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A FEW TIPS re managing copyright, trademarks and intellectual property  [Please note, the postings on this blog are for informational purposes only and do not constitute legal advice]   ...follow and subscribe to this blog on wordpress

Entries in Trademark (61)

Monday
Jun092014

Meet .NYC – the new domain for New Yorkers 

A new class of generic top-level domains (gTLDs) is rolling out, including “.nyc”!  This is a new domain for New Yorkers.  Here is a bit of information about the new .nyc domain from the official website: http://www.nic.nyc/about/ 

Who Will Own .nyc?

  • Any New Yorker whose work, ideas and creativity are based in the City.
  • Locals who provide services, products or content to fellow New Yorkers.
  • Companies, organizations and individuals wishing to showcase the value of their location online.

When can I register a .nyc domain name?

It is currently expected that .nyc will launch as early as May 2014, with phasing as follows.

PHASE 1 (May 2014): Trademarks Sunrise (45 days – ending June 20, 2014)

Sunrise is an initial period designed to protect intellectual property rights holders: those with registered trademarks. Trademark owners can take advantage of the Sunrise phase to safeguard the domain name that matches their trademark. As required by ICANN, all trademark owners must have their marks validated and registered in the Trademark Clearinghouse as a minimum requirement if they wish to register during Sunrise. Submit a trademark to the Clearinghouse at: http://trademark-clearinghouse.com.  After marks are registered with the Trademark Clearinghouse, registered trademark owners may apply for their own .nyc web address at: http://www.nic.nyc/trademarks.  The steps for priority registration for registered trademark owners are outlined here: http://www.trademark-clearinghouse.com/content/nyc-priority-registration-trademark-holders?utm_source=.NYC&utm_medium=clickthrough&utm_campaign=NYCSunrise

Learn more about the Trademark Clearinghouse on ICANN’s website: http://newgtlds.icann.org/en/about/trademark-clearinghouse

If there is more than one qualified trademark holder applying for the same domain name, an auction will be held to determine the registrant.

PHASE 2 (June/July 2014): City Government-Affiliated Reserve List (30 days) / Sunrise Auctions

During this phase, City government and government-affiliated .nyc entities will have the right to register .NYC domains through a City-designated single point of contact that will authenticate eligibility.

PHASE 3 (August/September 2014): Landrush (60 days)

All businesses, organizations and residents with a physical address in the City will have an equal opportunity to register .nyc domains during the Landrush phase. There will be a slightly higher fee for registrations occurring during the Landrush phase. If there is only one application for a .nyc domain name during this period, the applicant for that name will be granted the registration. If there are multiple applications for a domain name during this period, however, an auction will be held to determine the registrant after completion of the Landrush period.

PHASE 4 (October 2014): General Availability

After the Landrush phase, all businesses, organizations and residents with a physical address in the City of New York shall be entitled to register .nyc domain names in real-time on a first-come, first-served basis. For the first ninety (90) days of General Availability, in the event that a domain name registrant applied for a domain name that is an exact match of a trademark appearing in the Trademark Clearinghouse, the registrant will receive a notice about that trademark during the registration process and asked whether or not it wishes to proceed with the registration. If it does, the name will proceed to registration, but may subsequently be challenged by the Trademark owner through an ICANN dispute resolution procedure if the name is likely to cause confusion with the trademark.

For more information see the Official Website at http://www.nic.nyc/  and http://www.nic.nyc/trademarks/.  For folks outside of NYC, a new generic top-level domain may be launching in your area too.

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

Thursday
Jun052014

One can love chicken & Bob Marley tunes (ONE LOVE trademark dispute settles) 

The ONE LOVE trademark dispute between Bob Marley’s estate and Raising Cane’s tess picchicken finger restaurant raises some interesting trademark and copyright issues. According to Louisiana newspapers, the trademark dispute recently settled on undisclosed terms; however, the issue at the heart of the dispute is interesting.

THE ISSUE: Trademarking someone else’s song title for restaurant services.

