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Lex Indicium

The Law of Information

Networking with the Horde at INTA

Posted in Marketing, Networking

… and “How a Doll Can Help Teach Networking to the Next Generation of Trademark Lawyers”

shutterstock_112218026Dateline: May 2, 2015, San Diego, CA. The International Trademark Association (INTA) has just launched its annual ginormous conference here in “America’s Finest City.” My colleagues back at the office feign jealousy that we are in San Diego on a ‘junket.’ But the truth is, this five day mega-networking meeting presents tremendous challenges.

The opportunity beckons: Come and network with 10,000 of your colleagues (some of whom are your competitors!). Highlight your talents and skills! Be erudite, witty, knowledgeable, magnetic and fun, all while running (really, literally, running) from venue to venue meeting as many people as you can, current and potential clients and colleagues for about 18 hours a day for 5 days straight…

shutterstock_81091828It’s grueling. It requires a plan, a steely yet warm exterior, and boundless energy. Without a plan, it can feel like you are back on the playground egging to get picked for someone’s team and wondering what you need to do to get in the game.

While 10,000 potential targets is obviously a daunting number, INTA tries to reduce the intimidation by helping young practitioners learn to “break the ice.”  At our session on “Developing the 21st Century Trademark Lawyer,” seasoned practitioners, including yours truly, our moderator, Amalia Berg (Goodmans, Toronto), Carollanne Lindley (Kilburn & Strode, London), Tracey Berger (Spruson & Ferguson, Sydney, Australia) and Devon Sparrow, (Citrix Systems, Inc.) shared observations, tips and ideas meant to help the next generation succeed at building a viable practice. Each of the speakers emphasized mentoring, proactive skill building, thoughtful exploitation of social media, superior client care and the importance of approaching networking opportunities with a plan and reasonable goals.

JRVTo help round out the messaging the panel had a contest at the end of the session asking participants what every INTA attendee needed to succeed – with the winner being awarded a unique “INTA Doll” that had “the right stuff.” What were her accoutrements? A conference badge, running shoes, a detailed schedule of meetings, aspirin, Alka Seltzer, a smile, swag and something interesting to talk about with potential targets. The winner (pictured right with her doll), Jaime  Rich Vining from Friedland Vining commented “It’s all good. She has been a great conversation starter for me already!”

Kudos to INTA for facilitating programming that assists young professionals. Now… back to the hordes, er… the meetings…

Is “i” Passé? What the Apple Watch Is Telling Us About Technology Branding

Posted in Branding

shutterstock_268287902Anyone who knows me at all knows that I suffer from a terrible affliction called “early adopter syndrome.” I had a cell phone when it really was more of a brick with a speaker and the first smartphone, I can tell you, was not terribly smart at all. There was a lot of staring at the screen waiting for it to bring up a website or a low res photo… As a result of my affliction, there is a veritable cemetery of old devices at my house, all acquired soon after launch.

So now I’ve been hit again – this time with Apple’s… iWatch, er… the Apple Watch. What is that thing called? Officially it’s the “Apple Watch.” A simple name. All business, elegant design, understated but direct. The name fits the device. Just a watch – but it’s not just a watch right? It’s the Apple watch. It’s about as much of a watch as a Tesla vehicle is just a car. Why is a company that has invested so much in the “i” prefix to connote that its devices are “new,” “more,” and “unique” suddenly reverted to referring to its super integrated wrist candy as a mere “watch”? Continue Reading

How Much Would You Pay To Not Suck?

Posted in Marketing, Reputation Monitoring, Social Media, Trademark

shutterstock_244812262 (2)Trademark owners are in the midst of another ‘think’ about the best way to protect and preserve their reputations online.  Specifically, beginning on March 30, 2015 the Sunrise Period opened for brand owners to fork over $2499 for domain names that end in .sucks. This $2499 payment is necessary annually to keep yourbrand.sucks from the clutches of an unhappy customer who might use it to make a career out of publishing any material they wish (fair, unfair or otherwise) about your company, or if you are celebrity – about your performance or personal  life.  To add insult to this expensive injury, after the end of the Sunrise Period, pretty much anyone (other than the brand owner) can pick up the same domains for $9.99 making the barrier to entry for complainants rather low.

