Domain Name Dispute of googblog.com With Google’s Trademark

Google came out victorious in a cybersquatting case against the owner of googblog.com. Just who owned googblog.com? A 17-year-old boy named Herit Shah from Gujarat, India. Google filed the dispute through the World Intellectual Property Organization (“WIPO”), claiming that googblog.com is confusingly similar to Google’s trademarks.

Further, Google uses ‘GOOG’ as their NASDAQ financial stock ticker since 2004. Google claims trademark rights to the term ‘Google’ as far back as 1997.

Google’s domain name dispute lawyer got Shah to admit “I was in a bad faith that i can legally keep the domain googblog.com but when i kept myself in the place of google i understood i really did very unfair to google. since two weeks i have been trying to delete the domain googblog.com, but i am unable to because godaddy has put my domain on hold, on your consent godaddy may delete the domain or unhold it. I sincerely apologise to Google for infringement, misuse of their intellectual property (GOOGBLOG.COM).”

Pre-litigation negotiations between the Google and Shah failed. Google was only victorious when it was forced to file the Complaint through WIPO. That’s why it’s critical to discuss domain name disputes early with your domain name dispute attorney. See Google Inc. v. Herit Shah
Case No. D2009-0405.

Sonia Sotomayor an Intellectual Property Attorney?

It turns out President Obama’s nominee to the Supreme Court was a partner at a firm that handled intellectual property litigation. In fact she ruled on an important copyright case, Tasini vs. New York Times, while she served as a federal judge for the U.S. District Court of the Southern District of New York. However, the case was later reversed by the appellate court and was then appealed again by the U.S. Supreme Court, in New York Times Co v. Tasini 533 U.S. 483 (2001). The case involved a claim of copyright infringement brought by freelance journalists against the New York Times and other news organizations (the “publishers”), when the publishers distributed articles written by the journalist to Lexis/Nexis, a legal database, without the permission of the journalist. The publishers claimed a privilege accorded collective work copyright owners by §201(c) of the Copyright Act.

At the District Court level, Sotomayor ruled in favor of the publishers, claiming that they were entitled to reproduce the articles within Lexis/Nexis under the protection of the collective work copyright. (The collective copyright entitles the copyright owner rights to the collection as whole, but not to the individual authored works which are separately copyrighted works). However, both the appellate court and the U.S. Supreme Court reversed Sotomayor’s decision ruling in favor of the freelance journalists.

The Supreme Court reasoned that as the articles appear in Lexis/Nexis, they do not appear as a collective work, rather “[w]hen the user conducts a search, each article appears as a separate item within the search result.” The Court further stated “the Database does not reproduce and distribute the article ‘as part of’ either the original edition or a ‘revision’ of that edition."

Obtaining Your Domain Name Back From Cybersquatters Through UDRP

A common scenario for established or new companies occurs when its primary domain name has been seized by a cybersquattor. For example, imagine your company name and trademark is “Sizaroma.” You were able to register www.sizaroma.com but later www.sizaroma.net, www.sizaromas.com, and www.sizaaromas.com were registered by someone else, probably a guy in China who in bad faith, has no intention of ever using domains. Or worse, he later puts up a competing website in bad faith with similar goods and services feeding off the goodwill that you have worked so hard to create. That my friends is a cybersquatter. So what are your options? One of the best is a Uniform Domain Name Resolution Policy proceeding (“UDRP”). A UDRP is like a streamlined litigation done with an arbitration panel, usually with the National Arbitration Forum or WIPO. A complaint is filed, and the cybersquatter is allowed a chance to respond. You do not have to serve the defendant like in a typical lawsuit. Nor is there a trial or any discovery. Further, there is no jurisdictional issues, so if the defendant is in China, a claim can still be made against him.

The net result is a transfer of the domain name. No money damages or injunction from using the trademark can be issued in UDRP, rather it's strictly about getting your domain name back. So the beauty of UDRP is that it is straight to the point, and can be completed within a few months rather than a long dragged out litigation that could last for a year or longer.

There are however other means for domain name disputes, such as filing a federal lawsuit under the Anticybersquatting Consumer Protection Act ("ACPA"), or perhaps a traditional trademark infringement lawsuit. An IP attorney would have to evaluate each scenario to determine the most appropriate method.

No Trademark for Pussy

Certain things can be trademarked while other things cannot. Some of the “not” things are certain words or designs that are deemed to be immoral or scandalous under Section (2) of the Lanham Act. For example, remember when Damon Wayans tried to trademark “Nigga” for clothing? That got shut down by the examiner at the USPTO under Section (2).

In a recent 27-page decision, the Trademark Trial and Appeals Board (“TTAB” or “Board”) refused registration of the mark PUSSY NATURAL ENERGY in connection with energy drinks on the basis of it being scandalous.

