Tag Archives: trademark lawyer chicago

Trademark Regulations and the Likelihood of Confusion test for trademarks of Similar Sounding Characters!

The analysis of trademark infringement and likelihood of confusion is really a question of the nature and character of the mark and the commercial impression it creates in the minds of the consumer.  First, and foremost, a trademark has to be a known word in the English language to be pronounced as a word in the English language.  Also, in order to ensure that a trademark is pronounced properly in a foreign language or under the doctrine of foreign equivalence–the mark must actually be a known word in some language before there is anything to do with pronouncing a word properly.

For example, the word STON and the word STONE although similar in appearance are not pronounced in the exact same way.  In fact, it is important for you to first, recognize what the word is as either, a slang term or an actual English or foreign dictionary with slang translations.  If there are any other similarities in appearance, the appearance must be consistent with the official English or Foreign language translations before the words can be considered similar with respect to their actual appearance.  Although there may be some chance that someone mistakenly assumes that the STON mark is the same in appearance as the STONE mark, the reality is the commercial appearance and impression of the marks in the marketplace is what controls.

Otherwise, the consumers will recognize that STON as used in the marketplace is not even a recognized word and not pronounce it in the same way as the actual English word of STONE.  Thus, you cannot utilize definitions that are consistent with the English language for something that is not an actual known word.  Moreover, to apply the doctrine of foreign equivalence the word must be an actual foreign word to be considered to be the equivalent of the English equivalent.  It will not be considered a foreign word if, it does not have the same characters as a known foreign word.  Moreover, the mark STON has no foreign equivalents, thus, there is no way for any of the definitions or translations STONE to be used to provide an equivalent meaning for STON.

For more go to:   13-1448.Opinion.7-14-2014.1

The Use of Disclaimers in the Context of Trademark Infringement Online!

The value of trademarks and trademark portfolios is in the ability to develop an online brand, increase your SEO ranking, and developing a good key word optimization site that allows you to acquire more online visitors than your competitors.  This is not the easiest thing to do, in light of, how often Google changes the webmaster policies or rules.  Moreover, the nature of organic search results is such that it does not stay constant, but is fluid–these organic searches that are performed by consumers are not going to be the same each month, quarter or year.

In addition, the use of disclaimers for trademark infringement you must be careful to ensure that your competitor is not able to diminish the effectiveness of the disclaimer by placing it in less visible area of the website.  If you are not careful the fees and expenses incurred or spent on a preliminary injunction will be wasted.  It is difficult to judge the effectiveness of a disclaimer, but the more prominent the disclaimer and the less likely it will be easily avoided by a consumer by clicking through a link or special portal the better off you will be as an online business operator.

If you take the time to develop a content rich website and develop a good SEO optimization strategy, then you want to ensure that it is adequately protected.   More importantly, if you expend the funds in acquiring a disclaimer to remedy consumer confusion, then you must make sure that at least the following is done:

1) the disclaimer is prominent in relation to the remaining content on the website;

2) the disclaimer is bolded, italicized, font and color are actually large and vibrant enough to ensure that it is easy for a consumer to find;

3) moreover, the disclaimer must be from a click through portal that requires the consumer to acknowledge that each has read and viewed the disclaimer;

4) also, the disclaimer must be such that it is only, avoidable after the issue of initial interest confusion has be resolved; and

5) the disclaimer is not subject to alteration or modification by online search robots.

This is a common concern in most trademark infringement matters or opinions in recent cases.  Often times, lawyers do their clients a disservice by winning the preliminary judgment hearing and failing to take the time to craft an appropriate disclaimer or include the appropriate language in the Judge’s Order.  See the following:  International Kennel Club, Inc. v. Mighty Star, Inc and Std. Process, Inc. v. Banks, 554 F. Supp Std. Process, Inc. v. Banks

The New Generic Top Level Domains (GTLDs) and what do they mean for online consumers and retailers!

When we browse the internet, we know how to get to the websites we want to go to.  We know to type in, for example, “amazon.com,” and know that by doing so we will be able to shop on Amazon.  This has already started to change, however, as the Internet Corporation for Assigned Names and Numbers (ICANN) has decided to make over 1,400 new top level domain names available for purchase.

Now, we will likely have to go to “movies.amazon” or “books.kindle” in order to get to the site we want. In essence , we will have to relearn how to find products and services on the web.,  Moreover, consumers will have to understand the new top level domain and which TLD and URL will enable them to find the products or services they want.  On line retailers will have to understand how the new TLDs may impact their SEO process. consequently, the new TLDs may or may not lead to a better online distribution means.

These new domain names have been met with mixed reviews.  On one hand, companies are excited; these new names allow them to advertise their brands even more, encourage competition and innovation, and assist consumers in getting to the correct site.  On the other hand, however, people worry about the cost of registration and upkeep, not to mention the potential for trademark violations and cybersquatting.  Registration for one name costs $185,000.00, and in most cases, it makes sense for companies to register multiple names.  This is a defensive maneuver, as it will keep others from registering names that will cause consumer confusion or infringe on trademarks.

While ICANN has developed a database to protect trademarks, called “Trademark Clearinghouse,” it has its drawbacks.  For one, it costs $150.00 a year, per trademark.  Further, it may not be the most effective; it only protects against identical matches of trademarks.  This does not include misspellings or names that are very similar to trademarks.  So, companies will have their work cut out for them when purchasing the top level domain names and protecting them from competitors.