As reported by The World Trademark Review and others, the CEO of .sucks registrar Vox Populi, John Berard, claims that intent of the apparently inapt pricing scheme is to encourage brand owners to engage with consumers.  By making the price high, there will be less warehousing of domains and some brand domains will find their way into the hands of people who will engage meaningfully with brand owners.

So far, Apple, Hersheys, Monsanto, Citigroup and Kevin Spacey are among those who have decided that they would rather pay than suck, suggesting that at least these brands don’t believe that all commentary will be fair if they allow the market to engage with them via use of .sucks.shutterstock_102366136

The idea that brand owners ought to engage with customers in meaningful fora is respectable enough.  But you have to question the unbalanced price for entry or whether the rules of engagement ought to be set by a private, profit-seeking company in a scheme that, by its very design starts by tarnishing and diminishing a brand with a provocative label before any open conversation can even occur.   One wonders what the going rate could have been to purchase a .discuss or .critique domain.

The IP community is having none of it, and, in an interesting twist, on March 27, 2015 the Intellectual Property Constituency (“IPC”) of ICANN (the entity charged with technical coordination of the domain name system) complained to ICANN about what it termed the predatory pricing by Vox. In particular, the IPC contended that the pricing constituted a breach of Vox’s contract with ICANN and ICANN’s existing policies. In response, On April 9th ICANN threw the dispute to the FTC and the Canadian Office of Consumer Affairs asking each for an assessment on whether Vox’s pricing scheme or business “violat[es] any laws or regulations enforced by [their[ respective offices.”

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Trademark Misperceptions Revealed By Reaction to Redskins Decision

Posted in Branding, Disparagement, Licensing, Trademark

  I can’t define disparagement, but I know it when I see it…

On Wednesday, June 18, 2014 the Trademark Trial and Appeal Board, the judicial body that provides review to all Federal trademark filings and disputes relating to such filings, released its second decision to CANCEL the trademark registrations owned by Pro-Football, Inc. and used by the National Football League’s Washington Redskins football team.  The decision is interesting for many reasons, legal, political, and socio-cultural.  But to me the most bloggable angle is how the media has exploded about the decision in the last couple of days, often misreporting the facts (and the law) and suggesting odd conclusions that purportedly flow from the decision.

CNN proclaimed: “If you want to start selling T-shirts with the Washington Redskins’ logo without permission, you may be in luck.”  This unsubstantiated assertion was repeated in other media outlets including Ad Age, which suggested that losing the registrations meant everyone could sell branded items without “fear of reprisal.”

First.  False.  If the decision of the Office stands, the Redskins team, and Pro-Football will still be able to sell their wares and stop others from doing so.  Thousands of unregistered trademark owners know this because they exercise those enforcement rights every day.  True, it might be harder to enforce those rights – but no one should believe that Pro-Football won’t continue to collect license fees or be able to obtain legal redress if others use their marks without authorization.

The media frenzy over the decision continued when conservative media outlets such as Breitbart and Glenn Beck accused the U.S. government of violating constitutional free speech rights, with Beck bemoaning “[a]re we living in America anymore?”  The ruling of the Board has no bearing on constitutional rights.  In fact, ironically, it is because we are living in the U.S., that every one of us can continue to use the “r” word freely if we want to– even Pro-Football– all because of the Constitution and the First Amendment.

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Privacy and Big Data

Posted in Privacy

The Noise About Privacy: Is Big Brother Watching, Or Is He Just the Most Compulsive Hoarder of ‘Random’ on the Planet?

