India Revises Trademark Rules
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India’s new Trade Mark Rules 2017 are effective March 6, 2017. These Rules, which replace the Trade Mark Rules 2002, will streamline and simplify the processing of Trade Mark applications in India.  Some pertinent features of the Rules are as follows:

  • Number of Trademark Forms have been reduced from 74 to 8.
  • To promote e-filing of TM applications, the fee for online filing has been kept at 10% lower than that for physical filing.
  • Based on stake holders’ feedback, the fees for Individuals, Start-ups and Small Enterprises have been reduced from that proposed in the draft Rules – i.e. only Rs 4,500 as against Rs 8,000 for e-filing of TM applications proposed at the draft stage.
  • Hearings through video conferencing has been introduced.
  • Number of adjournments in opposition proceedings has been restricted to a maximum of two by each party, which will help dispose of matters more efficiently.
  • The examination time for a TM application has already been reduced from 13 months to just 1 month in January 2017; this is despite a 35% jump in TM filings in 2015-16 vis a vis the previous year.

The new Rules should give a boost to the Intellectual Property Regime in India.  As a Member of the Madrid Protocol as of July 2013, filing trademarks in India has never been easier.

Contact Vivek at JAYARAM LAW (vivek@jayaramlaw.com) if you are interested in protecting your brand in India, the United States, or elsewhere around the world. We advise and counsel clients on critical trademark matters, and enforce those valuable marks against infringers around the world.

Jayaram Law Obtains Dismissal of Federal Case On Behalf of Client “Sugar” Shane Mosley
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Hitz Entertainment Corporation filed a lawsuit in the Northern District of Illinois against former world lightweight and welterweight champion boxer Shane Mosley, as well as his promotion company, GoBox Promotions, Inc., for tortious interference with a contract and tortious interference with prospective economic relations arising out of a boxing event promoted by Mosley and GoBox in Inglewood, California on August 29, 2015.  Mosley and GoBox filed a motion to dismiss for lack of personal jurisdiction.  Following nearly a year of extensive briefing and jurisdictional discovery, the Court today issued an order and opinion granting Mosley and Gobox’s motion, and dismissed the case for lack of jurisdiction.

HEC’s argument that GoBox is subject to general personal jurisdiction in Illinois boils down to essentially one point: that GoBox produced the Bout and then contracted with several third parties to market and distribute the Bout nationwide, including in Illinois, and that in doing so it submitted itself to the jurisdiction of Illinois (and presumably every other jurisdiction where the fight was shown).  GoBox had distribution agreements with several companies, each of which distributed the Bout, for a fee, to customers in Illinois. HEC alleges that as part of one of these distribution agreements, the distributor sent “blast” emails to people nationwide, some of whom were in Illinois, and aired commercials for the Bout nationwide, including in Illinois. These distribution agreements differed from typical boxing match distribution agreements in that GoBox maintained ownership of the copyright of the telecast, whereas in a typical arrangement the telecast of a boxing match is produced by a distributor or other third party, who pays the promoter a fixed licensing fee but the distributor owns the copyright for the telecast.

The Court concluded that these contacts with Illinois are not sufficient to support general personal jurisdiction over Mosley or GoBox.   The Court reminded that general personal jurisdiction is found where a party has engaged in systemic and continuous activity in the forum state such that it approximates physical presence. The Court held that the fact that GoBox contracted with a number of distributors who distributed and marketed the bout in Illinois does not establish continuous nor systemic activity in the state. Rather, the Court found that these facts demonstrate discrete and limited contact with Illinois.

Mosley and GoBox were represented by Vivek Jayaram, Johanna Hyman, Abe Wehbi, and Doni Robinson.

JAYARAM LAW GROUP, LTD. is a law firm representing innovators in intellectual property matters, corporate law, and commercial disputes.

The Importance of Running a Trademark Search
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Before you use or attempt to register a trademark, it’s critical that you conduct a trademark search.   Why?  Well, there’s really two primary reasons (and a host of ancillary ones):

First, you want to ensure that you’re not infringing upon the rights of any third parties.  If you fail to conduct a search, use an infringing mark, and then get sued for it, a Court or jury might find that you’ve been careless in the use of your mark, and you might get hit with a substantial award for damages.  This is an expensive — and often times fatal — proposition for a young company or startup venture.