Applicant’s attorney of course argued the predictable, that the mark has multiple meanings (meow!), and that nothing in the packaging is inherently or even suggestive of a vulgar connotation. Nonetheless the Board still stated that “the continually evolving meaning of the term ‘pussy’ has come to mean something more, (sic) than merely a cat…[s]pecifically, the term ‘pussy’ refers to the female genitalia…” Further, the Board concluded that based on the evidence the “attention-grabbing meaning is the only reasonable meaning to conclude the relevant public would perceived in this context.” Dare we ask what flavor the drink was?

AMERICAN APPAREL DUKES IT OUT WITH LAWYER KEITH FINK

American Apparel has had its share of lawsuits. More recently with Woody Allen after American Apparel posted billboards of Allen without his permission. Now, American Apparel is on the offense against an opposing attorney in an employment litigation.

Keith Fink has a reputation as an aggressive employment attorney, typically suing celebrities and others in the entertainment industry. One of Fink’s notable cases is against blogger queen Perez Hilton over the PerezRevenge domain name trademark litigation. Fink represents a former employee of America Apparel that is suing the company’s CEO Dov Charney for sexual harassment.

As a preemptive attack, American Apparel has taken out several ads in UCLA’s Daily Bruin newspaper attacking Fink (who is a professor at UCLA) for his allege misconduct. UCLA however, stopped placing the ads, so America Apparel has moved on to the L.A. Business Journal. The May 11th issue of the paper has an America Apparel ad blasting Fink

Legalzoom Gets Sued

Legalzoom, the legal self-filing service is facing a hefty lawsuit from a Los Angeles attorney Kent Seton, whose speciality is in forming non-profit corporations. Seton sued Legalzoom on February 5, 2009 in Los Angeles Superior Court for breach of contract and misappropriation. The complaint alleges that Seton and Legalzoom entered into a joint venture in which customers of legalzoom would fill out forms on the Legalzoom website, and those forms would be sent to Seton to finalize the formation of a nonprofit entity.

The complaint further alleges that Legalzoom stopped sending Seton the forms and stopped sharing any profits earned, yet Legalzoom retained the proprietary system, that Seton claims he created, on the Legalzoom website.

Legalzoom was paying Seton a fixed fee of $350 per completed application. In total, Seton received $1.6 million from Legalzoom since the venture.

Legalzoom claims there was never a written agreement between them and Seton and that "there is no rational basis for the lawsuit" according to Legalzoom co-founder Brian Liu.

More Fake Celebrity Twitter Profiles

Fake celebrity Twitter profiles are getting out of control, see my previous post regarding the topic. Now Kanye West is the latest celebrity to be subject to a fake Twitter profile. Some cases regarding the use of a celebrity's likeness involved the claim of Right of Publicity. California Civil Code Section 3344 prohibits "Any person who knowingly uses another's name, voice, signature, photograph, or likeness, in any manner on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of products, merchandise, goods or services, without such person's prior consent..." Putting the law aside, we can always count on Kanye's supersensitivity for great entertainment value. Here is what he wrote from his blog:
“DON’T HAVE A F****** TWITTER… WHY WOULD I USE TWITTER??? I ONLY BLOG 5 PERCENT OF WHAT I’M UP TO IN THE FIRST PLACE. I’M ACTUALLY SLOW DELIVERING CONTENT BECAUSE I’M TOO BUSY ACTUALLY BUSY BEING CREATIVE MOST OF THE TIME AND IF I’M NOT AND I’M JUST LAYING ON A BEACH I WOULDN’T TELL THE WORLD. EVERYTHING THAT TWITTER OFFERS I NEED LESS OF. THE PEOPLE AT TWITTER KNOW I DON’T HAVE A F****** TWITTER SO FOR THEM TO ALLOW SOMEONE TO POSE AS ME AND ACCUMULATE OVER A MILLION NAMES IS IRRESPONSIBLE AND DECEITFUL TO THERE FAITHFUL USERS. REPEAT… THE HEADS OF TWITTER KNEW I DIDN’T HAVE A TWITTER AND THEY HAVE TO KNOW WHICH ACCOUNTS HAVE HIGH ACTIVITY ON THEM. IT’S A F****** FARCE AND IT MAKES ME QUESTION WHAT OTHER SO CALLED CELEBRITY TWITTERS ARE ACTUALLY REAL OR FAKE. HEY TWITTER, TAKE THE SO CALLED KANYE WEST TWITTER DOWN NOW …. WHY? … BECAUSE MY CAPS LOCK KEY IS LOUD!!!!!!!!!”

Google Faces Class Action Lawsuit for Trademark Infringement Over Adwords

On May 11, 2009, a Texas trademark litigation attorney initiated a class action lawsuit against Google, Youtube, AOL, and Turner Broadcasting System for trademark infringement. The Class Representative is a small software company in Marshall, Texas, called Firepond. The jist of Plaintiff's Complaint alleges that Defendants are infringing Plaintiff's trademarks by selling Plaintiff's trademark words in Adwords. For example, “Firepond” is one of the terms that were bid upon by Plaintiff’s competitors. When an individual searches for the term “Firepond” in a Google search, an Adword advertisement of one of Plaintiff’s competitor’s appears at the top of the search. This is not the first time Google has been sued for trademark infringement because of its Adwords sales. However, this is the first time it’s been in the context of a class action lawsuit.

