Creativeprotection.com

Creativeprotection.com

Gehrke & Associates, SC is pleased to announce the launch of Creative Protection, an informational blog that covers copyright and trademark law. The blog also covers news and events of interest to authors, artists, publishers, programmers, musicians and others who may benefit from copyright or trademark protection.

Gehrke & Associates, SC also maintains a general IP law blog featuring selected downloadable resources at www.gehrkelaw.com .

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Famous trademarks don't necessarily cover every product, says Canadian Supreme Court

Famous trademarks don't necessarily cover every product, says Supreme Court
BRUCE CHEADLE

OTTAWA (CP) - Barbie may tower over the children's doll market but her global reach doesn't extend to the restaurant business, says the Supreme Court of Canada.

Globally recognized trademarks don't necessarily straddle all possible goods and services just because of their fame, the court ruled Friday.

Mattel Inc., the American toy giant that makes Barbie, and French champagne purveyor Veuve Clicquot Ponsardin each sought to stop small Quebec-based businesses from encroaching on their registered trademarks.

The arguments of both iconic companies were rejected by the top court Friday.

"Famous marks do not come in one size," Justice Ian Binnie wrote in one of two lengthy and unanimous judgments.

So while some, such as Walt Disney, "may indeed have largely transcended product line differences," the circumstances for each brand must be weighed on its merits.

Mattel's Barbie and Veuve Clicquot, while hardly Mickey Mouse outfits, simply don't match Disney's product reach, Binnie suggested.

"At this stage, (the Barbie trademark's) fame is not enough to bootstrap a broad zone of exclusivity covering 'most consumer wares and services'," the justice wrote.

The ruling upheld lower court judgments that found that Barbie's - a small Montreal restaurant chain - did not infringe on Mattel's trademark.

Similarly, a six-store chain of women's clothiers called Les Boutiques Cliquot in Quebec and eastern Ontario was found to have neither infringed on Veuve Clicquot's trademark nor diminished the value of the champagne maker's brand.

Spiro Christopoulos, owner of the three Barbie's restaurants, called the decision "so great, it's fantastic. It's been a 12-year battle with Mattel and finally it's over.

"At first I was a little intimidated," added Christopoulos, who was also awarded court costs with his victory.

"But then I realized that if I was going to protect our business and name and the people working here, I'd have to defend it. So I took the challenge and it paid off."

The rulings, at heart, state that Canadian consumers are bright enough to tell a doll from a delicatessen, and champagne from a chemise.

Full story.

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Small companies learn they have to sniff out trademarks or land in court

Trademark search
Small companies learn they have to sniff out trademarks or land in court

Business First of Columbus - April 14, 2006by Kevin KemperBusiness

For more than seven years, Gary Rountree has been in business as a private investigator, and, until recently, his small Dublin-based company has been known as Intell North Investigations Inc.

But lawsuits have a way of changing things.

Brought to you by Cingular Intell North and Rountree were sued in January by Intel Corp., the world's best-known computer chip maker, for trademark infringement because Rountree's company name was too similar to Intel's.

Rountree settled the lawsuit March 15, is changing the company's name and will not talk about the details. He does say, however, that even though he believes he didn't do anything wrong, he had no choice.

"You can't win. You're not going to beat them," Rountree said. "A small guy like me can't afford it."

Intell North isn't the only Central Ohio company to tangle with Intel recently. Columbus-based Internet Transaction Solutions Inc. filed a lawsuit against Intel in U.S. District Court in Columbus in January after Intel sent ITS a letter that threatened litigation.

Intel's letter said ITS's marketing slogan, "ePayments Inside," is a rip-off of Intel's "Intel Inside" slogan, according to the ITS lawsuit. Intel filed a countersuit the same month in federal court in San Francisco that alleged ITS infringed on its "Inside" brand.

Full story.

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

'Even a moron in a hurry' knows which Apple is which

'Even a moron in a hurry' knows which Apple is which, lawyer says
By Matt Dunham, AP

LONDON (AP) — Lawyers for Apple Computer (APPL) on Thursday asserted the company's right to distribute music through its iTunes music store, rejecting claims by The Beatles' Apple Corps that doing so violated a 1991 trademark agreement.

Apple Computer lawyer Anthony Grabiner said the "distribution of digital entertainment content" was permitted under the agreement, in which the two companies promised not to tread on the other's sphere of business.

Full story.

