Sunday, May 5, 2013

The End of The United Stated Patent and Trademark Agency?

Brand Ventures IP Law's Blog is back to weekly postings, and ideally, we will be cross-linking content with our other social media platforms (Brand Ventures IP Law's Facebook Page, Brand Venture's Twitter Feed, and the admittedly long overdue monthly release of the Brand Central IP Newsletter) to the point where we will soon look to have new content daily. 

As for recent reports that a New York law firm has taken the role as Plaintiff against the almost unanimously frustrating and oft despised entity known as the United Stated Patent and Trademark Agency, this news could only be described as welcome and long overdue; however, what is curious is the fact that over the US government by way of the USPTO or a class of defendants, it was a law firm that brought suit. 

Don't get me wrong, it has crossed my mind to do something to bring about the end to the companies beyond official looking solicitations and requests for fees from new trademark applicants, and I knew something would be done eventually, I just never imagined it would take a law firm itself to bring about an end to the frustration this entity brings without exception every time a client receives one of the notices seen above.  Once the logic of a law firm acting as Plaintiff set in, as they are arguably the party most harmed by the time wasted explaining the nature of the requests and to assure clients no response is necessary, I then began to wonder if a second action in California would help, and if so, if anybody knew a good affordable litigator.

The root of the problem exemplified and most notably practiced by the USPTA is with the free and unbridled access the public has to the information on the USPTO's TESS database, a useful and necessary tool that nonetheless is ripe for abuse from those looking for some angle to profit off of the information contained in an Applicant's public trademark application.  To provide a quick overview of the aforementioned practice, it is necessary to delve into the procedures involved with a US trademark application.

First, once an application is submitted to the USPTO, the information then becomes publicly viewable after a weeks time.  Given the access to the address, phone number and sometimes the email address of the Applicant, the USPTA sends out thousands of notices that appear to be a bill for services rendered, when in fact, the fine print will show it is actually a pre-populated invoice for the USPTA's trademark watching services.  Once a client sees that they apparently owe an additional $375 never before disclosed to them, a confused sometime upset client will call their attorney for an explanation, or if unrepresented, they will often place a call to the USPTO directly.

Invariably, these conversations begin and end with one general questions:  Do I owe more money for the trademark application you claimed was paid for in full?  Once the nature of the solicitation is explained, I typically feel compelled to reiterate the utility and purpose of some trademark watching service, although whether out of spite or an inherent distrust of any company who promotes themselves in this manner, I tend to recommend other companies if the client appears interested.  So, is this a scam that is a violation of trademark law itself, is this company preying off of the close proximity and association its name has with the USPTO?  Well, even if the DuPont factors led to a neutral finding, there is no getting around the most important and persuasive factor, which is that consumers are actually being confused, a fact that should make the finding of confusion much more plausible.

Now, having established that there could very well be a finding of confusion, which party has the ability or standing to bring such a claim? Is the USPTO the only party with such a right given its monopoly over the agency name that ironically is universally synonymous with US trademarks?  This it would seem will be a crucial part of the eventual analysis, but given the fact that the USPTO is well aware of the USPTA's activities, as demonstrated by the notices attached to filing receipts and in the information section of the USPTO's website, it is unclear whether the party most likely to have a claim for confusion is even interested in invoking itself in such a lawsuit.  This may be immaterial and the reason a law firm moved forward anyway, as the USPTO will undoubtedly be called as the key witness in the now ongoing lawsuit. 

That being said, with the number of calls the USPTO themselves have had to handle when pro se Applicants receive such letters, it is likely they will jump on this opportunity and inject themselves into this case in some meaningful way, but perhaps, they too are unsure of the strength of the claim that the USPTA's practices are on their face in violation of trademark, unfair competition statutes or other business torts that could be easily asserted but less easily proven.  Regardless of the eventual outcome, the publicity and threat of a judgment could have the intended effect without even reaching a final judgment, as the USPTA may deem their era of opportunistic role playing to have reached its inevitable end.  

While just another lawsuit to outsider onlookers, I know that the Plaintiff firm is likely enjoying a revered status at this years INTA.  Doing something many of us have thought necessary and many have been tempted by the prospect of, we may very well be close to being back to the days where client's are confused by the USPTO's own set of "hidden fees" and opaque procedures.  The days of transparency and clarity with respect to the examination of US trademarks may yet still be far far away, but at least hope can be had that if somebody is going to confuse applicants for trademark registrations, it will once again be a power back into the sole possession of the USPTO.  And yes, given the experience a practitioner can have with the sometimes questionable wisdom of the USPTO's own examination process, it is only fair that they do all they can to ensure that they themselves possess the power to create a system likely to confuse.

Wednesday, January 23, 2013

The Emergence of Personal Branding in Professional Sports

For years, athletic leagues, collegiate sports associations, and professional teams have dominated the savvy use of intellectual property procurement to solidify their ownership of not only the teams, leagues and associations themselves, but to also monopolize the ownership of the name and likeness of the players that earn these entities billions of dollars annually.  

