Lex Indicium | Trademark & IP Law

TM Owners Beware: Potential IP Scammers Are In Our Midst

By Deborah J. Peckham on May 21st, 2013 Posted in Trademark

There 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…

By Deborah J. Peckham on September 26th, 2012 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 44^th 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)

By Deborah J. Peckham on September 14th, 2012 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.

…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

Should Colors Be Protected as Trademarks? If Not, Should Letters? How Shoe Soles and Mobile Apps Might Be Related

By Deborah J. Peckham on July 16th, 2012 Posted in Fashion, Trademark

One of the pleasures of practicing law, perhaps especially in the technology space –is in observing how technology trends and legal theories intersect, ebb and flow over time. Many people in the trademark world watched excitedly over 17 years ago when the U.S. Supreme Court, in Qualitex v. Jacobson, determined that single colors could be protected as trademarks—as long as the color, as applied to the relevant products, was not merely functional. Previously, some feared that granting trademark protection to single color (even if the color was non-functional) would be anti-competitive because colors were in short supply. Hence, no one should own one color exclusively. The Qualitex ruling seemed to provide closure on the issue by focusing the analysis on the functionality of the color shade rather than the potential for that color to be removed from the designer’s pallet.

But recently, as the trademark community knows, the Second Circuit Court of Appeals took up the appeal in Louboutin v. Yves Saint Laurent, a case that revisits the protectability of color, this time as used to identify a brand of shoes. The District Court opined that the use of red on a shoe sole (or on any fashion item) was “functional” by its very nature and that granting a monopoly to color on a fashion item was outside the bounds of trademark law protection. The District Court characterized the impact of protecting colors in the fashion industry as one encouraging anti-competitive color grabs:

…Louboutin’s claim would cast a red cloud over the whole [fashion] industry, cramping what other designers could do, while allowing Louboutin to paint with a full palette. Louboutin would thus be able to market a total outfit in his red, while other designers would not. And this impediment would apply not just with respect to Louboutin’s registered ‘the color red,’ but, on its theory as pressed in this litigation, to a broader band of various other shades of red which would be available to Louboutin but which it could bar others from using.

Unpacking that argument, it seems that the District Court’s real concern is not so much that the colors are functional in the fashion industry, but that designers’ pallets will become incrementally limited as each designer lays claim to a shade. That sounds a lot to this blogger like we are revisiting color depletion as a basis for declining to protect single color marks. And that, in turn lead me to consider how a re-emergence of depletion theory might impact other industries who seek to use common and limited elements (such as letters) as trademarks. You can read more about that here.

Apple’s Trademark Ownership Woes Resolved

By Deborah J. Peckham on July 2nd, 2012 Posted in Litigation, Trademark, Trademark Clearance and Searching

As of July 2, 2012, the World Trademark Review and its blogger, Helen Sloan, are reporting that Apple has agreed to pay $60 million to Proview Technologies for the IPAD mark in China. As I previously summarized in an earlier post, Apple thought it had already acquired all the rights to the IPAD mark, but it learned after a transaction with Proview’s sister company that it had not (allegedly) obtained a complete assignment in China from the record owner of the rights there. Apple’s proffered settlement is quite a bit larger than the $16 million it was rumored to be offering, but given the popularity of the Apple device and the potential market in China, the sum is a worthy investment.

Lessons from Apple’s experience include:

1) Diligence needs to be thorough. Mixed ownership of assets in related, sister and subsidiary names is not uncommon. Making sure the papers are signed by the right entity is critical to finalizing a deal and getting genuine closure on the acquisition of any intellectual property right.

2) Negotiating through an acquisition subsidiary can be perilous. Apple used a separate corporation to purchase rights to the IPAD mark in various countries — a method that is rather common among large companies to fend off demands for a high price when sellers know that they have a deep-pocketed purchaser. But Apple’s experience with Proview demonstrates that, even though perfectly legal, such tactics can lead to disputes later. Of course, Proview’s complaints in this regard were handily dismissed in the U.S., but at what cost to Apple in reputation and legal fees? In the wake of Apple’s experience, it’s worth considering whether using an opaque acquisition sub really saves the buyer anything and/or whether a fair and open dialog might have avoided the stress and cost caused by Proview’s lawsuits. Certainly there will be times when using such tactics is worthy. But a careful strategy will include consideration of alternate methods and the pros/cons of using such a method.

