Thank you for sharing!

Your article was successfully shared with the contacts you provided.
In 2007, sweeping developments reshaped the landscape in each sphere of the trademark universe, at once touching the “real world” of traditionally accepted rights, the emerging universe of rights in cyberspace and the procedural underpinnings binding the two. Congress, courts and the Trademark Trial and Appeals Board (TTAB) all attempted to bring cohesion and clarity to various trademark issues. As most are well aware, however, intent and outcome are often at odds. Surveying the scenery of the year that just was, the question arises: Did all go as planned? The Intellectual Property Rights Enforcement Act of 2007 (IPREA), a bipartisan effort to combine the various federal agencies currently enforcing individual facets of IP rights into one unified network, embodies the cohesive spirit of 2007. See S.B. 522, 110th Cong. � 1 (2007). Facilitated by the creation of a coordinator for intellectual property enforcement, who would head the development of an action plan and report annually on the group’s progress, the IPREA weaves multiple, smaller pockets of IP protection into a single shield against illicit use. One of the more ambitious aspects of the bill envisions extending membership in the network internationally, welcoming “like-minded countries” into the enforcement plan. Id. Without question, expanded coordination and accountability would help IP holders protect their assets as Congress intends. Perhaps unintentionally, however, the IPREA could soothe potential global irritation over 2007′s other, less favorable developments in U.S. trademark law. The first cases interpreting and applying the Trademark Dilution Revision Act (TDRA) of 2006 were decided in 2007, bringing some clarity to the issues raised by the passage of this legislation. The TDRA overturned the U.S. Supreme Court’s decision in Moseley v. V. Secret Catalogue Inc., 537 U.S. 418, 432-33 (2003), holding that the Federal Trademark Dilution Act of 1995 required a showing of actual dilution. As a counterbalance, the TDRA strengthened the fame requirement by eliminating geographic and market-niche fame, defining a famous mark as being widely recognized by the general consuming public of the United States. 15 U.S.C. 1125(c)(2)(A). Even though a complete map of the landscape created by the TDRA awaits development, decisions by the 9th and 4th U.S. circuit courts of appeals have demonstrated the limits of the new fame standard and the methods by which to prove likelihood of dilution. In Perfumebay.com v. eBay Inc., nos. 05-56794, 05-56902, 2007 WL 3243998, at *13 (9th Cir. Nov. 5, 2007), the 9th Circuit held that the similarity of the marks, the fame of eBay’s senior mark and the extent of resources expended by eBay to achieve fame were sufficient to show a likelihood of dilution. Thus, an owner of famous marks may be able to stop the use of dilutive junior marks without producing evidence of actual association. While fame is a necessary precursor to any successful dilution claim, the 4th Circuit’s recent decision in Louis Vuitton Malletier S.A. v. Haute Diggity Dog LLC, No. 06-2267, 2007 U.S. App. Lexis 26334 (4th Cir. Nov. 13, 2007), likely indicates that, in the context of a parody, the more famous a mark, the less likely a dilution finding. Although parody is not a complete defense when the parodic use is also a trademark use, the court found it appropriate to consider the parody when determining whether there was likelihood of dilution. The successful parody of Louis Vuitton’s marks led the court to conclude that it was unlikely their distinctiveness would be diminished. This decision may make it more difficult for owners of famous marks to allege dilution successfully when the junior use is arguably a parody. Even as the 4th Circuit limited the value of fame in some dilution cases, the 9th Circuit strengthened the protection afforded famous marks that have commercial value beyond their trademark use. Au-Tomotive Gold Inc. v. Volkswagen of America Inc., 457 F.3d 1062, 1064 (9th Cir. 2006), cert. denied, 127 S. Ct. 1839 (2007). Rejecting arguments that consumers were only interested in the aesthetically functional, nontrademark and unprotectable elements of the merchandise sold by Au-Tomotive Gold � which bore Volkswagen logos � the 9th Circuit found the alleged aesthetic function indistinguishable from the marks’ source-identifying nature. Given the multitude of marks with both aesthetic and source-identifying value, the strengthened protection created by the court’s decision to restrict the aesthetic functionality doctrine puts domestic trademark owners on solid ground. Foreign owners of famous marks unregistered or abandoned in the United States may not be so fortunate. In ITC Ltd. v. Punchgini Inc., 482 F.3d 135 (2d Cir. 2007), the 2d Circuit refused to extend the famous marks doctrine to protect such marks despite language in the Paris Convention indicating that member nations should guard other members’ well-known marks against uses likely to create confusion. Paris Convention for the Protection of Industrial Property, Art. 6bis. April 26, 1970, 24 U.S.T. 2140. Creating a direct conflict with 9th Circuit precedent recognizing the doctrine, ITC suggests that the strength of foreign trademark rights may vary by jurisdiction � a precarious position both for those