A Legal Blog by Aaron | Sanders, PLLC


Honey Catches Flies and Hackers, But Not A Trademark Registration

In honor of Valentine’s Day, the Trademark Trial and Appeal Board has offered us honey. You know, that stuff with which you catch more flies.

The lines between descriptive and suggestive marks has never been easy to define.  Bitvoyant, a Virginia-based software company, found that out this week.  Bitvoyant applied to register the mark HONEYFILE in connection with the following:
Computer software platforms for use in the field of computer network security that assist in the tracking of data exfiltration and network intelligence in Class 9; and

Computer security consultancy; Computer security service, namely, restricting access to and by computer networks to and of undesired web sites, media and individuals and facilities; Computer security services, namely, enforcing, restricting and controlling access privileges of users of computing resources for cloud, mobile or network resources based on assigned credentials; Computer virus protection services; Design and development of electronic data security systems; Platform as a service (PAAS) featuring computer software platforms for use in the field of computer network security that assist in the tracking of data exfiltration and network intellegence in Class 42.
The Examining Attorney found the mark descriptive, based on evidence that the cybersecurity industry used the term to denote files that would…

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A Business New Year’s Resolution – Don’t Violate the Trademark “Anti-Trafficking” Rule

You need a trademark lawyer. No, really.  Even if you have a corporate lawyer. No, especially if you have a corporate lawyer.  Do not let your corporate lawyer do your trademark lawyer’s work.  Would you let your dentist do your appendectomy?  The following is a story of trademark work gone wrong. (Arguably better than an appendectomy gone wrong, but still).

Perry Orlando files a trademark application for THE EMERALD CITY in 2008. He files on an “Intent to Use” basis. Everything goes fine, and the application is allowed, but Mr. Orlando still has to file is Statement of Use before the mark will register.

In 2009, and before he files the Statement of Use, Mr. Orlando assigns the trademark to Emerald Cities Collaborative, Inc. (The U.S. trademark lawyers, of course, can see the problem immediately). From the case, it looks like the assignment was probably drafted by a lawyer. The lawyer seems to have even maybe understood the problem and tried to get around it.  Mr. Orlando agreed to “assign unto ECC all right . . . in the Mark . . . . at such time as the Mark is registered at the PTO” (emphasis in original). Emerald Cities Collaborative…

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Poking Bears and Blocking ISPs

I’m going to post this and then go hide out in a bunker somewhere.  I’m not even sure I can get through the introductory paragraph before needing to take cover.

 

 

SOPA.

 

(Crawling back out from her hiding space under her desk…..)

 

You will all remember the Day the Internet Went Black in protest of the twin legislative boogey men, the Stop Online Piracy Act in the House and the Protect IP Act in the Senate.  The acts were secretly negotiated and quickly drafted attempts to curb piracy and counterfeit from foreign sites by prohibiting U.S. companies from advertising on those sites or processing payments to those sites, or from indexing those sites on search engines. We’re coming up on the 5th anniversary of Protest Day. The primary arguments against the bills were that the DNS blocking provisions would “break the internet,” that it was not narrowly tailored to avoid curbing free speech, that it would chill sites for user-generated content, and that it would generally stifle internet innovation.

The short history is that the bills came out, the Internet went berserk, the Internet went black, and the bill died.  Prior to the demise, those of us who moderated panels on the issue that…

dreamstime_m_48059685

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Pitching Buck Rogers: Trademarks and Future Use

Of course, Buck Rogers would be the one to teach us about trademark rights that exist only in the future.

 

In a case that spans almost as much time as Buck’s leap across the centuries, the heirs of Philip Francis Nowlan (the character’s creator) and the Dille Family Trust, purported successor-in-interest to John F. Dille, whose National Newspaper Service had distributed Buck to the masses beginning in 1924,  were most recently in court in the U.S. District Court for the Eastern District of Pennsylvania.1

Anyone who has dealt with legacy properties and heirs will recognize the facts of this dispute. They involve a poorly written release from 1942 in which Mr. Nowlan’s widow transferred all Buck Rogers copyrights to “John F. Dille Company” and all trademarks to “John F. Dille,” for a paltry sum. Nearly 70 years later, around the time other folks were starting to make katrillions of dollars on comic character movie franchises, the successors from both sides took notice, ran a race to the USPTO, and started canceling and opposing and applying like crazy, in an attempt to secure rights to get in on the summer blockbuster money making action.2

During the time that all the shots were being volleyed…

The comic book copyrights were not renewed , although the copyright status of the Buck Rogers is currently (and unsurprisingly) in dispute as well.

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Catch Downtown Fever! Why Trademark Ownership Disputes Are the Worst

Who Owns the Jelly Nailed to the Wall?

There are few legal holy messes like a dispute over trademark ownership. Sure, copyright and patent ownership disputes can be messy, but nothing like trademark ownership. And, sure, copyright ownership can be tricky, but it’s a walk in the park compared to trademark ownership. Here are some reasons why:

There can normally be only one owner of a trademark for a given set of products in a given market. Why? That’s because a trademark serves as a link between products and a single source. In contrast, copyrights and patents can have multiple owners.
But there can be multiple legitimate owners of trademarks for the same or similar products, if (a) they are geographically remote from each other AND (b) the later (“junior”) user isn’t on notice about the earlier use (which is often the case). Why? Because the point of a trademark is to prevent confusion, and there’s chance of confusion if different owners are far enough away from each other. Copyrights and patents, by contrast, automatically have national scope.
The owner of a trademark is the one who “actually uses” it for the products in the market. But often many hands are involved in…

WE WANT DOWNTOWN FEVER! WE WANT DOWNTOWN FEVER! (Even if we would have to go to a different club to see them?) By Asroma - Own work, CC BY-SA 3.0, https://commons.wikimedia.org/w/index.php?curid=6746532

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