UPDATE-APPLE PAYS SMALL FORTUNE TO USE IPAD TRADEMARK IN CHINA

Posted on July 9, 2012 by ERIC WACHSPRESS

In my December 28, 2011 blog entry titled Why Do A Trademark Search? I noted that Proview Technology, a Chinese company that tried to sell a tablet computer called I-PAD a number of years ago, registered that mark in China and that it was suing Apple resellers in China to halt the sale of Apple’s iPad tablet after the Shenzhen Intermediate People’s Court ruled in favor of Proview against Apple.

On July 2nd it was reported in the New York Times that the Guangdong High People Court in Guangzhou, the provincial capital for the Chinese province that includes Shenzhen, announced that the two sides had reached a settlement and that Proview’s litigation against Apple was resolved after Aple paid $60,000,000 into a court-approved bank account for the right to use the iPad trademark in China.

China’s trademark office should next transfer that mark to Apple.

The New York Times further reported that Proview was insolvent that the Apple’s payment would be used to repay some of its creditors. It also reported that when Apple purchased rights to its mark around the world it purchased them from a Proview affiliate in Taiwan. Proview subsequently argued successfully that that purchase did not include the right to use the iPad mark in the People’s Republic.

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NEW DOMAIN NAMES BRING NEW CHALLENGES TO PROTECTING YOUR BRAND

Posted on June 16, 2012 by ERIC WACHSPRESS

On Wednesday, June 13, 2012 ICANN, the Internet Corporation for Assigned Names and Numbers published the full list of submissions for new generic top level domains. The owners of these domains will no longer be limited to .net, .com, .org, .edu, .xxx, .us (if located in the U.S.) or .ca (if located in Canada) or .co.uk (if located in the United Kingdom.) and the like. See http://m.bbc.co.uk/news/technology-18428324

For owners of trademarks these new domains raise numerous problems. While U.S. trademark law prohibits the registration of generic terms and Canadian trademark law prohibits the registration of clearly descriptive terms, applications have been made for such new generic top level domains as .ADULT, .CANCERRESEARCH (applied for by the Australian Cancer Research Foundation), .CAREER, .CREDITUNION, .FINANCIAL, .GAME (applied for by Google and Amazon as well as three other entities), .GROCERY (applied for by both Safeway and Wal-Mart), .HEALTHCARE, .HOSPITAL, .INSURANCE (applied for by Progressive and three other entities), .KOSHER, .LOAN, .MAKEUP (applied for by L’Oreal), .MORTGAGE, .MAIL (applied for by Amazon, Google and five other entities), .PIZZA, .PORN, .RESTAURANT, .SEX (applied for by two different entities), .UNIVERSITY and .YELLOW PAGES.

[Note that numerous applications were made for new domains that would not be problematic, e.g., Xerox applied for .XEROX, Comcast applied for .XFINITY, Microsoft applied for .XBOX, the Weather Channel applied for .WEATHERCHANNEL, Sony applied for .SONY, Nokia and Nissan applied for .NOKIA and .NISSAN respectively, and Ford Motor Company applied for .FORD.]

Where more than one party applied for the same domain, the parties involved are encouraged to resolve their conflict voluntarily resulting in the withdrawal of one or more applications or, if not resolved, an auction will result.

Here are some examples of some problems that could result:

When the .XXX domain was created for adult sites last year, operators of adult businesses had the opportunity to identify themselves as adult businesses by using that domain suffix. At the same time, non-adult businesses could park .XXX domains and thereby make them unavailable for use by adult businesses thereby preventing what might be an unsavory association, e.g., GOOGLE.XXX. Now both owners of adult websites and owners of non-adult websites that wish to avoid such associations will have to deal with .ADULT and .PORN as well.

If you operate a university hospital, do you register a .COM, .EDU, .CANCER RESEARCH (if the Australians will let you use it), .MEDICAL, .HOSPITAL, or .HEALTHCARE domain name and if you own a trademark for your hospital you now run the risk of an infringer affixing that mark or a confusingly similar mark not only to a .COM suffix but to any one of the new suffixes listed above.

