Seattle Trademark Lawyer

Not to be outdone by the likes of this blog, Bloomberg News today reported that Microsoft has filed three lawsuits against alleged cybersquatters. One of the three is Microsoft Corp. v. Kovyrin (complaint here), which STL reported on yesterday.

Interestingly, the lawsuits are part of a unified effort against cybersquatters involving trademark owners Dell Inc., Time Warner Inc., Wal-Mart Stores Inc., Yahoo! Inc., as well as the International Trademark Association. (INTA press release here).

The Bloomberg story cites Microsoft as saying it has brought 15 similar cases in the past year, enabling it “to take possession of more than 2,000 misused domain names and recover more than $1.17 million in illegal profits.”

On Sept. 10, Microsoft Corp. filed suit in the Western District against Canadian resident Oleksiy Kovyrin, Digi Real Estate Foundation, and John Does, alleging that the defendants are the registrants and users of 70 domain names that infringe Microsoft’s trademarks and violate the Anticybersquatting Consumer Protection Act.

At issue in the case is defendants’ alleged use or intentional misspelling of Microsoft’s MICROSOFT, MSN, WINDOWS, and other registered trademarks in domain names including microsoftaccessdatabase.com, microsoftantivirus.com, microsoft-developer.com, msnaccount.com, msnantispyware.com, msnhotmai.com, msnhotmial.com, msnmessenger.com, msnsearch.com, windoms.com, windowmoviemaker.com, windowsmedaiplayer.com, and windowsserver.com.

Microsoft alleges that “Many of the Infringing Domain Names resolve to websites that are controlled by Defendants…. Many of these websites display advertisements and/or hyperlinks featuring goods or services that are directly competitive with Microsoft products and services.”

Defendants have not yet answered the complaint.

The case cite is Microsoft Corp. v. Kovyrin, No. 07-1398 (W.D. Wash.).

I can’t help but admire the descriptiveness of this blog — Vegas Trademark Attorney. (As a trademark, its almost as protectable as Seattle Trademark Lawyer.) VTA is in its infancy, on its ninth post. But so far, I’m impressed. Publisher Ryan Gile wrote a long post yesterday about Jon Bon Jovi’s dispute over the Mijovi Company’s attempt to register MIJOVI for soft drinks and energy drinks. I particularly like how frequently Mr. Gile links to the PTO’s TARR database (something I’m sure to emulate), as well as his copious case citations. He’s got another good post about Nokia’s Sept. 4 registration of a sound mark for its default ring tone. If the tune is not already emblazoned in your mind, it’s “a sound comprising a C eighth note, E flat eight[h] note, B flat eighth note, G quarter note, C eighth note and C quarter note.” But, it’s probably emblazoned in your mind. This is good stuff. I just hope Mr. Gile doesn’t move to Seattle.

On August 30, the Western District denied in part and granted in part cross-motions for summary judgment brought by plaintiff David Lahoti and defendant Vericheck, Inc., on Mr. Lahoti’s complaint for declaratory relief challenging the National Arbitration Forum’s UDRP order that his domain name be transferred to Vericheck, Inc., and finding that his use does not violate the Anti-Cybersquatting Consumer Protection Act. 

Vericheck provides check verification services, check collection services, and wireless payments. It claims it has used the mark VERICHECK since 1995 and has maintained an Internet presence at www.vericheck.net since 1999. The company also registered vericheck.org, vericheck.cc, vericheck.us, and vericheck.biz. In 2001, Vericheck registered a service mark with the State of Georgia described as “a depiction of a check mark over the word ‘vericheck.’”

Mr. Lahoti is a self-proclaimed “Internet entrepreneur.” He has registered thousands of domain names, based on services he “might offer” based on his “ideas for new ventures.” In 2003, Mr. Lahoti registered vericheck.com, the domain name at issue in this suit. Under his ownership, the sole function of the associated Web site was to redirect Internet users to a different site under the control of Oversee.net, which in turn, provided Internet search services. Vericheck contends that the search results on Oversee.net’s Web site pointed consumers to Vericheck’s competitors. Vericheck claimed that Mr. Lahoti expressed a willingness to sell the domain name to Vericheck in 2005 for $48,000 and in 2006 for $100,000.