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Microsoft Vista May Face Trademark Trouble

Microsoft Vista May Face Trademark Trouble

By ELIZABETH M. GILLESPIE
The Associated Press
Tuesday, July 26, 2005; 9:06 PM

SEATTLE -- There's a line of sewing machines, an elevator monitoring system, even a brand of detergent used to clean dairy equipment _ all bearing the brand name Vista. There are plenty of computer products that claim the Vista trademark, too.

So Microsoft Corp.'s choice of Vista as the name for the next version of its Windows operating system has some intellectual property experts wondering if a company that has been fiercely protective of its own trademarks will get hauled into court.

"It seems like they were a little lax in their intellectual property due diligence _ maybe because they're so big, maybe because they're so powerful, maybe because they feel they can do anything they want," said James T. Berger, a Chicago-area marketing communications consultant who teaches at Northwestern and Roosevelt universities.

Full story.

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

USPTO looking to expand work at home option

USPTO weighs options for work at home

"PC Blade worth the cost of admission" [FCW.com, Oct. 6, 2003]

BY Florence Olsen
Published on Jul. 11, 2005

U.S. Patent and Trademark Office officials, who expect to hire about 900 new people as patent examiners this year, are analyzing their office space options, which include expanding the agency’s work-at-home program.

About 175, or 65 percent of USPTO's eligible trademark attorneys, work at home.

USPTO’s chief information officer has notified vendors of the agency’s interest in PC blade technology as agency officials weigh the security risks of expanding the work-at-home program. “Knowing about technology like this will help the decision-making process if we move forward on expanding the program,” said Brigid Quinn, a spokeswoman for the agency.


Full story.

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Smith undertakes reforming U.S. patent, trademark laws

Smith undertakes reforming U.S. patent, trademark laws

WASHINGTON -- Texas Congressman Lamar Smith may have walked away from his dream of being a physicist, but as a politician he believes his passion for science and discovery can still help protect American inventions.

The Republican is working on what he says will be the first comprehensive overhaul of U.S. patent and trademark laws in half a century.

"Everybody recognizes the need for change in patent law. So much has changed in 50 years that we really need to modernize our laws," said Smith, chairman of the House Judiciary subcommittee on courts, the Internet and intellectual property.

It's hugely important for high-technology companies, many of them in Texas, who say changes are needed to stay globally competitive. Smith's proposals could also benefit garage inventors who dream of selling their gadgets on the Home Shopping Network.

He's supported by companies like International Business Machines Corp., but not everyone thinks patent laws need reforming.

A group representing the state's biotechnology industry believes some of Smith's proposed changes could hurt businesses that have invented pregnancy tests, cancer therapies, enzymes that clean up oil spills and a host of pharmaceuticals.

Smith's bill would make it harder for patent owners to win court injunctions to stop patent infringement. Under current law, a patent owner who has sued for patent infringement and prevails in trial can get a permanent injunction to stop production of the competing product.

Full story.

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Pre-emptive Action

Pre-emptive Action

2 June 2005 14:54 hours

The World Intellectual Property Organization (WIPO) says its time intellectual property rights protection extended further into the Internet.

WIPO is recommending "a uniform intellectual property (IP) protection mechanism" to control illegal domain name registrations in any new generic Top-Level Domains, said a statement issued by WIPO on Wednesday.
The main generic Top-Level Domains are websites that end with .com, .edu, .gov, .int, .mil, .net, .org, .aero, .biz, .coop, .info, .museum, .name, and .pro.

But more generic Top-Level Domains are on the way.

Full story.

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Court Hears Falwell Web Domain Arguments

Court Hears Falwell Web Domain Arguments
Friday, May 27, 2005 - 01:20 AM

By LARRY O´DELL
Associated Press Writer

RICHMOND, Va.
A Web site critical of the Rev. Jerry Falwell´s views on gays contains constitutionally protected, noncommercial speech and should be allowed to keep its name _ a common misspelling for the conservative evangelist, a lawyer for the site owner argued Thursday.

Christopher Lamparello of New York City, who operates fallwell.com, took his case to the 4th U.S. Circuit Court of Appeals seeking to reverse a federal judge´s ruling that he violated federal trademark law.

Full story.

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Protecting intellectual property often hard

Protecting intellectual property often hard
For small businesses: Many don't know the value of their ideas or how much is lost to unfair copying
By Glen Warchol
The Salt Lake Tribune

Most small-business owners probably figure they have enough on their plates growing a business without worrying about something as esoteric as intellectual property theft.

