The Trademark Blog: February 2007 Archives - Jessica Simpson - Music Stars

Carl Oppedahl on ETEAS, Paper and Madrid

Carl Oppedahl practices trademark and patent law from , and from that vantage point, he monitors the online infrastructure of the PTO. He maintains a listserv concerned with the Madrid Protocol ( ) and posted the following, presenting interesting statistics on ETEAS, paper filings and Madrid (reprinted with permission):
"Today a client of our firm asked me "How long does it take for my USPTO applications to show up in TESS?

" I did some searching to see how long it takes these days.
Used to be it averaged two weeks for an e-filed case and almost three weeks for a paper-filed case to turn up in TESS. Back in those days, a case would turn up in TARR several days before it would turn up in TESS.

So a persistent searcher who wished to try very hard to learn about the most recently filed cases would do so by searching TARR, not TESS (plugging in successive serial numbers until the most recent case had been found).
Summary: These days it seems to average just under a week for an e-filed case to get into TESS. And TARR and TESS match, in the sense that anything that is in TARR is also in TESS; there is not a delay with things turning up in TARR first and then only later in TESS.

Paper-filed cases take about a week and a half to get into TESS and TARR.
Madrid cases get into TESS and TARR essentially instantly, meaning they get into TESS and TARR the same day that WIPO communicates them to USPTO.
Details: Here are some actual search results carried out today (the 25th, a Sunday).

I looked for e-filed US trademark applications (1(a) and 1(b)). I looked for paper-filed US trademark applications (1(a) and 1(b)). And I looked for Madrid Protocol applications (66(a)).

In each case my goal was to find the most recently filed case. I defined this as the highest-numbered serial number in each series (77, 76, and 79 respectively).
The most recent records to enter TESS and TARR were Madrid Protocol records.

The highest-numbered "79" case (Madrid Protocol) was 79034226. This is a case which WIPO communicated to USPTO on February 22, 2007 (this past Thursday). Its US filing date was January 8, 2007, meaning that the time between January 8, 2007 and February 22, 2007 were spent at the Office of Origin (in this case, Sweden) and at the International Bureau.

USPTO loaded this case into the USPTO databases on the same day that WIPO communicated it to USPTO.
The next previous day on which Madrid applications got communicated to USPTO was February 15, 2007, exactly a week earlier. I did not pursue this further, but the impression I get is that may be WIPO communicates Madrid cases to USPTO once a week, on Thursdays.

If so, then sometimes (as today) the most recent records entered into TESS and TARR are Madrid records, but on other days of the week it might happen that the most recent records entered would be e-filed 1(a) and 1(b) cases.
The second most recent category of cases loaded into TESS and TARR (as of today) were the e-filed cases. The most recently e-filed case to be entered into TESS and TARR was a case that was e-filed at 23:58:34 EST, about a minute and a half before midnight Eastern Time on February 20, 2007 (this past Tuesday).

This was application number 77112022.
The remaining category is, of course, the paper-filed cases. The most recently filed paper application to turn up in TESS and TARR was application number 76672824, filed February 16, 2007.

So it took about a week and a half for that case to find its way into TESS and TARR.
What fraction of these cases were paper-filed, e-filed, or Madrid?
Of the 1(a) and 1(b) cases (US origin cases) that were filed February 16, 2007, the answer is that just over 95 percent were e-filed and just under 5 percent were paper-filed.

This was on a day that there were 1182 US-origin cases filed. On that day, of the 1182 cases filed, 52 were paper-filed and 1130 were e-filed.
At around the same time, a weekly data load from WIPO amounted to 215 cases.

This suggests that the workload of the USPTO trademark law offices is lately averaging maybe ten percent Madrid work and maybe ninety percent non-Madrid work."
"The Delhi High Court has restrained a local company from using Intel Corporation's registered trademark 'Intel' and asked it to give compensation to the global chip maker for the infringement. "
This is only the second time I've used the word 'chutzpah' in 5 years of blogging, but, if the facts are as they appear, the use is justified.