Second, even if that doesn’t happen, you will likely have to change your mark midstream if it’s found to be infringing on another mark.  This means that all the  time, effort, and resources spent promoting your infringing mark in the time that preceded the infringement action has been wasted.  Some companies confronted with this unfortunate predicament are never able to recover, as the goodwill they’ve worked so hard to build is lost forever since they will be forced to start anew with a non-infringing mark.

Finally, you’ll probably want an attorney to run a search for you even if you’re already using a mark.  Aside from the reasons above (which apply to anyone using or contemplating use of a mark), you should run a search to see if anyone’s infringing on your mark.  If you fail to run searches on a regular basis, you may be waiving your right to enforce your mark against potential infringers.

For many companies, their brand is their most valuable asset.  Failing to follow relatively inexpensive best practices could result in the unnecessary loss of a substantial corporate or personal asset.

Jayaram Law Group, LTD. advises and counsels companies from around the world on trademark matters.  Contact us to discuss your marks.  

Trade Dress Enforcement
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An issue in trade dress enforcement is the ability to protect a product that could be viewed as unable to be legally protected. In a case before the United States International Trade Commission: In the Matter of: Certain Footwear Products (2015), Administrative Law Judge Charles Bullock ruled for the shoe manufacturer Converse when they sued Wal-Mart, Sketchers and other companies for selling non-genuine versions of the Chuck Taylor shoes. The commission, in Judge Bullock’s ruling noted the shoe was well-known and that the unnamed shoe which resembled it infringed on three trademarks registered to Converse – its front rubber bumper, rubber toe cap and stripes.

The main dispute in this ruling centered on whether Converse could protect these shoes by having a trademark if others had been selling this same shoe with a similar design for a significant amount of time. This ruling, however was only initial and did not contain a full explanation, and currently needs full ITC approval. The holding supports Converse’s assertion that design features of common products sold by others but developed by the trademark holder can be protected.

It is important to also note that Converse is still involved in litigation with other companies on this issue and depending on how their litigation in the District Court is resolved could have a significant impact on the case. Converse has successfully settled with many of their adversaries on this issue such as Ralph Lauren, H&M and Fila. However, they are still involved in pending litigation with New Balance, the manufacturer of the PF Flyer Sneaker-which looks similar to Converse’s Chuck Taylor shoes, as well as Wal-Mart and Sketchers. This case may have a significant impact on the level of protection for shoe and clothing design, depending on the outcomes of the litigation.

This case teaches practitioners that design features of a well-known product which is widely manufactured by other producers can be protected under US trademark law, even though other corporations had been selling that product for some time.

Trademark Law and Initial Interest Confusion
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An important concept in trademark law is initial interest confusion. Initial interest confusion occurs when one wrongly thinks a company filters a shopper toward a product that they were not originally searching for, when they searched for a different, registered product. In the case of Multi-Time Machine Inc. v. Amazon.com and Amazon Services LLC, (2015) The 9th Circuit Court of Appeals reversed its prior ruling and held that Amazon was not liable for infringement based on this mismatch.

In this case, a watch company, Multi-Time-Machine manufactured the high-end MTM Special Ops watch. When consumers searched for MTM Special Ops Watch on Amazon they were directed not to the MTM watch, but rather to other similar products including their competitors’ watches. MTM sued Amazon for trademark infringement, under the theory of initial interest confusion, because when consumers searched for the MTM watches, the results included other companies’ products. MTM was concerned these consumers would think the competitor’s watch was an MTM watch and purchase from a competitor because of the search results. MTM argued that Amazon was infringing on their trademark through their search functionality because the consumer is not directly told that MTM’s watch and the non-MTM watch are not interrelated and thus, sales that may have gone to MTM went to their competitors.

