Trademarks and the Lanham Act

I have attempted to provide a brief overview of the impact of the Lanham act and common law trademark.

The Lanham act was an attempt to codify the common law of trademark in such a manner as to provide protection to trademark owners (Senior users) against the unscrupulous use or imitation of others (Junior users) in such a manner as to deceive purchasers into believing that a product was manufactured by the Senior user and thus generate sales for the Junior user. The Lanham act does not create any trademark right; it only recognizes a right acquired through use. The Lanham act encompasses both trademark infringement and unfair competition.

Certain marks are not valid and have no protection under the Lanham act. One such mark revolves around geographical, locational or place names. In general, where the right to the use of a geographical, locational, or place name as a mark is not subject to exclusive appropriation, the original user may not ordinarily complain of its use by competitors, in the absence of fraud or unfairness. For example the user of the mark Dallas Cowboys could not complain of the use of Dallas Limousines based on the use of the mark Dallas. The use of the term Lone Star as a geographical name is uncertain. The one case on point, Lone Star Steakhouse & Saloon, Inc. v. Alpha of Virginia, Inc. did not fully address this issue and was decided on other grounds. That case was later remanded for a determination as to the possibility of confusion based on the marks. It is important to remember that courts do not look at just a portion of the mark, but the mark as a whole. Additionally the right to protection in the use of a place name may be lost by such adverse or general use of it as to render it generic.

Ownership of a mark is established under common law by showing that use of the mark was deliberate and continuous. Sporadic, casual or transitory use will not suffice. Use is also determined by establishing that the mark has become associated with the Senior user in the public mind. Sales of products bearing the trademark will suffice, and in many jurisdictions mere advertising of the mark will be sufficient. A mark may not be merely adopted and not used in an attempt to reserve it. Ownership can also be established through registration. Registering a mark is conclusive evidence of ownership and severely limits the defenses available. If the Senior owner is unable to show that any right to the mark had accrued before the proffered violation occurred, the Lanham act does not provide a remedy.

Infringement of trademark is the use or imitation by another of goods in such a manner that the purchasers of the goods are deceived or are liable to be deceived, and induced to believe that the goods were manufactured or sold by the owner of the trademark. Marks need not be registered to support a claim of infringement. A mark is considered to be owned, under common law, as soon as it is put into use. Unregistered marks are entitled to protection under the Lanham if they could have been registered. To succeed on a claim of infringement the plaintiff must show:

1. Ownership of a valid mark

2. Infringer's actions are likely to cause confusion with the owner's mark

As has been stated above ownership of a valid mark may be shown through use of the mark. When determining the likelihood of confusion courts look to:

1. The degree of similarity between the marks

2. The intent of the alleged infringer in adopting its mark

3. Evidence of actual confusion

4. The relation in the use and the manner of marketing between the goods marketed by the competing parties

5. The degree of care likely to be exercised by purchasers

6. The strength or weakness of the marks

7. The quality of the defendant's product

8. Actual confusion of consumers

9. Likelihood of expansion of the product lines by the initial users

A finding of probability of confusion is required. Possibility of confusion is not sufficient. Probability exists were a large number of purchasers likely will be confused as to the source of the goods in question.

Intent to confuse the public is not an element of infringement. As shown above intent is a factor in determining whether confusion exists. Adopting a mark with knowledge of its trademark status permits a presumption of an intent to deceive, and an intent to deceive is strong evidence of a likelihood of confusion.

Unfair competition requires only a showing of a likelihood of confusion. Actual confusion is not required. It is not necessary to find intent to cause confusion when seeking an injunction for unfair competition. This is a recent change. In the past fraudulent or wrongful intent was required, and more likely than not still is required for any other recovery under unfair competition.

Under the Lanham Trademark Act, a person who, without the consent of the registrant, (1) uses in commerce a reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or (2) reproduces, counterfeits, copies, or colorably imitates a registered mark and applies such a reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, is liable in a civil action by the registrant.

