Apple Now Has Its Own Sound Barrier

Have you ever picked up your iPhone to ask Siri® a question and wondered if those familiar iOS beeping sounds are protected by one or more federally registered non-traditional trademarks?  Of course you have.  Well, wonder no more—as the iPelton® blog reports, Apple owns numerous non-traditional trademark registrations for product designs, icons, screen displays, store layouts, and yes, sounds (see an earlier post on sound trademarks here).  For example, the soothing, synthetic sound of Siri’s voice is invariably accompanied by the sounds of U.S. Registration No. 4689043, for “a synthesized bell tone playing a G#5 sixteenth note, followed by another G#5 sixteenth note,” and its companion No. 4689044, for “a synthesized bell tone playing a C#5 sixteenth note, followed by another C#5 sixteenth note.”

Lest users of Mac OS computers feel unprotected (or worse, slighted), Apple also took the trouble of federally registering its venerable Mac OS startup chime as No. 4257783, which, for the curious, “consists of a synthesizer playing a slightly flat, by approximately 30 cents, G flat/F sharp major chord.”  Since these sound marks were in use long before Apple became the most valuable company in the universe, it is possible to conclude that the three registrations for these marks are almost single-soundedly responsible for the company’s meteoric rise and vaunted position in the annals of capitalism.  Or maybe it was mostly product design and marketing.  In any event, anyone who tries to use Apple's registered sounds without authorization is likely to receive a sonic boom from the company's lawyers.  Hear the registered sound marks below, and see the three registrations here, and here, and hereReposted from the iPelton® blog.

By matt buchanan (originally posted to Flickr as Apple iPad Event) [CC BY 2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.

By matt buchanan (originally posted to Flickr as Apple iPad Event) [CC BY 2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.

Today in Copyright History: 3/27

On March 27, 1991, the U.S. Supreme Court decided Feist Publications, Inc. v. Rural Telephone Service Co., finding a white pages telephone directory to be uncopyrightable, and holding that the sole basis for copyright protection is creative originality.  Reposted from the History of Copyright Timeline at the U.S. Copyright Office.

By © 2010 by Tomasz Sienicki [user: tsca, mail: tomasz.sienicki at gmail.com] [GFDL (http://www.gnu.org/copyleft/fdl.html) or CC BY 3.0 (http://creativecommons.org/licenses/by/3.0)], via Wikimedia Commons.

By © 2010 by Tomasz Sienicki [user: tsca, mail: tomasz.sienicki at gmail.com] [GFDL (http://www.gnu.org/copyleft/fdl.html) or CC BY 3.0 (http://creativecommons.org/licenses/by/3.0)], via Wikimedia Commons.

Supreme Court Rules in Trademark Preclusion Case

Yesterday, the U.S. Supreme Court issued its second trademark ruling of this term, holding in B&B Hardware, Inc. v. Hargis Industries, Inc., No. 13-352, that “a court should give preclusive effect to TTAB decisions if the ordinary elements of issue preclusion are met.”  In this case, discussed in earlier posts here and here, petitioner B&B owns and uses the registered mark SEALTIGHT® for sealing fasteners.  Respondent Hargis petitioned to cancel B&B’s registered mark in order to register its own phonetically identical mark SEALTITE for sealing fasteners, but the Trademark Trial and Appeal Board (TTAB) held that Hargis’s SEALTITE mark created a likelihood of confusion with B&B’s SEALTIGHT mark, and refused to cancel B&B’s mark or register Hargis’s mark.  B&B then sued Hargis in federal court for trademark infringement, but, contrary to the TTAB’s finding, the jury found no likelihood of confusion and ruled against B&B.  The Eighth Circuit Court of Appeals upheld the district court’s ruling, declining to give preclusive effect to the TTAB’s prior finding of a likelihood of confusion.

Yesterday’s ruling by the Supremes addressed the issue of “whether the District Court in this case should have applied issue preclusion to the TTAB’s decision that SEALTITE is confusingly similar to SEALTIGHT.”  Finding that “the Eighth Circuit rejected issue preclusion for reasons that would make it difficult for the doctrine ever to apply in trademark disputes,” the Supreme Court reversed the Eighth Circuit’s decision, and instructed that “[o]n remand, the court should apply the following rule: So long as the other ordinary elements of issue preclusion are met, when the usages adjudicated by the TTAB are materially the same as those before the district court, issue preclusion should apply.”  The decision has the practical effect of making TTAB registration decisions potentially much more consequential with respect to subsequent infringement determinations between the same parties in federal court, and therefore will almost certainly affect the strategies and practices of litigants before both tribunals.  Read the Court’s opinion here.

Joe Ravi [CC BY-SA 3.0 (http://creativecommons.org/licenses/by-sa/3.0)], via Wikimedia Commons.

