Our last blog post on the UDRP, breaking down losses in 2016, was quite popular, so we’re doing an update for cases in the first quarter of 2017.

Data set

The data was manually coded from the National Arbitration Forum (“NAF”) searchable case database with decision dates from January to March 2017. Our previous research found similar outcomes for World Intellectual Property Organization (“WIPO”) proceedings, so this update focuses solely on NAF decisions.

Trends

We analyzed each victory for a respondent based on the grounds cited by the UDRP panel. Many decisions had more than one ground cited, so the total count of issues exceeded the raw number of decisions. One decision was not available online, and so counts as a denial but does not have grounds coded.

As in 2016, far and away the two most common causes of complainant’s losses were a failure to show any trademark rights that predated the domain name registration date (40.1% of decisions) or a failure to adequately demonstrate any trademark rights at all, particularly where the applicant claimed common-law rights (often in a fairly descriptive mark) without significant evidence of sales and advertising (14.9% of decisions).

One decision in particular was interesting: Wendy Murdoch, LLC v. Romero, FA 1706433 (Nat. Arb. Forum Jan. 13, 2017) (declining to transfer effortlessrider.com). The complainant had a trademark registration for the mark EFFORTLESS RIDER predating the domain name registration date, and used the domain name for competitive horseback-riding services, using the complainant’s mark prominently on the website. The panel had no problem finding that the domain name was confusingly similar to the mark nor that the use was a bad faith attempt to “create confusion for commercial gain,” but found that the respondent’s conducting business under EFFORTLESS RIDER – the complainant’s mark – insulated it under the “rights or legitimate interests” tab since the respondent was a “real business which offers real services” with an LLC of the same name (albeit created after the domain name was registered) and so was “commonly known by the at-issue domain name.”

This is a fairly perverse result. Under the logic, a seller of counterfeit Nike products that brands its entire site NIKE at the domain name nikeshoes4u.com would be immune to a UDRP, while a seller of counterfeit Nike products at a site titled SHOES at the domain name nikeshoes4u.com would, and so would a page of ads for NIKE knockoffs at the same domain. The first example is engaging in more conduct that the panel found to be bad faith, and which is explicitly conduct “for the purpose of disrupting the business of a competitor,” UDRP Par. 4(b)(iii), yet somehow creates a “right or legitimate interest.” Most panel decisions deal with the issue by noting that the domain registrant that uses “the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name.” Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003). The “commonly known as” exception usually to domain owners who use the domain for goods or services that are unrelated to the goods and services provided under the trademark owner’s prior mark. The Wendy Murdoch decision appears to be incorrect, and, if the line of reasoning spreads, potentially problematic for complainants, who will need to use the ACPA or another slower, more expensive enforcement option.

The Red Cross, Red Crescent, and Red Crystal symbols of the International Committee of the Red Cross are protected by the First, Third, and Fourth Geneva Conventions and several protocols thereto.

The Red Cross and Red Crescent emblems are intended to “provide protection for military medical services and relief workers in armed conflicts.”[1]

The United States implements this portion of the Geneva Conventions and Protocols via standalone legislation. The American Red Cross was protected via the Charter Act, passed in 1900 and available, as amended in 2007, at 18 U.S.C. §§ 706 – 706a., which gave it an exclusive right to use a red, Greek cross on a white field but grandfathered prior users, most prominently Johnson & Johnson on its first aid packs.[2]

J&J actually filed a trademark infringement lawsuit against the American Red Cross when the ARC licensed use of the Red Cross emblem to several first aid and disaster preparedness kit manufacturers; the ARC prevailed on a key motion and the parties settled out all remaining issues.[3] They apparently now co-exist without issue.

Unlike typical trademark laws, the Charter Act does not look at whether the use makes consumer confusion likely: it simply bars any use other than by the American Red Cross (or, after the 2007 amendments, the ICRC and other national societies and their agents), with misdemeanor penalties including imprisonment available as remedies.[4]

The ICRC and its local affiliates seem to have taken a more aggressive approach recently to enforcement of these rights in the context of video games.[5] The Canadian Red Cross defended more aggressive enforcement efforts in a blog post arguing that “[m]isuse of this valued symbol distorts its meaning and its protective value for victims of conflict and the aid workers that assist them.”[6] This is essentially a dilution argument – even if no real-world confusion results, the distinctiveness of the symbol will be reduced, reducing the efficacy of the protection the Geneva symbols provide to relief personnel in the real world.

Games have tended to the Geneva symbols in one of two ways: to suggest “health,” and to refer to the Geneva symbols themselves. The first type of use is quite common; from the earliest first-person shooters, health packs often included red crosses to suggest first aid kits. An example from an early version of the game Doom is shown below.

