Charlie Sheen has just filed for trademark protection on 22 catchphrases including:

“Duh, winning” – “Vatican Assassin” – “Tiger Blood” – “Rock Star from Mars” – “Cobra Venom” – “Adonis DNA” – “Sober Valley Village” – “Sheen’s Goddesses” – “I’m not bipolar, I’m bi-winning.” – “My Violent Torpedo of Truth”

…to name a few. I guess not that he’s not getting his 1.8 million an episode from Two and a Half Men, he needs some extra cash? Until researching Sheen’s mission to trademark his phrases, I was unaware of how many other people, show, etc. have trademarked some pretty obvious statements. Donald Trump trademarked “you’re fired.” Paris Hilton, “that’s hot.” Emeril Lagasse, “bam!” It seems strange that by simply repeating a phrase publically, there is a basis  for ownership.

It seems that this need to trademark nearly everything has extended beyond traditionally trademarked materials. For example, T-Mobile trademarked the color magenta. In this case, the company “has been the owner of the color mark No. 395 52 630 ‘magenta’ since September 12, 2000 which was registered on the basis of a proven secondary meaning (for goods and services in the field of telecommunications.)” I have two problems with this:

1. When I see a color, I do not associate it with a corporation, nor do I think it’s “off-limits.” And when did colors ever prove to have secondary meaning?

2. Doesn’t the field of telecommunications encompass nearly all media? Internet, telephone, television, radio, cable…

This made me wonder, should trademark have a “novel and nonobvious” clause as well? If even patent provisions have become relatively lax on their nonobvious clause, what’s next for trademark law? While this seems to make much more sense, upon further consideration, I realized that it’s unlikely to actually work when put into practice. Trademark covers such a vast area of material that requiring novelty and nonobviousness would not serve the same purpose as patent law does (although trademarking colors still seems kind of abusive).

From a governmental point of view, laws like this serve to protect the consumer from confusion in the market and buying inferior products by mistake. Yet, some individuals argue that trademark owners should lose their right to sue infringers entirely, on the basis that consumers know what they are getting themselves into when they are buying a fraudulent product. This school of thought assumes a certain degree of intelligence among consumers, stating that they would be able to distinguish between the real and the fake.

But, I have doubts. I’ve found that most vendors of “knock-off” products are seeking to make a profit (just as the legitimate companies are) by scaling up the price of knock-off products to not much less than  retail of an authentic one. I know I have difficulty distinguishing real items from fake ones, so what’s stopping replica sellers from charging the same price as the authentic?

Determining the nonobviousness is probably entirely too subjective to judge for trademarks. Even things that seem obvious – Apple for instance – are not necessarily obvious to its field. Apple is not obvious for computers, nor is Blackberry obvious for cellphones. Examining novelty is another obstacle. For example, take the Nike checkmark, or “swoosh.” That is not novel in a sense, but it’s become commonly associated with Nike.

The tension here is that even with something as simple as a checkmark, a company is forced to obtain a trademark to prevent millions of others from ripping off their design, which would result in enormous losses in revenues for the original company. People are certainly doing it now (watches, handbags, etc.), albeit illegally, but unless that mark was viably available, they could do it with impunity.

In cases such as these, I definitely see the benefits of trademark. Although recent trends of trademarking common phrases and even color are certainly pushing it, instituting a clause requiring novelty and nonobviousness, like that of patent law, appears to be too complicated and unjustified.

www1.nysd.uscourts.gov/cases/show.php?db=special&id=83

 

The rapid development of the Internet has enabled various new ways for sellers to connect to buyers and to expand their businesses past geographical barriers.  But, as commerce advanced so did the forums for counterfeiting and infringement.  Similar to the Google and Louis Vuitton trademark case, Tiffany v. eBay brings to light yet another instance of infringement via the Internet.

In this case, Tiffany’s asserted that eBay “actively advertised the availability of Tiffany merchandise” on their website, which is in no way an authorized vendor of the brand.  The allegations against eBay included direct trademark infringement under federal and common law; contributory trademark infringement under the federal and common law; unfair competition under federal and common law; false advertising under the Lanham Act; trademark dilution under federal law; and contributory dilution.

The Court outright rejected Tiffany’s direct infringement claims, which I do agree is the least sound of the arguments, contending that eBay, and any other vendor, should be free to use “Tiffany” to accurately describe a jewelry that is, technically, from the Tiffany collection.  To this, Tiffany rightfully argued that eBay should be held liable for the rampant sales of counterfeit Tiffany jewelry on their website.  Because all Tiffany’s merchandise sold on the site is not counterfeit, and because eBay quickly takes down listings when Tiffany’s sends directed notes, the United States District Court for the Southern District of New York ruled in favor of eBay, stating that “the law is clear: it is the trademark owner’s burden to police its mark, and companies like eBay cannot be held liable for trademark infringement based solely on their generalized knowledge that trademark infringement might be occurring on their websites.”

Aside from direct trademark infringement charges, eBay should seemingly be held liable for contributory trademark infringement, trademark dilution and contributory dilution.  The eBay platform cultivates a context catering to a variety of sellers, sometimes anonymous, which allows them to very easily and intentionally sell second-hand and counterfeit goods.  The website knowingly makes it overly easy to do this.  In this sense, eBay is enabling and facilitating trademark infringement and the charge of contributory trademark infringement seems applicable.  In addition, sellers on eBay are peddling used or fake Tiffany’s jewelry.  Tiffany is a considered a luxury brand, and it’s jewelry something not easily attainable by the general population.  The company has spent time and resources to develop a high-end brand, and sellers on eBay undermine the brand and diminish value.  In this way, eBay should be held liable for trademark dilution and contributory dilution.