Let global giants such as Nike and Microsoft stew over international piracy, right?

U.S. Undersecretary of Commerce Jon Dudas begs to differ. About half the patents issued in Utah - 683 last year alone - went to small-business owners. And those ideas - the foundations of dozens of businesses - are at risk of theft.

"We've found that small businesses don't understand intellectual property," said Dudas. "One tremendously bad case of intellectual property theft and they could lose their business."

Intellectual property includes everything a sharp entrepreneur could dream up - from software programs, which can be copied on a massive scale and transmitted in seconds over the Internet, to knock-off motor boat gauges or a hot-selling brand of glue churned out of a Far East factory.

Because trademark and patent theft has become a $600 billion problem - pirates siphon off about 5 percent to 10 percent of the value of U.S.-trademarked products - Dudas has kicked off a nationwide series of seminars for small businesses. The first started Monday in Salt Lake City and will continue today at Little America Hotel.

Full story.

Sponsor: Gehrke & Associates, SC -- Intellectual Property and Technology Law

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Trademark doesn't guarantee Web name

Trademark doesn't guarantee Web name

Posted May 2, 2005

Question: Do I need to buy Internet domain names if I own a trademark?

Answer: A federal trademark gives ownership rights to that mark and similar confusing marks across the United States. However, just getting a federal trademark from the U.S. Patent and Trademark Office does not stop others from buying the domain name. Trademarks must be enforced by their owners. Domain names are basically addresses on the Web that are available on a first-come, first-serve basis. Conventional domain sellers such as www.godaddy.com and www.networksolutions.com sell domain names online for prices starting at less than $10 a year.

Once a trademark becomes well known and valuable, it is only a matter of time before the competitors, rip-off artists and even porn sites try to trade off that mark by using similar-sounding domain names to direct traffic to their Web sites. Until recently, the Web site www.whitehouse.com directed traffic to a porn site and not to the real White House in Washington, D.C.

It is clearly cheaper to purchase a domain name for less than $10 a year than it is to spend tens of thousands of dollars on a trademark lawsuit or a domain-dispute resolution case.

Full story.

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

House Legislation to Protect Trademarks

By JIM ABRAMS
ASSOCIATED PRESS
WASHINGTON (AP) - The House moved Tuesday to protect trademarks from being sullied by imitators in legislation that grew out of a court battle between Victoria's Secret and an adult novelty store. The bill, approved 411-8, amends trademark law to make it easier for the owner of a famous trademark to stop knockoffs that could harm the reputation or impair the distinctiveness of the trademark. Under the measure, the owner could seek injunctive relief against similarities likely to cause "dilution" by blurring or tarnishing of an image even if there is no actual confusion among the public or competition between the owner and the imitator.

Full story.

Sponsor: Need Assistance with Intellectual Property and Technology Law?

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

H.R. 683: Trademark Dilution Revision Act of 2005

The Congressional Budget Office has released its report on H.R. 683 and the summary findings are:

H.R. 683 would make changes to trademark law to strengthen a trademark owner's defense
against the use of other similar marks in the market that could harm the reputation of the
trademark or confuse consumers. CBO estimates that implementing H.R. 683 would not
have a significant effect on spending subject to appropriation. Enacting the bill would not
affect direct spending or revenues.

Background
Status: Scheduled for Debate
Introduced: Feb 9, 2005
Last Action: Mar 17, 2005

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

WIPO receives 1,179 cases of cybersquatting in 2004

WIPO receives 1,179 cases of cybersquatting in 2004

www.chinaview.cn 2005-02-19 04:20:09


GENEVA, Feb. 18 (Xinhuanet) -- The World Intellectual Property Organization (WIPO) announced Friday that it received 1.179 cases of abusive registration of trademarks as domain names, or cybersquatting, in 2004.

It is a 6.6 percent increase over the number received the previous year, WIPO said in a press release.

WIPO's Arbitration and Mediation Center has handled a total of over 7,000 disputes, involving parties from 124 countries and covering over 12,500 domain names since the Uniform Domain Name Dispute Resolution Policy (UDRP) -- a quick and cost effective dispute resolution procedure -- went into effect in December 1999.

The UDRP, which was proposed by WIPO and has become accepted asan international standard for resolving domain name disputes, is designed specifically to discourage and resolve the abusive registration of trademarks as domain names.