Other video games take a more realistic approach, trying to simulate war. The use of the Red Cross symbol in this sort of game, to depict the actual Red Cross in the game, is an expressive use and, in key circuit courts, it is analyzed under the Rogers v. Grimaldi test: use of a trademark in an expressive work is only infringing if “(1) the use of the mark has no artistic relevance to the underlying work whatsoever, or (2) it has some artistic relevance, but explicitly misleads as to the source or the content of the work.” In the context of the military game Call of Duty, a California court held that use of a military equipment company’s marks in-game received full protection under the First Amendment. Mil-Spec Monkey, Inc. v. Activision Blizzard, Inc., 74 F.Supp.3d 1134 (N.D. Cal. Nov. 24, 2014). There is a strong argument that, under traditional confusion or dilution analysis, this sort of in-game use would also be permissible.

Because the Red Cross symbol is not protected via traditional trademark laws, third-party use of the Red Cross symbol does not require the same test; neither confusion nor dilution are required, and the rights granted under the Act are ironclad as to junior users.

This “right” presumably is not absolute, no matter what the statute says; it’s almost impossible to envision a court granting relief to the Red Cross against a newspaper that runs a picture of the symbol or that uses the words “Red Cross” in connection with an investigative report, for example. The First Amendment concerns underlying Rogers are, in theory, no less important, though it seems unlikely that a court interpreting the Charter Act would treat them identically. How treaties and the protections of the Bill of Rights interact with each other is way beyond the scope of this little blog post, but the general understanding is that the individual protections of the Bill of Rights are retained without regard to other treaty obligations.[7]

Video game makers have certainly erred on the side of caution. In a March update, the multiplayer space simulator EVE Online updated the icon for a ship module to “comply with the Geneva Conventions,” presumably after a demand from the ICRC or a national affiliate.[8] The company is based in Iceland with operations in the UK and US, and may well have been subject to multiple legal regimes that may be less sensitive to concerns of the sort that impact US First Amendment decisions.

The old symbol:  The new symbol: 

The UK-designed indie game Prison Architect made similar changes, swapping red crosses on ambulances, shown below, for green.

Even the largest studios have been affected; in 2006, Microsoft’s Bungie updated its red-crossed health pack in its flagship Halo shooter for a red “H” symbol.[9]

It will almost always be simpler for game designers to just push out a minor update to its graphics than to fight the issue in court, but the question is legally interesting and, if a large enough gaming company decides to push back, could make for some very interesting precedent.

[1] https://www.icrc.org/en/war-and-law/emblem

[2] See A. Barach, “One Cross – Two Cross – Red Cross – Blue Cross When Trademark and Health Care Collide” (Apr. 3, 2012), available at https://www.bradley.com/insights/publications/2012/04/one-cross–two-cross–red-cross–blue-cross-when__.

[3] Johnson & Johnson v. The American National Red Cross et al., Case No. 07-cv-07061 (S.D.N.Y. 2008) in the U.S. District Court for the Southern District of New York.

[4] Providing fines or imprisonment for anyone who “uses the emblem of the Greek red cross on a white ground, or any sign or insignia made or colored in imitation thereof or the words ‘Red Cross’ or ‘Geneva Cross’ or any combination of these words.” 18 U.S.C. § 706.

[5] ; https://www.youtube.com/watch?v=vOAq26xCefY&feature=youtu.be&t=6s provides a good, quick look at other examples.

[6] http://www.redcross.ca/about-us/about-the-canadian-red-cross/red-cross-emblem/it-may-just-be-a-game-to-you-but–it-means-the-world-to-us

[7] Compare Missouri v. Holland, 252 U.S. 416 (1920) with Reid v. Covert, 354 U.S. 1 (1957).

[8] https://community.eveonline.com/news/patch-notes/patch-notes-for-yc119.3-release.

[9] http://kotaku.com/video-games-arent-allowed-to-use-the-red-cross-symbol-1791265328.

Anatomy of an Office Action Response

Episode 4 – PYROSIL

What is this series?

We break down a recently-filed, successful Office Action Response, looking at the case law, evidence, and strategic decisions that made it a success.

Today’s post focuses on strategies in responding to a likelihood of confusion refusal featuring identical marks in different classes.

The Office Action – PYROSIL

The applicant’s filing for PYROSIL, Ser. No. 86912816, for a variety of products and services including silicon and other chemical precursors (Class 1), fuel and dust absorbing and binding compounds (Class 4), metered fuel pumps (Class 9), and chemical coating services (Class 44), and actually used for a silicon oxide coating and coating process, received a citation to a prior pending application for PYROSIL for paints and primers used in the aerospace industry (Class 2), Ser. No. 79179408. Both applications are now registered.

Because the prior PYROSIL application was still pending, the Office Action did not provide (and did not need to provide) arguments to support the refusal.

