Monthly Archives: June 2014

Successful Trademark Cancellation Based on Defective Claim of Ownership

The Lanham Act is a federal law that governs the registration and enforcement of trademarks and service marks in the United States, including the registration of trademarks in the United States based on foreign registrations.  In particular, Section 44 of the Lanham Act governs the manner in which a foreign registration can be used to obtain a valid registration in the United States for the same mark.  One of the critical aspects of Section 44, more specifically Section 44(e), is the requirement that an applicant for registration of a foreign mark in the United States must prove that it is, at the time of filing the U.S. application or at the time that the Section 44(e) basis for filing is added to the application or at the time of the issuance of a U.S. registration, the owner of a valid registration from the applicant’s country of origin. This requirement recently proved to be fatal to a British company’s U.S. registration for BEARWW for Internet based social networking and introduction services, based on a Canadian trademark registration and registered under Section 44(e).  The U.S. application was originally filed by, and a registration issued to, Canadian citizen, Marie Laure Leclerq.  The registration was assigned to Webid Consulting Ltd. on June 1, 2012.

In that matter (SARL Corexco v. Webid Consulting Ltd., Cancellation No. 92056456 (TTAB 2014)), French company, SARL Corexco (“Corexco”), filed an action for cancellation before the U.S. Trademark Trial and Appeal Board (“Board”) against U.S. Registration No. 4,148,217 for the mark BEARWW .  At the time of the cancellation proceeding, the registration was owned by Webid Consulting Ltd. (“Webid”), a United Kingdom corporation. Corexco based the cancellation on two arguments: (1) that the trademark “BEARWW” is likely to cause confusion with Corexco’s prior use of the mark BEARWWW in association with online social networking services and (2) that the registration, which was based on the Canadian registration for the mark BEARWW and registered pursuant to Section 44(e), was void ab initio as having a defective basis for registration.

After some discovery in the proceeding, Corexco filed a motion for summary judgment.  Although the Board refused to grant summary judgment on the issue of likelihood of confusion, it did order cancellation of Webid’s registration of the trademark on the basis of Corexco’s other stated ground.  In particular, the Board noted that, at the time the BEARWW trademark was registered, the original registrant, Canadian citizen, Marie Laure Leclerq, did not concurrently own the Canadian registration upon which the U.S. application was based and upon which it registered.  During the course of formal discovery in the case, Webid admitted Ms. Leclerq never owned the Canadian registration.  Indeed, on the date that the Section 44(e) basis for filing was added to the application, namely, August 11, 2011, Webid, and not Ms. Leclerq, was the registered owner of the Canadian registration.  And while Ms. Leclerq did eventually assign the American trademark registration to Webid on June 1, 2012, the Board held the assignment to be of no consequence.   Ms. Leclerq neither owned the Canadian mark at the time of registration of the U.S. application, nor any time before.  Thus, the application was defective under the Lanham Act because Ms. Leclerq did not own the Canadian registration, at any of the critical dates, the filing date, the date that the Section 44(e) was added as a basis for registration, or the registration date of the U.S. application.  Since there were no other facts to prove ownership of the foreign registration at any of the crucial times, the Board granted Corexco’s motion for summary judgment and ordered the cancellation of the registration.

This case demonstrates the imperative that individuals and other entities seeking a U.S. registration based on a foreign registration must strictly comply with the rules governing domestic federal registration of foreign marks. It also underscores the importance of relying on experienced and knowledgeable counsel, suitably familiar with trademark law, to obtain registration of such marks.

This article is not intended to be, nor should it be considered to be, legal advice.

Image

Attorney Anna M. Vradenburgh counsels and represents clients facing trademark, copyright, patent and other intellectual property issues, providing expert advice regarding intellectual property protection, exploitation and rights enforcement.

