Friday, April 29, 2011

Green Confusion

There are two national political parties in the US that lay claim to the title Green. As you may have noticed, neither of them can claim to have helped elect any Green candidates recently. But that doesn't stop them fighting each other, rather like the feud in the Life of Brian between the Judaean Popular Front and the Popular Front of Judaea (splitters). Now the Green-on-Green rivalry has spilled over into intellectual property law.

After stymying the trademark application of the Green Party of the United States last year, the Greens/Green Party USA has filed its own application. It would like federal recogniton for the exclusive right to use its name as a trademark. Last year's TTAB decision held that the competing parties' marks are confusingly similar.

This is not the first time the Greens/Green Party USA has filed a trademark application. In filed once in February 1992 but failed to respon to an Office Action, so the USPTO deemed the application abandoned.  It tried again in August 1994, only to abandon the application again.

Third time lucky?  In March 2005, the Greens/Green Party USA filed another application.  Much correspondence ensued.

But then, on April 5, 2011, the United States Patent & Trademark Office issued the Notice of Publication, which started the clock running on the 30-day opposition period.  Will the Green Party of the United States file timely opposition? The clock is still ticking.

Thursday, April 21, 2011

Pirate Party Making Waves

Ryan Moffitt is running for the office of state representative in Florida's 86th district.

Why does this merit a mention in my law-office blog, as opposed to my political blog, Mass Greens? The reason is that Mr. Moffitt's candidacy bridges third-party politics and intellectual property law, two subjects that rarely overlap, at least in my experience.

In addition to being a candidate, Mr. Moffitt is chair of the Florida affiliate of the Pirate Party, which campaigns for a thorough overhaul of copyright, patent, trademark, and privacy laws here in the US and at the international level. The party started in Sweden and now boasts outposts across Europe and the United States, including Massachusetts

One of the main planks in the Pirate Party's platform is the revision of the Copyright Act. At present, for works created after January 1, 1978, copyright lasts for the life of the author plus 70 years. In other words, copyright is descendible.  This means that the copyright in any given work outlives its creator, so that authors can leave their copyright to their legatees.

We can bequeath and inherit copyright just as we can bequeath and inherit other forms of personal property and real estate. A major difference is that the legatee's exclusive right to the copyrighted work evaporates at a certain point, i.e. 70 years after the testator's death.

Of course, 70 years is a pretty long time. When I started practicing law back in 1998, copyright lasted for life plus 50 years. Even 50 years is quite a long time for the public to have to wait for the exclusivity to expire and for a work to enter the public domain.

As the Pirate Party points out, these lengthy terms are a relatively recent phenomenom. Originally, Congress set a much shorter life-span for copyright, just 14 years. And that is the length of time that the Pirate Party would like the Copyright Act to revert to. It would also like to repeal the Digital Millennium Copyright Act and create a presumption in favor of derivative works constituting fair use, shifting the onus from the defendant (who currently has to prove that a derivative work is fair use) onto the plaintiff to prove that it is not.

The party also has opinions about trademark law, and I would like to know what the Pirates make of a new proposal before the Massachusetts Legislature. Senator Steve Tolman's bill (Senate 1635) would require courts interpreting Massachusetts trademark law to construe it in a way that is consistent with federal trademark law. 

Somewhat unusually for a Massachusetts statute the new law would contain an explicit intent provision, stating that it is the intent of the Legislature "to provide a system of trademark registration and protection substantially consistent with the federal system."

Well, Pirates and non-Pirates alike: What do you think? A sensible housekeeping measure or a slippery slope? 

Wednesday, March 16, 2011

New European Trademark Search Tool

OHIM, the Office for Harmonization in the Internal Market, has just unveiled its new, faster trademark and design search service, eSearch Plus. The new tool combines its predecessors, CTM-Online, RCD-Online, and TMview, and makes it easier for users to search for Community trademarks and designs including owners' details.

Thursday, March 10, 2011

Three tips when using GREEN in a trademark

If you use the word green in your trademark or service mark, you're in good company. Thousands of businesses now use green to signal to their customers that the company uses environmentally friendly practices. On the bright side, the growing number of green trademarks shows that citizen-consumers are demanding higher standards in the market place. But it also means that green no longer helps differentiate your products and services the way it used to.

So if you're protecting your intellectual property rights by applying for federal trademark registration, here are three things to bear in mind:

First, remember that green is a descriptive term so in and of itself it would not qualify for federal trademark protection. Because so many businesses use the word, its value as a mark has becoming weaker. As a practical matter, how does this affect you? When you're completing your application, disclaim the exclusive right to use the word green.

Second, remember to state in your application that you employ environmentally friendly practices. Without that statement, you could receive an initial refusal from the examining attorney at the US Patent & Trademark Office. An initial refusal isn't fatal necessarily, but it involves an additional delay and more of your attorney's (billable) time.

Third, if you have not yet invested significant resources into branding, think about adapting your mark to a market in which green-ness is no longer such a niche. Remember that while descriptive terms like green get the message across, arbitrary and fanciful marks receive the highest level of trademark protection. As you know, choosing the right mark means treading a fine line and the proliferation of green trademark applications is an important factor to bear in mind.