Battle of the Bubbles in Europe — Legitimate fair use or not

British mobile phone network Hutchison 3G was cleared of trademark infringement and unfair comparative advertisement claims by rival operator ‘O2’in the UK High Court on March 23, 2006. The case was one of the first to consider how trade mark laws should interact with a more recent European directive on comparative advertising. The Hutchinson advertising campaign explicitly compared the price of the parties’ mobile phone services, making use of the bubble imagery which O2 trademarked and had used in high profile marketing campaigns over the previous five years. Hutchinson’s use of the bubbles "to identify O2 and compare the parties prices" was held to be "legitimate, fair and not misleading to consumers". The Hutchinson 3G advertisement therefore did not infringe O2’s rights under the Trade Marks Directive 97/55/EC or the British Trade Marks Act of 1994. "Taking the advertisements as a whole", the court found no confusion was created between the parties’ trademark and service. Though the O2 bubbles were held to have obtained inherent and acquired distinctiveness as trademarks, O2 failed to persuade the court this gave them a monopoly over the use of bubbles as a source identifier. Allegations that 3G misused the bubbles to attract consumers and thereby damaging O2 were dismissed.
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Seeing Red… US PTO Refuse to Register Scandalous Matter as Trademark

In re Red Bull GmbH (Serial Number 75788830), the United States Trademark Trial and Appeal Board ruled that in holding matter to be immoral or scandalous within the meaning of Section 2(a), the burden is on the examiner to demonstrate that the applicant’s mark is "shocking to the sense of truth, decency or propriety" of contemporary attitudes in "the context of the marketplace as applied to the identified goods.." It is sufficient if a substantial composite of the general public consider the mark to comprise scandalous matter, although a majority is not required. In this instance, applicant sought to register BULLS__T for a variety of alcoholic and non-alcoholic beverages and hospitality services. The examining attorney refused the application relying on the prior 1981 decision In re Tinseltown, Inc 212 USPQ 863, wherein the identical mark was refused for handbags and on six definitions taken from on-line dictionaries, of which the Board took judicial notice because the sources were clearly identified and were readily verifiable and reliable. Applicant’s rebuttal evidence illustrating contemporary use of the term in popular culture was insufficient to overcome examining attorney’s prima facie showing that the mark was immoral or scandalous.
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Why the UK believes slogans may not function as trademarks

A recent Practice Amendment issued by the United Kingdom Trade Marks Office (PAN 1/06 — Issued January 2006) attempts to un-muddy the water concerning the registration of slogans as marks in the UK. Basically, the Notice maintains that while no stricter standard is to be applied to slogans than to other marks, slogans "are by their nature, adapted for use in advertising and examination should take full account of notional and fair use in that context." The underlying principle is to question whether slogans truly have the capacity to individualize the goods or services of an undertaking or whether their primary function is to serve as a promotional statement. Accordingly, examination of slogans should fall alongside other non-conventional marks that the public is slow to recognize as source identifiers. Thus, unless the slogan mark is obviously fanciful, impenetrable or unusual, resistance to registration should be anticipated.
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THREE AND A HALF YEARS ENOUGH FOR LACHES

Three and a half years is a sufficient delay for the purposes of establishing laches, according to the TTAB. The Board found that under §22 of the Trademark Act, Petitioner had constructive knowledge of Respondent’s registration as of the registration date. Although Petitioner prevailed by a preponderance of evidence in demonstrating a likelihood of confusion, the Board took a very dim view of the fact that the Petitioner in its pleadings had remained "conspicuously silent regarding it reasons for the delay" in commencing the cancellation action. Both parties used the mark GOLD SEAL, one on aircraft engine transmission harnesses and the other on aircraft engines. The marks had coexisted for over 10 years without there being any known instances of actual confusion. The Board found Respondent’s investment in and development of its trademark during the intervening "prolonged (three and a half year) period" between registration and Petitioner’s action demonstrated sufficient evidence of economic prejudice to support laches. Teledyne Technologies, Inc. —v- Western Skyways, Inc. (Cancellation 92041265)
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ADWORDS AND TRADEMARK LINKING UPDATE

