The Conkle Firm Helps MANA Evict Domain Name Cybersquatter

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What do you do when someone else has taken your trademark and used it in an Internet domain name?  Just accept it, even if they’re offering competing products and services?  Do you have to go to court and file a trademark infringement lawsuit?  Fortunately, these questions all have the same answer: No.   You don’t have to accept it, and there are faster and less expensive ways to force the cybersquatter to give up the infringing domain name.

CK&E recently demonstrated this by helping its client, the Manufacturers’ Agents National Association (commonly known as MANA) defeat a cybersquatter and force the squatter to transfer the “manaonline.com” domain name to MANA.

All domains ending in a generic Top Level Domain (gTLD) – such as .com, .org or .net – are automatically subject to ICANN’s Uniform Domain Name Dispute Resolution Policy, an streamlined arbitration process referred to as UDRP.  UDRP provides an efficient method for a trademark owner to resolve its rights to a domain name that uses a substantial part of the trademark or is otherwise confusingly similar to the trademark.  Instead of going to court to sue for trademark infringement, the business owner can file a complaint online with one of several authorized arbitration providers, such as the National Arbitration Forum (NAF) or the Arbitration and Mediation Center of the World Intellectual Property Organization (WIPO).  Through a process that is conducted entirely online, these arbitration providers are empowered to force a domain name registrar to transfer a domain to its rightful owner.  This is especially useful if the cybersquatter is in some remote offshore location and cannot be reached by regular legal process, because the domain name registrars are always available and can be directed to transfer the domain name.

To force the transfer of a domain through UDRP, the business owner must show:  (1) the domain name is confusingly similar to a trademark owned by the business;  (2) the current registrant has no rights or legitimate interests in the domain name; and  (3) the domain name has been registered and is being used in bad faith.

In the case in which CK&E helped MANA, another company called “Dvlpmnt Marketing” based out of Saint Kitts and Nevis, in the Caribbean, had registered the “manaonline.com” domain name – which was essentially identical to MANA’s “manaonline.org”   Dvlpmnt had used the domain name to park a webpage featuring “pay-per-click” links to other websites offering services competing with those offered by MANA.  Dvlpmnt owns tens of thousands of domains, and has been the subject of several NAF and WIPO proceedings in the past.

CK&E attorney Zachary Page initiated a Complaint with NAF on behalf of MANA, charging Dvlpmnt with cybersquatting by registering and maintaining in bad faith, and with no legitimate rights, the manaonline.com domain name that was confusingly similar to MANA, whose genuine website is found at manaonline.org.  The different gTLD extensions, .com and .org, are legally insignificant in the UDRP process – effectively, the domain names were regarded as identical.  After the UDRP hearing, the NAF Panel held:

“Considering the totality of the circumstances present here—including the similarity between the disputed domain name and Complainant’s domain name, and the content of the website to which the disputed domain name resolves—the Panel infers that Respondent was aware of Complainant when it registered the domain name and that Respondent is using the domain name in a manner intended to exploit confusion with Complainant’s website and service mark.  These inferences are indicative of bad faith.”

Manufacturers’ Agents National Association v. Domain Administrator / DVLPMNT MARKETING, INC., National Arbitration Forum Claim Number FA1404001553434

A successful UDRP claimant generally has a choice to have the domain registration cancelled or to have the domain name transferred to the claimant.  It is almost always better to have the domain name transferred, so that it cannot be taken by another cybersquatter in the future.  CK&E is proud to have helped its client, MANA, successfully force the cybersquatter to transfer the manaonline.com domain name to MANA.

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Can Containers be Copyrighted?

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There are some containers that have achieved trademark status. Among the most famous are the Coca-Cola bottle and the OPI nail lacquer bottle. Ownership of a trademark in container design requires a solid showing of secondary meaning, which generally takes considerable time, sales volume, and promotional efforts. Ownership of a copyright in a new creative work, on the other hand, is automatic. Copyright registration is usually quick and inexpensive.

So why not protect a container design through copyright? Because a container design that is functional is not copyrightable.

