We will be hosting our first event this coming Wednesday at 12:30 about Non-Traditional Uses of IP in Product Design.

Nicole Rizzo Smith, a lawyer at Ropes & Gray and a BC Law graduate, will join Andrea Rosen, Senior Corporate Counsel and Director of Business and Legal Affairs at PUMA North America, Inc. in Boston to discuss non-traditional uses of IP law used to protect product designs.

We’ll be talking about two recent cases in particular – a Second Circuit case that upheld Louboutin’s right to protect red-soled women’s shoes, and the now infamous Apple v. Samsung, where Apple sued Samsung for infringing its patent on, among other things, the design of its mobile devices.  Professor Joe Liu will serve as moderator of the discussion.

Non-Traditional Uses of IP in Product Design
Wednesday, October 10
Room: TBD
Time: 12:30 P.M.

In 1999, the Trademark Trial and Appeal Board (“TTAB”) decided Harjo v. Pro-Football, Inc., in which a group of Native Americans (the “Petitioners”) alleged that the term “Redskin(s)” was a pejorative, derogatory, degrading, offensive, scandalous, contemptuous, disreputable, disparaging and racist designation for a Native American person; the marks owned by Pro-Football, Inc. (“Pro-Football”), were offensive, disparaging and scandalous; Pro-Football’s use of the marks offended the petitioners and other Native Americans, causing them to be damaged by the continued registration of the marks; the marks consisted of or comprised of matter which disparages Native American persons and brings them into contempt, ridicule, and disrepute; and the marks consist of or comprise of scandalous matter. [1] In a lengthy opinion, the TTAB found that the marks were not scandalous, but they may be disparaging of Native Americans to a substantial composite of this group of people, [2] and therefore ordered that the registrations be canceled in due course. [3]

In September of 2003, the United States District Court for the District of Columbia (the “district court” or the “court”) reversed the TTAB’s decision regarding disparagement in an equally long opinion holding that the TTAB’s finding of disparagement was not supported by substantial evidence and also that the doctrine of laches precluded consideration of the case. [4] This article accordingly focuses on those same two issues, in particular the actual allegations raised by the Petitioners and the relative strengths and weaknesses of those claims; the standard employed by the TTAB and the decision ultimately reached by the TTAB according to that standard; and the TTAB’s reversal by the district court. This article will also posit alternative arguments and viewpoints in addition to assessing the actual effects of this case. Moreover, because the district court did not challenge the standard articulated by the TTAB for evaluating a disparagement claim, [5] whether and how to reconcile laches and secondary meaning may continue to be an issue in the future. Therefore, in the final section of this article, a standard is proposed for analysis of disparagement claims. This standard reconciles tensions and effectively balances laches, “as of the date of registration,” and secondary meaning. It also modifies that part of the standard which articulates what the TTAB and the court concluded was the relevant segment of the population when evaluating disparagement claims. Under the standard proposed, the Petitioners’ claims would be defeated, and Pro-Football’s registrations would be upheld.

Lynette Paczkowski*

Current trends in trademark law have not met the issue of deep linking with open arms. To date, there is a dearth of cases that touch on deep linking and trademark infringement. Cases such as Ticketmaster Corp. v. Tickets.com dismissed claims of deep linking as trademark infringement with little explanation, simply stating that deep linking itself is not a trademark violation absent “confusion of source.” [1] Yet, there is no case to set the boundaries at the other end of when deep linking would be trademark infringement; it can be implied then that the traditional tests of likelihood of confusion would most likely be applied to find an act of deep linking as trademark infringement.

However, the perils do not end for the website owner that is being deep linked from another website and having little means to stop this from occurring. Website owners that are being deep linked can also potentially face liability under the agency theory of apparent authority. Consider the following hypothetical.

CELL-X is a popular manufacturer and seller of cellular phones. In addition to distributing and also selling their products through authorized locations and CELL-X company stores, they operate and maintain a website. The website consists of a homepage and interior pages which contain information on the details of the different cellular phone models. Transactions of sales of cellular phones can also occur in the interior web pages of Cell-X’s website; Cell-X states in its purchase web page (and not on any other webpage such as the webpage of each specific model) that purchases via the internet will have an additional 90 days of warranty on top of the standard one year warranty. At the bottom of all the web pages, Cell-X has disclosed the statement, “CELL-X and its logo are registered trademarks.”

InterABC is a cellular phone distributor and re-seller. This company sells various brands of cellular phones, including Cell-X, and cellular accessories to the public. However, InterABC is not endorsed, authorized, nor licensed by Cell-X to sell Cell-X brand products. InterABC also operates and maintains a website allowing the internet consumer to browse and purchase the cellular phones InterABC carries. Specifically, InterABC deep links to Cell-X’s interior pages on all Cell-X cellular phone models and products.

Consumer Z is in the market to buy fifteen cellular phones for all his family members. By scouring the internet, Z finds InterABC’s website advertising cellular phones for a reasonable price. Z clicks on InterABC’s website hoping to find more information about Cell-X phones and clicks on the link to read more about Cell-X phone model 100A. This page lists the features of model 100A such as a four hour battery life, tri-band mode, a one inch color screen, and an additional one year warranty on top of the original warranty of one year. [2] There is another link that the Z can click on to read even more about model 100A; Z clicks on the link and realizes that the web page he just clicked to open is deep linked to Cell-X’s interior web page for model 100A; this page offers even more technical details of the cell phone such as measurements and accessories. Z is under the belief that InterABC is an authorized reseller of Cell-X products. Z is now quite sure that he wants to purchase Cell-X 100A cellular phones; in addition to the reasonable price that InterABC is selling the phone at, Z notices that buying the phones online comes with an additional one year warranty. Through a secured server, Z inputs his credit card and shipping information, and the cellular phones are subsequently shipped to him.

