GRR NEWS

Attorney Presentations & Publications

IP LAW IN PRACTICE

Federal Authorities Active in Weeding out Websites Selling Counterfeits 

Director John Morton of the Immigration and Customs Enforcement Bureau stated: "We want to promote a lawful online environment as much as we can and that means going after a small but significant number of websites engaged in fraud on consumers and that is exactly what this is."

The seizures were a part of a three month program run by federal authorities against counterfeits. As a result, multiple seizure warrants were executed on these web sites in a short time period prior to Cyber Monday. According to federal authorities, the products were made primarily in China, and shipped to consumers from there directly into the United States. Various trademark holders helped federal officials focus on which goods were counterfeit, which resulted in the issuance of the various seizure orders.

The websites are now under seizure by the United States government and visitors to these websites are informed that they have been seized by federal authorities, and are further informed that willful copyright infringement is a federal crime. Federal authorities have also launched a public education campaign to raise public awareness about the consequences of counterfeiting and pirating and are informing the public that these activities are often related to gang related activity and organized crime. In fact, the Commerce Department has estimated that such counterfeit activity costs U.S. industries more than $200 billion dollars annually.                         

Utilizing its expertise in patents, copyrights, trademarks and licensing, GRR has been counseling leading technology companies that are working on cutting edge mobile marketing and apps. Among these businesses is GPShopper, LLC, a creator, developer and provider of mobile applications and mobile solutions for various retailers, product manufacturers, brand owners, financial companies and institutions. These mobile applications and solutions drive business to clients' stores, promote clients' brands and create more awareness among consumers. In 2011, GPShopper won the National Retailer Federation's RACIE Award for Creation, Innovation, and Excellence in Mobile for Express mobile applications and the Direct Marketing Association Innovation Award for the Best Buy Reward Zone application. GRR is an active part of the client's team, advising on IP issues and drafting and negotiating its Consulting/Professional Services Agreements. These agreements are tailored to meet the requirements of the industries involved. A typical Agreement includes provisions accurately describing the services to be rendered; the Milestone Schedule and Deliverables which are set forth in the Statement of Work; a detailed description of the qualifications of the staff assigned to perform the services for the client; and very specific definitions of the IP rights involved.  Properly identifying each party's rights in pre existing and/or new software platforms; data; documentation; manuals; trademarks; service marks; illustrations; artwork; graphics; musical compositions; and innovations such as layouts and wire frames created and customized during the development of the mobile application is essential. Confidentiality provisions are also very important in these transactions.

Developers of mobile applications must be fully aware of their rights in the apps they are creating, including whether they own exclusive rights in the app, are an assignee of the creator or are a non-exclusive licensee of the work. Ownership of the entire work provides more legal benefits than being a licensee.   

It is also important that the programmers, graphic designers or other creative employees working for the developing company understand that they are developing material for the employer based on work for hire agreements and that the company owns what they create. Employment agreements ensuring that the developing company is assigned all rights in the created material are essential.   

GPShopper is advised by Diana Muller, who is assisted by Marc P. Misthal, Maria A. Savio and Ted Weisz. 

For further information contact Diana Muller, who is familiar with the issues facing the developers of mobile apps. 

In February 2000 the Trademark Office issued a trademark registration for CAVERN CLUB to Hard Rock Café International, Inc., covering apparel and restaurant services. Hard Rock Café renewed the registration in 2010. In 2005 Cavern City Tours Ltd. filed a cancellation proceeding in the Trademark Office to cancel Hard Rock Café's registration. Cavern City Tours alleged that either it or its predecessor-in-interest had used the CAVERN CLUB trademark for entertainment services since 1957, and that it had promoted The Cavern Club in the U.S. and sold tickets to The Cavern Club. Ultimately the Trademark Office refused to cancel Hard Rock Café's registration. In doing so, the Trademark Office explained that notwithstanding Hard Rock Café's intimate knowledge of music history, Cavern City failed to prove that Hard Rock Café knew that Cavern City had rights when it filed its application or had intended to deceive the Trademark Office when it filed its application, and therefore had not committed fraud. Cavern City also sought cancellation on the ground that the trademark falsely suggests a connection with Cavern City. The Trademark Office refused to cancel the registration, explaining that Cavern City did not prove that The Cavern Club was associated with Cavern City; evidence in the record established the significance of The Cavern Club to Beatles fans, but, according to the Trademark Office, did not point to any association with Cavern City. The Trademark Office also found that other evidence demonstrated that visitors from the U.S. go to The Cavern Club because of its connection with The Beatles, not because of any association with Cavern City.

Cavern City has already filed a lawsuit in federal district court in Nevada to appeal the Trademark Office's decision. It will be interesting to see if the court finds that Hard Rock Café (which surely knew the significance of The Cavern Club when it adopted the CAVERN CLUB trademark) is improperly associating itself with a club well known to legions of Beatles fans.

For further information contact Marc P. Misthal, who counsels clients on adopting and using trademarks.

IP DEVELOPMENTS

In re Gabriel Miller & Jason Miller, Serial No. 77/855,808 (Nov. 3, 2011).

Gabriel and Jason Miller applied to register ST. JOE'S COFFEE for use in connection with coffee, tea and other beverages. The Examining Attorney in charge of the application refused registration on the ground that the mark was likely to cause confusion with a prior registration for ST. JOE for use in connection with restaurant services and related services. The Millers appealed the refusal and the Trademark Office affirmed the refusal. In doing so, the Trademark Office explained that the marks were similar in that they both contained the term "St. Joe's". The Trademark Office further explained that while there is no rule that food and beverage items are related to restaurant services, the Examining Attorney had shown that some large restaurant franchises prominently offer coffee, and that several third party registrations cover both coffee and restaurant services. As a result, the Trademark Office concluded that there is a close relationship between coffee and restaurant services, and on that basis affirmed the refusal of registration.

The Trademark Office's decision illustrates the necessity of conducting a properly designed search before filing a trademark application, in order to anticipate possible obstacles to the application and to develop strategies to overcome those obstacles.

For further information, contact Marc P. Misthal, who counsels clients in the restaurant business and other businesses on trademark protection.