Google – in French

Trademarks are always adjectives. That is the first thing I learned in trademarks class in law school. Take that as a given. Trademarks are always adjectives. By corollary then, trademarks are never verbs.

Enter GOOGLE®. GOOGLE is a search engine that prowls the internet and Finds Things with reasonable efficiency, and it is very popular. So popular, in fact, that the name of the website and company — Google — is now defined as “to search for on the internet.”

Whoa. That’s a verb. Notice the infinitive there? “To search…” That must mean that the word being defined is a verb. “To google.” I hear “google” being used as a verb in common parlance all the time: “I googled myself” instead of “I ran a GOOGLE® search on myself.” It’s shorter. It’s easier to say. It’s wrong.

By making the mark synonymous with that which the mark is meant to identify, the English speakers of the world have admitted the verb “to google” into the English language. English does that. It gloms onto new, interesting and fun words and simply swallows them whole. It did that with aspirin, cellophane and escalator. It’s doing that with XEROX® and KLEENEX®. And, it seems, English is glomming onto GOOGLE®.

French, on the other hand, does not glom. The French language is governed and controlled by a group of word scholars in Paris called >L’Academie Française. These etymologists examine every new word that comes their way to see if the word is eligible for admission into the French language (don’t ask me about the standards they use; run a GOOGLE® search on “l’academie française” and find out for yourself). Therefore, when a new word makes it into the French language, it’s a pretty big deal.

Regardez ici — that means “Look here” for you non-French-speakers — and see what has happened in French. I even heard a rumor from a French-scholar client of mine that it’s officially listed by L’Academie.

Wow. The French have admitted “googler” (pron. “goo-GLAY”) into their language. Is this admission based on usage the death knell for the GOOGLE® mark? After all, if a mark comes to mean what the product or service is, the mark can be challenged as being generic. Even fanciful marks can turn generic with usage: the list of these is long. Escalator. Cellophane. Aspirin.

Stay tuned.

Disney to Buy Marvel for $4 Billion – ABC News

Disney to Buy Marvel for $4 Billion – ABC News.

Wow. Just wow.

Disney is already among the biggest entertainment businesses in the world, what with the movies and the theme parks and the hotel properties and the Broadway shows and all the rest of it. I believe they even have an inroad in the comics market (if they don’t now, I’m sure they did when I was a kid; I remember Mickey Mouse comics). Marvel has a thoroughly different look from Disney, so this will be an interesting evolution. I wonder if Superman will develop the Disney eyes?

Relatives barred from using Gucci brand name in U.S. | Reuters

Relatives barred from using Gucci brand name in U.S. | Reuters.

It’s not like names provide the strongest marks in the world; in fact, generally speaking, a name mark is on the weaker side. Unless it’s famous.

The Gucci® name is a famous brand. You hear it, you think of the high-end  clothing and accessories designed by the Italian designer owned by the French couture house PPR. Now, along come the designer’s ex-wife, Jennifer Gucci, and their daughter, Gemma Gucci, trying to sell clothing and accessories under the name Gucci. Well, it’s their name, too, right?

Wrong. The US District Court for the Southern District of New York has enjoined these ladies from using the famous Gucci mark or anything confusingly similar to the mark for any products or services they might want to market. The bench trial showed the judge that the products and branding were confusingly similar to the Gucci merchandise; there’s a permanent injunction now in place.

How does the judge make the determination that a brand is “confusingly similar” to a senior brand?

In Polaroid Corp v. Polarad Elects. Corp, 287 F.2d 492 (2d Cir. 1961), Judge Friendly gave us the seminal test for likelihood of confusion. The so-called “Polaroid factors” are:

  • the strength of the [original] mark
  • the degree of similarity between the two marks
  • the proximity of the products [i.e., how similar are the products identified by the senior and junior marks?]
  • the likelihood that the prior owner will bridge the gap [i.e., if the products are different, will the owner of the senior mark be likely to enter the marketplace where products/services identified by the junior mark are sold?]
  • actual confusion
  • the reciprocal of defendant’s good faith in adopting its own mark
  • the quality of defendant’s product, and
  • the sophistication of the buyers.

Judge Friendly went on to state, “Even this extensive catalogue does not exhaust the possibilities–the court may have to take still other variables into account.” Thus, the lower courts must look at the listed factors and weigh them individually and together to determine the likelihood that a reasonable consumer in the marketplace would be confused as to the origin of the junior brand.

Let’s apply these factors to the Gucci case. The Gucci ladies marketed clothing and accessories under their name. Gucci the senior user markets clothing and accessories under the name. While a name mark is not terribly strong, any mark, including a name mark, acquires strength as its fame increases. The Gucci mark is famous (heck, even I’ve heard of it); therefore it is stronger than just an ordinary name mark would be. Consumers have come to associate that brand as identifying the senior user as the source of those goods in the marketplace. The senior user wins this point.

