HILARY J. SUMNER
Creating Assets from Innovations

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IP In the News

Craigslist Prevented from Trademarking Peace Symbol

Posted on July 29, 2013 at 7:30 AM Comments comments (0)

Craigslist's application to trademark the international peace symbol was recently rejected.  The Trademark Trials and Appeal Board held that the symbol failed to distinguish its products and services, even when given the color purple.  A well known symbol must be clearly identify the source of goods if it is to be registerable. For this reason it often makes more sense to register a unique mark. 

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Use of Keywords Containing 3rd Party Trademarks Does Not Constitute Infringement

Posted on June 26, 2013 at 11:50 AM Comments comments (0)

1-800CONTACTS recently filed a trademark infringement and likelihood of confusion suit against Google.  Ads sponsored by competitors would appear when users performed a Google search on the 1800CONTACTS term.  The US Court of Appeals for the 10th Circuit recently held that use of a 3rd party's registered mark in a keyword search does not inherently constitute trademark infringement nor does it create a likelihood of confusion.

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Pitfalls of Trademark Use in Advertising and Promotion

Posted on April 2, 2013 at 8:10 AM Comments comments (0)

Be cautious when using the trademarks of others... even when you are simply advertising a product or promoting something as mundane as the "Super Bowl" or "March Madness."  Both of the terms used in the aforementioned example are federally trademarked and that trademark should be noted in any advertising or promotional material.

You should never use a trademarked name in an advertisement to describe a general style of item. In a recent case, Tiffany & Co. filed suit against Costco for advertising "Tiffany" engagement rings.  The rings Costco sells are not made by Tiffany;  Costco simply used the term to describe the style of ring and is now being sued for trademark infringement.

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Trademark Clearinghouse Offers Means for Policing Trademark Use in Domain Names

Posted on March 30, 2013 at 9:10 PM Comments comments (0)

At the present time only 22 generic top level domain names (gTLD's) are available for use.  (.com, .org, .net, etc.)  In the coming months, more than a thousand gTLD's will be made available, making the policing of trademark use in domain names a difficult task.

A new Trademark Clearinghouse will be available to monitor unauthorized trademark use in these expanded domain names.  The tool will cost $150 for a one year registration; however it only tracks identical trademark matches. 

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UPDATE: Launch of gTLD's is expected in fall of 2013. Businesses should consider registering with the Trademark Clearinghouse as soon as possible to protect their rights on the internet.

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Publicity Rights Held to Expire 50 years after death

Posted on February 18, 2013 at 10:50 AM Comments comments (0)

General Motors recently ran an ad featuring the head of Albert Einstein placed on a very masculine body with the quote "ideas are sexy too."  The Hebrew University, owner of the rights, filed suit against GM claiming infringement.  The court held that rights of publicity expire fifty years after the individual's death.

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Driver Claims Corporation is Second Passenger in HOV Lane

Posted on February 13, 2013 at 5:00 PM Comments comments (0)

A Californian man driving with a pack of papers in his front seat claimed that a corporation was his second passenger.  It was a creative but unconvincing argument and he was found guilty of violating the vehicle occupancy requirement.

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Theft of Trade Secrets Act Signed into Law

Posted on January 15, 2013 at 2:15 PM Comments comments (0)

 On December 28th, President Obama signed the Theft of Trade Secrets Act into law (18 U.S.C. §§ 1831-39).  This act amends the Economic Espionage Act of 1996 (EEA) and grants federal courts much broader jurisdiction over trade secret misappropriation cases. In the past, state laws governed trade secret protection and federal jusridiction was only granted in cases where the trade secret misappropriation involved a product that the company used or sold in interstate or foreign commerce. Items used internally within a company did not fall within federal jurisdiction.  The current law expands federal jurisdiction, allowing oversight in trade secret cases involving “a product or service used in or intended for use” in commerce.

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Trade Secret Protection

Posted on August 20, 2011 at 5:10 PM Comments comments (0)

Two recent trade secret decisions held that products and processes comprised of a combination of components qualify for trade secret protection even if the individual components are in the public domain.  Trade secret protection may be available if the combination of these elements is not readily known or easily ascertainable.  

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Brewers have Unique Plan to Avoid Litigation

Posted on August 8, 2011 at 12:40 AM Comments comments (0)

Two brewers selling ale under the same name opted to work together rather than litigate.  A  collaboration between the two led to a new ale called "Collaboration Not Litigation."  While a commendable resolution, trademark attorneys caution that this practice essentially sanctions infringement. This would make it more difficult to prevent others from infringing and may affect the future purchase price of either business if offered for sale.

Click here for full article: Bottoms Up, Litigation Down