The biggest developments in trademark law [Legal Monitor Worldwide]
(Legal Monitor Worldwide Via Acquire Media NewsEdge) Some important developments in trademark law have occurred during the past year.
Here are the highlights:
No. 1: Trademark licenses in bankruptcy.
If you receive contractual permission to use someone else's trademark in a business deal (for example, if you purchase a franchise for a business), can you be forced to stop using that trademark if the other party goes bankrupt?
Until now, the conventional wisdom was that bankruptcy could terminate your ability to keep using that trademark.
However, a recent federal appeals court ruling created a split in the courts by holding that you should be able to continue using that trademark.
No. 2: Coming generic top-level domain names.
If the schedule holds, a bunch of new generic top-level domain names (gTLDs in netspeak) should begin launching later this year.
This could provide many alternatives to familiar endings such as .com and .net.
If you own a registered trademark, you should enter it in the "Trademark Clearinghouse" that has been established to help protect trademark rights in the new gTLDs. Get this done by mid-October.
No. 3: No dibs on having a website or Facebook page for local businesses.
Two businesses generally can use the same name to sell the same goods or services if they operate in geographically separate markets.
For example, if one business is in Virginia and the other is in Texas, each firm can use the same name to sell services in its local area.
But can either business claim dibs on advertising on the Internet, such that, if one company puts up a website or Facebook page, the other must refrain from doing so?
A federal court recently held there are no such dibs — each party can have an Internet presence.
Yet, if each party sells goods nationwide online, the early bird might get dibs.
No. 4: Suing many cybersquatters in one suit.
A federal trial court recently permitted a maker of famous luxury goods to sue in one lawsuit hundreds of cybersquatters — people who had registered domain names that deliberately mimicked the trademarks of others.
In this sort of situation, often the domain names are used to run websites selling counterfeit goods.
Usually you have to sue each cybersquatter separately unless you can show a connection between them. Could this be an economical approach to dealing with mass cyberpiracy?
No. 5: Can you stop the use of your trademark by another company when that use is not as a trademark?
If you own a trademark, can you use trademark law to stop someone else from using the words that constitute your trademark (or highly similar words) if the target's usage does not itself serve as a source indicator (which is what a trademark does)?
For example, suppose you own a trademark for a marketing slogan, such as the Wheaties slogan "The Breakfast of Champions."
What if a rival cereal maker states in the body text a print advertisement that its cereal "has been the breakfast of champions for over two decades"?
A federal appellate court recently held that, in theory, trademark law can prohibit such uses of your trademark, but you'll have to show that the target's use is likely to confuse consumers as to whether you and the target are associated.
No. 6: Buying an AdWords trigger term.
A federal appeals court recently held unconditionally that you can purchase your competitor's trademark to be the trigger term for a Google AdWords ad, as long as you don't use your competitor's trademark in the body of your ad.
Try entering a popular product name in Google and you'll probably see examples of AdWords ads at the top and/or right side of the search results.
This case might end the debate about whether this practice is legal.
No. 7: Stopping a counterattack on the validity of your intellectual property.
If you sue someone (or threaten to sue) for infringing on your intellectual property right (such as your trademark, patent or copyright), and if the defendant sues back claiming your intellectual property right should be declared invalid for some reason, can you get out of the suit by giving a written promise that you'll drop the suit and not sue that defendant ever again over the same issue?
In other words, can you end the attack on the validity of your intellectual property with such a promise?
The Supreme Court held that, in theory, you can, but it has to be clear that the target's business plans don't create a foreseeable risk of another infringement lawsuit by you against the target.
John B. Farmer is a lawyer with the Leading-Edge Law Group PLC, which specializes in intellectual property law. He can be reached at www.leadingedgelaw.com.
(c) 2013 Legal Monitor Worldwide. All Rights Reserved. Provided by Syndigate.info an Albawaba.com company
[ Back To Technology News's Homepage ]