We are pleased to inform you that our office now has access to a brand new Pharmaceutical and Name Safety Trademark Search Report. This new report is a unique Pharmaceutical Research Report that meets the demanding needs of the pharmaceutical trademark professional.

At this time, our search provider is the only company that includes POCA (Phonetic Orthographic Computer Analysis) in every pharmaceutical search. POCA is a powerful phonetic and orthographic algorithm developed and made available by the FDA to help identify drug and biologic names and medical terminology that are phonetically and orthographically similar to one another and provides a percentage ranking based on similarity of the names. See http://www.thefederalregister.com/d.p/2009-02-17-E9-3170. The FDA uses POCA as part of its evaluation process. Using POCA in the trademark clearance process will permit trademark attorneys and name safety specialists to be more objective in their analysis of existing names and to predict with greater success whether or not a drug name will be approved by the FDA.

Other key features of this exclusive report and support the FDA PDUFA 1V Pilot Project are:

• FDA Orange Book records are now in a composite format – Combining products under a brand name and new drug application (NDA) into a single full record including POCA the score.
• Provides key Pharma In-Use information for a quick overview of all jurisdictions cited for a particular mark, while showing the depth of use of the mark globally.
• Name Safety Section contains Drugs@FDA, AERS (Adverse Events Reporting System), VAERS (Vaccine Adverse Events Reporting System).
• USAN Names and Stems – This new section consists of USAN names that fills in the currency gap with the USP Dictionary and checks for occurrences of USAN stems anywhere in the mark.
• New Pharmaceutical industry specific investigative tools – Provides visual images of capsules and tablets along with the drug name and drug strength.

In addition to the above regulatory information, the format of the report has been changed to include a graphic overview of cited marks showing where it fall across all sections, avoiding “flipping” through various common law sections to collect pertinent information.

If you have any questions about this new report, please let us know.

Read about it here.

Verizon has reached a tentative settlement with 2Cool Guys, LLC, Warren Weitzman, and Arnold Trebach over alleged trademark infringement from domain name typos.

Typo domain names involved in the case included varizon.com, vierzon.com, and virazon.com.

Verizon has frequently sued entities that allegedly register and monetize typos of its trademarks.

Section 1(b) of the Trademark Law Revision Act of 1988 allows an applicant to file a trademark application based on an intent-to-use the mark in commerce. Assuming the application meets all other requirements of registration and proof of use of the mark in commerce is properly submitted, registration can be achieved. The applicant’s priority rights would then be established back to the filing date of the application.

A U.S. trademark application filed on an intent-to-use basis must include a statement that the applicant has a “bona fide intention” to use the mark in commerce. Likewise, if a trademark applicant relies on a foreign registration under Section 44(e) of the Lanham Act as a basis for U.S. registration, it must declare a bona fide intention to use the mark in commerce. A request for extension of protection of an international registration to the U.S. under Section 66 of the Lanham Act is also subject to the bona fide intent to use requirement.

If an applicant has filed an intent-to-use trademark application under Section 1(b) (or under Sections 44(e) or 66), it’s important to put itself in a position to be able to prove its bona fide intent to use the trademark in commerce as of the date the trademark application was filed.

The applicant’s bona fide intent to use the trademark should be documented as much reasonably possible. For example, a system should be created to organize and store proof of any of the following:

• trademark searches conducted;
• logo design work;
• proposed and preliminary marketing plans and test-marketing efforts;
• steps to develop packaging;
• product or service research or development;
• steps to obtain required governmental approval;
• steps to secure suppliers and/or acquire distributors;
• business plans connected to the mark;
• any executive feedback;
• any related domain name registrations;
• consumer surveys;
• correspondence with third party vendors;
• visits with realtors to view potential sites on which to offer the applied-for goods or services;
• quotes for necessary equipment to deliver the applied-for goods and services;
• web site development;
• collaborators or potential investors;
• any correspondence relating to the proposed goods or services;
• any actual current uses of the mark;
• a list of any company personnel involved in the steps taken to effectuate use of the trademark in commerce.

Feel free to contact our office at any time to discuss how your company can develop a system for memorializing the existence of a bona fide intention to use a trademark, or any other trademark law questions that you may have.

Darren M. Geliebter – dgeliebter@lgtrademark.com

G. Mathew Lombard – mlombard@lgtrademark.com

Phone: 212-551-1755

The Second Circuit recently issued a decision  holding that dilution claims can prevail even when the marks at issue are not substantially similar.  Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 2009 WL 4349537, No. 08-3331 (2d Cir. Dec. 3, 2009).  The extent of similarity remains, of course, a significant factor, but one that must be considered along with the other factors as set forth in the 2005 Federal Trademark Dilution Revision Act (“TDRA”) in determining whether or not likelihood of dilution by blurring has occurred.  The six factors set forth in the TDRA are:

1. The degree of similarity between the mark or trade name and the famous mark.
2. The degree of inherent or acquired distinctiveness of the famous mark.
3. The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.
4. The degree of recognition of the famous mark.
5. Whether the  user of the mark or trade name intended to create an association with the famous mark.
6. Any actual association between the mark or trade name and the famous mark.  15 U.S.C. Sec. 1125(c)(2)(B).

In the Starbucks case, the district court found that the lack of substantial similarity between STARBUCKS and CHARBUCKS was sufficient, in and of itself, to defeat Starbucks’ blurring claim.  The Second Circuit reversed, instead holding that it was error to require “substantial similarity.”  Instead, the degree of similarity is but one of six factors to be considered in the dilution by blurring analysis.

