NBC sued over product placement

Product placement is the practice of using a real commercial product in fictional or non-fictional media.  According to Free Market News, Emerson Electric, maker of the "Insinkerator" garbage disposal, is suing NBC over a scene in the series "Heroes" in which one of the characters injures her hand in Emerson’s product.  Emerson is suing for unfair competition, trademark infringement, and dilution.

Sir Paul McCartney seeks trademark protection for his name

Reuters reports that Paul McCartney is seeking to register his name in the UK as a trademark for use in connection with a variety of goods ranging from food to clothing.  McCartney already has one federal trademark registration in the US (2,407,693) for "PAUL MCCARTNEY" for use in connection with musical sound recordings; printed matter; clothing; and entertainment services.  He also has pending application no. 79/017,871 for his signature "PAUL MCCARTNEY" for use in connection with the same goods. 

Apple to release ‘iPhone’

According to reports, Apple is expected to release two mobile phone models in early 2007.  Speculation is based at least in part on Apple trademark filings overseas for the mark "iPhone."  In the U.S., Infogear Technology Corporation owns registration no. 2,293,011 for the mark "IPHONE" used in connection with computer hardware and software for providing integrated telephone communication with computerized global information networks.

Also pending in the U.S. is application no. 78/581,563 for the mark "iPhone" for use with telephones.  The application was filed as an intent to use application and recently was suspended pending the filing of an Affidavit of Use for the ‘011 registration.  Registration of the mark in the ‘563 application was refused under Section 2(d) because the mark so resembles the mark in the ‘011 registration as to be likely to cause confusion.  Registration was also refused under Section 2(e)(1) because the mark is merely descriptive of the proposed goods.

Congress considering expanded protection for fashion designs

Pending bill would provide three years of copyright protection on designs of clothing and accessories.

Google keyword case

Judge dismisses suit against Google over trademarked terms in ads.

Santa Cruz v. Huntington Beach: which is the real “Surf City USA”

Ongoing trademark dispute over the mark SURF CITY USA.  Huntington Beach Conference and Visitors Bureau has four federal registrations (3,088,921; 3,088,922; 3,091,711; and 3,140,625) all of which are registered on the Supplemental Register.

I did not know until recently that one of the purposes of the Supplemental Register is to provide United States Registration of a distinctive package in order that the registrant might use such U.S. registration to obtain registration and protection in foreign countries—notably the Latin American countries.  Thus, the configuration of containers and packages may be registered on the Supplemental Register, as may the configuration of a part of, or the overall shape of, a product which serves as its own trademark.

Some differences between supplemental registration and principal registration include:

1.  principal registration is prima facie evidence of registrant’s exclusive right to use the mark, supplemental registration has no such evidentiary effect;

2.  principal registration is constructive notice of claim of ownership so as to eliminate good faith defense, supplemental registration has no such effect;

3.  principal registration can become incontestable after five years of regsitration, whereas supplemental registration cannot; and

4.  registration on the supplemental register cannot be used as a basis to stop importation into the US of goods with infringing marks.

 

Trademark protection for fragrances

L’Oreal loses perfume "passing off" argument due to no likelihood of confusion. 

Of note, in the US a mark consisting of a fragrance applied to goods can be registered.  See In re Clarke, 17 USPQ2d 1238 (TTAB 1990), in which the TTAB held that scented fragrances applied to thread and embroidered yarn functioned as source identifiers and as such were registrable.  Also of apparent significance in the case was the fact that the applicant actively promoted the scents as source identifiers.

SPAM descriptive of services to combat . . . well, spam

The Board of Appeals at the Office for Harmonization in the Internal Market recently dismissed Hormel’s appeal of the denial to register the mark SPAM in connection with, among other things, services to avoid or suppress unsolicited emails.  Hormel unsuccessfully argued that "spam" does not enable the targeted public to detect immediately and without further reflection the description of a characteristic of the service in question.

Makes sense that "spam" can’t be registered in connection with services to combat spam.  But it seems that it takes a bit of a stretch to reject registration of the mark in connection with the class 36 services (economic consultancy, particularly in connection with network services) and class 42 services (creation and maintenance of computer software).  Although that makes me wonder, is Hormel actually going to be using the mark in connection with these services – seems a bit beyond the scope of what it does best, i.e., SPAM.

Funny thing I noticed at the top of the article – check out the Google ads.  They sure don’t help the argument that "spam" is not merely descriptive.

SPAM descriptive of services to combat . . . well, spam

The Board of Appeals at the Office for Harmonization in the Internal Market recently dismissed Hormel’s appeal of the denial to register the mark SPAM in connection with services designed to prevent unwanted emails.  News story can be found here.