The new WIPO team appointed by Director General Mr. Francis Gurry has several new and several existing members. The US representative John Sandage is in charge of Patents & Technology and replaces a prior US representative in the same capacity and is a UN Drug treaty officer appearing to have little expertise in patents. The Chinese representative (Wang Bingying – former Dir. of Chinese TM Office) continues to manage Trademark matters.
Archive for the ‘Trademarks’ Category
Fed Circuit kills all pending false marking cases retroactively. Are patent infringers next to be dismissed?
In a policy move based on illogic, the Federal Circuit affirmed a USDC decision dismissing a qui tam false marking suit based on false marking occurring prior to passage of the law limiting recovery to actual damages. The law was prospective, but the USDC, affirmed by the CAFC, applies it retroactively in a docket clearing move. This is a policy move by the Court to clear the massive backlog of qui tam false marking cases by effectively pardoning all those who false marked. The decision is doublespeak, as it says what is clearly a court-made pardon is not a pardon. When a court says black is white and the Fed Circuit affirms, the Fed Circuit is showing that, for it, the ends justify the means. The Court appears to me to have found that the Court’s case management is the priority not the enforcement of legal rights. So, the next move will I suppose come if the pending patent troll legislation passes the best Congress money can buy to kill independent inventors cases at the behest of big business lobbying. This false marking pardon sets the stage for the dismissal of all perceived troll cases using the same logic. That is, why not just pardon willful infringement by big business on the basis that such pardon is not a pardon but what Congress really intended to do. I am not a fan of massive qui tam false marking cases, but that WAS the law. If the Federal Government wants to eliminate rights and deny due process, it seems just compensation should be paid BY THE GOVERNMENT. The 5th Amendment’s just compensation clause is there to protect citizens against Government deprivation of due process or taking of property. So, rather than summary dismissal by court fiat, it seems to me that summary dismissal and some payment of just compensation is the proper route.
Here is the Fed Circuit opinion.
Corporate counsel are attacking ICANN for backtracking on the gTLD program and changing the rules to disallow famous trademarks as domains if countries claim rights. Rejecting .amazon and .patagonia makes corporations wonder if seeking gTLDs is viable. A corporate boycott of ICANN’s gTLD program is brewing that could derail the program.
See Corporate Counsel article on this.
On 20 June 2011, ICANN’s Board approved a program that will add to familiar top-level domains such as .com, .org, and .net, the possibility of having almost any word in any language as a top-level domain. This massive expansion of the number of possible domain names calls for an equally significant communications campaign to raise global awareness about the program. The rest of 2011 is a communications period dedicated to raising awareness around the world about the opportunity and risks associated with applying for a new gTLD. The Application period opens 2012-01-12 and will run for 90 days (until 2012-04-12), and the evaluation fee is set at $185,000, with approximately a one-year approval cycle. This is sure to raise a number of trademark battles and be an expensive new vanity asset for organizations, particularly multi-national corporations.
IP attorneys need to be advising their corporate clients about this, so steps can be taken to protect corporate tradenames and trademarks.
For information, see the ICANN new gTLD FAQ sheet
For those interested in possibly applying there is an Applicant’s Guidebook.
ICANN has issued a request for proposals (RFP). The objective of the RFP is to retain an advertising agency to help ICANN develop, implement and measure the success of a global advertising and awareness campaign for new generic top-level domains (new gTLDs), stating:.
“Please review the attached RFP for an overview of the program, our vision and proposal requirements. Send any questions about the RFP to email@example.com by 11 July 2011. Responses to inquiries will be posted to a community wiki by 13 July 2011. All responses are due by 8:00a Pacific time, Monday, 18 July.
RFP – New gTLD Global Awareness Campaign
http://www.icann.org/en/topics/new-gtlds/rfp-new-gtld-global-awareness-campaign-05jul11-en.pdf [PDF, 633 KB]”
I recently got in touch with some wholesalers from china and they told me that they sell a very expensive software at a very cheap price. so i thought I could make some money selling those. I put many ads on Craigslist advertising that i am a wholesale dealer selling the product. My plan was that if someone order that from me , i would i have one of the wholesalers from china ship the product straight to them and get some money out off the deal. some people contacted me about the product but we never went all the way through. i was not able to sell any. I recently received an email accusing me for piracy. the email says that i violated the copyrights. I contacted the people and and explained them the situation and they told me that even though i never sold any, i violated the copyrights just by offering the product online. they asked me to pay some money and they will drop the case. if not i will be in big troubles. Am i really in trouble?? what should i do?