Joe Ravi [CC BY-SA 3.0 (http://creativecommons.org/licenses/by-sa/3.0)], via Wikimedia Commons.

MARCH MADNESS®

Now that a certain annual collegiate sports tournament is underway, a certain national collegiate athletic association would like to remind you (yes, you) that, no matter how mad you are this month, you may not describe said madness as MARCH MADNESS® without proper permission.  As the NCAA’s website helpfully explains, the association owns a lengthy list of registered and pending trademarks for the phrases MARCH MADNESS®, NCAA SWEET SIXTEEN®, ELITE EIGHT®, FINAL FOUR®, and dozens of others, for a variety of different products and services (e.g., athletic gear, clothing, conducting annual basketball tournaments at the college level, etc.).  The administration, use, and licensing of this trademark portfolio is managed by the NCAA Trademark Protection Program, and the association’s marks are “carefully controlled and aggressively protected to be consistent with the purposes and objectives of the NCAA, its member institutions and conferences and higher education.”  Because the NCAA’s championships “are the subject of great public and media interest… [t]he The NCAA must be vigilant against the unauthorized use of its trademarks, tickets and references to its championships,” and “requests your [yes, your] cooperation in this regard.”

Under ordinary circumstances, a trademark owner’s rights are basically limited to the products and/or services with which the mark is used or registered.  However, owners of sufficiently famous marks may also have the right to prevent others from using their marks in connection with products and/or services that are outside the nominal scope of the owner’s use or registration, under the law of trademark dilution (this is how the NCAA can assert rights over mere “references to its championships”—such references by unauthorized parties can suggest a false sponsorship by or affiliation with the NCAA).  Since few things gives rise to actual March madness like receiving a cease and desist letter from the NCAA’s lawyers, it may be worth considering whether that feeling you’re trying to evoke is really more like February Frenzy, or April Absurdity, or even May Hem.  See the madness here.

By Nick81aku at en.wikipedia [Public domain], via Wikimedia Commons.

By Nick81aku at en.wikipedia [Public domain], via Wikimedia Commons.

www.yourcompany.sucks

World Trademark Review reports that domain registrations for the new “.sucks” gTLD will cost $2,499 per year, about 250 times the typical cost of a “.com” registration.  Vox Populi Registry Ltd., which manages the “.sucks” gTLD, initially planned to charge a whopping $25,000 for registrations during the sunrise period, but recently reduced the annual fee to the still hefty $2,499.  According to the company’s website, “dotSucks is designed to help consumers find their voices and allow companies to find the value in criticism.  Each dotSucks domain has the potential to become an essential part of every organization’s customer relationship management program.”  In view of this statement and the pricing, Vox Populi Registry is clearly targeting brand owners and businesses who want the “.sucks” domains as part of a defensive registration strategy, rather than critics and consumer advocates who would use the domains as forums for the airing of grievances.  Brand owners and businesses will have to decide whether it sucks more to suck it up and pay $2.5K per year for “.sucks,” or gamble that their brands and business names will avoid being sucked into an easily accessible forum for people to vent their frustrations at how much those brands and businesses suck.  Read the full article here, and the Vox Populi Registry site here.  Reposted from World Trademark Review.

By 2bgr8 (File:Money Cash.jpg) [CC BY 3.0 (http://creativecommons.org/licenses/by/3.0)], via Wikimedia Commons.

By 2bgr8 (File:Money Cash.jpg) [CC BY 3.0 (http://creativecommons.org/licenses/by/3.0)], via Wikimedia Commons.

Today in Copyright History: 3/19

On March 19, 1834, the U.S. Supreme Court held in Wheaton v. Peters that an author has perpetual rights in unpublished works, but after publication, rights are limited by statutory provisions imposed by Congress.  This landmark case was the first copyright decision by the Supremes, and laid the groundwork for modern U.S. copyright jurisprudence.  Reposted from the History of Copyright Timeline at the U.S. Copyright Office.

Public domain; 19th century illustration of  Henry Wheaton .

Public domain; 19th century illustration of Henry Wheaton.

Today in Copyright History: 3/17

On March 17, 1884, the U.S. Supreme Court in Burrow-Giles Lithographic Co. v. Sarony upheld the copyrightability of photographs.  Napoleon Sarony, a well-known photographer of theatrical stars, photographed Irish author Oscar Wilde in 1882 when Wilde visited New York.  Reposted from the History of Copyright Timeline at the U.S. Copyright Office.

Napoleon Sarony [Public domain], via Wikimedia Commons.

Napoleon Sarony [Public domain], via Wikimedia Commons.