In a 2-1 appellate court ruling in a rehearing, the 9th Circuit ruled in favor of Amazon stating that search results that display a competitor’s product when searching for a specific product does not rise to the level of “likelihood of confusion” to constitute trademark infringement. This ruling is based in part on the “relevant reasonable consumer” of a high end product being familiar with online shopping and therefore would be expected to take basic steps to determine what product they wished to purchase based on Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171 (9th Cir. 2010). Also, the court ruled based on the clear labeling of the watches since the product’s brand names were clearly labeled the consumer was not misled by Amazon’s search results.

This case teaches practitioners that when a search engine is used to sell a high-end product that the owner of the search engine is not liable for trademark infringement under the doctrine of likelihood of confusion. Since courts have held the consumers of high-end products have basic familiarity with online purchasing and because the products are clearly labeled, the search engine did not mislead consumers. Thus, practitioners should note that search engines, if operating in good faith while selling high-end products are unlikely to be liable for trademark infringement based on this doctrine.

 

Tiffany v. Costco Wholesale Corp.
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An important concept in trademark law is whether a brand whose style is very well known can be considered generic and thus not subject to trademark protection. This question was presented to the US District Court for the Southern District of New York in Tiffany v. Costco Wholesale Corp. (2015)

 

In this case, Tiffany sued Costco because Costco used the terms Tiffany and “Tiffany Setting” to describe rings they offered for sale. Costco argued that the terms were generic and used within the parameters of fair use. Tiffany was not successful in their motion for summary judgment as the court held that there was a factual dispute over how the terms “Tiffany” and “Tiffany Setting” were viewed by the public. To address this, Tiffany used a survey showing that 4 out of 10 people believed that in displays similar to Costco, Tiffany was used as a brand name and 3 out of 10 others surveyed, thought it was used as a descriptive and a brand name. Costco argued that Tiffany’s survey methodology was flawed and used linguistic experts to show that the term Tiffany was the only English word to describe the type of ring setting used. Their experts further stated that the term Tiffany was used in a generic way for some time. The District Court however disagreed and held that Costco’s advertising the rings as Tiffany rings did satisfy the likelihood of confusion test and was also in bad faith. The District Court also held that Tiffany was not a generic term and that the fair use doctrine was not valid here. Since Costco did not have any evidence of whether the mark Tiffany was brand based or generic, the court held that it referred to a specific brand and ruled in favor of Tiffany.

 

This ruling teaches practitioners of the importance of using surveys to show how a mark is viewed by members of the public, and although expensive can provide an excellent resource for showing that a mark is brand specific. Also, this case teaches practitioners that a brand name that is well known by a definitive style to the public is a protectable term and is not generic.

 

An Important Issue in Trademark Law
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An important issue in trademark law is whether one has standing under the Lanham Act to file for cancellation of a mark that was neither used nor registered in the United States. In Belmora LLC v. Bayer Consumer Care AG, (2015) Judge Lee of the Eastern District of Virginia overruled the Trademark Trial and Appeal Board (TTAB) and held that Belmora did not have standing to file the action.

 

Beyer sold “Flanax”, an analgesic, in Mexico and has registered the mark there, but never registered or sold “Flanax” in the US. Belmora sold an analgesic tablet, Flanax in the United States and successfully registered Flanax in 2005. Later on, Beyer asked the TTAB to cancel Belmora’s mark, since Beyer alleged that Belmora was using its Flanax mark to misrepresent its source, violating the Lanham Act. During this litigation, Belmora objected to Beyer’s standing and the TTAB ruled in Beyer’s favor using the Federal Circuit’s liberal threshold since Beyer had an interest in protecting its mark and they would be harmed if Belmora used the Flanax mark to misrepresent its source. Since the TTAB ruled that Belmora was misusing the mark, the TTAB granted Beyer’s request to cancel the mark.

 

When Belmora appealed the TTAB’s ruling to the US District Court for the Eastern District of Virginia, the court examined the case of Lexmark International v. Static Control Components, Inc.(2014) to determine whether a foreign mark that is not used or registered in the US should be granted priority over a domestic mark. The court held that since Beyer did not own an interest in Flanax in the US that could be protected, it would not be Congress’s intention to protect their Flanax mark. The court further held that even if Beyer had an interest in protecting Flanax in the US, they did not definitively show that Belmora’s alleged improper conduct were the cause of Beyer’s economic or reputational damage. The District Court thus reversed the TTAB and ruled in Belmora’s favor reinstating their Flanax mark.

