This one is kind of funny.  The Orlando Predators, which is an Arena Football team, was recently sold.  Apparently the sale did not include the domain name “orlandopredators.com” because the Orlando Sentinel is reporting that the domain is now redirecting to…drumroll…:

predators1

 

Yep – the Florida Department of Law Enforcement’s website for “predators.”  Well-played former owner, well-played.

See article HERE.

As the article states, an ICANN UDRP proceeding has been initiated.  I didn’t see it on WIPO’s or NAF’s websites this morning, but I wonder if the UDRP proceeding will even be successful.  If the sale contracts did not include the domain name, the only way that a UDRP proceeding would result in transferring the domain is if the UDRP Panel determines that the current owner registered AND used the domain in bad faith.  My guess is that the domain was registered prior to the sale for the purpose of promoting the Orlando Predators football team.  No bad faith there.  And, while it was used to promote the team, there’s probably no bad faith there, either.

So, will the act of redirecting the domain name to a website that really does contain information about Orland0-area predators be considered bad faith?  The UDRP is not designed to handle trademark infringement, just cybersquatting.  So, to the extent that the prior owner did not sell the domain and was not engaged in bad faith when he registered and used it, then the UDRP may be powerless, and this will become either a trademark infringement lawsuit or a contractual issue depending on the sale documents.  For now, redirecting to the FDLE Sexual Predators site seems like a safe move.  (Of course, there’s an argument that the redirection to a sexual predator site “dilutes” the Predators brand via tarnishment theories, but I doubt the Orlando Predators brand has attained the level of fame necessary for a federal dilution claim.  Maybe a state dilution claim though.)

This could be a very interesting proceeding, presuming it isn’t worked out between the parties.

For now, go to http://www.myorlandopredators.com for info on the football team (and not to create your own database of Orlando-area sexual predators).

predators2

I’m proud to announce that for the third year in a row, I’ve been selected as a Rising Star:

 

Kevin W. Wimberly has been named to the Florida Rising Stars list as one of the top up-and-coming attorneys in Florida for 2014 in the field of Intellectual Property.  Each year, no more than 2.5 percent of the lawyers in the state receive this honor.  The selection for this respected list is made by the research team at Super Lawyers.

Super Lawyers, a Thomson Reuters business, is a rating service of outstanding lawyers from more than 70 practice areas who have attained a high degree of peer recognition and professional achievement.  The annual selections are made using a rigorous multi-phased process that includes a statewide survey of lawyers, and independent research evaluation of candidates, and peer reviews by practice area.

The Rising Stars lists are published nationwide in Super Lawyers magazine and in leading city and regional magazines across the country.

 

Congratulations are also in order for others in my firm:  Jim Beusse and Terry Sanks were named Super Lawyers in the 2014 Florida Edition of Super Lawyers Magazine in the field of Intellectual Property law, and Amber Davis was also listed as a Rising Star in the field of Intellectual Property law.

As blogged HERE and HERE, Clown Shoes Beer changed the name of its Vampire Slayer beer due to a trademark dispute.  Rather than going gentle into the good beer-fueled night, Clown Shoes raged on and mocked the dispute by writing an article about the issue and why they handled it the way they did.  (The article is no longer on the Clown Shoes website, but an archive is HERE.) To recap, Clown Shoes handled the issue by changing the name of the beer to Undead Party Crasher (which is a sly comment on the fact that Clown Shoes’ original Vampire Slayer beer was supposed to be a celebration of Clown Shoes’ second anniversary).  Oh, and they also mocked my profession in a pretty hilarious way. So, my final update on this issue is simply this:  My local Total Wine has just about cleared its inventory of Vampire Slayer, and they have the new Undead Party Crasher in stock.  Of course, I bought a bunch for my colleagues. While I applaud the fun that Clown Shoes had with this issue, I have to disagree with Clown Shoes by answering the question “do we need the undead and trademark attorneys” with a resounding, “YES!” (as opposed to “No, Die Monsters, Die”)

undead-closeup

“Die, monsters, die!”

 

undead-pano

Panorama shot. Oooooh. Fancy.

undead-slayer

Entrepreneurs are flooding Florida as the state’s citizens prepare to vote on legalizing marijuana for medicinal purposes this November. The initiative is on the ballot, and signs are pointing toward enough support to pass the amendment to the Florida Constitution.

