On July 23, 2009 the United States Court of Appeals for the Federal Circuit decided, in In re Hotels.com, L.P., that Hotels.com was not entitled to a federal registration for its service mark HOTELS.COM. (For a brief overview of trademarks and service marks, see Trademark Protection in One Easy Lesson.)
Background: Hotels.com sought to register its mark for the services of “providing information for others about temporary lodging; travel agency services, namely, making reservations and bookings for temporary lodging for others by means of telephone and the global computer network.” The Trademark Trial and Appeal Board (TTAB) refused the registration on the ground that the mark is a generic term for these services (generic terms, by definition, are incapable of indicating the source of goods or services).
In affirming the decision of the TTAB, the court made the following points:
- The term “hotels” did not lost its generic nature by being combined with “.com”.
- The term “hotels.com” appears in the domain names of various other websites, such as www.all-hotels.com, www.web-hotels.com, www.my-discount-hotels.com, that provide hotel information and reservation services, supporting the conclusion that “hotels” indicates the genus of hotel information and reservation services.
- Survey results showing that 76% of respondents considered Hotels.com a brand name rather than a common name could be received skeptically by the TTAB because the survey questions radically skewed the survey results.
The significance of this decision for entrepreneurs: It may be great, from the business perspective, to have a domain name based on a commonly-needed product or service, but you need to anticipate that other businesses will use similar names, and you will not be able to stop them.
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact an attorney directly.
I have wanted to write this post for several months, but until now I have held off because of concern that it would come across as a lawyer saying “buy my services”. Today, though, a conversation with a client drove home how important this topic is.
On several occasions, clients have asked me to dig them out of trouble that occurred because they had entered into agreements without the advice of legal counsel. Some examples:
Earlier this month I posted “Commercial E-mail and CAN-SPAM: What You Need to Know“, which explains CAN-SPAM (15 U.S.C. Sections 7701-7713), the federal law that aims to make commercial e-mail more truthful, more transparent and more avoidable.
This post discusses an interesting variation on the CAN-SPAM theme: Whether and how CAN-SPAM applies when a company uses third-party mailing lists.
Read more…
Chris Bosh
Cybersquatting is registering, trafficking in, or using a domain name with bad-faith intent to profit from a trademark belonging to someone else. NBA superstar Chris Bosh recently won a major victory against a serial cybersquatter.
On September 24, the U.S. District Court for the Central District of California granted an order requiring that Luis Zavala transfer all of his domain name holdings to Bosh. (A list of those holdings is available on this blog’s Downloads page as “Chris Bosh – Domain Names Awarded” – just sign up using the drop-down list in the sidebar.) This award is particularly significant because it is, to the best of my knowledge, the first time that a party has been awarded domain names that profit from third parties’ trademarks.
Bosh offered to make the domain names available to the applicable trademark owners at no charge through his social media firm Max Deal Technologies.
Check out all posts about cybersquatting.
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact an attorney directly.
Prudent employers have known, for many years, the importance of Employee Handbooks in setting forth a company’s policies and operational procedures. However, the recent increase in the popularity of social media – Facebook, Twitter, blogs and the like – has taken many employers, and their Handbooks, by surprise.
Policies governing mobile phones, computers, Internet access and e-mail no longer suffice. With social media, every employee – for better or for worse, intentionally or unintentionally – can become a spokesperson for the company.
Read more…
Earlier this year, I wrote Avoiding the “Independent Contractor” Trap about the dangers that companies face if they misclassify employees as independent contractors. The Wall Street Journal recently reported (Employers and Workers Clash in Court Over ‘Contractor’ Label) that those dangers have increased.
According to the WSJ article, the Internal Revenue Service will audit 6,000 randomly-selected U.S. companies in its first attempt since 1984 to quantify the extent of employee misclassification. The IRS is not taking this step merely to help the individuals involved receive the pay and benefits to which they are entitled – state and federal governments stand to gain billions of dollars every year from withholding taxes, unemployment insurance and workers’ compensation if workers are classified properly.
Even greater than the risk of a government audit is the risk that a disgruntled “independent contractor” will file a wage claim (see Wage Claims – Nasty but [Sometimes] Necessary).
Avoiding the “Independent Contractor” Trap lists factors that can help you determine how to classify workers properly.
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact an attorney directly.
I just got off the prep call for this month’s SVASE East Bay Series event, Closing the Deal: Terms and Valuations.
The VCs who participated were pretty upbeat. Here are some of their observations:
- Since Labor Day, deals have been moving much more quickly – term sheets being offered within weeks rather than months. One hypothesis: A strong desire among VCs to invest their money before year-end.
- More flat, rather than down, follow-on rounds. (“Flat is the new up.”)
- There are signs of life in the public markets.
- Syndication is widespread to help ensure that follow-on money will be available if and when needed. (Syndication does mean, however, that founders must be prepared for greater dilution.)
I was encouraged. Although this has been a tough year for many of my clients, I am optimistic that the economy is moving in the right direction and that 2010 will be significantly better than 2009.
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact an attorney directly.
On August 28, a federal court jury awarded Louis Vuitton Malletier, S.A. $32.4 million in a suit against two Internet Service Providers and their owner for trademark and copyright infringement.
The jury concluded that:
- The ISPs knew, or should have known, that their customers were selling, online, counterfeit goods that infringed LV trademarks and copyrights.
- The ISPs willful contributed to sales of the counterfeit goods.
- The ISPs were not entitled to the “safe harbor” protections of the Digital Millennium Copyright Act (see How Websites Can Avoid Liability for User-provided Content).
The moral: The DMCA will protect ISPs that play by the rules, but it will not protect ISPs that intentionally violate the intellectual property rights of third parties.
The jury’s verdict is a pretty interesting document because it lays out, step by step, each of the elements of infringement and asks the jury to vote “Yes” or “No” for each element.
Update: On September 9, 2011 the Court of Appeals for the Ninth Circuit affirmed the trial court decision as concerns defendants’ liability, but remanded the case to the trial court to reduce the amount of damages $32.4 million to $10.8 million, because only one set of statutory damages may be awarded (rather than multiplying statutory damages by the number of defendants) (Louis Vuitton Malletier v. Akanoc Solutions).
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact an attorney directly.
This Ralph Lauren ad 
has been making the rounds of the Internet and television, recently. The reason: Photo retouching to the point of absurdity, producing a supermodel (Filippa Hamilton) who looks more like a Bratz doll than a human being.
I’m not raising this issue to jump into the debate about skinny models and self-esteem of girls and women, which is being addressed at length elsewhere. (Disclosure: I have a wife and two daughters.) I’m more interested in a legal issue.
As soon as criticisms appeared online, Lauren’s lawyers issued takedown notices under the Digital Millennium Copyright Act (see Terms of Use and the Digital Millennium Copyright Act).
Read more…
“Fair use” is a legal term that does not necessarily mean what people often assumes it means (a free pass to use other people’s intellectual property). Indeed, the term has two different meanings, depending on whether copyrights or trademarks are at issue.
Copyright
Copyright protects works of authorship – see Copyright Protection in One Easy Lesson. The copyright owner has the exclusive right (as applicable) to reproduce, distribute, publicly perform, publicly display, and make derivative works of the copyrighted work.
Copyright infringement is the unauthorized exercise of one of the exclusive rights by someone other than the copyright owner. Thus, for example unauthorized copying of someone else’s music or movie constitutes copyright infringement.
Read more…
Dana Shultz is a business-savvy lawyer located in Northern California's San Francisco Bay Area (in the East Bay, near Oakland) who has in-depth knowledge of law, business, technology, and the needs of startup and early-stage companies.