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Trademark Abbreviations & The Public Use Doctrine

August 18, 2010 by · Comments Off
Filed under: Business, law, trademark, Trademark Articles 

Does trademark registration protect the nickname of the registered mark?  For example, if someone owned the mark PEANUT BUTTER & JELLY would the abbreviation PBJ or PB&J be protected?  Under the public use doctrine, abbreviations or nicknames used by the public can give rise to protectable trademark rights.  Nat’l Cable Television Ass’n, Inc. v. American Cinema Editors, Inc., 937 F.2d 1572, 1577 (Fed. Cir. 1991). That is, the terms “Coke”, “BUD, and “MAC” are protected under the respective registrations for Coca-Cola, Budweiser, and Macintosh Computers.

Under certain conditions, the public use doctrine will extend trademark rights to abbreviated or shortened version of a registered mark.  In the 2009 case of George & Co. v. Imagination Entertainment Ltd. et al., the Plaintiff sought to apply the public use doctrine in the reverse and use the doctrine to extend rights to the elongated word based on the registered abbreviation. 575 F.3d 383 (4th Cir. 2009).  The Plaintiff owned a trademark registration for the abbreviation LCR for a dice game, which stands for “Left Center Right.”  Id. at 390.  The Plaintiff filed suit claiming that the Defendant’s mark, LEFT CENTER RIGHT, was infringing upon its LCR mark. Id. at 392.

The Plaintiff claimed that the public use doctrine expanded trademark protection of the registered LCR mark to cover the mark’s elongated form, namely “LEFT CENTER RIGHT.” Id. at 403.

The Fourth Circuit disagreed with the Plaintiff, ruling that the public use doctrine should be narrowly construed to apply only where: (1) the formal mark that is the object the public nickname is well-known; and (2) the nickname “adds distinctiveness” to the formal mark.  And, that ruling is interpreted as finding that the public use doctrine only applies when the public abbreviates or nicknames a mark, not the other way around.  Id.

Using abbreviations, nicknames, and acronyms as trademarks may be appealing from a marketing perspective, however, the public use doctrine will not expand the scope of protection of these shorter forms to encompass their elongated counterparts.  At the same time, introducing a new product into the market with both an elongated name and an abbreviated name may cause confusion and interfere with the consumer identifying one brand with the product.  And, here is the ah-ha moment to recognize that branding is not always about strategic marketing, but also about how the public processes and associates nicknames or abbreviations. 

DISCLAIMER: This article is NOT intended to provide legal advice and is for informational purposes only.

How to Get Twitter and Facebook to Remove Content That is Infringing Your Trademarks

April 7, 2010 by · Comments Off
Filed under: Business, law, Online Privacy, trademark, Trademark Articles, Uncategorized 

As sites like Facebook and Twitter become more popular the amount of content that is being published on these sites continues to grow.  This creates a problem when these companies begin hosting infringing content, as 15 USC § 1114 absolves a publisher for damages if they are unaware of the infringement.  However, once they know that there is infringing content they open themselves up to liability.  While provisions for copyright infringement are detailed in the DMCA, there is no statute that lays out exactly how trademark holders should contact Online Service Providers and how OSPs should respond.

Facebook and Twitter have created specific policies and web forms to deal with allegations of trademark infringement.  The following steps should be taken to have material infringing upon your trademark rights removed:

Facebook:

  1. Facebook provides a generic, non-copyright, Intellectual Property Infringement form available at http://www.facebook.com/legal/copyright.php?noncopyright_notice=1.
  2. Fill out your name and contact information.
  3. In the “rights infringed” field state that your trademark or servicemark has been infringed.  Provide the name of the mark, the date you first started using the mark, the goods used in connection with the mark, and if registered, your registration number.
  4. In the lower boxes explain how your trademark rights have been infringed.  For more information about your rights under trademark law visit our Trademarks page.

Twitter:

Twitter provides two methods by which you can submit a trademark infringement complaint: you can submit their online help request form, or send an email.

Help Request Form:

  1. Go to http://twitter.com/help/login and login to your Twitter account.  If you cannot login, or do not have a Twitter account, select the “No account? Login problems?” link.
  2. From the first drop down menu select “Something’s broken, or amiss”.
  3. From the second drop down menu select “Trademark/Brand squatting”.
  4. In the text field include the following information:
    1. Username of violating account
    2. Your name
    3. Your company name (if infringing company’s mark)
    4. Your (and/or your company’s) Twitter account
    5. Your (and/or your company’s) contact information – address, phone and fax numbers
    6. Your (and/or your company’s) email address and website(if available)
    7. The mark you are claiming has been infringed.
    8. The state and/or federal registration number for your trademark (if available)
    9. Your requested action: cancelling the account or transferring the account to your possession are usually the remedies.
    10. Fill in the remaining boxes and submit your form.

Email:

  1. Address the email to terms@twitter.com.
  2. Title the email “Trademark Infringement”.
  3. In the body of the email include all of the information required for #4, above.

Congratulations, you just started the process for removing an account that infringes your trademark from the web.  There are a few more things to note:

  1. This will not automatically remove the infringing user, but rather starts Facebook and Twitter to begin an investigation to see if they should remove the information.
  2. While it will take a little time for your request to process, if you have not heard anything from them in a week and the infringing page is still up, send a follow-up email to see why no action has been taken.
  3. Be on the alert for emails from Facebook or Twitter, as they will contact you if they have any questions about your claim.

While sending these requests is good for reducing the amount of infringement of your mark, the infringing party is the root of the problem and you are not without recourse against them.  As they are violating you rights it is a good idea to send them a letter demanding they cease their infringing activity.  Look here or more information about Cease and Desist Letters.

If you need help removing content from Twitter or Facebook, please content Bambi Faivre Walters by e-mail at bambi@bfwpc.com or by phone at 888-388-9614.

Loosening the Specimen Requirements for Trademark Applications

March 17, 2010 by · Comments Off
Filed under: Inventor & Entrepreneur Updates, law, trademark, Trademark Articles 

By Ed Nunes, W&M Law class of 2010

The US Court of Appeals for the Federal Circuit handed down a decision overturning a decision by the Trademark Trial and Appeal Board (TTAB) to refuse the mark “One Nation Under God” for charity bracelets (opinion available here).  The decision broadens the standard set out in Lands End, Inc. v. Manbeck, 797 F.Supp. 511 (E.D. Va. 1992), which required a picture of the product for web-based trademark specimens.

The Old Standard

Chapter 37 of the Code of Federal Regulations, section 2.56(b)(1) states “A trademark specimen is a label, tag, or container for the goods, or a display associated with the goods. The Office may accept another document related to the goods or the sale of the goods when it is not possible to place the mark on the goods or packaging for the goods.”  37 CFR 2.56(b)(1).

Websites are often refused as proper specimens for trademarks because websites they are used as advertising for a product, and thus are refused as only servicemarks may use advertisements as specimens.

Lands End, Inc. v. Manbeck and Trademark Manual of Examining Procedure (TMEP) section 904.06, however, set a standard where websites could be used for trademarks, as long as three criteria were met:

  1. There is a relevant picture of the good,
  2. The trademark is sufficiently close to the good so that consumers will associate the good with the trademark, and
  3. The page includes all the information necessary to order the goods.

The Case at Hand

Michael Sones submitted an application to the United States Patent and Trademark Office (USPTO) attempting to register the mark “One Nation Under God” in connection with “charity bracelets”.  For a specimen of Sones’ mark he used a web page complying with requirements two and three under TMEP 904.06, but failing to show a picture of the good.

Click on Trademark Specimen to see what was submitted.