Letter of Protest to Oppose Trademark Application

We love filing letters of protest. The Cohen IP Law Group frequently uses this lesser known trademark procedure prior to the publication period to oppose a pending trademark application that my go to issuance without having to file an actual opposition proceeding. So what is a Letter or Protest? Essentially it allows a third party to bring forth evidence ex parte that was not known to the examining attorney assigned to a particular trademark application, to let him become aware that the pending application he is reviewing should not be issued. The Letter of Protest must be filed before Publication, although in some cases you may be able to submit after publication, but it is much more difficult, and typically you would need to file an Opposition by that time.

The beauty of the Letter of Protest is that if your evidence and reasoning is convincing, the examining attorney could base an Office Action (rejection) on it that he initially would not have. As a result, time and money is saved by avoiding a tougher Opposition or Cancellation filing.

Facebook’s Patent Gets Approved

One of the features that attract people to Facebook is the ability to “block” certain individuals like bosses, coworkers, and family from being able to view possibly incriminating or humiliating photos and status updates. These privacy settings are unique to Facebook and CEO Mark Zuckerberg filed a patent application back in 2006 for the function– titled as “”Dynamically generating a privacy summary.” The application said: “As social networking has grown more popular, users have realized a need for a certain amount of privacy…not every particular user wants all the other users to be able to access the information about the particular user.” So true.

After a six-year wait and multiple rejections, the U.S. Patent and Trademark Office finally approved the patent for Facebook’s privacy settings. (U.S. patent 8,225,376) The patent summarizes how the privacy setting works: “One or more privacy setting selections are received from the user associated with the profile. The profile associated with the user is updated to incorporate the one or more privacy setting selections. A privacy summary is then generated for the profile based on the one or more privacy setting selections.”

Even though Facebook now has a patent for its complex privacy setting (the patent was reportedly rejected multiple times for its Section 103 “obviousness”), you should still be careful about what you post on Facebook. There are apps such as Stalkbook, which have tried to get around Facebook’s privacy settings to allow a user to view ALL of another individual’s profile, including hidden content.

We Buy Ugly Houses Trademark Dispute

“We Buy Ugly Houses” is the trademark that HomeVestors of America, Inc. registered back in 2001. The company specializes in training franchisees to buy homes, “flip,” and resell the homes. HomeVestors has in subsequent years also registered variations on “We Buy Ugly Houses” such as “We Buy Ugly Houses And Make Them Nice Again” and a Spanish translation “Compramos Casas Feas.”

Since popularizing its slogan, HomeVestors has stayed active in enforcing protection of its federally registered trademark. This includes preventing other real-estate companies from using “We Buy Ugly Houses” or something of that sort on their websites and as a part of their domain names. In the past, HomeVestors, Inc. has succeeded in lawsuits against defendants using domain names such as www.webuyuglyhousesphoenix.com.

Most recently, HomeVestors filed a lawsuit against the House Buyer Network and its CEO Duane LeGate, Inc., which provides a similar service as HomeVestors, Inc. The complaint states that HomeVestors “is known as the WE BUY UGLY HOUSES® people and is the number one buyer of houses in the United States.”

Apparently, the dispute between the two parties stems from a settlement agreement that they entered into in 2006 “whereby LeGate transferred a number of domain names to Plaintiff and whereby LeGate agreed to stop purchasing keywords incorporating the HomeVestors” trademarks. In the lawsuit, HomeVestors claims that LeGate and House Buyers Inc. violated the agreement and infringed on its trademark by continuing to buy Internet advertising keywords that included words similar to HomeVestors’ registered trademarks.

New Boyz Trademark Infringement Lawsuit

The American rap group, New Boyz, has experienced large success in a short period of time. The New Boyz music capitalizes on catchy beats and lyrics like:
“You’re a jerk! Jerk Jerk Jerk!” and “Tell all the homies she got bunz, bunz, bunz.” Surprisingly, the group has yet to trademark its name “New Boyz.”