What if you’re Estee Lauder? L’Oreal just acquired the MAKEUP domain and from a marketing standpoint they can now use that domain to build an online brochure for their product line, e.g., mascara.makeup, lipstick.makeup, foundation.makeup, etc., thereby attaching to their domain name the generic names of numerous types of cosmetics in their catalog. Will doing so give them an unfair advantage with a search engine? Have they in fact obtained a right that they couldn’t have obtained under trademark law; the exclusive right to use the generic name for their products? Or what if you’re the U.S. Postal Service? Google, Amazon and five other applicants have applied for the MAIL domain.

KOSHER presents another problem. Products that are “Kosher” are supposed to be certified as such by a Jewish rabbinical certifying authority. Is the owner of the KOSHER domain one of those authorities? If not, is adding that domain to a product name a de facto certification. If the owner of that domain is one of those authorities; that gives that authority higher authority than competing authorities (There are a number of certifying groups in the U.S.) as only that authority owns the KOSHER domain. [Note HALAL presents less of a problem as HALAL was registered as a “community” domain. KOSHER was not. A community-based generic top level domain is operated for the benefit of a clearly delineated community and the applicant for such a domain “is asked in its application to substantiate its status as representative of the community it names in the application by submission of written endorsements in support of the application” Thus, it could be assumed that (although I could be incorrect) the Muslim community has vouched for the legitimacy of the usage of HALAL as a domain.]

There are grammatical issues as well. Does Ray’s Pizza register its domain name as Ray’s Pizza.PIZZA or Tony’s Pizza register its domain name as Tony’s Pizza.PIZZA and what happens if they promote that domain in their advertising? Little Caesar’s owns federal registrations for PIZZA!PIZZA! for pizza and restaurant services.

And there are cost issues. Suppose, for example, you operate “The Community Credit Union” and already own either a .COM or a .NET domain name. Do you now acquire a .CREDITUNION domain name, a .CREDITCARD domain name if you offer credit cards to your customers, a .FINANCIAL domain name, a .INSURANCE domain name if you offer insurance services to your customers, assuming you could acquire such a domain name as Progressive is one of four applicants for that domain name, a .LOAN domain name, a .LOANS domain name, and a .MORTGAGE domain name. Owning and maintaining those new domain names is not only an additional cost but, most significantly, trademark protection and clearance will now become more expensive as it will be possible to not only infringe one’s trademark by taking it or a term that looks or sounds alike and adding .COM to it but now it will be possible to infringe one’s trademark by taking it or a term that looks or sounds alike and adding any one of a number of these new generic top level domains to it. Also, clearing a trademark for potential use just became a more complicated process as while formerly one would search for confusingly similar marks and domain names with a .NET, .COM, and in some cases a .ORG suffix as well as the country suffixes where that trademark would be used, e.g., .US in the United States, .CA in Canada and .CO.UK in Great Britain, now clearing a trademark will also involve searching any one of a number of relevant and irrelevant suffixes noted above. For example, what might be an innocuous mark in the fashion industry might carry a not so innocent connotation in the adult entertainment industry and so the “adult” suffixes noted above would need to be searched together with the usual .COM, etc. suffixes.

It is for this reason that the BBC article identified at the top of this post noted Coca-Cola and Kellogg’s, not exactly novices in the field of branding and trademarks, not only abstained from registering any new generic top level domains but signed a petition in protest.

So what can a trademark owner do at this point; not much.

(1)          You can file a “Legal Rights Objection” if your registered or unregistered trademark is infringed by the applied-for generic top level domain. However, that is unlikely to occur as such domains as .CREDIT UNION, .HEALTHCARE, .MAKEUP, .INSURANCE AND .PIZZA are generic and no one is likely to own either an identical or confusingly similar trademark, except maybe Little Caesar’s.

(2)          You can file a “Limited Public Interest Objection.” However, such an objection must fall within a defined category and must be “contrary to general principles of international law for morality and public order.”  Those principles might be found in such instruments as the “Universal Declaration of Human Rights,” the “Convention on the Elimination of All Forms of Discrimination Against Women,” the “Convention Against Torture And Other Cruel, Inhuman, Or Degrading Treatment or Punishment,” the “Slavery Convention” the “Convention on the Prevention and Punishment of the Crime of Genocide,” and the “Convention on the Rights of the Child.” Also prohibited under this objection are generic top level domains that incite or promote violent lawless action, incite or promote discrimination based upon, race, color, gender, ethnicity, religion or national origin, and that incite or promote child pornography or other sexual abuse of children.