Full story.

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

WebEx, Citrix in 'cybersquatting' suit

WebEx, Citrix in 'cybersquatting' suit

WebEx Communications, Inc. is accusing business rival Citrix Systems Inc. of so-called "cybersquatting," unfair competition and trademark infringement in a federal lawsuit filed in San Jose.


Full story.

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

USPTO Adds Trademark Wrappers to Website

The United States Patent and Trademark Office (USPTO) is pleased to present TDR - Trademark Document Retrieval. Through TDR, you can view and download any or all documents contained in the electronic file wrapper of all pending trademark applications, as well as many registrations.

Currently, you can access all pending applications and all Madrid Protocol filings, and also many registrations, via TDR. The USPTO is in the process of converting all remaining registrations into a digital format, to permit future TDR access. This conversion process is expected to take several years.

Full story.

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Marshall, TX -- Rocket Docket Venue

Town practices 'rocket docket' law
Tiny Marshall gaining fame as popular venue for high-tech litigation
Monica Perin
Houston Business Journal
The self-proclaimed "Pottery Capital" of Texas is also gaining fame as a "rocket docket" for high-tech litigation.

The town of Marshall, population 64,000, anchors the Eastern District of Texas while Houston serves as seat of the Southern District.

Nevertheless, a growing number of intellectual property attorneys with Houston firms make the 220-mile trip to file litigation in Marshall, where tech-related cases typically go to trial six months sooner.

Full story.

Sponsor: Gehrke & Associates, SC -- Intellectual Property and Technology Law

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Adidas Sues Abercrombie & Fitch Over Stripes

Adidas Sues Abercrombie & Fitch Over Stripes
Suit Says Company Copied 3-Stripe Design

POSTED: 9:15 am EST January 12, 2005
UPDATED: 9:17 am EST January 12, 2005

PORTLAND, Ore. -- German sporting goods giant Adidas is suing to protect its trademark three-stripe logo, arguing that Abercrombie & Fitch Co. copied the design for its latest line of casual wear apparel featured in an online Christmas catalog.

The offending merchandise includes several pairs of pants and a zip-up sweat shirt, all adorned with three parallel stripes running down the sleeve and pant leg, according to a lawsuit filed in U.S. District Court in Portland.

Adidas America Inc., the Portland-based U.S. subsidiary of Adidas-Salomon AG, asked the court to order the impoundment and destruction of all the offending apparel, as well as any bags, boxes, labels, tags or promotional material that accompanied the merchandise.

It's not the first time Abercrombie has attempted to use the three stripes - nor is it the first time Adidas has protested.

Full story.

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Trademark Fees Change on 1/31/2005

From USPTO:

Effective January 31, 2005, trademark fees will change as follows:

Initial Applications:

(1) $325 per international class if using the Trademark Electronic Application System (TEAS)
(2) $375 per international class if submitting paper
Amendments or Responses to Office Actions:

(1) $325 per additional international class when the fee is paid as part of a TEAS amendment or response
(2) $375 per additional international class when the fee is paid as part of a paper amendment or response
The new fee requirements will apply to any fees filed on or after January 31, 2005. See Consolidated Appropriations Act, 2005, Pub. L. 108-447.

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

H.R. 32: Counterfeit Marks

Status: Introduced (By Rep. Joseph Knollenberg [R-MI])
Introduced: Jan 4, 2005
Last Action: Jan 4, 2005: Referred to the House Committee on the Judiciary.
Sponsor: Rep. Joseph Knollenberg [R-MI]

H.R. 32 as Introduced

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Monopoly parody draws legal action

PAUL SHUKOVSKY
The Seattle Post Intelligencer

USA - Federal prosecutors want to burn or bury 62,496 copies of a board game called "Ghettopoly" because they say the parody of Monopoly, which has raised accusations of racism, infringes upon the "Monopoly" trademark.Customs and Border Protection officers at the Port of Tacoma opened two cargo containers from China early last year and found the games, which feature "playas" who, instead of putting hotels on Park Place, construct crack houses on Cheap Trick Avenue. The customs agency now has the games under lock and key.

The game's creator, David Chang, says the game is a parody, drawing on stereotypes to bring friends together "to provoke laughter."

But the owner of Monopoly, Hasbro Inc., is not amused.

