Tag Archives: intellectual property

Website “Look and Feel” Protectable Trade Dress

Trade dress is important area of intellectual property.  Traditionally, trade dress is the overall appearance or image or design of a product or its packaging, which serves to signify the source of the product to the consumer.  Although trade dress protection has extended beyond simple packaging and product design, it is not always clear what might constitute trade dress.  One area of great importance to many businesses is whether there is protectable trade dress in their website.

Web Site Trade Dress

In a recent case is the U.S. District Court for the Northern District of California, Ingrid & Isabel, LLC v. Baby Be Mine, addresses the increasingly relevant question of what constitutes protectable trade dress for a website.  Although prior trade dress cases found that a website’s “look and feel” can constitute protectable trade dress, at least one case did so to protect the “look and feel” of a website that was, itself, the product, not merely one used to market products.  In other cases, the court did not find trade dress due to the parties’ failure to specifically identify the elements of the website comprising the trade dress.

Generally speaking, trade dress refers to the elements that make up the visual appearance such that the purchasing public associates the trade dress with a single source for the goods.  The courts have found protectable trade dress in the “look and feel” of everything from the color of pads used on dry cleaning equipment, to the colors and shape of a fast food restaurant.  This case analyzes whether the “look and feel” of a website used to market products can constitute protectable trade dress.

In Ingrid & Isabel, LLC v. Baby Be Mine, both companies sell maternity waist bands (stretchy cotton belts that hold up the clothing for pregnant women) as well as other maternity clothing, and both companies operate a respective website.  The parties were not new to litigation, and in fact Ingrid & Isabel had previously sued Baby Be Mine for patent infringement over its band design, trademark infringement based on allegations that Baby Be Mine’s “Belly Band” was confusingly similar to Ingrid & Isabel’s “Bella Band,” as well as for unfair competition.  The present case alleges claims of breach of contract, and trade dress violations under the Lanham Act.

To prevail on a claim of trade dress, a party asserting trade dress must demonstrate that its trade dress is inherently distinctive; that its trade dress is non-functional; and that the defendant’s product creates a likelihood of consumer confusion.

In its Lanham Act claim, Ingrid & Isabel alleged that Baby Be Mine’s use of certain words and phrases on its website and marketing materials, and the overall “look and feel” of its website were distinctive and non-functional.  Ingrid & Isabel recited specific elements contained on its website that it claims had been copied by Baby Be Mine, including cursive script used in the headers, the pale pink-orange color of the lettering, the poses of the models, photographs of models wearing white tanks with jeans, with long naturally wavy hair, where the model is featured head to mid-thigh, model photographs featuring mouse-over change of whimsical, casual poses to display all angles of the product, certain patterns on the website ‘wallpaper’ and other similarities.  Ingrid & Isabel argued that the features on the Baby Be Mine site were similar enough to those specifically recited that it could lead to likelihood of confusion for consumers.

Regarding proof of its trade dress violation claim, Ingrid & Isabel offered evidence of direct copying, which courts have recognized as being relevant to a determination of secondary meaning.  Further, the court recognized that many of the specific elements listed, such as the color and pattern of wallpaper, particular poses of the model, color of the script were non-functional elements.  Finally, the court found that Ingrid & Isabel had created triable issues of fact with respect to the issue of likelihood of consumer confusion.

Because Ingrid & Isabel had created a triable issue of fact with respect to each element required to prove its trade dress violation claim, the court denied Baby Be Mine’s request for summary judgment.  The survival of this claim provides the possibility for a finding that the “look and feel” of the Ingrid & Isabel website contains protectable trade dress.  The outcome of this issue in the case may provide some guidance as to what may be required to claim trade dress in a website, and every company with a prominent web presence may be wise to pay attention to this case.

Trade dress rights are valuable intellectual property rights.  If you have questions about trade dress issues, you need an experienced trademark attorney.  Anna Vradenburgh is a well-respected, business-minded expert in trademark matters.  For more information, visit her website, or contact Anna at (818) 488-8146.  This article is for educational purposes only and nothing in this article is intended to be, or should be considered to be, legal advice.