(3)          Finally, without going into detail, members of a community can object to a community-based generic top level domain if there is substantial opposition from a significant portion of the community to which the string is targeted.

So, the next time you’re in the grocery aisle and see “Tony The Tiger®” or “Snap Crackle Pop®” you can think of them as scholars of trademark law who foresaw the mess (Maybe not for lawyers!) that the Internet Corporation for Assigned Names and Numbers created in the year 2012.

 

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NEW DOMAIN NAMES TO BE ANNOUNCED TOMORROW IN LONDON

Posted on June 12, 2012 by ERIC WACHSPRESS

Effective Thursday January 12th, ICANN, the Internet Corporation for Assigned Names and Numbers, will allow applications for new generic Top Level Domains. In English, this means that you will no longer be limited to .NET, .COM, .EDU, .ORG, .US, .XXX, etc. domain names. Now you will be able to apply for branded Top Level Domains such as .Microsoft, .McDonalds, .Ford, etc., industry-related Top Level Domains such as .LAWYER or .BANK as well as Top Level Domains that use non-Latin lettering such as Chinese and Arabic characters.

However, note that only corporations, organizations and institutions can apply, the application period will last from 1/12/2012-4/12/2012, owners of these top level domains, because they will be operating the equivalent of a .COM registry, will have to meet the same obligations that they would as if they operated an Internet registry, including meeting all of the similar technical requirements, applicants must submit proof that they are a valid legal entity and in good standing, applications will be reviewed for confusion with other generic Top Level Domains and the on-line registration fee, which is exclusive of other fees, is $185,000.00. For more information see http://newgtlds.icann.org/about/benefits-risks

Existing trademark owners should note that ICANN will not notify you if someone applies for a new Top Level Domain name that is identical to your trademark. However, they intend to publish a list of all applications received after the application submission period closes.

There will likely be more news on this in the future. And the news is that the list of proposed new Top Level Domain Names will be announced tomorrow in London. See http://www.cbc.ca/news/business/story/2012/06/12/tech-new-internet-domain-names.html

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Federal Judge Rules Facebook ‘likes’ Not Constitutionally Protected Speech

Posted on May 4, 2012 by ERIC WACHSPRESS

See http://www.cbc.ca/news/world/story/2012/05/04/facebook-like-ruling.html

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9th CIRCUIT RULES ON EMPLOYEE USE OF WORK COMPUTERS

Posted on May 1, 2012 by ERIC WACHSPRESS

The 1986 Computer Fraud and Abuse Act (18 U.S.C. § 1830) made criminal intentionally accessing a protected computer without authorization or exceeding authorized access to that computer and thereby obtaining information it as well as doing so with the intent to defraud, unless the object of the fraud and the thing obtained consists only of the use of the computer. The Act defines a “protected computer” as any computer which is used in or affects interstate or foreign commerce or communication, which would encompass any computer connected to the Internet.

In a decision dated April 10, 2012, U.S. v. Nosal, the Ninth Circuit Court of Appeals narrowly interpreted that statute. Judge Kozinski, writing for the majority of the judges on the 11 member panel who decided that case wrote, “Basing criminal liability on violations of private computer use polices can transform whole categories of otherwise innocuous behavior into federal crimes simply because a computer is involved. Employees who call family members from their work phones will become criminals if they send an email instead. Employees can sneak in the sports section of the New York Times to read at work, but they’d better not visit ESPN.com. And Sudoku enthusiasts should stick to the printed puzzles, because visiting www.dailysudoku.com from their work computers might give them more than enough time to hone their Sudoku skills behind bars.” He wrote, “Minds have wandered since the beginning of time and the computer gives employees new ways to procrastinate, by chatting with friends, playing games, shopping or watching sports highlights. Such activities are routinely prohibited by many computer-use policies, although employees are seldom disciplined for occasional use of work computers for personal purposes. Nevertheless, under the broad interpretation of the [Computer Fraud and Abuse Act], such minor dalliances would become federal crimes. While it’s unlikely that you’ll be prosecuted for watching Reason.TV on your work computer, you could be. Employers wanting to rid themselves of troublesome employees without following proper procedures could threaten to report them to the FBI unless they quit. Ubiquitous, seldom-prosecuted crimes invite arbitrary and discriminatory enforcement.” He continues, “. Under the government’s proposed interpretation of the Act, describing yourself as  “tall, dark and handsome,” when you’re actually short and homely, will earn you a handsome orange  jumpsuit” on an on-line dating site.”

