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Bradley Lecture Trademark

Bradley Lecture Trademark. IM 350 – Fall 2012 Steven L. Baron October 18, 2012. Top Trends In Trademark. Trademark Application Metrics New gTLD Political and Celebrity Trademarks The latest on keyword advertising Supreme Court update. Trademark Application Metrics.

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Bradley Lecture Trademark

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  1. Bradley LectureTrademark IM 350 – Fall 2012 Steven L. Baron October 18, 2012

  2. Top Trends In Trademark • Trademark Application Metrics • New gTLD • Political and Celebrity Trademarks • The latest on keyword advertising • Supreme Court update

  3. Trademark Application Metrics Total number of applications filed in USPTO including all classes on a fiscal year basis

  4. New gTLD • Generic top-level domain name • Instead of .com, .org, and .net, there will be .pepsi, .kodak, .nike etc. • ICANN application fee = $185,000

  5. New gTLD Application Period began on January 12, 2012

  6. Political and Celebrity Trademarks • Celebrities: • Sheen • Kardashian • Snooky • Paris • Political TMs • Seal Team 6 – Disney • Occupy Wall Street

  7. The Latest in Keyword Advertising

  8. The Latest in Keyword Advertising To win on infringement, plaintiff must show: 1) it has a valid, registered trademark that is entitled to protection; 2) that defendant used the mark; 3) that the use was in commerce; 4) that the use was in connection with the sale or advertising of goods or services; and 5) that the use was without plaintiff’s consent.

  9. The Latest in Keyword Advertising • Legal question: is employing a word or phrase in keyword advertising “use in commerce” that would trigger trademark infringement?

  10. The Latest in Keyword Advertising • Answer: Yes • Rescuecom Corp. v. Google, Inc., 562 F.3d 123 (2d Cir. 2009) • Fair Isaac Corp. v. Experian Information Solutions, Inc., 645 F. Supp. 2d 734, 760 (D. Minn. 2009) • Network Automation, Inc. v. Advanced Systems Concepts, 638 F.3d 1137, 1145 (9th Cir. 2011)

  11. Trademark Law in the Supreme Court • Already, LLC v. Nike, No. 11-982 • Nike sued YUMS back in 2009 alleging trademark infringement, unfair competition, and dilution under both federal and NY state law.  • YUMS counterclaimed seeking to cancel Nike’s registration. • While in suit, Nike provided a covenant not to sue YUMS over the specific line of footwear and colorable imitations.

  12. Trademark Law in the Supreme Court

  13. Trademark Law in the Supreme Court • YUMS maintained its declaratory judgment suit even after covenant. • District Court and Second Circuit dismissed YUMS’ claim because there was no ongoing case or controversy.

  14. Trademark Law in the Supreme Court • Whether a federal district court is divested of Article III jurisdiction over a party’s challenge to the validity of a federally registered trademark if the registrant promises not to assert its mark against the party’s then-existing commercial activities. • Circuit split between the 2nd Circuit and the 9th Circuit, which is much more friendly to DJ trademark actions in this type of situation. • Petition highlights Supreme Court precedent that suggest broad jurisdiction should be available to challenge the validity of suspect intellectual property rights. 

  15. Ask Mr. or Ms. IP - Trademark After graduating from Bradley University, you get a job as a programmer/marketing director for a new internet start-up that allows consumers to order food for delivery or pick-up via the consumer’s computer or mobile device. You come up with a great marketing plan whereby students at local colleges can find restaurants near campus from which they can order online or via mobile app. You set up the program so that students can type in the name of their school and the system will automatically spit out results like the following. A. “Browse Bradley University restaurants – click here XXXX.” • In some cases, you would like to have the school logo pop up, like this: and the student would click the logo to get a list of restaurant. • Finally, you plan to purchase Google AdWords, including the names of selected universities, like Bradley University, so that when student type in search phrases like “restaurants near Bradley University,” sponsored links will emerge on the page that will allow students to link to your site.

  16. Ask Mr. or Ms. IP – Trademark Questions: • From a trademark standpoint, do you have any concerns about item A, if so what concerns do you have and how would you mitigate that risk? • From a trademark standpoint, do you have any concerns about item B, if so what concerns do you have and how would you mitigate that risk? • From a trademark standpoint, do you have any concerns about item C, if so what concerns do you have and how would you mitigate that risk?

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