Software Licensing and Intellectual Property Law Blog

Sony Stung By Buzztime Entertainment’s Trademark Lawsuit

Gamespot, in a story located here, is reprting that Buzztime Entertainment, the maker of a line of electronic trivia games found in restaurants and bars, has filed suit against Sony Computer Entertainment Europe in the Southern District of California, alleging that Sony’s Buzz! line of games and the "It's time to get buzzing" tagline violate Buzztime’s trademark rights.

Buzztime owns a variety of trademark registrations and applications for marks containing or comprising the term “buzz,”  but does not appear to own any registrations or applications for the term “buzz” on a standalone basis.

Sony has filed three trademark applications for the term “buzz” (application data located here, here and here). Sony’s applications all passed the opposition phase without incident and are set to register once Sony files a Statement of Use.

Interestingly, Sony filed the first of its three “buzz” applications as far back as 2004 and the first of its “buzz” applications was published for opposition as early as 2006. It’s hard to imagine that Buzztime’s failure to file an opposition against Sony’s applications was a strategic move. Most likely Buzztime only became aware of Sony’s applications shortly before it filed suit. Had Buzztime filed an opposition proceeding, it’s likely that Buzztime would have been able to force a settlement at a much lower cost than the cost of the federal litigation in which it is now involved.

Buzztime’s failure to file an opposition emphasizes the importance of enrolling strategically important marks in a trademark watching program. A trademark watching program monitors pending trademark applications and provides early notice of potentially conflicting marks. Early notice provides ample time to assess the situation and formulate an appropriate course of action. By failing to monitor strategically important marks a party runs the risk of eroding its trademark rights or being forced into litigation to protect its rights when it discovers a potentially infringing use. The cost of implementing a trademark watching program is minimal compared to the cost of litigating in federal court.

International Trademark Applications (Madrid Applications/66(a) Applications)

A large part of our practice consists of drafting and prosecuting International Trademark Applications (also called Madrid Applications or 66(a) Applications) for both American trademark clients and international trademark clients.

Many times we are called upon by foreign trademark counsel to assist in responding to the rejection of an international trademark application by the United States Patent and Trademark Office ("USPTO"). While Madrid Applications are rejected for a variety of reasons (including the common reasons blogged about here), we see certain issues on a reoccurring basis:

(1) Failure to identify the legal nature of the Applicant; (2) Failure to identify country of organization or incorporation; and(3) Identification of Goods/Services.

With respect to item 4, foreign applicants regularly see their International Application rejected by the USPTO because the description of goods and services is overly broad. Unlike other countries, where only an International Class need be identified or a very broad description of goods/services is  acceptable, the USPTO requires a relatively narrow description of goods/services. While providing additional clarity seems simple  enough - there are traps for the unwary. This requirement many times calls for a restructuring of the description and is sometimes complicated by translation issues. Further, 66(a) applicant's are prevented from changing the International Classification Number. In addition, indiscriminate changes to the description could leave the application and subsequent registration vulnerable to claims that the registration is invalid.

Activision Settles Trademark/Copyright Lawsuit With Gameloft

On December 12 Activision withdrew its Motion For Preliminary Injunction and settled its lawsuit against Gameloft seeking to stop Gameloft from allegedly infringing Activision's copyrights and trademarks. In its complaint Activision alleged that Gameloft's GUITAR LEGENDS game for wireless phones infringes Activision's GUITAR HERO trademark and copyrights.

The settlement is mostly likely  a wise move on Activision's part.  While the suit raises a number of issues  (including copyright infringement and apparently alleges that GUITAR LEGENDS infringes Activision's own GUITAR LEGENDS OF ROCK mark - which may have convinced Gameloft to settle), GUITAR HERO itself is not the strongest mark. The term "Guitar" is a descriptive term in the field of a beat matching video game and it would be difficult for any one company to claim exclusive rights to the term in connection with those  goods. In fact, Activision has disclaimed exclusive rights to the term GUITAR apart from its GUITAR HERO mark. While a disclaimer certainly doesn't remove the disclaimed matter from the mark, it makes Activision's enforcement efforts more difficult. In addition, the USPTO has allowed for registration a number of other "Guitar" marks used in connection with video games - including Gameloft's GUITAR LEGENDS mark.

Gameloft recently filed express abandonments of its GUITAR LEGENDS and GUITAR LEGENDS  GET ON STAGE trademark applications (which had been allowed by the USPTO) - most likely as a result of the settlement. Interestingly, however, Gameloft still appears to  be actively  promoting and using its GUITAR LEGENDS GET ON STAGE mark on its website.

Copies of the Motion, Declaration and Withdrawal are below:

Download memo_of_pas_for_pi_2_3.pdf

Download finegan_decl_for_pi_2.pdf

Download show_case_doc.pdf

PTO Office Actions

This is the fourth in a series of posts discussing the trademark application process.

