Trade Secrets as Part of Your IP Portfolio: The Case of Col. Sanders

Trade secrets, together with patents, trademarks, and copyrights, are one of the four main types of intellectual property.  Unlike the three other types of IP, trade secrets are never made public.  Trademarks and service marks are obtainable only through public use that creates an association between the mark and the origin of specific goods or services in the minds of the consumer.  Copyrights are generally agnostic to publicity, but most copyrighted material is shown publicly in some form.  While public disclosure before filing a patent application can destroy your patent rights, if your patent application is allowed it will always be made public.  Public disclosure of your trade secret will destroy it – they’re like vampires, they live in the shadows and any exposure to light will kill them.

So how do these four different types of intellectual property interact?  Let’s look at KFC as a case study.  Many people around the world are familiar with the initials ‘K-F-C’ and the character Colonel Harland Sanders.  The initials ‘K-F-C’ and the image of Colonel Sanders are both trademarks registered by KFC Corporation with the USPTO.  These are classic trademarks – most consumers know and associate KFC® and the Colonel Sanders character with the chain of friend chicken restaurants owned by Yum! Brands. Continue Reading

Registration of Mark “THEZARA” for Motel Services Invalidated Based on the Mark “ZARA” for Clothing – A Case Study

Representing our client Inditex S.A. (“Inditex”), owner of the famous fashion brand “ZARA,” Lee International obtained a favorable decision in its invalidation action against the registered mark “THEZARA” for motel and hotel services.

Facts

Lee International filed an invalidation action against the registered mark “THEZARA” for “motel, hotel,” etc., on behalf of Inditex.  The invalidation action argued that the mark “THEZARA” was filed in bad faith to take advantage of the fame of Inditex’s mark “ZARA,” which is well-known as a specific source indicator to the general public, both within and outside of Korea. Continue Reading

Success in the battle for Stolichnaya and Moskovskaya

bkp partners Martin Reinisch and Georg Fellner have obtained a favorable judgment by an Austrian Appellate Court for bkp client Spirits International (SPI Group) confirming the latter’s rights in the iconic Stolichnaya and Moskovskaya trademarks in Austria.

The favorable judgment has been rendered in a lengthy, complex court proceeding which is the Austrian part of a multi-jurisdictional dispute between our client and a Russian Federation state enterprise (FKP Soyuzplodoimport) regarding the ownership in these vodka trademarks. The proceeding has so far been pending for more than 13 years and might even still last a bit longer. Continue Reading

FTC Announces First COPPA Action Involving Connected Toys

A Hong Kong-based electronic toy manufacturer and its U.S. subsidiary agreed to pay the Federal Trade Commission (FTC) $650,000 to settle allegations that they violated the Children’s Online Privacy Protection Act (COPPA) by collecting personal information from children without providing appropriate notice and consent, and by failing to take reasonable steps to secure the data that they collected. Notably, this is the FTC’s first COPPA case involving connected toys, but it may not be its last, as connected toys continue to play a more prominent role in children’s lives.

Background

The companies, VTech Electronics Limited, a Hong Kong corporation, and Illinois-based VTech Electronics North America, LLC (VTech), develop products and services for children, including electronic learning products (ELPs) and online games available through their ELPs or the Internet. The companies also develop and operate the Learning Lodge Navigator online service, which functions similarly to an app store and allows customers to download the companies’ child-directed apps, games, e-books and other online content. By November 2015, the FTC asserted that approximately 2.25 million parents in the United States had registered and created accounts with Learning Lodge for nearly 3 million children. Continue Reading

Tomorrow Is Yesterday: Today’s Cases Boldly Going Where Our Blogs Have Gone Before

Sometimes blogging topics are hard to come by.  It is often difficult because, as a sage once noted in discussing the search for The Ultimate Computer, one wants to do one’s best, but something like creativity “doesn’t work on an assembly line basis. … You can’t simply say, today I will be brilliant,” insightful, informative or even mildly amusing.  But other times topics materialize right before your eyes, as if dropped on your desk by fate or chance, and then they seemingly write themselves, without either assembly lines or much hard work.