Voicing an apparently widespread belief, accused Carlos Mencia of stealing jokes. Rogan showed up at Mencia's act at the Comedy Store, and films a confrontation in which he accuses Mencia of plagiarism. Rogan uploads the video to YouTube.

.
UPDATE: A reader writes to advise that Rogan was onstage, made a remark about Mencia, then Mencia took the stage. More from Rogan about here.

"A court in Brussels ruled Tuesday that Google violated copyright laws by publishing links to stories from Belgian newspapers without permission, a case that legal experts said could have broad implications in Europe for the news services provided by search engines."
Google condemned the court decision and defended the news site. "This is an isolated case, and it would be inaccurate to portray Google News as standing in conflict with the publishing industry," said Jessica Powell, a spokeswoman in London for Google.

"We currently have 10,000 sources in Google News and get contacted every day by others seeking to be included."
Powell added that the main complaints raised by the publishers in Belgium — references to their stories without prior permission and the availability of stories that the newspapers subsequently place behind a firewall — are easily rectified without recourse to legal action."
bills itself as a 3D Analog World.

It makes ambitious claims about the users' ability to 'work, reproduce and perish.' There does not seem to be a terms of service agreement, suggesting that users would have to rely upon the court system for intellectual property protection, a distinct disadvantage compared to, for example, Second Life.
Among the advanced features of First Life is a link at the bottom of its page labled 'Comments or Cease and Desist Letters.

" One user has already availed itself:
"This notice is provided on behalf of Linden Research, Inc. (“Linden Lab”), the owner of trademark, copyright and other intellectual property rights in and to the “Second Life” product and service offering, including the “eye-in-hand” logo for Second Life and the website maintained at http://secondlife.com/.

It has come to our attention that the website located at http://www.getafirstlife.com/ purports to appropriate certain trade dress and marks associated with Second Life and owned by Linden Lab.

That website currently includes a link in the bottom right-hand corner for “Comments or cease and desist letters.”
As you must be aware, the Copyright Act (Title 17, U.S.

Code) contains provisions regarding the doctrine of “fair use” of copyrighted materials (Section 107 of the Act). Although lesser known and lesser recognized by trademark owners, the Lanham Act (Title 15, Chapter 22, U.S.

Code) protecting trademarks is also limited by a judicial doctrine of fair use of trademarks. Determining whether or not a particular use constitutes fair use typically involves a multi-factor analysis that is often highly complex and frustratingly indeterminate; however a use constituting parody can be a somewhat simpler analysis, even where such parody involves a fairly extensive use of the original work.
We do not believe that reasonable people would argue as to whether the website located at http://www.

getafirstlife.com/ constitutes parody – it clearly is. Linden Lab is well known among its customers and in the general business community as a company with enlightened and well-informed views regarding intellectual property rights, including the fair use doctrine, open source licensing, and other principles that support creativity and self-expression.

We know parody when we see it.
Moreover, Linden Lab objects to any implication that it would employ lawyers incapable of distinguishing such obvious parody. Indeed, any competent attorney is well aware that the outcome of sending a cease-and-desist letter regarding a parody is only to draw more attention to such parody, and to invite public scorn and ridicule of the humor-impaired legal counsel.

Linden Lab is well-known for having strict hiring standards, including a requirement for having a sense of humor, from which our lawyers receive no exception.
In conclusion, your invitation to submit a cease-and-desist letter is hereby rejected.
Notwithstanding the foregoing, it is possible that your use of the modified eye-in-hand logo for Second Life, even as parody, requires license from Linden Lab, especially with respect to your sale of goods with the parody mark at http://www.

cafepress.com/getafirstlife/. Linden Lab hereby grants you a nonexclusive, nontransferable, nonsublicenseable, revocable, limited license to use the modified eye-in-hand logo (as displayed on http://www.

getafirstlife.com/ as of January 21, 2007) to identify only your goods and/or services that are sold at http://www.cafepress.

com/getafirstlife/. This license may be modified, addended, or revoked at any time by Linden Lab in its sole discretion.
HT Jessica.

