Seattle Trademark Lawyer

It may not happen soon, but if and when it does, this article from the ABA IP law section’s Landslide magazine will help you get up to speed on ICANN’s process for releasing new generic top-level domain names.

Why aren’t brand owners excited about this potential development?

As authors Anthony J. Biller and Jennifer Bisk put it:

“Owners of famous marks and large, brand portfolios are understandably and particularly unenthusiastic about expanding the TLD landscape. They view the past as prologue. Intellectual property rights (‘IPR’) management on the Internet has not been easy, and in some respects is becoming increasingly problematic. Cybersquating, typosquatting, worldwide distribution of pirated goods, peer-to-peer file sharing of protected content, unreliable WHOIS information, and proxy registrations have caused continual problems for businesses. Many of these corporations built their businesses and brand portfolios before the commercial exploitation of the Internet and see that medium as much of a hassle as a marketing and distribution asset. Cybersquatting may cost brand owners $1 billion worldwide each year from diverted Internet traffic, loss of goodwill, defensive domain registrations, and enforcement expenses.”

This Central District of California case of Monex Deposit Co. v. Gilliam efficiently dispatched a creative but unpersuasive defense to cybersquatting: “You don’t have any trademark rights to enforce against me, since someone else owns the federal registration to that mark. They’re the exclusive, nationwide user of the mark — not you.”

The court’s analysis:

“Jason Gilliam’s second argument is that Monex cannot possibly own the mark ‘Monex’ because other companies have registered trademarks of the word ‘Monex.’ However, a mark can have more than one owner and the Lanham Act permits concurrent registrations of the same mark, provided there is not likely to be confusion, mistake, or deception. Jason Gilliam implicitly acknowledges this fact by pointing out the various other companies in other industries that use the word ‘Monex’ as a mark. Jason Gilliam has presented no evidence that another entity has the right to use the ‘Monex’ mark to designate services related to trading in precious metals or lending funds for the purchase of precious metals. Additionally, Monex has submitted a declaration indicating that no other entity is using the ‘Monex’ mark to designate those types of services.”

This led the court to deny Mr. Gilliam’s motion for summary judgment.

The case cite is Monex Deposit Co. v. Gilliam, __ F.Supp.2d __, 2009 WL 4456564, No. 09-287 (C.D. Calif. Dec. 3, 2009).

In 2007, the Western District of Washington found that counterclaim plaintiff Vericheck, Inc., had proven its cybersquatting case against counterclaim defendant David Lahoti. (STL post on the summary judgment order here; post on the bench trial decision here.)

Mr. Lahoti appealed. On Nov. 16, the Ninth Circuit vacated and remanded the district court’s finding that counterclaim plaintiff’s VERICHECK mark is distinctive. The Ninth Circuit separately affirmed the district court’s finding that counterclaim defendant had registered vericheck.com in bad faith.

On the distinctiveness issue, the court found:

“The district court erred to the extent it required that the Disputed Mark describe all of Vericheck’s services to qualify as ‘descriptive.’ The district court reasoned that the Disputed Mark does not ‘immediately call to mind the broad array of electronic transaction processing services that Vericheck provides.’ However, a mark does not have to meet this requirement to be found descriptive. The inquiry is ‘whether, when the mark is seen on the goods or services, it immediately conveys information about their nature.’

“The district court further erred when it reasoned that the Disputed Mark could have described services that are unrelated to those offered by Vericheck, such as baggage checking and pre-employment background verification. The mark must be evaluated as if it were ‘seen on the goods or services,’ which means the mark must be examined in the industry context rather than in the abstract.

“The district court also misapplied the law by asserting that ‘Lahoti improperly breaks down the mark into two component parts, ‘veri’ and ‘check,’ in order to argue that consumers will immediately presume that Vericheck provides ‘check verification’ services.’ Rather, courts may analyze all components of the mark in determining whether those parts, taken together, merely describe the goods or services offered.

