USPTO Changes in Requirements for Declarations of Use

We previously reported the Declarations of Use pilot program by the USPTO. Examiners could request additional evidence when they questioned the evidence filed. These requests applied to both national and international registrations. As a result of the pilot program, the goods and services listed in the vast majority of the registrations questioned were limited to those in actual use. The USPTO is now proceeding to make the pilot program procedures part of the official rules. The objective is to have a more precise register of trademarks. Although the entire rulemaking process is not complete, these new regulations are likely to be implemented swiftly.

The key provision is:

The Office may require the owner [or holder of an International Registration] to furnish such information, exhibits, affidavits or declarations, and such additional specimens as may be reasonably necessary to the proper examination of the affidavit or declaration under section 8 [section 71] of the Act or for the Office to assess and promote the accuracy and integrity of the register.

See Federal Register – 6/22/2016 amending TMEP Sections 2.161 and 7.37

This rule gives the USPTO great latitude. Examiners can request additional information from a registrant to determine that the affidavit of use is accurate, and in particular that the mark is in use for all of the goods and services listed in the registration. United States law requires that an application filed on the basis of intent-to-use and converted to use, or based on use, must be in use for all of the goods and services. This is also true for the filing of Declarations of Use.

This new rule will be particularly problematic to foreign registrants where there is a tendency to include items in the list of goods and services that are beyond the scope of the business of the trademark owner. This common practice is because foreign trademark rights are more specifically limited to the actual goods and services listed in the registration. Rather under US law rights are evaluated under a likelihood of confusion analysis which can extend beyond the specific goods and services listed in the registration.

This rule further supports our regular recommendation to trademark owners to list those goods and services that are in actual use for the mark in order to minimize problems with the registration in the future. A likelihood of confusion determination is made on a variety of factors. Importantly, when pursuing an infringement, a trademark owner should not have to defend the registration from attack on the basis of non-use or fraud in the procurement or maintenance of the registration. The mark must be in use for all of the goods and services listed.

The USPTO published in the Federal Register on February 10, 2017, that there would be a 60 day freeze of the implementation of the foregoing rule change given the January 20, 2017 Presidential Executive Order requiring that any agency rule change comply with the order. The effective date was March 21, 2017, and as of now, no additional rules or regulations have been published or apparently implemented.

We note that the proposed rule went through exhaustive testing, analysis and public comment, and the Trademark Bar has supported the implementation of the rule to effectuate a cleaner and more accurate registry of trademarks.

USPTO will suspend examination – Section 2(a)’s Scandalousness and Disparagement Provisions

Among the many reasons available to the USPTO to reject trademark applications is Section 2(a) of the Lanham Act, 15 U.S.C. § 2(a). This provision bars registration of marks that consist of or comprise immoral or scandalous matter, or matter which may disparage persons, institutions, beliefs, or national symbols, or bring them into contempt or disrepute.  The constitutionality of provisions of Section 2(a) are the subject of active court litigation and the outcome of these actions is relevant to the issue of registrability of marks in the United States.

In re Brunetti, Case No. 15-1109, (Fed. Cir. filed November 6, 2015) a Federal Circuit appeal denying registration of the mark “FUCT” where the Applicant argued that prohibition of the registration of scandalous marks under Section 2(a) of the Lanham Act is unconstitutional.

Pro-Football v. Blackhorse (No. 15 1874, Fourth Circuit). This is an appeal from the (TTAB) petition granting cancellation of six registrations for word and design marks containing the word, REDSKINS for entertainment services. See our June 20, 2014 blog post for a case analysis.

In re Tam, 808 F.3d 1321, 1358, 117 USPQ2d 1001, 1025 (Fed. Cir. 2015) (en banc), as corrected (Feb. 11, 2016) where the Federal Circuit determined that Section 2(a) barring registration of disparaging marks was unconstitutional.  See our December 24, 2015 blog post for a case analysis. On March 9, 2016, the USPTO filed a request to extend the time to file a Petition for a Writ of Certiorari (Supreme Court No.15A925).