"Bolt has agreed to admit that the uploads were a violation of Universal's copyrights and to pay a settlement valued at several million dollars, said Aaron Cohen, Bolt's chief executive. Bolt will also agree to pay royalties in the future any time its users submit videos that contain Universal music.
Bolt is also negotiating similar royalty arrangements with other music labels, including Warner Music Group, Cohen said.

To pay for the settlement, which will combine cash, stock and advertising credits, Bolt has agreed to sell itself to GoFish, a smaller rival, for as much as $30 million in GoFish stock."
You know how the , as in, a store can't say 'Your Super Bowl Party Headquarters,' because, you know, people would be confused.
So stores would say "Your Big Game Headquarters" or "Buy some snacks for your Big Game Party"?

Well, check out this pending trademark application, currently in the opposition period:
Goods and Services IC 016 posters, calendars, trading cards, series of non-fiction books relating to football; magazines relating to football, newsletters relating to football,notepads, stickers, bumper stickers, paper pennants; greeting cards; printed tickets to sports games and events; pens and pencils, note paper, wrapping paper, paper table cloths, paper napkins, printed paper party invitations, paper gift cards; paper party decorations, collectible cards; collectible card and memorabilia holders, souvenir programs for sports events
IC 028. toys and sporting goods, namely, plush toys, stuffed toy animals, play figures, golf balls, footballs, sport balls, toy banks, playing cards, Christmas tree ornaments
Filing Date February 1, 2006
Goods and Services: Men's, women's and children's apparel, namely T-shirts, fleece tops, caps, headwear
IC 041. Entertainment services in the nature of football exhibitions; providing sports and entertainment information via a global computer network or a commercial on-line service
Filing Date January 31, 2006
Published for Opposition January 23, 2007
Attorney of Record Paula M.

Guibault
by defendant infringed its rights. A complaint was
filed in federal court. The matter was ultimately settled on
favorable terms.

A matter such as this is amendable to being handled on a 'hybrid' billing basis. In such an
arrangement, representation is on a contingent recovery basis,
however the initial work is billed on an attorney/time basis. After
a billing threshold is reached, the parties can then re-negotiate the
begun, and therefore the parties have more information on which to
claim.

The advantage to the outside firm is that it can moderate the
risk involved in undertaking a contingent fee arrangement.
If you are an IP Owner and have questions regarding such arrangements, please contact us.
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David Pecker is the chairman of American Media, Inc., publisher of, among others, National Enquirer and Weekly World News. 'Mr.

Ferris' registered the domain name DAVIDPECKER.COM, had a PPC company host it, where it was keyed to ads for porn, because, according to the registrant, the word PECKER was in the domain name. Mr.

Pecker brought a UDRP.
Although 'Mr. Ferris' (as he is identified in the decision) did not seem (to me) that he could establish a bona fide intent to use the name in conenction with an offering of goods or services, and altohugh there seemed to be plausible evidence of bad faith, the UDRP was denied.

Complainant could not establish rights in his name as a trademark:
" A number of disputes under the Policy have involved personal names, as here, and the panels’ decisions have been mixed on the issue of whether the complainants have rights in the names. See, e.g.

, Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560 (finding common law rights in “Tom Cruise”); and The Reverend Dr.

Jerry Falwell and The Liberty Alliance v. Gary Cohn, Prolife.net, and God.

info, WIPO Case No. D2002-0184 (finding no rights in “Jerry Falwell”).
Indeed, the issue of rights in personal names has generated enough cases and raised enough questions that the matter has been addressed by the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, which states: “While the UDRP does not specifically protect personal names, in situations where an unregistered personal name is being used for trade or commerce, the complainant can establish common law trademark rights in the name.

