Web 3.0 and the promise of the metaverse has generated excitement about new markets for businesses large and small. But as with any technological frontier, legal uncertainties cause new risks to emerge alongside the opportunities. One area currently full of legal questions is trademark law. We will examine what we
Trademark
On the Mark: Understanding the Supreme Court’s Latest Decision Regarding the Treatment of Trademark Licenses in Chapter 11
By Maja Zerjal, Steve Ma & Vincent Indelicato on
On May 20, 2019, in Mission Product Holdings, Inc. v. Tempnology, LLC, 587 U.S. ___ (2019), the Supreme Court resolved an area of ongoing concern for parties to trademark licenses. The court addressed a circuit split on whether a trademark licensee may continue to use a trademark for the term of the license, after the license has been rejected in bankruptcy. In Mission, the debtor-licensor rejected a trademark license agreement and sought to terminate the licensee’s right to use the debtor’s trademark. This decision has important ramifications to parties to trademark licenses.
Google Escapes Genericide Claim in Ninth Circuit Decision
By Theresa Smith on
On May 16, 2017, the Ninth Circuit rejected a petition for cancellation of the GOOGLE trademark based on a “genericide” theory that claimed Google should lose its trademark protection because the word “google” has become synonymous to the public with the term “search the internet.” (See Elliott v. Google, Inc., 2017 WL 2112311 (9th Cir. May 16, 2017)).
Genericide, or a claim of genericness that would allow for cancellation of a trademark, occurs when the public appropriates a trademark and uses it as a generic name for particular types of goods or services irrespective of source. The accusation of genericide is ironic: that because brands have become so popular, consumers simply use their names generically for a type of product, and thus brands should no longer be trademarked. Such genericide can occur due to a trademark owner’s failure to police the mark, resulting in widespread usage by competitors leading to a perception of genericness among the public.
Trade Dress Can Be Viable Means of Protecting Websites from Competitor’s Look-Alike Sites
By Jessica Goldenberg on
Somewhere between a well-recognized website design like Google’s home page and a fledgling e-commerce venture built with free web building software lives most other websites. Depending on the investment in the development and the operator’s design ethic, some websites may display unique, distinctive portals that are key to attracting and…
Jury Returns Contributory Trademark Infringement Verdict against Web Site Hosting and SEO Services Provider for a Client’s Sales of Counterfeit Golf Clubs
By Jeffrey Neuburger on
A recent jury verdict of $770,750, in statutory damages for secondary trademark infringement against Bright Builders, a Web hosting and SEO service provider, will serve as a reminder to service providers that there is no statutory safe harbor for contributory online trademark infringement. Unlike the copyright infringement safe harbor provisions…
Credit Card Services Firms with Knowledge of Sales of Infringing Merchandise May Be Liable for Trademark Infringement
By Jeffrey Neuburger on
In Gucci America, Inc. v. Laurette Co. No. 1:2008cv05065 (S.D.N.Y.), the luxury goods manufacturer succeeded in shutting down a Web site called "TheBagAddiction.com" through which the defendants sold counterfeit Gucci handbags. In fact, the defendants consented to the entry of judgment and admitted liability for trademark infringement. In a subsequently filed action, Gucci America, Inc. v. Frontline Processing Corp., 1:2009cv06925 (S.D.N.Y.) the manufacturer sought to hold firms that provided credit card processing services to the operators of TheBagAddiction.com site liable for trademark infringement as well. On June 23, the court in Gucci v. Frontline refused to dismiss Gucci’s complaint, finding that the two firms that processed credit card payments for transactions consummated on the site, as well as the company that brought the Web site operator and the processing firms together, may be liable for contributory trademark infringement.
Second Circuit Reverses in Rescuecom v. Google: AdWords Use of Trademark is a “Use in Commerce” under the Lanham Act
By Jeffrey Neuburger on
The Second Circuit decided to celebrate the one year anniversary of the oral argument in Rescuecom v. Google by issuing its long-awaited opinion. The court reversed the district court’s dismissal of the trademark owner’s Lanham Act claims, holding that “Google’s recommendation and sale of Rescuecom’s mark to Google’s advertisers, so as to trigger the appearance of their advertisements and links in a manner likely to cause consumer confusion when a Google user launches a search of Rescuecom’s trademark, properly alleges a claim under the Lanham Act.”
If It Quacks Like a Duck [Tour], It’s Generic – Especially If Your Own Web Site Says So
By Jeffrey Neuburger on
In a dispute between the operators of rival “amphibious sightseeing tours,” a panel of the First Circuit disagreed with the trial court’s conclusion that the phrase “duck tours” was non-generic, and vacated the entry of a preliminary injunction against the defendant’s use of the term. Boston Duck Tours, LP v. Super Duck Tours, LLC, 2008 U.S. App. LEXIS 12771 (1st Cir. June 18, 2008).
What’s a “duck tour,” you ask?