Troubles Not Foreseen at the Beginning

During the Revolutionary War, Washington’s army was positioned outside of Boston, which was occupied by the British. As explained in David McCullough’s book 1776, George Washington was facing troubles in terms of money, gun powder, guns, and troop readiness and numbers. Winter was coming, and some of the soldiers’ enlistments were ending, leaving the need to convince soldiers to reenlist or to be replaced by new recruits.

Washington, lamenting that he did not attack Boston earlier, at one point, recounted that if he had known what he was getting into he would not have accepted the command. He said:

“I have often thought how much happier I should have been if, instead of accepting of a command under such circumstances, I had taken my musket upon my shoulders and entered the ranks, or, if I could have justified the measure to posterity, and my own conscience, had retired to the back country, and lived in a wigwam.”

Ultimately, Washington secured Dorchester Heights which gave him a superior position over Boston and the British. This resulted in the British withdrawing from Boston.

Many undertakings do not rise to the level that war entails. However, doubts are common when facing issues not for seen at the beginning, no matter the endeavor.

Nonfunctional Trade Dress

Trade dress can include the shape or configuration a product or packaging. Trade dress is protectable if, among other things, it serves to identify a source of goods or services, as a trademark does, and it is nonfunctional. The question of what is nonfunctional was addressed in a recent case involving a french press coffee maker.

Bodum USA sued A Top New Casting alleging infringement of Bodum’s trade dress in the product configuration of its Chambord french press coffee maker. Below is a comparison of the products at issue with the Bodum’s product on the left and A Top’ s product on the right (from the court opinion):

Bodum claimed trade dress protection in the overall appearance of its product, with the following elements identified as contributing to that appearance: “the metal band surrounding the carafe that forms support feet and the handle attachment, the domed lid, the rounded knob atop the plunger, and the C‐shaped handle.”

A Top argued that Bodum failed to establish that these claimed features where not essential to the product’s use and therefore nonfunctional. Yet the court distinguished the common meaning of functional from the meaning used in trade dress law.

The court said that “to establish it has a valid trade dress, Bodum did not have to prove that something like a handle does not serve any function.” The court continued, “It merely needed to prove that preventing competitors from copying the Chambord’s particular design would not significantly disadvantage them from producing a competitive and cost‐efficient French press coffeemaker.”

According to the court, Bodum was not claiming that any French press coffeemaker with a handle, a domed top, or metal around the carafe infringes on its trade dress. Instead it was objecting to the overall appearance of A Top’s product, which included “the same shaped handle, the same domed lid, the same shaped feet, the same rounded knob, and the same shaped metal frame as the Chambord.”

The court found that Bodum presented sufficient evidence for a jury to conclude that the claimed trade dress was nonfunctional under trade dress law, even though the claimed trade dress included elements that had a function.

Citation: Bodum USA, Inc. v. A Top New Casting Inc., No. 18-3020 (7th Cir. 2019).

Domain Name Registration Alone Does Not Establish Trademark Rights

You’re ready to launch a new business, product, service, or project. You have a name. The domain name for the name you chose is available. So you register it. But you haven’t lunched a website at the domain name you registered. Nor have you done anything more, other than prepare internally to launch. Have you established trademark rights in the name? Probably not.

In the case of Brookfield Communs., Inc. v. West Coast Entm’t Corp. 174 F.3d 1036, 1052 (9th Cir. 1999), Brookfeild sued West Coast alleging that West Coast’s planned use of Moviebuff.com infringed Brookfield’s trademark rights in MovieBuff.

West Coast argued that it had trademark priority (first use) by registering the domain name MovieBuff.com in February 1996 before Brookfield’s first use of MovieBuff in August 1997 in connection with its online database. However, West Coast had not yet launched a website at Moviebuff.com .

The court noted that the mere registration of a domain name with an intent to use the domain name as a trademark commercially does not establish trademark rights. Therefore, Brookfield’s first use of MovieBuff in August 1997 predated any valid trademark use of MovieBuff by West Coast in connection with its website. Therefore Brookfield had priority in the MOVIEBUFF mark. And West Coast’s “I was first” defense failed.

The court ordered that West Coast be enjoined (prohibited) from using MOVIEBUFF as a trademark and from using MOVIEBUFF.com.