TTAB Finds Fraud; Upholds Trademark Opposition to “NATIONSTAR”

Obtaining a federal registration for a trademark is important because it helps to protect a company’s brand.  Due to the importance of receiving a federal registration, the truthfulness of the underlying application for that trademark is paramount.  When filing a trademark application, an applicant must execute a declaration that attests to the truthfulness of the content of the application.  This includes attesting to the fact that the trademark is being used in commerce in connection with the goods or services listed in the application.  If the statements in the declaration are false, any resulting registration can be challenged on the basis of fraud.  If a claim of fraud is brought by a challenger, serious consequences for the registrant can follow.  Such was the case in NationStar Mortgage LLC v. Mujahid Ahmad.

In a precedential opinion, the Trademark Trial and Appeal Board (TTAB) issued a finding of fraud in the opposition matter entitled NationStar Mortgage LLC v. Mujahid Ahmad.  While a finding of fraud is rare, it does happen from time to time.   In the case re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir 2009), the Federal Circuit articulated the current standard for fraud in procuring a trademark registration.  In the words of the Federal Circuit in Bose, “a trademark is obtained fraudulently under the Lanham Act only if the applicant or registrant knowingly makes a false, material representation with intent to deceive the USPTO.”

The NationStar Mortgage matter involved the attempted registration of the trademark “NATIONSTAR” for “mortgage brokerage,” “insurance brokerage,” and other real estate and mortgage related services.  In April of 2005, long prior to filing the trademark application, the applicant, Mujahid Ahmad, a Virginia real estate agent, registered multiple domain names using derivations of nationstar, for example, nationstarmortgage.com and nationstar.org.  On April 11 and April 18, 2006, counsel for opposer, NationStar Mortgage, sent letters to Mr. Ahmad offering to purchase two of the domains.  The offer was rejected, and within a few days of the offer, Mr. Ahmad filed a use based trademark application for “NATIONSTAR” for a number of services, including real estate brokerage services and insurance brokerage services.  By filing the application based on use, Mr. Ahmad declared that the mark was in use for all the identified services at the time of filing the application.

Fraud in the procurement of a trademark registration must be proven via clear and convincing evidence, and here, the facts were the applicant’s undoing.  The opposer, NationStar Mortgage, alleged that Mr. Ahmad never used the NATIONSTAR MORTGAGE mark in connection with the identified services, and that he “submitted a fabricated specimen that was not used in commerce at least as early as the application filing date.”  In fact, Mr. Ahmad admitted during testimony that he was not a real estate broker, not an insurance broker, nor did he offer mortgage insurance.  While Mr. Ahmad claimed he was the owner of a company called NationStar Mortgage Inc. and used the name in connection with his services as a real estate agent, he also testified that he was unaware of any profits for the company and did not have a bank account.  Mr. Ahmad also admitted that all of the materials submitted to the USPTO were created on his own computer, and by a third party printer; however, he could not produce records of professional printing for the supposed business cards and postcards that were sent to clients or otherwise used commercially.

The TTAB noted that it was skeptical of applicant’s testimony and claims, particularly because, although the applicant was not a lawyer with expertise in trademark law, he was a real estate agent and was familiar with the laws surrounding mortgage brokers and insurance brokers, and would have certainly been aware that he was not licensed as a broker of mortgages or insurance.  The TTAB stated that just because Mr. Ahmad filed his own application, it did not afford him “a free pass to disregard the straightforward requirements of a use-based application and the solemnity of the application declaration that he signed subject to criminal penalties.”

The TTAB was also clear that the facts in this case were inconsistent with merely a mistake or misinterpretation of the law by a non-attorney applicant.  In the words of the TTAB, “this record does not support a finding that applicant’s misrepresentation was occasioned by mere inadvertence or reasonable mistake or misunderstanding….While fraud will not lie if a statement, though false, was made with a reasonable and honest belief that it was true, there are limits to what may be claimed in good faith.”

In the end, the TTAB sustained NationStar’s opposition.  In addition to the obvious lessons in regard to avoiding fraudulent filings, this case highlights the importance of using an experienced attorney to prepare trademark applications.

If you have questions about filing a trademark application, you need an experienced trademark attorney.  Anna Vradenburgh is a well-respected, business-minded expert in trademark issues with extensive experience prosecuting domestic and foreign trademarks.  In addition to her prosecution practice, Anna also assists clients in the selection and use of trademarks and represents clients in trademark opposition matters, domain name dispute matters, and before the federal Trademark Trial and Appeals Board.  Anna can also assist your company in licensing matters, including drafting and negotiation of trademark licensing agreements.  For more information, visit her website, or contact Anna at (818) 488-8146.  This article is for educational purposes only and nothing in this article is intended to be, or should be considered to be, legal advice.