As with any new industry, the rush to make a buck has been swift and fierce. Medical marijuana schools are being advertised, seminars are being held at hotels, and law firms are ramping up to guide entrepreneurs through the state regulations. Of course, there are no state regulations yet, but the early bird gets the weed, and it makes sense to start consulting with your attorney of choice regarding what may happen in early 2015.

Clearly, medical marijuana is going to be a “Florida IP Trend” if it isn’t already.

But, the majority of intellectual property practice is based on federal law – the Lanham Act, the Copyright Act, and the Patent Act all arise out of either the Article I, Section 8, Clause 8 of the U.S. Constitution (copyrights and patents) or the Commerce Clause of the Constitution (granting the federal government the right to regulate interstate commerce, including interstate trademark use).

As you may have heard, marijuana remains illegal at the federal level, and trademark applications before the United States Patent and Trademark Office are being routinely rejected with essentially the same boilerplate language:

SECTIONS 1 AND 45 REFUSAL – NOT IN LAWFUL USE IN COMMERCE

Registration is refused because the applied-for mark, as used in connection with the goods and/or services identified in the application, is not in lawful use in commerce.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127.

To qualify for federal trademark/service mark registration, the use of a mark in commerce must be lawful.  Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 526, 3 USPQ2d 1306, 1308 (Fed. Cir. 1987) (stating that “[a] valid application cannot be filed at all for registration of a mark without ‘lawful use in commerce’”); TMEP §907; see In re Stellar Int’l, Inc., 159 USPQ 48, 50-51 (TTAB 1968); CreAgri, Inc. v. USANA Health Scis., Inc., 474 F.3d 626, 630, 81 USPQ2d 1592, 1595 (9th Cir. 2007).  Thus, any goods or services to which the mark is applied must comply with all applicable federal laws.  See In re Midwest Tennis & Track Co., 29 USPQ2d 1386, 1386 n.2 (TTAB 1993) (noting that “[i]t is settled that the Trademark Act’s requirement of ‘”use in commerce,” means a “lawful use in commerce,” and [that the sale or] the shipment of goods in violation of [a] federal statute . . . may not be recognized as the basis for establishing trademark rights’” (quoting Clorox Co. v. Armour-Dial, Inc., 214 USPQ 850, 851 (TTAB 1982))); In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976); TMEP §907.

The Controlled Substances Act (CSA) prohibits, among other things, manufacturing, distributing, dispensing, or possessing certain controlled substances, including marijuana and marijuana-based preparations.  21 U.S.C. §§812, 841(a)(1), 844(a); see also 21 U.S.C. §802(16) (defining “[marijuana]“).  In addition, the CSA makes it unlawful to sell, offer for sale, or use any facility of interstate commerce to transport drug paraphernalia, i.e., “any equipment, product, or material of any kind which is primarily intended or designed for use in manufacturing, compounding, converting, concealing, producing, processing, preparing, injecting, ingesting, inhaling, or otherwise introducing into the human body a controlled substance, possession of which is unlawful under [the CSA].”  21 U.S.C. §863.

In the present case, the application identifies applicant’s goods and/or services as follows: “Providing a web site that features informal instruction on the cultivation of medical marijuana.”

The evidence submitted with applicant’s response to the previous Office action plainly indicates that applicant’s identified services include activities that are prohibited by the CSA, namely, instruction on how to grow, cultivate, harvest and produce marijuana.

Because these goods and/or services are prohibited by the CSA, the applied-for mark, as used in connection with such goods and/or services, is not in lawful use in commerce.

 

There are currently 327 applications and/or registrations in the USPTO’s database which contain the word “marijuana” in the description of goods or services.  Of those 327, only 45 are (or were) actually registered.  While many of those 327 applications were rejected with language similar to that cited above, the few that squeaked by are either anomalies and/or the work of skilled trademark practitioners who know how to carefully craft a description of services.  (To be fair, many of the ones that have not been registered were allowed to be registered, but the applicants did not follow up with certain filing requirements, such as specimens of use.)

As an example of the division between allowable and not allowable, consider that a popular website located at http://www.leafly.com received a registration for LEAFLY for use with, among other things:

“Providing consumer information in the field of medical marijuana dispensary inventories and locations; providing links to web sites of others featuring consumer information on medical marijuana inventories and locations; providing a web site featuring the ratings, reviews and recommendations on products and services for commercial purposes posted by users; providing consumer information regarding medical marijuana dispensaries, inventories and locations”

and

“Providing health information in the field of medical marijuana, and regarding indications and effects of particular cannabis strains, and regarding medical marijuana dispensaries, inventories and locations”

Yet, an application for MARY N’ JANE for use with “Providing a web site that features informal instruction on the cultivation of medical marijuana” was rejected per the above language.  The difference is apparently that using the trademark in connection with marijuana cultivation instruction is not ok, but using the mark for general information about marijuana dispensaries is ok.  This logic is further supported by questions that USPTO Examining Attorneys are routinely asking of applicants with marijuana-based goods or services, namely:

Do the applicant’s classes, seminars, and/or workshops involve the provision of, instruction on how to grow, and/or instruction on how to obtain marijuana, marijuana-based preparations, or marijuana extracts or derivatives?

