|
|
|
|
|
|
||||
|
|
|
|
|
|
» Home Page » Members » Practice Areas » Clients   » Publications Articles VIP Newsletter Guide to Registering Read Excerpts  » Events & Speaking » Contact Us » 1-800-343-IDEA |
|
U.S. Intellectual Property and New Media Law Update DOMAIN NAME WARS, EPISODE I Interstellar Starship Services, Limited v. Epix Incorporated (Ninth Cir. - July 19, 1999) WHAT'S THE "USE" Lucent Information Management, Inc. v. Lucent Technologies, Inc. (Third Cir. - August 3, 1999) PHANTOM MARKS ARE TRULY PHANTOM In Re International Flavours & Fragances Inc. (Fed. Cir. - July 20, 1999) WHERE ART THOU RAMS? Johnny Blastoff Inc. v. Los Angeles Rams Football Co., et al (Seventh Cir. - August 5, 1999 DOMAIN NAME WARS, EPISODE I Interstellar Starship Services, Limited v. Epix Incorporated (Ninth Cir. - July 19, 1999) This case is a standard skirmish in the domain name wars. Epix manufactures and sells video imaging hardware and software and provides consulting services to customers with regard to its products. It registered the mark EPIX with the United States Patent and Trademark Office in 1990. Interstellar Starship Services' ("ISS") business is far from crystal clear, but from its own service mark application appears to be that of graphic design services and computer graphics. ISS obtained a domain name EPIX.COM to display its services. After a complaint by Epix, ISS removed competitive material from the site leaving only some photographs worked on by ISS. An upset Epix responded by successfully requesting NSI to place the domain name on "hold". In order to get the web page off hold, ISS sued Epix for declaratory judgment that it did not infringe and Epix counterclaimed for trademark infringement. ISS thought it had won the wars when the District Court Judge granted summary judgment that its use of the web site did not infringe the Defendant's trademark. Here the Ninth Circuit looked over the judge's shoulder and found that several of the factors required determinations of fact and thus summary judgment was inappropriate. Among other things, the Court noted that it was use of the domain name and the content of the web site which had to be analyzed for infringement, not other business conducted by ISS. Thus, even if ISS and Epix were in direct competition, use on an innocuous web site, not bringing up any of the matters in competition, would not in and of itself show a similarity of products and services. Here, the question was less than clear because of change of content after the warning letter. However, the question of initial interest confusion, i.e., an Epix customer might read about ISS on the EPIX.COM site and decide to give ISS's services a try, capitalizing on Epix's good will, was still open. The Court went on to point out that questions of intention and actual confusion required factual determinations and found that Epix should have the opportunity to go to trial on the claims of trademark infringement and unfair competition. The decision can be reviewed at: http://caselaw.findlaw.com/cgi-bin/getcase.pl?court=9th&navby=case&no=9835142 WHAT'S THE "USE" Lucent Information Management, Inc. v. Lucent Technologies, Inc. (Third Cir. - August 3, 1999) This case involves a fundamental question of trademark law, what constitutes "use" sufficient to establish common law trademark rights. Plaintiff Lucent Information Management ("LIM") argued it had common law rights in the mark LUCENT prior to Lucent Technologies, Inc. ("LTI") filing its intent to use trademark application. LIM was founded in 1995 to provide consulting services for document imaging and management. On September 5, 1995, LIM sent out a one-page letter on corporate counsel letterhead to about 50 people to announce the services LIM would offer. On October 5, 1995, one of the principals installed a modem for the Israel bond office in Philadelphia for which they received $323.50 for the installation, i.e. LIM's first sale. Through the end of 1995, LIM continued to seek clients unsuccessfully from existing contracts, but undertook no paid advertising. Soon after the first sale by LIM and well before their second sale, LTI filed an intent to use application for the mark LUCENT and AT&T announced the creation of LTI by a huge media campaign. Prior to filing one of its intent to use application, three searches conducted by LTI included a reference to LIM. LIM sued alleging trademark infringement. The Third Circuit analogized to the geographic cases where a prior local user wishes to carve out rights in a small geographical area. The local user must show that it achieved market penetration which is