Many people believe that titles to publications or other works cannot be protected. This misconception stems from the fact that although copyright law protects the content of a particular publication, the Copyright Act provides that words, slogans and short phrases are not protectable under copyright law. Copyright Office regulations and numerous court decisions have determined that titles are equivalent to short phrases and, as such, are not protectable. Read the rest of this entry »

With the ever increasing popularity of virtual worlds such as Second Life, trademark owners need to be aware of both the opportunities and challenges that their brands may face in these newly emerging markets. As a trademark owner, if you choose to conduct business in the virtual world, be aware that all of the attendant concerns of brand reputation and disparagement you face in the real world, such as counterfeiting, copyright infringement and misappropriation of property, translate into the virtual space. Read the rest of this entry »

As our economy becomes increasingly globalized, prudent trademark owners will remember that it is their responsibility to maintain control over the distribution channels, as well as the ultimate geographic sale location, of their branded products. Markets around the world are being flooded with “parallel imports” and “gray market” goods - branded goods that are imported into a market and sold there without the consent of the owner of the trademark in the markets. These goods are not counterfeit (i.e., manufactured by someone other than the brand owner). Rather, they are manufactured by, for, or under license by the brand owner, but are imported into a jurisdiction different from that intended by the trademark owner. The question for trademark owners is, what rights do they have to stop the sale of gray market goods? Read the rest of this entry »

Internet domain name registration is a first-come, first-served process. Because of the simplicity and relative low cost of registering a domain, trafficking in domain names has been commonplace since the inception of the Internet. It began with domain name hijacking. In its simplest form, hijacking is the registration of a domain name or names which incorporate the company name or personal name of a famous company or person and then offering to sell or, in fact, selling the domain to the rightful owner. This behavior, known as “cybersquatting,” was effectively outlawed by enactment of the Anticybersquatting Consumer Protection Act of 1999 (ACPA). Read the rest of this entry »

Perfecting a security interest in intellectual property involves determining the appropriate filing venue. In general, Article 9 of the Uniform Commercial Code (“Article 9”) applies to transactions intended to create a security interest.  However, Article 9 can be preempted by certain federal laws authorizing other procedures for recording liens. Read the rest of this entry »

The Trademark Trial and Appeal Board (“TTAB”) of the United States Patent and Trademark Office (“USPTO”) recently adopted a new standard for trademark applications that can have disastrous consequences for trademark owners. To understand the significance of the new standard, one must first understand the nature of trademark rights. Read the rest of this entry »

Everyone recognizes famous trademarks. Who is not aware of Microsoft, Rolex, McDonald’s and Coca Cola? The tremendous value in these marks lies in their universal recognition. Because of the renown of famous trademarks, it is not uncommon for smaller businesses to attempt to capitalize on the goodwill of famous marks by associating their goods or services with another’s famous trademark or brand. Recognizing the extent of this problem, Congress enacted the Trademark Antidilution Act of 1995 (“TAA”) to specifically provide enhanced protection for famous trademarks. However, federal courts have been inconsistent in their application of the TAA. Consequently, in order to bring predictability to the protection of the most famous trademarks, the Trademark Dilution Revision Act of 2006 (“TRDA”) became law on October 6, 2006. Read the rest of this entry »

Trademarks identify to the public the source of particular goods or services. A trademark is any distinct word, phrase, symbol or picture, or combinations thereof, that identifies and sets apart the goods of a specific business or organization. Read the rest of this entry »

With larger numbers of common language trademarks working their way into our daily lives, normal communication would become very difficult if courts gave absolute property rights to trademark owners.  Section 33(b)(4) of the Lanham Act outlines the fair use defense to trademark infringement. Read the rest of this entry »

In the early days of the Internet, enterprising and oftentimes unscrupulous persons would reserve domain names that were the same as or similar to the trade names and trademarks of others and then offer to sell those domains, at high fees, to their “rightful” owners. This practice was known as “cybersquatting.” The Anticybersquatting Consumer Protection Act of 1999 (ACPA) was enacted to combat such activity. Read the rest of this entry »