Are the applicant’s services lawful pursuant to the Controlled Substances Act?

If the answer to the first question is Yes, no registration for you.

So, what is the Florida-based medical marijuana entrepreneur to do?  State trademark registrations are an option, but Florida does not recognize “intent to use” applications like the USPTO does.  This means that even if you are planning to open a dispensary, nursery, or other marijuana-related establishment once the regulations are drafted and licenses are issued, you cannot apply for the state trademark registration now because you cannot yet legally run a medical marijuana facility in Florida.  The flood of state applications that will occur on Day 1 will be astounding, and anyone who has used Florida’s state registration system knows that this impending flood just might break the system.

Another interesting aspect of medical marijuana in Florida is that just last year our lawmakers passed the so-called Bong Ban Bill, making it illegal to sell virtually anything that can be used to smoke marijuana…but only if the seller intended for the item to be used in violation of the drug paraphernalia laws.  So, if you do not intend for people to use your hand-crafted glass pipe to smoke illegal substances, presumably you do not violate the law.  (As with everything on this blog, the preceding is not legal advice.  If you intend to sell pipes, you should consult an attorney.)  Once Amendment 2 passes and medical marijuana is legalized in Florida, I’m guessing that the “Bong Ban” will need some renovation.

 

 

 

20 Years Ago 2 Live Crew, A Rude Rap Song And The Supreme Court Helped Clear The Way For The Modern Internet.

20 Years Ago 2 Live Crew, A Rude Rap Song And The Supreme Court Helped Clear The Way For The Modern Internet (via Techdirt)

A couple months ago, we had a blog post celebrating the 30th anniversary of the Supreme Court’s decision that showed the Sony Betamax was legal, an important ruling that helped clear the field for innovations that could, potentially, be used for infringement…


(more…)

Anyone who practices in the field of “Internet Law” knows who Eric Goldman is.  I’m not the only one who religiously devours his Technology and Marketing Law blog, and I suspect that I’m also not the only attorney who finds his analysis of topics such as Section 230, the TCPA, and other “techie” issues to be quite valuable in my law practice.

He posted today, but it wasn’t about CAN-SPAM or whether or not a plaintiff might have a valid trespass to chattels claim based on alleged harm to a server.  No, today he posted about his family.  Specifically, his wife Lisa’s shocking lung cancer diagnosis.

I encourage you to read his post, and to also read Lisa’s blog as she tries to make sense of her condition while also spreading the word that lung cancer is not only a smokers’ disease.  As she said, “lung cancer can strike anyone with lungs.”  My cousin, Josh, died from colon cancer last year at 37 years old.  Lisa is 41.

Eric’s post: http://blog.ericgoldman.org/archives/2014/02/my-wife-has-lung-cancer-read-her-story.htm

Lisa’s Blog:  http://lisa.ericgoldman.org

We’ve blogged about the BCS’s intent to register the words “COLLEGE FOOTBALL PLAYOFF” for the BCS college football playoff HERE and HERE.

It doesn’t take a trademark attorney to figure out that the words COLLEGE FOOTBALL PLAYOFF are descriptive of a “college football playoff,” which the BCS describes as the following services: “Entertainment services in the nature of television and radio sports programs featuring college football games, exhibitions and tournaments; entertainment services, namely, organizing and staging college football games, exhibitions and tournaments; and providing entertainment, information, news and programming, polls, scores, standings, statistics, and history and background, all in the field of the sport of football, via the internet.”

The USPTO agreed, and refused to register the trademark.  As explained in the previous posts, trademarks that are “merely descriptive” of the goods or services are not registrable without a showing of acquired distinctiveness (or, secondary meaning).  It’s pretty hard to show that your trademark as acquired distinctiveness when it’s not even in use yet.  Nonetheless, the BCS threw out the red flag to challenge the refusal, but, on February 6, 2014, the USPTO said that the play on the field stands.