Shortly after Chang began peddling his game on the Internet in 2003, he generated a lot of media attention and the orders started flowing in from "mom and pop stores who wanted to sell it," said Chang in a telephone interview. That's when he ordered the games from the manufacturer in China.

Full story.

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Restaurants fight over who was 'naked' first

DENVER - A pair of restaurant chains are fighting in court over who got naked first.

Qdoba Restaurant Corp. sued Moe's Southwest Grill in U.S. District Court this month, saying the Atlanta-based company is infringing on its trademark by offering "Buck Naked Burritos."

Qdoba, a Wheat Ridge company that operates Qdoba Mexican Grills, calls its tortilla-less burritos "Naked Burritos" and has held a federally registered trademark for the term since April, according to the lawsuit.

Full story.

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

WTO ruling gives Anheuser-Busch a boost in Europe

Anheuser-Busch Cos. Inc.'s Budweiser and Bud names can no longer be challenged by Czech brewer Budejovicky Budvar in Europe under a ruling Tuesday by the World Trade Organization.

The WTO ruled that the European Union can only protect regional food names and those geographic indications cannot be translated, according to published reports. The ruling means that Budvar can't challenge A-B on the Budweiser and Bud names in 20 of 25 European nations where they are registered.

Full story.

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Clothing maker sues over 'Calvin' trademark

Posted on Mon, Dec. 20, 2004


HARRISBURG, Pa. - A Scranton clothing manufacturer is suing apparel giant Calvin Klein Inc., accusing its parent company of "a frontal assault" over a trademark that threatens to run the Calvin Clothing Co. Inc. out of business.

The federal trademark-infringement lawsuit, filed Friday in federal court in Scranton, seeks a court order to prevent Calvin Klein and Phillips-Van Heusen Corp. from using the mark "Calvin" and to make them destroy any stock bearing that label.

The lawsuit claims Calvin Clothing, named in 1935 for the owner's young son, did not oppose Calvin Klein's use of the name in marketing as long as it was never shortened to simply "Calvin."

"Over the years there is ample evidence of the two companies' 'understanding' of this tacit agreement, and it was in the interest of both companies to maintain this status quo," according to the complaint.

Full story.

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Google hit with trademark suit over 'Scholar'

Published: December 14, 2004, 8:39 AM PST
By Matt Hines
Staff Writer, CNET News.com

The American Chemical Society has filed suit against Google, alleging that the search giant violated a trademark held by the group when it launched the Google Scholar search tool.

The suit, filed Dec. 9 in the U.S. District Court for the District of Columbia, claims that Google's use of the word "scholar" violates a May 2003 trademark held by ACS for the name of its Web-based academic search tool, SciFinder Scholar. In the suit, ACS, a Washington, D.C.-based nonprofit group, demands that Google cease and desist from using the word "scholar" in the name of its tool in order to prevent confusion among users.

Full story.

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Google wins in trademark lawsuit

Judge rejects Geico's claim search engine infringed on trademarkThe Associated Press
Updated: 12:12 p.m. ET Dec. 15, 2004

ALEXANDRIA, Va. - Google Inc. won a major legal victory Wednesday when a federal judge said the search engine could continue to sell ads triggered by searches using trademarked company names.

U.S. District Judge Leonie Brinkema rejected a claim by auto insurance giant Geico Corp., which argued that Google should not be allowed to sell ads to rival insurance companies that appear whenever Geico’s name is typed into the Google search box.

Google derives a major portion of its revenues from selling ad space to businesses that bid on search terms used by people looking for information about products and services online.

Geico claimed that Google’s AdWords program, which displays the rival ads under a “Sponsored Links” heading next to a user’s search results, causes confusion for consumers and illegally exploits Geico’s investment of hundreds of millions of dollars in its brand.

Full story.

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Judge Hears Geico, Google Trademark Case

By SAM HANANEL
Associated Press Writer

A federal judge heard arguments Monday in a trademark dispute that could threaten millions in advertising revenue for search engine Google Inc.

Attorneys for auto insurance giant Geico told U.S. District Judge Leonie Brinkema that Google should not be allowed to sell ads to rival insurance companies that are triggered whenever Geico's name is typed into the Google search box.

Geico claims that Google's AdWords program, which displays the rival ads under a "Sponsored Links" heading next to a user's search results, causes confusion for consumers and illegally exploits Geico's investment of hundreds of millions of dollars in its brand.

"When a consumers enters 'Geico' ... and goes to the sponsored link believing there's a connection, that is where the confusion arises," said Geico attorney Charles Ossola.