St. Patrick’s Day, and Harps the Right Way

St. Patrick’s Day is upon us, and as those who are in the know know, a holiday is just not a holiday if it doesn’t involve some sort of long-standing trademark dispute.  The dispute du jour comes courtesy of the Trademark & Copyright Law blog, which reports the actually rather interesting fact that while Guinness (the unofficial beverage of St. Patrick’s Day) and the government of Ireland both use the design of a harp as a trademark, the two parties have conscientiously avoided consumer confusion with their respective harp designs.  The Guinness harp, as many alcoholics can attest, faces right, while Ireland’s harp faces left, thus eliminating any possibility of confusion among the drunken rabble.  Read the full post here, and imbibe a Guinness or three at your local watering hole.  Reposted from the Trademark & Copyright Law blog.

U.S. Trademark Application Serial No.  86112318 .

U.S. Trademark Application Serial No. 86112318.

“Blurred Lines” Jury Lays it on Thicke (and Pharrell)

The Wall Street Journal Law Blog reports that “[a] federal jury in Los Angeles on Tuesday ordered singers Robin Thicke and Pharrell Williams to pay about $7.4 million to the family of Marvin Gaye, after finding the duo’s 2013 hit song ‘Blurred Lines’ copied parts of Mr. Gaye’s ‘Got to Give it Up.’”  The size of the $7.4 million verdict is reported to have sent shockwaves throughout the music industry, despite being substantially less than the more than $25 million sought by Gaye’s three children.  Gaye’s children are also seeking an injunction to stop further distribution of the song “Blurred Lines.”  Thicke and Williams have not indicated whether they plan to appeal.  Read the full article here.  Reposted from The Wall Street Journal Law Blog.

By Melissa Rose (Flickr: IMG_6563) [CC BY 2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.

By Melissa Rose (Flickr: IMG_6563) [CC BY 2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.

USPTO Finally Gets a Director

The New York Times reports that the U.S. Senate voted this week to confirm Michelle K. Lee as Director of the U.S. Patent and Trademark Office (USPTO).  Prior to her confirmation, Lee served as Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO, and has been the acting director of the USPTO during the position’s vacancy for the past two years.  In her new capacity, Lee is expected to oversee reforms at the agency, most specifically to address the significant backlog of unexamined patent applications, which currently number more than 600,000.  Read the full article here.  Reposted from The New York Times.

U.S. Patent and Trademark Office.

U.S. Patent and Trademark Office.

Today in Copyright History: 3/10

On March 10, 1974, the membership of the United States in the Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of Their Phonograms (the “Phonograms Convention”) took effect.  Reposted from the History of Copyright Timeline at the U.S. Copyright Office.

By David McClister.Sinatrasdead at en.wikipedia [Public domain], from Wikimedia Commons.

By David McClister.Sinatrasdead at en.wikipedia [Public domain], from Wikimedia Commons.

The APPLE WATCH Watch, Part Two

In the wake of today’s lavish presentation of the forthcoming Apple Watch, the burning question on everyone’s mind was undoubtedly, “What kind of U.S. trademark protection has Apple sought and/or secured for this Apple Watch thingamabob?”  Well, six months ago, this blog featured a post about the just announced Apple Watch, and the legal strategy that enabled Apple to secure trademark rights to the product name six months in advance of the announcement, while effectively keeping the name a secret.  This author predicted that Apple would file a U.S. trademark application for APPLE WATCH on or just before September 11, 2014, claiming priority to the earlier-filed APPLE WATCH application in Trinidad and Tobago.  As predicted, the company filed for U.S. protection for the APPLE WATCH mark on September 9, 2014, the date of the product’s unveiling.  The next day, however, Apple filed three additional U.S. applications for a design mark comprising the Apple logo next to the word WATCH.  The three additional applications did not claim priority to the Trinidad and Tobago application, but rather claimed priority to an application in Jamaica that was stealthily filed on July 24, 2014, and was essentially unreported by the media.

In choosing to file the APPLE WATCH word mark in Trinidad and Tobago and the APPLE WATCH design mark in Jamaica, Apple was able to avoid putting all of its eggs in one IP office basket, and reduce the risk that the product name would be prematurely discovered—even if one country’s applications were found, the other country’s applications might remain hidden, since the finder could reasonably assume that the company would file all of the potential product marks in the same obscure IP office.  Moreover, if one of the two marks was discovered, a search for that mark would not directly lead one to the other mark (e.g., the word APPLE does not appear in the design mark).  When it comes to trademark protection for its future products, Apple’s strategy appears to be, file early and often.  See the five U.S. applications here, here, here, here, and here; see the earlier post here; and see the product itself here.

U.S. Trademark Application Serial No.  86390853 .

U.S. Trademark Application Serial No. 86390853.