According to the Ninth Circuit Court of Appeals in its recent decision of Inhale, Inc. v. Starbuzz Tobacco, Inc., a case about a copyright claim on a hookah water pipe, copyright protection is not available for functional features of a useful article like a bottle or a chair. As a “useful article,” the shape of a container (including a hookah pipe) is copyrightable “only if, and only to the extent that, [it] incorporates . . . sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the container.” 17 U.S.C. § 101.

Courts have said that the non-functional, sculptural features must be “conceptually” or “physically” separable from the container in order to be protected by copyright. “Physically separable” is an easy concept – a printed label or a fancy emblem that is applied to the container can usually be protected by copyright, because it can exist separately from the container. “Conceptually separate” is more esoteric. The Ninth Circuit held that “the shape of a container is not independent of the container’s utilitarian function – to hold the contents within its shape – because the shape accomplishes the function.” In other words, as long as the shape of the container merely holds the container’s contents, the shape is not subject to copyright.

The Ninth Circuit left unanswered whether a “ring shape” that is molded into the bottle but does not conform to the interior container might be copyrightable as “conceptually separate” from the functional container. In any event, the Court’s lesson seems to be that, for copyright protection for a container, the copyrighted feature should serve no purpose in holding the contents. Conkle, Kremer & Engel attorneys regularly work with clients to most effectively secure and protect their valuable intellectual property, regardless of whether it’s a traditional trademark, artwork, a fragrance or a container.

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BIR Article Features the Conkle Firm at Cosmoprof Bologna’s California Pavilion

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Tireless reporter Mike Nave attended Cosmoprof Bologna in April 2014, and this month published the Beauty Industry Report (BIR) article detailing his observations.  BIR featured Conkle, Kremer & Engel’s participation in the California Pavilion.  As previously posted in this blog, Cosmoprof Bologna is a preeminent global conference for the personal care products industry, with over 207,000 visitors and 2,450 exhibitors from 69 countries, and participation by manufacturers, distributors and industry organizations.  CK&E was proud to be able to assist The California Pavilion, orchestrated by the California Trade Alliance.  CK&E joined Beauty Industry Market Access (BIMA) directors Patty Schmucker and Cesar Arellanes, and several graduates of the BIMA program, and was pleased to offer immediate assistance in international distribution and brand protection issues.

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The Conkle Firm is Featured in April 2014 Beauty Industry Report

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Conkle, Kremer & Engel is proud to again be the subject of a feature interview in the industry-leading publication, Beauty Industry Report (BIR).  BIR is a monthly 24-page executive newsletter for professionals that focuses on the emerging trends affecting the beauty industry.  CK&E’s feature interview assessed the latest legal trends, based on CK&E’s decades of experience in the industry.  Topics covered included trademark and brand protection, both international and domestic, regulatory compliance issues such as California’s Proposition 65 and the Safe Cosmetics Act, issues in manufacturer-distributor relationships, and more.

The attached article includes links to topical blog posts and websites referenced in the interview.  CK&E wishes to thank BIR’s Mike Nave for taking the initiative to disseminate information about these important industry issues.  BIR proved again that working in the beauty industry without reading BIR is like working in finance without reading The Wall Street Journal.

BIR Feature Interview of CK&E

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Smells Like Trademark Registration

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Brand owners are increasingly tapping into the powerful realm of olfactory memory by using scent as a brand identifier.  Conkle, Kremer & Engel, a pioneer in brand protection strategies, registered one of the only three fragrance trademarks ever on the U.S. Patent and Trademark Office Principal Register.  In fact, CK&E registered the first ever U.S. fragrance trademark for personal care products.

Scent can evoke strong emotional reactions and create long-lasting memories, so a signature scent can be a critical element of an overall brand identity.  As recently reported in The Los Angeles Times, retail clothing stores and hotels are beginning to use scent diffusers to greet consumers with their custom-made fragrances.  Signature scents can also be introduced with products, such as Brazilian designer Melissa’s bubblegum scented plastic shoes or GM’s use of semisweet scented leather in Cadillac automobiles.