The correspondent, Otto Lee of Intellectual Property Law Group LLP, filed an Office Action Response arguing against the refusal. The prior applications’ limitation to the aerospace industry was a key: it limited the customer base of the cited mark, and the applicant supplemented the meaning of “industrial” products in its description with extrinsic information about the product and its customers. The Response emphasized that the products offered under both marks were sold to different and non-overlapping classes of sophisticated customers in distinct manufacturing industries, and were necessarily sold through different trade channels. While the applicant’s products are focused on adhesive promotion coatings, e.g. to increase print quality, the applicant’s website references automotive uses and neither the description of goods in the application nor the supplementary materials carve out or disavow aerospace or military use. That’s certainly a desirable outcome for the applicant, and a good strategic reason for counsel relying on extrinsic evidence rather than narrowing the applicant’s description of goods to exclude the fields.

Counsel also pointed to another out-of-class registration for PYROSIL, Reg. No. 2546215, for thermocouples in Class 9, noting that it was also sold to a niche group of professional buyers and could co-exist without confusion. This data point is valuable under the 6^th du Pont factor, and arguably also restricts the prior registrant’s rights under the 11^th du Pont factor as well.

The response made a variety of arguments about the lack relationship between the goods, ultimately successfully. The applicant could have pointed to registry evidence of co-existence of similar products, both in industrial silicon and fuels. In re Thor Tech, Inc., 113 USPQ2d 1546 (TTAB 2015). The following table, from TM TKO’s ThorCheck prosecution tool, identifies a number of instances where identical or highly similar marks co-exist without apparent confusion for exactly the sorts of goods.

Following the successful Office Action Response, the application will be published for opposition in March 2017.

Episode 3 – Trowel Pro

What is this series?

We break down a recently-filed, successful Office Action Response, looking at the case law, evidence, and strategic decisions that made it a success.

Today’s post focuses on strategies in responding to requests for information under 37 C.F.R. § 2.61(b).

The Office Action – TROWEL PRO

Today, we are looking at a successful Office Action Response filed in the course of prosecuting an application to register the mark TROWEL PRO for a variety of construction materials in International Classes 1, 17, and 19, Ser. No. 86/885,391. The applicant, Laticrete International, Inc., is represented by Peter Peterson of DeLio, Paterson & Curcio, LLC.

The main issues raised by the USTPO Examining Attorney were (a) a disclaimer of “trowel” and (b) an information request about the meaning of “pro” in the industry.

Analyzing the Office Action

We will do a quick analysis of the Office Action through TM TKO’s tools. You can see an interactive version of this search report here.

The Office Action noted that trowels are frequently used with grout and other of the applicant’s goods. TROWEL is not especially common as a part of marks in related classes, but it shows up with some frequency in description of services and in disclaimers or in marks that are on the Supplemental Register. The applicant decided to accept the disclaimer request, and there was plenty of evidence to support that being the right call.

The Examining Attorney also asked whether PRO has any meaning or significance in the industry and whether it is a “term of art” in the industry. These requests are often a prelude to a Section 2(e) refusal. PRO as a part of the mark grades out as even weaker, due to substantial dilution, so extra care was required in addressing the issue. If both parts of the mark are treated as non-distinctive, the mark as a whole is more likely to end up on the Supplemental Register, which provides substantially fewer rights than a registration on the Principal Register with all but one term disclaimed, even if the remaining term is not conceptually especially strong.

Care is required in these responses; the Office will routinely use responses in requests for information under 37 C.F.R. § 2.61(b) as the basis for refusal, see, e.g., In re FM Tech., Inc., Ser. No. 86100919 (TTAB Jul. 27, 2016) (upholding 2(e) refusal for 3DRad mark in part due to response to the respondent’s reply to an Examiner’s “function” question: “… by radiation with integrated imaging”), and incomplete or vague replies can be grounds for refusal, In re Cheezwhse.com, Inc., 85 USPQ2d 1917 (TTAB Feb. 1, 2008).

The Office Action Response

In the Office Action Response, the applicant disclaimed the term “trowel” and took a cautious response to the next two questions. The applicant simply noted that “pro” has no additional meaning or significance in applicant’s industry and is not a term of art in applicant’s industry. It’s an appropriate enough response in that “pro” doesn’t mean anything special in connection with these goods, although “pro” is generally used to indicate high-quality or “professional” quality goods (and is used, and disclaimed, as a part of competitive marks on the registry), and it looks like the Examining Attorney could easily have taken a harder line.

The applicant responded to the information request by noting that “there are no fact sheets, manuals or advertisements yet available” and replied very generally that the goods will be used in building construction in connection with installation of concrete, mortar, grout, etc.; the applicant did not provide equivalent material from competitors. The Examining Attorney could have taken the position that the amount of information provided was insufficient, but chose not to press the issue further.

TL;DR

When responding to a request for information, it’s vital to curate the information you provide. If the Examining Attorney needs more, the worst that can happen is that you will get a second Office Action or a Final Office Action, and in either event have a second opportunity to provide more.