Today in Copyright History: 3/8

On March 8, 1954, the U.S. Supreme Court held in Mazer v. Stein that works of art embodied in useful articles (in this case, “statuettes of male and female dancing figures made of semivitreous china… used as bases for table lamps”) may be copyrighted.  Reposted from the History of Copyright Timeline at the U.S. Copyright Office.

By Related names:  Cass, Gilbert [Public domain], via Wikimedia Commons.

By Related names:  Cass, Gilbert [Public domain], via Wikimedia Commons.

Federal Circuit Clarifies Use in Commerce

The U.S. Court of Appeals for the Federal Circuit issued a ruling this week in Couture v. Playdom, Inc., No. 2014-1480 (Fed. Cir. Mar. 2, 2015), affirming a Trademark Trial and Appeal Board (TTAB) decision to cancel U.S. Registration No. 3560701, owned by appellant David Couture.  Couture filed a U.S. application in May 2008 for the mark PLAYDOM, for a variety of entertainment industry services, claiming use in commerce as of the application date.  A registration for Couture’s PLAYDOM mark issued in January 2009.  In February 2009, appellee Playdom filed a U.S. application for the same mark, for computer software and entertainment, computer, and social networking services.  When the U.S. Patent and Trademark Office issued a refusal based on Couture’s prior registration, Playdom initiated a cancellation proceeding against Couture’s registration at the TTAB.

As grounds for cancellation, Playdom argued that although Couture claimed a first use date of May 2008, his use consisted solely of launching a website advertising services under the PLAYDOM mark—no services were actually rendered in commerce before March 2010.  The TTAB agreed that use of a service mark in commerce requires the actual provision of the services listed in the application, not merely the advertising of the services, and granted the petition to cancel Couture’s PLAYDOM registration.  Couture then appealed the TTAB ruling to the Federal Circuit.  In affirming the TTAB’s decision, the Federal Circuit stated that, because “there is no evidence in the record showing that appellant rendered services to any customer before 2010… the cancellation of appellant’s registration was appropriate.”  The takeaway from this case is that merely advertising a service is not enough—the service must actually be rendered under the mark in order to establish use of the mark in commerce.  Read the Court’s opinion here.

By Tony Webster (Own work) [CC BY-SA 4.0 (http://creativecommons.org/licenses/by-sa/4.0)], via Wikimedia Commons.

By Tony Webster (Own work) [CC BY-SA 4.0 (http://creativecommons.org/licenses/by-sa/4.0)], via Wikimedia Commons.

Hall & Oates & Haulin’ Oats

The Hollywood Reporter reports that Whole Oats Enterprises, a partnership owned by musicians Daryl Hall and John Oates, has sued Early Bird Foods & Co. for trademark infringement over the latter’s use of the HAULIN’ OATS trademark as a brand name for granola products.  The suit, filed in the Eastern District of New York, alleges that in addition to the phonetic equivalence of HAULIN’ OATS to the duo’s colloquial name and common law trademark HALL & OATES, the two musicians also happen to own U.S. Registration No. 4345444 for the mark HAULIN’ OATS for “oatmeal” and “food delivery.”  Whole Oats seeks monetary damages from Early Bird Foods, as well as an injunction to stop the defendant from continuing to use the HAULIN’ OATS mark.  Read the full article here, and the Complaint here.  Reposted from The Hollywood Reporter.

Today in Copyright History: 3/4

On March 4, 1891, President Benjamin Harrison signed the International Copyright Act of 1891, the first U.S. copyright law authorizing the establishment of copyright relations with foreign countries.

Eighteen years later, on March 4, 1909, President Theodore Roosevelt signed the landmark Copyright Act of 1909, the third general revision of the law.  The 1909 Act extended the maximum term of protection to fifty-six years, broadened the subject matter of copyright protection, and secured copyright in published works from the date of first publication with proper notice.  Reposted from the History of Copyright Timeline at the U.S. Copyright Office.

Today in Copyright History: 3/3

On March 3, 1831, the first general copyright law revision added musical compositions to protected works.  The first term of protection increased to twenty-eight years with privilege of renewal for another fourteen years.

Thirty-four years later, on March 3, 1865, a new law extended copyright protection to photographs and photographic negatives.  Noted photographer Mathew Brady took this photograph of Abraham Lincoln in 1860.  Reposted from the History of Copyright Timeline at the U.S. Copyright Office.

Today in Copyright History: 3/1

On March 1, 1989, the United States adhered to the 1971 Paris Act of the Berne Convention for the Protection of Literary and Artistic Works, the oldest and most extensive multilateral international copyright treaty.  Reposted from the History of Copyright Timeline at the U.S. Copyright Office.

 
World Intellectual Property Organization.

World Intellectual Property Organization.