Stopping Knockoff Goods at the U.S. Border

The U.S. government has taken a number of steps to help stop counterfeit goods from entering the United States, including maintaining the website www.stopfakes.gov, a one-stop source for information on protecting your intellectual property from counterfeit imports.  Stopfakes.gov is a partnership among a number of agencies including the FBI, U.S. Customs and Border Protection, the Department of Justice, Office of the U.S. Trade Representative, and United States Patent and Trademark Office (USPTO).   The website has resources for businesses, including country-specific information about stopping fakes, and resources for reporting counterfeiting activities to federal law enforcement.

One of the best ways to prevent the sale of counterfeit goods is to keep them out of the United States.  Under the federal Lanham Act and the Tariff Act of 1930, the federal government, through the U.S. Customs and Border Protection (USCBP) agency, has the responsibility of protecting trade and enforcing intellectual property rights on behalf of companies.

If you believe counterfeit goods bearing your federally registered trademark are being illegally imported into the United States, there are a few quick and easy ways to alert federal law enforcement.
  1. Record your intellectual property rights with USCBP at http://www.stopfakes.gov/business-tools/us-customs-and-border-protection-e-recordation-tool.  The website allows the submission of an application for online registration of federally registered trademarks and copyrights with the USCBP.  This will typically include submitting descriptions and photographs of your goods, along with samples, or summaries of the content, appearance, and look of your products, such that USCBP will be able to recognize potential fakes.  The application is $190 per trademark per class of goods, or copyright, with a periodic $80 renewal fee.  (Currently, USCBP only provides for the recordation of trademarks and copyrights, not patents.)  As soon as you have filed the application, USCBP will be authorized to detain, seize, notify, and destroy counterfeit versions of goods bearing your trademark, or copyrighted materials.
  2. Authorize a reliable employee, agent, or attorney to serve as the point of communications for the USCBP.  This individual will be the primary point of contact with the USCBP, and should have the skill and availability to definitively identify the counterfeit goods, in person, if necessary.  This agent will receive all notices from USCBP, and should be able to respond quickly, investigate the seized goods, and notify the agency with certainty about the legitimacy of the goods.
If you have questions about importing, counterfeit concerns, or would like more information on customized services to monitor and protect your company’s intellectual property, you need an attorney who understands your needs and can help you protect your rights. Anna Vradenburgh is a well-respected, business-minded attorney with expertise in trademark issues and is able to advise your company on these types of intellectual property matters.  For more information, visit the Eclipse Law Group website, or contact Anna at (818)488-8146.  This newsletter is for educational purposes only and nothing in this newsletter is intended to be, or should be considered to be, legal advice.

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 at :

The Eclipse Group

6345 Balboa Blvd, Suite 325,

Encino, California 91316

(818) 488-8146

www.EclipseGrp.com

Luxury Retailers Fight Counterfeiting on Alibaba – the World’s Largest eCommerce Site

The September IPO of Chinese eCommerce network Alibaba was heralded with great fanfare. Western retailers saw exceptional promise – the ability to sell their goods directly to China’s burgeoning middle class.  Unfortunately, that promise comes with a cautionary warning as allegations of counterfeit goods on the Alibaba website surface in the news.

Let’s rewind a few months back to early July 2014.  Italian luxury label Gucci, and Paris-based Kering SA, which owns the major luxury brands Yves Saint Laurent, Bottega Veneta, and Balenciaga, filed a complaint in federal court in New York against Alibaba Holding Group, Ltd., alleging that the ecommerce site was allowing “an army of counterfeiters to sell their illegal wares throughout the world.”

The luxury brands alleged that not only was Alibaba turning a blind eye to the widespread sale of knockoff bags and accessories on its member sites, it was, in fact, turning massive profits from those sales.   The complaint, which is in excess of a 140 pages, alleges that Alibaba was assisting merchants in selling the counterfeit goods.  The activity referenced in the complaint included selling the use of trademarked keywords, such as, “GUCCI”, to counterfeit merchants to allow them to obtain preferred search placement, and the offering of alternate search terms in order to direct users to counterfeit products.  For example, the complaint alleges that a user typing in the search term GUCCI is offered search terms such as ‘cucci’, ‘guchi’ and ‘guchi bags’, which direct users to merchants selling counterfeit products.  This is but one of a myriad of affirmative actions allegedly taken by Alibaba to assist the counterfeiters.  In addition to any alleged activities by Alibaba, the complaint also alleges that some of the merchants were so bold as to even tout the fact that the products were ‘replicas’ or ‘as good as the original.’

