Trademark Confusion between Beer, Wine & Spirits

Beer, Wine and Liquor ... oh my! 

On June 12, 2018, the Trademark Trial and Appeal Board (TTAB) dismissed an opposition to the trademark registration of PIRATE PISS (for beer, ale and lager), finding that the evidence was insufficient to find a likelihood of confusion with the mark PYRAT RUM (for rum). 

Shortly thereafter, on June 15th, the Trademark Trial and Appeal Board found that DEAD BIRD BREWING COMPANY (for beer) was confusingly similar to DEADBIRD (for wines). In addition to other evidence, the examining attorney who first denied the application relied on 24 use-based registrations wherein both wine and beer were sold in conjunction with the registered mark. These registrations demonstrated the "relatedness" between beer and wine. Additional relatedness factors were also detailed.

While the PIRATE PISS/PYRAT RUM case lacked must evidence to support relatedness, the DEAD BIRD case appeared to include sufficient evidence to support relatedness and a likelihood of confusion.

The TTAB further stated that inconsistent prior decisions and actions of examining attorneys have little evidentiary value and are not binding on the Board. See the decision here:

http://ttabvue.uspto.gov/ttabvue/ttabvue-87140389-EXA-22.pdf

What Constitutes An Appropriate Specimen?

Selecting a good specimen is vital to a viable trademark application.

Whether you are filing a specimen with a "use-based" trademark application or filing a specimen in conjunction with an allegation of use subsequent to the initial trademark application, there are some clear requirements. The list below is not meant to include all possible types of specimens, but will provide guidance on the most common permissible specimens.

• If you are selling a product, a possible specimen is a photograph of the product or label placed on the product. 

• A digital printout of the label (or drawing of the label) is likely to be denied by the USPTO as it is not the label as actually affixed to the product.  

• If you are selling a product, another possible specimen is a screenshot from a website catalog detailing the product and the trademark with a way to purchase the product by placing it in a "cart." This is true for mobile applications as well. A possible specimen would be the download page for the software app, detailing the mark, and describing the software as detailed in the trademark application.

• If you are selling software as a service (SAAS), the U.S. Patent and Trademark office must see the trademark on the SAAS as viewed by the customer. Advertising for the software is not sufficient. 

• A possible specimen is a screenshot of the SAAS, as viewed by the customer, showing the trademark in a footer or header. 

• Specimens have been denied when the trademark is a navigation button.

• Another possible specimen is a screenshot of the login page for the SAAS bearing the trademark.

• If you are providing a service (other than software), advertising for the service is acceptable as long as the specimen clearly describes the services as detailed in the trademark application. Examples include, screenshots of a website page bearing the mark and describing the services provided, a menu (for a restaurant), and an agenda (for training or workshops).

The information herein is for informational and educational purposes only. If you have legal questions or concerns, please consult a qualified legal practitioner.

The availability of WHOIS information for domain names is about to change...

The General Data Protection Regulation (GDPR) continues to have major effects on the Internet.

As of May 25, WHOIS information that is publicly accessible and available will be limited to 

• the domain name, 
• the owner's organization (if any), 
• the owner's state or province and country, 
• an anonymous email address or web form (for forwarding an email communication).,
• name servers,
• information regarding the domain name registrar, and
• the domain's creation and expiration dates.

There will be no real names, telephone numbers, or email addresses for direct communications with the domain name registrant. All other information will be available subject to accreditation. Stay tuned as there are not yet any "accreditation" standards.

This blog is for educational and informational purposes only and is not legal advice. If you have any questions or concerns about your legal rights or obligations, please contact qualified legal counsel.

Do You Conduct Business Or Process Customer Information In Europe?

As of May 25, 2018, things are going to change...

The General Data Protection Regulation ("GDPR") takes effect on May 25th. If you have European clients and maintain any data about those clients or if you process any customer data in Europe or receive shared customer data from Europe, changes will be required.

This will have an effect on website Terms and Privacy Policies.

Before you panic...don't. 

While the EU regulation is quite a tome and there is definitely some complicated verbiage, many requirements are fairly straightforward. While not meant to include all requirements of the GDPR, the steps outlined here will provide a starting point for companies not familiar with the requirements to protect the private information of individuals that is in your possession or control. For the full GDPR, Click here. 

As used in this article, the term "Data" refers to any information relating to a human individual who can be identified by that information, including a name, ID number, location data, IP identifier, or one's physical, physiological, genetic, mental, economic, cultural, or social identity.

1.  If you don't have one, appoint a "Data Protection Officer." This is more important for large companies, but will be useful for small companies as well. This individual will monitor compliance with the GDPR, report to senior staff members, and be a point of contact with customers and employees. 

2.    Create a Data Protection Policy and include: 

• how you process Data in the EU or that relates to EU citizens, 
• how long you retain Data, 
• how you provide Data to individuals requesting their Data, 
• how you obtain consent to maintain and use that Data,
• why you collect and process Data,
• the type of Data held, and
• a description of technical security measures to protect the Data.

3.    Create a Data Protection Impact Assessment.

4.    Obtain a positive 'opt in' authorization from EU citizens or from anyone where information is processed in the EU before collecting Data and make sure consents are clear and understandable. [Note: You may have noticed pop-up boxes on websites that ask for permission to use "Cookies."]

5.    Allow individuals a way to access and obtain their Data. You may have noticed that Google® has started providing a way for consumers to do this if you take a look at their Privacy Policy.

6.    Obtain parental consent from any child 16 or younger before collecting any Data. Note, in other nations, such as the UK, the age is 13 instead of 16. Make sure to check laws in each country in which you conduct business or gather any information.

6.    In the event of unauthorized disclosure of Data, you must report the breach to each affected individual and the EU country's data protection regulator within 72 hours after you learn of the access or disclosure.

In the event an entity does not follow GDPR rules, there are hefty penalties. Smaller offenses could subject an entity to €10 million, or 2% of the worldwide annual revenue of the prior financial year, whichever is higher while more serious offenses could result in penalties of €20 million, or 4% of the worldwide annual revenue of the prior financial year, whichever is higher.

For an interesting investigation in the UK, WhatsApp, Inc. undertakes not to share personal data with companies in the Facebook family, until it can satisfy GDPR requirements. You can access that undertaking HERE.

This blog is for educational and informational purposes only and is not legal advice. If you have any questions or concerns about your legal rights or obligations, please contact qualified legal counsel.