California Trademark Attorney® Blog

January 2012 Archives

Trademark Infringement Lawsuit in Europe Will Offer Google Adword Protection

January 24, 2012,

google.jpgCalifornia - A trademark infringement lawsuit recently tried in Europe is set to give trademarked companies more protection against competitors bidding on their names on Google AdWords.

The lawsuit was filed in UK courts by Interflora, an online flower delivery service, and alleges that rival floral business Marks & Spencer infringed on its trademark by sponsoring Google AdWords with the Interflora name. Its argument of trademark infringement was supported when Interflora was able to prove that Marks & Spencer was bidding on its name and gaining an unfair advantage as a result.

The most notorious example in recent history of firms seeking a competitive advantage at the expense of a rival was when Lowcostholidays ran advertising on Thomas Cook's name as the travel giant's financial trouble became public knowledge. Lowcostholidays is accused of using the controversial search phrase 'been Thomas Crooked?' in its search engine advertising in order to bid against adwords 'Thomas Cook' and 'Thomas Cook Holidays.'

By request, search engines send companies a Third Party Authorization Form to prevent competitors from bidding on their names. However Google is said to not widely support this service. As for the Interflora issue, the case concerned "double-identity" which was use by Marks & Spencer of an identical sign (Interflora) in relation to identical services, namely flower-delivery services. In its judgment on the case, the Court of Justice of the European Union has clarified the circumstances in which a sponsored link advertiser will be liable for trademark infringement when they use a keyword that has been registered as a trademark by a third party. In the U.S. Google has generally allowed parties to bid on a trademarked word, however, the resulting ad cannot use the trademark of another company in the actual text.

The Court reiterated the need for balance between the protection offered to registered trademarks and fair competition in the sector for the goods and services for which the trademarks are registered.

Electronic Arts Cites First Amendment Protection for Video Games in Trademark Infringement Dispute

January 16, 2012,

game-controller.jpgCalifornia - Electronic Arts, Inc., a leading American developer, marketer, publisher, and distributor of video games, is asking a federal judge to grant that it has a First Amendment right to depict real-life military helicopters in video games without the authorization of the aircraft's manufacturer. The plea stems from a trademark infringement dispute that erupted between Electronic Arts and Textron, the parent company of Bell Helicopter, after talks over use of the trademark broke down.

The lawsuit, filed Friday by the video game company in Northern California federal court, was a pre-emptive legal action against Textron. The complaint states that on December 21, attorneys for Textron demanded that Electronic Arts immediately stop its depiction of three Bell Helicopter craft in its 'Battlefield 3' video game.

Statements from the Electronic Arts lawsuit said, "The parties have been unable to resolve their dispute. Electronic Arts therefore has a reasonable and strong apprehension that it will soon face a trademark and/or trade dress action from Textron.

In its preemptive complaint, Electronic Arts maintains that its depiction of the three aircraft "are protected by the First Amendment and the doctrine of nominative fair use." The lawsuit also states that packaging for the Battlefield 3 video game features a disclaimer stating that the appearance of real-world weapons and vehicles does not represent any official endorsement by the manufacturer (Textron). The complaint also states that the Bell-manufactured aircraft are not highlighted or featured exclusively over any other vehicles or aircraft within the video game.

"The Bell-manufactured helicopters depicted in Battlefield 3 are just a few of countless creative visual, audio, plot and programming elements that make up Electronic Arts' impressive work, a first-person military combat simulation," says the lawsuit.

The preemptive action might seem unusual had it not been for June's landmark Supreme Court ruling that gives video games the same free speech protections as other expressive works like music, movies, and books. A preemptive lawsuit, also known as a declaratory relief action, occurs when a party initiates a lawsuit because it fears being sued. The purpose of this legal action is to decide rights so that a party can operate its business with certainty with regard to possible legal issues.

After the June Supreme Court ruling, Electronic Arts was victorious in a similar trademark dispute involving the unlicensed use of likenesses when a federal judge ruled that the video gamer's identifiable depiction of a real college quarterback, without his permission, was within its First Amendment rights to free expression.

WIPO Upholds GotMilkAds.com Domain Name Over California Milk Processor's Complaint

January 9, 2012,

domain-name-http- www.jpgCalifornia - An Administrative Panel (the "Panel") for the World Intellectual Property Organization ("WIPO") ruled that the California Milk Processor Board's ("Milk Board") domain name "www.gotmilk.com" was not infringed by the domain name "www.gotmilkads.com"owned by Ryan Leonard. The Milk Board implemented the famous "Got Milk?" phrase in the 1990s as an advertising campaign to get consumers to drink more milk. The widely successful campaign has now become a cultural tagline with as many as 1500 advertisement-related items for sale on Ebay. The derived domain name "www.gotmilk.com" receives over 1.8 million hits a year. Leonard registered the "www.gotmilkads.com" in 2009 but the website remained a parked website that only provided pay-per-click ads to third party websites unrelated to milk. Leonard made an offer to sell the website to the Milk Board for $10,000 but the two sides were unable to come to an agreement.

