Database Name: McCarthy on Trademarks and Unfair Competition
Database Identifier: MCCARTHY
Coverage
Current through the September 2009 print update (Release 51)
Release 51 contains text revisions and case annotations to reflect the latest legislative, treaty, and case law developments, including:
| Use of Designation in Text of Web site.The standard rule that a word buried in the middle of text in an advertisement or order form is not a trademark use applies equally to Web pages. The Trademark Board held that there was no trademark use of a word contained in the text of a Web page from which a product could be ordered. In re Brian Jay Osterberg, s3:3. |
| Adding Initials to a Surname.The Trademark Board distinguished the precedent of a 1953 CCPA case that held the designation "S. SEIDENBERG & CO'S." to be primarily merely a surname. The TTAB held that "J.J. YELEY" was a "personal name" and not primarily merely a surname. In re Yeley, s13:30. |
| Years of Preparation Do Not Qualify as Analogous Trademark Use for Priority. The Trademark Board held that eleven years of pre-sales activities before the first sale of a product using the designation as a trademark is not a "commercially reasonable" period of time. No ITU application was filed. Westrex Corp. v. New Sensor Corp., s20:16. |
| Trademark Board Accepts the Doctrine of Progressive Encroachment. The Trademark Board adopted the doctrine of "progressive encroachment," so that a trademark owner is not forced by the laches doctrine to mount a challenge until there is a significant danger to the mark. A deli-bakery chain that expanded from selling bagels (as identified in its registration) to selling pizza was an expansion that excused the senior user's failure for five years to challenge the registration. Jansen Enterprises Inc. v. Rind, s20:77. |
| Foreign Applicant for U.S. Registration Can be Required to Testify in the United States. The Fourth Circuit held an opposer of an application which was filed by a Portuguese company could require the foreign company to produce a Rule 30(b)(6) witness in the United States for a testimonial deposition. Rosencruist-Gestao E Servicos LDA v. Virgin Enterprises Ltd., s20:117.50. |
| Search Engine Use of Trademark as Keyword Trigger for Advertising Can Constitute "Use" of a Trademark. The Second Circuit reversed a grant of a FRCP s12(b)(6) motion to dismiss, reinstated the Complaint and held that because plaintiff alleged that defendant Google displayed, suggested and offered plaintiff's mark to Google's advertising customers, these acts were within the statutory requirement that plaintiff's mark be "used" before there could be infringement. The court cited and agreed with the position taken in this treatise that the Lanham Act s45 definition of what constitutes a "use in commerce" only defines the kind of use that will qualify a mark for registration, not what kind of prohibited use will constitute an infringement. Rescuecom Corp. v. Google, Inc., s25:70.25. |
| False by Necessary Implication. The Second Circuit adopted a rule which places in the category of literally false claims, those advertising claims that, while not explicitly false, are false by "necessary implication." This lessens the burden on the plaintiff in a false advertising case. A television ad for satellite TV service was found false by necessary implication in its comparison of picture quality to that of plaintiff's cable TV service. Time Warner Cable Inc. v. DirecTV Inc., s27:55. |
| Dastar Rule Precludes False Advertising Claim Directed at the Copyright Infringement of Defendant. Applying the policy of the Supreme Court's Dastar precedent, the Ninth Circuit held that the Lanham Act's false advertising prohibitions could not be invoked to raise a claim that required determination of whether a competitor had a proper copyright license. Sybersound Records Inc. v. UAV Corp., s27:77.50. |
| Incidental Use Defense to Right of Publicity Infringement. A new section discusses the right of publicity defense created when there is only a minor or fleeting use of a person's name or image in an advertisement. s28:7.50. |
Content Highlights:
McCarthy on Trademarks and Unfair Competition is a treatise which explains trademark law with clear, concise analyses of cases and statutes, providing advice on registering and protecting trademarks.
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Contents
Content Type: Treatise
This database contains McCarthy on Trademarks and Unfair Competition. This treatise explains and analyzes trademark law with clear, concise analyses of cases and statutes. It provides advice on registering and protecting trademarks.
Publisher/Provider: Thomson Reuters/West
Author: J. Thomas McCarthy is a Senior Professor at the University of San Francisco School of Law, where he has taught for over thirty-five years. He is the Founding Director of the McCarthy Institute for Intellectual Property and Technology Law, located at the University of San Francisco. He is of counsel with the law firm of Morrison & Foerster.
| CITE AS: |
| SOURCE: McCarthy on Trademarks and Unfair Competition (4th ed.) | McCarthy on Trademarks and Unfair Competition, 4th Ed. |
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