After one and one half years of use, two of Z’s Cell-X 100A phones abruptly stop working. Recalling that since he bought the phones from the internet, he has an additional one-year warranty in order to get them repaired or replaced. However, when trying to contact InterABC, he learns that they have since gone out of business. For Consumer Z, his next reasonable approach would be to contact Cell-X. However, Cell-X cannot honor Z’s warranty claim since it claims that it only offers an additional 90 day warranty. The statement that InterABC made on its website was false, and InterABC is not authorized by Cell-X.

The issue then becomes whether Consumer Z can hold Cell-X responsible for warranty claims under apparent authority. Since case law has never considered whether deep linking would ever constitute apparent authority, the next question to ask is whether the traditional cases of case law can shed any light on the issue.

Tan Pham*

As the Internet continues to become an everyday part of people’s lives, its widespread use is giving rise to complex and novel legal issues. In particular, trademark law is evolving to meet the rapid pace of the Internet. The legal community is currently analyzing traditional trademark legal principles to determine whether those principles sufficiently address the issues arising in today’s high tech society.

In fact, Internet commerce is the driving force behind much of the evolving trademark law. Arguably, the appeal of the Internet can be attributed primarily to the prevalence of electronic commerce. Many Internet e-commerce companies primarily use their domain name as their company name, service mark, and trademark. For example, drugstore.com is an online pharmacy; homegrocer.com is an online grocery store; vitamins.com is an online nutritional source; and petstore.com is an online pet supply store.

As of the date of this paper, none of the previously listed companies have attained federal registration of their service marks. According to the results of a trademark search conducted on December 17, 1999 using Thomson & Thomson, both DRUGSTORE.COM and VITAMINS.COM are the subjects of pending applications in the United States Patent and Trademark Office (“USPTO”). PETSTORE.COM had not yet filed an application for registration. However, under new office policies, the USPTO may refuse registration to each company’s “domain name trademark” on the grounds that it is generic. [1]

While the USPTO follows traditional trademark law for determining whether any trademark can obtain federal registration, “domain named” companies are provoking much discussion. Under traditional trademark principles, the current policy of the USPTO is to deny registration to a mark consisting of a generic term followed by a Top-Level Domain extension (“TLD”). [2]

This paper will explore the proposition that domain names consisting of arguably generic terms followed by a TLD are still distinctive; therefore, they should still obtain and enjoy some level of trademark protection.

The discussion of this controversial proposition requires an understanding of domain names, traditional trademark principles, and the USPTO’s treatment of domain names as trademarks. Section II provides background information on domain names and traditional trademark principles. Section III discusses the USPTO’s decision to disregard top-level domain extensions when considering whether trademark registration is available to a mark consisting of a domain name. Following this discussion, in Section IV, contrary analysis contends that the USPTO should afford trademark protection to domain names that consist of generic terms combined with a TLD, and examines the levels of protection the law should afford them. Finally, Section V explores the possible alternatives.

Sarah E. Akhtar* & Robert C. Cumbow*

If motorcyclists are a unique breed, Harley-Davidson motorcyclists must be considered a cult unto themselves. They have transformed the hobby of motorcycling into a lifestyle, replete with clubs, clothing, and a distinct “biker culture.” [1] The official Harley-Davidson web page describes the Harley history and allure:

In 1903, three Davidson brothers and their friend, Bill Harley, started a rumble heard ‘round the world. Their first motorcycle was the start of a unique combination of people and machines. Through the decades, Harley-Davidson motorcycles have had the ability to generate emotion. The excitement of racing, the peacefulness of a ride down a country lane, the pleasant symphony of a handful of bikes rumbling down Main Street, the exhilaration of switchbacks on a mountain road, but most of all, the camaraderie of the people who share the same love for Harley-Davidson motorcycles. The Brotherhood. The Sisterhood. The Family. It’s time to come home. [2]

The Harley-Davidson corporation’s ability to evangelize the Harley lifestyle– as on the company’s website–without alienating a customer-base which prides itself on being free-spirited and countercultural has been a testament to its marketing shrewdness. However, in a business expansion which probably irked the hardcore Harley faithful, the company now manufactures or licenses jewelry, watches, clothing, and a chain of “lifestyle” restaurants called the Harley-Davidson Cafe. [3]

In every commercial enterprise Harley-Davidson has undertaken, the company has ensured that the integrity of its trade name and various trademarks in the marketplace is vigilantly protected. Indeed, Harley has successfully litigated trademark infringement cases in federal courtrooms across the country. [4] Interestingly, much of this litigation has taken place within the past five to ten years. This development has a purely economic reason. Since the 1980′s, when the U.S. motorcycle market was dominated by Japanese manufacturers such as Honda, Yamaha and Suzuki, Harley-Davidson has enjoyed a remarkable resurgence of business–to the tune of approximately $1.5 billion in revenues. [5] This cash has enabled Harley to pursue trademark infringers with a renewed zeal.

Harley-Davidson’s most recent endeavor to secure trademark protection is not only its most unconventional, it is also arguably, the most unusual and provocative trademark application ever filed with the U.S. Patent and Trademark Office (PTO). On February 1, 1994, Harley filed a registration for a trademark, then already in use, with the following description: “THE MARK CONSISTS OF THE EXHAUST SOUND OF APPLICANT’S MOTORCYCLES, PRODUCED BY V-TWIN, COMMON CRANKPIN MOTORCYCLE ENGINES WHEN THE GOODS ARE IN USE.” [6] Put simply, Harley was attempting to trademark the sound of its motorcycles; which, of course, begs the question, can a manufacturer trademark the exhaust roar of its motor vehicle?

Michael B. Sapherstein*