While brand owners often focus on traditional trademarks like brand names (word marks and stylized word marks) and logos (design marks), nontraditional trademarks like scent, sound and color may also be eligible for protection.  In the United States, a scent mark can be registered as a trademark if it is used as a brand identifier, but only if it is neither functional nor naturally occurring in the goods or services.  For example, the scent of elderflower cannot be protected as a trademark for use with perfume, as it would be functional, or for use with elderflower cordial, as it is naturally occurring.  However, the scent of elderflower could be used as a trademark with stationery.

The next hurdle to registration on the Principal Register is secondary meaning.  A brand owner must show that consumers associate the scent with the source of goods or services through evidence such as extensive use of the scent in commerce, advertising expenditure, affidavits from consumers, or surveys.  In order to establish a signature scent as a registrable trademark, it is especially useful to provide evidence of advertising that specifically identifies the scent in connection with the goods or services (e.g., “stationery distinguished by its unique elderflower scent” or “always with our signature fragrance”).

As noted in Gilson on Trademarks, CK&E presented the USPTO with strong evidence that its client’s fragrance mark was not functional when used with hair care products, and CK&E submitted substantial, well-focused evidence of secondary meaning.  As signature scents continue to develop as key elements of brand identities, more brand owners will seek trademark protection for their chosen fragrances.  Brand owners should consider methods of protecting and enforcing their rights in nontraditional trademarks such as fragrance, color and sound.

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The Conkle Firm Participates in California Pavilion at Cosmoprof Bologna

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CK&E attended Cosmoprof Worldwide in Bologna, Italy, the international professional beauty industry trade show, in April 2014.  Cosmoprof Bologna is a preeminent global conference for the personal care products industry, with over 207,000 visitors and 2,450 exhibitors from 69 countries, and participation by manufacturers, distributors and industry organizations.  Highlights included the dynamic USA Pavilion and California Pavilion, orchestrated by the California Trade Alliance.  CK&E joined Beauty Industry Market Access (BIMA) directors Patty Schmucker and Cesar Arellanes, and several graduates of the BIMA program, as they put into practice the concepts taught at the intense educational program designed for entrepreneurs entering international markets.  To learn more about the BIMA program in which CK&E attorneys participated, click here.

As developed in discussions at Cosmoprof, a critical issue for many U.S. exhibitors entering the EU market is the July 2013 Cosmetics Regulation (EU Reg. 1223/2009) that overhauled the European Union’s regulatory landscape for personal care products.  The Regulations introduced a number of new requirements, including labeling for nanomaterials such as titanium dioxide, claim verification standards and an EU-wide ban on animal testing.  As a brief introduction to the new requirements, the EU distilled the July 2013 Cosmetics Regulation into the simplified infographic shown here.

Under the new Regulation, each manufacturer selling cosmetic products into the EU must designate a person or business entity physically located in the EU that will serve as the manufacturer’s designated “responsible person” for compliance with the Regulation.   CK&E has strong working relationships and regularly works with such “responsible persons” who can be engaged to assist businesses seeking to expand into the EU.  CK&E is pleased to participate in industry events such as Cosmoprof Bologna and programs such as BIMA, to help U.S. entrepreneurs expand into the EU and to assist foreign manufacturers develop and secure markets for their products in California and throughout the United States.

 

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The Conkle Firm Teaches International Entrepreneurs in BIMA Program

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Conkle, Kremer & Engel attorney Mark Kremer has been honored to participate in and contribute to the revolutionary Beauty Industry Market Access (BIMA) program through the Center for International Trade Development (CITD).  The BIMA program was developed and is led by beauty industry guru Patty Schmucker and international trade expert Cesar Arellanes, the Director of CITD in Long Beach.   BIMA is a five week intensive international trade and business education program taught by leading health and beauty industry experts. BIMA participants focus on key program principles distinct to conducting business overseas, receive bi-monthly objectives for assessing their business, and ultimately produce an export growth plan exclusive to their business. Participants also have access to upcoming trade missions to the world’s largest emerging market beauty trade shows – effective venues for executing learned principles and business plans.