The Ninth Circuit, in conclusion, held that the Act “target[s] the unauthorized procurement or alteration of information, not its misuse or misappropriation.”

NOTE THAT THIS IS THE LAW IN THE NINTH CIRCUIT WHICH ENCOMPASSES ALASKA, WASHINGTON, OREGON, MONTANA, IDAHO, CALIFORNIA, NEVADA, ARIZONA AND HAWAII AND THAT THE FIFTH, SEVENTH AND ELEVENTH CIRCUITS HAVE NOT CARVED OUT THIS EXCEPTION TO THE ACT. THESE CIRCUITS COVER THE STATES OF ALABAMA, GEORGIA, FLORIDA, ILLINOIS, WISCONSIN, INDIANA, TEXAS, LOUISIANA & MISSISSIPPI.

 

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PROTECTING YOUR I.P. WHILE ABROAD

Posted on April 23, 2012 by ERIC WACHSPRESS

In my prior blog posts I have written about the importance of protecting your intellectual property.

In the case of a useful process, machine, article of manufacture or composition of matter, protection might involve obtaining a patent. In the case of computer software, text, a photograph, a book, a motion picture, a musical composition, a map, a dramatic work, artwork or graphics of some nature, although under U.S. law copyright is secured automatically upon creation, registration with the U.S. Copyright Office is necessary before an infringement suit may be brought in court. In the case of a product or service name, or other means used to identify a product or service and distinguish it from the products or services of others, registration of that trademark or service mark is prima facie evidence of the validity of that registered mark, the registrant’s ownership of that mark, and of the exclusive right to use that mark in the U.S. and, in addition, provides the remedy of suing for infringement in U.S. federal court.  If you are seeking to protect a product formula, manufacturing process, customer or supplier lists, marketing plans, or computer code, by maintaining that information’s secrecy by various means, you can ensure their protection as trade secrets and obtain relief if that information is stolen. See my blog post at http://markscounsel.com/?p=6

But intellectual property, stored on your laptop, tablet or smartphone can be stolen in other ways, ways not easily redressed by a court. For example, you can simply lose or have that laptop, tablet or smartphone stolen. Encrypting sensitive information on those devices can protect that information. Also remember, your contact list on your phone can double as a customer, vendor or client list. Also, you should consider that using that phone or your laptop in other countries may carry other risks as well.

For example, in China and Russia it was reported in the New York Times last February 10th that digital espionage is a growing threat; there have been instances where the Chinese have installed key-logging software on visitors’ laptops which renders password protection useless. In addition, Bluetooth and Wi-Fi connections can be used to remotely access computing devices, which include smartphones, tablets and laptops. That New York Times article quoted a former counterintelligence official as stating, “If a company has significant intellectual property that the Chinese and Russians are interested in, and you go over there with mobile devices, your devices will get penetrated.” Chinese hackers have been known to access computing devices’ microphones and cameras remotely. In fact, an official of McAfee, the computer security company, was quoted in that article as stating that if any employee’s device was inspected at the Chinese border, it can never be plugged into that company’s network again.

A former F.B.I. agent is quoted in that same article as stating, “In most cases, companies don’t realize they’ve been burned until years later when a foreign competitor puts out their very same product-only they’re making it 30% cheaper.”

What things can you do to protect yourself? You can purchase a temporary cell phone for use abroad (Your contact list won’t be on it.) You can leave your laptop at home and buy a cheap one for the trip with no pre-existing data on it and erase the hard drive on it when you return. You can make sure to disable Bluetooth and Wi-Fi on your computing devices while abroad; don’t let your computing devices out of your sight, and don’t check your smartphone at meetings. Instead, disable it, by removing the battery, so it cannot be accessed. Avoid typing in a password or retrieve the password from a flash drive so it can’t be logged.

