Trademark & Copyright

Our colleagues in the Bankruptcy Section published a client advisory on a recent decision that has important implications for the bankruptcy rights of trademark licensees (and licensees of other forms of intellectual property).

What if someone applied for a new generic Top Level Domain (gTLD) that is confusingly similar to the gTLD applied for by your company? Who has standing to file an objection or to submit a public comment in response to an applied-for gTLD? 

On July 2, 2012, the U. S. Patent and Trademark Office Trademark Trial and Appeal Board (“TTAB” or “Board”) granted Hershey's request to register the design and shape of a chocolate bar as a trademark on the Principal Register.

On July 6, 2012, in Lebewohl v. Heart Attack Grill, LLC , a New York Judge made it possible, in the words of the Wall Street Journal, for people to continue to “Order Up a Heart Attack" in, at least, Las Vegas and Manhattan.

The U.S. Copyright Office has made it clear through a Statement of Policy released on June 18, 2012 that “functional physical movements such as sports movements, exercises, and other ordinary motor activities alone" are not works of authorship protected under U.S. copyright law.

At a conference held June 18 at Stanford University Law School - The 9th Annual Stanford Ecommerce Best Practices Conference - it was reported that copyright holders are increasingly using the Digital Millennium Copyright Act's ("DMCA") notice and takedown procedures to address copyright infringement on websites.

The list of gTLD applications and applicants, disclosed by ICANN yesterday, is a fascinating read.  It provides an insight into how the Internet will be transformed (or, depending on your point of view, confused) in the coming years as new domain name extensions are introduced to consumers.

ICANN published the list of applied-for gTLD character strings today. Here is the list. Take a look to see who has applied. There are many applications for .BRANDS, like .AMERICANEXPRESS, .MACYS, and .LEGO. 

Do you "google?" That is the essence of the question before the Federal District Court in Arizona in a Complaint filed on May 21, 2012 by David Elliott against Internet search engine giant Google, Inc. In Elliot v Google, Inc., CV-12-1072-PHX-MHB, Elliot claims that Google’s once distinctive mark GOOGLE® has become generic and lacks trademark significance due to its common use as a transitive verb.

As promised, ICANN reopened the TLD Application System (“TAS”) on May 22, 2012. Registered users are now able to log in and complete their applications.  ICANN has indicated that the system will remain open until 23:59 GMT/UTC on Wednesday, May 30, 2012.

As ICANN struggles to get its application system back online, companies have begun lining up to make a profit off of the peculiarities of the application process itself. 

ICANN has temporarily taken the TAS application system for new generic top level domains (gTLDs) offline due to a “technical glitch.”  According to ICANN, a technical problem allowed a limited number of users to view other users' file names and user names. 

On Monday, the Court of Appeals for the Fourth Circuit reversed the district court's decision ending Rosetta Stone's trademark infringement case against Google.

On March 29, 2012, the user registration window closed for anyone planning to apply for a new generic top level domain (gTLD).   Applicants who registered prior to March 29, 2012, however, still have until April 12, 2012 to complete their application.

Pinterest, the latest social media craze, announced on Friday night in an email to users that it intended to make certain changes to its Terms Of Service. The changes will not go into effect until April 6, 2012. 

Thanks to DuetsBlog for providing an update on the EAT MOR CHIKIN v. EAT MORE KALE dispute that was the subject of our prior post. 

The Wall Street Journal had a piece recently about how the recipients of trademark infringement cease and desist letters are increasingly using "online shame" to gain leverage in disputes with trademark owners. As "trademark bullying" is a hot topic among trademark lawyers and in the press, this article picks up on that theme.

The New York Times had an interesting article about the ongoing dispute between Princeton Vanguard and Frito-Lay over Princeton Vanguard's attempts to obtain a federal trademark registration for the mark PRETZEL CRISPS.

On the heels of recent attempts to trademark a celebrity baby name comes the story of an attempt to obtain trademark protection for the name of a sports celebrity. Well, a variation of a sport celebrity's name. 

Last week, during a special meeting of the ICANN Board of Directors, the ICANN Board approved a resolution that contained a "reaffirmation" that ICANN will open a second application window for the gTLD program "as expeditiously as possible."