Consistent with USPTO procedures, on March 10, 2016, the USPTO issued guidance to the examiners to suspend action on pending applications involving marks subject to refusal under these provisions in Section 2(a), provided that all other issues raised by the examiner have been resolved. Clearly, the USPTO is waiting for a Supreme Court determination of the constitutionality of Section 2(a) of the trademark statute, namely, can the USPTO deny registration of marks that are scandalous, immoral or disparaging.

Changes to European Trademarks

Update to our December 1, 2015 post Changes to the European Trademark System are Imminent, as of March 23, 2016, the Office of Harmonization in the Internal Market (OHIM) will have a new name. It will be known as the European Union Intellectual Property Office (EUIPO). The Community trade mark will be renamed the European Union trade mark.

A summary of noteworthy changes are as follows:

  • An application covers a single class, but additional classes can be added upon payment of additional per class fees. (The pay for one, get two extra classes for free no longer applies.)
  • Non-displayable signs such as smells and sounds may be registered. (Previously only graphically displayable marks were permitted.)
  • Applicant must clearly and accurately describe the goods and services in the classes in question. (Class headings are no longer permitted.)
  • Certification marks can now be registered.
  • Grounds for Refusal have been expanded. Namely adding, designations of origin, geographical indications, protected traditional terms for wine and traditional specialities. (Previously, there were limited substantive grounds that OHIM could assert to deny registration of a mark. )
  • Opposition Grounds have been expanded. Importantly, a revision of the relevant five year period for proof of use of the earlier mark in opposition proceedings to be the date of filing or the date of priority of the EU trade mark application, not the date of publication of the opposed mark.
  • National offices must implement within seven years procedures for revocation and nullification of national trademarks. (Presently, many EU member countries do not provide an administrative way to cancel a national trademark registration requiring all such proceedings to be in the court.)
  • “Goods-in-transit” procedures to prevent the EU from being used as a transit hub for counterfeit goods. These are new provisions that will require each of the EU member countries to implement in their customs regulations.
  • New prohibitions on the use of signs (marks) in comparative advertising where that advertising is misleading. Comparative advertising is permitted, but is more restrictive.

Again, we note that there are many companies out there fraudulently soliciting for payments. The EUIPO has restated its concern about these Fraudulent Solicitations in light of the potential confusion while the OHIM office changes its name to EUIPO and the CTM trade mark registration is renamed the EU trade mark. See our Fraudulent Solicitations link for additional information about the many entities soliciting misleading payments for services.

The full text of the new directive is available. 

New Life for Outdated Trademark Registrations

On September 1, 2015, the USPTO announced a Pilot Program to Allow Amendments to Identifications of Goods and Services in Trademark Registrations Due to Technology Evolution. The intent of the program is to permit “amendments to identifications of goods/services in trademark registrations that would otherwise be beyond the scope of the current identification” with the “goal of preserving trademark registrations in situations where technology in an industry has evolved in such a way that amendment of the goods/services in question would not generate a public-notice problem.” That is to say, where a trademark registration claims a manner or means or medium of distribution that has changed due to changes in technology, it may be possible to amend the identification of goods and services reflecting the current manner or means or medium of distribution. This is what is being termed an “evolved designation.”

Since commencing the program, the USPTO has published examples of permissible evolved designation amendments. Examples are:

Registration ID Proposed ID Change
Prerecorded audio and video tapes featuring religious topics Prerecorded CDs and DVDs featuring religious topics
Pre-recorded audio cassettes Audio recordings featuring religious content
Pre-recorded audio/video cassettes for use in the field of pre-school and primary education Sound and video recordings for use in the field of preschool and primary education
House mark for use with type face fonts recorded on magnetic and optical media House mark for use with type face fonts on electronic storage media and downloaded provided by means of electronic transmission
Retail store services and on-line retail store services featuring musical instruments, bows, strings, instrument cases, sheet music, books pre-recorded video tapes and pre-recorded CDs featuring musical performances or musical instruction Retail store services and on-line retail store services featuring musical instruments, bows, strings, instrument cases, sheet music, books, video recordings and pre-recorded CDs featuring musical performances or musical instruction
DOS-based application software to manage and forecast inventory for the direct marketing industry Application software to manage and forecast inventory for the direct marketing industry
Videotapes, videocassettes, all on the subjects of ancient peoples and cultures around the world Video recordings on the subjects of ancient peoples and cultures around the world

It may even be possible to change the class coverage of the registration when the proper current description of the goods or services are in a different class from what was originally registered (e.g.: printed publication are class 16 while downloadable publications are class 9).