The ruling in this case basically holds that, regardless of the fact that Tiffany and other luxury brand companies have invested enormous resources into developing their brand, they are nonetheless responsible for monitoring all activity and counterfeit activity pertaining to their brand.  This extensive responsibility is unreasonable considering the scope of the Internet and marketplace websites such as eBay, and the ruling in this case reinforces the illicit and explicit exploitation of luxury brand companies via the Internet.  Ebay should bear the burden of monitoring the activity on their website because it is just that, their website.  In the interest of integrity and accountability as well as wanting to facilitate the exchange of quality goods, they should monitor the transactions taking place on their site and should screen the sellers.

source: http://farm4.static.flickr.com/3407/3637301613_2dede682bf.jpg

If you visit Nissan.com you’ll wonder why you aren’t able to see, learn about, and purchase the newest models of Nissan automobiles. That’s because the website actually belongs to a small North Carolina based computer reseller and has been the centerpiece of a now decade-long trademark infringement case against a man who continues to claim that he has every right to use and maintain Nissan.com to promote and sell his products.

According to his website, as far back as 1980, when Nissan Automobile was actually Datsun, Uzi Nissan has been operating businesses under his surname. In 1991 he founded Nissan Computer Corporation to sell “computer hardware, computer maintenance, networking, computer training and other consulting services related to computers.” On June 4, 1994 he registered the domain name Nissan.com to promote his computer hardware and peripherals business and two years later he registered Nissan.net to use to promote his internet services business.

In December 1999 Nissan Motor filed a $10 million lawsuit against Nissan Computer claiming cyber-squatting, trademark infringement, and trademark dilution. What resulted was a decade-long legal battle which exposed just how far large companies are willing to go in order to obtain and protect a veritable web presence. According to Nissan Computer’s website, the first round of summary judgments led to rulings in favor of Nissan Computer on all claims with except for the dilution claim. This led Nissan Motor to file a second round of summary judgments with some interesting results. The court actually changed the date for judging the “fame” standard from 1991 to 1994 and then ruled that by 1994 Nissan Motor was indeed famous and that Nissan Computer had diluted its trademark.

The case continued to a final injunction which allowed Nissan Computer Corporation to maintain control of the domains Nissan.com and Nissan.net so long as it neither advertised nor mentioned/made disparaging comments about Nissan Motor. Nissan Motor then filed a series of appeals that ultimately resulted in the same judgment in favor of Nissan Computer Corporation

Probably the most interesting takeaway from this entire fiasco is the fact that the internet has grown so rapidly and so dramatically in the past decade and a half which has led large and moneyed organizations to pour resources into maintaining and protecting their web presences. While Nissan Computer Corporation’s claim to both Nissan.com and Nissan.net are very legitimate, Nissan Motor’s interest in both domains is so great that it is willing to pour vast amounts of legal resources into effectively bullying a small company into handing them over. Although the web is an open platform it operates within the same laws and constraints of society which can find interesting ways to favor those in power or with access to substantial resources…like trademark infringement lawsuits.

 

Trademarks.

For a long long time, companies have been extremely uptight, pleading people not to promote the “genericide” of their trademark. Genericide occurs when a trademark becomes the colloquial or generic description for, or synonymous with, a general class of product or service. The trademark loses its “secondary meaning” loses its secondary meaning and such loss can be caused by turning a trademark into a verb.

Photoshop It

Skype Me

Facebooking

Tweet? (more on this later)

In the 1990s, Xerox spent thousands of dollars in a campaign to urge consumers to use “photocopy” rather than “xerox” documents. As an article in the New York Times says, “The fear was that if ‘to xerox something’ became another way of saying, ‘to photocopy something,’ the term would end up defining not what Xerox is (a company that makes a distinctive brand of copiers), but what Xerox’s products do (make photocopies). In the process, the difference between Xerox and its competitors would begin to melt away.”

 

But today in the digital age, the genericide of trademarks may not be such a bad thing. When your company’s name is used as a verb, it is partly a sign that “you’ve made it.” You are a dominant company in the marketplace and your influence is likely to spread. (Dictionary)

 

Even when I tried to use Bing as my primary search engine, I would have friends send me emails and run up to me telling me to “google” (v) a video or news article. Long behold, I was back on “Google” (n) 100% of the time.

 

“The risk of becoming generic is so low, and the benefits of being on the top of someone’s mind are so high,” says Rebecca Tushnet, an expert on trademark law at Georgetown University.

Nonetheless, some companies in this digital age are still concerned with genericide. In an effort to control its brand name, Twitter trademarked the term “tweet.” When users posts something on twitter they issue a “tweet.” By taking this action, Twitter has enhanced its control on the term “Twitter” and has provided a term users can use to describe what they do through Twitter’s services – “tweet.”

Personally, I understand the concerns of corporations and owners of trademarks. Nonetheless, having your trademark be used as a verb is actually a good sign for your company. Verbs are active. Verbs are precise. And sometimes, verbs are just catchy.

Verbs are Catchy