Then, just two weeks later, in what might be considered a surprising turn of events, and in advance of the IPO, the lawsuit was withdrawn without prejudice.  The Wall Street Journal reported that Alibaba and Gucci issued a joint press release saying that the parties had begun “constructive dialogue.” As the details have not been made public, it is unknown what caused the luxury brands to dismiss this lawsuit, especially given the overwhelming allegations of blatant and coordinated infringements. Although purely speculation, Alibaba may have made promises to curtail activities that were viewed as vicarious infringements to address an issue that might have negatively affected their IPO.

However, despite the dismissal of the lawsuit, Alibaba still appears to be incurring the ire of western companies as a result of its activities.  In a recent article, the New York Times reported that American sneaker manufacturer New Balance had initial success selling its genuine goods on Alibaba site Tmall, which contributed to soaring demand in China for the popular running shoes.   However, as with other brand owners, New Balance complained that it began experiencing increasing problems controlling counterfeits on the Alibaba network of sites.  According to the New York Times, “Alibaba does not make it easy for New Balance to remove counterfeits from its sites.” Indeed, despite the hundreds of thousands of counterfeit New Balance products available on the sites, the site required the company to identify each problematic listing.  Said a New Balance representative, “Alibaba knows this remains a huge issue.”

Since the IPO,  a quick search for GUCCI on Alibaba.com still returns listings of what might be counterfeiters, and offerings of alternate search terms, including ‘cucci’, ‘guchi’ and ‘guchi bags’.  Whether Alibaba curbs activities that have been the subject of numerous complaints by western companies remains to be seen, as does whether a new infringement suit is brought by other brand owners, like New Balance, or whether Gucci et al., refiles its suit.  In any event, as the Chinese market for western products continues to grow, it is clear that much will need to change before sites like Alibaba will no longer be the target of claims that they provide assistance to counterfeiters.

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 at :

The Eclipse Group

6345 Balboa Blvd, Suite 325,

Encino, California 91316

(818) 488-8146

www.EclipseGrp.com

Business Tips for Trademarks

There has been a lot of media coverage regarding the case before the Trademark Trial and Appeals Board (TTAB) that resulted in the cancellation of the federally issued trademarks owned by National Football League’s Washington Redskins containing the word “REDSKINS” on the ground that the term is disparaging to Native Americans. With the Redskins case in the news in the last few weeks, many businesses are looking at their own trademark portfolios with an understandable degree of concern as to whether they too may own trademark registrations that might also be potentially challenged and cancelled on similar grounds.

Judging from the discussions I have had in the wake of the news regarding the cancellation of the Redskins federal trademark registrations, I think many business owners are wondering how a famous trademark, like REDSKINS, that has been federally registered since September 1967 (almost 45 years) could be subject to cancellation. Above and beyond simple curiosity, there is justifiable concern regarding the protectability of trademark rights when those rights appear to be subject to termination by judicial fiat. It is not unreasonable, in my opinion, in the wake of the Redskins decision for businesses to wonder whether their investment of capital and effort in a protectable brand is as safe or prudent a use of their resources today as it was prior to the Redskins decision.   One might reasonably wonder, for example, if the owners of the Redskins football team had been asked, years ago, to invest millions of dollars to develop the REDSKINS brand and to properly protect the brand via federal trademark registration, with the caveat, that despite the investment of an enormous amount of time and money, the brand would be subject to challenge, and the corresponding trademark registration subject to cancellation, decades later, by persons, not yet born, who would not be competitors or even associated with football, my guess is that the answer would have been a resounding ‘NO’.

So, just how did the Washington Redskins and the NFL come to find themselves in this position? Well, let’s start with the selection of the trademark.

Trademarks are typically categorized as fanciful or coined, arbitrary, suggestive, and merely descriptive. There is one more category, generic. However, technically any term that falls into this category can never be a trademark for reasons discussed below.

To create a strong brand, it is best if the mark is ‘fanciful’ or ‘coined’. These are terms that are completely made-up, that is, the term has no meaning other than as a trademark. A classic example is XEROX for photocopiers.   These are some of the strongest marks assuming they are properly used and protected.