At the end of the process the USPTO will issue a new registration certificate, maintaining the priority of the original registration.

Requirements:

  • Amendments are made via the post-registration petition to the Director provisions and the certificate of registration amendment provisions with a government fee of $200.00.
  • Amendments cannot be made that would expand the scope of the registration. If the registration is limited to a specific subject matter, then the amendment would continue with the same subject matter, merely altering the distribution mechanism.
  • The registrant must have discontinued the prior technology and the designation is removed from the description in the registration. Otherwise, the registrant would be compelled to file a new application.
  • The amendments must conform to the current USPTO practice requirements for proper descriptions of goods and services.
  • A US registration based on an International Registration (Madrid Protocol), must conform with the underlying IR during the first five years of registration. However, US registrations based on national foreign registrations are not similarly limited.
  • There are a number of technical requirements, including:
    •     A request for a waiver of what is known as the “scope rule” which essentially permits only restrictions to identifications that would not require republication;
    •     A declaration that that the registrant will not file (or re-file) an incontestability affidavit for at least five years from the amendment acceptance date for the evolved designation;
    •     Submission of a specimen showing current use of the mark in commerce, along with the dates of first use of the evolved designation along with a declaration in support. (Note: the original first use dates would continue in the registration); and
    •     The request for the amendment must be filed electronically.

Once accepted by the USPTO, the amended registration will be published in the Official Gazette along with other Section 7 amendments.

The USPTO has considered third party harm considerations, and in the amendment examination process will:

  •     Conduct a search for possible conflicting marks;
  •     Require that the incontestability status applicable to any evolved designation will not apply for five years;
  •     Provide a mechanism for interested parties to comment about proposed amendments prior to acceptance, and
  •     Publish the proposed amendments on its website allowing interested parties to comment for thirty days.

What does this mean for trademark owners?

    Depending upon the specific circumstances, it may be more prudent to file a new application claiming not only the new delivery mechanism, as an example, but additional goods and services that may be of interest to the registrant. Often, business changes over time, and trademark owners typically expand their product offerings.

    When filing either a Section 8 (use) or 9 (renewal), it may be more prudent to delete the goods and services that are no longer of interest.

    Ultimately, it really depends on the exact wording in the registration, and on what goods and services the trademark owner is using the mark that will determine the best procedure to deal with changes in technology.

Depending upon how many trademark owners take advantage of the pilot program will determine if the trademark office will continue with this special procedure. So, if you have any trademark registrations that claim outdated technology (or need to claim new technology), and could benefit from this program, feel free to contact us for a consultation.

Changes to the European Trademark System are Imminent

A major revision to the European Union trademark system that will affect both Community trademarks (CTM) and individual country trademarks (of EU member states) is imminent. Some of the changes are administrative and some legal, while others directly affect trademark filings and renewals. A summary of the changes is as follows:

Administrative:

  • The Community Trademark will be renamed European Union Trade Mark
  • OHIM (the name of the trademark office as of the date of this post) will be renamed to European Union Intellectual Property Office

Changes Affecting Trademark Filing and Renewal:

  • Goods and services will have to be specifically described. Filing for class headings &/or listing all of the goods in a class will no longer be permitted.
  • There will be separate fees for each class in which trademark registration is sought, as is already the case in the United States. (As of the date of this posting, a single trademark application could include up to three classes for no additional fee.)

Legal:

  • All National offices will be required to implement administrative procedures for trademark cancellation. (Until now, trademark cancellation has only been possible in some countries via court proceedings.)
  • Some of the changes will require EU member states to harmonize their laws regarding trademark infringement and remedies, as well as make it somewhat easier for trademark holders to stop infringing goods from coming into the EU or being distributed thereafter. Also in the package, which can be viewed online, are directives aimed at protecting the public from overzealous and overreaching trademark owners.

Although still proposed, the new regulations, as my recent trip to Europe made clear, are destined to be implemented quickly — possibly as early as Q2-2016, although EU member states will have three years in which to implement them. This is the first significant change to the European trademark system in more than 20 years.

