Lashing out…

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Esquire published a funny, satirical article about Jerome Corsi’s book “Where’s the Birth Certificate” after President Obama released his long form certificate.

In an exclusive interview, a reflective Farah, who wrote the book’s foreword and also published Corsi’s earlier best-selling work, Unfit for Command: Swift Boat Veterans Speak out Against John Kerry and Capricorn One: NASA, JFK, and the Great “Moon Landing” Cover-Up, said that after much serious reflection, he could not go forward with the project. “I believe with all my heart that Barack Obama is destroying this country, and I will continue to stand against his administration at every turn, but in light of recent events, this book has become problematic, and contains what I now believe to be factual inaccuracies,” he said this morning. “I cannot in good conscience publish it and expect anyone to believe it.”

First Amendment free speech protections make it difficult to win a defamation claim against an established journalism publication. The plaintiff must prove by clear and convincing evidence that the defamatory statement was made “with knowledge that it was actually false or with reckless disregard of whether it was false or not.” Almost impossible with a satirical article about a matter of public concern. As an end-run around this, Corsi and the book’s publisher are pleading a Lanham Act false advertising claim (in addition to defamation and other state law claims) on the theory that Esquire is a competitor and that the satirical article is misleading. Uh, good luck with that. I’m not sure, however, if this lawsuit actually exists until I personally go to the federal District of Columbia courthouse and physically examine the complaint. Even then, how do I know it’s not a forgery?

Farah vs. Esquire

And while we’re on the subject of defamation, Peter Paul Piro, a forensic art expert, has sued the New Yorker and the writer David Grann of maybe my favorite New Yorker article of the past year for defamation. After what looked like a typical well-written profile piece, Grann wrote one of the most astonishing paragraphs I’ve read (warning, spoiler):

And so, with this final flourish, the glittering portrait of Peter Paul Biro was complete: he was the triumphant scientist who had transformed the art world. Like “La Bella Principessa,” the image was romantic, almost idealized—the version of Biro that was most appealing to the eye. But, somewhere along the way, I began to notice small, and then more glaring, imperfections in this picture.

Biro v Condé Nast

Overseas business relationship goes off with a hitch

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Webb v. Trailer City & Changzhou Nanxiashu Tool Co.

Maybe not an original story. American businessman has trailer designs. American businessman meets Chinese factory and pays for the tooling so Chinese factory can make trailers. Chinese factory makes trailers and ships to US so American businessman can sell them. American businessman leaves Chinese factory for a new, better Chinese factory. Old Chinese factory finds Oregon retail outlet to sell trailers using same plans and tooling. American businessman sues Chinese factory and the Oregon retail outlet.

Domain Names Still a Big Deal?

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ICANN recently announced the application period for custom top-level domains for the bargain price of $185,000. But are domain names really that important? Ev Williams (a co-founder of Blogger and Twitter) argues that they’re not. His conclusion:

While a good .com name is still worth a lot, it’s not as crucial to success on the internet as it used to be. And the forces that have made it less important will continue to make it less important over time (especially the mobile-related ones). I’d still opt (and pay up) for a nice, clean .com if I could get one, but I wouldn’t consider it a must have.

Product and brand names, on the other hand, are just as important as ever (or more so in an increasingly  crowded internet). Too many startups have suffered a stupid name to get the domain that fit. Hopefully, entrepreneurs will feel less pressure to do that as the world becomes more auto-complete/app/mobile driven and less-dot-com biased.

(via Marty Schwimmer)

More Dropbox

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I previously wrote about Professor Tushnet’s contention that Dropbox is descriptive. In the comments to her post about Dropbox, Professor Tushnet asks:

What are the good alternatives to “dropbox” for “file uploads that only authorized people can download”? Serious question: I don’t know what the developing lingo is.

I think her description is unnecessarily long–Dropbox is simply an online file sharing (and storage) service. Alternatives that are descriptive would be some variation of that description, like iFileShare, FileSync, or eDocuStorage (sorry, I’m a lawyer not a naming professional). But we don’t need my deficient branding skills to come up with a catchy, suggestive in meaning alternative since Apple has recently launched a new computer feature called AirDrop. Although AirDrop’s function of sharing files from one computer to another directly is not identical to updloading to or downloading from a cloud or SaaS server, AirDrop easily could be used as a suggestive term to identify the source of a cloud-based file sharing service.

Another concern among Dropbox’s competitors might be a Facebook type of problem, where the social media behemoth has claimed both Face and Book as protectable trademarks for social media. If Dropbox is judged to be inherently distinctive, then it would have a stronger basis to assert trademark rights in either Box or Drop for document sharing and storage.

Swoosh

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The Oregonian profiles the Nike swoosh and its origins.

Carolyn Davidson, pushing back disappointment that spring day in 1971, pressed on. One by one, she presented a handful of sketches. But ultimately the three men circled back to the checkmark, her favorite.

“Well, I don’t love it,” Phil Knight said at the time, “but maybe it will grow on me.”

Dropbox descriptive?

