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WTC Sues Ironman For Kids for Trademark Infringement

The Tampa-based Word Triathlon Corporation, owner and licensor of the IRONMAN, M DOT, and various Ironman-related trademarks, has sued a San Antonio, Texas company for using the domain name “ironmanforkids.com.”

Beyond the famous IRONMAN trademark, WTC owns the trademark for IRONKIDS and many other IRON-formative marks. My own daughter has done a couple of these IronKids fun-runs before my races. WTC alleged trademark infringement and tarnishment of its reputation. Ironman For Kids apparently seeks donations to help children. WTC likely isn’t complaining of the fact of the charity, but rather that charities outside of its selection were identified as beneficiaries; the World Triathlon Corporation often selects designated charities for certain races, so that one or a few specific charities receive a benefit from one community by design.

WTC had sent a cease-and-desist letter before filing suit, but the recipient refused to budge and instead offered to sell the domain to WTC. Such actions can often prove to be incredibly damaging, as may be considered evidence of a bad faith registration, done merely to extract a premium from a trademark owner.

Often, a UDRP proceeding is a common mechanism for taking down or transferring a domain name. I ran a search through WIPO and FORUM – the two arbitration bodies for UDRP disputes – and found no history of any cases. Thus, it appears that WTC did not seek to have the domain name taken down and transferred, but instead opted to file suit directly.



Acceptable Specimens for a Trademark Application

One of the requirements to be granted a trademark registration with the U.S. Patent and Trademark Office is to establish that the mark is being used in the United States for the goods stated in the trademark application. This requires proving to a Trademark Examiner that the mark is actually being used with a specimen showing such use. This often creates a stumbling block. Not all material that has a trademark on it is acceptable as a specimen. Some types of specimens are improper and will always be rejected. A list of generally acceptable specimens for a trademark application including goods is shown below. This is not an exhaustive list, nor is it entirely reliable; in some circumstances, one of the specimens below will not be sufficient. Hire a local trademark attorney with whom you can talk more about trademark specimens.

  • An acceptable specimen includes a label, tag, or container for the goods, or a display associated with the goods. The terminology “applied to the containers for the goods” means applied to any type of commercial packaging that is normal for the particular goods as they move in trade. Thus, a showing of the trademark on the normal commercial package for the particular goods is usually an acceptable specimen.
  • In most cases, where a trademark is applied to the goods or the containers for the goods by means of labels, then an image of the label itself is usually considered an acceptable specimen.
  • Shipping or mailing labels may be accepted if they are affixed to the goods or to the containers for the goods and if proper trademark usage is shown.
  • Stamping a trademark on the goods, on the container, or on tags or labels attached to the goods or containers, is generally a proper method of trademark affixation. The trademark may be imprinted in the body of the goods, as with metal stamping; it may be applied by a rubber stamp; or it may be inked on by using a stencil or template. When a trademark is used in this manner, photographs or facsimiles showing the actual stamping or stenciling are acceptable as specimens.
  • Displays associated with the goods essentially comprise point-of-sale material such as banners, shelf-talkers, window displays, menus, and similar devices. Such displays should catch the attention of purchasers and prospective purchasers. The display should prominently display the mark in question and associate it with, or relate it to, the goods.
  • In appropriate cases, a catalogs is an acceptable specimen of trademark use, provided it: (1) includes a picture or a sufficient textual description of the relevant goods; (2) shows the mark in association with the goods; and (3) includes the information necessary to order the goods (e.g., an order form or a phone number, mailing address, or e-mail address for placing orders). However, the inclusion of a phone number, Internet address, and/or mailing address merely as part of corporate contact information on an advertisement describing the product is not in itself sufficient to meet the criteria for a display associated with the goods. There must be an offer to accept orders or instructions on how to place an order.
  • A web-page display specimen “must in some way evince that the mark is ‘associated’ with the goods and serves as an indicator of source.” Assessing the “mark-goods” association on a web page involves many variables, including the prominence and placement of the mark, the content and layout of the web page, and the overall impression the web page creates.
  • Advertising material is generally not acceptable as a specimen for goods. Any material whose function is merely to tell the prospective purchaser about the goods, or to promote the sale of the goods, is unacceptable to support trademark use. The following types of items are generally considered advertising, and unless they comprise point-of-sale material, are not acceptable as specimens of use on goods: advertising circulars and brochures; price lists; announcements; press releases; listings in trade directories; and business cards. Moreover, material used by the applicant to conduct its internal business is unacceptable as a specimen of use on goods. These materials include all documents whose sole function is to carry out the applicant’s business dealings, such as invoices, bill heads, waybills, warranties, and business stationery.