The degree of similarity? Identical. Gucci = Gucci. The senior user wins this point.

The proximity of the products is the next factor. The senior user markets clothing and fashion accessories. The two Gucci ladies marketed clothing and fashion accessories. These products are not only proximate, they are identical. Senior user wins again.

The likelihood that the senior user will bridge the gap. There is no gap to bridge. Senior user wins again.

Actual confusion. Without having read the transcript of the trial, I don’t know whether the senior user could produce evidence of actual consumer confusion in the marketplace; this would have been done through surveys. This one’s a draw until further notice.

Reciprocal of defendant’s good faith in adopting the mark. One of our junior users is the ex-wife of the designer. Ex-wives tend to have questionable good faith in matters such as this. The other junior user is the designer’s daughter. Her good faith may or may not be in question. Either way, these ladies decided to use their own name in the marketing of their product lines. However, they were in a position to know that the senior mark exists and could not help but know that they would be riding on the coattails of the success of that mark. If I were the judge, I’d lean this one toward the senior user even knowing what little I know.

Quality of the junior user’s product. I have no information on that.

Buyer sophistication. Senior-mark Gucci buyers are generally decently educated and fairly well off financially; they would therefore probably be at the higher end of the sophistication scale. This one could actually work in the junior users’ favor.

Taking all these factors together, the weight, under my quick-and-dirty glance through this case is  on the side of the senior user. Therefore, the verdict granting a permanent injunction against the Gucci ladies is not surprising to me.

Not all marks are as clear-cut as is this one, at least in hindsight, is. A trademark infringement suit can destroy a young company’s marketing plan and cost that company tens or hundreds of $thousands. We don’t like to see that happen. Therefore, when you name your company, you should have a trademark search done as well as a search for the corporate name. The money you spend on that initial investment in your business can provide you with peace of mind that you do not tread on someone else’s intellectual property, thereby giving that someone else the power to shut you down before you even start.

Twitter attempts to trademark the term tweet

Twitter attempts to trademark the term TWEET.

Huh.

Twitter wants to register TWEET as a mark, but they’re planning to peaceably coexist with those who use the mark in the same commercial space as Twitter does.

First of all, they haven’t been using TWEET as a mark. TWEET, in the Twitter world, is a noun; trademarks are adjectives.

Second, their proposed use flies in the face of US trademark law and in the face of trademark usage. Trademarks are in place to protect the public from confusion as to the source of goods and services in the stream of commerce. If the mark is used by many to describe goods and services for many sources in the same commercial space, the public will be confused as to the source of goods and services sold or marketed under the mark. Thus, the mark would not be usable as a trademark is intended to be used.

Sorry, Twitter. If I were the examining attorney on this one, I’d deny the registration of the TWEET mark based on genericism. That’s what your own strategy makes of it.

Oops, iPhone Trademark Already Taken In China AAPL

Oops, iPhone Trademark Already Taken In China AAPL.

THIS is why a trademark search is important BEFORE you invest $millions into branding your product. If you intend to market internationally, get the trademark search done in every country that you intend to market in. And search to register in the correct category or categories….

iPhone can’t be iPhone in China. There’s a Chinese company that has registered the mark in the telephones category (Apple owns it for hardware and software). That, folks, is about 1/4 of the world’s population to which Apple cannot market under the current name of the product without going through some sort of legal maneuvering (getting the existing Chinese mark invalidated or reaching some sort of deal with the mark’s owner).

Best laid plans….

New top-level domains could cause .trademark chaos

New top-level domains could cause .trademark chaos | Media | guardian.co.uk .

ICANN is planning to do something very strange next year.

We’re all used to .com, .net, .info and the rest of the top-level domains (“TLD”) by now. Well, watch out, world — here come the branded TLDs!! We’ll soon see .ibm, .3m, .delain-law-office. All you need is the $185,000 (a bit more than spare change to a small business person) to purchase the TLD name (which is why you WON’T see .delain-law-office).

As a trademark lawyer who spends time extracting clients from unintended second-level domain name infringements, I can see the trademark knots coming down the pike. Not only will second-level domains get squatted; TLDs will get squatted and sold for $millions. 

Amazing. And utterly confusing. Not a good move, ICANN.

McDonald's loses trademark battle in Malaysia


 
McDonald’s loses trademark battle in Malaysia — chicagotribune.com.

Bad news for the home of the Big Mac. As described in this article from the Chicago Tribune, Malaysia does not view “Mc…” as associated with restaurants and food as a prefix to the intellectual property of McDonald’s Corporation. 

