Archives For trademark infringement

Pinterest Loses Trademark Battle In Court

October 29, 2015 — Leave a comment

A trademark lawsuit beginning in 2013 may finally be at a conclusion, resulting in Pinterest losing some ability to prevent other businesses from using the word “pin” online to save links, images, and other works.

The lessons stemming from this case are helpful to business owners everywhere. Here’s how it went down.

The Parties.

Pintrips operates a website that allows users to save travel items on other websites for later viewing on the Pintrips website. Users do this using a “pin” button that is imbedded on third party websites.

Pinterest, on the other hand, operates the widely popular website allowing users to “pin” creative items into boards on the Pinterest website. Much the same as Pintrips, users do this with a “pin it” button on third party websites.

Pinterest filed suit against Pintrips in 2013.

Pinterest is the owner of multiple Pinterest trademark registrations and at least one Pin trademark registration. As a result, it brought suit against Pintrips in 2013 seeking to prevent Pintrips from using its blue pin button to save travel information on the Pintrips website.

Complicating Pintrips business further, the USPTO denied the company’s trademark application for “pin” pending resolution of the lawsuit.

Pintrips attorneys argued that the words “pin” and “pinning” are simply part of internet terminology. They claimed that saying “pin” was much like saying “trash” in reference to a computer’s trash folder. Further, they argued it would be unreasonable to allow large corporations to “seize control” of commonly used terms that are a part of “everyday culture.”

The court agreed with Pintrips.

In tossing out Pinterest’s lawsuit, the court stated that “no reasonable weighing of the evidence presented at trial could lead to the conclusion that Pintrips used the term pin as a way to identify, distinguish, or indicate the source of its goods or services…. In fact, any attempt to distinguish Pintrips by use of its pin button would be futile, given that the words pin and pinning have been used to describe the same feature by many of the most popular and well-known software and internet products since well before Pintrips’s creation.”

The court also agreed with Pintrips’ argument that “pin” is just part of internet terminology saying that it was similar to early software designers using “real-world metaphors such as folders, files, desktops and bulletin boards to describe new technological functions.”

The lessons for your business.

This case and the loss for Pinterest is a great example you should keep in mind when creating your branding. Rather than trying to use generic terms to describe your features, try to be more original. Use arbitrary terms whenever possible if you really want to ensure you can protect your branding with trademark law. Descriptive terms may be easier to market, but arbitrary terms are easier to protect.

Want to learn more?

You should subscribe to our quarterly newsletter, Mighty Updates, to stay current with trademark news and legal issues.

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Image: Pinterest Logo
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

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The Nine Factors a Court Considers When Deciding “Likelihood of Confusion”

August 18, 2015 — 1 Comment

Trademark infringement occurs when one party uses another party’s trademark in commerce in such a way that consumers are likely to be confused as to the first party’s goods or services. Whether consumers are likely to be confused is a question of fact that must be decided during a trial (or by the parties in settlement negotiations, when possible).

The nine factors below are helpful in making this decision and are used by courts and lawyers in most trademark litigation lawsuits. As a result, they are good factors for you to think about if you find yourself being accused of infringement or if you think someone is infringing on your mark.

1. Strength of the Plaintiff’s Mark

Assuming the plaintiff has a valid trademark, they will look to the strength of the mark to decide how much protection it deserves. As you can learn in this post, arbitrary/fanciful marks receive the most protection, suggestive marks the second most, and descriptive marks the least. (And generic marks never receive protection.)

2. Similarity of the Marks

Courts will look at three items when comparing the two marks. First is sight, do the marks look alike when written next to each other. Second, do the marks sound the same when spoken. And third, do they have the same or similar meanings when looked up in a dictionary. The more similar the marks are from those viewpoints, the more likely trademark infringement is to be found.

3. Similarity of the Goods or Services

Related to the last point, the court will review how similar the goods or services are to one another. If one mark is used to sell enterprise computer software and the other used to sell iPhone games, those might be considered similar enough as to cause confusion. On the other hand, if the other were used to sell grass seed, then they would probably be sufficiently different to avoid a finding of trademark infringement.