And consider this; if it is known that you are bringing important information into a country; it can be computer code, chemical or manufacturing technology, mining information or information about that country’s technology, officials, human rights groups or activists, press activities or policies, that country will have a substantial interest in learning what you know. Information about who you are and what you might know is no secret; it is publicly available on Google or you may have posted it yourself on Linked-In. Your travel plans are no secret either. To enter China you need a visa. “Whether you are traveling to or living in China, you must register with the police within 24 hours of your arrival in the country. Even foreigners with residence permits are required to register after each re-entry. If you are staying in a hotel, the staff will automatically register you.” See http://travel.state.gov I’m not suggesting that you search for bugs (the electronic kind) in your table lamp but…as for Russia, “Under Russian law, every foreign traveler must have a Russian-based sponsor, which could be a hotel, tour company, relative, employer, university, etc. Even if you obtained your visa through a travel agency in the United States, there is still a Russian legal entity whose name is indicated on your visa and who is considered to be your legal sponsor.” Also see http://travel.state.gov

 

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DON’T WAIT TO REGISTER YOUR MARK!

Posted on March 2, 2012 by ERIC WACHSPRESS

Outside the U.S. and Canada, most countries are “first-to-register” countries. This means that trademark rights are not acquired by using your name on your storefront, website or product package, but by registering that name with that country’s respective trademark registrar. In those countries, that name can be a mere concept or an idea floating in your mind and you can obtain protection for it; or that name can be someone else’s name or someone else’s brand used somewhere else in the world, which someone else failed to register it in your country.

In the U.S. as well, because trademarks may be registered based on the intent-to-use that mark in the future, someone can beat you to the United States Patent and Trademark Office with your mark, even though they are not using that mark, by filing an application to register that mark with that Office first. There is a caveat, that even though the filer of an intent-to-use trademark application may obtain rights in the mark that is the subject of that application as of the date that he filed the application to register that mark with the Patent Office, those rights will only take effect when that mark is used for goods or services and a registration is issued. However, if you don’t bolt out of the starting gate first with your intent-to-use application, others can beat you, leaving you to wait until the other prior-filed applications run their course through the trademark application process and fail to finish.

Just ask Jeremy Lin who retained Arent Fox to file an application for LINSANITY. Except that Yenchin Chang of Alhambra, California filed his application first and Lin’s high school basketball coach filed an application to register LINSANITY the day after Lin did.
So don’t be linsane or get fouled out. If you have a name that you enthusiastically want to use for a product or service, make sure it’s available by doing a trademark search and then promptly apply to register it. In trademark law as in basketball, there’s a shot clock running down.

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USING COLOR TO BRAND EFFECTIVELY

Posted on March 2, 2012 by ERIC WACHSPRESS

A January 19, 2012 Website Magazine blog post (See http://www.websitemagazine.com/content/blogs/posts/archive/2012/01/19/the-meaning-behind-color.aspx ) discussed the meanings that certain colors evoke to consumers.

I summarize that post below:

The author of that piece noted that “red” was the “color that eyes are drawn to first” and creates a sense of urgency. She noted that brands associated with red included Target® and Coca-Cola®.

She pointed out that “orange”, used by Home Depot®, was associated with “fun and energetic times or citrus fruit. It is recommended for kid’s websites.”

Yellow, she noted, is also “associated with laughter and happiness. It is said to make people feel optimistic and youthful” and “is often used to grab consumers’ attention.” A major brand associated with this color is McDonalds®.

She wrote, “green” is “associated with growth, nature, wealth and can also be calming.” Starbucks® uses the color “green” selling coffee, a stimulant, in its stores, within a calming setting

Blue, she wrote, is “probably the most popular color in the world.” “It is calming, and can be associated with dependability and security,” which is why it is used by many financial institutions.

Pink, she writes, is a “feminine color..best associated with romance.” “Depending on the shade it can also be seen as sentimental or youthful.” For these reasons it is used for brands targeting women and young girls.

Black is described by the author of this piece as a “powerful color” representing authority, stability and strength, and is often seen used for expensive products.