THE STORY: In 2005, Raising Cane’s chicken finger restaurant obtained a USPTO registered trademark for ONE LOVE to be used to sell “restaurant services” (Reg. No. 3033511).  This same phrase ONE LOVE is part of the title and refrain to the famous Bob Marley tune, “One Love/People Get Ready,” recorded with his band The Wailers.  In 2007, Marley’s estate (represented by Fifty-Six Hope Road Music) applied for a USPTO trademark registration for ONE LOVE for “hotel, bar, and restaurant services” but was refused trademark registration because of the pre-existing ONE LOVE trademark registered to Raising Cane’s for similar services.  (A likelihood-of-confusion refusal).  The dispute escalated, the courts became involved and evidently the parties recently settled on undisclosed terms.

THE SCOOP: As demonstrated by this series of events, the title of a song will not necessarily block or cancel a USPTO trademark application or registration.  Songs and original music are protected by copyright laws; however, copyright protection does not extend to short phrases and titles.  The USPTO trademark registration system is available for protecting short phrases.  Timing of a USPTO application is also a determinative factor.  For example, if Bob Marley’s estate had applied for a ONE LOVE trademark to be used with restaurant and related services BEFORE Raising Cane’s applied for it, then the outcome would likely be reversed and Marley’s estate would have blocked Raising Cane’s trademark application.

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

See also: “One Love” dispute transfer order at http://www.scribd.com/doc/206584538/One-Love-dispute-transfer-order; an earlier blog post: Title Copycats; News articles: Raising Cane’s, Bob Marley estate reach agreement by Joe Gyan Jr, Bob Marley’s estate’s legal saga over Raising Cane’s ‘One Love’ to play out in Louisiana by Emily Lane on 2/11/14, and Raising Cane’s, Bob Marley’s estate settle ‘One Love’ slogan dispute by Diana Samuels on 5/23/14; the USPTO trademark search at http://www.uspto.gov/ @iplegalfreebies and www.iplegalfreebies.wordpress.com.

Friday
May162014

How to use the trademark & copyright symbols: ®, TM, SM, ©

The ® Registered Trademark Symbol

Once a trademark is federally registered with the USPTO (US Patent & Trademark Office), the coveted ® symbol can be used. While use of the ® symbol is not required, it is highly recommend. Using the ® symbol lends credibility to a registered mark.  Additionally, it puts potential infringers on notice of the trademark owner's rights and makes it easier for the trademark owner to collect certain damages in the event someone infringes these rights.

The TM and SM Trademark Symbolsphoto (1)

The TM and SM symbols can be used with an unregistered trademark or service mark to inform the public that a word mark, logo, or design mark is being used as a trademark and that the owner of the mark claims rights to it.  Using either of these symbols gives notice that the mark owner is intentionally establishing ‘common law trademark rights’ in the mark. For example:  MY TRADEMARK ™  or MY SERVICE MARK ℠    (For more information on how to use the TM or SM symbols click here).

The © Copyright Symbol

Another familiar symbol is the  copyright symbol.  Using the © symbol is an easy way to notify the world that copyright exists in your original, creative work.  While it’s not required by law to use the © to establish copyright in a photograph, piece of music or other original work, it’s simple to do and could save you a lot of headache down the road.  Use of the the © copyright symbol does not require permission from, or registration with the US Copyright Office.  (For more information on how to write a © copyright notice click here).

Many creative works may contain both a trademark symbol and a copyright notice.   A website, for example, will often contain the website owner's trademark (registered or unregistered) and a copyright notice.  A novel may have the publisher's registered trademark and the author's copyright notice on it.

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

See also: USPTO (US Patent & Trademark Office) resources at www.uspto.gov; www.uspto.gov/trademarks/basics/register.jsp; and www.uspto.gov/faq/trademarks.jsp#_Toc275426682 ; US Copyright Office Circular 3 on Copyright Notice at www.copyright.gov/circs/circ03.pdf; US Copyright Office Circular 1 on Copyright Basics at www.copyright.gov/circs/circ01.pdf; @iplegalfreebies and www.iplegalfreebies.wordpress.com.

