Fender Denied Trade Dress Protection for Guitar Designs

On June 9, 2009, The U.S. Trademark Trial and Appeal Board denied Fender Musical Instruments Corporation trade dress protection for Fender’s Stratocaster, Telecaster, and Precision guitar body designs. Over a dozen guitar makers, including close competitor Peavey Electronics Corporation, joined the five year long opposition to the Fender applications.

The opposers challenged the applications on the grounds that the designs were generic, or in the alternative, have not acquired distinctiveness. Most compelling was that Fender’s design was so common that it appeared in the Random House Dictionary under the entry for “guitar.” The Board also observed that Fender had never treated the designs as trademarks since their inception over 50 years ago. Further, the Board found no efforts by Fender to police or otherwise object to other manufactures using similar guitar shapes.

The Board found that the Fender’s guitar designs were generic and had not acquired distinctiveness because the guitar body shapes did not have a “source-identifying significance.” The denial by the Board effectively eliminates Fender’s ability to use trademark law to protect its famous designs. Although design patents and copyright could have provided some overlapping legal protection for designs, both methods are limited to a term of years. Trade dress protection would have been significant because it would have allowed Fender theoretical protection in perpetuity.

Keyword Advertising using Third Party Trademarks Becoming a Thing of the Past?

In the wild, wild, west of search engine keyword advertising, companies have recently been safe using the trademarks of other companies to make their own ads appear. This has been true on Google in the U.S. so long as the third party trademark was not actually used in the resulting ad. With some recent litigation by American Airlines, this may be changing.

American Airlines recently ended a keyword advertising lawsuit against Google which yielded an undisclosed settlement agreement in American Airlines’ favor. The settlement apparently involved an agreement by Google to cease all sale of ads using the “American Airlines” search phrase. This appears to be the case because Google no longer displays ads for that search.

Three months after settling the Google case, American Airlines has filed a similar lawsuit against popular search engine company Yahoo!, claiming that Yahoo!’s company policy allowing advertisers to buy keyword advertising utilizing its trademark is leading to dilution of the American Airlines trademark and misleading consumers.

Because the advertisements that appear on the search results page are almost always for goods or services similar to those sought in the search, it is quite possible that a consumer may click on a link only to find themselves at a website that wasn’t the one they were looking for. In other words, a wrong click on a search results page for American Airlines might have landed users on a webpage belonging to a competitor or copycat. American Airlines is seeking monetary damages, punitive damages, and associated legal costs in the suit. They have also asked that Yahoo! remove the offending keyword ads, which it has already done.

Though there is no precedent-setting judgment, the American Airlines’ lawsuits may be setting the stage for a major shift in keyword advertising – and a favorable outcome for trademark owners.

Two Friends Take On Nordstrom in a Trademark Dispute

It’s the classic American story of the underdog taking on big business. A small clothing company, run by two friends who have been business partners for 20 years, currently finds itself mired in a lawsuit with Nordstrom, Inc.

In 2006, Rebecca Sather and Ann Prater filed for the trademark BECKONS for use in relation to pants, shirts, t-shirts, shorts, dresses, sweatpants, and jackets. The Application, which later registered, was filed in 2006 with dates of first use that same year. In 2007, Nordstrom filed for BECKON on an intent to use basis for use in relation to women’s fashion accessories. Originally the U.S. Patent and Trademark Office approved the Nordstrom BECKON application and it was allowed for publication despite the pre-existing registration for BECKONS. Sather and Prater then filed an Opposition, noting the similarity of the two marks and the goods. The PTO re-evaluated Nordstrom’s Application and issued an Office Action, citing the BECKONS mark owned by Sather and Prater as a basis for refusal. Nordstrom responded by filing a petition to cancel the original BECKONS trademark, arguing that Sather and Prater were not using the trademark on all goods as alleged in their Application. Both of the trademarks are currently suspended pending the outcome of the case.

For Sather and Prater, whose entire business is now threatened, this is a sobering tale about the need to be relentless in understanding, securing, and enforcing trademark rights because a properly filed Application would have avoided the dispute.