On May 19 CNNMoney’s Jose Pagliery published a provocative piece: “What you really accept to when you click ‘accept’“–an exposé on the privacy policies of 18 of the most popular websites and mobile apps.  The article shines the klieg lights on one of the dirty little secrets of consumer internet usage– that online privacy policies are ephemeral, dense, rarely read, one-sided and, sometimes, over-reaching.  Pagliery infers from these conditions that most companies care little for a user’s privacy and want nothing more than to collect the maximum information and use it in any way that increases the bottom line.

At the risk of sounding defensive, I’d say that conclusion is largely unsupported and pretty far from accurate for most web-based companies.  In fact, the density and vagueness of privacy policies often is caused by a variety of competing pressures faced by online companies.  Varied international laws and regulatory schemes applicable in different jurisdictions to different kinds of data create part of the problem. There is no single or baseline set of standards for privacy protection and this creates a veritable briar patch of disclosure and processing obligations that can be just plain difficult to manage and articulate in a succinct online policy.  To wit, a dense policy is probably an indication that the company is at least trying to comply.

In addition, the constantly changing business models of any nimble online company can produce thick prose that attempts to cover a plethora of possible activities and a privacy policy that seems to change with the weather.

This circumstance is regrettable and perhaps confusing to consumers– but not necessarily attributable to bad intentions or poor privacy etiquette.

Without a doubt, consumer data is a valuable commodity and many bad actors (and some otherwise reputable companies) will do anything to get their hands on it and sell it or profit from it.  Furthermore, there are still too many companies that don’t adequately attend to data and system security. And, as the ACLU and others have pointed out, the onslaught of the internet of things also is overwhelming our ability to synthesize a regulatory model that will protect us from collection and misuse of personal data. Continue Reading

Intellectual Property: Balancing Exclusivity and Access in a Crowd Sourced, User-Generated World

Posted in Authorship, Copyright, Fair Use, Functionality, Information Law, Inventorship, Patents, Social Media, Trademark

You Can Trademark That?  They Can Own What? Who Knew?

There are many reasons we have IP laws – but primary among them is to encourage creative types like artists and inventors to profit from their efforts by way of royalties or exclusive rights.  To encourage those efforts, the intellectual property laws give authors and creators a relative monopoly over something they’ve created – a trademark, an invention, a script, a computer program, etc.  It’s like society is saying “you made it, so you can own it – at least for a while…”

But a natural tension immediately presents itself when we grant these exclusive rights.  Our culture wants to embrace, use and assimilate all that is cutting edge and new without having to ask for permission.  We take – no, we borrow Pharrell Williams’  “Happy” riffs and make them background music to our YouTube® videos of our cats and our dogs.  We expropriate “just a” screen capture from the Godzilla movie and create e-cards or embed them on our Facebook® pages.  Our post-90s, crowd sourced, media-centered sensibility has created this “if it’s out there it must be free” (or “it wants to be free”) ethos – right?  Share and share alike.  Aren’t we all better off that way?

As an IP lawyer I’m constantly whip-sawed by one client’s desire to obtain exclusivity on a new twist to an old theme and the next one’s demand to squeeze its use of someone else’s IP into the “fair use” category.  It’s apparent that we are a culture that is as enamored of ownership and exclusivity as we are of borrowing the next cool thing that can be digitized and copied, and integrating it into our day-to-day.  How do we balance those competing forces? That’s what I do for my career and what I want to explore with this blog…

Some recent examples of ownership versus free access are illustrative of the disconnect between the common ethos and the laws that are meant to encourage creative endeavors.  These skirmishes also demonstrate how complicated the analysis can get for people seeking to fence off their efforts from misappropriation.