Unlike the United States, which forced the closure of McBagels based on the use of “Mc…” in the food industry being deemed confusingly similar to McDonald’s famous mark, Malaysia has held that McCurry, ostensibly an abbreviation for “Malaysian Chicken Curry” is not rendered confusingly similar to McDonald’s famous mark merely by the addition of the “Mc” prefix.

I don’t know about anyone else, but when I hear that “Mc” in association with food, I immediately think of McDonald’s. I wonder what the Malaysian court thinks of? Actually, I wonder what they were thinking of?

Rescuecom v. Google keyword trademark case remanded

Law.com – 2nd Circuit: Google Must Face Trademark Suit Involving Keyword Ads.

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Seems Google, Inc. will have to face the trademark-infringement lawsuit music after all.

In a unanimous decision, the Second Circuit’s three-judge panel (Judges Leval, Calabresi and Wesley sitting) reversed the US District Court for the Northern District of New York (NDNY), Mordue, Ch. J., overturning that court’s dismissal of this case for failure to state a claim on which relief can be granted (Fed. R. Civ. P. 12(b)(6)) telling the NDNY that it “misunderstood [the] holding of 1-800 Contacts, Inc. v. WhenU.com, Inc., 414 F.3d 400 (2d Cir. 2005) (1-800)… , because [it dismissed the case on the grounds that] … Rescuecom failed to allege that Google’s use of its mark was a “use in commerce” within the meaning of § 45 of the Lanham Act, 15 USC 1127.”

Seems Google had been placing competitors’ sponsored ads in the Sponsored Link column when a search was made on Rescuecom’s registered trademark. Rescuecom had a problem with this and brought suit in the NDNY under the Lanham Act to enjoin Google from using Rescuecom’s registered mark to promote competitors’ businesses by listing the competitors in the Sponsored Links section of the search results page, possibly confusing consumers into believing that the competitors were somehow affiliated with Rescuecom. Google responded with the defense that its use of Rescuecom’s mark was internal and didn’t constitute a “use in commerce.” The NDNY bought that defense and dismissed the case under Fed. R. Civ. P. 12(b)(6), failure to state a claim on which relief can be granted. Rescuecom appealed the 12(b)(6) dismissal.

The Court distinguishes the 1-800 case clearly by recognizing that, among other factors, Google’s sponsored ads are on the same page as, and indeed look very similar to, the organic search results, while the ads in 1-800 were popup ads that displayed the competitor’s mark and were clearly advertisements. Given this distinction, the Court found that 1-800 and Rescuecom are based on materially different facts and therefore the analysis in 1-800 as to whether the ads based on trademarked keyword search terms was misunderstood.

The Court then provides a massive appendix to this case explaining “use in commerce” under the Lanham Act.

Up until now, the courts have held that trademark infringement occurs only when the infringed mark is displayed. Google does not display anyone’s trademark but its own; search terms are kept in a proprietary database, keywords are kept in a proprietary database, and the algorithms used in a GOOGLE® search are closely guarded trade secrets. Therefore, the public has no access to any trademarks lurking in Google’s databases. This, Google argued, does not constitute “use in commerce.”

The Second Circuit disagrees. In its appendix to Rescuecom, the Court notes that the phrase “use in commerce” has different nuances throughout the Lanham Act. § 1127, which defines the phrase states “…  that the terms listed shall have the given meanings “unless the contrary is plainly apparent from the context.” ” The Court goes on to note that § 1127 defines “use in commerce” as ““The term ‘use in commerce’ means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” This, the Second Circuit tells us, necessarily means that the full definition of “use in commerce” cannot apply to infringement sections of the Act; the requirement for bona fide use cannot be considered to be a limitation to conduct that might cause infringement liability. Take the case of the infringer who acts in bad faith; bad faith, by definition, does not constitute bona fide use. This lets the bad-faith infringer off the hook if we apply the full meaning of the definition of “use in commerce” to the infringement sections of the code. The infringer who acts in good faith, though, would feel the full weight of the trademark infringement law drop upon his head, since good faith, by its definition, is bona fide use.

This is not the result we want.

Therefore, to get the more reasonable result of holding bad-faith infringers’ feet to the fire, the Court construes the infringement sections of the Act — §§ 1114 and 1125 — as not to include the bona fide use langauge of the definition under the “…unless the contrary is plainly apparent from the context” language of the Act.

Under this construction, Google may need not have shown trademarks of competitors on its search results in order to have infringed trademark. The 2nd Circuit is not the factfinder in this matter and the facts have not yet been found (a 12(b)(6) dismissal is based on the pleadings, which occur at the start of the case), so takes no position on whether Rescuecom can prove that Google infringed its mark under the Lanham Act; this is now a question for the NDNY to decide.