White is described by that author as symbolizing simplicity and purity and is often used with health related products. Interestingly, Apple® uses that color, probably intuitively, to indicate that its computers, tablets and phones are easy to use.

While many brands, such as financial institutions, tend to use particular colors, such as blue, that does not mean that a financial institution or any of the other types of businesses identified above, needs to use the particular colors attributed to them, above. However, color is an excellent means of identifying your brand and is registrable in the U.S. as a trademark. For example, if you are a goods provider, by using a single color across your labeling and advertising, e.g., in a band in your packaging under your brand name or as a background for that brand name, you can more easily designate your products as coming from a single source, particularly if that color is unique from that used by your competitors. And designating your products as coming from a single source is what trademark usage is all about. Similarly, if you are a service provider, using a single color in your advertising and across all of your web pages helps them to stand out and differentiate you from your competitors. An excellent example of this is in the vehicle rental field where Hertz® uses the color yellow, Avis® uses the color red and National® uses the color green. Ignoring the associations with each color described above, the overall effect of this usage is to distinguish each vehicle supplier from one another from the time one makes their reservation to the time when, exhausted and late at night, one arrives at an airport searching for the right rental counter or taking the shuttle bus to the right rental car lot, making it easier to find the rent-a-car company that you are looking for, making it less likely that you will turn to a competitor and, over time, building brand loyalty.

One of the most colorful examples of the use of color is the use of the color “magenta” by the mobile phone provider T-Mobile®. The color appears on their store signage, on their billboards, on their product packaging and on their products themselves and on the dresses worn by Carly, their spokesmodel. See http://youtu.be/2pCZHVu2OOU for a video example. That color is also the subject of U.S. Service Mark Registration #3,263,625.

So, in the upcoming weeks, as the trees bloom in their resplendent colors, think color, use color consistently and widely in your branding efforts and protect those branding efforts by registering color as your trademark or service mark.

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ILLINOIS BUSINESS-FOREIGN CORPORATION

Posted on December 28, 2011 by ERIC WACHSPRESS

In my blog post entitled “Tips From A Seasoned Lawyer” I briefly touched on the advantages and disadvantages of forming a corporation or a limited liability company. Frequently, new businesses are advised to incorporate in the state of Delaware. Because so many businesses are incorporated in Delaware, e.g., more than half of the Fortune 500, Delaware has a well-developed body of corporate law governing internal corporate matters. Other touted advantages of Delaware incorporation include the ability to dispense with cumulative voting for directors and to stagger their election. Delaware law also allows for a single-member Board of Directors.

The Illinois Business Corporation Act includes all of the later provisions, although as many less corporations incorporate in Illinois as opposed to Delaware, the body of law governing the conduct of corporations is less.

Another common state for incorporating is Nevada. While Nevada does not have the advantage of having a well-developed body of corporate law governing internal corporate matters, Nevada like Delaware does not require that you pay income taxes if you do business in another state; while Delaware imposes an annual franchise tax on businesses, Nevada does not.

Also, start-up costs for incorporating in each state is relatively inexpensive, around $100.00 in Delaware and $200.00 in Nevada.

Another option is incorporating abroad. Multinational Corporations organized under U.S. law are subject to tax on their worldwide income instead of just the revenue they earn in the U.S. By keeping that income abroad in foreign subsidiaries, those taxes may be deferred and if brought into the U.S., while it would be taxed at up to a 35% rate, U.S. taxes would be offset by any foreign tax paid. From a regulatory standpoint, a Multinational with a foreign corporate domicile is largely subject to the securities regulations of that domicile, although there will be some U.S. regulations applicable to it. There is one catch, however, companies are prohibited from reincorporating outside the U.S. for tax reasons unless there is a sale of control of the entity.

Similarly, for those corporations doing business in Illinois who wish to incorporate or form an LLC in Nevada or Delaware, there is a catch. A Nevada or Delaware corporation with its principal place of business in Illinois will have to fork over $150.00 for an application for authority to transact business in this state in addition to filing a foreign corporation annual report every year thereafter ($75.00/year) plus pay Illinois franchise taxes annually based on Illinois paid-in capital. If it has employees it will have to meet the usual unemployment insurance and workers’ compensation requirements, among others. A Nevada or Delaware LLC will pay $500.00 for an Application for Admission to Transact Business in Illinois and then pay $250.00 annually to maintain the right to do so.