Thursday
Apr102014

MoveOn.org lawsuit- The Billboard Can Stay

Earlier this week, a federal judge in Louisiana ruled that the billboard using the PICK YOUR PASSION trademark to criticize MoveOn billboardLouisiana's governor for refusing to expand Medicaid can stay up.  The judge denied a preliminary injunction requesting that the billboard be taken down asap.   The judge's preliminary ruling that the billboard can stay up is an indication that she does not feel folks were confused by the billboard.  Evidently, the judge stated in her decision that, "[i]n this Court's view, the Lieutenant Governor underestimates the intelligence and reasonableness of people viewing the billboard."  On an interesting aside, MoveOn stated in a campaign drive this week that initially they had only intended to keep the billboard up for a month.   Now MoveOn is raising money to "ensure our winning billboard will stay up."  (I grew up in Louisiana and made a contribution to MoveOn's billboard fund).

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

See also: The case, Dardenne v. MoveOn.org, case number 3:14-cv-00150 available at http://media.nola.com/politics/other/Dardenne%20Complaint.pdf; McCarthy On Trademarks, vol 4 and vol 6; MoveOn.org which features the lawsuit on their website’s homepage at http://front.moveon.org/; The Louisiana Office of Tourism’s website at http://www.crt.state.la.us/; photo by Pam Kaster at www.pamkaster.com; @iplegalfreebies and www.iplegalfreebies.wordpress.com.

Wednesday
Mar262014

MoveOn.org lawsuit- Trademark Infringement or Free Speech?

Did you know that it's a trademark infringement issue that Louisiana's lieutenant governor has sued the nonprofit MoveOn.org over? (I gotta tell you that the defense of "free speech" keeps coming to my mind).

The trademark at issue is PICK YOUR PASSION [likely USPTO Reg. No. 4022761] which is owned by the Louisiana Department of Culture, Recreation & Tourism for the purpose of "promoting culture, tourism and business in Louisiana."  The claimed infringement is an alleged misuse of the tourism trademark PICK YOUR PASSION by MoveOn.org which criticizes Louisiana's governor for refusing to expand Medicaid with the following slogan, "LOU!SIANA Pick your passion! But hope you don't love your health. Gov. Jindal's denying Medicaid to 242,000 people."

The complaint filed in the lawsuit alleges that MoveOn's "political statement" (which is on a highway billboard, YouTube videos and television commercials) is a trademark infringement, because, it "confuses the viewing public as to the source" of the billboard message.

Confusion, specifically, the likelihood of confusion as to the source of goods and services is paramount in evaluating trademark infringement (codified in the Lanham Act).  However, the free speech protections granted by the First Amendment can be a defense to allegations of trademark infringement.  The general rule, regarding the free speech defense, is that "anyone, competitor, critic or comedian" is permitted to use a trademark to criticize the policies of the mark owner.   Here, MoveOn is using non-commercial speech to criticize the governor of the State of Louisiana and not the State's Department of Culture, Recreation & Tourism (who owns the PICK YOUR PASSION trademark) with their political statement.  It will be interesting to see how this lawsuit develops.

It seems the lawsuit has already launched a whirlwind, national campaign for MoveOn.org to raise money and awareness about their political agenda.  It's hard to say how many folks noticed the billboard on the I-10 interstate approaching Baton Rouge, Louisiana before the lawsuit was filed.... it's getting attention now.

The MoveOn.org billboard was still up yesterday (3/25/14), when my mom took the photo above.  (And as a humorous post script, the next billboard on I-10 after the “pick your passion” billboard at issue touts a steamier message).

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

See also: The case, Dardenne v. MoveOn.org, case number 3:14-cv-00150 available at http://media.nola.com/politics/other/Dardenne%20Complaint.pdf; McCarthy On Trademarks, vol 4 and vol 6; MoveOn.org which features the lawsuit on their website’s homepage at http://front.moveon.org/; The Louisiana Office of Tourism’s website at http://www.crt.state.la.us/; @iplegalfreebies and www.iplegalfreebies.wordpress.com.

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