A number of defenses are available. They are limited only by whether the right to use the mark is contested. If the mark is registered or ownership is uncontested the only available defenses are:

1. Fraudulent registration

2. Abandonment

3. Permissive use

4. Use of the Defendant's own name

5. Innocent adoption prior to the date of constructive use

6. Registration

7. Prior registration

8. Violation of antitrust law

9. Functionality

10. Equitable principles such as laches, estoppel and acquiescence.

If the ownership of the mark is contested Prior Use is a possible defense if it can be shown that the junior user adopted its mark before the senior user's registration and without knowledge of the senior user's prior use, that the trade area in which the junior user used the mark prior to the senior user's registration was limited in extent, and that the junior user has continuously used the mark in the preregistration trade area.

The equitable principle of unclean hands applies to one seeking an injunction for infringement of trademark. This applies regardless of the ownership status of the mark.

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No Longer the Underdog

For many businesses, especially start-up and SMEs, taking legal action against those who copy creative work, brand names or logo, is too expensive, protracted and risky. The underdog is often advised to walk away or accept the copyright breach, without proper action being taken against the offender.

However, a change in the law that came into affect on 1st October, will help smaller intellectual property (IP) claimants to ensure that their creativity is not used or abused by businesses with more financial clout. On Monday, the small claims track became available, a simplified procedure for mounting IP claims, which would include all cases involving claims of £5,000 or less. There are also plans to increase the value of claims heard to £10,000, though it is not clear when this will be available. The small claims track will allow more SMEs to bring about IP abuse claims, without the need to go down a very expensive legal route.

The big IP stories at the moment tend to revolve around file sharing and smart phone patents, but the main IP rights - copyright, patents, trade marks and designs - protect creativity across all sectors.

The introduction of the small claims track will be of particular benefit to photographers and designers whose works are regularly infringed, but for whom the costs of bringing legal action are often too great compared to the potential benefit of, for example, a licence fee for the photograph.

The small claims track will only cover claims for straightforward copyright, registered trade mark and/or unregistered design infringement. All other IP claims made under the small claims track will be heard at The Patents County Court (PCC).

There is only one PCC, based in London, which covers the whole of England and Wales. For those who are based outside of the capital, they will not necessarily be forced to travel to London to get a judge's decision, as telephone hearings are available. The new procedure is intended to be as user-friendly as possible and to be a fast and inexpensive option; hearings, for example, will mainly be in a judge's chambers rather than a more formal court room.

The small claims track should be enormously helpful for those who derive much of their income from exploiting their own creative intellectual property. It will stop them from feeling that they need to walk away from what is rightly theirs, due to the costs involved.

Managing the Unmanageable for Law Office/Firms Management   Intellectual Property Monetization Is More of a Moral Issue   

Brand Protection: Investing in the Future of Your Business

Your business name is extremely important; it identifies who you are and what the business represents. The business identity, which is represented by the brand, quickly and efficiently informs current and potential clients of the business, the products and services offered to market. It is meant to inspire confidence and trust within the market, while communicating the company's philosophies. The building of a brand, as well as the production of marketing and business collateral to communicate the brand, requires much investment. Like all investments, it must be insured that the risk of losing the value of that investment is minimised. With the pressures being placed on business through increased competition, shrinking budgets and the globalisation of the marketplace, it is even more important to ensure that your brand is protected.

Brand protection involves applying for and being awarded with a trademark for items that represent your brand, such as the logo, fonts of text, colours used to represent the business as well as the product and services categories the business fits within. There are numerous ways in which to apply for trademarks and brand protection, with many businesses specially born to assist you in the process. However, care is needed in choosing which particular service that you utilise in protecting your brand. While some offer cheap and cheerful services, others offer a consultancy format where the total cost is unknown until the bill is presented to you at the end of the process; a charge that some may be very surprised to pay.