Ownership of Works Within the Scope of Employment

In copyright law, ownership of a Phoenix Copyright Attorneycopyright in a work originally vests in the author, the person who creates the work. The presumption is that the author owns the work. This presumption is excepted in some situations. For instance, when a work is specially commissioned, the hiring party is often considered the owner. Or if a work made for hire agreement has been written, the contract will specify who owns the copyright – the author or someone else. Or, if the work was created by an employee within the scope of employment.

It is usually pretty clear whether a person is an employee. There is often tax, payroll, control, and business evidence to demonstrate whether someone is an employee or not. Where an employment relationship exists, the work must be created within the scope of employment for the employer to be considered to copyright owner. Courts frequently define the scope of employment very broadly. Even if someone creates something on a home computer, outside of work hours, it might still be considered to be employer-owned if it is closely related to the work of the employer, or the work the employee typically does. Additionally, employee handbooks or policy manuals may define the scope of employment, normal job duties, or other aspects of work that may help color the analysis.

In short, determining whether an author is the copyright owner or a hiring party is the owner is vitally important in determining ownership of intellectual property rights, and subsequent licensing rights. There are no bright line rules on ownership, and a lot of factors can be considered when deciding who the copyright owner is. It is important to consult a competent intellectual property or employment attorney when tackling ownership issues like this.



Continuation Application Strategies

Kate S. Gaudry, Ph.D and Thomas D. Franklin, of Kilpatrick Townsend & Stockton LLP, wrote a few days ago an article on Patently-O regarding continuing application practice. I have written previously about continuing applications (here, here, here, and here), which include continuations, continuation-in-parts, and divisionals, but the authors did an excellent empirical study of such applications.  The authors found that the large majority of continuing applications filed were continuations, that more continuations are being filed each year, and that each year a larger percentage of the continuing applications filed are continuations.

Somewhat surprisingly, the study found that continuations are not prosecuted with much more success than original applications, nor are they likely to receive far fewer rejections.  The statistics only slightly more favorable treatment of a continuation application than an original app.  This runs somewhat counter to my experience, in which I’ve found continuations generally to be much more likely to receive an allowance and receive it faster.



But What About Space Inventions?

Did you know that US patent law worries about space inventions? Congress has written provisions into statute that account for activity in space. So, if you find yourself floating around in US-controlled space, rest assured that patent law has not forgotten you. For instance, 35 U.S.C. 105 states:

(a) Any invention made, used, or sold in outer space on a space object or component thereof under the jurisdiction or control of the United States shall be considered to be made, used or sold within the United States for the purposes of this title, except with respect to any space object or component thereof that is specifically identified and otherwise provided for by an international agreement to which the United States is a party, or with respect to any space object or component thereof that is carried on the registry of a foreign state in accordance with the Convention on Registration of Objects Launched into Outer Space.

(b) Any invention made, used, or sold in outer space on a space object or component thereof that is carried on the registry of a foreign state in accordance with the Convention on Registration of Objects Launched into Outer Space, shall be considered to be made, used, or sold within the United States for the purposes of this title if specifically so agreed in an international agreement between the United States and the state of registry.

I’m guessing that there are plenty of other statutes which define space activity so that it can be regulated. Know of any?



What is acquired distinctiveness?

To function as a trademark, a word, symbol, logo, name, or other mark must be capable of identifying the source of the product or service and distinguishing it from other sources.  Marks are either inherently distinctive, have not distinctiveness, or acquire distinctiveness.  Many marks are “inherently distinctive.”  An inherently distinctive mark is, as its name insinuates, unique by its very nature.  The more unique a mark is, the better it is at differentiating sources of products, and the more powerful it can be in the minds of consumers.  Inherently distinctive marks are eligible for immediate registration on the Principal Register.

Marks which lack distinctivenes cannot function as trademarks.  The Trademark Office will refuse to register such marks.  In many cases, an unregistrable trademark is any term or image that the Trademark Office believes describes the applied for goods or services.  In other cases, the mark may simply be a generic name for the product or service.  Descriptive marks, however, break down into those which are either “merely descriptive” or “geographically descriptive.”  These two terms describe a situation where a trademark is descriptive of the goods or services in the application or the location or origin of the goods or services.  For example, a merely descriptive mark would be PANCAKES for a restaurant that serves pancakes.  An example of geographically descriptive would be AMERICAN BURRITO for Mexican restaurant located in the US.  The Office, upon determining a mark is merely descriptive or geographically descriptive will refuse registration of that trademark.  There are ways to respond to such a rejection, however.

An applicant can respond by arguing that the mark is not descriptive.  These are not easy arguments to make.  Alternatively, in some cases, there may be an opportunity to argue that the mark has acquired distinctiveness and thus has become eligible for registration.