Well, that’s not entirely accurate, the USPTO is now saying that the mark is just flat out generic.  Generic terms can never be registered. Wilson cannot obtain a registration for FOOTBALL for footballs…  And, now, the BCS cannot receive a registration for COLLEGE FOOTBALL PLAYOFF no matter how much acquired distinctiveness it claims to have.  So, the BCS actually lost yards on the play.

From the USPTO’s most- recent Office Action:

Registration was initially refused under Trademark Act Section 2(e)(1) because the applied-for mark is merely descriptive of applicant’s services.  15 U.S.C. §1052(e)(1).  Applicant was also advised that the mark appears to be generic as well.  In response, applicant amended the application to add a claim of acquired distinctiveness under Section 2(f).  15 U.S.C. §1052(f).

Initially applicant was advised that the mark might be generic for only one of applicant’s services.  However upon further review, registration is now refused because the applied-for mark is generic for all of applicant’s services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(c) et seq., 1209.02(a)(ii).  Thus, applicant’s claim of acquired distinctiveness under Section 2(f) is insufficient to overcome the refusal because no amount of purported proof that a generic term has acquired secondary meaning can transform that term into a registrable trademark or service mark.  See 15 U.S.C. §1052(f); In re Bongrain Int’l (Am.) Corp., 894 F.2d 1316, 1317 n.4, 13 USPQ2d 1727, 1728 n.4 (Fed. Cir. 1990); H. Marvin Ginn Corp. v. Int’l Ass’nof Fire ChiefsInc., 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986); TMEP §1212.02(i).

Ouch.  I’d say the BCS needs to sit out for a “concussion assessment” over that one.

The BCS isn’t giving up so easily.  The strategy now appears to be based on registering the exciting logo below:

BCS CFP logo

Yeah, that “exciting” bit was sarcasm.

Actually, there has been an application pending for a different form of that logo since last year.  Not surprisingly, the USPTO is requiring the BCS to “disclaim” the generic wording, so the BCS will essentially be left with the beautiful black and gold logo as a registration, although I anticipate lots of over-reaching lawsuits when retailers begin using the term “College Football Playoff” in advertisements for TV’s, French onion dip, and recliners.

On a side-note, logos must be described in order to assist with searching for conflicting logos, so the USPTO will assign various tags to describe the logo.  Hilariously, the design code for the above logo is: “21.03.18 – Australian footballs; Rugby balls; Footballs; Elliptical shaped balls.”

Come on, Man!  This is America.  Wouldn’t “American football” have been enough?  Why bring rugby into this?

Finally, interested in what  the BCS wants to sell you with that logo on it?

IC 006. US 002 012 013 014 023 025 050. G & S: Metal key chains

IC 009. US 021 023 026 036 038. G & S: Video game software; digital media, namely, pre-recorded DVDs, downloadable audio and video recordings, and CDs featuring college football games, exhibitions and tournaments, and promoting the sport of football; downloadable software in the nature of a mobile application for providing entertainment, information, news and programming, polls, scores, standings, statistics, and history and background, all in the field of the sport of football

IC 014. US 002 027 028 050. G & S: Jewelry, watches, pendants, rings, medallions, collectible coins

IC 016. US 002 005 022 023 029 037 038 050. G & S: Printed publications in the form of game programs, media guides and commemorative books in the field of sports and entertainment; bumper stickers, decals and paper pennants

IC 018. US 001 002 003 022 041. G & S: Wallets, billfolds

IC 020. US 002 013 022 025 032 050. G & S: Plastic novelty license plates; vinyl flags

IC 021. US 002 013 023 029 030 033 040 050. G & S: Mugs and beverage glassware

IC 025. US 022 039. G & S: Men’s, women’s, and children’s clothing, namely, t-shirts, sweat shirts, sweat pants, caps, hats, pullovers, jerseys, and jackets, visors, shorts, socks, sweatbands, scarves, and sweaters

IC 027. US 019 020 037 042 050. G & S: Rugs

IC 028. US 022 023 038 050. G & S: Toy novelty items, namely, foam fingers and hands; sports equipment, namely, footballs and kicking tees; collectible toys, namely, full-sized replica football helmets and mini collector football helmets, collectible full-sized replica footballs

IC 041. US 100 101 107. G & S: Entertainment services in the nature of television and radio sports programs featuring college football games, exhibitions and tournaments; entertainment services, namely, organizing and staging college football games, exhibitions and tournaments; and providing entertainment, information, news and programming, polls, scores, standings, statistics, and history and background, all in the field of the sport of football, via the internet

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