The registration of a domain name is an important step in launching a project. If you can’t get the domain name, you might have to go with a different name for the project. However, registration of the domain name alone is not sufficient to establish trademark rights. To establish trademark rights, you’ll need something more, such as filing a federal trademark application (often preferred), or launching a website at the domain name providing goods and/or services under the trademark so that the name is in actual use as a trademark.

P.S. Also, forming a corporation or LLC with the name alone does not create federal trademark rights.

Do Nothing and Wait

When there is a problem or a potential problem, the first desire is often to fix it and fix it now. However, sometimes the best approach is to do nothing and see if the problem solves itself.

Suspended Over Intent-to-Use Trademark Application

For example, consider the case where a trademark application is suspended based on a prior filed intent-to-use trademark application that is pending. If the owner of the prior filed intent-to-use trademark application has not filed a statement of use, it is possible that the owner will not file a statement of use. If a statement of use is not filed within the applicable time limit, then the application will be abandoned and no longer an obstacle to the later filed trademark application proceeding to registration.

It is not unusual for an owner of an intent-to-use application to abandon the application if their plans for using the mark fail to materialize. However, an owner of an intent-to-use application can extend the deadline to file a statement of use up to 3 years from the notice of allowance date. Therefore, this strategy of doing nothing, can involve a long wait time and a long period of uncertainty for the later filed trademark application owner.

Yet, if the later filed trademark application owner reaches out to the prior filed application owner the prior filed application owner might realize that their mark is more important (because someone else is interested in it) than he/she/it previously recognized. Therefore, contacting the trademark application owner might result in the filing a statement of use and perfecting the application, when he/she/it otherwise might not have otherwise done so. Therefore, doing something can be risker than doing nothing and waiting.

Refused Over Registration Nearing Renewal Deadline

As another example, consider the scenario where a trademark application is refused based a prior trademark registration, but the deadline for renewing the prior trademark registration is approaching. If the owner of the trademark registration does not file the renewal documents and pay the renewal fees, the trademark registration will be canceled, and no longer an obstacle to registration. Therefore, it may be best to wait to see if the renewal occurs, if time is available before an office action response top the refusal is due or otherwise.

Like in the prior example, contacting the trademark registration owner may lead the owner to renew the trademark registration–realizing it has value–when he/she/it otherwise would not have renewed.

Waiting can be uncomfortable because it allows tension and uncertainty. However, sometimes it is the best option.


The Power of a Standard Character Trademark Registration

Cheryl Bauman-Buffone applied to register the mark JUST SAY IT in the stylized form shown below.

Nike opposed the registration based on its JUST DO IT trademarks in Nike, Inc. v. Cheryl Bauman-Buffone, Op No. 91234556 (TTAB 2019).

When the Trademark Trial and Appeals Board considered the similarities between the marks, it said, “The stylization of Applicant’s mark is essentially irrelevant, because Opposer’s [Nike’s] mark is registered in standard characters and typed forms, and could be displayed in any font or size, including in a manner similar to Applicant’s display of JUST SAY IT.” (emphasis added).

A standard character mark usually provides the broadest protection over the underlying words/characters of the mark. This is so, because the registration is not limited to any particular font or stylization of the mark. My prior article on Words or a Logo or Both in a Trademark Application? provides more factors to consider when choosing what to include in a federal trademark application.

Ultimately, the Board refused the registration Bauman-Buffone’s mark. While the similarity of the marks was not the only factor that lead to the refusal to register, it was an important factor.

Registration or Refusal by Copyright Office Required to Sue for Copyright Infringement

On March 4, 2019, the U.S. Supreme Court decided that one portion of section 411(a) of the Copyright Act requires a copyright registration in order to file suit for copyright infringement and that a registration occurs when the Copyright Office registers a copyright. The court found that simply filing an application for copyright registration was not enough to meet the statutory requirement that a “registration . . . has been made” under 17 USC 411(a) prior to filing suit. Instead action by the Copyright Office on the application was necessary.

According the the Copyright Office, the average processing time for a copyright application is about six months. Therefore, this decision will delay the time until an owner of an unregistered copyright can file suit. Further, this decision may lead some plaintiffs to forgo ancillary copyright claims in suits where other claims predominate or are otherwise available.

Copyright owners should consider promptly registering their copyrights so they can take quick action to stop infringement when necessary and avoid a six month (or whatever is the then existing Copyright Office processing time) delay in filing suit while waiting for the Copyright Office to take action.