4. The Likelihood the Plaintiff will Expand into the Defendant’s Market

For common law trademarks (which only receive protection in their geographical areas and natural zones of expansion) courts will look to whether the plaintiff is likely to enter the defendant’s market. For example, a food truck operator in Miami might be able to prevent a similarly named food truck from operating in Orlando, but probably not in Portland (which is why the Miami operator should get a federal registration – for nationwide rights).

5. Actual Confusion

A court can find trademark infringement even if actual consumer confusion is not present – all that is needed is likely confusion. Of course, if you have evidence of actual confusion such as your customers going to a competitor’s location due to their infringement that goes a long way towards proving an infringement case.

6. Sophistication of Buyers

Courts will also consider how much effort a consumer is likely to put into the purchasing decision. The more effort (such as buying a plane) the less likely they are to be confused because they should learn of the different source during their research. The less likely (such as buying clothes), the more likely they are to be confused as to the source because they likely will not do a ton of research into the source.

7. The Defendant’s Intent

While not a technical requirement, courts often look at this consideration because if bad faith can be shown, it is clear evidence of infringement.

8. Quality of Defendant’s Goods

When determining damages, a court is likely to look to whether the defendant’s goods were shotty. If so, that could harm the goodwill of the plaintiff and entitle the plaintiff to greater damages.

9. Consent Agreements

If the plaintiffs have an agreement under which the defendant was granted permission to use the mark, then that will obviously lessen the likelihood that confusion exists and therefore negate an infringement claim.

Stay Current

We hope our blog is helpful to you in terms of teaching you what you need to know about trademark law. To stay up to date, be sure to connect with us on Twitter & Facebook!

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Image: Thinkstock/adolf34
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

 

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Trademark Roundup: Trademark Basics by Mighty Marks

March 31, 2015 — 1 Comment

We’ve been writing about trademark law for a full year now and we’ve covered a lot. To help you better understand the ins and outs of trademark law we want to roundup some of our most practical posts to help you find the information you need to know about how trademarks impact you and your business.

In this post, we’ll cover trademark basics.

Trademark 101

In our post What Everybody Ought to Know About Trademark Law we covered the three things you need to understand first.

First, the purpose of trademark law is to protect consumers. That is, trademarks serve as source identifiers for goods and services and help consumers find the specific goods or services they are seeking.

Second, that trademark rights stem from use in commerce. Technically, a registration is not even required, but a registration does have a number of significant benefits.

And third, a trademark protects names, slogans, and the like. Copyrights and Patents are different. Copyrights usually protect creative works, while Patents usually protect inventions.

Protecting your mark

In our post 5 Keys to Protect Your Trademark we discussed topics you need to learn to fully understand how you can protect your mark. Specifically: (a) that registration is not required, (b) common law protection only extends to the area in which you are using your mark and to your natural zone of expansion, (c) that rights are limited to the goods and services you sell, (d) that you cannot protect a descriptive mark, and (e) registration is strongly encouraged for maximum protection.

Trademark Applications

Speaking of registrations, we’ve covered a lot about how to obtain a registration.

To begin, we’ve covered Why Your Startup Should Apply for a Federal Trademark, and What To Do First: Company Name or Trademark. The benefits to registration include nationwide notice of your claim and ownership of your mark, and also a stronger ability to force infringers to cease their infringement. In the second post mentioned just above we provided guidance on how to reserve your business name with both your state and the USPTO.

What’s the USPTO? Glad you asked. We wrote all about the United States Patent and Trademark Office in this post: What is the USPTO and How Does it Affect My Business?

Trademark Infringement

And lastly, we’ve covered trademark infringement many times on this blog. The starting point to understanding infringement is this post, Justice Explained: Trademark Infringement & Defenses. In that post, we discussed how infringement is judged based on likelihood of consumer confusion. If consumers are confused, then infringement is likely to have occurred.

As we move into our second year of blogging about trademark law and trademark applications, we hope you continue to find our blog useful for your business.

If you have any topics you’d like covered, feel free to contact us to tell us what you’d like us to talk about!

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*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

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How to Stop Someone From Infringing Your Trademark

September 16, 2014 — Leave a comment

Protecting your trademark is an important matter and, in many cases protecting your trademark is equally or sometimes more important than protecting other business assets. And, if an individual or organization uses a mark in a manner that is likely to cause confusion with your trademark, then trademark infringement may have occurred.

So, what are your options if an individual or organization has illegally used your trademark?