desiring U.S. protection and for domestic mark owners seeking reciprocal recognition abroad. See Grupo Gigante S.A. de C.V. v. Dallos & Co. Inc., 391 F.3d 1088, 1094 (9th Cir. 2004). While divergent circuit decisions muddied mark owners’ rights under the Paris Convention, the TTAB clarified the application of the General Inter-American Convention for Trademark and Commercial Protection of Washington, better known as the Pan-American Convention. Diaz v. Servicios De Franquicia Pardo’s S.A.C., 83 U.S.P.T.Q.2d (BNA) 1321 (T.T.A.B. 2007) (applying Pan-American Convention Art. 7, Feb. 20, 1929, 46 Stat. 2907, T.S. No. 833). In Diaz, the board held that under certain circumstances the Pan-American Convention may create U.S. priority rights for a foreign mark even though that mark has never been used in the United States. This broad protection may encourage other nations to extend the same rights to U.S. marks and assuage some of the potential ill effects of ITC‘s treatment of the Paris Convention. The realm of cyberspace Cyberspace can be a worrisome place for trademark owners and their advocates as the practical and legal landscapes continue to develop. In 2007, two issues were emblematic of this continuous shifting. On the practical side, the Internet Corp. for Assigned Names and Numbers (ICANN) considered changes to Whois, piquing the interest of trademark owners that rely on Whois to identify cyberinfringers. On the legal side, courts confronted whether using a mark as a metatag or keyword constitutes “use in commerce.” At the close of 2007, both issues remained unresolved. On Oct. 31, ICANN tabled its consideration of the Operational Point of Contact Proposal aimed at addressing privacy concerns. See Final Task Force Report on Whois Services, Whois Privacy Information. ICANN considered both limiting access to Whois and allowing registrars to use proxies. Intellectual property organizations unilaterally opposed these changes because they would make it more difficult to identify cyberspace infringers. See, e.g., Posting of American Intellectual Property Law Association, Posting of International Trademark Association . Ultimately, ICANN resolved to undertake further studies before deciding how to proceed. For now, Whois continues to provide valuable information about the identity of potential trademark infringers in cyberspace. Courts struggled to apply the real-world legal concept of “use in commerce” to cyberspace. The current split in authority over whether the use of marks as keywords or metatags is actionable persisted, as lower courts decided cases in accordance with the precedents in their circuits. Most circuits hold metatag/keyword use actionable based on two notions: that the purchase of a keyword is a commercial transaction (see, e.g., Buying for the Home LLC v. Humble Abode LLC, 459 F. Supp. 2d 310, 322-23 (D.N.J. 2006)), and that marks are used as metatags to trade on the goodwill of the trademark owner. See, e.g., Eli Lilly & Co. v. Natural Answers Inc., 86 F. Supp. 2d 834, 845-47 (S.D. Ind. 2000). A recent U.S. District Court for the Eastern District of New York decision highlighted the split, however, demonstrating that the 2d Circuit and its district courts require use on goods or in connection with the advertising of services for actionability. SitePro-1 Inc. v. Better Metal LLC, 506 F. Supp. 2d 123, 125-26 (E.D.N.Y. 2007). As 2008 begins, trademark owners and practitioners must consider how they can help to make the future cyberspace landscape more navigable. To begin, those affected should continue efforts to maintain and strengthen Whois; additionally, they should seek out the Supreme Court’s view on what constitutes actionable use in cyberspace. Until these issues are resolved, cyberspace will remain an ever-changing and, therefore, landmine-laden terrain for trademark owners. The procedural world Even in emerging arenas of dispute, like cyberspace, there are procedural roots tethering virtual-world problems to real-world solutions. In 2007, tribunals of two kinds � judicial and administrative � considered how properly to apply the procedural bedrocks so common in traditional trademark disputes to the developing landscape of the Internet. Three separate decisions addressed the admissibility of Internet-based evidence in cyberspace infringement actions and, in the process, revealed what is certain to become one of the hottest issues encountered by practitioners in the coming year. As 2007 began, trademark owners had reason to be optimistic about their ability to proffer adequate proof of cyberinfringement; the leading case on Internet evidence admissibility, Telewizja Polska USA Inc. v. Echostar Satellite Corp., No. 02 C 3293, 2004 U.S. Dist. Lexis 20845, at *16-*18 (N.D. Ill. Oct. 14, 2004), which had been in effect for more than two years, had admitted into evidence Web site captures garnered from www.archive.org, a storage ground known as the “Internet Archive.” Id. at *16-*17. Despite objections challenging the printouts as both improperly authenticated and hearsay, the U.S. District Court for the Northern District of Illinois had allowed the jury to consider them as admissions by a party opponent, noting that an affidavit by the Internet Archive employee who had retrieved the Web site satisfied the Fed. R. Evid. 901 threshold for authentication. Id. at *16-*18. During 2007, however, two district