In the polar opposite genre of music–Christian music, an Australian band called Newsboys has been around since 1985 and remains popular with Christian music listeners. The band registered the trademark “Newsboys” in 1994. The band recently filed a trademark infringement lawsuit against the New Boyz for allegedly infringing on their trademark.

The Newsboys claim that the name “New Boyz” confuses consumers because of the similarity in sound between the two names and since the rap group also uses the name in relation to entertainment/music. Additionally, Newsboys says that the confusion created by the similar name damages the band’s reputation. The New Boyz use explicit lyrics while the Newsboys obviously use wholesome lyrics in songs such as “He Reigns” and “In Christ Alone.”

The lawsuit states that: “Plaintiff has already documented several instances of actual confusion among its customers, prospective customers and other outside observers who mistakenly assume a connection between Plaintiff and Defendant and the respective music they offer.” If a court agrees that using the name “New Boyz” creates a likelihood of confusion with the registered trademark “Newsboys,” then the rap group will have to find a new name, which may affect their recognition with fans. Then again, maybe the New Boyz are just “too cool to care.”

Apple Trademark Dispute in China of Xuebao

Apple is engaged in yet ANOTHER trademark dispute in China. This time, the lawsuit involves the trademark “Snow Leopard,” which is the name of Apple’s operating system OS X 10.6 released in 2009. Jiangsu Xuebao, a Chinese company, alleges that it owns the Chinese trademark rights for “Xuebao.”

You may be thinking, but wait a minute how is that the same as “Snow Leopard.” Well, the Chinese word “Xuebao” literally translates to “Snow Leopard.”

Jiangsu Xuebao claims that Apple’s use of “Snow Leopard” confuses consumers because it also makes computer products and now demands about $80,000 from Apple. Back in 1998, Jiangsu Xuebao filed an application with the USPTO for the U.S. trademark rights to “Xuebao” (later abandoned). However, that application just stated that the trademark would be used in connection with goods such as dishwashing detergents, shampoos, scented soaps, shoe wax, and other similar products.

Considering that Apple just settled a trademark dispute with Proview over the rights to “iPad” in China for $60 million, Jiangsu Xuebao’s request doesn’t seem like much, but it does seem a little suspicious. The hearing for Apple and Jiangsu Xuebao will be on July 10th. Considering the large sum that Apple just paid to Proview, it will be interesting to see how this case turns out and whether more of these types of lawsuits pop up in China.

Trademark Infringement of Brave?

Disney released yet another mega blockbuster new animated movie this weekend called “Brave”. To no one’s surprise, the movie scored the top box office spot and has already grossed over $80 million worldwide. Just a few days before the release of Disney’s “Brave,” a company called Phase 4 Films released a low-budget version called “Kiara the Brave.” “Kiara” wasn’t released in theaters, but distributed through iTunes, Amazon, and I even saw it offered on On-Demand service through my TV.

Both of the animated films feature a redheaded, adventurous heroine and use a similar plot. So what gives? Lately there has been a phenomena of low budget movies that appear to be very similar to the mega blockbuster movies. These movies of course open right around the same time as the mega blockbuster version. It’s unclear how much the makers of “Kiara” have profited from the movie, but considering the mega popularity of “Brave,” “Kiara” seems to have the potential to capitalize off of the similarities between the two movies.

Most likely, there isn’t much Disney can do about “Kiara” liberally using a similar plot as “Brave.” It is not enough that “Kiara” uses a similar story line as “Brave” because it must also be substantially similar in tone and pace to win a copyright infringement case. In some situations, a court will not determine that the other party’s movie infringed a copyright without evidence that the other party had access to the script.