Furthermore, with the increasing pressures being placed on the time requirements for business operations, it can be hard to find the time to dedicate to out of office activities that do not directly relate to sales, profit and business growth. For this reason, the internet has become a major tool for nearly all consumers and business to search for, evaluate and decide what business services are to be utilised. Brand protection is no exception, where many businesses that specialise in trademarking and brand protection having a web presence.

Leading brand protection companies have not simply stopped at creating an easy portal for contact; they have gone the next step and invested substantial funds into an online environment that allows you to apply for trademarks and other brand protection services. This not only saves time and money. For those who may be hesitant about using an online service for such an important aspect of the business, these brand protection specialists also offer expert advice and consultation, assisting you in each step of the process.

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Author's Financial Rights Under Egyptian Law

Author's Financial Rights and Possibilities of Assigning Such Rights

According to Egyptian law, the author has the exclusive right to use and exploit his work and any disposal of his work by third party should be done out by virtue of an explicit authorization to be issued by the author during his life or by his successors after his death.

The author has the following rights on his work: - Financial rights; and - Moral rights.

In this article, we will concentrate on the author's financial rights and the author's entitlement to assign or transfer such rights.

The Intellectual Property Law No. 82/2002 regulates the terms and conditions that govern the assignment or transfer of the said rights to third parties. Article 149 of the above mentioned Law stipulates that "The author shall have the right to, wholly or partially, transfer to a third party his financial rights". Based on the above mentioned article, the author shall be entitled to, wholly or partially, assign or transfer such rights to third parties.

Terms and conditions of such assignment or transfer:

According to Article 149/2 of the said law, "Such a transfer should be in writing and contain an explicit and detailed indication of each right to be transferred with the extent and purpose of transfer and the duration and place of exploitation".

Accordingly, the following conditions should be met that in order for the author to assign his financial right to third party, the:

1. The assignment contract should be in writing; meaning that writing is a formal condition and any disposal of the author's financial rights should be in writing otherwise, the disposal shall be null and void; 2. The rights assigned to third party should be expressly and accurately detailed in the contract. This is due to the fact that the author shall remain the owner of financial rights which are not explicitly assigned; meaning that authorization by the author to exploit any of the said rights shall not mean authorization to exploit other financial rights relating to the same work; 3. The extent and purpose of the assignment should be indicated; 4. The duration and place of exploitation should be indicated.

Differences between the author's financial and moral rights:

- As discussed above, the author has financial and moral rights on his work. The Author may, wholly or partially, assign or transfer his financial rights, to third party however; he may not assign his moral rights. - The Author's financial rights may subject to seizure however, the moral rights may not subject to seizure. It is worth mentioning that the author's work that is not published during his life may not be subject to seizure after his death unless it is undoubtedly proven that his intention was to publish this work prior to his death.

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IP 101: Maintenance of Your Intellectual Property

In general, it is advisable to review your IP portfolio to make sure certain items are in order and to assess any holes in your protection. Such a review is valuable in maintaining the strength, security and enforceability of your IP. This article includes some pointers in maintaining your IP portfolio, but is not meant to be an exhaustive list.

IP licensing portfolio

If you have a licensing portfolio, that is, licenses with other parties which allow you to use their IP or vice versa, it's a good idea to periodically review the licenses to make sure everything is in order. First, we recommend identifying all of your licenses and making sure you have a copy of each, and that the licenses and related paperwork are organized in a safe place. Then we recommend reviewing all of the licenses to make sure your copies are complete and executed. If there are any missing copies, appendices, etc., make sure to obtain those copies.

Next, review the licenses and confer with the necessary people to make sure the licenses are being followed. For example, if applicable to your situation, some of the provisions you should check include: milestones, royalty payments, completion and recordation of necessary paperwork (such as patent assignments), and the like. You should also take the opportunity to check the expiration date of the license, determine whether you need to physically renew the license or whether it is evergreen.

Finally, review all outstanding draft licenses. Figure out what needs to be done and by whom. If an agreement is ready for execution, make sure to get that done right away. If you are awaiting a draft from another party, follow up. If you are responsible for getting a draft done, do it now!