Mark contributes to the BIMA educational program by teaching modules on domestic and foreign intellectual property protection, domestic regulatory compliance, and international distribution agreements.   Participants are particularly interested in cost-effective methods of protecting their intellectual property internationally, such as international trademark registrations through the Madrid System.  The Madrid System offers a centralized application process for trademark registration in over 90 countries based on a brand owner’s domestic application or registration.  Participants are also interested in CK&E’s practical approach to domestic regulatory compliance, including California’s evolving green chemistry initiative, Safe Cosmetics Act and Proposition 65.  Participants have also benefited from CK&E’s tips for forging fruitful business relationships with distributors, based on decades of experience representing clients in the personal care products industry.

CK&E will join Patty Schmucker and several graduates of the BIMA educational program to Cosmoprof Worldwide in Bologna in April 2014.  Mark looks forward to the next BIMA session, which begins on June 26, 2014.  Click for further information about joining the BIMA program: BIMA_Summer-Fall_2014

 

 

 

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gTLDs are Already Causing Confusion – Just Ask Wayne Knight and TMZ

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UPDATED July 15, 2015

Actor Wayne Knight (best known as Newman on Seinfeld) was forced to tweet his “proof of life” on Twitter, after a website that uses the domain name TMZ.today reported that he was killed in a traffic accident and the story went viral.  It has been reported that many users credited the story of the death of Wayne Knight because it was circulated with attribution to the website TMZ.today.  TMZ is well known as a major source of real entertainment news and celebrity gossip.  TMZ uses the domain name TMZ.com, but the domain name TMZ.today links to an entirely different website called ebuzzd.com that is actually an unrelated, deliberately fake news website – a website dedicated to hoaxes.

Wayne Knight’s concerns aside, this story presents important lessons for trademark holders and domain name registrants:  New generic Top Level Domains (gTLDs) are here and must be reckoned with.  TMZ.com is not TMZ.today, but it’s a good bet that a substantial portion of the consuming public does not know that.  Will the consuming public realize that your company website “XYZ.com” is not affiliated with XYZ.Today, XYZ.News, XYZ.Info, XYZ.Web, XYZ.Blog, XYZ.Corp, XYZ.Inc, XYZ.London, XYZ.Charity or XYZ.Porn, or any of the 600+ other non-branded gTLDs that are available now and coming online within the next two years?

For a trademark holder, it can be a daunting prospect to try to police that many possible confusing domain names, but there are cost-effective brand protection strategies and solutions.  They begin with recognizing the issue, and making sure that you have taken all appropriate steps to protect your trademarks and domain names.  The most basic step is to obtain U.S. trademark registrations for your important trademarks – especially for your primary brand.  That is the key to many of the solutions that are offered at http://trademark-clearinghouse.com/, the administrative service established by ICANN to help control issuance of gTLDs.   Then, set a strategy that includes monitoring the “Sunrise Periods,” during which registered trademark holders can take the most efficient steps to protect against spurious registrations of confusingly similar domain names with the new gTLDs.

The best and most cost-effective methods of protection against gTLD infringers and domain name cybersquatters will be discussed in future blog posts.  Available methods include preemptive registration, blocking and various forms of policing.  Conkle, Kremer & Engel routinely guides its clients to protect their valuable intellectual property and domain names, including taking proactive steps to address the new threats to trademarks posed by gTLDs.  Contact us if you have questions and need assistance.


 

UPDATE July 15, 2015:  Another example of misuse of gTLD domain extensions happened again and demonstrates that real money can change hands when gTLD domain name extensions are abused.  Twitter stock jumped on July 14, 2015 after what appeared to be the Bloomberg Business website posted a news article reporting that Twitter had received a $31 billion buyout offer.  The story was fake, but it passed for real news by being posted on a website designed as a counterfeit of the Bloomberg Business website and using a new gTLD:  www.bloomberg.market.  The real Bloomberg website is actually found at www.bloomberg.com.  To help make a convincing appearance, the www.bloomberg.market website included links back to the real www.bloomberg.com website.  Enough readers were fooled that Twitter stock price spiked after news of the purported buyout offer was picked up in legitimate media.  gTLD confusion may continue to be a problem for trademark holders until they take affirmative steps to limit the possibilities of confusion and abuse.