‘Arbitrary’ marks are those marks which comprise a word that is a common word, but the meaning of the word has no relation to the goods or services associated with the mark. APPLE for computers is one such example. These too, start as very strong marks.

A ‘suggestive’ mark is one that suggests some attribute or characteristic of the goods or services, but does not describe them.   An example of a suggestive mark is AIRBUS for airplanes.

Finally, a ‘descriptive’ mark is one that merely describes the goods or services. These types of marks can ultimately be registered on the Principal (or primary) Register, but only after proving they are capable of being a source identifier, that is, consumers believe the goods or services emanate from a common source. These marks are near the weaker end of the spectrum, but can be protected.

Terms that are generic, that is, they are the common term for the goods or services can never be registered. The selection of a generic term as a brand does not offer protection for the brand name and allows third parties to use the term freely.

The REDSKINS mark is considered an arbitrary mark, and therefore a choice that, from a trademark protection perspective, was a good choice for a strong mark. Why then, was it subject to challenge?

In addition to the considerations of the type of mark to select (fanciful, arbitrary, etc.), persons seeking federal registration of trademarks must also consider other important issues. For example, consideration must be given regarding whether the mark is a surname or a geographical location, whether the mark is misdescriptive of the goods or services with which it is to be associated, whether the mark is protected indicia, or whether the proposed trademark is immoral or scandalous, or may disparage, for example, persons (living or dead), beliefs, or symbols. This last consideration, i.e., whether the mark would be considered disparaging, is the one at the heart of the REDSKINS cancellation proceeding.

There is no published information to my knowledge regarding whether the issue of disparagement toward Native Americans was considered in the selection of the REDSKINS mark. The evidence in the case presumably showed that the sentiment that the trademark was disparaging existed at the time the trademark was selected. The NFL has maintained throughout the dispute that it has always acted honorably and respectfully towards Native Americans. While this may be true, with respect to the action brought by Native Americans before the TTAB, the NFL’s intent is irrelevant.

The TTAB ruling suggests that Native Americans may have been objecting to the use of this mark for quite some time. But the first cancellation proceeding brought by the petitioners in the REDSKINS case was not filed until 1992, fully twenty-five years after the mark’s initial federal registration. One might ask if a substantial composite of Native Americans found the term “redskins” to be disparaging at the time of the registrations of these successively filed marks, why the offended parties did not institute proceedings years ago? While there may be an answer to that question, it does not appear in the record of the case. Moreover, the issue of the lack of objection by Native Americans to the use of the name for decades did not apparently factor into the TTAB’s decision.   Many believe this is unfortunate or even unfair as the NFL heavily invested in the REDSKINS brand relying on what might well have been a reasonable belief that use of the brand in association with a highly successful and much beloved football team was not offensive to a substantial composite of Native Americans.

The cancellation of the REDSKINS federal trademark registration has sent shock waves throughout the legal and business communities.  The ruling will act as established precedent for future cancellation proceedings.   It is a ruling that has provoked questions about vulnerability of trademark rights to attack by individuals or groups that might be able to demonstrate that they are somehow offended by a mark.   But more importantly, perhaps, is the fact that the case has raised, and will continue to raise, questions of fundamental fairness. Specifically, the fairness of basing the cancellation of a famous trademark comprising an enormously successful brand for which the owner has made a huge monetary investment over literally decades on the ground that the trademark was disparaging at the time of its registration and offends a group that failed to timely pursue its rights.

The NFL has indicated that it will appeal the ruling. Accordingly, the fate of these registrations is yet to be seen.

trademark

If you need assistance with trademark registrations, searches, or trademark licensing, Anna Vradenburgh is a well-respected, business-mind expert in trademark issues with extensive experience prosecuting domestic and foreign trademarks. In addition to her prosecution practice, Anna also assists clients in the selection and use of trademarks and represents clients in trademark opposition matters, domain name dispute matters, and before the federal Trademark Trial and Appeals Board. Anna can also assist your company in licensing maters, including drafting and negotiation of trademark licensing agreements. For more information visit the Eclipse Law Group website, or contact Anna at (818) 488-8146.

Washington Redskins Trademark Follow Up

All eyes have been on the Trademark Trial and Appeals Board (TTAB), following the recent order to cancel six trademark registrations owned by National Football League’s Washington Redskins, each containing the word REDSKINS. Although a divided TTAB granted the Native American’s petition to cancel federal registration of the team’s mark, the decision will not prevent the Washington Redskins from using the trademark in its name, uniforms, and the like.