Trademark portfolio

Portfolios of pending and registered trademarks should be reviewed on a regular basis to ensure pendency and/or registration is maintained. First, we recommend you review your docket and identify upcoming deadlines with respect to outstanding office actions in both the U.S. and foreign countries. We also recommend reviewing your docket to identify renewals and foreign filing deadlines that are coming due within the next year. Renewals should be discussed with the appropriate people within your organization to determine whether the registrations will be maintained. Determining renewal dates and foreign filing deadlines will also give you a sense of what kind of budget will be needed to tend to such matters.

Next, we recommend reviewing the portfolio to determine whether assignment data is correct. If assignment data has changed, it should be reflected in the file and with the relevant trademark offices in which the mark is pending or registered.

Lastly, we recommend you review your organization's portfolio to determine whether all marks are correctly labeled as a registered mark (®) or a common law mark (™). Any revisions should be made and the appropriate people should be notified of any changes.

Patent Portfolio

With respect to patent portfolios, we recommend similar action items as discussed with respect to trademark portfolios. First, we recommend reviewing your docket for any outstanding office actions and identify any upcoming foreign filing deadlines. Decisions with respect to responding to office actions and filing in foreign countries should be discussed with the necessary people within your organization. Decisions regarding responding to office actions and foreign filing will help plan the patent budget of your organization. Similarly, we recommend a review of upcoming maintenance fees to make decisions on whether patents should be maintained.

Decisions regarding abandonment of applications or non-payment of maintenance fees should be cross-checked against any licenses related to such applications and/or patents to confirm there is no obligation to prosecute or maintain such assets.

We also recommend reviewing assignment information recorded with the respective patent offices and updating such information as necessary.

Conclusion

The above-mentioned suggestions are meant as a starting point in a regular review of an IP portfolio. There are additional factors that should be considered and reviewed, including citation of prior art in pending patent applications, follow-up with decision makers regarding filing trademark and patent applications, and reviewing employment contracts to make sure confidentiality and IP assignment clauses are included therein. Additionally, we recommend that review of your IP portfolio be conducted throughout the year at regular intervals to make sure all assets are in order and proper protection is being obtained.

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SOPA, PIPA or Just Plain 'SOPPY?'

On Wednesday 18 January, 2012, a number of online sites staged a 24-hour internet blackout in protest against two pieces of US legislation passing through Congress. This action followed a community decision, after which the Wikipedia Foundation announced its support in taking a stance against the proposed legislation. Alongside Wikipedia (English), other sites involved in the blackout included Reddit, Moxilla, Wordpress, TwitPic, MoveOn.org and the ICanHasCheezBurger network. Facebook, Twitter and Google, although not in favour of the bills, did not stage a blackout. However, Google (US visitors only) showed its support by partially redacting its logo which linked to an information source about the bills, with a petition and a message to Congress "Please don't censor the web."

Why the Fuss?

The bills in question are the Protection Against Online Piracy Act (PIPA), and the Stop Online Piracy Act (SOPA). Although there are already laws in place that govern online piracy, these are more concerned with targeting acts of infringement. SOPA and PIPA on the contrary, are aimed at targeting the source. In other words, the sites actually hosting the unauthorised content. As most of these sites are outside the US, it is not easy to track and hold perpetrators accountable. These bills would give the US government the power to force US based companies, such as ISPs, payment services solutions, and online advertisers, to closely monitor their own services and cut off ties with any sites providing access to and/or profiting from unauthorised content. Any search engines, websites, blogs, forums etc. with links to such sites could be sued and removed.

Arguments in Favour of the Bills

Those in favour of the bills such as the US Chamber of Commerce and the MPAA argue that these overseas websites that profit from US IP content whilst operating in safe havens, are a major threat to the industry putting jobs and innovation of content at risk.