An office action is a rejection of your trademark application by the USPTO’s Examining Attorney. Failure to respond to an office action will result in the abandonment of your application. Similarly, failure to successfully overcome an office action will result in your application being denied. In all cases, it is advisable for an applicant to hire an experienced trademark attorney to respond to an office action on the applicant’s behalf. Typical office actions include the following:

Likelihood of Confusion: Rejections based on a likelihood of confusion with another trademark are difficult to overcome. Successfully overcoming such a rejection requires a careful analysis of the marks cited against yours and making substantive written legal arguments backed up by relevant case law.

Descriptiveness: The USPTO will reject an application if the trademark is descriptive of the goods or services with which the trademark is used. In certain cases, these rejections can be overcome by proving that the mark has acquired what is called secondary meaning. If an applicant cannot prove secondary meaning, it may be possible to register the trademark on what is called the supplemental register. An attorney can advise you on the implications of either approach.

Primarily Merely A Surname: If the trademark functions as primarily merely a surname, the USPTO will not register the trademark. It may be possible to overcome such a rejection by proving secondary meaning. Alternatively, it may be necessary to attempt to register the trademark on the supplemental register.

Indefinite Description of Goods/Services: Many times an applicant, in an attempt to secure broad protection, will describe the goods or services used in connection with the mark in broad, indefinite terms. The USPTO will reject such applications. Descriptions need to be carefully drafted to allow an applicant to reasonably grow the brand but to avoid unnecessary conflicts. Alternative descriptions proposed by the USPTO’s examining attorney should typically be avoided.

Drawings: Trademark drawings must comply with the requirements of 37 C.F.R. §2.52. The USPTO strictly enforces these requirements. In certain cases it is necessary to engage the services of a technical illustrator to overcome a rejection of the application resulting from an unacceptable drawing.

RIM Sues LG Alleging Strawberry and Black Cherry phones are confusingly similar to RIM's Blackberry Mark

Research In Motion Ltd., the maker of  Blackberry, has sued LG Electronics Inc. (Case No. 07-7323 (C.D. Cal.)) and its subsidiaries in the U.S. District Court for the Central District of California alleging that LG's Black Label Strawberry and Black Cherry phones are confusingly similar to RIM's Blackberry mark. The complaint seeks an injunction as well as damages for infringement.

RIM settled a similar suit earlier this year filed against Samsung over its use of the term Blackjack. Given that LG's marks are arguably descriptive of the colors of its phones and are used with the word "chocolate," LG has a good argument that differences in  commercial impression, connotation, appearance, spelling and pronunciation do not support RIM's claims of infringement.  Perhaps a settlement is in the cards here.

New Trademark Trial and Appeal Board Rules Go Into Effect

On November 1, 2007 new Trademark Trial and Appeal Board Rules went into Effect.  The most significant of the changes are: 1) mandatory service of complaint to defendants; 2) Settlement/Discovery Conferences; 3) Initial Disclosures; 4) Expert Disclosures; 5) Pre-Trial Disclosures; and 6) Board Protective Orders.

Complaints now must be served by plaintiffs to defendants.

Parties now will be required to serve their complaints directly to the defendant in the proceeding. The Board will not grant a filing date, until the serving party has submitted a certificate of service to the Board.  Previously, the complaint was submitted to the Board, which then delivered the complaint to an opposing party. 

Parties must engage in mandatory settlement/discovery talks.

Parties will be required to engage in a discovery/settlement conference before the opening of the discovery period.  Ostensibly, this requirement is to encourage settlements before the Board’s involvement is required. The period for these talks is before discovery but after the answer is filed.  Parties may request an Interlocutory Attorney to be present for these talks.

Parties are now required to submit initial disclosures.

This rule streamlines the TTAB Rules with the Federal Rules of Civil Procedure.  Now parties are required to exchange initial disclosures before they can serve written discovery requests or file for summary judgment.  Just as the Federal Rules of Civil Procedure require, parties will be required to identify witnesses who may have discoverable information, and a party will have to identify or disclose documents that support its claims or defenses.

Parties are now required to serve Expert Disclosures.  This rule mirrors Federal Rule of Civil Procedure 26(a)(2).  Parties are now required to serve expert disclosures to the opposing parties and file the disclosures with the Board.

Pre-Trial Disclosures.

Fifteen days prior to the onset of the opening of the testimony or rebuttal periods, parties must serve pre-trail disclosures on the other party.  The pre-trial disclosures must include a list of witnesses, testimony topics, and witness exhibit categories.  Actual exhibits do not need to be disclosed.

Board Protective Orders.

This new rule allows for the Board’s standard Protective Order in all cases before the Board.  The standard Order can only be modified via stipulation or motion.

A copy of the rules  is located here.

The TTAB's summary  is located here.

Conducting A Trademark Search

This is the second in a series of posts discussing the trademark application process.

Conducting a trademark search is critical in determining the availability of a proposed trademark. Trademark applicant’s typically conduct two types of searches: “knock out searches” and “comprehensive searches.” A “knock out” search is a search of the federal database typically looking for exact matches. This type of search is usually used to narrow the field of potential marks when considering a number of potential trademarks. A comprehensive trademark search involves conducting a search of federal, state and common law databases for exact and phonetic matches as well as foreign language equivalent. In deciding whether any marks are likely to cause confusion your attorney must consider all relevant factors. It is not a question of similarity or dissimilarity of your mark and marks revealed in the search in a side-by-side comparison.  Rather, the issue centers on whether or not consumers are likely to be confused as to the source, affiliation or sponsorship of the goods or services. 