"Where keyword placement of . . . advertising is being sold, the portals and search engines are taking advantage of the drawing power and goodwill of these famous marks." McCarthy on Trademarks & Unfair Competition § 25:70.1 (2004). Presently, the ultimate determination of liability remains unclear. In early 2005, Google faced potential liability for facilitating trademark infringement. Its "Adwords" program charged a fee to attach unaffiliated advertisements for competitor products to the results of searches incorporating trademarked words or terms. GEICO v Google (E.D. Va. 2005).The case later settled. More recently, Office Depot initiated a trademark infringement action against competitor Staples who purchased the keyword "VIKING". Viking Office Products is a subsidiary of Office Depot. In part, these cases focus on the theory of Initial Interest Confusion, a doctrine permitting a finding of infringement in circumstances involving only temporary confusion and where any confusion is dispelled before a purchase is actually made. What does appear to be settled is that no sale need actually take place for a trademark owner to incur actionable harm. The Internet user will have reached the site because of the defendants' use of another’s trademark and such commercial use can be actionable. Playboy v. Netscape Communications (9^th Cir, 2004).
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PUZZLER: FREEDOM FRIES for FRENCH FRIES NAME OR SOURCE IDENTIFIER?

In re Grand Forest Holdings Incorporated (Serial Number 78220033), the TTAB illustrated just how thin the line can be between descriptiveness and distinctiveness. Despite evidence documenting numerous third party uses of Freedom Fries as a name for French fries, including action by the US House of Representatives changing all references to French fries on the congressional cafeteria menu to Freedom Fries as a gesture of displeasure over France’s opposition to the war in Iraq, the Board, in a Citable Decision found that the record "lack(ed)...significant evidence that, when prospective purchasers encounter the term FRENCH FRIES used on frozen French fried potatoes, they will immediately understand that it identifies a feature, quality, or characteristic of applicant’s goods or that is it a secondary name of applicant’s goods." The record included details of similar menu changes by national restaurant chains such as Fuddruckers as well as a cacophony of newspaper commentary on the issue.
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Registration Fraud

In a January 10, 2006 decision, the TTAB again held that in signing a statement of use, applicants must make a reasonable inquiry as to whether the mark is in fact in use in connection with the goods claimed and cannot simply rely on prior registrations or on the mere fact that his or her attorney prepared the statement of use. Moreover, a subsequent restriction to the registration does not cure the earlier fraud. Fraud in obtaining the registration, however, does not invalidate ones common law rights. Standard Knitting, Ltd. v. Toyota Jidosha Kabushiki Kaisha Opposition No. 91116242.
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The Federal Trademark Dilution Bill

Currently the Trademark Dilution Revision Act of 2005, H.R. 683 is undergoing revision but its main provisions set out several changes in the current law pertaining to trademark holders.

• To violate H.R 683, it need only be demonstrated that a "likelihood of dilution" exists to the owner's famous mark - much less demanding to prove. An owner will not need to wait until the diluter has caused actual economic damage to his trademark, but can redress the danger of injury, resulting from blurring or tarnishment, at its incipiency.

• The FTDA does not define fame but rather sets out an ambiguous list of eight non-exclusive factors by which courts will determine a trademark's fame. Uncertainty plagues trademark owners and courts are hopelessly split. H.R. 683 instead focuses court's consideration of fame to three criteria which will establish the new standard of “whether a mark is widely recognized by the general consuming public of the United States..”

• The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or by third parties.
• The amount, volume, and geographic extent of sales of goods or services offered under the mark.
• The extent of actual recognition of the mark.

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EU Sunrise Update

Sunrise Phase Two of the .eu domain name application process begins on February 7, 2006, and lasts until April 6, 2006. In addition to those who qualified to submit an application during Phase I, owners of any other prior rights recognized by a European Union member state are also qualified to register .eu domains during Phase II. This includes owners of a well-known trademark, an unregistered trademark (if protected in the member state in which the applicant is claiming the right), or the official name of a company as it is registered, trade names, or other business identifiers. The requirements of documentary evidence for the validation process vary depending upon the type of prior right claimed, and may include affidavits signed by the relevant competent authority attesting that the right claimed is protected by the particular member state, or proof that the right has met the member state's requirements to receive the protection of the prior right claimed. This second requirement in many instances may be fulfilled in the form of a Final Judgment by a court, a Certificate of Incorporation, or extract from a corporate registry.
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