Ms. Vradenburgh can be contacted as follows:

The Eclipse Group

6345 Balboa Blvd, Suite 325,

Encino, California 91316

(818) 488-8146

www.EclipseGrp.com

Advertisements

Copyright Implications of 3D Printing

In the United States, the late nineteenth century brought a massive surge in industrial activity as companies developed novel ways to manufacture all kinds of products in massive factories employing large numbers of employees. As time passed, the development of technology focused on decreasing costs and man power. In the 1980s, one such innovative technology was born and developed. This technology, commonly known as 3D printing, was, and still is, protected by numerous patents. Generally, 3D printing is the creation of a three-dimensional object by successively adding layers of material (e.g., resin, powder), wherein the addition of material and formation of the object is controlled through a computer. As a result of the broad patent protection accorded early developers of 3D technology, entry into this new area of more cost efficient design and manufacturing was cost prohibitive for most small businesses and non-business consumers. However, a number of early patents in the field have begun to expire. For example in January of this year, one of the core patents protecting 3D technology, U.S. Patent No. 5,597,589, entitled “Apparatus for producing parts by selective sintering,” expired. The expiration of this patent, and others in the field, is credited, in part, for the emergence and growing popularity of 3D printers which can now be purchased for as little as three thousand dollars. As a result, 3D printing technology has now become more readily available to small businesses, and even the general consumer. Indeed, because of the proliferation of home 3D printers general consumers are now afforded the opportunity to manufacture an endless array of items on their own using a technology, that until recently, was only available to relatively large commercial enterprises. But with the broadening use of 3D printing has come a number of new legal issues, including the issue of copyright protection regarding the design of 3D printed items and the software that directs a 3D printer to manufacture of such materials.

 

3D printers “follow” instructions set forth in computer-aided design (CAD) files to make objects composed of plastic, metal or other materials. With the proliferation of the 3D printer and the desire to ‘make things’, consumers have begun to share CAD files, and indeed, numerous sites have already arisen wherein consumers can upload their files for others to use or enhance. However, much like music sharing, some of the CAD file sharing sites not only offer original user created CAD files, but offer other third party files that may be protected by copyright or that offer the blueprint for a design that is protected by copyright. Indeed, the CAD file itself may be proprietary software, and/or result in the creation of an object whose design is protected.

 

Akin to the era of rampant copyright infringement of music, most notably resulting from the music file sharing service “Napster” and similar concerns, the swift and vast availability of this technology is ushering in a similar era of CAD file sharing sites and correspondingly creating similar conflicts with intellectual property rights, most notably, copyrights. One such CAD file sharing site is Thingiverse.com. And it, not surprisingly, is already fielding numerous ‘take-down’ notices pursuant to the Digital Millennium Copyright Act (DMCA) asserting unauthorized exploitation of owners’ copyrights in the CAD files. Similarly, cease and desist letters, such as one issued by HBO demanding the cessation of attempted sales of an Iron Throne iPhone dock, which was based on still images of the throne in Game of Thrones, have already begun. As use of the home 3D printers increases by private consumers, as with the initial problems in the music file sharing era, enforcement of copyrights will prove difficult. Although use of the DMCA will assist in the removal of CAD files or objects created by 3D printing from a website via the issuance of a “takedown notice”, this only addresses the specific website and only addresses the identified copyright-protected material on that site. Further, as the DMCA offers insulation for many of these websites, the removal of the offending file or object is all that will be accomplished. Monetary damages will have to be sought from the party uploading the file or object. Thus, copyright owners may again be faced with having to sue individual consumers.

 

As website providers have no obligation to review their sites for potential infringement, the onus is on the copyright owner to enforce their copyright. Thus, the question remains. How can a copyright owner effectively enforce their copyrights? Perhaps sites akin to iTunes, which instead of music offer CAD files that one can purchase for a small fee, will be one solution to this potential problem for copyright owners. At the present, a solution is not readily apparent.

 

Regardless of the solution to resolve the tension between the desire to use the newly released technology and the protection of copyrights, one thing is clear, as 3D printers become more commonly used over the next few years, owners of valid copyrighted material will need to be vigilant in identifying illegal use of their copyrighted property. Similarly, users of 3D printers will need to exercise great care to ensure they are not replicating copyrighted objects if they hope to avoid exposure to liability for infringement. This emerging technology offers individuals or startups the ability to create, at a relatively low cost, a product of great value. But this opportunity also allows a party to unwittingly incur liability if they produce something, intentionally or otherwise, which infringes the copyright belonging to another.

Image

Attorney Anna M. Vradenburgh counsels and represents clients facing trademark, copyright, patent and other intellectual property issues, providing expert advice regarding intellectual property protection, exploitation and rights enforcement.

Ms. Vradenburgh can be contacted as follows:

The Eclipse Group

6345 Balboa Blvd, Suite 325,

Encino, California 91316

(818) 488-8146

www.EclipseGrp.com