From my perspective, these are all welcome changes, with the possible exception of additional fees for filing in multiple classes. However, the goal of the fee change is laudable. By modestly reducing the cost of trademark registration, while adding fees where more than one class is claimed in an application or renewal, the European Union Intellectual Property Office hopes to discourage overbroad trademark claims — a typical problem in the EU. Our clients have often faced the situation where they wish to clear their marks for use in the EU, but are blocked by a substantially similar mark covering a class that isn’t even in use. Hopefully the new regulations will clear out a lot of this “dead wood.”

European Union Trademarks Goods and Services Examined

International Registrations designating the European Union (CTM/OHIM) previously relied upon the International Bureau (WIPO) for compliance with proper goods and services classification. There are differences between what is acceptable by WIPO, and would be acceptable by OHIM for directly filed applications. For all International Registrations designating the European Union after October 1, 2014, OHIM will now examine all goods and services listed in the international registration for compliance with OHIM requirements. In particular, this addresses the issue of vague and uncertain terms and requiring designations of goods and services that are clear and precise. Should OHIM determine that the goods and services lack clarity or precision, it will issue a notification of provisional refusal with respect to said registration.

We refer our readers to information about goods and services as well as the pitfalls of using class headings in the United States.

There is a clear trend amongst trademark offices to require clear and precise descriptions of goods and services. The USPTO has been more particular in this respect than many other trademark offices. As the world keeps getting “smaller” with more and more opportunities to engage in business throughout the world, it is important to establish a trademark protection program that properly focuses the registrations on precisely what products and services the brand owner is using its mark on.

The Pitfalls of Using Class Headings in USPTO Trademark Applications.

I have been filing trademark registrations for international clients for more than twenty-seven years. For trademark filings based on international clients’ “home country” applications or registrations, problems frequently arise when their U.S. applications simply repeat the generalized descriptions and identifications of goods and classes of goods that are often acceptable overseas.

The Nice classifications (either all goods in class or the class headings) are not sufficiently specific for a successful application in the US Patent and Trademark Office. Rather, it is necessary to describe the claimed goods with a greater degree of specificity in their ordinary commercial terms. A failure to narrow descriptions of goods and classes sufficiently can lead to delays and even refusals to register. A textbook example of this can be seen in the Bottega Veneta application for its famous, and soon-to-be-registered, leather weave. When the application was first filed in June 2007, the description of goods in Class 18 encompassed a major part of the heading for class 18:

Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins; hides; trunks and traveling bags.

After a number of office actions (which attacked the application on multiple grounds), in January 2009, Bottega Veneta finally amended the class 18 description (at the PTO’s urging) in keeping with its actual intended use:

wallets, purses, handbags, shoulder bags, clutch bags, tote bags, business card cases, credit card cases, key cases, cosmetic cases sold empty, briefcases, attache cases, valises, suitcases and duffle bags, all made in whole or in substantial part, of leather” in Class 18.

Bottega Veneta’s specific list of items fell within the plain meaning of the general language in the original filing (i.e., “goods made of these materials and not included in other classes,” and “trunks and traveling bags”). However, the use of the class heading can also prevent a later amendment, as it did recently in In re Fiat, 109 USPQ2d 1593 (Serial No. 79099154 TTAB 2014)

There, the applicant requested an amendment to the scope of its services from the class 35 heading (“Advertising; business management; business administration; office functions”) to “advertising services; retail store and on-line retail store services featuring a wide variety of consumer goods of others.” In deciding whether to accept an amendment, however, the Trademark Office looks at the “plain meaning” of the initial description to determine whether it encompasses the added goods or services. In other words, an applicant may amend an application to clarify or limit the identification of goods or services, but not to broaden it. Looking at the original description, the TTAB held that the addition of “retail store and on-line retail store services featuring a wide variety of consumer goods of others” was an impermissible expansion of the scope of the original recitation, despite the fact that those services are properly included within class 35. The “plain meaning” rule, the TTAB explained, “is necessary to provide the public with notice as to the scope of goods and/or services for which applicant is seeking registration and to enable the USPTO to reach informed judgments concerning likelihood of confusion.”

