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 Intellectual Property
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February
2010 |
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The purpose of this newsletter is to keep in
touch with our friends and colleagues as well as
provide practical information and news relating to
Intellectual Property law.
Please forward this newsletter to anyone who
might be interested. Previous issues of
GRR Intellectual Property News can be found on our
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| GRR Client Wins Trademark Dispute |
|
On February 1, 2010, the U.S.
Trademark Trial and Appeal Board ruled in favor of GRR
client Ruggiero Seafood, Inc. in its dispute against Mr.
Salvatore Ruggiero. In its opinion, the Board ruled that
Salvatore Ruggiero could not register the trademarks
FRANCISCO RUGGIERO or SALVATORE J. RUGGIERO for use in
connection with seafood products. In so doing, the Board
accepted Ruggiero Seafood, Inc.'s argument that although Mr.
Ruggiero was only seeking to register his name and his
father's name, the applied-for trademarks so resembled the
well known RUGGIERO SEAFOOD trademark as to be likely to
cause confusion in the marketplace.
Ruggiero Seafood, Inc. was
represented by GRR attorneys
Richard S. Schurin and
James Reisman. The Board's decision can be found
here. |
| GRR Highly Ranked
Trademark Firm |
|
GRR was named as one of the top
10 law firm "Market Movers" by CSC Corporation Service in
its 2009
Trademark Insider. GRR was also one of the top 100 law
firms in trademark filings for the third quarter of 2009. |
| Shaquille
O'Neal, "Big Daddy" on the Hardcourt and in the Courthouse |
|
Over the years, Shaquille O'Neal
has been known by many names, from Shaq to The Big Daddy to
The Big Banana (yes, The Big Banana!), because he "makes
other teams peel." In today's world, Shaq's many monikers
represent licensing opportunities that Shaq often needs to
protect through litigation. In his latest lawsuit, filed
just last month, Shaq's licensing company, Mine O'Mine, Inc.
("MOM") asserts trademark ownership and infringement of the
trademark SHAQTUS by a company selling goods online under
the name Shaqtus Orange Clothing Company. According to
MOM's Complaint, during his tenure playing for the Phoenix
Suns, the public dubbed Shaquille O'Neal "The Big Cactus"
and "The Big Shaqtus" "in reference to the combination of
O'Neil and the cacti that are prevalent in Phoenix." On
that basis, O'Neal claims trademark rights in the term
SHAQTUS.
The number of potential
trademark claims in "Shaq" or "Shaq-esque" names and logos
seems just as huge as the star's big personality and
stratospherically successful basketball career. A copy of
the Complaint in this case can be found
here.
For more information contact
Richard S.
Schurin. |
|
Who Owns the iPad Trademark? |
|
In dramatic fashion, Apple
introduced the iPad tablet device on January 27, 2010.
Shortly after introducing the product, word began
circulating that Apple might not, in fact, have rights to
the iPad trademark in the United States. According to the
records of the United States Patent and Trademark Office, on
March 7, 2003 Fujitsu Transaction Solutions Inc. filed an
application to register the trademark IPAD for use in
connection with a hand-held computing device for wireless
networking in a retail environment. The application claims
that Fujitsu has been using the mark since at least as early
as January 8, 2002. While the Trademark Office has approved
Fujitsu's application, Apple has requested additional time
to consider whether to oppose the registration of Fujitsu's
mark.
It is possible that Apple will
negotiate an arrangement of some sort with Fujitsu that will
permit Apple to use the iPad name without any objection from
Fujitsu. This is what Apple did in 2007 when it introduced
the iPhone--Cisco Systems, Inc. owned the the U.S. trademark
registration for the trademark iPhone, and Apple negotiated
an agreement under which Cisco consented to Apple's use of
the iPhone mark.
The questions surrounding the
ownership of the iPad name show why it is important to
have experienced trademark counsel conduct a comprehensive
trademark search and, if necessary, an investigation before
adopting a new name for use with your company's products or
services. A search can identify potential risks in the
adoption of the name, before you make an investment in that
name.
For further information, contact
Marc P. Misthal. |
|
Venezuela Cuts Power at Patent
and Trademark Office |
|
On January 27, 2010, the
Venezuelan PTO issued a notice advising that as of that date
(and for the next 150 days, or until June 2010) the working
hours of the PTO will be from 8 a.m. to 1:30 p.m. (Caracas
time) to conserve electricity. Thus, parties with business
before the Venezuelan PTO must bear in mind that deadlines
must be met by 1:30 p.m. (Caracas time) on the deadline
date.