Start with a letter expressing your concern.

For some, the first course of action is to send a cease and desist letter. This is a good tactic, but it immediately sets an aggressive tone from which it may be difficult to recover. If you start with a letter with an agreeable tone (perhaps even suggesting a trademark license), you may avoid a bumpy road ahead. As a genuine mistake may explain the actions of a party committing a trademark infringement, a simple letter may be all that you need.

Next, make a stronger case with a cease and desist letter.

One common remedy for trademark infringement is an injunction. A cease and desist letter notifies the infringer of the infringement, demands that they end their infringement, and threatens legal action to obtain an injunction and damages. This method is usually preferred over filing a lawsuit immediately because you will expend considerable money and other resources fighting a lawsuit. Hopefully this letter can help you avoid such costs and legal fees.

If still no success: file a lawsuit.

If neither of these remedies worked, you can file a lawsuit in a federal court (assuming you have a federal registration). If you are successful, the court is likely to enforce an injunction on the infringer to prevent them from using the trademark. Further, you can pursue the following damages: (1) any profits made from illegally using a trademark; (2) any financial damages you have suffered as a direct result; and (3) legal fees. The court will assess how much these damages are and whether or not you are entitled to them or other damages.

A trademark infringement can affect not only a company’s product, but also its brand. And while you can protect your mark even if it is not federally registered, your odds of success are greater if you have a registration.

Towards that end, you should call Mighty Marks® to protect your trademark. You can call us anytime at 855-MYT-MARKS.

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Image: Thinkstock/adolf34

*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

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Have Your Pi and Trademark it Too

June 10, 2014 — Leave a comment

A Brooklyn artist recently upset geeks and t-shirt merchants with a recently approved federal trademark registration on a 3,000-year-old Greek symbol.

In late 2012 Paul Ingrisano applied for a federal trademark registration for the Pi symbol followed by a period in connection to “athletic apparel, namely shirts, pants, jackets, footwear, hat and caps, [and] athletic uniforms.” After correcting some minor errors with the application he successfully obtained a registration for the mark in early 2014.

Within months of obtaining the registration, Ingrisano began enforcing his newly acquired rights. His first big target was Zazzle.com, a website where users can sell goods like shirts and mugs featuring designs created by the users.

In his cease and desist demand letter Ingrisano’s lawyer makes the case that the sale of apparel on Zazzle.com featuring the Pi symbol is likely to confuse consumers as to the source of the goods being sold (the essential element of proving trademark infringement). The letter then goes on to make multiple demands regarding inventory, evidence of sales, and various accountings.

Zazzle’s initial reaction was to remove all potentially infringing materials for fear it might be indirectly liable as the middleman between the creators of the potentially infringing goods and the end consumers. However after receiving complaints from the creators, a Zazzle representative told cnet.com “After reviewing the takedown request more closely, Zazzle has decided to restore the ‘Pi’ products. Zazzle is a marketplace for a community of artists, and we want to continue to support artists who are creating original artwork.”

Zazzle didn’t elaborate further, but several things in the cease and desist letter seemed a bit off. First, the letter requests Zazzle cease and desist all “copyright infringement” when the matter at hand is a trademark. Remember, copyrights tend to protect creative works while trademarks tend to protect names and slogans.

Second, it is unclear if Ingrisano is seeking to prevent others from using the Pi mark or the Pi mark plus a period. The essential question is whether consumers purchasing goods on Zazzle would be confused as to the source of the goods and believe they were coming from Ingrisano when, in fact, they were not. That raises the question as to the importance of the period in the Pi registration – a question that would likely have to be decided by a jury.

This registration and Ingrisano’s attempt to protect the Pi symbol with a period will undoubtedly raise many eyebrows in the coming months and years and we’ll let you know when new developments arise.

Be sure to follow us on Twitter and like us on Facebook to make sure you don’t miss the updates!

Image Credit: uspto.gov

*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

 

 

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Turn It Up To 11 – A Decades Old Trademark Dispute

May 20, 2014 — Leave a comment

The Misfits (the 1970’s and 80’s heavy metal band) are back in the news; but not for their music.

In an interesting squabble and lawsuit, one former band member is claiming rights to a series of very lucrative licensing deals. Musicians everywhere and businesses of all kinds should pay attention to the lessons coming out of this case!