The first seven new top level domain names went live on the Internet on January 29th, 2014.  So far, we have seen the addition of .bike, .clothing, .guru, .holdings, .plumbing, .singles, and .ventures.  More are expected to come out on February 5th, 2014.  For more go to http://www.vrplaw.com

Understanding the Naked Licensing Doctrine and Its Impact on Advertising, Business, Licensing, Marketing and IP Protection Strategies!

The Naked License Doctrine is often overlooked by many business owners, corporations, franchisers, advertising, marketing and licensing professionals.  For example, there are often times when there is no oversight over how your brand, design, logo, business name or trademark is used by different departments, suppliers, vendors, and other third parties.

Many times, it is an employee using your brand, design, logo, business name or trademark to assist non for profits or promote events for others; however, there is no license of your mark or how the mark is used by the non for profit.  Other times, the advertising and marketing department rolls out a new version of your mark, but does not acquire approval to make the modifications or recognize how it might affect the commercial impression of your original mark.  Sometimes, there is a negative response from consumers and it may actually lead to a dilution or tarnishment of the original mark.

In other cases, the advertising and marketing professionals are too eager to acquire other distribution channels by encouraging use of the mark on a third party’s website, store fronts, advertising and/or marketing brochures without having the third party sign any agreement or license to use your mark.  The worst cases are when franchisers do not take the time to see how their franchisees are using the brand or mark.  This is a significant problem even if, the franchise agreement has some provisions relating to licensing and use of your brand or mark.

The key is are there any actual methods or means for a brand or trademarks owner to prevent a third party or licensee from changing the colors, design, layout, location, font or quality of the products or services sold under its brand or mark.  Is there some process to have a third party or licensee submit its modification to the original brand or mark owner?  Is this process actually utilized?  Is there any means of monitoring or overseeing the third party or licensee’s activities to determine if, your brand or mark is being misused?

If there is no practical means to ensure that your brand or mark is not used, in any way that dilutes, tarnishes or changes the commercial impression of your original brand or mark, then you may be subject to losing your trademark rights.  Even if, you have a license, this situation is ripe with others being able to assert that the license is in essence a naked licensee, thus, you should not be allowed to retain trademark protection of your brand or original mark.  It is always a good idea to consult a trademark attorney prior to licensing and instituting trademark policing policies.

Of course, if you have any concerns or questions, then please contact us at: http://www.vplawgroup.com

Use of Trademarks in Movie Titles Phifty-50 and 50/50 (Seventh Circuit Says Not Enough Facts to Support Actual Likelihood of Confusion as to Origin!)

In a recent, Seventh Circuit Case, the Eastland Music Group v. Lionsgate Entertainment, Summit Entertainment and Mandate Pictures, the Plaintiff’s alleged the use of the terms “50/50” violated their registered and common law trademark rights to the use of the PHIFTY-50 mark for songs, rap music, movies and entertainment.  However, there was no actual indication or allegations that the use of the terms “50/50” was actually causing confusion as to the source of the origin for the movie.  The Seventh Circuit stated the PHIFTY-50 mark is not the same in appearance as the “50/50” mark.  Although the marks sound the same, the Court, performed a cursory examination of the similarities of the marks and stopped with the lack of similarity in the appearance of the mark.  The Court, found that the PHIFTY-50 mark is too weak and a descriptive mark, so that “50/50” mark could be used in a descriptive sense to describe that the main character had a “50/50” percent chance of surviving a surgery involving spinal cyst that had degenerated into cancer of the spine.

Moreover, the Court considered the fact that Wikipedia defined “50/50” as essentially, a fifty to fifty probability of some event occurs or eventuality actually happening.  The Court went on to state that there were many third party users that used the terms “50/50” in a descriptive sense and there may be prior users of the mark.  However, the Court did not perform an actual “prior user” or “failure to police” analysis.  The prevalent of the use of the mark by third parties indicated that the mark was entitled to weaker protection.  The Seventh Circuit ignored Second Circuit Case Law considering the constitutional concerns involving the Freedom of Speech, under the First Amendment, in analyzing infringement of descriptive marks.  Instead, the Seventh Circuit found that Constitutional issues should not be the first issues to consider in a case. Thus, if a case or final judgment can be entered without considering of a constitutional issue at the pleadings stage, then the constitutional should not be considered as moot.

In this particular case, it appeared that although the Plaintiff alleged prior trademark rights, it would have been a junior user with respect to the other third party users.  Moreover, the Supreme Court, precedent indicated that the use of a mark in the title of the intellectual property work can only, infringe the original author’s trademark rights, if, it indicates that the latter author is the origin for the work.  This seems to crossover slightly, into the right of attribution in the original author’s copyrights.  However, since the Right of Attribution must always be complied with and the title of the original copyrighted work must be cited and referenced; it is hard to imagine how there can be a potential likelihood of confusion?  The mark must be placed far away from the actual reference or citation to the original author to engender some likelihood of confusion that may or may not be alleviated based on how close the citation is to the mark or the point of sale or purchase.

Moreover, the Seventh Circuit, seemed to focus on the cost and expense of trademark litigation in holding in light, of the small likelihood of actual confusion the Plaintiff’s had not asserted a trademark infringement claim and dismissed the case on a 12 (b) (6) motion to dismiss.  It appeared that the Seventh Circuit seemed to be moving towards a Tomboy and/or Irbal or plausibility analysis for trademark infringement claims.  We will see if, this trend continues and if, defense attorneys have a new tool in their arsenal to combat marginal trademark infringement claims.

If you have any concerns or questions on how to prosecute or defend a trademark infringement matter, then please feel free to contact us at http://www.vrplawgroup.com