NY Esq. ™
I simply chip away at everything I don’t need and eventually the angel emerges.

Willful trademark infringement occurs when a user of a mark knows or should have known that the mark was already being used by another.

Recent court decisions have noted that a user can be found liable for willful infringement  if they failed to conduct a reasonable search of existing similar trademarks.

Further, there is a rebuttable presumption of willful infringement when the mark in question is federally registered.

It is never too late to be what you might have been.
George Eliot

The ® Symbol

The most obvious advantage of trademark registration begins with the right to use the ® symbol when the mark is used for the goods and services listed in the registration. This not only gives your products or services more marketing cachet and credibility, it puts competitors on notice that you are serious about protecting your intellectual property rights.

Notice and Priority

Federal trademark registration grants nationwide notice of your ownership of the mark at the time of registration. This discourages others from using confusingly similar marks because the mark can be found in a trademark availability search. This often prevents a party from claiming a subsequent adoption of a similar mark was made in good faith and the registration of confusingly similar marks. The United States Patent and Trademark Office has a duty to cite prior registrations against applications for confusingly similar marks and to refuse registration of these marks. In essence, the government is helping you prevent trademark infringement at no additional cost.

The USPTO will treat a mark as if used nationwide as of the application date. Without federal registration, or nationwide priority, a trademark owner can be the first to use a mark in one area of the country, but a junior user is free to use the original owner’s mark in a different geographic part of the country. This will lead to the likely confusion between the two marks at some point in the future.

Proof and Incontestability

Registration of a mark also establishes a legal presumption of your ownership of the mark and your exclusive right to use the trademark nationwide on or in connection with the goods and/or services listed in the registration. This means you do not need to prove that the mark is valid in court. If you cannot prove your ownership and exclusive right to the court, your case may be dismissed at the outset. Further, it can be costly to prove that you are the true owner, that there has been continuous use of the mark, and that the mark is valid.

After five years of continuous use from the date of federal registration, a trademark may be declared incontestable. An incontestable mark is immune from challenge, except if it has become the generic term for the goods, abandoned for non-use, or if the registration was acquired under fraudulent conditions. In order to achieve incontestability, a Declaration of Incontestability must be filed.

Federal Claims and Recovery

Trademark registration grants the owner the right to bring a claim in federal court.

In some cases, registration permits the owner to obtain treble damages (triple the amount of actual damages) plus attorney fees, providing for a significant monetary recovery. However, these types of maximum damages are rare and require a showing of willful trademark infringement. Moreover, a federally registered trademark creates the rebuttable presumption of willful infringement if a similar mark is used by another.

In the event of counterfeiting, the owner of the mark may be entitled to certain statutory damages, which provides relief from having to show actual damages in order to receive a monetary award.

Foreign Registration and U.S. Customs

U.S trademark registration can be used as a basis to obtain registration in foreign countries.

Moreover, a registered trademark can be recorded with U.S. Customs to block the importation of counterfeits.

Opportunity is missed by most people because it is dressed in overalls and looks like work.
Thomas Edison

In determining whether there is trademark infringement, a court will look for a “likelihood of confusion” caused by the two marks in question. Although trademark law varies in the United States, depending on which state the action is brought, the courts balance several common factors for a trademark infringement suit.

The courts will generally weigh more heavily on these factors when making a trademark infringement determination:

Comparison of the Marks
This factor is generally considered the most important in trademark infringement cases. In comparing the marks at issue, a court considers appearance such as common letters, pronunciation, meaning, and commercial impression.

Strength of the Mark
The strength of a trademark is based on whether the mark is suggestive, fanciful, or arbitrary.

A mark that is suggestive of the goods or services is considered the weakest form of marks (i.e. a computer retailer named “Computer Store”). On the other hand, an arbitrary mark is considered as a strong mark because the name has no relation to the underlying goods or services (i.e. BlackBerry). In the middle lie fanciful marks, which are comprised of made up words (i.e. Google).

Comparison of the Goods or Services
This factor looks to whether the goods or services sold under the respective marks are closely related.

Channels of Trade, Purchaser and Pricing
Under this factor, a court will analyze how the mark appears with the goods and the target consumer. A consumer who takes time in making an expensive purchase is less likely to be confused by similar marks. However, a consumer purchasing an inexpensive item is more susceptible to confusion.

Actual Confusion
A court will also look to see if there has been actual confusion, such as customers calling the wrong business or returning products to the wrong company.

The determination of trademark infringement is not limited to these factors and there is no formula to determine infringement. It is subjective and in the eyes of the court.