The U.S. practitioner who takes on a registration for international clients under the Madrid Protocol or international convention — Section 44(d) (based on an application) and Section 44(e)) (based on a registration) — must be aware of these issues, among many others, in order to avoid delays and refusals which may cost the client both time and money — and even loss of trademark protection in the United States.

Register your trademarks in emerging export countries

As China’s high-growth, low-wage era wanes, our clients in a range of industries, from clothing and fashion to electronics, are looking for alternatives to source their products. The emerging leaders in low-cost exports include Bangladesh, Cambodia, the Dominican Republic, Ethiopia, Indonesia, Kenya, Laos, Mexico (in that country’s southern-most states), Myanmar, Nicaragua, Peru, the Philippines, Sri Lanka, Tanzania, Uganda, Vietnam. Only four of those countries, Kenya, Mexico, the Philippines and Vietman, can be covered under an International Registration. Nevertheless, we have successfully registered our clients’ trademarks in all of these countries (as well as most others) and strongly recommend that our clients obtain trademark protection in these countries long in advance of conducting any business there. We do so for a variety of reasons, including preventing a third party from blocking a foreign trademark holder’s sourcing in that country, the slowness of the registration process in some jurisdictions, and avoiding legal battles with future contract manufacturers.

A strong trademark in the global market means taking a proactive approach and investing in registration before it’s too late. Many people fail to realize that a trademark registration in a particular territory covers only that territory and that their trademark may well be up for grabs anywhere else. With more than 25 years of experience in filing international trademarks, we can provide you with the advice and services that you need in your business, whether a start-up or well-established.

 

.xxx Domains – Sunrise, Landrush and General Registration

Every business with an Internet presence knows the importance of registering its URLs across multiple domains to be sure that customers and clients find them and not a competitor. For the same reason, companies often (wisely) register URLs that might be associated with them in the minds of consumers, e.g., variations on their web addresses and registered trademarks, as well as URLs incorporating their unregistered trademarks, trade names and product names. While “cybersquatting” — the practice of registering and sitting on a URL that uses a trademark belonging to another for the purpose of selling it back to the trademark owner for profit — is unlawful, the remedy is expensive and not without risk. (The arbitration procedure under ICANN’s Uniform Domain Name Dispute Resolution Policy costs thousands of dollars; suing in federal court under the Anticybersquatting Consumer Protection Act (ACPA), tens of thousands.)  The only commercially viable way for a business to protect the widest range of its trademarks, trade names and product names from being used in the web addresses of others is to register preemptively. [See ICANN]

With the launching of the new .xxx domain next year for adult entertainment businesses, many non-adult businesses will also want to prevent triple-x associations with their registered trademarks, trade names and product names. They can do so during two periods.

Sunrise A & B:

From September 7, 2011 through 12:00pm ET on October 28, 2011, registered trademarks owners may register URLs identical to their trademarks either for the purpose of opening live adult websites under those names (the “Sunrise A” program) or for the purpose of blocking their trademarks from future registration in the .xxx domain (the “Sunrise B” program). (Sunrise B is also open to adult businesses that don’t support the creation of the .xxx domain.) URLs registered under Sunrise B will resolve to a standard page indicating that the domain is reserved from use through ICM’s Rights Protection Program and the publicly available WHOIS information will reflect the ICM Registry information and not the applicant’s personal information. This way the public will have no reason to think the registrant has moved into the adult entertainment market or availed itself of a .xxx domain.

However, there are two catches. First, the URL to be registered must correspond exactly to the  registered trademark. Businesses cannot, at this stage, block variations, even confusingly similar ones. (For example, Electronic Arts, Inc. the owner of registered trademarks for “EA” and “EA Sports,” would be able to register both ea.xxx and easports.xxx, but not eagames.com.) Second, if a non-adult and an adult business share the same trademark but for different classes of products or services, and both apply during the Sunrise period, the adult business (under Sunrise A) will be notified of the Sunrise B blocking attempt, but will be awarded the .xxx URL. The intent of this procedure, according to ICANN, is to put the Sunrise A registrant on notice that there is a claim. In the event that the Sunrise B business later sues the Sunrise A registrant to block use of the trademark, the latter cannot claim it was an innocent user.