RIAA Policy Shift?

Signaling a possible dramatic shift in policy, the Recording Industry Association of America (RIAA) told The Wall Street Journal a few weeks ago that it would no longer be prosecuting individual users for suspected copyright infringement. Instead, the RIAA will ask Internet Service Providers (ISPs) of the purported thieves to issue a warning, and then cut off all internet access after three warnings.

This change is likely due to the escalating costs of litigation and the RIAA’s tarnished public reputation. Whether the RIAA will accomplish its goals with respect to copyright infringement will probably be a contentious issue in the U.S. Courts for the next few years.

Real Life Second Life Trademark Disputes

Linden Labs, makers of the popular internet game Second Life, may not be able to claim their game to be “escapist fun” much longer. Second Life is a multi-user, on-line gaming world where players can create digital versions of themselves and engage with other users in virtual worlds. You can also buy virtual real estate or create any number of objects, like clothing, kitchenware, or even virtual paintings to sell or share with other users. It is these creations that have fallen into the category of Second Life Art or “slart”, a term which was trademarked by one Second Life user, Richard Minsky, and is now at the center of a trademark dispute.

The case hinges on the make-up of the trademark itself, SLART. Linden Labs claims that ‘SL’ is part of their trademark and users are only allowed to use the letters if they’re followed by a space and two generic nouns, like “SL Café Table”. Minsky, however, contends that he trademarked SLART fairly and that Linden Labs failed to respond to his requests in March to discipline another user who was using the word “slart” in conjunction with a virtual art gallery. One problem may lie in the fact that the word slart may have become a generic term in the game for any art created within the confines of the Second Life world. The pending case will prove to be an interesting test of the application of trademark law to a virtual world.

Google Copyright Settlement Will Change Publishing

Google recently settled a lawsuit with The Association of American Publishers and the resulting settlement agreement will likely change the face of the publishing world. The terms of the agreement, which are still pending legal approval, allow Google to continue its scanning project of books that are out-of-print but still under copyright. Libraries, universities, and corporations will be able to subscribe to gain complete access to Google’s database of scanned works, while individual users will also be able to view the materials for a fee. Google will also allow authors to “opt out” of sharing their works in the database.

Google maintains that the people who will benefit the most from this new database are readers, as works that were rendered unavailable will become easily accessible once more. However, not all readers see the settlement as perfect; some have complained that Google’s user interface is clumsy and the quality of their scans poor. Others worry that Google will suddenly have a monopoly over works that were once considered public domain, or charge exorbitant fees for public domain works. More drastically, Harvard University, home to one of the country’s largest university libraries and one of the original partners in Google’s scanning project, has announced that pending legal approval of the settlement it will no longer participate in the project if it includes works that are under copyright, as its students and faculty are concerned over the copyright consequences of Google’s actions.

The PRO-IP Act Becomes Law

Last week President Bush signed a sweeping Intellectual Property protection bill into law. The bill, called the Prioritizing Resources and Organization for Intellectual Property (PRO-IP) Act of 2008, is meant to strengthen enforcement of intellectual property rights. It also creates a position for an Intellectual Property Enforcement Coordinator, or a “Pirate Czar”, as it’s quickly been nicknamed by the press. The Pirate Czar’s job would be to form a committee of knowledgeable advisors, act as liaison with a newly formed Department of Justice task force, and compile a plan about how to stop piracy of movies, music, and other valuable Intellectual Property.

The plan has watchdog groups skeptical of the PRO-IP Act’s usefulness. Internet websites are well known for their chameleon-like ability to adapt to any situation. Savvy Internet users who find that their favorite source of pirated entertainment has been shut down are highly likely to look elsewhere and find exactly what they want, just in another virtual location. Furthermore, the PRO-IP Act has a broad provision providing for the seizure of assets which worries many privacy rights advocates. The appointment of the IP/Pirate Czar, and further updates on the effectiveness of the legislation, will be forthcoming.