Acquired distinctiveness is when a company has been using a descriptive trademark for over 5 years and that trademark has gained recognition in the industry for the company’s goods or services.  Making an acquired distinctiveness argument is known as making a Section 2(f) claim because of the statute from which the basis arises.  Without the use of a Section 2(f) claim, the Trademark Office would not allow descriptive marks to register.  The Section 2(f) claim must establish that the mark has been used for five years with continuous and exclusive use that has allowed customers to relate certain goods or services to the company’s brand they are able to apply for the mark and rely on this provision to move the application towards registration.  It is important that the use be exclusive because if another company is using the mark in the same industry, then their exists a possibility that the distinctiveness quality of the mark is not so strong.  Often, the Trademark Office will accept a Section 2(f) claim, but sometimes, the Examiner requests to see additional proof of the efforts toward and extent to which the mark has been advertised and accepted as distinguishing the applicant’s goods or services.



Super Lawyers Southwest Rising Star for Third Year

I’m pleased to announce that, for the third year running, I have been selected as a Super Lawyers Southwest Rising Star.  One of these days I imagine I will age out of the Rising Star category, but for now, it is good to be among recognized colleagues.  The patented process Super Lawyers uses for acknowledging the best attorneys includes peer nominations and third-party research.  Only 2.5% of attorneys are selected to the Rising Stars list each year.

I wouldn’t be here without the great work I get to be involved in with exceptional clients, and the support of family and friends.  I’m looking forward to making 2015 another great year for everyone!



Patent Office Announces First Bi-Coastal Biotechnology, Chemical and Pharmaceutical Partnership Meeting

Are you excited yet?  The Patent Office announced last week that it will hold its first bi-coastal partnership meeting in the areas of biotech, chemical, and pharma practice.

The official announcement reads:

This inaugural BCBCP expands USPTO’s long-standing partnership in the biotechnology industry sector to customers across the country. The next BCBCP Meeting will be held on September 17th and will be simultaneously available at locations on both the EAST (Alexandria, VA) and West (San Jose, CA) coasts. During the BCBCP, participants will be able to interact with Office personnel in person on both coasts, or alternatively, via webcast. The Biotechnology, and Chemical and Pharmaceutical Customer Partnership was developed to create a collaborative forum for USPTO customers in this industry sector to share ideas, experiences, and insights with USPTO staff. The BCBCP is intended to be informal in nature and will include participants from across the industry. Some of the topics to be discussed by USPTO staff and industry customers will include:

• Markush claim practice

• Patent application filing best practices

• RCE practice

• Overview of patent application initiatives

• Panel discussion on U.S. Supreme Court decisions

(e.g. Alice Corp., v. Cls Bank International. 134 S. Ct. 1537 (Supreme Court March 21, 2014); and Association for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 186 L.Ed. 2d 124 (2013))

This will be an important meeting because it will be the first since a number of recent Supreme Court cases which have somewhat muddled the water.  Explanation and education from the Patent Office is generally a good thing in working toward clarity and transparency.

 



Arizona State Library Patent Presentation

It is a bit late notice, but tomorrow I will be speaking at the Arizona State Library at noon.  The topic will be patent basics, and the audience will be entrepreneurs, business service providers, and librarians.  More information is in this flyer.



Chisum on Supreme Court’s Recent Alice Patent Decision

I’ve just gotten around to reading Professor supreme courtChisum’s  take on the Supreme Court’s recent Alice v. CLS Bank decision on patent subject matter eligibility, and I heartily recommend it for those interested in looking for some small clarity in an area of law that the Supreme Court has muddied well over the past several years.

Of course, the easiest conclusion to reach from the decision is that yes, software is still patentable.  However, many have largely given a shrug to the decision – as we have become accustomed to doing when the Supreme Court weighs in on patent law.  Robert Merges likens the decision to the Hitchhiker’s Guide computer’s answer of “42” to the ultimate question of life, the universe, and everything.  One of my old professors John Duffy finds another media analogy:  “Towards the end of the [classic 1965 movie The Battle of the Bulge], the German panzer colonel believes he has succeeded in breaking through the Allied lines, and he exalts: ‘We have done it!’  His attendant asks whether ‘we have won the war.’  The colonel’s answer: ‘no.’  The attendant then whether ‘you mean we have lost.’  Again, the colonel replies, ‘no.’  The confused attendant asks, ‘What is happening?’ The happy answer from the militaristic colonel:  ‘The best thing possible is happening – the war will go on.’”

Patent practitioners are still left with more questions than answers after decision, but Professor Chisum does pull some portions of the decision that may let us better advise clients and converse with the Patent Office. Read Professor Chisum’s post here.