 

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Spain Enjoins ISP from Allowing User to Infringe Copyrights

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The Barcelona Court of Appeal recently issued a judgment holding an Internet Service Provider (ISP) subject to injunction due to copyright infringement by one of its users.  This ruling is consistent with the EU’s Copyright Directive, Recital 59, which provides:

In the digital environment, in particular, the services of intermediaries may increasingly be used by third parties for infringing activities. In many cases such intermediaries are best placed to bring such infringing activities to an end. Therefore, without prejudice to any other sanctions and remedies available, rightholders should have the possibility of applying for an injunction against an intermediary who carries a third party’s infringement of a protected work or other subject-matter in a network.

Spain authorized injunctions against intermediaries in article 8(3) of its Copyright Act.

In the Barcelona case Promusicae, an association of Spanish music producers, learned that someone was using the Direct Connect P2P network to make available in a shared folder 5,000 music files including copyrighted music.  In Spain, ISPs are not obligated to identify their users for purposes of civil lawsuits, so the only identification of the user available to the claimants was a nickname and IP address.

Without identifying the primary infringer, the copyright holders sued the ISP, R Cable y Telecomunicaciones Galicia.  The appellate court found that there was infringement and that the copyright holders were entitled to an injunction against the ISP that was providing internet access to the infringer, enabling the infringement.  The injunction required the ISP to permanently stop providing internet access to the infringing user, stopping the infringement.

This was the first ruling of its kind in Spain, but analogous rights against intermediaries are available in the U.S. and EU countries.  Conkle, Kremer & Engel assists its clients to protect and enforce their IP rights in copyrights, trademarks and patents worldwide.

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Protecting Your Company When a Top Executive Leaves to Join a Competitor

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What do you do when a key member of your team goes to work for a rival firm? Or, perhaps worse, how do you react when you receive a competitor’s demand that your latest hire, a new sales manager, stop working for you?

John Conkle recently participated in a discussion of experienced practitioners which looked at these and related topics at the 2014 American Bar Association (ABA) Section of Litigation, Corporate Counsel Committee’s Continuing Legal Education Seminar held in Rancho Mirage, California. The topic of the presentation was what actions inside and outside counsel need to take when a top executive of the company leaves to joins a competitor, when the company’s reputation, confidential information, and business could all be at risk. The panel addressed practical and legal strategies to help navigate the pitfalls presented by this high-stakes dilemma.

Protecting Your Company - ABA 2014

John was joined on the panel by the Hon. Gail Andler, Judge of the Orange County California Superior Court; Elizabeth K. Deardorff, Associate General Counsel of Hewlett-Packard Company; and Steven A. Weiss, of Schopf & Weiss LLP, a Chicago litigation boutique firm. More than 300 attorneys from law firms and law departments throughout the United States and from several foreign countries attended this year’s seminar.

Written materials distributed at the seminar included an article written by John and Bill Garcia, Director of Legal Project Management at Thompson Hine LLP:    First Response to Surprise Departure of Top Executive to Marketplace Rival.  The article outlines first response actions to be taken by counsel in response to an executive’s departure. Bill Garcia had been scheduled to moderate the panel, which he helped conceive and orchestrate, but he was unfortunately snowed in and unable to leave Washington, D.C.

Losing a key executive to a competitor can be a serious and sensitive matter. CK&E is well versed in the options available to a company whose top executive leaves. CK&E has also represented the interests of the company acquiring the executive and employs various strategies and defenses to help resolve disputes over such hirings. CK&E lawyers have represented both sides of these issues, from recruitment of an entire sales team to competition by a former owner of an acquired business or product line.  CK&E’s vast experience in the area of employment law, non-competition and protection of trade secrets allows the firm to efficiently assist in-house counsel to reach a desired objective with a minimum of business disruption.

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