With respect to trademark protection, titles of movies have very little to no protection alone typically. Disney has filed multiple trademark applications for the word “Brave” in connection with the movie and other goods, but the applications have not issued yet. Further, and surprisingly, we stumbled upon another trademark impediment that Disney is facing against the Atlanta Braves! Disney applied for the trademark rights over “Brave,” but the Atlanta Braves baseball team filed an Opposition proceeding to many of the pending trademark applications in relation to the use of the trademark for a number of different classes of goods/services. The Atlanta Braves already registered the trademark “Braves” prior to Disney’s first use date of “Brave,” which was in March 2010. The opposition to the registration states:

“Applicant’s BRAVE mark so resembles Opposer’s BRAVES Marks as to be likely, when used in connection with Applicant’s goods and services, to cause confusion, to cause mistake, and to deceive the trade and public, who are likely to believe that Applicant’s goods and services have their origin with Opposer and/or that such goods and services are approved, endorsed or sponsored by Opposer or associated in some way with Opposer. Opposer would thereby be injured by the granting to Applicant of certificates of registration for Applicant’s BRAVE mark.”

Disney’s trademark is still pending, but may not be approved if the Trademark Trial and Appeal Board determines that there is a likelihood of confusion between Disney’s use and the baseball team’s use of “Brave.”

Hamilton Ventura Trade Dress Infringement Against Stuhrling Original

Did any of you moviegoers notice Will Smith’s watch during Men in Black III? Apparently Will Smith wore the same watch, a “Hamilton Ventura”, in all three of the Men in Black movies. The watch has also graced the wrists of Elvis Presley in Blue Hawaii and Rod Sterling on The Twilight Zone.

The Swatch Group Inc., which manufactures Hamilton brand watches, has filed a trade dress and trademark infringement lawsuit against Stuhrling Original LLC for “intentionally copying” the Ventura watch.

A product can only receive trade dress protection if there is public recognition of its “look.” This can be achieved through years of advertising, promotion, and popularity. The Swatch Group Inc. will likely bring up that Hamilton released the Ventura watch in 1957 and since then it has been labeled as one of the “most iconic wrist watches ever designed.”

Stuhrling sells the “Stuhrling Ricochet,” a watch that features a triangular design that could make it look similar to the Men in Black watch. The CEO of Stuhrling has said: “there are a lot of triangular watches out in the marketplace…we really don’t feel that the lawsuit has any validity.”

Supposedly what got Swatch Group Inc. really upset was a comment made by a ShopNBC host when the Stuhrling watch appeared on the segment. Shortly after the release of MIB, the show aired and the host said: “if memory serves, there is another motion picture release now where this is once again being touted.”

The Swatch Group has also named ShopNBC in the lawsuit against Stuhrling. It claims trademark infringement unfair competition, false advertising, and demands a permanent injunction. The Swatch Group has reportedly spent millions of dollars to promote the watch and now wants to ensure that people don’t get confused over the source of the “Hollywood favorite.”

Havana Club Trademark Dispute with US and Bacardi

Cuba and the US are at war…over Rum! Cuba’s state distillery sells the popular rum “Havana Club” in over 120 different countries (distributed through Pernod Ricard, a French company). But entry of Cuba’s delectable national drink is barred into the U.S. because of the embargo. The USPTO did however granted Havana Club International the U.S. trademark rights for “Havana Club.” However, the U.S. Treasury Department’s Office of Foreign Assets Control, which administers and enforces economic and trade sanctions, did not issue a license to the company to make a $200 renewal payment. Thus, a court recently refused the “Havana Club” trademark renewal.

Bacardi, which is the Havana Club brand’s global competitor, sold its own version of rum called “Havana Club” in Florida. Now that Havana Club International no longer owns the trademark “Havana Club” in the U.S., Bacardi may be free to apply for the trademark rights. The USPTO would surely not approve Bacardi’s application for “Havana Club” as long as Havana Club International held the rights to that trademark because there would be a likelihood of confusion between the two.

Bacardi plans on expanding sales of its “Havana Club” rum across the 50 states. Bacardi’s version reportedly uses the same recipe as Cuba’s “Havana Club. “ So for the first time, rum drinkers in the U.S. (40% of the world’s rum drinkers) may now get to enjoy a glass of the famous “Havana Club” rum.

For Bacardi, this decision represents more than an opportunity for economic profit. When the communist government took control of Cuba, it also seized Bacardi’s distilleries in the country. The VP of Corporate Communications at Bacardi has said:

“This is not a question of market share. Rather, this comes from our own experience as Bacardi’s assets in Cuba were illegally confiscated in 1960.”

