECTIVE CLOTHING not only connotes a type of apparel for protection of the wearer, but can also mean:

  • Apparel made of material that is safe for living organisms in the environment, i.e., biodegradable.
  • Apparel made of sterile materials for use by individuals in the medical professions, for example, sterile gloves or masks.
  • Apparel made of material safe for use by individuals in hazardous occupations including firefighters and emergency rescue workers.

A consumer encountering the BIOPROTECTIVE CLOTHING & Design label is not immediately aware of the precise nature of the product, but rather, must consider whether the product is made of biodegradable materials safe for the environment, whether it is made of flame retardant materials safe for those in hazardous occupations, whether it is used to protect the wearer from harsh environmental conditions, or, whether the apparel is manufactured for use by medical professionals. As there are several interpretations as to the meaning of BIOPROTECTIVE CLOTHING and the consumer must use imagination and thought in trying to determine the nature of the product, we successfully argued that the mark is suggestive and not merely descriptive.

The Examiner withdrew the objection and allowed the mark for registration.

While a mark with suggestive significance will be allowed for registration, a mark that merely describes a feature, characteristic, function or ingredient of the goods or services upon which it is used will be refused. For example, if you manufacture denim jeans and are considering adopting BLUE COTTON as a trademark, choose another mark. Denim jeans are made of blue cotton. If you seek to register CLEAR VISION for a line of eyeglasses, reconsider. Clear vision is the reason people wear eyeglasses. Under both of these scenarios, the United States Patent and Trademark Office will probably refuse registration on the ground that these marks are merely descriptive of blue jeans and eyeglasses. (In other industries however, these marks have been allowed, for example, BLUE COTTON has been accepted for registration for perfumes and CLEAR VISION has been allowed for computer software).

A descriptive mark will be refused since:

  • it does not identify or distinguish the goods or services of a particular seller;
  • a particular business entity can not be allowed exclusive protection for terms that are routinely used by competitors in the industry to describe their products and services.
  • If you are concerned that a mark you have selected may be descriptive, a careful analysis may reveal that the mark is suggestive and therefore suitable for federal protection.

Please do not hesitate to contact us for assistance in the initial evaluation of the proposed mark and in filing and prosecution of the application.

Trademarks On The Move: Motion Trademarks   top
Frank Terranella, Abelman, Frayne & Schwab

There's nothing in U.S. trademark law that says a trademark has to be silent and stationary. Just as sound marks show a trademark can talk, motion marks show a trademark can move.

For example, Twentieth Century Fox has registered the animated sequence which they use at the opening of their films (Registration No. 1928423):

And Hanna-Barbera Productions has Registration No. 1339596 for an animated sequence of a star in motion, the trademark it uses on its films:

Trademark Rule 2.52(a)(2)(iv) details the requirements for a mark in motion. The rule says that the applicant may submit a drawing that depicts a single point in the movement, as Hanna-Barbera did, or the applicant can submit up to five freeze frames showing various points in the movement, as Twentieth Century Fox did.

Although many of the registered marks in motion arise out of the entertainment industry, there is actually a wide variety of goods and services represented by motion marks. For example, the U.S. Postal Service has applied to register a sequence of images called Fly Like an Eagle (Serial No. 76/132238). It shows an eagle design followed by a jet trail moving from left to right on a screen. And the American Association of Neurological Surgeons has registered a moving image of a rotating brain as its trademark (Reg. No. 2315036).

A number of high-tech companies have also adopted moving images as their trademarks. One of these, by Netscape Communications Corporation, will be familiar to many Internet surfers:

Users of the Netscape Internet browser see an animated sequence in the upper right corner of their screens at all times. The images above show how the motion mark was registered (No. 2077148).

You may have also seen the pair of eyes which move back and forth. Registration No. 2490649 belongs to ZixIt Corporation to identify its telecommunication services:

Clearly, motion marks can be used effectively in all areas of commerce. In fact, this firm is currently prosecuting an application to register the unique vertical motion in which the doors of an automobile open. The challenge was to show the Trademark Office the motion in a simple drawing which is a requirement of all trademark applications. Here is what was finally submitted:

U.S. Trademark Law is quite open and accepting of non-traditional trademarks such as sound and motion marks. Any sequence of images in motion which are used uniquely by one party to identify its goods and services, may be registered as trademarks in the United States. It's just a matter of thinking outside the static two-dimensional box of 20th Century trademarks to a 21st Century age of audio-visual images.
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