The TTAB decision comes after twenty years of efforts by Native American petitioners who allege that the ‘REDSKINS’ marks disparage Native Americans. The TTAB first reviewed Native American petitions to cancel the trademarks in 1992, although that case, Pro Football, Inc. v. Harjo, 90 USPQ2d 1993 (D.C. Cir. 2009), was ultimately dismissed by the D.C. Circuit, not on the merits, but for procedural reasons.

In the recent matter, because all of the challenged registrations had been registered for more than five (5) years, the TTAB had a very narrow legal question to answer, namely, whether the evidence made of record, established “that the term ‘redskins’ was disparaging to a substantial composite of Native Americans at the time each of the challenged registrations issued.”  (emphasis added)  That is, during the time period from 1967-1990 (registrations issued in 1967, 1974, 1978, and 1990).  To answer this question, the TTAB applied a two-part test, which (1) looked at the meaning of REDSKINS as it appears in the trademarks, including how those marks were used in connection with the goods and services identified in the registration; and (2) whether that meaning may disparage Native Americans.

In considering the first part of the test, the TTAB found that the Washington Redskins and the NFL “made continuous efforts to associate its football services with Native American imagery.”  Because of the maintained association with Native Americans, the TTAB found that the marks retained their connotation and meaning with respect to Native Americans.

With regard to the second part of the test, the TTAB stated that the determination of disparagement must be made within the context of the goods or services, wherein the context could: (a) make an innocuous term offensive; (b) remove the disparaging meaning from an otherwise disparaging term; or (c) have a no effect on a term’s disparaging meaning.

Although the NFL argued that its use of the mark removed the disparaging meaning of the term and that it had honorable intent in its use of the marks, the TTAB ultimately agreed with the petitioners that the NFL’s use had no effect on the disparaging meaning of the term.  The finding that the term was disparaging during the relevant period was based, in part, on a determination that a substantial composite of Native Americans, approximately 30%, found the meaning of the term REDSKINS to be disparaging during the relevant time periods.  Although the NFL produced contradictory evidence from Native Americans, the evidence did not negate the negative opinion of the substantial composite.  In making its finding, the TTAB stated “[t]he ultimate decision is based on whether the evidence shows that a substantial composite of the Native American population found the term “Redskins” to be disparaging when the respective registrations issued.  Heeb Media LLC, 89 USPQ2d at 1077.  Therefore, once a substantial composite has been found, the mere existence of differing opinions cannot change the conclusion.”  In addressing the NFL’s contentions regarding its honorable intent in the use of the marks, the TTAB stated the “alleged honorable intent and manner of use of the term do not contribute to the determination of whether a substantial composite of the referenced group found REDSKINS to be a disparaging term in the context of respondent’s services during the time period 1967-1990, because the services have not removed the Native American meaning from the term and intent does not affect the second prong.” Because the term was determined to be disparaging during the relevant time period, the TTAB concluded that that the marks should be cancelled.

The Washington Redskins have announced plans to appeal the TTAB decision.  The trademark registrations remain in effect while the appeal is pending, and as stated above, this decision has no legal effect on the team’s ability to use the term REDSKINS or the marks.

Beyond potential financial losses to the NFL, the implications of this TTAB decision are unclear at this time.  However, there are many trademarks that could be affected by this ruling.

While other companies have successfully defended their marks before the TTAB against petitions to cancel from Native American groups, notably SQUAW VALLEY marks in connection with ski goods and services, 80 USPQ2d 1264, 1267 (TTAB 2006), the Redskins matter may represent a new reality for owners of Native American themed marks.

If you have questions about the implications of the TTAB Redskins ruling or your company owns a Native American themed trademark, you need an experienced trademark attorney.  Anna Vradenburgh is a well-respected, business-mind expert in trademark issues with extensive experience prosecuting domestic and foreign trademarks.  In addition to her prosecution practice, Anna also assists clients in the selection and use of trademarks and represents clients in trademark opposition matters, domain name dispute matters, and before the federal Trademark Trial and Appeals Board.  Anna can also assist your company in licensing maters, including drafting and negotiation of trademark licensing agreements.  For more information visit the Eclipse Law Group website, or contact Anna at (818) 488-8146.

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.

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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