Letter from AmeriKat: Full of Surprises - USPTO fights TM bullies, the Hulk, and Olson takes on YouTube

Two Fridays ago, the AmeriKat was involved in a technical discussion with a partner at her firm, when a bouquet of beautiful pink and purple flowers interrupted the dialogue as it landed on her desk. Convinced the bouquet was meant for someone else she looked at the card, but it was indeed addressed to her, an ipkitten, from an anonymous reader. The AmeriKat, unsure of what was more surprising, receiving flowers or receiving them from an anonymous source, began to quiz the usual suspects - all of whom knew nothing of the greenery. The flowers, still blooming away on her desk, are a little reminder to the AmeriKat that when you least expect it, your otherwise run-of-the-mill day can surprise you. (picture, left - the AmeriKat smelling her bouquet on her desk) Thank you, anonymous reader!

USPTO to stop trade mark bullies?: Recess - either the enjoyable half hour that many look forward to, or dread as the encounter with the playground bully nears. Teachers and students are not the only individuals concerned with bullies - surprisingly, the USPTO is as well! Earlier this year the US Congress and President Obama passed into law the Trademark Technical and Conforming Amendment Act of 2010 (TTCAA). The bill focused primarily on technical aspects of trade mark law such as affidavit filing for continued use of trade marks and other fascinating issues. However, there is a surprise in the Act. Every IP lawyer's favourite politician, Senator Patrick Leahy (D-Vermont, picture right), included a provision, now lovingly known as the "trade mark bullies" provision, that requires the Secretary of Commerce to study and report to Congress on:

"the extent to which small businesses may be harmed by litigation tactics attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner"

So where does Senator Leahy's concern about trade mark bullies derive? Well, it turns out it is good old fashion state politics. Senator Leahy is a senator from Vermont. His election to Senate, therefore, depends on the good people of Vermont. Some of these good people include a husband-and-wife run Vermont brewery, Rock Art Brewery, who had been on the receiving end of Hansen Natural Corporation's lawyers. Hansen produce a variety of beverages, including Monster Energy Drink. Rock Art Brewery produce a beer called VERMONSTER. Not infringing to the AmeriKat and little chance a consumer would be confused between buying a energy drink and a beer. However, Rock Art Brewery duly received a cease and desist letter from Hansen claiming that Rock Art's VERMONSTER infringed their MONSTER ENERGY trade marks. Instead of submitting to the multi-million dollar coroporation, the Vermont brewery fought back and generated enough negative publicity to lead to a settlement agreement whereby Rock Art Brewery could continue to use their mark. To hear Rock Art Brewery's story - click the links here and here.

The AmeriKat reads several reports of multi-million dollar corporations sending out such cease and desist letters (remember the DoughBoy/Girl saga here?) and with such commonplace stories the USPTO is now calling for submissions from small business owners about their experiences with such "bullies". Specific questions include:

• In approximately the last 5 years, please describe any instances of which you have first-hand knowledge where a small business may have been the target of litigation tactics attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner
• Whether you think “trademark bullies” are currently a problem for trademark owners, and if so, how significant is the problem?
• Whether you think aggressive litigation tactics are more pervasive in the trademark area than in other areas of the law?
• Whether you think the USPTO has a responsibility to discourage or prevent trademark bullying? If yes, what should the USPTO do?

If you are the David in one of these David and Goliath sagas, the USPTO asks you to respond to questions and send your comments to TMFeedback@uspto.gov, with the subject line “Small Business Study” by no later than January 7, 2011.

The AmeriKat loves this provision and the call for evidence, but is questioning what Congress is really going to do with the evidence? What protection should be afforded small businesses? Perhaps an unjustified threats action? What do readers think?

Trade mark infringement makes Hulk mad: In the field of "surprising' (and potentially keeping with the trade mark bullies theme), nothing could be less surprising than a Disney-owned subsidiary, Marvel Comics, suing a much smaller company for use of one of their marks. Marvel Comics has filed a complaint against Airbase Industries, an Ohio-based power tool manufacturer, for use of a line of industrial and domestic equipment under a "Hulk" brand. The line's marketing logo is "Unleash the Power". One of Airbase's subsidiaries registered the HULK mark with the USPTO last year, which Marvel opposed, but an USPTO examiner gave the go ahead nevertheless. Now with the sale of Airbase's air compressor (picture, right) under the HULK mark, Marvel has initiated proceedings in the Ohio Southern District court.

The complaint states that the products slimy green shade is "confusingly similar" to the Hulk's green character. The lettering and font of the product's HULK mark is also, they allege, "nearly identical" to Marvel's Hulk logo. These two elements are so similar to the look and feel of Marvel's Hulk (picture, left) that your average power tool consumer will think that Marvel licensed the use of their Hulk rights to Airbase. Does your average power tool consumer think much except "that is an awesome air compressor!", anyway? Marvel is asking the court for the usual remedies - injunction, cancellation of the Airbase trade mark and all the profits from the infringing products.

Although several other companies and individuals have used and indeed registered HULK for products without too much of a squeak from Marvel, it is Airbase's product that has awoken the dragon. The AmeriKat believes this is due to the mistaken choice, by Airbase, to use such a similar green color to that of the Hulk. But the timing is also telling. Reported by The Hollywood Reporter last week, Marvel and American TV channel, ABC, are planning the return of the Incredible Hulk. Lesson: don't mess with the Hulk when he has a new show and merchandise coming out...

YouTube to face superstar lawyer in Viacom appeal: Another superstar that is planning a bit of an upcoming show is Theodore Olson. Olson, one of the most renowned appellate lawyers in the U.S. , has been hired by Viacom in their appeal against Judge Stanton's ruling earlier this summer. As reported by the AmeriKat (here), the judge ruled that YouTube qualified for the Safe Harbor protections under the Copyright Act for direct and contributory copyright infringement in hosting Viacom content illegally posted by other users. The loss was a huge knock to Viacom and other rights-holders in their fight against YouTube. The hiring of Olson, however, means that Viacom - far from being defeated, is coming back for another round.

Olson, (picture, right) a Republican, grew up mainly in the San Fransisco Bay area and later worked as the Assistant Attorney General in the Reagan Administration. He also defended former President Reagan during the Iran-Contra affair. From 2001 to 2004, Olson was, unsurprisingly, Solicitor General of the United States following his victory in Bush v Gore which permitted President Bush to take office. Obviously, the AmeriKat is painting a picture of Olson as a Republican ally, used to representing the more powerful and liquidated of parties. However, keeping in line with the theme of surprise this week, Olson also joined forces with his opposing counsel in Bush v Gore, David Boies, to bring and win a federal suit to overturn Prop 8 banning gay marriage in California in Perry v Schwarzenegger.

A few weeks ago, Google submitted a motion to the 2nd Circuit court to consolidate the appeals of Viacom and the class action suit headed by the Premier League. Had Google gotten their way, Viacom would have had to join forces with Premier League et al to file one appeal brief. However, last Monday the 2nd Circuit court ruled that although the case would be consolidated and heard in tandem per Viacom's motion, each of the parties would have the chance to file their own briefs. So as of 3 December, when Viacom is expected to file their appeal, the AmeriKat anticipates their brief, with Olson at the helm, will not fall too short of their 14,000 word limit. The oral hearings in the appeal are sent to take place next summer.

The AmeriKat wonders if Olson is keeping some surprising arguments up his sleeve for the appeal, because where she stands right now it will only be the most creative and impressive of arguments that will defeat YouTube,now.