So if you’re an Illinois business seeking the status of a Delaware corporation or the simplicity of a Nevada corporation, you need to consider both the financial and administrative costs involved.

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WHY DO A TRADEMARK SEARCH?

Posted on December 28, 2011 by ERIC WACHSPRESS

What do these two well-known tech companies have in common?

One saw its earnings drop 71% in the third quarter of this year and its share of the smart phone market in the United States drop from 30% to 18%. To add insult to injury two of its executives were fired when, on a flight to Beijing, after drinking heavily, they became belligerent, had to be restrained with plastic handcuffs, and their flight was forced to return from near the North Pole to the West Coast.

The other saw its 4th quarter revenue, reported in October, rise 39% and its share of the smart phone market in the United States reach 28% Its C.E.O. who died of cancer this year, was described in the New York Times on October 5, 2011 as a “visionary… who helped usher in the era of personal computers and then led a cultural transformation in the way music, movies and mobile communications were experienced in the digital age”

The first, Research In Motion, the maker of the BlackBerry cell phone, intended to call its new operating system BBX. A small, Albuquerque-based software maker called Basis International, however, owned that mark, which is the subject of a U.S. Trademark Registration, #3,111,681, for computer programs, which mark it has used since 1985. After getting a restraining order from a federal court on November 29, 2011, Research In Motion decided to change the name of its new operating system to BlackBerry 10. Nevertheless, Basis’ Software Chief Executive was quoted in the New York Times on November 30th as saying that he would continue to seek damages and a permanent injunction from Research In Motion.

 Meanwhile, the other company, Apple, has learned from a Chinese court that it does not own the right to the iPad trademark in that small Asian nation. Like many nations outside the U.S., in China trademark rights are based on registration rather than use, and, in China, Proview Technology, a Chinese company that tried to sell a tablet computer call I-Pad a number of years ago, registered that mark in China. Proview is suing Apple resellers in China to halt the sale of the iPad after the Shenzhen Intermediate People’s Court ruled in favor of Proview against Apple.

 THE MORAL OF THESE STORIES: WHETHER YOU HAVE A FEW THOUSAND DOLLARS, OR, IN THE CASE OF APPLE, (AS REPORTED IN THE JULY 29, 2011 LA TIMES MORE CASH ON HAND THAN THE U.S. TREASURY) SPEND A THOUSAND DOLLARS OR LESS AND GET A TRADEMARK AVAILABILITY OPINION FROM AN ATTORNEY BEFORE BRANDING A PRODUCT.

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PICKING BRAND NAMES IN CHINA IS A BUSINESS ITSELF

Posted on November 11, 2011 by ERIC WACHSPRESS

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COMMUNICATIONS DECENCY

Posted on November 1, 2011 by ERIC WACHSPRESS

Anyone who operates a website can be construed as operating an interactive computer service as he is providing computer access by multiple users to the computer server on which his website resides and Section 230 of the federal Communications Decency Act, which was passed in 1996, provides that no provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider nor shall they be held liable on account of any action voluntarily taken in good faith to restrict access to or availability of material that the provider or user considers to be obscene, lewd, lascivious, filthy, excessively  violent, harassing, or otherwise objectionable, whether or not such material is constitutionally protected; or any action taken to enable or make available to information content providers or others the technical means to restrict access to the material described above.

What this means in English is anyone who operates a website, pursuant to that Act, may be immune to claims other than criminal law claims or federal intellectual property law claims such as tort claims for defamation for material published on his site so long as the website owner is not the originator of the offending information.

However, a website owner could lose his immunity if he (1) promises on the the site to remove objectionable content and then fails to do so, (2) the publisher of the objectionable content is an employee or agent of the web site owner, thereby making the publisher not “another information content provider,” (3) violates another statute by requiring visitors to provide information unlawful under that statute as a condition of service, e.g., requiring certain personal information in violation of the Fair Housing Act, (4) the web site owner inserts offensive content, even if he does so only in the process of editing the original third-party content, (5) the web site owner actively solicits or encourages submission of the offensive content,

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AVOIDING BRAND “REHAB”

Posted on September 30, 2011 by ERIC WACHSPRESS

I recently wrote a post about the new .XXX domain names which, while they are intended for use by members of the adult entertainment industry, could find themselves appended to your trademark or domain name if members of that industry choose to do so. I also wrote about how you could block this from happening.

