Martha Stewart Draws Ire over Name of New Furniture Line

It appears as though Martha Stewart is facing some criticism from the citizens of her new hometown. Named after a 17th-century Indian chief, Katonah, N.Y. has been home to Stewart since 2000. She recently applied for the trademark "KATONAH" for her new line of furniture, the "Katonah Collection," and some of her neighbors are less than thrilled.

Some do not think that it is a good idea to assert trademark rights over a centuries-old name, some are just uncomfortable with the idea, and some worry that trademark protection could prevent others from using the word "Katonah" in the name of a furniture store. Stewart's spokeswoman claims that Stewart loves her new hometown and is merely seeking to honor the town by using its name in her furniture line.

Stewart's application was published for opposition last month, and currently, no other marks with the name "KATONAH" exist. The Trademark Office will likely register the trademark if there is no risk of consumer confusion and if the trademark has inherent or acquired distinctiveness. If the Trademark Office finds that the trademark is descriptive because it merely contains the name of the town, then the mark needs to possess secondary meaning, and Stewart will need to show that consumers associate the mark with its source. If the Trademark Office finds that the mark is fanciful or arbitrary, then the mark has inherent distinctiveness and will likely be registered, barring any opposition.

USPTO to Cease Top 10 List

In a move to emphasize quality over quantity, the U.S. Patent and Trademark Office on Monday said that it will no longer release its annual Top 10 list of the organizations or corporations who receive the most patents in a calendar year. The agency will release its last list in April, and will list the top organizations from 2006.

The annual "Patenting By Organizations" list profiles organizations who receive at least forty patents each year. IBM has topped the list for the past two years, with other firms Canon, HP, and Matsushita close behind.

Supreme Court Decision Hints at Stricter Patent-Granting Requirements

The Supreme Court recently handed down its decision in MedImmune, Inc. v. Genetech, Inc. The issue that the Court faced in this case was whether the "actual controversy" requirement of the Declaratory Judgment Act requires a patent licensee to commit material breach of the license agreement before filing an action for declaratory judgment, an action that is filed to obtain a declaration that a patent is invalid, unenforceable, or not infringed. The Court's decision also raises questions to the strictness of the standard for granting patents.

Patents that are too readily granted hinder innovation, hurt efficient licensing, and impede competition. In addition, the granting of dubious patents sometimes forces companies using the patented technology to enter into financial settlements, like in the Blackberry case from last year. The number of patent applications per year over the last twenty years has tripled, a testament to expanding technology and more inventions. The Court is set to make a stance on the standard of patentability so technology and innovation can remain increasing but at the same time prevent against the harms of too easily-granted patents.

The Court in MedImmune held that a licensee in good standing is still able to file a declaratory judgment action. This decision comes on the heels of an increased number of patent cases that the Supreme Court has decided and are currently docketed. The MedImmune decision hints that the Court is willing to influence a change on the standard for granting patents, making them harder to obtain. The Court is slated to hand down its decision in KSR v. Teleflex, which examines the validity of the "motivation-suggestion-teaching" test of obviousness. This test states that to render an invention obvious, the prior art must suggest an advantage to be derived from combining its teachings. If the Court finds that the test conflicts with the Court's nonobviousness precedent, Graham v. John Deere, then the patentability standard is raised.

Apple Sued Over iPhone Trademark

Tech giant Cisco brought a trademark infringement suit against Apple on Wednesday, January 11, 2007 in District Court in the Northern District of California. Seeking a injunctive relief, Cisco claims that Apple's new iPhone violates its trademark.

The iPhone is Apple's highly-anticipated all-in-one device that can play music, surf the web, access email, and send and receive calls. Apple likely chose the name iPhone to mirror its existing family of 'i' products, including the iPod and iMac. The only problem is, Cisco has owned the trademark rights to iPhone since 2000 and has even labeled a brand of its own products with it.

According to Cisco, Apple has been trying for a few years to reach a licensing agreement with Cisco for rights to the name. The companies' lawyers were even working up until the time that Apple CEO Steve Jobs delivered the announcement for the iPhone. Cisco sued when the two sides couldn't reach a deal before Cisco's stated deadline.

Tribute Bands, Their Impact on Copyright and Trademark Infringement, and the Fair Use Defense

On November 22, 2006, the band Australian Pink Floyd played a show at Allstate Arena in front of over 10,000 people, and for a ticket price of $49.50. The band proclaims itself as "the World's No. 1 Pink Floyd Tribute band," they play only Pink Floyd songs, and they use similar lights and special effects that were commonplace in the original Pink Floyd concerts. The generous profit that the band likely generates based on attendance figures and ticket prices brings up a valid question of the legality of the band's name and substance of its concerts. Is the band violating copyright law? Trademark law? Both?

In terms of copyright law, the venue where any cover or tribute band plays has to pay the American Society of Composers, Authors and Publishers (ASCAP) a varying annual licensing fee for any copyrighted songs that the bands play. The ASCAP pays out its members (currently over 240,000) according to how often that the songs are played on the radio. The ASCAP is notorious for its arbitrary and arguably unfair methods of enforcement. Recently, the ASCAP tried to extract money from both a funeral home and from a Girl Scouts of America camp whose campers sang the ASCAP-protected song "This Land is Your Land." Just this past October, the ASCAP slapped Oregon-based bar owner Michael Dorr with a federal copyright infringement suit, seeking $750 to $30,000 for each song, plus attorney fees, after a local band performed in Dorr's bar and covered three ASCAP-protected songs.

Tribute and cover bands may also misappropriate the logos, names, and dress of the original artist, all of which are traditionally protected by trademark law. Trademark issues of misappropriation of goodwill, dilution and the violation of the right of publicity are also created by tribute bands. While the nature of tribute bands is arguably per se infringement, bands can use the nominative fair use defense, which can be applied where the tribute band's use of the real band’s mark refers to something other than the real band’s product. The court in New Kids on the Block v. News America Publishing Inc. articulated a three-part test for nominative fair use:

First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.

A tribute band can tip the first prong it in its favor if it can convey its essence without using the actual trademark. People would know that Australian Pink Floyd is not the real Pink Floyd, but it can be assumed that they play Pink Floyd's music. Tribute bands will also incorporate a band's song or album names into their own name, such as the U2 tribute band Elevation and the Fleetwood Mac tribute band Rumours. The second prong of the test is often a fact-based decision. The court will consider such factors as the similarity of the names or the extent to which the tribute band uses the logos or other indicators of the real band. Because Australian Pink Floyd has the name "Pink Floyd" in their title, and because they use similar concert effects, a court might rule against them in regards to the second prong. The third prong is also mostly a fact-based decision. The court would consider factors such as the similarity of names or logos, and also survey results, which are a good indicator of consumer confusion.

As it turns out, Australian Pink Floyd was asked to perform at David Gilmour's, a founding member of Pink Floyd, 50th birthday party, so it is likely assumed that there is a working relationship between the two parties and an understanding that there will be no trademark lawsuits filed. Even if Pink Floyd decided to sue, Australian Pink Floyd could make a strong fair use defense.