There has been ample discussion lately of Google trying to protect GLASS as a trademark.  While lay people view Google’s efforts as an unfair attempt to own a common word, the legal battle is much more nuanced.  In fact, Google’s inability to obtain the mark for itself is primarily because someone else (actually several people) got to the trademark office before Google and claimed rights in the word GLASS.  Interestingly, any entitlement to the word as a trademark has already been decided in favor of granting a property right – as long as the person asking doesn’t use the mark on glass itself.  That seems counterintuitive to non-lawyers who might think only truly distinctive words or logos should be protectable.

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Domain Name Offer: Helpful Service, or Marketing Scam?

Posted in Domain Names, Marketing, Trademark

Last week I blogged about a common deceptive technique used by some publishers around the world that send apparently official invoices to trademark applicants in the hopes that people will reflexively pay outrageous sums for a listing of their brand in a catalog few will read.

I wanted to follow up on that post and summarize another common scam that befalls trademark owners and applicants.  I get an inquiry from a client at least 2-3 times per month:

“Is This Domain Name Email Legitimate?”

The ruse works likes this: Trademark owner applies for a trademark in the U.S. or with another office in another country.  Information about the mark and the owner is publicly available to scammers through simple searches.  The scammer sends an email to the trademark owner purporting to warn the mark owner of the ill behavior of a potential domain name squatter.  Below is an actual email received recently by a client.  I have changed the names in the email to avoid any embarrassment of the recipient, but I otherwise have left the text, including the grammatical errors of the original, intact.

Dear CEO/Principal,

We are the department of [Domain Name] Service in China. Here I have something to confirm with you. We formally received an application on May 13, 2013 that a company claimed “ACME PLANETARY DOMAINS” were applying to register “YOUR MARK” as their Net Brand and some “YOUR MARK” Asian countries top-level domain names through our firm.

Now we are handling this registration, and after our initial checking, we found the name were similar to your company’s, so we need to check with you whether your company has authorized that company to register these names. If you authorized this, we would finish the registration at once. If you did not authorize, please let us know within 7 workdays, so that we could handle this issue better. After the deadline we will unconditionally finish the registration for “ACME PLANETARY DOMAINS” Looking forward to your prompt reply.

Best Regards,

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TM Owners Beware: Potential IP Scammers Are In Our Midst

Posted in Trademark

Scam AlertThere are few things more annoying than the feeling that you have been duped into paying for something that you neither need nor want.   IP owners, and particularly trademark owners, are common targets for scammers seeking to obtain fees for bogus, unnecessary or questionable services offered at outrageous prices.  No doubt these scams work because people are busy – but the notices also are steeped in what looks like official language, may appear to come from official governmental auspices, and seem to suggest that the fees cover “renewal,” “registration” or “publication.”  These activities are all items that IP owners are accustomed to paying for, so when they see notices requesting payment (rather than merely soliciting interest in a service) they tend to pay the invoice rather than ask questions about the content or source of the purported services.

Here’s how it works.  A trademark owner files to protect its mark in the U.S. or abroad.  They might use a law firm for that service or file directly.  Regardless, information about the applicant and the mark is publicly available through the online database maintained by the U.S. Trademark Office (or other international offices).  The purported scammer service provider picks up the public information about the applicant and the mark, and then sends a notice to the applicant offering what looks like a registration service, a renewal service, or possibly suggesting that there is a publication fee due for the application.

The notice from the Worldwide Database of Trademarks and Patents is a typical example.  The communication looks very official and suggests that the service is a “renewal” and cross references the underlying U.S. federal trademark registration.

A similar notice from the United States Trademark Maintenance Service references statutory protections under the  “United States Trade Marks Act” [sic] and, if you read carefully enough, requests payment of fees to “watch” the mark. Continue Reading

Branding, Politics, Monetization and Presidential Consents. Some Musings…

Posted in Branding, Marketing, Trademark

As the political season in the U.S. heats up and the campaigns continue to hone their messages, the branding of the campaigns and the candidates becomes more visible to a larger portion of the U.S. electorate.

