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Common law trademarks

Published June 24, 2011 | By Bret

I’ve been dreading writing about this, but I ought to cover it because it’s important and interesting. I recently represented a client as a complainant in a UDRP that was not successful, unfortunately. The reason the UDRP was unsuccessful, according to the Panel, was because we were unable to show rights in a mark at issue, the first prong of the UDRP. The problem was the client did not have a registered mark.

Although it is possible to file a UDRP on the basis of a common law mark, it can be difficult to prove. A business may not even have much in the way of records to support this sort of argument, because this just isn’t the sort… Continue reading →

Posted in UDRP | Tagged , , , ,

The biggest risk to small businesses everywhere

Published June 23, 2011 | By Bret

What’s the biggest risk to small businesses in Georgia, and everywhere else?

In my opinion, the biggest risk to small businesses in Georgia and everywhere else is losing control of the business’s web site.

So much of today’s economy is built around the Internet, whether it’s for customer service and support or sales of products and services. Everyone uses the Internet to interact with the companies that they do business with. The worst thing from the company’s perspective is to hear a customer say “I couldn’t find your web site.”

And how could this happen? Here’s an all-too-common scenario for you to consider. The business could be of any type or size, really, from a small technology start-up to a… Continue reading →

Posted in Trademarks | Tagged , , ,

Now collaborating with Evan Brown

Published June 17, 2011 | By Bret

I’ve begun a collaboration with Evan Brown, a well-known (and highly respected) lawyer based out of Chicago who focuses on Internet law. You can find him on Twitter @internetcases, as well as Facebook, etc. I hope you’ll hop on over there and take a look! Here’s the link to my first post there: http://udrptracker.internetcases.com/2011/06/servair-loses-udrp-on-serv-air-com/

 

 

Posted in Announcements, UDRP | Tagged

Online reviews as evidence of confusion

Published June 17, 2011 | By Bret

I actually recently used some online reviews in a case myself. I think their usefulness to document the way the public identifies a particular business can be incredibly helpful. The federal court for the Eastern District of Arkansas agrees:

U.S. District Court Judge Brian Miller in the Eastern District of Arkansas ruled that the 18-year-old national chain was likely to prevail in its trademark infringement claim because consumers were confused by the other “Chipotles,” which operated in Beebe and Jonesboro.

Critically, Miller ruled that posts on review sites “reflect confusion as to the ownership of defendants’ restaurants.”

“One Web site, www.urbanspoon.com, even lists plaintiff’s Web site as the Web site of defendants’ restaurants,” Miller added in his written decision,… Continue reading →

Posted in Trademarks | Tagged , , , ,

Trademarks for newTLDs?

Published June 15, 2011 | By Bret

Although the new top level domain names (newTLDs or nTLDs) haven’t yet been authorized by ICANN, things are headed in that direction, possibly this year. And despite the steep fees — as much as $180,000 just to apply — people are already lining up to try to be the lucky recipient of what could be a very lucrative registrar contract with ICANN, especially for the generic .___ domain names.

For example, .music. Constantine Roussos has apparently been saying he’s interested in registering .music since 2005. According to Domain Name Wire, he’s even publicly embarked on a mission of registering trademarks to (he hopes) support his registration request with ICANN. His recent attempt to register a .MUSIC design mark with… Continue reading →

Posted in Trademarks | Tagged , , , , ,

Gripes, impersonation, and the UDRP

Published June 14, 2011 | By Bret

For the most part, the Internet is a wilderness of free speech, properly so, I think. Sites like RipOffReport.com and the legion of consumer advocacy sites like it offer consumers a place to vent their frustrations about the companies they’ve dealt with, whether those complaints or gripes are really justified or not. That’s been businesses’ chief complaint about this activity — at worst, unfounded complaints can be fostered by competitors to tarnish or damage their brand and business, and the sites that host the complaints are both shielded from liability for the content and offer corporate sponsorship services (for a substantial fee) to help a company maintain control over its image, clean up the complaints, what have you. I’m not… Continue reading →

Posted in UDRP | Tagged , , , , ,

Fair, noncommercial trademark use

Published June 13, 2011 | By Bret

“Ken dumps Barbie” read the ads, which feature a picture of a frowning Ken doll, male companion to Mattel’s Barbie. Ken apparently did this because Mattel, maker of Barbie dolls, contributes to global deforestation, and Greenpeace isn’t happy about that. Greenpeace tried to run this ad, but it was rejected by Facebook:

Greenpeace seems to have a point. There is a concept akin to copyright’s fair use doctrine that relates to trademark use, although as always with trademarks, if there is evidence of confusion among the public, things start to go off the rails fast. Here’s what Greenpeace had to say about the Facebook takedown:

According to our legal analysis prior to the campaign, this complaint to Facebook that Greenpeace… Continue reading →

Posted in Trademarks | Tagged , , , , ,

Computers (hardware and software) as a law practice tool

Published June 8, 2011 | By Bret

I got into a discussion today on Twitter with @nikiblack and @VBalasubramani about the relative merits of using a Mac computer for your law practice, and I decided this would be a better format to lay out my position. So, in the interest of full disclosure, let me say up front that I am pro-Linux, pro-cheap PC hardware. That doesn’t make me necessarily anti-Apple hardware or anti-Mac software, far from it. But here’s what I think any solo or small firm lawyer should be asking themselves.

The primary question is, What do you use a computer for? A computer is, after all, just a tool for your law practice. As a carpenter uses hammer and nails and saw and… Continue reading →

Posted in Uncategorized | Tagged

Copyright: why register?

Published June 7, 2011 | By Bret

Here’s an interesting blog article (h/t Rachael Vaughn, @rachaelvaughn on Twitter), perhaps provocatively titled “Why Register a Copyright If You Don’t Want to Sue?” (Brief aside: initial caps? ugh…)

Since the UDRP and domain names really dominate my practice, I’m mostly focused on the trademark part of intellectual property law. But I enjoy copyright as a field, and it’s quite an active topic in the legal blogosphere and legal community on Twitter. This post got me thinking a bit.

The linked poster’s points are that (1) a registration can be helpful in dealing with infringement even if you don’t end up in court, (2) a registration can help you (as a content producer) with your contract negotiations… Continue reading →

Posted in Copyright | Tagged , , , , , ,

Target & Fairweather: no settlement

Published June 7, 2011 | By Bret

Well, it looks like the mediation didn’t work out. According to this blogger, the judge has been quoted as saying the matter “did not settle.” It also didn’t look like there were any other plans to meet to try to work it out again before the trial date in November 2012. That’s a long way away, though, and it’s possible that they could still work out a deal.There’s nothing that says they can’t settle the matter out of court.

Still, according to that article, which cites Bloomberg as its source, the Canadian company has been aggressively using its Canadian Target mark and opening new stores, etc. To me, that looks like they’re trying to increase the cost to Target to… Continue reading →

Posted in Trademarks | Tagged , , , ,