At Network Solutions, Sunrise B registration costs $329.99 with no future fees. Sunrise A registration costs $200.00 for the application, $129.99 per year. Comparative prices may be found at Go Daddy, Enom, and Name.com.

Landrush and General Registration:

Anyone wishing to register URLs that are variations on their registered marks, or URLs of unregistered trademarks, trade names, personal names or product names, must wait until December 6, 2011, at 11:00 am, when general registration begins. Between the close of the Sunrise programs and the beginning of the general registration is a “Landrush” period open only to those who plan on hosting actual adult websites. General registration, however, is open to anyone and will be on a first come, first serve basis. Registration should be done as early as possible, since there will be plenty businesses and individuals worldwide who will grab up as many URLs as they can, as quickly as they can, hoping to sell them later at high prices.

By law, one may not register a URL utilizing a trademark (or confusingly similar variations thereof) belonging to another, whether or not that trademark is registered. Going after a registrant, however, is not always easy. Plaintiffs bear the burden of proving that the URL in question, if not identical, is “confusingly similar” and that the URL was registered and is being used in bad faith. For unregistered marks, the Plaintiff may have to prove that it was the first to use it in the marketplace. Spending a few hundred dollars (or in the case of multiple URL registrations, a few thousand dollars) may be worth it to avoid the prohibitive cost and uncertainty of litigation. It may also be worth it to avoid being associated with a domain reserved for the adult entertainment industry.

Key Dates:

  • Sunrise A – September 7, 2011 through 16:00 UTC on October 28, 2011
  • Sunrise B – September 7, 2011 through 16:00 UTC on October 28, 2011
  • Landrush – November 8, 2011 at 16:00 UTC thru November 25, 2011 at 16:00 UTC
  • General Availability – December 6, 2011 at 16:00 UTC

 

Netherlands Antilles Dissolved

On October 10, 2010, the Netherlands Antilles ceased to exist as a political entity. Of the five Caribbean islands that formed the Netherlands Antilles, Curaçao and Saint Maarten have become autonomous states within the Kingdom of the Netherlands. The islands of Bonaire, Saint Eustatius and Saba are now part of the Netherlands as special municipalities (the BES Countries).

Benelux Trademark Law will not be in force in the BES Countries. A new Trademark Law for the BES countries has been approved and the Benelux Office for Intellectual Property, has been appointed to manage the Trademark Register for the these countries. We await further information as to the processing of trademark applications.

Owners of Netherland Antillean trademark registrations have one year to file maintenance applications (i.e.: until October 10, 2011) for the BES Countries.

At present, International trademark registrations are not affected by this change as it is anticipated that the current international trademark rights in the Netherlands Antilles will be converted into national registrations for the BES Countries, Curaçao and St. Maarten.

Curaçao and St Maarten will also have their own Trademark Law and maintain their own Trademark Registers. The present timetable is unknown, but we shall provide updates as they are available.

The new country of Curaçao is known as Korsou in Papiamentu. St Maarten shares an island with the French oversees territory of St. Martin.

Aruba, which left the Netherlands Antilles in 1986, remains independent and continues as an autonomous state within the Kingdom of the Netherlands.

Ads Follow Web Users, and Get More Personal

It is interesting that the New York Times would publish an article titled “Ads Follow Web Users, and Get More Personal.” See The July 30, 2009 business story.
What is a truly fascinating development here is how web companies are now trying tie legacy data banks of highly personal information to online information in order to figure out how to get consumers to spend more money on products by constantly presenting to them highly focused relevant advertisements based upon their likes, dislikes, socio-economic profile, etc. Couple this with all of the innovative work being done in the field of predictive modeling and you have a prescription for producing something highly useful and beneficial on the one hand, to something that could be abused, or worse yet, used against individuals. If you have ever used Pandora, you will see a good use of predictive modeling.
Having done a great deal of research and work in the area of privacy, I am particularly sensitive to this aggregation of information. We dealt with a number of interesting and complicated issues long before the Internet age, and many of the issues we were researching then are relevant today. Suffice it to say, we each need to be cognizant that the advertisements presented to us are not the same as may be to our neighbor. So the next time you click on an advertisement, think about how you are leaving a breadcrumb trail of interests for the next marketer to exploit.