The “Havana Club” makers have decided to create a new name for the rum to push back against what the brand feels is a trade bias against Cuba. Pernod Ricard has already registered “Havanista” as a trademark in the U.S. and plans on selling the rum under that name if the U.S. embargo is lifted.

No Doubt Lawsuit with Activision Right of Publicity

No Doubt enjoyed mainstream success during the 90s with hits like “Don’t Speak” and “Just a Girl.” Last week, the band announced its plans to reunite and release an album this September. The same day that the band shared the news of their planned comeback, a judge gave permission for the band’s lawsuit against video game maker Activision to be heard by a jury. “Hella Good” day for No Doubt.

The video game created by Activision, Band Hero, features the band members’ likenesses as video game characters. Players of this video game can select a character that is modeled after a No Doubt band member’s likeness and make the character sing a song selected by the player. No Doubt did allow Activision to use of the likeness its band members, but alleges that Activision overstepped the terms of this contractual agreement.

Supposedly, No Doubt had agreed to allow the use of its band members’ likenesses in 3 songs, but the video game allows the appearance of the likenesses in about 60 songs. Additionally, the video game allows the No Doubt characters to sing songs besides those that No Doubt previously approved of, which are songs that No Doubt sang or performed in real life.

The Los Angeles Times reported that No Doubt feels that the video game “transformed No Doubt band members into a virtual karaoke circus act” and “the Character Manipulation Feature results in an unauthorized performance by the Gwen Stefani avatar in a male voice boasting about having sex with prostitutes.”

This lawsuit includes a right of publicity claim, but is more complicated than a mere unauthorized use of a celebrity’s likeness.

No Doubt did authorize Activision to use each band members’ likeness in the video game, but now challenges how the video game uses and manipulates a band member’s likeness. While No Doubt will likely emphasize that it did not agree for the likenesses to be used in such ways, Activision may argue that some flexibility is needed to make the video game functional. Although the specifics of the contract between No Doubt and Activision are unclear, this cases raises questions about what the scope of permitted uses should be when a celebrity authorizes use of his/her likeness for a video game character.

Google’s Fair Use Defense to Authors Copyright Infringement

Last month, Google got the vote for “most popular technology brand,” beating out Facebook, Twitter, and Apple. Google has grown to include its own specialized search tool for Maps, News, Shopping, Videos, etc.

A few years back, Google started Google Books and made an agreement with several research libraries to scan books for its Google Books Library Project. It has scanned 12 million books over the course of the project.

The website for Google Books describes that you can view a few “snippets” or sentences of copyrighted books and you can fully view a book that is out of copyright. The website states:
“The Library Project’s aim is simple: make it easier for people to find relevant books – specifically, books they wouldn’t find any other way such as those that are out of print …”
Members of the Authors Guild are alleging that Google scanned their copyrighted books without authorization. Last week, a federal judge gave the ok for the members of the Authors Guild to sue jointly (a class-action lawsuit). So now thousands of authors can sue Google since the class includes: “all U.S. authors and their heirs with a copyright interest in books scanned by Google as part of its Library Project.”

Google’s plans to create the world’s largest digital book library could come to a halt depending on whether a court agrees with the authors that Google’s e-books infringed their copyright protection. But wait a minute. Google may have a claim to “fair use” of these works under copyright law, which Google will reportedly use as its primary defense in this case.

The line between fair use and infringement can get blurry. The doctrine of fair use, section 107 of copyright law, says that certain purposes can qualify as “fair” such as scholarship, research, etc. Section 107 also says a court should consider:

1. The purpose and character of the use, including whether such use is of commercial nature or is for nonprofit educational purposes
2. The nature of the copyrighted work
3. The amount and substantiality of the portion used in relation to the copyrighted work as a whole
4. The effect of the use upon the potential market for, or value of, the copyrighted work.

The outcome of this case will undoubtedly have effects on the future of ebooks and digitization. It’ll be up to a judge whether Google’s actions qualify as fair use, but what’s your opinion based on what you know about the case and considering the fair use factors?