Since there was no dispute that vericheck.com and the VERICHECK mark are identical or confusingly similar, Judge James Robart focused on the elements of distinctiveness and bad faith. The court found that “given that the question of distinctiveness is ordinarily for the trier-of-fact, and because the court concludes that a reasonable jury could find the mark suggestive,” both parties’ cross-motions on this element should be denied.

As to the issue of bad faith, the court found: “Mr. Lahoti’s conduct satisfies nearly all of the … factors supporting a determination of bad faith. Mr. Lahoti admits that he never used the Domain Name as a trademark. The Domain Name neither contains a variation of Mr. Lahoti’s legal name, nor any other name commonly used to identify him. Mr. Lahoti has never used the Domain Name in connection with the bona fide offering of goods or services, nor does he use the website for a non-commerical or ‘fair use’ purpose. Further, Vericheck provides evidence that, when active, Mr. Lahoti’s website directed consumers to another site that, in turn, provided search results listing some of Vericheck’s competitors. Mr. Lahoti does not dispute this fact. Moreover, Mr. Lahoti has registered thousands of internet domain names, some of which are identical to, or confusingly similar to, the distinctive marks of others. Perhaps most significant, Mr. Lahoti’s representative offered to sell vericheck.com on more than one occasion.”

For these reasons, the court concluded that “Mr. Lahoti acted in a bad faith attempt to profit, and that no reasonable jury could conclude otherwise.” Accordingly, the court found no triable issue existed on this element.

The court also denied both parties’ cross-motions as to trademark infringement, finding that Vericheck had not provided a sufficient basis for the court to say as a matter of law that likelihood of confusion exists.

Trial is scheduled for October 9.

The case cite is Lahoti v. Vericheck, Inc., 2007 WL 2570247, No. 06-1132 (W.D. Wash.).

It’s amazing how often people confuse trademarks with copyrights and patents. Not an intellectual property lawyer? Not a lawyer at all? No matter. Here’s your cheat sheet:

Trademarks. The federal trademark statute, the Lanham Act, defines a trademark as “any word, name, symbol, or device, or any combination thereof [used or intended to be used] to identify and distinguish [a producer’s] goods … from those manufactured or sold by others and to indicate the source of the goods….” 15 U.S.C. § 1127. In other words, it’s a source identifier. It’s the means that tells a person the cola he’s drinking comes from the Coca-Cola Company. That way, if he likes what he’s drinking, he’ll know where to go back for more. The owner of a trademark is protected against infringement, which occurs most often when a later-adopted trademark is confusingly similar with an earlier-adopted trademark. In the United States, trademark rights spring automatically by using the mark in connection with a good or service. Registration is not required, though doing so provides the user additional benefits. A trademark lasts forever, as long as it is in use.

Copyrights. A copyright is the bundle of rights an author gets when she creates an original work that is “fixed in any tangible medium of expression” that can be “perceived, reproduced, or otherwise communicated.” 17 U.S.C. § 102(a). Such works include literary works, sound recordings, and computer programs, among others. When an author creates an original work, such as a Web page, copyright law gives the author the exclusive right “to reproduce the copyrighted work in copies…”; “to prepare derivative works based on the copyrighted work”; “to display the copyrighted work publicly”; and to authorize others to do those things. Other rights exist for other kinds of works, such as the exclusive right to perform an original piece of music. These rights exist the moment the work is created. Like trademarks, registration is not required, but registering a work gives the author important benefits. New copyrights generally last 70 years after the author’s death. 17 U.S.C. § 302(a). After that, the work becomes part of the public domain and copying is allowed.

Patents. Finally, a patent grants the inventor of a novel, non-obvious, and useful invention the right “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States.” 35 U.S.C. § 154(a)(1). There are three types of patents: utility patents (for new useful processes), design patents (for new ornamental designs for an article of manufacture), and plant patents (for new varieties of plants). A new patent owner generally can enjoy monopoly rights for 20 years from the date the patent application was filed, after which time the invention becomes part of the public domain and can be used by anyone. This is intended to encourage innovation by giving the patent owner the temporary ability to cash-in on its exclusive rights in exchange for disclosing the invention and eventually allowing others to use it for free. Registration is required; an inventor gets no rights until they are conferred by the federal government.