Missouri 64112 2011-01-05
Answer 2011-01-31 :
I see you still have no answer. I did not answer earlier as you sounded like a sleazy counterfeiter to me and I don’t want any sleazy clients – they tend not to pay their bills. Still, you deserve a response, and you may be honest and just made a mistake. You should hire a copyright attorney to give “the people” a response explaining that offering to sell a counterfeit is NOT copyright infringement if no copying occurs. If any of your ads result in a sale, even if you are not the one producing, shipping, distributing, etc. you are guilty of contributory infringement or inducing infringement. So, “the people” as you call them are probably right. However, that is not the end of the story. In advertising the software you have undoubtedly infringed on the software producer’s trademark, as well, and have even more liability, to the point they could sue you and perhaps get punitive damages and attorneys fees. So you need more than a copyright lawyer, you need an intellectual property lawyer versed in both trademark and copyright litigation to analyze the CDL (cease and desist letter), talk to the software company lawyers knowledgeably, and to assure them you learned your lesson and won’t be bothering them with counterfeits anymore. The word of a counterfeiter will mean nothing to them, but a lawyer’s assurance will. I am such a lawyer, and I am licensed in Missouri, and I am experienced in this type of situation. In fact, I have gotten letters like that myself from Charter, Microsoft and Autodesk when testing BitComet, Limewire, Grokster, Kazaa, and the like. There are other good IP lawyers in Missouri, but they will cost you more and likely know less. Before I do this for you I would need to chat with you (618-462-3450), for free, to be sure I would want to work for you on it, to find out who “the people” that wrote you are, and to discuss my fees for doing it. Specifically, if you are a counterfeiter who intends to keep counterfeiting and just wants to duck your responsibility in this case and keep infringing, I want nothing to do with you. If this was a mistake and you do not intend to repeat this, then I want to help you out. If you don’t call, I will know you are dishonest counterfeiter whom I would not want to work anyway. If you do call then I will expect you to do the right thing and stay legal and we can talk and I can probably solve this for you at minimal expense.
Hello, I am in the process of publishing a book and I am from Chicago. In the city of Chicago we have a event that happens every year called Taste of Chicago that all the restaurant in the city come and sell there foods and on the fourth of July the city does the fireworks from the lake for the event. I want my book title to be A Taste of Chicago but it has nothing to do with food, it is a book based on a young girl from Chicago that left and went into the military and began that wonderful journey of life. I wanted to know if i could use that name even thought it has nothing to do with that event and since it starts with A and not Taste?
United States | Illinois | 60643 | Intellectual Property
If this question is inappropriate, mis-categorized, or unanswerable, you may reject this question.
Please do not reject this question if another attorney may be able to answer it.
01/31/11, 6:39 pm
Your question has been on lawguru quite long without an answer so I will give you one, although I am located downstate near St. Louis in Alton, IL. A second comer has a legal duty to avoid an likelihood of confusion with existing marks. You are to be commended for checking your position to try to comply with that duty. I think you can do this quite safely if you provide a disclaimer on the title page of your book: “This book has nothing whatsoever to do with the annual Taste of Chicago food sampling festival.” The use of “A” is irrelevant to the question, as very few people, even in Chicago, would recognize any difference. This question is already answered by reality. There is a restaurant by the same name:Taste of Chicago Restaurant
3170 S Ashland Ave # H, Chicago, IL 60608-6261 (773) 579-0355 . Certainly if they can do it for the same services – food services – you should be safe to do it for something quite different. In fact your mark would be, at most, a trademark, not a service mark like the food festival name since it is used on a product rather than on a service. Trademarks and service marks are classified by type of goods or services into over 40 international classes, and absent any other factor, different classes are normally not considered likely to be confused with each other unless closely related. Books and festivals are not closely related unless the book were about a festival. Even then, a descriptive title is not normally considered a trademark infringement, especially if there is a disclaimer. The disclaimer should seal the deal and keep you safe and the public unconfused.
Can I broadcast a live show on the web with my band. Playing cover songs and original songs without getting in trouble? We aren’t gettting paid for the show but we are asking for donations in a guitar giveaway. To help with more broadcasting equipment and chords, strings etc.
