Are Pay Per Click Sites Legitimate?

Pay per click sites are legitimate under WIPO’s Overview 3.0. However, at least two ADR Forum decisions disagree and say that “Use of a domain name to redirect Internet users to a site featuring unrelated pay-per-click hyperlinks may not be considered a bona fide offering of goods or services or legitimate noncommercial or fair use.” WIPO and […]

Trademark Pro Design Search App

Design Trademark search results

Trademark Pro became a design trademark search app at the 2018 Global Legal Hackathon. The team formed at the Toronto location of the Global Legal Hackathon at Denton’s law offices. Trademark Pro’s video entry for round two of the Global Legal Hackathon:   David Michaels, Brand Consultant T-shaped Professional: Has deep knowledge in trademarks with broad education and […]

Viking.com Domain Name Dispute – RDNH

The viking .com domain name dispute resulted in a finding of RDNH. Office Depot, the Respondent won the domain name dispute. Key points in the Viking .com Domain Name Dispute The Complainant’s rights, however, are not global nor exclusive and do not blot out the Respondent’s current rights to certain VIKING trademarks, … The Respondent […]

How to Avoid Domain Name Disputes

Most domain name disputes are avoidable. Statistically, just over half of the domain name disputes are justified, according to the transfer vs denied panelist decisions of fair minded panelists. Many domain name disputes are unavoidable because complainants are over reaching or just trying to hijack a domain name because they want it without paying for […]

Trademark Search Tools

A survey of trademark lawyers shows that their favorite trademark search tools are: uspto.gov/Trademark Search Manual/straightforward searches on TESS Reason: To save money Nuans Trademark Search Pro: A comprehensive Canadian trademark search showing images, goods and services, and owners. At $50 per search, it is very affordable. Turnaround time is usually under a couple of […]

What is a Trademark?

The 1946 Lanham Act defines a trademark under the term “trade-mark.” A trademark includes any word, name, symbol, or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured or sold by others. Today, a mark is considered a trademark in many jurisdictions if it […]

Combination surname trademarks

The analysis of a combination surname trademark requires two inquires. First, is the term added to the surname “merely descriptive” of the applicant’s goods and services? In re Hutchinson Technology, Inc., 852 F.2d 552 (Fed. Cir. 1988). Specifically, is “collection” merely descriptive of KEI’s goods and services? Second, did adding the additional term to the […]

Armani UDRP Decision and Analysis

Armani UDRP Decision and Analysis: The failed Armani.com UDRP complaint is an example where legitimate interests exist in an otherwise famous brand name. Armani UDRP Complaint Summary The UDRP panel found that the then owner of armani.com, Mr. Anand Ramnath Mani, had a legitimate interest in the armani.com domain name because his initials were A.R. and […]

MAD MEN Barbershop Trademark Opposition

Lions Gate Entertainment filed an opposition to the MAD MEN Barbershop trademark in the USPTO’s TTAB. Opposition No. 91234230 Trademark Serial No. 87/110,436 For: MADMEN BARBERSHOP & Design Publication Date: December 27, 2016 NOTICE OF OPPOSITION Commissioner for Trademarks ATTN: Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, Virginia 22313-1451   Dear Commissioner: Opposer, Lions […]

Fraud on the PTO bars claim

Fraud on the PTO will bar claims for trademark infringement. In a 2016 decision between Amusement Art v Life is Beautiful LCC, a Federal District Court in California affirmed the principle that Fraud on the PTO will bar claims for trademark infringement: Between 2011 and 2012, Amusement Art filed eight ITUs for “Life is Beautiful” covering […]