Category: Trademarks

CAVEAT EMPTOR! – USPTO Issues Warning on Misleading Third Party Communications

The United States Patent and Trademark Office (“USPTO”) has issued a warning notice advising trademark owners to beware of third party communications that “mimic the look of official government documents” and request payment of fees. That notice was issued after a number of owners reported to the USPTO that they had made payments in response to such requests, believing that they were for official fees and then learned that they were not.

Intellectual Property and the U.S. Economy

The U.S. Commerce Department recently released a comprehensive report, entitled “Intellectual Property and the U.S. Economy: Industries in Focus,” which identified 75 industries as IP intensive. The Report found that IP at such industries supported at least 40 million jobs in 2011. As of 2010, IP comprised more than $5 trillion dollars, or 34.8 percent of, U.S. gross domestic product (GDP) and accounted for 27.1 million American jobs. Between 2010 and 2011, the U.S. economic recovery resulted in a 1.6% increase in direct employment in IP-intensive industries, faster than the 1.0% growth in non-IP-intensive industries.

Pinterest: Potential IP Pitfalls for New Social Networking Trend

Pinterest, a play on words of “pin” and “interest,” is a virtual, online “pin board,” where user’s can organize and share things they find on the web. While Pinterest is attracting a loyal community of social media users, the site is also the source of some concern for those same users and owners of intellectual property. The stated Mission of Pinterest is “to connect everyone in the world through the ‘things’ they find interesting . . . a favorite book, toy, or recipe [which] can reveal a common link between two people.

gTLDs Pose New Threats in Cyberspace

On January 12, 2012, ICANN, the Internet’s domain name registration watch dog, began accepting applications for new generic Top-Level Domains (gTLDs) to add to those already in existence, including .com, .net, .biz and others. Under the new scheme, any company can apply for a gTLD, thereby expanding the domain name system (DNS). Ultimately, this expansion will change the Internet forever. Each new gTLD poses an incremental risk for trademark owners who are already under heavy assault in cyberspace from cybersquatting (registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark owner), brandjacking (assuming the online identity of another entity for the purposes of trading on another’s brand equity), and typosquatting (registering URLs with common misspellings) by those seeking to generate illicit profits. According to the Coalition Against Domain Name Abuse (CADNA), cybersquatting already costs trademark owners more than $1 billion each year due to lost sales, lost goodwill, and increased enforcement costs. However, with a major increase in gTLDs, many corporations fear an expansion in expensive litigation to enforce their brands and trademarks.

Protecting Your Company – Trademark Basics You Need to Know

The Gibbons Women’s Initiative is hosting an upcoming program for in-house counsel entitled, “Protecting Your Company – Trademark Basics You Need to Know,” on Thursday, March 8 from 8:30 – 10:15 am at Gibbons Newark Office. This program will feature Catherine M. Clayton, a Director in the Gibbons Intellectual Property Department, who leads the firm’s trademark practice. Ms. Clayton has a broad range of experience in trademark and copyright law, and her practice encompasses litigation, licensing and prosecution.

The “Linsanity” Continues …..

The New York Knicks’ rising superstar point guard, Jeremy Lin, continues to wow fans around the world. Lin’s NBA ascent also has prompted a rush to the Trademark Office. Over 20 applications for word marks that bear the letters L-I-N already have been filed. These include LIN-SATIONAL; ALL LIN; LINSPIRATION; I’M A LINNER; LINSOMNIA: LINCREDIBLE; and other derivations using the star’s last name. The frenzy began with applications for the seemingly ubiquitous LINSANITY catch phrase, which were filed on February 7 and February 9, as the star’s career took off. Most of the applications to date have been filed on an intent to use basis, that is, the applicant has expressed a bona fide intent to use the mark in interstate commerce.

IP Law 2012: A Look Ahead . . . .

Coming off a year that included the Smith-Leahy “America Invents Act,” 2012 portends to have some significant developments in IP law. Decisions for IP practitioners and industry to watch for include: the Supreme Court’s decision in Caraco Pharm. Labs. Ltd. v. Novo Nordisk A/S, regarding “use codes” and section viii carve-outs under the Hatch-Waxman Act; the Supreme Court’s decision in Mayo v. Prometheus, regarding patentable subject matter, post-Bilski; and the Federal Circuit’s upcoming en banc decisions in McKesson and Akamai, regarding joint infringement liability.

Coming Soon to New Jersey . . . Trade Secrets Law!

New Jersey, along with New York, Massachusetts and Texas, are the only states that have not adopted some form of the Uniform Trade Secrets Act. Not for much longer. Last week, the New Jersey Trade Secrets Act, A-921/S-2456 passed unanimously in the New Jersey Assembly, and is on its way to the Governor’s desk. Governor Christie will have 45 days to sign the measure into law. Once enacted, the law will be effective immediately, but will not apply retroactively.

ICANN and ICM Sued for Anti-Competitive Practices Relating to the Newly-Created .XXX Top Level Domain

The recent establishment of .XXX, a new Top-Level Domain Name (“TLD”) intended for adult-oriented content, has been met with some trepidation and sparked controversy from those within and outside of the adult-oriented industries. Although much has been made of the threat of .XXX cybersquatting relating to mainstream companies, institutions and brands, ironically, the first formal legal challenge to the .XXX TLD, comes from those within the adult industry.

In Defense of Color Trademarks: INTA Submits Amicus Brief in Christian Louboutin v. Yves Saint Laurent

On Monday, the International Trademark Association (“INTA”) filed an amicus curae brief with the United States Court of Appeals for the Second Circuit in Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc.. In that brief, INTA argued that the lower court’s decision should be vacated and remanded on the basis that the court did not properly evaluate Louboutin’s federally registered trademark, failed to accord that mark the legal presumption of validity to which it is entitled under federal law, and did not use the appropriate test for aesthetic functionality.