 

This case teaches practitioners that when two companies are using the same mark, for differing yet similar products, but one mark is registered and used in the United States and the other is registered and used elsewhere that the US mark will be given priority.

 

Infringement: An Important Concept in Trademark Law
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An important concept in trademark law is infringement and dilution. In the case of Pinterest v. Pintrips, the US District Court for the Northern District of California ruled that the marks used by Pintrips –“Pintrips” or “Pin” neither diluted or infringed on the registered marks PIN and PINTEREST held by Pinterest. The two companies are engaged in different businesses. Pinterest is a social media platform that allows users to create pins on a virtual pinboard and post, organize and view media through their platform. Pintrips allows users to watch flight pricing and pin trip plans to an electronic board on their site.

 

Based on the 9th Circuit’s prior ruling in AMF Inc. v. Sleekcraft Boats (599 F2d 341, 348-49 (1979)), the Court held that Pintrips use of the term “Pintrips” did not infringe on Pinterest’s rights to “Pinterest” as a registered mark since the two platforms provide differing services, with Pinterest serving as a social media platform and did not provide the booking capabilities of Pintrips. Further, the fact that Pinterest did not definitively show that they or Pintrips planned to compete directly also supported the court’s ruling that Pintrips use of the terms “Pintrips” or “Pin” did not constitute infringement. The court held in favor of Pintrips even though Pinterest had a strong mark and the marks “Pinterest” and “Pintrips” were similar.

 

In their ruling, the court held that Pintrips use of the mark “Pin” was done in fair use because the term was used by Pintrips in a similar way to many other companies as a verb describing virtual attachment. Further, the 9th Circuit held that Pintrips was acting in good faith since they used the term pin to describe the computerized action of linking an item to an online board prior to knowing of the existence of Pintrips.

 

This ruling teaches practitioners that if two companies use the a similar, strong mark in different contexts and differing business models without an aim directly at the mark holder’s business that these actions do not constitute infringement.

 

ENFORCEABILITY OF INDIAN TRADEMARKS IN THE UNITED STATES
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Indian companies with valid, enforceable trademarks under Indian trademark law may be surprised to learn that their marks are not generally enforceable in the United States until they are used in commerce in America.  Thankfully, for those Indian companies and trademark holders seeking to expand their business into the United States (and enforce their marks accordingly), the process is relatively straightforward with the assistance of competent trademark counsel.

As a preliminary matter, any owner of a foreign trademark, including those holding marks in India, should ensure that there are no current uses of their mark – or a mark confusingly similar to their mark – in use in commerce in the United States.  If so, tread carefully; using your Indian mark in commerce in the United States could constitute trademark infringement if another company (with a registered or unregistered mark) is using a confusingly similar name in America.

If, however, your search comes up clean and your counsel advises you to proceed, you should continue by filing an application with the United States Patent and Trademark Office (“USPTO”).  Although registration of a trademark is not necessary to obtain trademark protection (common law rights exist in the US), registration provides the registrant with a number of advantages, including nationwide protection (as opposed to narrow geographic use protection), incontestability, prima facie evidence of ownership, the ability to use the ® symbol, among many others.

To file for a federal trademark registration, an Indian trademark holder needs to disclose its first use “anywhere” (which would include the use in India), as well its first use in commerce in the United States.  The trademark holder also needs to provide a number of other items related to its mark, including a description of the goods or services in connection with which the mark is being used.

About 3-4 months after filing the initial application, a trademark examining attorney will be assigned to the file, and will review the application that has been submitted.  The examining attorney will, if necessary, issue “office actions” noting perceived legal or factual deficiencies in the application.  While these deficiencies can be overcome (and JLG’s offices have overcome numerous office actions on behalf of its clients in the past), any response must be supported by facts and law.  In many cases, these office actions could have been avoided altogether had an experienced trademark lawyer prepared the application to begin with.  Office actions address any number of deficiencies, from likelihood of confusion with an existing registered mark to a refusal due to the genericness or descriptive nature of the mark at issue.