Humility is not thinking less of yourself, but thinking of yourself less.
C.S. Lewis

As expected a summary judgment has been issued by the judge in the Oriol v. H&M matter. However, Judge Real has dismissed Oriol’s suit against H&M, concluding that the Plaintiff did not demonstrate any substantially similar (or protectable) elements between the “LA Fingers” photograph shot by Oriol and the shirt in question sold at H&M retail stores.

The judge noted that the graininess of the photograph opposed to the shirt were different, as well as other elements in the two works such as the background, camera angle and lighting. 

An appeal by Oriol’s team is expected.

In the related matter of Oriol v. Brandy Melville, a judge entered a default judgment against the Defendant last month for failure to defend the action.

This is an interesting outcome given that there appears to be a heavy influence from smaller artists and designs with products sold in larger retail stores. The attorneys for Oriol stated that “The fight will go on against those clothing manufacturers that continue to misappropriate protected artistic expression under the guise of ‘inspiration.’”

Estevan Oriol has filed an Opposition to a second H&M Motion to Dismiss. This comes after a U.S. District Court dismissed Oriol’s original complaint under Federal Rule of Civil Procedure 12(b)(6) back in October. The complaint was dismissed because Oriol did not identify the protectable elements of his work and how his work and and H&M t-shirt are similar. 

According to the amended pleadings, Oriol claims his work contains unique expressive elements that are sufficiently original (separating it from the mere idea of using hands to form an “LA” symbol), and thus, broadly protected under the Copyright Act. 

Oriol also contends that the designs H&M purportedly were inspired by in creation of the controversial t-shirt were not in existence until after July 2012, insisting that date stamps were doctored. These images on Google and Instagram show different females making a “L.A.” gesture with their hands.

Additionally, Oriol claims he holds a valid copyright for his L.A. Fingers photograph issued by the U.S. Copyright Office. A public records search shows that a copyright for “LA Fingers” was registered by Estevan Oriol on June 7, 2013. A Ninth Circuit ruling requires only a complete copyright application to maintain a valid copyright complaint.

The hearing is set for next Monday, January 21, 2014. Sources have indicated that the judge has taken the motions under submission and that a summary judgement may be coming.

Build your own dreams, or someone else will hire you to build theirs.
Farrah Gray

What is a trademark?

A trademark is a word, symbol, or phrase, used to identify a particular company’s products and distinguish them from the products of another. Trademarks protect the words and symbols that identify the sources of goods and services

Example:  Nike & the “Swoosh” logo are both used to identify the products made by Nike. From the word “Nike” or the “Swoosh” logo, a consumer can distinguish a Nike product from products made by another company (Reebok, Adidas etc.).

If the company is provides services rather than products, their marks are “service marks” and generally treated the same as trademarks.

What is the difference between a trademark and a registered trademark?

Any distinctive name, symbol, or word can be designated as trademarked by using the symbol ™. The ™ symbol notifies others that the company owns the product’s name and design. However, a company is not protected from another producing a similar product or using name by simply using the ™ symbol.

In the event of a dispute with an unregistered trademark, the company must prove that it was the first to use the name or design. Further, a trademark that is unregistered may be left without a legal defense.

A registered trademark is identified by the symbol ®. This symbol may be used once a trademark is registered with the United States Patent & Trademark Office (USPTO) and is considered a “Federally Registered Trademark.”

Do trademarks, copyrights, and patents protect the same things?

No. Trademarks, copyrights, and patents protect different types of intellectual property.

A trademark typically protects brand names and logos used on goods. A copyright protects an original artistic or literary work. A patent protects an invention.

No matter how many close people you have in your network, if you want to be truly great, you must have three essential people in your life at all times:

1. A person who is older and more successful than you to learn from;

2. A person who is equal to you to exchange ideas with;

3. A person below you to coach and keep you energized.

Brenton Weyi

The ultimate achievement is to defeat the enemy without even coming to battle.

Sun Tzu

A settlement has been proposed in the Morey v. Louis Vuitton class action lawsuit. The class action alleges that Louis Vuitton violated California Civil Code §1747.08, prohibiting retailers from requesting and recording personal identification information (i.e. address, phone number, e-mail address) in conjunction with certain credit card transactions.

Under the proposed settlement, the luxury brand would provide a Louis Vuitton Merchandise Certificate to customers who made a purchase using a credit card at one of its California retail locations if, in connection with that purchase, a LV employee requested and recorded the customer’s personal identification information for any reason other than shipping, delivery, servicing or repairing of the purchased merchandise or for special orders or paid holds, or other special purpose incidental but related to the individual credit card transaction.

For more information on the settlement, see the Morey v. Louis Vuitton Settlement website.

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