We report today on Dr. Seuss Enterprises LP v. Comicmix LLC, et al., a case in the United States District Court for the Southern District of California, raising issues of trademark and copyright law, and that Court’s December 7, 2017 decision denying defendants’ motion to dismiss.  That motion sought to dismiss claims that defendants’ mashup of Dr. Seuss and Star Trek in a book to be entitled Oh! The Places That You’ll Boldly Go infringed plaintiff’s trademarks and copyrights.  Given that we have written previously about the intellectual property law issues arising in matters involving the Star Trek franchise and the Seuss canon, a chance to write about a case that combines them seems pre-ordained, and for once the struggle to settle upon a topic was not so unsettling.  And, in our ongoing mission to relate some of these US law issues to a wider audience, we will revisit some previously-discussed UK alternatives as well as looking at new arguments that fine support in the writings of a Canadian academic. Continue Reading

Greek Supreme Court contests the validity of Philips’ EFM+ (DVD) Patent

Summary

In its decision no 1589/2017 the Greek Supreme Court upheld the appeal brought by the Greek company “DPH” against the Dutch company “P”. The Supreme Court held that the Court of Appeals’ decision, which had upheld definitely the lawsuit of “P” against “DPH” for breach of “P”’s essential patents, was wrong in finding they were sufficient reasons for granting patent protection to “P”’s disputed patents under the applicable rule of Greek law setting the conditions for granting patent protection. Continue Reading

Can Similar Trademarks Coexist Peacefully?

Suppose that you want to register a trademark that identifies a source of goods or services for your business.  You file a federal trademark application with the U.S. Patent and Trademark Office.  Subsequently, you receive an Office Action from the U.S. Patent and Trademark Office that initially refuses registration of your mark based on a likelihood of confusion with a similar trademark?  Can you overcome the refusal to obtain a registration from the U.S. Patent and Trademark Office?  The answer is often YES!

Section 2(d) of the Trademark Act (15 U.S.C. § 1052) states in part:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—

(d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive. . . .

Continue Reading

TV FORMAT PROTECTION – MORE DETAILS NEEDED

Introduction

From Bullseye to Mastermind and from The Chase to Eggheads, it is undeniable that the public love a TV game show.  Who (in the UK) doesn’t remember Judith Keppel sensationally becoming the first winner of Who Wants to be a Millionaire?  A total of 14.9 million UK viewers (that is about a quarter of the UK population) settled in to see Chris Tarrant hand over the million pound prize cheque for the first time.

With such shows producing hours of entertainment and numerous commercial opportunities, TV formats can be very valuable.  It is therefore understandable that creators and production companies are particularly protective about their formats and look to protect their rights like any other form of intellectual property, despite copyright protection being historically difficult to obtain.  The English High Court, however, has recently produced some much needed clarification on the way TV formats should be recorded or expressed in order to stand a chance of being protected by copyright as a dramatic work[1]. Continue Reading

Battling the Real “Fake News”: FTC Reaches Multi-Million Dollar Settlement with Internet Marketers for False Celebrity Endorsements

Unfortunately, the unauthorized use of a celebrity’s name and image has become a deceptive advertising practice frequently used by dishonest online marketers. This type of ad typically claims (falsely) that a public figure has used or endorsed what is billed as the latest miracle weight loss supplement or wrinkle-reducing cosmetic. Going after these bad actors to protect one’s right of publicity and intellectual property rights can be a challenge, as it can be difficult to identify the responsible parties, and even if they can be found, they may be outside of the reach of U.S. laws or a small operation that appears not worth pursuing. A recent action by the Federal Trade Commission (FTC), however, serves as a reminder that those who peddle in false online endorsements may be part of a larger network that can be identified and stopped.

In November, the FTC announced that it had reached an agreement to settle charges against a network of internet marketers who for years had allegedly used false and deceptive advertising and billing practices — including the use of fake magazine and news articles and phony celebrity endorsements — to sell its alleged weight loss, muscle-building and wrinkle-reducing products to consumers. The settlement is notable not only for the substantial financial award achieved by the FTC, but also for the breadth of the marketing network involved. Public figures seeking to combat the unauthorized use of their names or images in internet advertisements should take comfort from the FTC’s settlement that it is possible to identify the parties responsible for such misconduct and put a stop to their deceptive schemes. Continue Reading

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