This post raises a more general issue about cybersquatting, which is where someone adopts your name or trademark and uses it in his, her or its own domain name. As an attorney I don’t register domain names— Domain name registrars such as Network Solutions or Go Daddy are in the business of registering domain names. What I do do is assist clients in registering their trademarks and service marks. I am also in the business of protecting trademarks from infringement. Under the U.S. Anticybersquatting Consumer Protection Act, which is part of the federal Trademark Act, a trademark owner can bring a lawsuit against a domain name owner who registers, traffics in or uses a domain name that it identical or confusingly similar to a distinctive or famous trademark.

Lawsuits can be costly, and to be successful in establishing rights against a cybersquatter, your trademark should be distinctive and it should be in use prior to the date that the cybersquatter adopts it as his, her or its domain name. Therefore, when you are contemplating adopting a trademark or business name, if it’s a trademark I recommend that you file an intent-to-use application to register that mark with the U.S. Patent and Trademark Office to potentially reserve your rights in that name as of the date that that application is filed (The initial application fee runs $275.00-$325.00 for each product or group of related products or services) AND register your business and product name as part of both identical and confusingly similar domain names. See my prior post regarding .XXX domain names but you should consider registering .COM, .NET and, if you are in the U.S., .US domain names. You may also wish to consider registering .CO domain names.

When Amy Winehouse died last month, her father tried to set up a charity in Amy’s name only to find that those plans had been frustrated by a cybersquatter who had stolen the prospective organization’s proposed domain name address before he could do so. The names stolen included “Amywinehousefoundation.org.uk”, “Amywinehousefoundation.com”, and “Amywinehousefoundation.org.” Her father was quoted by Reuters last August 22nd as saying “Our solicitors are all over this, but it takes time. Meanwhile we can’t get on with [the] foundation.”

If you are starting a new enterprise or coming out with a new product, give me a call. You should protect your brand through trademark registration, obtain enough domain names and variations of your domain names to further protect your brand and establish an entity to protect yourself from legal liability in the future.

Start your business on a solid foundation and avoid potentially expensive “rehab,” which as “rehab” sometimes is, may be unsuccessful.

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YOUR TRADEMARK/BRAND COULD BECOME X-RATED

Posted on September 22, 2011 by ERIC WACHSPRESS

The Internet Corporation for Assigned Names and Numbers (ICANN) has approved the establishment of a new Internet top-level domain, e.g., .NET, .COM for sexually explicit material. This new domain is .XXX and may be used by providers of online adult entertainment intended for consulting adults, their representatives and providers of products or services to those providers, e.g., hosting services, stylists.

Even if you are not a provider of adult entertainment or a provider of services to providers of adult entertainment, those providers are free to adopt your brands and domain names and add .XXX to them. If you want to block this and you own a federally registered trademark on the Principal Register, you can reserve a .XXX domain name corresponding to that registered trademark. This domain name will be removed from the pool of domain names available for registration in future phases of the .XXX registry operation and the WHOIS information will simply list standard registry information. The corresponding domain name will resolve to a standard informational page indicating the status of the domain name as not available for registration or similar. YOU WILL NOT OBTAIN A .XXX WEB PAGE AS THOSE PAGES ARE ONLY AVAILABLE TO MEMBERS OF THE ADULT ENTERTAINMENT INDUSTRY. HOWEVER, MEMBERS OF THAT INDUSTRY WILL NOT BE ABLE TO OPERATE A .XXX ADULT WEBSITE USING YOUR MARK AS PART OF THEIR DOMAIN NAME.

THE DEADLINE TO BLOCK A .XXX DOMAIN NAME IS OCTOBER 28th.

For more information, you can contact this office or an accredited domain name registrar. These include Go Daddy, Network Solutions, Name.com, MarkMonitor, Register.com and others in the U.S.

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