significant enough to pose the real likelihood of confusion among the consumers in the area. Market penetration is determined by the volume of sales, the growth trends, the number of persons actually purchasing in relation to the potential, coverage and the amount of product advertising in the area. LIM's single sale for US$ 323.50 was in effect de minimis. Such a sale failed to show market penetration to give LIM prior right. If the initial sale had been followed by continual commercial utilisation, the finding might have been different. Absent such continuous use from the time of the first sale through the period before LTI filed its intent to use application, there is insufficient use. The Court stated that "certainly any new business will be time to get off the ground", but the Court in finding for Defendant, held that it could not aid such a new business by awarding trademark rights in unregistered marks that the business hopes or anticipates will be used but have not been used. The decision can be reviewed at: http://caselaw.findlaw.com/cgi-bin/getcase.pl?court=3rd&navby=case&no=992240P PHANTOM MARKS ARE TRULY PHANTOM In Re International Flavours & Fragances Inc. (Fed. Cir. - July 20, 1999) For a number of years the Patent & Trademark Office has been allowing registration of phantom marks. These are marks in which a portion of the mark is a phantom indicated by dashes, X's or dotted lines. The purpose is to allow substitution of various elements. For example, "___________ for Dummies". Here, the applicant wished to register the mark "LIVING XXX FLAVORS" where XXX served to denote "a specific herb, fruit, plant or vegetable" making marks such as "LIVING GREEN BELL PEPPER FLAVORS". The Trademark Trial & Appeal Board denied registration since these would in actuality be registration of a multipicity of marks not a single mark and the Federal Circuit affirmed, finding that phantom trademarks should not in the future be registered. There was no indication that prior registered phantom marks were in danger of being removed from the register. The decision can be reviewed at: http://caselaw.findlaw.com/cgi-bin/getcase.pl?court=fed&navby=case&no=981517 WHERE ART THOU RAMS? Johnny Blastoff Inc. v. Los Angeles Rams Football Co., et al (Seventh Cir. - August 5, 1999 On January 17, 1995 the Los Angeles Rams Football Co. and the Mayor of St. Louis announced The Rams were going to move from Los Angeles to St. Louis. On February 22, 1995 Johnny Blastoff, Inc., a corporation in the business of creating and marketing cartoon characters, filed a State of Wisconsin trademark application for the name of a separate and distinct, fictional, cartoon sports team, the "St. Louis Rams". On March 10, 1995 Blastoff filed two federal intent to use trademark applications for the "St. Louis Rams" mark. Thereafter The Rams moved as advertised. Blastoff sued for trademark infringement and cancellation of The Rams' registered trademark. The District Court judge dismissed the complaint. Blastoff appealed and the Seventh Circuit affirmed the District Court's finding against Blastoff. Blastoff filed its Wisconsin application for The St. Louis Rams while the NFL was in the process of approving The Rams' relocation from Los Angeles to St. Louis. While Blastoff tried to sell St. Louis Rams merchandise to the public, its success was extremely limited. It sold two t-shirts in 1995. In 1997 one of the principals of Blastoff was arrested for attempting to sell counterfeit St. Louis Rams t-shirts outside the Camp Randall Stadium in Madison, Wisconsin. On July 1, 1997 the plaintiff's attorney also sold a cigar with a band bearing Blastoff's St. Louis Rams mark to a friend at a bar. Blastoff did have a great time sending warning letters to the St. Louis Rams and the NFL. The fundamental issues were the same as indicated above. That is whether the NFL defendants had acquired the protective rights to the marks St. Louis Rams prior to Blastoff's. Much the same criterion was used. The Court found that by the time Blastoff registered the St. Louis Rams mark in Wisconsin, a significant portion of the public associated the mark with The Rams Football Club. Blastoff's argument that the term was an unarticulated idea for a team name which was not protectable was not found "useful" by the Court. In any case, The Rams are The Rams whether they are in St. Louis or Los Angeles and the Seventh Circuit recognized that this was the key in this situation. The decision can be reviewed at: http://caselaw.findlaw.com/cgi-bin/getcase.pl?court=7th&navby=case&no=982908 |
|
|
|
|
|
|
||||
|
|
Call for a free consultation:
|
|