How We Got Here

Glenn Danzig was a founding member of the band in 1977 but eventually split ways from the group.

In 1994, however, Danzig and the new band leader, Jerry Only, settled their differences in a private agreement. Danzig told the media that he gave up rights to the band’s name and skull logo with respect to performances but that he maintained a one-half ownership interest in the name and logo with respect to merchandise. Only publicly acknowledged this agreement years later.

Danzig’s new lawsuit claims that Only secretly re-registered the band’s marks in 2000 and subsequently obtained very profitable merchandising deals without including Danzig. These deals lead to the current dispute and lawsuit.

The Takeaways

While it will take some time for this case to proceed to either a judicial resolution or a settlement among the parties, mark owners should take note of the issues at hand.

First, if the 1994 agreement is valid and states what the members have publicly stated, then Only might be in a tight spot because his re-registration of the marks would have required him to certify to the USPTO that he (or his band) had the exclusive right to use the marks in commerce. If the prior agreement didn’t grant him such exclusive rights, then Danzig can presumably seek to cancel the validity of the current registrations that excluded him. He can then likely seek his cut from the merchandising deals.

Second, businesses must remember that trademarks are related to specific goods or services. In this case, the trademarks for the performance of music were granted to the band. But the trademarks for selling shirts and hats remained split between the band and Danzig. Thus, a business that performs multiple functions (for instance, a restaurant that also sells shirts) would be well advised to obtain rights for all of their various goods and services.

And remember, when seeking rights, a good attorney can be very helpful. Feel free to contact us anytime with trademark questions.

Image Credit: Thinkstock/r_gianluca

*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

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Justice Explained: Trademark Infringement & Defenses

April 24, 2014 — 4 Comments

Business owners should understand what constitutes trademark infringement before they encounter it, regardless if they are the enforcer or alleged infringer. You should also understand common defenses from both sides as well. In this post we will cover the basic elements of an infringement claim and common defenses that might hold up.

Trademark Infringement – Likelihood of Confusion

The most common infringement claim is likelihood of confusion. An infringer commits trademark infringement if they use another party’s trademark to sell goods or provide a service if their use is likely to cause consumer confusion as to the source of the goods or services.

Let’s revisit Evan’s Coffee House, an example we discussed earlier this week. Assuming Evan holds a federal registration for “Evan’s” in connection to the sale of coffee, he will be able to use that registration to prevent others from opening an “Evan’s Coffee House;” but that’s not all.

Evan can likely prevent someone from using “Evan’s” in connection to an eat-in-bakery if the services provided are similar and he may even be able to prevent someone from selling “Evan’s” coffee grounds in a grocery store. Additionally, Evan can prevent alternate spellings such as Even’s, Evan, Even, Evens, and maybe even Heavens coffee from being used to sell coffee if he can show that consumers are likely to be confused as to the source of the goods.

Notice that actual confusion is not required. All that is required is a likelihood of confusion to prove trademark infringement.

So, what happens when Evan sends a cease and desist letter to Evens Coffee House? Several things can happen, most likely of which is the alleged infringer will claim there is no likelihood of confusion or he might raise some other defense.

Trademark Defenses

Alleged infringers will often raise the issue of confusion and claim there is no confusion or likely confusion. When that happens the parties will usually negotiate their various positions and hopefully avoid litigation. Of course, some alleged infringers have affirmative defenses they can raise, specifically descriptive use and nominative use. When these affirmative defenses exist, an alleged infringer might be allowed to use the mark, even without permission.

Descriptive fair use occurs when the alleged infringer uses a trademark in a way that is solely for descriptive purposes and is unlikely to cause consumer confusion. In the case of Evan’s Coffee Shop, another Evan could open up a coffee shop and include in it’s marketing materials the fact that Even Doe is the owner and manager of the shop, provided the materials don’t create the impression that the new shop is related to Evan’s Coffee Shop.

Nominative fair use occurs when the alleged infringer uses a mark and there is no other way to refer to the good or service. For example, a car repair shop may say they repair BMWs, provided they don’t use the mark in a way to indicate they are an official BMW repair shop. This is because there is no other efficient way to alert consumers that they repair BMWs.

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Image Credit: Thinkstock/Willard

*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

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