” “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, paragraph 1.6, “http://arbiter.wipo.

int/domains/search/overview/index.html” (visited January 15, 2007).
In this case, Complainant has provided no evidence of his rights in the Disputed Domain Name other than broad assertions that he “is known nationally and internationally by the name David Pecker and his high profile name is linked inextricably with AMI and is cited frequently by the media”, and an affidavit from AMI’s assistant general counsel that Complainant “possesses a strong common law service mark in his name by virtue of his position as being one of the leaders in the publishing industry… David Pecker’s personal fame and reputation have caused his name, as a leader in the publishing industry and as Chairman and CEO of AMI, to acquire a secondary meaning in the industry.

Complainant’s name is used to promote AMI and the public understands his name as referring to AMI”. While these statements may well be true, it is nevertheless incumbent on a complainant, except in the most obvious cases, to provide evidence in support of a claim to rights in a personal name for the purposes of the Policy. .

. . It is also unclear to the Panel on the evidence provided whether, as required by the Policy in such cases, Mr.

Pecker “has ever used his personal name for the purpose of advertising or promoting his business or for the sale of any goods or services”. Joacim Bruus-Jensen v. John Adamsen, WIPO Case No.

D2004-0458.
In light of the above, the Panel is not convinced, based on the limited record before it, that Complainant has established rights in the name “David Pecker” for the purpose of this proceeding. Therefore, the Panel finds that Complainant has not succeeded in proving the first element of the Policy.

Complainant’s lack of success in this proceeding in proving its rights in the name “David Pecker” does not necessarily mean that Complainant has no remedy. “He may have claims under the Anticybersquatting Consumer Protection Act (‘ACPA’), which expressly provides for protection of personal names, or perhaps his actions lie in tort. Complainant is free to pursue his claims in U.

S. courts.” The Reverend Dr.

Jerry Falwell and The Liberty Alliance v. Gary Cohn, Prolife.net, and God.

info, WIPO Case No. D2002-0184.
Comment: Entertainers usually fare better in UDRPs than well-known executives, as it tends to be easer for them to show, in the absence of a registration, that their names function as common law trademarks for the entertainment services they provide.

That should be some comfort for PETER O'TOOLE.

VIAGRA v. MIGHTY BROTHER In China

"Pfizer Inc.

has filed an appeal after losing a lawsuit over the Chinese name for its impotence treatment Viagra, the U.S. drugmaker said in a statement on Wednesday.

Pfizer, the world's largest drugmaker, sued a Chinese firm over its usage of the brand "Wei Ge" or "Mighty Brother" in November 2005, but lost the case last month, Pfizer said."
While Pfizer markets the anti-impotence pill as Wan Ai Ke in China, it is commonly called Wei Ge by the public (via ).
DirecTV ran ads promoting its satellite TV service featuring William Shatner in one ad and Jessica Simpson in another ( ).

In the Simpson ad, the claim is made that DirecTV provides the best picutrem and the narrator states ". . .

For an HD Picture that can't be beat, get DirecTV." Time Warner sued in the Southern District of New York in December, arguing that because the HD quality of both cable and satellite HD service is equivalent, the claim that DirecTV's picture is the best, is literally false. DirecTV argued that the claim that the picture was the 'best' referred to the signal for all channels, including non-HD ones.

Held: Viewing the commercial in its entirety, the claim that the picture was the 'best' had to be interpreted in the context that the entire ad focuses exclusively on HD channels, and therefore the claim that the picture was the 'best' was literally false. The commercials were enjoined.
Time Warner Cable, Inc.

v. DirecTV, 06-CV-14245 (SDNY Feb 5, 2007) (Swain, J). Email me for a copy of the order (too large to upload).