3) Clearing rights early and often can be critical. Although Apple surely began its clearance early, a common mistake made by some companies is not clearing trademark rights ahead of product launch. Companies too often leave clearance to the last minute or only clear rights nationally — even though the marketing strategy is global. There are many rationalizations for this approach, not the least of which are the time and cost associated with a global review of rights. But in reality, if product development teams and marketers get ahead of the trademark clearance process in advance of launch, they almost always will avoid costs down the road, whether it be the cost of fending off unnecessary lawsuits or the exposure caused by the need t0 acquire rights from third parties. Generally, those clearance procedures should be as geographically broad as any planned market penetration at least 18-36 months into the future.

Ephron’s Legacy: A Message for Women Authors, Inventors and Creators

By Deborah J. Peckham on June 27th, 2012 Posted in Authorship, Copyright, Inventorship, Patents

Nora Ephron. Photo Shutterstock.com

Last night, Nora Ephron passed. Already the internet and blogosphere are filled with this news and discussion of the loss of an incredibly prolific, comical and impactful artist. While she is associated with a broader feminist agenda, her real contributions were in giving comic and touching voice to life experiences that happened to be shared primarily by women. Her clarion call to women, especially younger women, to “…be the heroine of your life, not the victim,” might have been her most poignant gift.

But what, you may well ask, has Ephron’s passing to do with intellectual property or the law of information? Well everything and nothing at once… I was once asked to opine upon the intersection of intellectual property protection and gender. I was flummoxed by this question at first, feeling that certainly there was gender blindness when it comes to IP rights and their exploitation. But if you scratch beneath the surface — as Ephron always did — the story is much more complicated. Continue Reading

New Top Level Domains – Hype, Hope or Horror?

By Deborah J. Peckham on June 19th, 2012 Posted in Domain Names, Social Media, Trademark

On June 13, ICANN announced the list of applicants for 1,930 proposed new top level domains. For the uninitiated, top level domains, or “TLDs” are the portion of the domain that appears to the right of the dot. Since the web’s beginning as a commercial venture, most of us have been accustomed to .com, .biz, .info, etc., and the cc (country code) TLDS such as .US, .UK etc. There are approximately 280 TLDs existing today (excluding internationalized TLDs and a few other “test” TLDs on ICANN’s radar).

For several years, ICANN, with the advice and comment of various constituency groups, has worked toward a system of identifying new TLDs in order to expand the top level domain name space, and (according to ICANN) encourage and enhance competition. Late last year, ICANN began receiving applications from those interested in being registrars for new, proposed TLDs. The list of applicants and their proposed offerings includes “.sucks” “.amazon,” “.science,” and “.like.” among others. If all of these TLDs ultimately come into being, it would expand the top level domain name space 8 times.

Media attention to the prospect of so many new domains has been somewhat schizophrenic, with some applauding the new direction ICANN has proposed, and others criticizing the vast and apparently overnight expansion as potentially giving way to chaos — particularly for IP and trademark rights holders who have legitimate concern that their enforcement budgets will now have to increase eightfold in order to match the new glut of opportunity for squatters, infringers and counterfeiters. To my reading, the best response has been Letterman- Style Top Ten Domains Not Applied For published by Forbes.. Continue Reading

The Olympic Symbols and Protecting Sport’s Biggest Brand — The London 2012 Games

By Deborah J. Peckham on June 15th, 2012 Posted in Marketing, Social Media, Trademark

Perhaps no other endeavor has created more community among humankind than sport. It engages us, it inspires us, and it moves entire communities to do all sorts of unusual things, including mass face painting in the local team colors, and the emblazoning of team trademarks and colors on city buildings and structures in support of the local protagonists. Can those activities be harmful to brand protection?