The USPTO's Website

Found at www.uspto.gov , the United States Patent and Trademark Office’s website provides its users with a huge amount of information about the Office and about patents and trademarks.

The site includes search engines for:

  • Issued patents (text entries from 1976, scanned entries before that)
  • Published patent applications (from 2001)
  • Trademarks – registered and applied-for

There are filing mechanisms for both patent and trademark applications; the mechanisms even work reasonably well.

I send clients to this site regularly; it is readable by those who do not possess the knowledge of an IP practitioner and those clients who actually go to the site come back with awe in their voices, telling me that they didn’t know there was that much information out there.

The home page is always a running flow of USPTO news. Two items in today’s flow are worth mentioning here.

  • The National Inventors’ Hall of Fame has found a home at the USPTO’s museum. This exhibit is well worth visiting. Find the full story here.
  • April 6, 2009 is Design Day at the USPTO. Starting at 9 a.m., design patent examiners, design managers, independent inventors and patent attorneys and agents will have the opportunity to exchange ideas, information, and knowledge about design patent practice. Hon. Randall R. Rader, Chief Judge of the US Court of Appeals for the Federal Circuit (which has exclusive jurisdiction over patent appeals) is the scheduled keynote speaker. Find registration information here, and find the agenda here. This event is FREE, but you have to pre-register.

The Kingdom of Spain Ratifies the Singapore Treaty

Singapore Treaty Ratification by the Kingdom of Spain.

Spain has agreed to join the list of nations that has signed the Singapore Treaty; the treaty will enter into force in Spain on 18 May 2009.

The list of signatories to this important treaty regarding trademarks is below, along with the current status of the treaty in that country.

CONTRACTING PARTY TREATY STATUS ENTRY INTO FORCE DETAILS
Australia Singapore Treaty In Force March 16, 2009 Details
Austria Singapore Treaty Signature   Details
Belgium Singapore Treaty Signature   Details
Bosnia and Herzegovina Singapore Treaty Signature   Details
Bulgaria Singapore Treaty In Force March 16, 2009 Details
Burkina Faso Singapore Treaty Signature   Details
Cameroon Singapore Treaty Signature   Details
Central African Republic Singapore Treaty Signature   Details
China Singapore Treaty Signature   Details
Congo Singapore Treaty Signature   Details
Costa Rica Singapore Treaty Signature   Details
Croatia Singapore Treaty Signature   Details
Czech Republic Singapore Treaty Signature   Details
Democratic People’s Republic of Korea Singapore Treaty Signature   Details
Democratic Republic of the Congo Singapore Treaty Signature   Details
Denmark Singapore Treaty In Force March 16, 2009 Details
Dominican Republic Singapore Treaty Signature   Details
Estonia Singapore Treaty Signature   Details
Finland Singapore Treaty Signature   Details
France Singapore Treaty Signature   Details
Ghana Singapore Treaty Signature   Details
Guinea Singapore Treaty Signature   Details
Haiti Singapore Treaty Signature   Details
Hungary Singapore Treaty Signature   Details
Iceland Singapore Treaty Signature   Details
Italy Singapore Treaty Signature   Details
Kenya Singapore Treaty Signature   Details
Kyrgyzstan Singapore Treaty In Force March 16, 2009 Details
Latvia Singapore Treaty In Force March 16, 2009 Details
Lebanon Singapore Treaty Signature   Details
Lithuania Singapore Treaty Signature   Details
Luxembourg Singapore Treaty Signature   Details
Madagascar Singapore Treaty Signature   Details
Mali Singapore Treaty Signature   Details
Mauritania Singapore Treaty Signature   Details
Mexico Singapore Treaty Signature   Details
New Zealand Singapore Treaty Signature   Details
Papua New Guinea Singapore Treaty Signature   Details
Portugal Singapore Treaty Signature   Details
Republic of Moldova Singapore Treaty In Force March 16, 2009 Details
Romania Singapore Treaty In Force March 16, 2009 Details
Russian Federation Singapore Treaty Signature   Details
Senegal Singapore Treaty Signature   Details
Singapore Singapore Treaty In Force March 16, 2009 Details
Spain Singapore Treaty In Force May 18, 2009 Details
Switzerland Singapore Treaty In Force March 16, 2009 Details
Tajikistan Singapore Treaty Signature   Details
The former Yugoslav Republic of Macedonia Singapore Treaty Signature   Details
Togo Singapore Treaty Signature   Details
Turkey Singapore Treaty Signature   Details
Ukraine Singapore Treaty Signature   Details
United Kingdom Singapore Treaty Signature   Details
United States of America Singapore Treaty In Force March 16, 2009 Details
Uruguay Singapore Treaty Signature   Details
Uzbekistan Singapore Treaty Signature   Details