For further information, contact
Diana Muller. |
|
India to Join Madrid Protocol |
|
Steps are underway for India to acceed
to the Madrid Protocol, which will faciliate protection of
Indian trademarks overseas and will permit foreign companies
a cost effective means to extend their trademarks to
India. This increases the number of countries which
are members of the Madrid Protocol to nearly 80. The U.S.
became a member in 2003.
The Madrid Protocol provides an
alternative to national trademark filings. Under the Madrid
Protocol, trademark owners can file an application for
International Registration (IR) via their home
country trademark office and designate member countries in
which they seek protection. An applicant under the Madrid
Protocol must own a trademark application or registration
in their home country for the identical mark with the same
or a wider specification of goods and services. Refusals, if
any, are issued individually by the trademark offices in
each designated country. Changes to the IR, such as
limitations of goods and services, changes of ownership or
cancellations are recorded in one single operation rather
than separately in each jurisdiction. Once registered in a
designated country, the IR has the same effect as a national
application or registration in that country.
An IR is dependent on the fate
of the underlying application or registration for a period
of 5 years from the time the IR issues. If the underlying
registration is cancelled within this five-year period, the IR
will no longer be effective. After the five year period,
the IR becomes independent and remains in force even if the
basic registration or basic application is cancelled,
withdrawn, or otherwise ineffective.
After registration, a
"subsequent designation" allows the owner of an IR to extend
the geographic scope of protection by designating additional
member countries. This provides a convenient and relatively
inexpensive way to extend the territory covered by the
IR. It is especially useful in cases where the applicant
expands its commercial activities to new markets.
For further information, contact
Maria A. Savio. |
| Joseph Abboud
Permitted to use his Name in Certain Circumstances |
|
|
JA Apparel Corp. v. Abboud, 07-cv-07787 (S.D.N.Y. Jan.
12, 2010).
In June 2009, the Second Circuit
Court of Appeals found the contract between Joseph Abboud and JA
Apparel Corp., to whom he had sold certain rights, ambiguous as
to whether the contract conveyed only trademark rights or all
rights to use Mr. Abboud's name (see our
prior report). The Court of Appeals found Mr. Abboud's
proposed use of his name on marketing and promotional materials
for his new "jaz" brand to be a descriptive use and thus
concluded that Mr. Abboud's proposed use would only be
prohibited if the contract had conveyed all rights to his name.
The Court of Appeals sent the case back to the District Court
for a determination of the scope of the rights conveyed by the
contract.
After considering the evidence
presented by the parties (particularly correspondence between
the parties during the negotiation of the contract), the
District Court concluded that the parties did not intend the
contract to preclude Mr. Abboud from using his name in
connection with other commercial ventures.
The District Court then
considered whether Mr. Abboud's proposed use of his name in
advertisements for his "jaz" brand would infringe the trademark
rights that were conveyed to JA Apparel Corp. in the contact.
The District Court examined several proposed advertisements in
detail and concluded that certain uses (such as use of a short
phrase before the name JOSEPH ABBOUD, with the JOSEPH ABBOUD
name appearing in larger than the preceding text) were not "fair
uses" of the JOSEPH ABBOUD name and therefore would infringe the
trademark rights granted to JA Apparel Corp. But other uses
were found to be consistent with Mr. Abboud's right to use his
name in connection with the "jaz" brand. In analyzing the
proposed uses before it, the District Court recognized the
tension between an individual's use of their name as a trademark
and their right to use their name for the purpose of
identification. As a result, the District Court entered an
order requiring Mr. Abboud: 1) not to use his name as a
trademark, service mark, trade name or brand name; 2) not to use
his name in any manner on "jaz" clothes, labels, hang-tags, or
product packaging; 3) not to use his name in promotional and
advertising materials, unless his name is used descriptively, in
the context of a complete sentence or descriptive phrase, and is
no larger or more distinct than the surrounding words in that
sentence or phrase; 4) to prominently display his trademark 'jaz"
(or any other trademark) on any ad containing his personal name
as discussed above; and 5) to, in certain instances, include a
disclaimer of any affiliation with JA Apparel and products sold
under the JOSEPH ABBOUD trademarks.
For more information, contact
Marc P. Misthal. |
|
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Intellectual Property News Editorial Board: Richard S.
Schurin ( rschurin@grr.com), Marc P.
Misthal ( mmisthal@grr.com), and Steven
Stern ( sstern@grr.com) of Gottlieb,
Rackman & Reisman, P.C. Suggestions, questions
and comments should be directed to the Editorial Board by
email or telephone (212) 684-3900. For forty
years, Gottlieb, Rackman & Reisman, P.C. has provided
legal advice and guidance on all aspects of patent, trademark,
copyright, and unfair competition law, tailoring its counsel
to the specific needs of its clients.
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