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Trademark News
Trademark Dilution Revision
Act of 2005 passes the House and Moves on to the Senate
Recently, the U.S.
House of Representatives unanimously passed the Trademark
Dilution Revision Act of 2005. Given that there is no
obvious opposition to the bill, it is expected to pass and
bring with it a number of substantive changes to federal
dilution laws.
First, the Act will
reverse the U.S. Supreme Court’s holding in Moseley v.
Secret Catalogue Inc. that dilution requires a showing
of actual harm; rather, the owner of a famous mark would
need to show that a junior user’s mark is “likely to cause
dilution ....regardless of the presence or absence of actual
or likely confusion, of competition, or actual economic
injury.” The Act also proposes a new standard to
determine when a mark may be deemed famous by providing that
“a mark is famous if it is widely recognized by the general
consuming public of the United States as a designation of
source of the goods or services of the mark’s owner.”
The Act provides other factors a court may consider in
looking at the famousness issue.
The proposed Dilution
Act would also provide a cause of action for “dilution by
tarnishment” and provide guidelines on the “dilution by
blurring” tort.
Although the new Act
is favorable to trademark owners, it is careful to exempt
those engaging in nominative fair use of others’ trademarks
from liability.
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Domain Name News
The Ninth
Circuit (California) recently ruled that the owner of a
non-commercial criticism website could maintain its
ownership of the domain name despite its links to commercial
competitors.
Michael Kremer, an
unsatisfied former patient of the Bosley Medical Institute,
registered the domain names BosleyMedical.com and
BosleyMedicalViolations.com and then contacted Bosley
Medical, threatening to post negative letters and articles
about Bosley on the websites. He later began using
BosleyMedical.com as a website containing criticism about
Bosley Medical. Although the site itself did not have any
commercial purpose, it contained links to Bosley’s
commercial competitors. Bosley Medical owns a U.S.
trademark registration for BOSLEY MEDICAL.
The Ninth Circuit
nevertheless upheld a WIPO panel’s finding that Kremer’s use
of the domain name containing Bosley’s trademarks was
non-commercial in nature and therefore not unlawful. In
doing so, the Ninth Circuit refused to follow the Fourth
Circuit’s holding in the Peta.org case, (People for Ethical Treatment of Animals
v. Doughney) in
which it held that, since the peta.org web site contained
links to commercial operations, its host was liable under
the U.S. Trademark Act.
The Ninth Circuit
found that discovery on whether Kremer had a bad faith
intent to profit was incomplete and that the lower court had
erred in granting him summary judgment on the cybersquatting
claim. Therefore, whether Kremer is liable under the
Anti-Cybersquatting Consumer Protection Act is still an open
issue.
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On the International
Front
French Courts
continue to Favor Trademark Owners in Keying Cases against
Google
This past Spring, Google has had bad luck before French
courts.
In Louis Vuitton
Malletier SA v. Google, Inc., Louis Vuitton (Vuitton), a
famous luxury goods company, sued Google for trademark
infringement because Google had sold LOUIS VUITTON, LV, and
VUITTON as keywords to third parties. When Google users
search using Vuitton’s trademarks, the advertisements of
these third parties appear as sponsored links. Vuitton
argued that this misled consumers into believing that the
advertisements triggered by those keywords were somehow
affiliated with its company.
The Paris Court of
First Instance agreed with Vuitton, finding that Google’s
exploitation of Vuitton’s trademarks infringed Vuitton’s
rights. The court ordered Google to pay Vuitton 200,000
Euros for trademark infringement, misleading advertising,
and unfair competition.
In a second case, the
Court of Appeal of Versailles held that Google’s request for
a warranty from its customers that the keywords chosen would
not infringe the rights of third parties was not sufficient
to evade liability, and that Google was itself infringing
trademark rights by allowing competitors to link their
advertisements to others’ trademarks.
Thus far, Google has
had better luck in the U.S. As reported in our last IP
Bulletin, the U.S. District Court in the Eastern District of
Virginia recently granted Google a partial victory in a
keying case brought by GEICO, the Government Employees
Insurance Company. In response to a motion for a judgment on
partial findings – and in contrast to the French courts’
decisions – the District Court found that Google’s sale of
GEICO’s trademarks as keywords was not trademark
infringement.
Examiner at U.K. Trademark Registry refuses to
register JESUS as an international mark
The Trademark Registry
in the U.K. recently refused to register JESUS under the
Madrid Protocol for protection in the U.K. The Registry
found that the mark was contrary to public policy and
principles of morality. Registration was refused despite the
fact that JESUS has been accepted as a trademark in other
countries of the European Union.
The Mark (3) Found Capable of Functioning as a
Trademark under the European System
Recently, the Board of
Appeal for the Office for Harmonization in the Internal
Market (OHIM) found that the mark (3) could function as a
trademark for communication services in international class
38.
While the mark was
initially refused by the OHIM examiner on the basis that it
lacked distinctiveness, the Board found that since the
number “3” is enclosed in brackets, it is not likely to be
viewed as an ordinal and could therefore function as a
trademark. The Board was further persuaded by the argument
that allowing (3) to serve as a trademark would not restrict
using numbers in brackets to indicate the position of an
item in a list, since such use would clearly not be
trademark use and therefore not trademark infringement. |