But Google attorney Michael Page said the ad policy is no different than a supermarket giving out coupons for one product in the checkout line when a customer buys the same product from a different company.

"There is nothing wrong with that under the trademark laws," Page said.

Full story.

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

The Acceptable Knockoff

The Acceptable Knockoff
By ROB WALKER

Published: December 12, 2004
The It Bag

Last year, Louis Vuitton released a new handbag line that became a tremendous hit in the marketplace. It was the kind of success -- more than 70,000 bags and accessories were sold in the first year -- that earns a media-friendly nickname like the It bag. Also last year, Dooney & Bourke released a handbag line that looked quite a bit like Louis Vuitton's trendy model, albeit at a far lower price. Dooney & Bourke named its new product the It Bag. The company has sold about 500,000 of these. The most popular version seems to be the one that looks the most like the Vuitton. Not surprisingly, the matter ended up in the courts. This past summer a federal judge in the Southern District of New York issued a ruling saying that while Dooney & Bourke had ''copied'' Louis Vuitton, it had not violated the French fashion giant's intellectual property rights, and could go about its business. The It Bag might be a knockoff -- but it's an acceptable knockoff.

. . .

The bags are not identical: aside from the different letters in the logos, the D&B version renders its repeated mark in a smaller size and also features multicolor zippers. ''The colors used on the Dooney & Bourke bags,'' the judge added in a brief aesthetic flight, ''are noticeably toned down, and consequently fail to evoke the characteristic 'friction' sparked by Murakami's bright, clashing colors.''

Full story.

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Supreme Court Limits Trademark Protection

Supreme Court Limits Trademark Protection
By BLOOMBERG NEWS

Published: December 9, 2004

The United States Supreme Court limited the scope of federal trademark protection yesterday, saying that rival companies in some cases can use proprietary terms even when that might cause confusion among customers.

The justices said that companies accused of infringement need not show a lack of customer confusion when they invoke the "fair-use" defense to trademark lawsuits. The fair-use doctrine lets competing companies use trademarked terms for descriptive purposes.

"Some possibility of consumer confusion must be compatible with fair use," Justice David H. Souter wrote for the unanimous court in Washington.

The ruling clarifies an area of trademark law that had divided lower courts. In the case before the justices, the 9th United States Circuit Court of Appeals in San Francisco had said that defendants invoking the fair-use doctrine needed to show that customers probably would not be confused.

Full story.

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Hooters Can't Stop Restaurant From Copying Waitress Uniforms

Dec. 3 (Bloomberg) -- Hooters of America Inc., the restaurant chain that is best known for the low-cut T-shirts worn by its waitresses, can't stop another restaurant from using similar outfits, a federal judge said.

U.S. District Judge Anne Conway in Orlando, Florida, yesterday threw out a claim by Hooters that Ker's WingHouse was stealing its restaurant designs and waitress outfits. Conway also ordered Hooters to pay Ker's WingHouse $1.2 million on a counterclaim.

``Hooters does not own the sole right to use attractive young women to sell chicken wings,'' said Don Conwell, a lawyer who represented Largo, Florida-based Ker's WingHouse, in an interview.

Full story.

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Trademark Lawsuits: The Price of Online Griping

Companies sue to close 'gripe sites'

Tresa Baldas
The National Law Journal
12-02-2004

Scores of disgruntled customers who criticize businesses on Internet "gripe sites" are finding themselves entangled in costly court battles with companies charging trademark infringement.

But the courts aren't buying the trademark argument, and have consistently upheld the free speech rights of people who vent about companies on the Internet. Critics charge that companies are merely attempting to wear down defendants through costly litigation.

Full story.

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Overture and Google Settle with Geico Over Trademark Dispute

Overture Services has settled a lawsuit brought by insurance giant Geico, ending a battle in an ongoing war over the commercial use of trademarked terms in Web search results.
Yahoo subsidiary Overture confirmed on Wednesday that it settled out of court with Geico on Friday, but a company representative would not elaborate. Terms of the settlement were not disclosed.

"Geico and Overture have agreed to a settlement, and their claims against each other in the litigation have been dismissed," Geico spokeswoman Janice Minshall wrote in an e-mail.

Geico had filed suit in May against Overture Services and Google, charging the two commercial search giants with violating its trademarks when selling advertisements linked to its name in search results.

Full story.