In analyzing the compound ‘VeriCheck’ mark, the district court may therefore have broken the mark into ‘veri-’ and ‘check,’ to ‘separately view the component parts as a preliminary step on the way to an ultimate determination of probable customer reaction to the composite as a whole.’ Even though the district court ultimately analyzed the Disputed Mark’s component parts individually, we cannot be sure that the district court, having earlier misstated the law, properly accounted for those individual components.

“We conclude that the district court’s decision that the ‘VeriCheck’ mark was a distinctive, legally protectable mark under the ACPA and federal trademark law was based in part on reasoning contrary to federal trademark law and based in part on reasoning that could support the district court’s conclusion. Accordingly, because the district court did not rely exclusively on the proper legal standard, we vacate the judgment to the extent it determined the Disputed Mark was distinctive. We remand to permit the district court to determine whether the Mark is distinctive or descriptive taking into account the principles that we have outlined here.”

The case cite is Lahoti v. Vericheck, __ F.3d. __, 2009 WL 3807105, No. 08-35001 (9th Cir. Nov. 16, 2009).

Last week a reader asked if the U.S. Olympic Committee has filed the same number of trademark lawsuits in recent years that it has filed in the past. Interesting question. The federal courts’ PACER database only goes back to 1988 (as best I can tell). During that period, the USOC has filed 39 lawsuits. Its busiest year was 2002 (Winter Games in Salt Lake City) with seven suits, followed by five in 2000 (Summer Games in Sydney), and four in 1994 (Winter Games in Lillehammer). Here’s the breakdown:

1988 - 1          1989 - 0          1990 - 2          1991 - 0          1992 - 0

1993 - 0          1994 - 4          1995 - 3          1996 - 3          1997 - 0

1998 - 0          1999 - 1          2000 - 5          2001 - 3          2002 - 7

2003 - 2          2004 - 1          2005 - 1          2006 - 0          2007 - 3

2008 - 0          2009 - 3  

So, there hasn’t been a big spike in USOC trademark lawsuits in the last few years.

On another Olympic note, the USOC is the defendant in a suit filed last year in the Northern District of Illinois, Frayne v. USOC, No. 08-5290. In it, Stephen Frayne, Jr., owner of www.Chicago2016.com, seeks a declaratory judgment that registration of his domain name does not violate the Lanham Act or the Ted Stevens Act. His Web site states: “This is NOT the official Chicago 2016 Olympic Bid Committee site” and instead is a forum for “analysis by professional economists on the topic of hosting the Olympics.” The USOC, for its part, has asserted counterclaims for trademark infringement, cybersqutting, and violation of the Ted Stevens Act. (The USOC’s Chicago bid Web site is www.Chicago2016.org.) The USOC has moved for summary judgment, which is pending before the court.

On Sept. 4, plaintiff India-based travel service provider MakeMyTrip (India) Pvt. Ltd. brought suit in the Western District against India industrial conglomerate Tata Sons Ltd. seeking a determination that its registration of oktatabyebye.com does not violate the Anticybersquatting Consumer Protection Act. The complaint asks the court to set aside the World Intellectual Property Organization’s arbitration panel decision finding the registration violated the Uniform Domain Name Dispute Resolution Policy and ordering that the domain name be transferred to Tata Sons.

MakeMyTrip brought suit in Western District because its registrar, defendant eNom, Inc., is located in Bellevue. On Sept. 11, however, MakeMyTrip voluntarily dismissed its claim against eNom. 

MakeMyTrip asserts it has legitimate rights in its domain name because the phrase, “Ok, tata, bye bye,” is an informal way in India to say goodbye. It alleges it did not register the domain name in bad faith for the same reason and that the domain name is not confusingly similar to Tata Sons’ TATA trademark.

Tata Sons convinced WIPO’s one-member panel that the the opposite is true. It has not yet answered MakeMyTrip’s complaint.

The case cite is MakeMyTrip (India) Pvt. Ltd. v. Tata Sons Ltd., No. 09-1261 (W.D. Wash.).