Caveat Brand Owner: We are in the beginning of a two-month “sunrise period” for trademark owners to register their marks as second level domain names in “.sucks.” While the purported purpose of the “.sucks” domain name is to provide a forum for customers to voice constructive criticism, trademark owners may disagree. The hefty price tag associated with the sunrise period, along with the uncertainty of how much protection owning a “.sucks” domain actually provides, leaves brand owners with a lot to consider. For further details, please click here.
Dickerson M. Downing is a partner in the firm's Intellectual Property Group in New York, with over 25 years of experience in trademark, copyright and trade secret law as well as other areas of intellectual property law. He has successfully brought and defended cases for trademark, trade dress and copyright infringement, false advertising, trade secret violations and related causes of action in courts throughout the United States for a variety of corporate clients. He has been involved in the seizure of infringing goods, the detainment of infringing goods by the United States Customs Office and in the successful action to prevent the sale of imported "gray market" goods in the United States.
Trademark applicants and registrants may experience increased scrutiny of their trademark use claims in light of the results of a recent Pilot Program, conducted by the United States Patent and Trademark Office (USPTO), showing that fifty percent (50%) of approximately 500 randomly selected registrants could not support the claims made in previously filed Declarations of Use. See USPTO Report. Each selected registrant had been asked to submit specimens showing use for two additional goods or services per class in addition to the specimen already submitted with the Declaration.
The USPTO is continuing to study the matter and it is unclear what formal actions it ultimately will take. It is clear the USPTO believes this is a problem that needs to be addressed. The USPTO has stated it may conduct other similar audits and there is nothing to prevent it from auditing applications as well. Trademark owners should exercise extra care to insure that a mark is in use for all goods and services listed in an application or registration before filing a Declaration of Use or Statement of Use.
Both have recently brought legal actions against video game makers alleging that their rights of privacy or publicity have been violated by characters in video games. The lawsuits are the latest in a series of high profile disputes that pit an individual’s personality rights against a game maker’s First Amendment rights.
Various states have enacted statutes that protect an individual’s right to “publicity” or “privacy.” The statutes differ from state-to-state but the basic idea is that an individual should have some right to prevent unauthorized commercial use of his or her name, likeness and identity by a third party. This is sometimes referred to as “personality rights.”
The expressive content of video games, on the other hand, is subject to protection under the First Amendment. The extent to which the First Amendment rights of a video game manufacturer may permit the use of real people as characters in video games without violating the individual’s personality rights has been the subject of much interest and discussion in the recent past.
The discussion resumed in earnest in early July when Ms. Lohan brought an action in New York state court alleging that the maker of the video game Grand Theft Auto V had violated her right of privacy under New York state law by the use of her image, likeness, “screen persona” and details from her personal life in depicting a character in the game named Lacey Jonas. A few weeks later, Mr. Noriega brought an action in California state court alleging that the maker of the video game Call of Duty: Black Ops II violated his right of publicity under California state law by illegally using his image and likeness in connection with a character described “as a kidnapper, murderer and enemy of the state.” The lawsuits have been treated by some in the media and by some commentators with a certain degree of amusement and in Mr. Noriega’s case – whose colorful resume includes convictions for drug trafficking, racketeering and money laundering as well as a lengthy stint as a U.S. Prisoner of War – outright disbelief, but they raise serious issues regarding the interplay between the First Amendment and the rights of privacy and publicity.
The Federal Trade Commission recently sent letters to a number of search engine companies regarding what the FTC perceives to be “a decline in compliance” with the FTC’s 2002 guidelines requiring that search engine results clearly and prominently distinguish natural search results from paid advertising. In the letter, the FTC notes that the failure to properly distinguish natural results from paid advertising could create a potential for consumers to be deceived in violation of Section 5 of the FTC Act.
Search engines sell “keywords” to vendors who want their product advertising to be displayed when a person searches for a term containing that keyword. A law firm, for example, might be willing to pay a search engine to prominently display the firm name and website link when someone searches for “law firms New York.” Search results often contain both natural results generated by the search method used as well as paid results. The problem, as the FTC sees it, is that consumers might not be able to tell the difference.
The Third Circuit Court of Appeals issued an opinion on May 21, 2013, finding that the use of the likeness of Ryan Hart, a former standout quarterback for Rutgers, in a video game about college football, violated Mr. Hart’s right of publicity. Hart v. Electronic Arts Inc., No. 11-3750, 2013 U.S. App. LEXIS 10171, at *3 (3d Cir. May 21, 2013). The ruling could significantly impair the ability of video game makers to continue to use “real people” in video games to enhance the realism of those games, particularly in the context of sports video games. For more information, click here.
Content for this post was provided by Jonathan Anastasia, an associate in Crowell & Moring’s Intellectual Property Group.
As of March 26, 2013, trademark owners may submit their trademarks for inclusion in the “Trademark Clearinghouse,” which may be a valuable tool for minimizing the potential for abuse resulting from the imminent expansion in the number of generic Top Level Domains (gTLDs). Inclusion in the Clearinghouse will give the mark owner the opportunity to register the mark in each new gTLD before the general public and will provide other notice benefits as well.
The Internet Corporation for Assigned Names and Numbers (ICANN) is involved in a process that will greatly expand the number of gTLDs. Currently there are around twenty active gTLDs, of which “.com” is the best known. Soon new gTLDs will be implemented and hundreds more may follow. To address some of the concerns regarding the correspondingly expanded potential for trademark abuse, ICANN has authorized the establishment of a Trademark Clearinghouse to allow trademark owners to submit their trademarks into a centralized database for verification.