Political campaigns are entertaining and instructive fodder for thinking about the power of branding since, after all, they are the genesis for all things “swag.”  Political messaging has provided us with a litter of campaign pins, bumper stickers, mugs and key chains and other give-aways meant to help spread the essential messages of the candidates.   These branded collectibles are the archaeological evidence of each campaign’s attempt to sway voters with some essential pith or short message conveyed in words and images.

Each of the buttons to the left had an explicit message, coupled with an express or subliminal message.  McGovern was for women, Ike and Dick had a personal commitment to you, Hillary Clinton was Rosie the Riveter, working for change…

What of this year’s imagery?  The Romney campaign has adopted a simplified branding consisting of a red, white and blue triple “R” design (Romney, Ryan, Republican?) which is variously used as part of Romney’s name, and as a stand alone logo at the Romney website.

When coupled with his name and that of vice-presidential nominee Paul Ryan, the message is often accompanied by the tag line Believe in America.  The messaging is clean and simple, and probably is meant to suggest (in addition to the standard patriotism evoked by the colors) the elision of excess in favor of expediency and simplicity and getting back to so-called “core” American values.

That said, Romney’s logo has been likened to the Rolls Royce® image, as well as the Aquafresh® toothpaste imagery—neither of which is probably indicative of the underlying themes the campaign is outwardly attempting to evoke.

The Obama campaign continues to use the so-called  “rising sun” logo with the red, white and blue flag imagery from 2008.   Obama’s 2008 message, “Change We Can Believe In,” has been retired in favor of the simpler, and perhaps less lofty exhortation — “Forward” in 2012.  The Obama campaign also is using variations on “Generation Forty Four,”  “GEN 44,”  “Greater Together” and the 2012 logo shown below.  The Gen44 message is meant to engage the under 40 crowd in supporting the 44th president’s re-election campaign, while “Greater Together” seems a clear attempt to suggest the campaign’s emphasis on inclusion and diversity. Continue Reading

Red Shoes… The Angels Want To Wear My (Monochrome) Red Shoes… (and now they can)

Posted in Aesthetic Functionality, Color Marks, Fashion, Functionality, Litigation, Trademark

I can hardly think of Christain Louboutin’s (“Louboutin”) “red soled shoe” case, about which I previously blogged, without hearing Elvis Costello’s Red Shoes in my head.

Angel in Red Shoes

…Oh I used to be disgusted
and now I try to be amused.
But since their wings have got rusted,
you know, the angels wanna wear my red shoes.
Red shoes, the angels wanna wear my red shoes...

For awhile, at least in the Second Circuit, we were wondering who could sell red shoes and/or whether angels might have to go barefoot for awhile…  But now we seem to have some clarity on the issue.

To review, Louboutin has been fighting since 2011 to stop Yves St. Laurent (“YSL”) from copying his trademark red-soled shoes.  In what had been a somewhat surprising opinion, the Southern District of New York had denied Louboutin’s request for an injunction against YSL’s monochrome red shoes (that included a red sole) last August, on the grounds that color was per se functional as applied to fashion items.  We’ve been waiting for months for Louboutin’s appeal to reach a decision, which finally came down on September 5, 2012  from the Second Circuit Court of Appeals.

My earlier ruminations on this case had really focused on the older theory of “color depletion” as a possible rationale for disallowing Louboutin’s claim to exclusive rights in a red outsole — and what an affirmance of the district court’s ruling might mean for that theory.  But on appeal the Second Circuit reversed and held that, consistent with prevailing precedent, single color marks are not per se aesthetically functional — and therefore are protectable.  The court went on to say that Louboutin’s contrasting red sole has obtained secondary meaning (meaning people recognized the contrasting red outsole as an indicator that the shoe came from Louboutin).  Thus, Louboutin, according to the Second Circuit, owns exclusive rights in the color red as applied to an outsole where said outsole is in a contrasting color to the remainder of the shoe.  A win for Louboutin?  Well sort of… Continue Reading