Does a likelihood of irreparable injury standard make the availability of injunctive relief in trademark cases more difficult?

The Supreme Court in Winter v. Natural Resources Defense Council, — U.S. —-, 129 S.Ct. 365, 374 (2008) held that that the Ninth Circuit’s “possibility” standard in granting preliminary injunctions is too lenient reiterating the standard requires plaintiffs seeking preliminary relief to demonstrate irreparable injury is likely in the absence of an injunction. In the Ninth Circuit, to obtain injunctive relief, a plaintiff must establish (1) a likelihood of success on the merits, (2) a likelihood of irreparable harm absent a preliminary injunction, (3) that the balance of equities tips in favor of issuing an injunction and (4) that an injunction is in the public interest. In the Winter case, the Supreme Court ultimately weighed the public interest factor in favor of the Navy, lifting the limitations imposed on use of “mid-frequency active” sonar during integrated training exercises in the waters off southern California.

Previously in trademark cases, a plaintiff was entitled to a presumption of irreparable harm upon showing a probable success on the merits. See GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1204-05 (9th Cir.2000). However, in Winter, the Supreme Court held that “[i]ssuing a preliminary injunction based only on a possibility of irreparable harm is inconsistent with our characterization of injunctive relief as an extraordinary remedy that may only be awarded upon a clear showing that the plaintiff is entitled to such relief.” Winter, at 375-76 (emphasis added). A plaintiff is no longer entitled to a presumption of irreparable harm on the ground that it has shown a likelihood of success on the merits. Rather, plaintiff must demonstrate that in the absence of a preliminary injunction, the applicant is likely to suffer irreparable harm before a decision on the merits can be rendered. The mere possibility of some remote future injury would be insufficient under this new test enunciated by the Supreme Court.

A preliminary injunction is an extraordinary remedy never awarded as of right. The court must always balance the competing claims of injury and consider the effect on each party of the granting or withholding of the requested relief. Here, the court has expanded its emphasis upon the public consequences in employing the extraordinary remedy of injunction. Interestingly, the court deemed the Navy’s concerns about the preliminary injunction “speculative” because the Navy had not operated under similar procedures before noting that this is almost always the case when a plaintiff seeks injunctive relief to alter a defendant’s conduct.

It is unclear if the Winter decision overrules the Second Circuit alternative test that a party may obtain injunctive relief if it shows that (1) there are questions so serious, substantial, difficult, and doubtful as to make them fair ground for litigation and thus more deliberate investigation; and (2) the harm that it would suffer is ‘decidedly’ greater than the harm that its adversary would suffer is still valid law. See, Buffalo Courier-Express, Inc. v. Buffalo Evening News, Inc., 601 F.2d 48, 58 (2d Cir.1979).

Since the Winter decision there have been a number of district court and appellate court decisions that have considered this “heightened” standard. It appears that the courts are giving the public interest factor additional attention, but with little change in result. If anything, it would seem that the courts will be careful to more fully address this public interest factor in the future and accordingly it should be addressed in a motion for preliminary relief. Because the very essence of trademark law is to protect the consumer from being confused, there is an inherent public interest in every trademark case to prevent a likelihood of consumer confusion.

Facebook places your Trademarks at risk

Starting June 13, 2009 Facebook users can create personalized URLs for their Facebook pages. http://www.facebook.com/username/ where “username” is the name that you register. These personalized URLs are offered on a first-come, first-serve basis. The intention is that “friends” can go directly to your personalized URL.

Because this is just another avenue for infringers to try and steal trademarks from rightful owners, and since the law on this area is developing we are recommending that our clients immediately create accounts on facebook and register their trademarks as personalized URLs. For example, I have registered: http://www.facebook.com/WebTM. There is nothing particularly interesting at my facebook wall, but it is there.

So if you go and try and register your trademark as a personalized URL, and it is taken, Facebook is providing a means to complain by its “Notice of Intellectual Property Infringement (Non-Copyright Claim)”.If someone adopts your trademark as a personal URL on Facebook, report it immediately. Should you require any assistance in dealing with this, please contact me directly.