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After receiving an email from YouSendIt offering the use of a personal dropbox, which is not a Dropbox dropbox, Georgetown law professor Rebecca Tushnet asks if the use of Dropbox is descriptive fair use. This question resonated with me because I currently have a massive drop box in front of my house as my kitchen gets remodeled. And because I distinctly associate the term drop box with the dumpster outside, to me DROPBOX for storing files in cyberspace is suggestive and not descriptive.

Dropbox has had some difficulties with its trademark registration, but not because it received a mere descriptiveness refusal. Rather it had to overcome a §2(d) (likelihood of confusion) refusal based on two registrations, one for DROPBOX for “Computer software and downloadable software for use in database management, primarily in the field of life sciences research” in International Class 09 and services listed as “Providing temporary use of non-downloadable computer software for use in database management, primarily in the field of biomedical research” in International Class 42, and the other for DROP BOX HD for services listed as “Providing online non-downloadable software for uploading and transferring advertising programs and media advertising communications via global communications networks” in International Class 42.

Dropbox tried to persuade the Examiner that its mark was not confusingly similar but eventually had to amend its description of goods and services as follows:

IC 009. G & S: Computer software and downloadable computer software used to store and share data, documents, files, information, text, photos, images, graphics, music, audio, video, and multimedia content with others via global computer networks, mobile telephones, and other communications networks for the purpose of file back up and synchronization, not including software for use in database management in the field of life sciences research or software for uploading or transferring advertising programs and media advertising communications

IC 039. G & S: Storage of electronic media, namely, data, documents, files, text, photos, images, graphics, music, audio, video, and multimedia content

IC 042. G & S: Providing temporary use of non-downloadable computer software used to store and share data, documents, files, information, text, photos, images, graphics, music, audio, video, and multimedia content with others via global computer networks, mobile telephones, and other communications networks for the purpose of file back up and synchronization, not including software for use in database management in the field of biomedical research or software for uploading or transferring advertising programs and media advertising communications; hosting of digital content on the internet

This kind of disclaimer is one way to get past a particularly difficult §2(d) refusal and satisfy the Examiner, although registrants with similar marks still have a chance to oppose during the opposition period. The Dropbox application, however, has been stalled because three companies filed extensions of time to oppose, YouSendIt, box.net and OfficeWare, none of which are the owners of the registrations cited in the Examiner’s §2(d) refusal. YouSendIt and box.net have cloud-based document storage businesses and I would guess that they agree with Professor Tushnet that the mark is descriptive and Dropbox Inc. has not exclusively used the mark.

Passing off hard to Swallow

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Swallow Ski Company, a Japanese manufacturer of ski and snowboarding equipment, recently filed a complaint in Oregon federal district court against Snowjam LLC, a Massachusetts company. In 1996, Swallow Ski entered into an oral licensing and distribution agreement with Snowjam. Snowjam sells and distributes Zuma snowboards, but is now under new ownership. On May 23, the original owner of Snowjam, after he had sold the company, memorialized the oral licensing agreement with a written agreement executed by him and Swallow Ski. The agreement expressly provides that the licensing of the trademark would not survive any change of ownership. The complaint alleges that because of the non-assignment provision of the licensing agreement, use of Swallow Ski’s Zuma trademark results in false designation of origin and breach of contract.

Swallow Ski v. Snowjam
Swallow Ski just filed a use-based trademark registration application on May 13, claiming use since 1996. Snowjam filed its own application about two months earlier on March 23, 2011, claiming use since 2008.

LaCrosse and Danner go after alleged knock-off boots

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In Oregon federal district court, LaCrosse Footwear, Inc. has filed a trademark infringement complaint against Pro Line Manufacturing Co. LLC. Danner, Inc. (owned by LaCrosse) has filed a similar complaint against Rocky Brands, Inc. Both complaints allege the infringement of two popular boots’ trade dress. Trade dress is the entire image or overall appearance of a product, and can include a product’s size, shape, color combinations, texture, or graphics.
LaCrosse Footwear Complaint
LaCrosse Footwear Complaint

In addition to proving that the boots have acquired distinctiveness and that consumers are likely to be confused, LaCrosse and Danner must also prove that their trade dress is non-functional. A product’s features are functional if there is a competitive need to use them, they are essential to the use or purpose of the product, or they affect the product’s cost or quality.

Your Animal Doing a Trademark

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Matthew Latkiewicz at GrubStreet has a funny article about the taxonomy of wine labels. A taste:

Animals Doing Things
A close cousin of Diluted French, these labels often contain exactly the same information as the D.F., but instead of featuring a chateau, they are named for an animal, which is often doing something. That “something” is usually leaping.
What to Expect: The Animal label began as a solidly American genre, but those Australians sure have taken to it, though with way more marsupials. They’re often from big producers, but these wines tend to stick their landings. (Yes, that is a gymnastics reference.)

If you’re a wine producer, your animal doing stuff is serious business and needs a trademark attorney to make sure your animal doing stuff isn’t confusingly similar to another wine’s (or beer or spirits) animal doing stuff.

(via kottke.org)

Pendleton v. Pendleton, Opposition Filed

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The federal court lawsuit is getting the media attention, but on May 17, Pendleton Woolen Mills also filed a TTAB opposition against Pendleton Round-Up’s application for fragrances:

Pendleton Woolen Opposition Filing