Section 411(a) also permits a lawsuit to be filed if the Copyright Office refuses registration. Therefore, some action by the Copyright Office on an application is usually necessary, subject to some exceptions, in order to file suit.

Case: Fourth Estate Public Benefit Corporation v. Wall-Street.com, No. 17-571 (2019).

Will They Steal My Invention?

“[He] requested that he and his team be allowed to spend some time alone with the prototype, during which he photographed it without permission.”

Inventors and businesses are often concerned that their invention or technology will be stolen or copied in the marketplace. However, keeping an invention secret is not always an option. If bringing the invention to market requires disclosing the invention to the public, then secrecy is not an option. But neither, in such case, is keeping it locked up in the lab or under the mattress–if commercial exploitation of the invention is desired.

There are at least two ways to protect yourself when interacting with another about the invention: (1) file a patent application on the invention beforehand, (2) enter into a favorable and strong nondisclosure agreement, or (3) both.

However, there are rarely guarantees. Even with a nondisclosure agreement agreement in place things can still go sideways, as allegedly happened to Mr. Hrabal when he interacted with Goodyear.

Mr. Hrabal’s complaint alleges the following in the case of Coda Development v. Goodyear Tire & Rubber Company, 2018-1028 (Fed. Cir. 2019). In 2008, Mr. Hrabal invented a self-inflating tire (SIT) technology. General Motors expressed an interest and wanted to involve Goodyear. Goodyear reached out to Coda Development, Mr. Hrabal’s company, requesting a meeting. Before the meeting the parties executed a nondisclosure agreement restricting use of information regarding the SIT Technology.

Then Coda and Goodyear met in 2009 for the first time and requested that Coda share information on the SIT technology. At a second meeting in 2009, Coda allowed Goodyear to examiner a functional prototype of the SIT technology. Also at this second meeting, Mr. Benedict of Goodyear, “requested that he and his team be allowed to spend some time alone with the prototype, during which he photographed it without permission.”

Following the second meeting in 2009, months passed without any communication from Goodyear. Mr. Benedict later in 2009 declined an invitation from Coda to restart communications over a dinner saying that a meeting “would be premature at this point.”

In December 2009, Goodyear applied, without Coda’s knowledge, for a patent titled “Self-Inflating Tire Assembly” naming Mr. Benedict as an inventor, which became U.S. Patent 8,042,586.

Coda assumed that Goodyear lost interest. But in 2012, Coda received an unsolicited email from a then ex-Goodyear employee that said “I am retired now from Goodyear and see in the news today that they have copied the SIT. Unfortunate. I though China companies were bad.”

Between 2012 and 2015 eleven other patents issued to Goodyear covering assemblies and methods for assembly of pumps and other devices used in self-inflating tires, which Coda claims cover confidential information Coda disclosed to Goodyear.

Goodyear denied Coda’s claims and denied that the Coda’s SIT technology was new. This case is only at the initial stage so the court has not made a final determination on these allegations.

What’s the take away here? Does one forego opportunities with other companies even while taking precautions and having a good nondisclosure in place? Probably no.

One should take reasonable steps to protect their interests. But, these allegations illiterate that things could still go badly. 

Could someone try to steal your invention? It’s possible. But that possibility probably should not stop you from trying to commercialize the invention after taking reasonable steps to protect yourself, particularly if the alternative of indefinite secrecy means that your invention might never get off the ground commercially.

Is There a Market for the Invention?

“[T]he lesson Edison drew from the experience was that invention should not be pursued as an exercise in technical cleverness, but should be shaped by commercial needs.”

Thomas Edison is an inventor famous for his long running electric light invention among many others. Edison accumulated over 1000 patents in his life time. His life and work is covered in Randall Stross’ book The Wizard of Menlo Park: How Tomas Alva Edison Invented the Modern World.

Early in his career, while working as a telegraph operator, Edition invented on the side. According to Stross, “Edison filed patent applications as fast as the ideas arrived.” The first patent application that Edison filed was for a legislative chamber vote recorder (U.S. Patent No. 90,646). The vote recorder could shorten the time it took to tabulate votes by hours.

The invention provided buttons at each member’s desk and the chamber’s speaker could see running totals for “aye” and “nay” on twin dials.