Consumer confusion is gauged by several factors, generally including: strength of the mark (inherent and acquired), similarity of the marks, evidence of actual confusion, relatedness of the goods or services, marketing channels, consumer care taken in purchasing the goods or services, the junior user’s intent in adopting the mark, and the zone of expansion for the goods or services used in connection with the marks.  Once the trademark search is completed then the prospective applicant can decide (with guidance from experienced trademark counsel) if seeking registration is appropriate.

Selecting a Trademark

This is the first in a series of posts discussing the trademark application process.

The first step in registering a trademark is choosing a viable trademark that can be easily registered and offers maximum protection.  The United States Patent and Trademark Office (“USPTO”) will only register distinctive marks which are not likely to cause confusion with marks already registered or in use prior to the applicant’s first use.  Choosing a distinctive mark and conducting a proper trademark search can save you unnecessary costs associated with prosecuting the mark during the application process.  In addition, selecting a distinctive mark as opposed to a weak descriptive mark typically minimizes the costs associated with defending and enforcing the mark. 

A protectable trademark can be inherently distinctive or it can acquire distinctiveness.  An inherently distinctive mark is always afforded protection.  A mark that acquires distinctiveness is afforded protection because it has acquired secondary meaning.  An inherently distinctive mark is one that is suggestive, or arbitrary or fanciful.  Arbitrary or fanciful marks are the strongest marks in terms of distinctiveness.  A fanciful mark is a term that was conceived by the trademark holder for the sole purpose of serving as a trademark.  Examples of fanciful marks include XEROX used in connection with photocopy machines or TYLENOL in connection with pain medication.  An arbitrary mark is a word that is applied in a manner that is not ordinarily associated with the good or service.  Examples of arbitrary marks include CAMEL used in connection with cigarettes or APPLE used in connection to computers. 

A suggestive mark is a mark that requires a purchaser to make an imaginative or perceptive step from the mark to the good or service offered under the mark.  Examples of suggestive marks could be ICE MOUNTAIN used in connection with bottled water or SLUGGER in connection with a baseball bat.  While ICE MOUNTAIN does not describe a characteristic of the product, ICE MOUNTAIN can give the consumer a mental image of a refreshing beverage, thereby invoking a characteristic of the product.  Similarly SLUGGER does not describe a baseball bat, but is associated with the desired effect resulting from the use of the product, that is—slugging the baseball. 

A generic mark can never be afforded protection, while a merely descriptive mark can be registered as a trademark upon a showing of secondary meaning.  Generic marks are marks that generally describe the product itself or the class of products to which they belong.  A generic mark will usually satisfy the “who are you/what are you” test, whereby if the mark can answer this question then the mark will be deemed generic.  CORN FLAKES used in connection with corn cereal is an example of a generic mark. 

A merely descriptive mark is a mark that will describe to a consumer a characteristic of the product.  SPEEDY used in connection with a mail delivery service is an example of a merely descriptive mark, as it describes a desired characteristic of any mail delivery service.  Merely descriptive marks are not registrable absent a showing of secondary meaning.  Secondary meaning is achieved when the merely descriptive mark has become associated with the product in the consuming public’s mind.  Secondary meaning can be shown by evidence such as marketing or advertising efforts, market survey evidence, and the length of time that the mark has been used. 

Thus, the two most important lines in this spectrum are the lines between generic and descriptive and the line between descriptive and suggestive.  A mark classified on the generic side of the generic/descriptive line will preclude a company from registering the mark altogether.  A mark falling on the descriptive side of suggestive/descriptive will require a party to show secondary meaning, which will require more effort and money on the part of the applicant.  Therefore, when considering a mark, it would be beneficial to err on the side of suggestive/arbitrary, rather than suggestive/descriptive. 

Another important consideration is the amount of marketing effort associated with the different types of marks.  A fanciful mark will initially require extensive marketing to create a connection in consumers’ minds between the trademark and the goods or services offered under the mark.  However, once that connection is made the mark will have both inherent strength and acquired strength.  Similarly, choosing an arbitrary mark will also require a greater amount of marketing effort in order to make the connection in consumer’s minds between the mark and the goods or services.  Conversely, a mark that is generic or descriptive will require little marketing or advertising to create a connection between the mark and the good or service because the mark will generally convey to the consumers what is being offered.  However, the generic mark will not be afforded any protection if competitors use a similar or exact embodiment of the mark.  A descriptive mark may be afforded protection, but litigation may be costly, as the mark owner will need to show secondary meaning to protect the mark.  A suggestive mark will require marketing efforts to create the connection in consumers’ minds; but because of the nature of a suggestive mark, consumers may make the connection in their mind upon examining the mark.  However, if an applicant has been using the mark in commerce prior to the registration, then these concerns may not be an issue.