Redskins Name Can Be Challenged

The Washington Post reports: Redskins Name Can Be Challenged: “The football franchise had appeared to prevail in the longstanding trademark fight when a federal judge ruled in its favor nearly two years ago. But yesterday the U.S. Court of Appeals said the case deserves another look because one of the plaintiffs might have been unfairly denied the right to pursue.”

Anheuser-Busch takes Hungary

The AP reports that Anheuser-Busch won in the latest counrty to weigh in on the long-running trademark dispute over the Budweiser trademark: Anheuser-Busch Wins Latest Court Battle: “A Hungarian court has ruled in favor of the St. Louis-based brewer, ordering cancellation for Czech beer-maker Budejovicky Budvar’s use of the “Bud,” “Budweiser Budvar” and “Budweiser Bier-Budvar” labels in Hungary”
Previously: More Budweiser TM, Beer, Branding and Human rights, This trademark’s for who?

Make money by misunderstanding trademark law

New York Times: He Says He Owns the Word ‘Stealth’ (Actually, He Claims ‘Chutzpah,’ Too):

Over the last few years, Leo Stoller has written dozens of letters to companies and organizations and individuals stating that he owns the trademark to ‘stealth.’ He has threatened to sue people who have used the word without his permission. In some cases, he has offered to drop objections in exchange for thousands of dollars. And in a few of those instances, people or companies have paid up.
‘If a trademark owner doesn’t go up to the plate each day and police his mark, he will be overrun by third-party infringers,’ Mr. Stoller, a 59-year-old entrepreneur, said in a telephone interview from his office in Chicago. ‘We sue a lot of companies.’

Joe Gratz has more details: Idiotic Trademark Abuse: “The attached response letter from Aimee Wolfson, Columbia Pictures’ VP for Legal Affairs, is a superb smackdown; it’s one of the first big-studio legal documents I’ve read that I’ve enjoyed.”

MTAtm

NY Times: You Can Take the A Train, but Don’t Take Its Logo – New York Times: “The [Metropolitan Transit Authority] has been trying to crack down on the unauthorized use of its logos, symbols and images. But with only one lawyer to handle trademark issues, it has been ineffective at policing its brand. In fact, time and money are so scarce that the authority hasn’t even been able to trademark all its subway route symbols, barely getting past the A, D, F, 1, 4 and 7.”
Ronald Coleman: Taking the IP Train: “Evidently powered by the MTA’s burgeoning licensing program, it’s not a bad idea. No question but that these and the many other powerful symbols used by the transit system are excellent communicators of source, quality and all those other trademarky things.”
Hmmm, maybe the MTA needs another trademark lawyer? (ANDREW readies resumé, plans to casually walk by MTA HQ…)

-sucks dot com

“The noncommercial use of a trademark as the domain name of a website — the subject of which is consumer commentary about the products and services represented by the mark — does not constitute infringement under the Lanham Act.” Bosley Medical Institute v. Kremer (9th Cir., Apr. 4, 2005).
See also: Noncommercial use of BOSLEY MEDICAL trademark as domain name does not constitute infringement:

In a decision released April 4, 2005, the Ninth Circuit has affirmed the district court’s determination in Bosley Medical Institute, Inc. v. Kremer that the registration by defendant of the domain name bosleymedical.com did not constitute infringement of plaintiff’s BOSLEY MEDICAL trademark. The court remanded the matter for further proceedings, however, on plaintiff’s Anticybersquatting Consumer Protection Act (ACPA) claim, as the district court improperly required a showing of commercial use of the domain name as necessary to sustain an anticybersquatting claim.

Eric Goldman: Bosley Medical Institute v. Kremer–Victory for Gripers

Many courts have upheld gripers’ rights so long as do not use TM.com, so this case could be a turning point for letting gripers pick a domain name of choice. The court disagreed with the PETA v. Doughney case on the argument that registering TM.com blocks customers of the TM owner from obtaining the TM owner’s goods, because in this case the bosleymedical.com site was, indeed, about Bosley Medical. The court limits the doctrine to situations where the domain name registrant offers competing services.

Trademarks as Keywords

Jason Hunt and Brian Laurenzo, For Sale – Your Trademark as a Keyword, from IP Frontline magazine.

Most recently, Internet uses of trademarks, and in particular, uses in association with advertising through the Internet, have placed new strains on the traditional interpretation of trademark use sufficient to support a cause of action for trademark infringement. Due to the widespread use and availability of the Internet, advertising activity, and therefore use of trademarks on the Internet, affects nearly everyone who owns or uses a computer.

iTunes UK domain name dispute

BBC News reports: Legal row over iTunes domain name:

Benjamin Cohen, 22, registered itunes.co.uk in 2000, but earlier this month the UK domain name registry, Nominet, handed the name over to Apple.
Mr Cohen, of Hackney, east London, has applied to the High Court for a judicial review, saying Nominet is biased against small businesses.
But Nominet say legal experts found Mr Cohen was abusing his registration.
The body’s judgement, dated the 10 March, states by offering to sell the domain name and by continuing to re-direct people from itunes.co.uk Mr Cohen is abusing his registration.

In the decision: Apple Computer Inc v. CyberBritain Group Ltd, the independent arbitrator concludes: “I find that the Complainant has Rights in a name or mark which is similar to the Domain Name. On the balance of probabilities, I find that the Domain Name, in the hands of the Respondent, is an Abusive Registration on the grounds of its use in a manner taking unfair advantage of, and being unfairly detrimental to, the Rights of the Complainant. I direct that the Domain Name be transferred to the Complainant.”

Orange, tm

The NY Times reports on a dispute over orange branding for mobile phone service: In a British Mobile Phone Suit, the Color of Money Is Orange: “[Mobile phone company] Orange said yesterday evening that it would sue easyMobile, a wireless start-up founded by the entrepreneur Stelios Haji-Ioannou, who also founded the easyJet discount airline. Orange wants to keep easyMobile from ever using its signature color in advertisements.”
Here in the US, “the Lanham Act permits the registration of a trademark that consists, purely and simply, of a color.” Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995).

Beer, Branding and Human rights

The ongoing dispute over the Budweiser trademark is the first trademark case brought into the European Court of Human Rights. Bloomberg reports: Anheuser-Busch Takes `Budweiser’ Dispute to Human Rights Court: “Anheuser-Busch is appealing a 2001 decision by Portugal’s Supreme Court, which ruled that Budejovicky Budvar NP has the right to use the Budweiser name under a 1986 treaty between the Czech Republic and Portugal. Anheuser on Jan. 11 asked the human rights tribunal to rule on the case, arguing the Portuguese court infringed its “peaceful enjoyment” of the trademark.
Brand Channel looks at the relationship between Beer Brands and Homelands: “”When it comes to identifying with a country, after flags, national anthems and national airlines comes beer,” says Martin Lindstrom, a brand strategist from Denmark, the home of Carlsberg. “The advantages are very clear. It is what you would call free branding—leveraging a country’s brand rather than building your own.”
(via IPKat and The Trademark Blog)

Keywords, Search and Trademark

Eric Goldman, Deregulating Relevancy in Internet Trademark Law, Emory Law Journal, Vol. 54, 2005

This Article examines the complex world of Internet search. The Article seeks to ensure that trademark law does not interfere with the free flow of Internet content that consumers find relevant.
The Article starts with three complementary looks at Internet search from the perspectives of searchers, publishers and search providers. From the searcher’s perspective, the Article explains how searchers select keywords poorly and decontextualized keywords provide inadequate insight into the searcher’s true objectives.

(Via The Trademark Blog.)