Trademark Protection and Facebook User Names

Trademark protection just got a slightly more complicated, but in a good way. Starting now, there’s a new step that trademark holders or their attorneys should take to protect their trademarks or service marks.

You probably already know that registering domain names corresponding to your marks gives you important practical protection. Now Facebook has entered the equation. Starting this Friday, June 12, users will be able to register a Facebook user name on a first-come, first-served basis at http://www.facebook.com/username/. It’s about time—the old format for accessing someone’s profile included a string of random digits. My old Facebook URL looks like this: http://www.facebook.com/profile.php?id=551052414. My new one will be nicer.

Competing social networking sites, such as LinkedIn and MySpace, have had plain-language user names for a while now. But the new Facebook scheme has something built in that the other sites apparently don’t: a mechanism for trademark protection. That’s welcome news for rights-holders. Here’s how it works.

At http://www.facebook.com/help/contact.php?show_form=username_rights, there’s a “Preventing the Registration of a Username” form for entering your company name, title, email, trademark, and registration number. (Oddly, there’s no place to enter your own name.) As that last data item suggests, only registered marks are eligible, although I’d recommend that holders of trademark applications in process simply enter the application number instead. Filling in the form will prevent someone else from using your trademark as a user name.

What happens if an infringer registers your trademark before you fill out the form? In that case, fill out Facebook’s “Notice of Intellectual Property Infringement (Non-Copyright Claim)” at http://www.facebook.com/copyright.php?noncopyright_notice=1 and hopefully the matter will be taken care of. Facebook doesn’t describe the procedure it follows for these forms.

Finally, what if someone maliciously fills out the “Preventing the Registration of a Username” form and blocks you from using your own mark as a user name? Facebook’s FAQ (at http://www.facebook.com/help.php?page=899) doesn’t address that, but I’d suggest filling out the Notice of Intellectual Property Infringement (Non-Copyright Claim) form and providing as many details as known.

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Trademarking Movie Titles

Book and movie titles fall in a gray area in U.S. law. For instance, although a book or movie is protected by copyright, its title isn't. Copyright simply doesn't cover titles. Officially, trademark doesn't either (except for series titles like Harry Potter). Nonetheless, I've developed ways to protect single-work movie titles using trademark registration -- effectively circumventing the long-established rule. For more, visit http://www.jhandel.com/news/2014/8/13/trademarking-movie-titles.

Life is Not a Bowl of Blackberries

Research In Motion, the manufacturer of the Blackberry device, has sued LG for trademark infringement, reports Law Day. The complaint relates to LG's use of the names Black Label, Strawberry and Black Cherry for its cell phones. In addition, last December, RIM sued Samsung over its BlackJack phone.

Sounds to me like RIM has a case, in all of these instances, except perhaps Black Label. The others just look or sound too similar, or are too similar in meaning, to Blackberry. The trademark standard is "likelihood of confusion" - if the later trademark is likely to be confused with the first one, then the later mark is an infringement.

Marley Ring Tones Strike a Sour Note

Bob Marley's family is threatening to sue over a ring tone deal between Verizon and Universal Music, which owns the rights to the late singer's music, reports the New York Times. The family objects that the deal amounts to using Marley's trademarked persona to endorse Verizon.

Verizon disagrees, and says it has the right to advertise that it provides the ring tones. Case could turn on relatively minute details of the advertising.

Anerican Airlines AdWords Lawsuit

Litigation continues over Google AdWords (see previous post). The latest development: Google is seeking to dismiss a suit by American Airlines, reports the Dallas Business Journal.

American's miffed that AdWords can display a competitor's ads next to search results for a company's trademarks (search for "American Airlines" and you might get United ads next to the American results).

Google says this is no different than a drugstore displaying generic drugs next to brand name drugs, or printing a coupon for Minutemaid on the back of a grocery receipt of a customer who bought Tropicana. Good analogies.

What Google's fighting is a line of cases regarding "initial interest confusion," which prohibit using a competitor's trademark in meta tags in order to attract search engines. But Google's an information provider, not a competitor of American. It's a close case - for instance, if Google displayed the ads in a popup that hides the actual search results, that would seem wrong. But where the ads are merely adjacent to the search results, or at the head of the list, I think Google's right.

Lulu Ululates Over Hulu

Lulu.com is suing Hulu.com for trademark infringement, reports CNET. (To "ululate" means to howl or wail, and when else am I ever going to get to use that word?)

Crux of the complaint is that the names and business models are too similar and will cause consumer confusion. The names certainly are similar, but the business models seem different: Lulu.com is a self-publishing service (print, publish and sell your own books), whereas Hulu.com is a recently-announced digital video company jointly owned by NBC Universal and News Corp. I'm not sure where the confusion lies, but I guess we'll see.

Fashion Fisticuffs

The other designer shoe has dropped: designer Joseph Abboud is being sued by the company to which he sold his name, the WSJ reports. (See my previous post.) That company is alleging that Abboud's plan to describe his new line, jaz, with the tagline "a new composition by designer Joseph Abboud" will confuse consumers and violates the company's trademark rights in Abboud's name.

Abboud counters that he didn't sell his right of publicity, and will presumably argue that this use of the trademark is simply descriptive of his goods.

Sounds like a tough case. A lot may turn on the specificity of the contract between the two parties.

Closing the Blinds on AdWords Suit

Google's AdWords system allows companies to have their ads run adjacent to search results that relate to keywords, including keywords that are their competitor's trademarks. For instance, if Pepsi wanted to, it could have ads for its soft drinks appear every time a user searched for "Coke". (Just a hypothetical example.)

Is this trademark infringement? A company called American Blind thought so, and sued Google. That suit ended in a settlement yesterday, however, reports Law.com, with no admission of liability. The issue will no doubt be litigated again, perhaps to conclusion.

Bespoke IP

The Fall shopping season has begun. While the rest of us buy clothes, the fashion industry is shopping for new IP protection, reports the NY Times. Fashion designs have very little protection under copyright, but the newly-revised Design Piracy Prohibition Act aims to change that, prohibiting copying of the overall appearance of clothing, handbags, belts and eyeglass frames. This specialized form of copyright would be for a term of three years.

In contrast to the designs themselves, fashion logos and designer names are already protected, by trademark law. In fact, the WSJ recently reported that designer Joseph Abboud can no longer use his own name as a trademark - he sold it. After two years out of the business, he's back, but under a new brand name ("jaz"), and in competition with the owners of his own name.

BTW, the customized form of protection proposed by the Design Piracy Prohibition Act serves as a reminder that there are many forms of IP, each with different (but sometimes overlapping) subject matter. A short list includes:

• Copyrights: Works of authorship, such as books, movies, music, software, art, characters.
• Trademarks: Logos, brand names, slogans, book and movie titles (sometimes), characters.
• Trade Dress: Overall look of a product or service.
• Patents: Inventions, processes, business processes (incl. Internet), software, designs.
• Trade Secrets: Confidential information with economic value
• Moral Rights ("Droit Moral"): Creative rights, such as the right to receive credit (attribution) or not have a work destroyed; limited applicability in U.S.
• Mask Works: Semiconductor chip layouts
• Designs: vessel hulls (boats) and fashion designs (if the proposed bill is enacted)