Seattle Trademark Lawyer

Web site screen shot (www.icmregistry.com) explaining how brand
owners can avoid having their trademarks become a .xxx domain name

Now’s the time to block porn sites from using your trademark in connection with the forthcoming ”.xxx” domain names.

This may not be a big deal to some, but if it is to you, all it takes is a simple filing to ensure that YOURBRAND doesn’t link to adult material via a Web site accessible at www.YOURBRAND.xxx.

My former partners recently wrote about this issue in a client newsletter. It’s a fine starting point for trademark owners to learn about the process.

Trademark owners have until Oct. 28 to act. A link to accredited registries that enable one to opt out of .xxx use is here. 

More info on the process is here.

Folks may remember the false advertising trial we had last year in the Western District (STL posts here and here.)

Or perhaps the jury’s $10 million award, which the Western District reduced to just under $500k. The court also found the case was “exceptional” and awarded attorney’s fees.

At issue was plaintiff National Products, Inc.’s (NPI) claim that competitor Gamber-Johnson LLC made false statements in a promotional video that compared the safety benefits of Gamber’s emergency vehicle laptop mounting system with NPI’s system.

Both parties appealed Judge James Robart’s decision.

On Sept. 7, the Ninth Circuit affirmed. The opinion is short and sweet.

“NPI presented sufficient evidence to support its false advertising claim, including the jury findings of falsity and deliberateness. Therefore, the district court did not err in denying Gamber’s motions for judgment as a matter of law with respect to liability.

“The award of attorneys’ fees was not an abuse of discretion. Under the Lanham Act, the district court may award attorneys’ fees to the prevailing party ‘in exceptional cases.’ A case is ‘exceptional’ when the conduct is ‘willful, deliberate, knowing or malicious.’ Because sufficient evidence supported the jury’s finding of deliberateness, the district court did not abuse its discretion in awarding attorneys’ fees to NPI.

“The district court did not err in exercising its discretion to reduce the jury award of profits because the award was excessive.”

The case cite is National Products Inc. v. Gamber-Johnson LLC, Nos. 10-35826 and 10-36118 (9th Cir. Sept. 7, 2011).

Here’s a frequent question: Can I reserve a trademark?

It’s a good one, because it indicates the questioner knows that in the United States, a party acquires a trademark through use, not registration.

So what if a mark hasn’t been used?

You’re in luck! The Lanham Act allows a party with a bona fide intent to use a trademark in the future essentially to pre-register the mark. That is, the party files an application and pays the Patent and Trademark Office’s $275-per-class fee for an electronic filing. The PTO examines the application to see if it qualifies for registration. If it does, the PTO then publishes the mark for opposition, which enables third parties to object to the mark if they believe they would be injured by the registration. If no one objects, rather than issuing a registration, the PTO issues a “notice of allowance.” At that point, all the filer has to do is file a “statement of use” swearing under oath that he, she, or it has put the mark to actual use in commerce — along with proof of such use (such as a photograph of the good depicting the mark or a Web site screen shot showing how the service is being sold).

The PTO charges another $100 to process the statement of use. A party gets six months to file the statement, but it can be extended by filing for an extension (and paying another $150) every six months for as long as three years. (That means taking the maximum allowable extensions can increase the PTO’s cost for an application by $900 — a decent chunk of change.) A missed filing or the failure to establish use within those three years renders the application abandoned — the mark goes back into the public domain and anyone can adopt it for their good or service. Even a competitor. And as the PTO will tell you about the fees you paid: no refunds and no returns.

The neat thing about the intent-to-use scheme is the filer’s priority date is pegged at the date the application is filed, not the months or even years later after one proves use and obtains the registration.

This also means the PTO’s built-in delay — which usually isn’t onerous, though not terribly welcome — works to the applicant’s advantage. The nine months or more it takes the PTO to issue a notice of allowance is “free” time the applicant can devote to putting the mark to use without having the delay prejudice its rights.

Along the way, an applicant also can convert its application to one based on use by filing an amendment to allege use (and by paying the $100 the PTO requires to do so).

Intent-to-use applications are a creature of federal law. To my knowledge, no state offers an intent-to-use option for state registrations.

Intent-to-use applications are great when needed. But if you can allege use on the front end, you ought to do so.

Ch-ch-ch-ch-Changes
(Turn and face the strain)
Ch-ch-Changes
Don’t want to be a richer man
Ch-ch-ch-ch-Changes
(Turn and face the strain)
Ch-ch-Changes
Just gonna have to be a different man
Time may change me
But I can’t trace time

Ziggy Stardust says it a lot better than I ever could.

After 10+ happy years at the Seattle law firm of Graham & Dunn, I have decided to open my own firm. I figured in this economy, how could I miss?

Same practice: intellectual property law and litigation. New name: Atkins Intellectual Property, PLLC — Atkins IP for short. I think it has a nice ring to it. Don’t you?

Oh yeah, the new firm means new and improved rates. 

Kind of nice being my own boss (even if it meant I had to work on Labor Day).

The Web site is still being developed, but here’s a preview of things to come.

Now open for blogging, and for business. So far, it’s all Hunky Dory.

McDonald’s vs. McFoxy: Seems worth a trip to the Ukraine just to see

This is the white whale for trademark infringement safarists.

Forget McDonald’s and McDowell’s of “Coming to America” fame. (STL post here.) That’s just a movie.

This is real, and I’m tempted to book my next vacation to the Ukraine just to see it for myself: side-by-side McDonald’s and McFoxy hamburger restaurants.

From Anthony Bourdain’s “No Reservations” travel/eating/drinking show on the Travel Chanel, we’re treated to this super-sized helping of trademark infringement. It’s so audacious, you have to respect it.

As Tony puts it: “So powerful is the magnificence, the unassailable excellence of the McFoxy brand, and so antiquated and promising the trademark laws of Ukraine, that not even the dark forces of the evil floppy-clown-shoed one dare challenge this bold, in-your-face expression of the competitive free market spirit.”

I’m loving it!