Once all office actions, if any, are overcome, the application is published for opposition, during which time other trademark owners can oppose the application on legal or factual grounds.  After the opposition period has passed, and usually between 6-8 months following the application date, a trademark registration issues.  The date of registration, however, reverts back to the date of filing, so acting quickly is essential when it comes to filing your trademark application in the United States because American trademark law rewards those who file first with senior rights to a junior registrant.

THE LIKELIHOOD OF CONFUSION: INTRODUCTION
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If you are a trademark holder and you believe that someone is infringing upon your mark, you generally need to establish two components in Court to prove that an infringement occurred.  First, you need to show that you indeed have a valid and enforceable trademark.  And second, you need to convince a trier of fact (Judge or Jury) that there exists a “likelihood of confusion” between the infringer’s mark and your mark.  Assuming you can demonstrate that you have a valid and enforceable trademark (often times a heavily litigated issue unto itself), this post will set forth generally the various highly fact intensive legal tests employed and factors considered by Federal Courts in assessing whether or not there is a likelihood of confusion between trademarks.  Future posts will break down these factors and assess them individually.

In the 7th Circuit (Illinois, Wisconsin, Indiana), Courts generally assess the following seven factors: (1) the similarity between the marks in appearance and suggestion; (2) the similarity of the products; (3) the area and manner of concurrent use; (4) the degree and care likely to be exercised by consumers; (5) the strength of the plaintiff’s mark; (6) any actual confusion; and (7) the intent of the defendant to “palm off” his product as that of another. Autozone, Inc., 543 F.3d at 929. Courts may assign varying weight to each of the factors depending on the facts presented. Id.  Moreover, whether consumers are likely to be confused about the origin of a defendant’s products or services is ultimately a question of fact. Id.; see also McGraw-Edison Co. v. Walt Disney Prods., 787 F.2d 1163, 1167 (7th Cir. 1986).

In the 2nd Circuit (New York, Connecticut, and Vermont) look to the following factors: (1) strength of the trademark; (2) similarity of the marks; (3) proximity of the products and their competitiveness with one another; (4) evidence that the senior user may “bridge the gap” by developing a product for sale in the market of the alleged infringer’s product; (5) evidence of actual consumer confusion; (6) evidence that the imitative mark was adopted in bad faith; (7) respective quality of the products; and (8) sophistication of consumers in the relevant market.  Polaroid Corp. v. Polarad Electronics, Corp., 287 F.2d 492 (2d Cir. 1961); Nora Beverages, Inc. v. Perrier Group of Am., Inc., 269 F.3d 114, 119 (2d Cir. 2001).

In the 9th Circuit (California, Hawaii, Oregon, Nevada, Montana, Idaho, and Alaska), Courts consider the followingSteelkraft factors: (1) strength of the marks; (2) the similarity of the marks; (3) the marketing channels used; (4) the proximity of the goods; (5) defendant’s intent in selecting its mark; (6) evidence of actual confusion; (7) the likelihood of expansion of the product lines; and (8) the type of goods and the degree of care likely to be exercised by the purchaser.   See AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 (9th Cir. 1979).

In the Federal Circuit, the Court considers: (1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression; (2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use; (3) The similarity or dissimilarity of established, likely-to-continue trade channels; (4) The conditions under which and buyers to whom sales are made, i. e. “impulse” vs. careful, sophisticated purchasing; (5) The fame of the prior mark (sales, advertising, length of use); (6) The number and nature of similar marks in use on similar goods; (7) The nature and extent of any actual confusion; (8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion; (9) The variety of goods on which a mark is or is not used (house mark, “family” mark, product mark); (10) The market interface between applicant and the owner of a prior mark; (11) The extent to which applicant has a right to exclude others from use of its mark on its goods.  In re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).

Please keep an eye out for future posts discussing these factors in depth in the various Circuits.