However, there was no interest in the Capital for the invention. Stross describes a Capital insider’s reaction to the invention as “undisguised horror.” Stross continues: “The minority faction would not embrace an expedited voting process because it eliminated the opportunity to lobby for votes, nor would the majority want a change, either.”

Stross concludes, “The vote recorder was a bust, and the lesson Edison drew from the experience was that invention should not be pursued as an exercise in technical cleverness, but should be shaped by commercial needs.”

Register the Mark You Will Actually Use, Not Unused Similar Variations

Trademark rights are connected with actual use of a mark. Sometimes that use starts before an federal trademark is filed and sometimes it starts after a federal (intent to use) trademark application is filed. But speculating in trademark applications on marks that you don’t intend to actually use is useless.

This brings me a federal trademark application filed on the following mark:

double doink doubledoink DOUBLE DOINK DOUBLEDOINK Doubledoink Double Doink

That whole thing is the mark of the application.

The applicant included many variations of capitalization and spacing of the two words Double Doink. Let’s break down the mark:

  1. double doink
  2. doubledoink
  3. DOUBLE DOINK
  4. DOUBLEDOINK
  5. Doubledoink
  6. Double Doink

The applicant has six variations of Double Doink in the mark. But you don’t need to, and shouldn’t do this to protect the mark “Double Doink.”

Maybe the applicant here really is going to use all six variations, together, and in that order, as his mark. But that seems very unlikely.

You should pick the way that mark will be used, use it consistently in that way, and apply to register in that way. Then let trademark law do the rest. Trademark law often protects against not only identical copying of a mark, but also against confusingly similar marks.  Is “Doubledoink” confusingly similar to “Double Doink” for the same goods/services? Probably.

In many cases, a trademark registration on Double Doink would likely protect the owner from others using the mark with minor different capitalization or spacing–e.g. similar variations of the mark–in connection with the same goods/services. For example, the USPTO found CROSS-OVER to be in conflict with a registered mark CROSSOVER. The hyphen made no difference.

There are exceptions to every rule, but like minor punctuation differences, minor spacing and capitalization differences alone often do not distinguish marks because marks are compared in at least following ways: (1) appearance, (2) sound, and (3) connotation. A similarity in any one of those aspects could be enough to find that the marks are similar. Many times you can’t hear spacing and capitalization differences when a mark is spoken, e.g. its sound. Further, the spacing and capitalization may not sufficiently distinguish the marks visually. Is “Doubledoink” that much different visually from “Double Doink”? No.

Pick a way to present and use your mark. Use it and apply to register it in that way. And let trademark law do the work of stopping the use of similar variations of your mark.

Thanks to Erik Pelton for pointing out this application.

Difficulty of Name Changes: Country Moves to Change Name to End 27 Year Dispute with Greece

It is not uncommon for trademark disputes to resolve with one party agreeing to stop using the mark that is in dispute. If the mark is the party’s name, then a name change is required.

Name changes are usually not easy. Consider the need to change items having the mark, including advertisements, signs, letterhead, business cards, brochures, packaging, marked products, and a website. Further, a name change may mean a loss of customer recognition of the brand and the need to educate customers on the new name.

As a result, it is no surprise that a party is usually not happy about being required to change its name. So too when a country is pressured to change its name.

NPR reports that the parliament of the country of Macedonia (Republic of Macedonia) approved changing the country’s name to North Macedonia to appease Greece. NPR reports on why Greece objected to Macedonia’s name:

Greece already contained a region called Macedonia, which incorporates most of the territories of the eponymous ancient kingdom that was led centuries ago by Alexander the Great. Both Greece and its northern neighbor consider Alexander, and the name, integral parts of their identity…

Previous Greek governments have also claimed the tiny Republic of Macedonia might use the name to make territorial claims on its province.

As a result of this name dispute, Greece has blocked Macedonia’s entry into both NATO and the European Union. Greece and Macedonia have been in a dispute over the name since 1991 when the Republic of Macedonia broke away from Yugoslavia.

Opponents of the name change strongly condemned the vote in parliament using words such as “traitors” and “treason,” according to NPR.

Name changes are often hard. However, apparently the benefits of a possible path to NATO and EU membership outweigh the resistance to a name change in the Republic of Macedonia. Similarly in trademark disputes, when a name change is agreed, the business usually sees the benefits arising from a change outweighing the costs.