Tuesday, March 27, 2012

Beware of solicitations related to your trademark that appear to be from an official government agency

There are a lot of unscrupulous companies trying to get money from trademark owners.  Please take a minute to read this message from the United States Patent and Trademark Office.

Be aware that private companies not associated with the United States Patent and Trademark Office (USPTO) often use trademark application and registration information from the USPTO’s databases to mail or e-mail trademark-related solicitations. Trademark applicants and registrants continue to submit a significant number of inquiries and complaints to the USPTO about such solicitations, which may include offers: (1) for legal services; (2) for trademark monitoring services; (3) to record trademarks with U.S. Customs and Border Protection; and (4) to “register” trademarks in the company’s own private registry.

These companies may use names that resemble the USPTO name, including, for example, the terms "United States" or “U.S.” Increasingly, some of the more unscrupulous companies attempt to make their solicitations mimic the look of official government documents rather than the look of a typical commercial or legal solicitation by emphasizing official government data like the USPTO application serial number, the registration number, the International Class(es), filing dates, and other information that is publicly available from USPTO records. Many refer to other government agencies and sections of the U.S. Code. Most require “fees” to be paid.

Here's a link to the USPTO page:  http://www.uspto.gov/trademarks/solicitation_warnings.jsp

We have had instances where these bogus fees were paid by clients before they checked in with us, so this is a real problem.

Thursday, March 15, 2012

Use of Interns In The Workplace

This story from the Hollywood Reporter is very interesting...and scary.  We all know how students and recent college graduates come looking for any chance to get in the door, often willing to intern for no pay. I certainly did, and I did a lot of work and put in a lot of time I didn't get paid for (and it was more like 60 hours a week).  I was happy to do it - it paid off.   Here's the way some interns feel about it.

The entertainment industry has been hit with another challenge on the low-level labor front as a former intern at the Charlie Rose show has filed a class action over alleged violations of New York's wage laws.

Lucy Bickerton lodged the lawsuit in New York Supreme Court, alleging that she wasn't paid despite working 25 hours a week for three months in the summer of 2007. The complaint was filed on behalf of all other unpaid interns who have worked on the show in the past five years. Bickerton says there were 10 other interns working for Rose during the time she spent on the show.

The plaintiff, a 2008 graduate of Wesleyan University, says her duties included assembling background research and press packets, escorting guests, digesting Rose's interviews and cleaning.

She joins others who have brought similar suits in recent months, including a intern suing fashion magazine Harper's Bazaar and former interns suing Fox Searchlight after working on Black Swan.

The Fair Labor Standards Act has typically been interpreted to allow companies to have unpaid interns if there's educational benefit involved, but the Labor Department has also made it clear that interns can't replace regular employees. In the Bickerton lawsuit, it's alleged that "“unpaid interns are becoming the modern-day equivalent of entry-level employees, except that employers are not paying them for the many hours they work.”

Here is a link to the story:  http://tiny.cc/y157aw

Comments welcomed.

Tuesday, February 14, 2012

Big Trouble in Shanghai China

Interesting story in the LA Times about a trademark dispute in China involoving In-N-Out Burger - who doesn't even have any stores in China - or outside the US at all for that matter.  But when a new restaurant called CaliBurger opened in Shanghai - admittedly modeling itself on In-N-Out, the people at In-N-Out saw red and yellow.  They tracked down the owners of the copycat business in California and brought suit to prevent use of their intellectual property.  The matter settled quickly.  Moral:  policing valuable trademarks around the world is important, and there are always creative solutions.

Here's a link to the full story:  http://articles.latimes.com/2012/feb/10/business/la-fi-china-double-double-20120211

Thursday, February 2, 2012

Preclusive Effect of Federal Court Trademark Infringement Action in TTAB Opposition Proceeding

Interesting case, Mayer/Berkshire Corp. v. Berkshire Fashions, 424 F.3d 1229 (C.A.F.C. 2005); 76 USPQ2d 1310, which illustrates that a trademark infringement action in federal district court is not automatically of preclusive effect in an opposition proceeding in the U.S. Patent and Trademark Office. Judge Newman points out that an infringement plaintiff sues for injury caused by the sale or advertising of goods or services bearing the allegedly infringing mark, whereas an opposition is based on the content of the application.  Therefore the actions may involve different transactional facts, different burdens, proofs and public policies.

Important to know.

Tuesday, January 31, 2012

Buzz Aldrin Tops Trading Card Litigation

What? You didn't know there is a Buzz Aldrin Tops trading card? Trade you 2 Buzz Aldrin's for a Jeff Beck....(There must be a Beck card, or one on the way....)

Topps trading card company released a set called the "Topps American Heritage: American Heroes Edition." This set included images of more than a hundred well-known American politicians, actors, athletes, scientists, organizations, artifacts, and events. The back of each card also contained historical information about the image displayed on the front. Buzz Aldrin is on one of the cards.

Mr. Aldrin sued for use of his name, image and likeness without his permission, and sought a preliminary injunction. The court denied the preliminary injunction motion because it found Topps’ use of Aldrin’s name, image and likeness was protected speech. The court stated that “the cards use[d] Aldrin's name in the course of conveying information about his historically significant achievements” and were not used for purely commercial purposes like advertisements. The denial is on appeal, and even if the denial stands, the court may eventually find that Tops needs to pay Mr. Aldrin for using his name, image and likeness (although much more likely the case will settle quietly).

My take is the court got it wrong and I disagree with the decision. Tops cards are purely a commercial exploitation. They are not encyclopedias, or in the public interest - and they are not necessary to freedom of speech. We don't have to dumb down the world a little bit more by relying on trading cards to educate kids, and it's a BS argument anyway. These cards are bought and traded by collectors and aficionados and have no significant educational value. Obviously, the information on the cards is available elsewhere in legitimate educational publications.

Bottom line - Tops should pay ALL celebrities for using their name, image and likeness on trading cards.

Comments welcome.

Thursday, January 12, 2012

Interesting Copyright Case Regarding Public Domain Publicity Materials from Old Films

The case is Warner Bros. Entertainment, Inc., et. al. v. X One X Productions, A.V.E.L.A., Inc., et al., 644 F.3d 584 (8th Cir. 2011).  Defendants obtained old movie publicity materials - posters and lobby cards - took images of famous characters from the materials, and licensed the images for use on apparel and other goods.  The promotional items were not protected by copyright (but the films were, of course) - the court found they were in the public domain.  However, when the images displayed on the licensed merchandise evoked the film character, the court found infringement.  Here's a link to the story.