In a BBC News interview on 18 January, Wikipedia founder, Jimmy Wales did not disregard the importance of combatting online piracy stating there were already Acts in place to deal with this like, for example, the Digital Millennium Copyright Act 1988 which was working quite well. He did not feel it was necessary to go down the road these bills intend and he described the bills as "sloppy". Mr Wales suggested the focus should be going after the money rather than burdening everyone else, (ISP providers, websites, etc.) to take on board the responsibility of enforcement. In response, MPAA spokesman, Michael O'Leary described Mr Wales' approach as "a half measure" stating everyone who plays a role in the internet has a responsibility in "making it safe and legitimate", he suggested there was no willingness on the part of search engines to share in that responsibility.

Criticism Against the Bills

Those concerned about the consequences of the bills argue that they are ill thought out, stressing economic through to technical reasons why the bills should not become law. Arguments draw attention to the ambiguity of the wording contained in the bills which could make many social media sites look like infringers or innovative/pioneering websites be perceived as piracy havens because the nature of what they are about is simply misunderstood. Another concern is the impact such laws would have on the growing internet business. The bills potentially threaten new start-ups as the task of filter and monitoring their websites to comply with enforcement measures would raise entry costs and any sites deemed not to be performing these functions adequately enough could simply be shut down. This would make it more difficult for new search engines and social media sites to emerge. On the technical side, tampering with the web registry of domain names could threaten internet security and make the net much less stable.

A statement issued by the White House seemed to share some of above concerns. Although making it clear they agreed that "online piracy by foreign websites is a serious problem that requires a serious legislative response", the White House also stressed it would "not support legislation that reduces freedom of expression, increases cybersecurity risk, or undermines the dynamic, innovative global internet."

Conclusion

It is difficult not to view those determined on seeing SOPA and PIPA passed through as a case of luddism, or a misguided fear of what's new.

The US is an influential nation and if these bills became law, and other countries followed suit, what might be the likely impact to the growing global internet economy? According to research by the McKinsey Global Institute, over the last five years, the internet accounted for 21 per cent of GDP amongst the G-8 nations, Brazil, China, India, South Korea, and Sweden. Does it really make sense to rush these bills through, just to pander to the obstinance of the US arts and entertainments industry without due consideration to the wider implications of such laws?

Under no circumstances is this article intended to undermine the problem of online piracy, but has the pros and cons for all stakeholders both industry and consumers/internet users alike really been considered? It seems yet again, we are witnessing the heavy hand of commerce in alliance with the law exuding its power, as the catalyst driving these bills is the perceived lost revenue to commercial interests in copyright. It should be remembered that they are not the only or most important stakeholders here.

A question worthy of far greater exploration is whether the prospective value to be gained by the arts and entertainments industry really outweighs the value of freedom of expression, creativity, economic and technological innovation, as well as the political and social empowerment, that the internet continues to bring about. This is a question of paramount importance.

It is also important to revisit economic models and explore options that would facilitate ways to limit acts of piracy. Work with content creators, consumers and the public at large, those who have engaged in acts of piracy, ISP providers, search engines etc.; essentially all stakeholders to figure out more efficient ways to address this issue. Are market models actually correct? Do pricing models reflect fair and reasonable access to content? If not, then how could we better serve this objective? The enforcement measures proposed by the bills means these costs will need to be recouped, and no doubt will be levied on the unit cost of content, ultimately to be borne out by the consumer. If pricing models are a contributory factor to acts copyright infringement, this is counter-productive.

It is not right that the interests of one stakeholder through undue influence take precedence over the interests of others, particularly when such partiality is likely to thwart freedom of expression, creativity, innovation, whilst failing to give due regard to the greater issue of public interest.

In the UK, concerns have already been vocalised over the impact of the Digital Economy Act, 2010. If SOPA and PIPA are successful in the US, will we also be heading this way?

The basic principle of a democratic nation awards all adult citizens in that society the right to have an equal say in the decisions that affect their lives. This fundamental right should underlie any discourse engaged upon and should serve as the guiding principle in determining the best way forward. Let this right be exercised.

Managing the Unmanageable for Law Office/Firms Management   Intellectual Property Monetization Is More of a Moral Issue