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Half Price Books Trademark Case

BarnesandNoble.com loses round in trademark case

By Stefanie Olsen

Promoting half-priced books could end up costing BarnesandNoble.com more than it bargained for, if a rival has its way.

A district court judge recently dismissed BarnesandNoble.com's motion for summary judgment in a case brought by Halfpricebooks.com, which sued the online book giant in 2002 for infringing its trademark "Half Price Books." The judge's opinion, filed Nov. 22, effectively allows Half Price's suit to proceed on the grounds that BN.com could have overstepped fair-use laws governing the right to use descriptive trademarks.

"While BN.com's name is displayed on each and every page (of its Web site), a reasonable jury may find that the usage of 'Half-Price Books' on the webpage is sufficiently prominent to suggest that there is an affiliation between HPB and BN.com," according to an opinion from Judge Lee Cook. "Therefore, HPB has directed the court to sufficient evidence in the record from which a reasonable jury could find in its favor on the issue of fair use."

Full story.

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Brannock files keyword lawsuit

by Casey Dickinson, Journal Staff


11/26/04: SYRACUSE — The Brannock Device Co., makers of the famous foot-measuring device, has filed suit against ABC Industries, Inc., accusing the Long Island–based, store-fixture dealer of infringing on its “Brannock Device” trademark. The suit is a tale of the established, traditional Brannock technology meeting with the Internet’s emerging advertising methods. Developed in Syracuse, the size-determining Brannock Device’s sliding metal parts are a fixture in shoe stores around the world.
A keyword-linked advertisement on the Google search engine prompted Brannock to file suit Nov. 9 in federal court in the Northern District of New York, says attorney George McGuire, who is representing Liverpool-based Brannock. McGuire is chair of Bond, Schoeneck & King PLLC’s intellectual-property practice group.

Full story.

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Trademark lawsuit filed over yogurt name

DES MOINES, Iowa Wells' Blue Bunny is taking another company to court over yogurt.

Wells, based in Le Mars, makes the LITE 85 brand. It is suing Minneapolis-based Kemps, which makes LIGHT 80.

Wells says Kemps' name is so similar that it infringes on its LITE 85 trademark. Wells also says the similar names have confused some customers and some may believe Kemps yogurt is connected with Wells' Dairy.

Full story.

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Fighting for ‘drizzle’

Rising Sun Farms owner faces a trademark challenge over the name for her flavored balsamic seasonings
By JONEL ALECCIA
Mail Tribune
PHOENIX — After failing to trademark the word "torta" 20 years ago, Elizabeth Fujas was determined that "drizzle" wouldn’t meet the same fate.

After all, the owner of Rising Sun Farms in Phoenix figures it was her luscious layered cheese spreads that made "torta" synonymous with the now-popular appetizer.

"Nobody had anything else on the market like it," recalled Fujas, 55, who said she invented the savory treat in 1984. "Now ‘torta’ is everywhere. ... We lost a lot of money over ‘torta.’ "

It’s ironic, then, that Fujas appears to be in a neck-and-neck race for the trademark rights to a trendy food creation she calls "drizzle."

Full story.

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

NY Loses Over $1Billion in Taxes Due to Counterfeit Market

Report: Counterfeiting costs NYC more than $1B annually

BY BRYAN VIRASAMI
Staff Writer

November 22, 2004, 2:00 PM EST


Buying a fake Gucci bag in Chinatown or a pirated Beyonce CD in midtown can cost every New Yorker, city Comptroller William Thompson said yesterday.

In fact, the losses in tax revenues add up to more than $1 billion, Thompson said. The counterfeit business in New York City alone is a $23 billion a year industry, he added.

Full story.

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Kellogg sues General Mills on toasty issue

Cereal maker squabbles with rival over proprietary wording regarding cinnamon toast.

By Susan Decker / Bloomberg News

BATTLE CREEK -- Kellogg Co., the largest U.S. cereal maker, filed a lawsuit challenging General Mills Inc.'s trademark on the phrase "cinnamon toast crunch" for a breakfast food bar.

Full story.

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Budweiser Mark At Issue in Finland

BRUSSELS (Reuters) - The European Court of Justice on Tuesday batted questions about whether the name "Budweiser" could be used by two competing brewers back to Finland's national court.

Full story.