Texas 77530 1/30/11, 4:27 pm
Yes for original songs, although you should obtain copyright registration on any original work of your band. You would be subject to royalty payment for any copyrighted songs you play. Call me (618-462-3450) if you need more detailed advice. I represent several bands in intellectual property law matters, which seem simple on the surface but can get sticky if you do not take the proper steps to create protections to protect your creations and if you do not respect the copyrights of others.
I have applied for a trademark for the mark ___________ (my bands name). It is now being reviewed by a lawyer, and has a serial number filed with the USPTO. We have been using the name regionally in south texas since 2007, and have recorded and self-released an album. All of our music has been registered with ASCAP, and each member of the band is a member of ASCAP. There are a handful of bands with the same name. Since we are about to tour nationally, do i need to send C&D letters. I have tried to send very nice messages to each of the bands letting them know we have applied for the trademark, and for all intents and purposes it is a done deal. I have heard nothing from them. The info the USPTO sent me states that we MUST be vigilant in keeping up with our mark, and if we do not stop other entities from using the mark, we will lose ours. Please point me in the right direction.
San Antonio, Texas 78239 – 1/31/11, 9:44 am
The short answer is YES and NO and OMG and SNAFU. When you allow others to use your service mark (what you applied for was a service mark registration, not a “trademark”) uncontested, then you have great difficulty stopping anyone later on. The logic is that why should a Court intervene to protect your band’s name when you didn’t protect it when you had the chance and should have. You have major problems with protecting your band’s name due to long and prominent prior use by others. You need a top notch lawyer (I am one & there are many others) that is experienced in trademark litigation if you are to have any chance to get out of this mess. Location of your lawyer is not nearly as important as the skill of your lawyer, as you will recognize upon reading this. The _____ punk rock band in _____ probably has you 5 from ___________ beat legally unless you play this exactly right. The ___________ reggae band in ______________ likewise probably has you beat legally unless you handle this exactly right. Are there others? Call me (618-462-3450) and I can explain why and what you need to do. I handle several bands and have gotten people out of similar situations before. Do not send out a CDL (cease and desist letter) to them until you get your ducks in a row legally or you could lose your band’s name. You also have serious problems with your the service mark application apparently self-filed by _____, which I can explain to you. Also, you should not have posted this on the online legal answer site __________ as someone may tip off your opposition. For example, since you are not yet a client, there is nothing yet to stop me, for example, or any other attorney from simply emailing or picking up the phone and calling up one of the other bands and representing them instead and heaven help you if that happens before you get this cleaned up. Who the heck is advising you legally, to let you do something like this and get into this awful mess? The application lists _____ as correspondent, which implies that you are using self-destruction as your attorney. You are cruisin’ for a bruisin’ so consider this a top priority item if the name is important to you. To others, the lesson to be learned is that choosing and protecting a band’s name is not something for do-it-yourself amateurs, you need good legal representation so it is done right or you, too, could get in this type of jam. [names redacted to avoid hurting this band further]
As supporters of start-ups and inventors we are delighted to see the President put innovation as his first topic in his State of the Union speech tonight and to give it the greatest priority. We are going to actively suggest improvements in our system to make it better for inventors. We supported Obama from the very first announcement and we are Democrats from IL who have promoted many of his changes, so we have reason to expect to be heard. Give us any suggestions for patent system improvements you want us to mention. Here are a few of our current suggestions: (1) switch to a registration system with examination following grant [purpose: to get immediate rights for inventors and immediate publication], (2) have a 2 tier systems, a short term – low royalty minimum for all novel inventions and a longer term with exclusive rights for non-obvious claimed inventions [gives an inventor some minimal reward, including the reward of getting a patent, even if not such as to warrant exclusive rights], (3) search & examination only on request and as to specific claims and specific commercial item so the Patent Examiners are examining on things that matter and where examination makes commercial sense, (4) mandatory determination by the PTO, with short turnaround, as to infringement or non-infringement and validity or non-validity of a patent prior to suit in Court [so we get the real objective experts at this determination, the Patent Examiners, determining infringement & validity questions] thus eliminating most patent suits and getting quick certainty.–bb–
A nice pep talk video is available from the USPTO online in wmv format at http://wsd-ais-03.uspto.gov/asxgen/II.wmv
The video is short on practical details, but is nice as encouragement for new inventors.