As a trademark lawyer I can offer the observation that branding and sport are as intertwined as any two fields. At least since the early 20th century, if not earlier, sponsorship dollars have ensured that sport could continue and rise to the world stage through radio, then television, satellite, cable and now onto mobile devices for the upcoming 2012 London games– and why not? Across all cultures we seem to have an unending thirst to see whether this one will triumph or that one will fail. But for spectators and business owners it often comes as a surprise that sports brands, and in particular the trademarks associated with famed events such as the Olympics, are owned and controlled –even to the exclusion of the participants– by stake holders whose primary goal is simply to monetize the brand.

In the case of the Olympics, the five rings, the very words “Olympic”, “Olympics”, “Olympiad” and the ancient tag line “Citius Altius Fortius” are not just owned and controlled by the various Olympic committees, but they are protected by a web of law and regulation that, boiled down, severely restricts not only the use of the brands in promotion and advertising but also who can actually refer to the brands and under what circumstances.

Mass. State House Dressed in Boston Celtic Green

Interestingly, protection of the Olympic marks has been the subject of international treaty and national legislation for decades. In 1981, several nations (not the U.S.) entered into the Nairobi Treaty on the Protection of the Olympic Symbol. That Treaty identifies the five-colored olympic rings as the ultimate symbol of the games, and requires nations that sign the treaty to invalidate any attempt to register that symbol and to take steps to enforce against illicit commercial use of the symbol, other than on behalf of the International Olympic Committee. Continue Reading

*LEX INDICIUM

By Deborah J. Peckham on June 15th, 2012 Posted in Information Law

Why or what or who is Lex Indicium? Roughly translated, and with apologies to the classical scholars who may happen upon this blog, Lex Indicium means “law of information,” or “law of data” in Latin. In a broad sense, the “law” that applies to data, and/or rights in data or information is what this blog seeks to explore. In my law practice, I might say that I am an “intellectual property lawyer, who specializes in trademarks, copyrights, and information law.” But my passion and interest have been drawn to this craft by fundamental questions – “who owns or should own information—any information, be it text, raw factual data, art, etc? Should it be free or should it be exploitable and monopolized and monetized? And which answers lead to the greatest good for society?”

Since I began practicing law almost 20 years ago these questions really have been asked repeatedly in the context of one burgeoning cultural phenomenon known as digital technology—which technology has had one primary (and largely freely available) medium– the internet. But the questions themselves and the issues that flow from them are ancient, stretching back to ancient times. This, combined with my own background in classical archaeology, form the bases for selection of a Latin name as the name for this blog. I hope we can use this blog to explore these topics together.

Who Owns This Mark? Apple’s iPad Trademark Rights Threatened By… Apple?

By Deborah J. Peckham on June 12th, 2012 Posted in Trademark

Apple Computers, a company that is perennially the subject of stories about its successful branding strategies, has found itself knotted in a thorny trademark dispute – one partly of its own making and surely one that might have been avoided. Simply put, Apple negotiated a purchase of trademark rights from party A, when party B was the record owner of at least some of the rights in question. But while the blogosphere and media have questioned whether Apple exercised simple diligence in the deal, the dispute really (in this poster’s view) centers on more complex questions of corporate disclosure and, possibly, cross cultural undertone.

As will not surprise branding professionals, when Apple first committed to the iPad® trademark for its new tablet in 2009, it learned that in some countries the mark already had been registered by others. In a move that is rather common among successful international companies, Apple created a new company (not named Apple) to, perhaps among other objectives, negotiate the purchase of conflicting trademark rights around the world so that it could safely announce its new device globally without threat of infringement claims. While we don’t know for sure, it is suspected that Apple chose this stealth route in part because it did not want the trademark registrants to know that the negotiations were really with Apple Computer. No doubt such disclosure would embolden a potential seller to demand a substantially higher purchase price than it might otherwise require for the transfer.

Apple, through its stealth acquisition sub, purchased rights to the iPad mark in China, Hong Kong and eight other countries from a Taiwanese company called Proview. However, an affiliated Chinese company, Proview Shenzhen, now claims that it owns the trademark registrations in China (rather than Proview Taiwan), and that Proview Taiwan was not authorized to sell those registrations to Apple. Interestingly, the primary negotiator for Proview Taiwan was also the principal of Proview Shenzhen. Nevertheless, the Chinese company refused to stand by the sale of the Chinese rights. Continue Reading