How Can I Protect My Idea?

"How can I protect my idea?" This is the most common question I get from new clients. Whether it's a new online software, an interesting baby product, some type of new apparel with unusual patterns, or a new method of business for example, the question is always the same. How do I protect it?

So what is the answer? You can't! Well, maybe you can...It depends...Don't you hate this? The truth is you cannot protect vague, broad, conceptual ideas such as, "I want to protect the concept of having a guitar placed within a piece of furniture." That is an example of a broad concept, not an actual invention.

Patents are for inventions, so if you have a prototype or actually mapped out how your invention works, and you have the ability to explain all the parts of the invention and how the parts interact with each other. And also you can explain why your invention is better or solves problem that the prior inventions or patents failed to solve, then you may have a utility patent.

As for the guy that has a guitar within a piece of furniture, that can be protected too, by "design patent" if he actually developed it or has a picture of the exact look he wants protected.

Each invention is a case by case determination of whether it is patentable. See http://patentlawip.com/patents.html for more information.

Octomom in Trademark Dispute!

"Octomom" Nadya Suleman has filed a trademark application with the USPTO for the term "Octomom" in connection the goods and service of a reality television show and also disposable diapers. (See U.S. Serial Nos 77/711852 and 77/711827). But not everyone is happy about it. It turns out a Texas company not affiliated with Suleman has already filed a federal application for Octomom in connection with an iPhone game. "You press on her belly and she has babies," says CEO Mark Pierce of Super Happy Fun Fun, Inc. SHFF was able to file its "intent to use" trademark application on March 12, 2009, Suleman filed her intent to use application after on April 10, 2009, so Suleman may have been beaten to the punch. However, Suleman's attorney will most likely have to argue that the goods and services are different enough to avoid a rejection. As of today, the USPTO has not issued an office action (rejection) yet of Suleman's trademark application. Stay tuned!

Trademarks and Clothing Lines

Having your attorney file a trademark application with the United States Patent and Trademark Office (“USPTO”), is the way to gain protection of the brand, as it can protect the name, logo, or slogan of the apparel brand. To better understand what is protectable, let’s look at the classic example of Nike. Nike, Inc. has several trademark registrations for the word “Nike” under different classes of goods and services. One registration is filed in connection with their goods of shoes, while a different application is for sporting equipment, and another for backpacks. Further, Nike has several design registrations as well, most notably the swoosh symbol. Additionally, Nike has separate trademark registrations for its slogan “Just do it.” So as you see, one company may have several trademark applications for the same word or logo, but just under different goods and services. The more trademark registrations a company has, the greater the strength of its intellectual property portfolio. To a startup clothingline, having multiple trademark registrations can attract more investors, and create greater confidence and valuation to your company.

Clothing has unique trademark issues compared to other goods and services. Most importantly in regards to the filing process, a proper specimen of use must be submitted that shows the name you have used, on the clothing itself, and must appear in the right location and be used in a trademark manner. Inexperienced attorneys typically receive ornamental rejections based on their specimen of use submitted during the trademark application process. That is why it is critical to have an experience trademark attorney file the application the first time.

Once the application is filed and ultimately approved and registered, the owner of the registration will received nationwide rights to enforce the trademark against other subsequent users. Further, the owner will be able to license, either exclusively or nonexclusively, the right for others to use the trademark name or logo. Licensing can be important to newer clothing companies that have established and created goodwill and a strong following of the brand, but have yet to develop the expertise or resources to manufacturer, distribute, or efficiently sell the clothing. The clothing company can provide a trademark license to a separate company that is more experienced in manufacture, distribution and sales, while the newer company reaps the benefits of the license royalties.

Imposters Posting on Twitter and Other Social Networking Sites

Have you ever wondered if what you are looking at on myspace, facebook and other social networking sites were the actual site of a celebrity? Common sense usually dictates that it's not, especially if it's a big name celebrity. But now with Twitter we may not be so sure. Some of us heard the story about Ashton Kutcher egging on CNN about the number of subscribers. And then the story about Demi Moore communicating via Twitter to an individual that was about to commit suicide.

So are celebrities really hiding behind their online profiles after all? Accordingly comes the celebrity social networking site impersonators. Most recently, Televangelist Robert H. Schuller, whose audience reaches in the millions was vicitm to a bogus Twitter profile. The imposter profile attracted more than 1,000 followers in less than one week. The creator of the fake profile can easily spread rumors about the celebrity, or in the event of a televagelist request money from its follows. Schuller's legal team was quick to get Twitter to respond to remove the imposter profile. The biggest legal claim was probably that of Right of Publicity. http://abcnews.go.com/US/wireStory?id=7176483

Trademark Attorney Michael N. Cohen's Blog

Law Office of Michael N. Cohen, is proud to announce the first of many intellectual property blogs that will focus on various issues of trademark, patent, copyright and entertainment law. To learn more about Mr. Cohen, please view his website at http://www.patentlawip.com