courts and the TTAB retreated from the relative safety carved out by Telewizja and its progeny. Chamilia LLC v. Pandora Jewelry LLC, No. 04-CV-6017, 2007 U.S. Dist. Lexis 71246, at *1-*2 (S.D.N.Y. Sept. 24, 2007); Novak v. Tucows Inc., No. 06-CV-1909, 2007 U.S. Dist. Lexis 21269, at *15-*18 (E.D.N.Y. March 26, 2007); Paris Glove of Canada Ltd. v. SBC/Sporto Corp., Cancel. No. 92044132, 2007 TTAB Lexis 84, at *2-*4 (Aug. 22, 2007); see also Beryl A. Howell, “Proving Web History: How to Use the Internet Archive,” J. Internet L., Feb. 2006, at 3, 7 (noting that “in the few cases where challenges” have arisen regarding Internet Archive evidence, it “has been admitted over hearsay and authentication” objections). In all three cases, Internet evidence was held inadmissible due to authentication failures, with one court deeming the material additionally barred by hearsay. See Novak, 2007 U.S. Dist. Lexis 21269, at *15. With this sharp move away from institutional acceptance of archived Internet materials, trademark owners may find it more difficult to prove just what liberties cyber-infringers have taken with their intellectual property. Evidentiary questions hold the power to derail those cases in which infringers remove the illicit use from the Internet before the court � or even the owner � can memorialize the infringement. Though the tribunals of 2007 merely attempted to reconcile traditional rules of evidence with the emerging influence of the Internet, the unique nature of trademark cyber-disputes may not be suited to such a formulaic application. Given the rapid evolution of the typical Web site and the potentially dispositive nature of the issue, trademark owners must continue to monitor the consequences of 2007′s decisions into the new year. Nor were the procedural shifts confined to matters affecting court proceedings. The TTAB instituted changes to its own internal rules in 2007, broadening disclosure requirements and altering the method by which plaintiffs must effect service. As justification for the revamped rules, the board related its desire to increase both efficiency and the fair resolution of disputes while reducing instances of unfair surprise; ultimately, the board hopes the new rules will boost the number of cases that settle early. By the board’s own admission, however, “ninety-five percent or more of Board cases [currently] settle,” which prompts speculation into just how much higher those numbers can reasonably be expected to rise. See Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42,242, 42,257 (Aug. 1, 2007) (codified at 37 C.F.R. 2.99-.176). Indeed, many practitioners wonder whether the increase in costs and time associated with the new rules will divert cases from the TTAB altogether, with parties opting to try their luck in federal court to avoid the “minimum of two and a half years between institution and final decision” they are likely to encounter in board proceedings. Scott Johnston & Greg Golla, “New Procedural Rules Dramatically Alter Practice Before the Trademark Trial and Appeal Board,” Intell. Prop. Today, Sept. 2007, at 28, 29. Whether through settlements or simply the choice of an alternate forum, at least one of the board’s objectives seems certain to be accomplished: It is probable that the TTAB will see fewer actions culminate in trials during 2008. Trademark owners and their advocates have a vested interest in bringing cohesion and clarity to the body of law governing trademark rights in the United States and the entities charged with enforcing those laws. These dual goals were furthered in 2007 and those efforts continue in 2008. Ultimately, regardless of how successful the notable trademark events of 2007 prove to be, they provided the map by which the trademark community will navigate the developments of 2008. James H. Johnson is intellectual property counsel at Atlanta-based Sutherland Asbill & Brennan. He focuses his practice on trademarks and service marks and unfair competition and domain name disputes. Deidre A. Francis is an intellectual property associate at the firm. Brooke R. Hardy and Jason M. Prine, associates at the firm, assisted in the preparation of this article.

This content has been archived. It is available through our partners, LexisNexis® and Bloomberg Law.

To view this content, please continue to their sites.

Not a Lexis Advance® Subscriber?
Subscribe Now

Not a Bloomberg Law Subscriber?
Subscribe Now

Why am I seeing this?

LexisNexis® and Bloomberg Law are third party online distributors of the broad collection of current and archived versions of ALM's legal news publications. LexisNexis® and Bloomberg Law customers are able to access and use ALM's content, including content from the National Law Journal, The American Lawyer, Legaltech News, The New York Law Journal, and Corporate Counsel, as well as other sources of legal information.

For questions call 1-877-256-2472 or contact us at [email protected]


ALM Legal Publication Newsletters

Sign Up Today and Never Miss Another Story.

As part of your digital membership, you can sign up for an unlimited number of a wide range of complimentary newsletters. Visit your My Account page to make your selections. Get the timely legal news and critical analysis you cannot afford to miss. Tailored just for you. In your inbox. Every day.

Copyright © 2021 ALM Media Properties, LLC. All Rights Reserved.