, 05-10143 (11th Cir. Feb. 5 2007):
possession in a Chapter 11 bankruptcy case, who negotiated the purchase of
copyrights prior to the bankruptcy proceeding, later uses the bankruptcy code to
reject those contracts that transferred ownership of the copyrights to the debtor.

rap artist who created the works giving rise to the copyrights in question. The
recording contract that entitled the artist to future royalties. The recording
company later went bankrupt, becoming the debtor-in-possession.

In confirming
the debtor’s reorganization plan, the bankruptcy court ordered that all of the
copyrights sold to a rival recording company and its owner, two of the defendants
in the instant case.
Years later, the artist sued the defendants, alleging that they did not actually
gain ownership of the copyrights through the bankruptcy, or if they did, they now
owe him royalties. Based on that premise, the artist asserts numerous claims
sounding in federal and state law.

The district court granted summary judgment in
favor of the defendants on all claims, and for the reasons set forth below, we
affirm. "
Rationale: Pre-bankruptcy rejection of the copyright assignment by the debtor as an 'executory contract' (one that had not been completely executed) does not act as a recission of the contract (which would have returned ownership of the copyright to the creditor), but instead is merely a breach by the debtor, and the payments owing under the assignment, become an unsecured claim.
: A study from FKF showed that the many Super Bowl commercials with violent imagery generated reactions in regions of the brain associated with anxiety, Mr.

Freedman said, including the amygdala, which he characterized as the “threat detector,” and as a result they generated “no connection, engagement or appeal” with viewers . . .

By comparison, only a few spots fired the brain regions associated with positive emotions, Mr. Freedman said, which he termed unusual in that advertisers typically seek to stimulate responses in those areas . .

.
Among the positive commercials, Mr. Freedman listed the “Live the Flavor” commercial for Doritos and a light-hearted spot by Wieden Kennedy for Coca-Cola Classic, sold by the Coca-Cola Company, which spoofed violent video games.

"
After I posted about the below, I was going to pose a question to the readership: what are the risks in sending dilution-based demand letters? In view of , one answer seems to be: Don't send a demand letter to a blogger if the subject matter is breasts, as they make for good copy.
However another issue, raised in one of the forums blasting the Pork Board, caught my eye.

It seems that , and that they are paying $3 million a year for twenty years, to the private pork trade group, which apparently developed the mark.
The appears to be funded by a 'pork check-off,' a payment made by pork producers. Which raises more questions:
Is paying $60 million for the trademark a method of refunding the pork check-off to the pork producers?

Who pays for the PORK, THE OTHER WHITE MEAT ad campaign?
Who pays for the demand letter sent to the breast-feeding website?
The slogan "THE OTHER WHITE MEAT" seems, on its face, not to merely encourage an increase in consumption, as the GOT MILK?

campaign does. It seems to encourage substitution of pork for other forms of white meat protein, presumably chicken and turkey. Assuming that pork, when eaten in moderation, is as healthful as chicken and turkey (and that , should a government agency levy producer taxes to promote product substitution (as opposed to merely promote increased per capita consumption).

I'm not familiar with the use of trademarks for 'check-off' programs so more information, resources, views, will be appreciated.
"Viacom Inc. (VIAb.

N: Quote, Profile , Research) has demanded that Google Inc.'s online video service YouTube pull down all of its video clips after they failed to reach an agreement, the company said.
About 100,000 video clips from Viacom-owned properties including MTV Networks and BET has been asked to be removed (sic).

Viacom said its pirated programs on YouTube generate about 1.2 billion video streams, based on a study from an outside consultant"
UPDATE: Well, that was fast. Says a YouTube spokesperson:
"It's unfortunate that Viacom will no longer be able to benefit from YouTube's passionate audience, which has helped to promote many of Viacom's shows,"
Aside: Can you imagine the expense in having to prove ownership of 100,000 videos?

Can you imagine having to pay damages for 100,000 acts of infringement?

Keywords: Linden Lab, Second Life, Madrid Protocol, White Meat, Trademark Blog, Filing Date, Super Bowl, Coca Cola, Selected Udrp, Carl Oppedahl

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