This issue was brought to light in the legal world in the notable appellate battle between professional sports leagues and the fantasy leagues which profited off of the statistics, names, logos, and slogans associated with these various league's players and teams.  
The ruling in C.B.C. Distribution v. Major League Baseball, a case denied cert by the Supreme Court, leaving in place the final decision of the Eighth Circuit, held that the First Amendment interests in public information about baseball and baseball players outweighed the players’ state law right of publicity.
What was interesting about the ruling was those rights of publicity allegedly the property of the "players" was actually the property of MLB, thus the basis for the league, not a group of players, standing as the plaintiffs in the case.  
It may have been this ruling and the attention it received that began the trend of players taking control of their own name and likeness, a trend reflected in a significant amount of professional and collegiate athletes acting swiftly in personally protecting the nicknames assigned to them by teammates, fans, and the media. 
Just in the last year, we have had Jeremy Lin and his legal disputes over the ownership of the LINSANITY trademark.  Next it was No. 1 NBA Draft Pick Anthony Davis and his series of self-deprecating trademarks centered around his unusual UNIBROW trademark look.  
Heisman winner JOHNNY FOOTBALL made sure the NFL didn't get its hands on the famous moniker bestowed upon the young QB out of Texas, a trademark which could earn him as much as his rookie contract given its already ubiquitous presence in the media and its potential for endless forms of commercial use in the coming seasons. 
Just this week, further evidence came from the USPTO that players view the value of their own intellectual property as essential tools to further profit from their unique talents, especially given the sometimes short playing careers of professional athletes due to injuries, lack luster play, and sometimes an absence of opportunity. 
Seemingly just hours after confirming he was sure to be one of the feel good stories covered by the media from every angle imaginable during the two weeks leading up to the Superbowl, Colin Kapernick took steps to ensure that no one but himself would stand to benefit from his meteoric rise to national fame.  
As a late draft pick, his ability to profit from his personal branding efforts is yet another example of professional athletes taking back the profits normally taken by the leagues they play for, and a demonstration that athletes can play the branding game just as well as leagues and teams their personal brands result from. 
Here are the trademarks CK7 recently filed with the USPTO:
1. Colin Kaepernick: Clothing, namely, shirts, pants, jackets, footwear, hats and caps, jerseys
2. Kaepernick CK7: Clothing, namely, shirts, pants, jackets, footwear, hats and caps, jerseys
3. Kap7: Clothing, namely, shirts, pants, jackets, footwear, hats and caps, jerseys
4. Kap: Clothing, namely, shirts, pants, jackets, footwear, hats and caps, jerseys
5. Kaepernick7: Clothing, namely, shirts, pants, jackets, footwear, hats and caps, jerseys
6. Kaepernicking: Clothing, namely, shirts

Saturday, January 5, 2013

Essential ®eading: The Google Shortcut to Trademark Law

From the Yale Law School Information Society Project, Lisa Larrimore Ouellette has written a compelling companion article that highlights many of the important issues she recently discussed at a presentation delivered at Oxford University.

Click here to download the article

To provide our readers with a preview and overview of the truly important read for trademark practitioners and intellectual property law academics alike, we borrow from the abstract she has used to describe the thesis and contents of the 52 page paper, a paper sure to be receiving much justified attention in the coming months in the legal community and the IP law community in particular.

Borrowing from her abstract, her paper contends the following with respect to the value and utility of the Google Search Engine and its ability to function as a primary reliable source when seeking to determine the strength of a trademark and the likelihood that a particular trademark will be or is being confused with another trademark or several existing trademarks:

"The strength of a trademark — the extent to which consumers view the mark as identifying a particular source — is difficult to evaluate in practice. Assessments of “inherent distinctiveness” are highly subjective, survey evidence is expensive and unreliable, and other “commercial strength” factors such as advertising spending are poor proxies for consumer perceptions. Courts often fall back on heuristics and intuition rather than precise logical analysis.

But there is a simpler way to determine whether, when people look for a mark, they mean to find a certain product: Google. Google dominates the web search market by correctly predicting what people think of when they type a word or phrase, and Google results thus can increase the predictability and accuracy of the subjective tests in trademark law. Courts have generally given online search results little weight in offline trademark disputes. But the key factual questions in these cases depend on the wisdom of the crowds rather than expert judgment, making Google’s “algorithmic authority” highly probative.

Through a study of federal trademark cases and contemporaneous search results, I argue that Google can generally capture both prongs of the test for trademark strength: if a mark is strong — either inherently distinctive or commercially strong—then many top search results for that mark relate to the source it identifies. The extent of search overlap between two different marks can also be relevant for assessing the likelihood of confusion of those marks. In the cases where Google and the court disagree, I argue that Google more accurately reflects how consumers view a given mark."  (
Ouellette, Lisa Larrimore, The Google Shortcut to Trademark Law (January 3, 2013). Available at SSRN:

As the Internet and Internet searches become an increasingly ubiquitous part of our society and their use as evidence in trials and as part of the trademark examination process increases, it will be interesting to see how the thesis presented in this paper holds up and whether courts and administrative agencies are resistant to the role of internet searches increasing and as such reticent of these online tools being given too much recognition or probative value in determinations of trademark strength and likelihood of confusion with other trademarks.