To cancel or transfer a domain name, the Uniform Domain Name Dispute Policy ("UDRP") requires a complainant to prove all three elements: the domain name registered is identical or confusingly similar to a trademark of the complainant's; the respondent has no rights or legitimate interests in the domain name; and the domain name has been registered in bad faith.

The Panel ruled that Leonard's domain name was confusingly similar to the Milk Board's domain name because Leonard's domain nameincorporated the "Got Milk" trademark in its entirely in his domain name. The Panel found that the use of "ads" as an addition or descriptive word in the domain name did not diminish this effect. The common test for "confusingly similar" compares the appearance, sound, meaning, and overall appearance between the trademark and the disputed domain name.

The Panel also ruled that Leonard had no rights or legitimate interests in his domain name. Leonard submitted a sworn statement that his intention was to use the website to sell "Got Milk?" advertisements. However, the Panel was unpersuaded because of Leonard's "passive holding" of the website for more than two years. Because the Panel found that Leonard's domain name was confusingly similar to the Milk Board's, they ruled that Leonard had more of a duty to establish a right or legitimate interest in "www.gotmilkads.com" rather than allow the website to remain unused for more than two years.

However, the Panel did rule that Leonard did not register his domain name in bad faith to exploit or profit from the Milk Board's trademark rights. The Panel found that Leonard was not a professional domain squatter and the use of his website was plausible since several advertisements of the "Got Milk?" tagline are sold and re-sold on online auction sites such as Ebay. The Panel concluded from previous cases that a finding of bad faith based on a passive holding of a website depends on the particular facts of a specific case. The Panel was unpersuaded that neither the pay-per-click revenue from Leonard's website nor his offer to sell his website to the Milk Board amounted to a bad faith attempt to exploit or profit money from the Milk Board's trademark.

RIM Seeks Dismissal Of Trademark Lawsuit For "BBM" Acronym

January 5, 2012,

cell-phone2.jpgCalifornia - Research in Motion, LTD ("RIM"), the Canadian telecommunications giant who produces the BlackBerry smartphone, filed a motion for dismissal of a trademark lawsuit against the company related to its use of the acronym "BBM." The suit filed earlier this month by BBM Canada, a Toronto-based radio and broadcasting company, alleges that the "BBM" name used by RIM causes confusion with its clients and employees.

BBM Canada was founded in 1944 and changed its name to BBM in the 1960s before settling on BBM Canada in the early 1990s. BBM Canada provides data and audience measurement analysis for radio and television broadcasting across Canada. BBM Canada currently employs 650 people with $50 million in annual financial revenue as opposed to RIM who employs 17,000 people and had $5 billion in revenue last quarter. BBM Canada's Chief Executive Officer, Jim Macleod, argues that small size of his company should not be a factor, "I'm sure to a really big company this looks like relatively small numbers, but to us it's a big deal."

Another issue is the global reach of Blackberry Messenger that has defined the acronym "BBM" in Canada and abroad. RIM boasts 50 million users worldwide of their BlackBerry smartphones and messenger service. MacLeod understands his company's limitations, "We have to be practical, they operate worldwide, we don't. But we're not prepared to just walk from our name." MacLeod argues that within Canada, he is often mistaken for a RIM executive and BBM Canada call operators receive up to 250,000 calls a year from Canadians who similarly mistake BBM Canada for RIM.

In a statement by RIM, they contend that they should be allowed to use the "BBM" acronym because "the two companies [RIM and BBM Canada] are in different industries and have never been competitors in any area." RIM also argues that under Canadian trademark law, two trademarks are eligible to co-exist if the services do not overlap. It's one of debate how separate and divergent the industries are for RIM and BBM Canada.

The Canadian Intellectual Property Office (CIPO) also weighed on this suit by filing a letter to the court stating the "BBM" trademark does not appear to be registrable after it denied RIM's trademark application for "BBM" in 2009. RIM maintains that its trademark application is still pending and that any "inference by BBM Canada that CIPO has refused RIM's BBM trademark application is quite frankly very misleading." McLeod disagrees with RIM's assessment of its trademark application with CIPO arguing that while RIM filed an extension of its trademark application in 2009, they have not pursued the matter any further.