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Excel Mark in News Again

Microsoft wants company to change program name

By Associated Press

SAN JOSE -- Microsoft Corp. is demanding that a small company change the name of a computer program because it contains the word "Excel" -- the title of the software giant's own popular spreadsheet program.
Richard Tanenbaum, founder of Savvysoft Inc., said the company researched the name before selecting TurboExcel for its add-on program for Microsoft Excel.

He said the search turned up no evidence that Microsoft had registered "Excel" as a trademark.

The Excel spreadsheet software has been on the market since September 1985, and trademark rights in some countries, including the United States, can be claimed even without an official registration.

According to the U.S. Patent and Trademark Office, an attorney representing Microsoft filed an official trademark application for "Excel" in April 2004.

Full story.

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

The new Chinese counterfeit game

By Brad Spurgeon International Herald Tribune
SHANGHAI International pressure on China to stop its counterfeiters is producing an unexpected twist. Rather than just copying another company's product, many Chinese businesses are filing patents and claiming other intellectual property rights to the counterfeits locally, in effect becoming the legal owners, at least in China.

Full story.

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

"Excel" Trademarked by Microsoft

Microsoft introduced its Excel spreadsheet program in 1985, but didn't get around to officially registering its trademark until earlier this year.

The company filed a trademark application for Excel in April, even though the name is already protected by something called common law trademark, said Microsoft spokeswoman Stacy Drake. The company wants to make it official with the United States Patent and Trademark Office because "it doesn't hurt to take it one step further," Drake said.

Full story.

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Domain Name vs. Trademark

Article published Nov 7, 2004
Gripe site case could be free-speech benchmark

DALLAS, Ga. - When Alan and Linda Townsend were unhappy with the sprayed-on siding applied to their house, the frustrated couple launched a Web site to complain and to give other unsatisfied customers a forum.

Visitor postings to the Web site said the product, Spray on Siding, cracked, bubbled and buckled. For their efforts, the Townsends got slapped with a lawsuit by the product’s maker.

The federal case may help shape the boundaries of online speech.

Companies routinely go after individuals when they feel people are maligning them on the Internet. And often, legal scholars say, the Web site’s owners don’t fight back at all.

In this dispute, North Carolina-based Alvis Coatings Inc., which supplied the siding product used in the Townsends’ $16,721 project, claims the couple’s Web site infringes on the company’s trademarks, defames its product and intentionally misleads and confuses consumers.

Alvis is seeking more than $75,000 in damages, in addition to unspecified punitive damages and attorney fees.

“We could lose everything, including the house, and still be in debt,” said Alan Townsend, whose house is valued at around $150,000.

Though neither side was looking for a brawl over speech rights, the lawsuit is headed that way, said Paul Levy, an attorney for Public Citizen, which agreed to help represent the Townsends.

Internet law expert Doug Isenberg of Georgia State University said the courts need to better define free-speech issues for the Internet, and this case could help.

“The right to criticize is certainly protected in general, but it is not unlimited,” Isenberg said. “Some of those limits include how you can use someone else’s trademark.”

The complaint filed by Alvis alleges that the name of the Townsends’ Web site, spraysiding.com, “is confusingly similar” to the official Alvis site, sprayonsiding.com, as well as its trademark “Spray on Siding.”

Full story.

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Electronic Forms under Madrid Protocol

Electronic Forms Available for Madrid Protocol Filings
USPTO another step closer to a fully electronic trademark process


The Department of Commerce’s United States Patent and Trademark Office (USPTO) announces the availability of electronic forms for submitting Madrid Protocol related documents. Now a U.S. trademark owner may file a single online application with the USPTO in English, based on an existing U.S. trademark application or registration, pay the fees in U.S. dollars, and potentially obtain registration for the mark in any or all of the 65 member countries of the Madrid Protocol.

Full story.

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.

Darjeeling Tea Protected

Chastity belt for Darjeeling tea
- Central move to protect India’s unique produce against fake onslaught
VIVEK CHHETRI

Darjeeling, Nov. 2: India has taken the first tentative step towards protecting Darjeeling tea to stop unscrupulous producers in various parts of the world from passing off an inferior product as the real McCoy.

The government has notified Darjeeling tea under the country’s Geographic Indicator of Good Registration and Protection Act, according to S. Bansal, vice-president of the Darjeeling Planters’ Association.

This is the preliminary move towards protecting the brand value of Darjeeling tea across the globe.

Full story.

Please visit our sponsor Gehrke & Associates, SC to learn more about how to enhance and defend your intellectual property.  Thank you.