Feel free to contact our office at any time to discuss this case and how it may impact your business and intellectual property rights.

Darren M. Geliebter – dgeliebter@lgtrademark.com

G. Mathew Lombard – mlombard@lgtrademark.com

By Phone: 212-551-1755

We take this moment to wish our clients, colleagues and friends and very happy and healthy holiday season!

The Community Trade Mark (CTMs) was introduced in 1996 to cover all 27 countries that comprise the European Union (Member States). In order to maintain a CTM, use of the mark in just one country (however minimal) is enough to sustain a mark.

As of May 1, 2009, the fees for filing a Community Trade Mark application have been reduced significantly – down by 40%, or 44% for electronic filings. There has also been a simplification of the fee structure with the removal of the registration fee altogether.

Specifically, the old CTM application fee (if filed by paper) was 1050 Euros, and has now been reduced to 900 Euros; the CTM application fee (if filed electronically) has been reduced from 900 to 750 Euros, the CTM application fee for a collective mark has been reduced from 1800 to 1300 euros, and the Madrid Protocol registration fee has been reduced from 1450 to 870 euros. The CTM registration fee has been removed completely (it used to be 850 euros).

If you have any questions about utilizing the CTM system, contact our office at any time.

Apparently notable rock bands – including Pearl Jam, R.E.M. and others – have asked the Department of Defense to reveal what songs were used during interrogation of detainees at U.S. prisons, including the Guantanamo Bay detention facility.

In a reaction posted on the campaign’s website, CloseGitmoNow.org, R.E.M. described the unpermitted use of their friends’ music to torture detainees as horrific.

Trademarks are important tools used to protect both consumers and sellers of goods or services. Trademarks identify the origin or source of a good or service, allowing consumers to make informed decisions regarding quality. Trademarks also establish goodwill of businesses that are able to associate the quality of their good or service with their mark. In addition, trademarks ease the marketing and advertising processes as consumers learn to recognize certain trademarks in connection with the related good or service. Validly established trademarks are strongly protected by laws against infringement.

Protection of Registered and Unregistered Trademarks

In general, registered trademarks receive the most protection and are more likely to receive monetary awards for infringement. However, trademarks do not have to be officially “registered” to be protected. The Lanham Act is the federal law on trademarks which offers protection to trademark owners against the false commercial exploitation of their trademarks by competitors.

Under the Lanham Act, federally registered trademark holders can take advantage of the traditional infringement action, while any valid trademark owner may have a federal claim for unfair competition. Regardless of whether the trademark is federally registered, a party claiming the infringement must be able to establish that they have developed a protected interest in a trademark.

Trademark Infringement of Federally Registered Trademarks

The owner of a trademark effectively has a property interest in that mark, and anyone who misuses that mark is “infringing” upon their protected trademark rights. Section 1114 of the Lanham Act provides registered owners of a trademark with an action against anyone, without consent of the registered owner, who:

1. Uses a reproduction, counterfeit, copy or colorable imitation of a registered mark;
2. In connection with the sale, offering for sale, distribution or advertising of goods or services;
3. In interstate commerce;
4. In such a way that is likely to cause confusion, mistake or to deceive (consumers).

False Designations of Origin, False Descriptions and Dilution of Trademarks

Similar to an action for federally registered trademark infringement, section 1125 of the Lanham Act provides valid trademark owners with a civil action against anyone who:

1. Uses any word, term, name, symbol or device or any combination thereof, or any false designation of origin or false or misleading representation of fact;
2. In connection with the commercial advertising and promotion of goods or services;
3. In interstate commerce;
4. In such a way that is likely to cause confusion, mistake or to deceive or which misrepresents the nature, characteristics, qualities, or geographic origin of goods or services.

However, a claim for goods which are marketed in violation of this section does not require the trademark to be federally registered. This section of the Lanham Act generally provides the broader federal claim against unfair business practices.

Likelihood of Confusion

Regardless of whether the trademark is federally registered, it is well established that a plaintiff claiming trademark infringement (or federal unfair competition) must demonstrate that the infringement caused a “likelihood of confusion.” In other words, trademark owners must show that the consuming public would be confused, misled or deceived as to the origin of the defendant’s goods or services caused by the use of their trademark (or a confusingly similar mark).

Factors that courts typically consider in determining whether there is a likelihood of confusion include:

1. The degree of similarity between the marks and of the goods and services;
2. The strength (or distinctiveness) of the plaintiff’s mark;
3.  Any evidence of actual confusion by consumers;
4. The intent of the defendant in adopting its mark;
5. The physical proximity of the goods or services in the retail marketplace;
6. The degree of care likely to be exercised by the consumer; and
7. The likelihood of expansion of the product lines.

Remedies

Since the Lanham Act is primarily remedial in nature, the most frequent remedy awarded to a successful complainant is an injunction. An injunction is a court order which prevents the defendant from engaging in further infringement. Injunctions are the only available remedy in cases where the infringement is found to have been innocent.

In addition, successful plaintiffs may also be entitled to recover monetary damages in the form of profits made by the defendant on the infringement, actual damages sustained by the plaintiff and the plaintiff’s court costs. The court may also award treble damages (up to three times the amount of actual damages) and attorneys’ fees if the trademark was federally registered or the defendant intentionally used a counterfeit mark.