MediaTech Law

By MIRSKY & COMPANY, PLLC

Can Social Media Use Save a Trademark?

Posted December 24, 2015 by Roman Vayner 0

Maintaining a social media profile has become standard practice for most businesses advertising their services. Savvy trademark owners may also know that they must “use” their mark in order to establish trademark rights – meaning that the mark must be actually used in connection with providing a good or service. But what type of use is sufficient? Is simply using a mark on a Facebook or Twitter profile enough to show “use” of the mark for trademark purposes? A Trademark Trial and Appeal Board (TTAB) decision says no, but offers useful guidance to trademark owners on using “analogous” trademark use to establish trademark rights. The decision is The PNC Financial Services Group, Inc. v. Keith Alexander Ashe dba Spendology and Spendology LLC.

Spendology attempted to register the mark SPENDOLOGY for web-based personal finance tools. PNC Financial Services Group (PNC), which used the same mark for an “online money management tool,” opposed Spendology’s application, claiming that PNC had used the mark first. Both parties filed motions for summary judgment for likelihood of confusion and priority.

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Budweiser Protects Its Throne From the Queen of Beer

Posted December 2, 2015 by Roman Vayner 0

Anheuser-Busch’s Budweiser brands itself as the king of beer and the company’s recent trademark defense shows it’s not willing to share the throne. A California craft beer company named She Beverage Company recently filed a trademark application with the U.S. Patent and Trademark Office (PTO) for THE QUEEN OF BEER for “beer,” and Anheuser-Busch quickly moved to oppose it.

Anheuser-Busch argued in its opposition that She Beverage Co.’s trademark would cause consumer confusion with several of its KING OF BEERS word and design marks, the oldest of which was registered in 1968 for “beer.”

Anheuser-Busch also argued that THE QUEEN OF BEER would dilute the distinctive nature of Budweiser’s famous trademarks. Famous marks are afforded heightened protection from similar marks because of the strong connection in the mind of the public between the source of the product and the mark. And there is little doubt that Anheuser-Busch’s marks, including Budweiser, qualify as famous considering the hundreds of millions of dollars that it spends annually on advertising, and its place as one of the world’s most valuable brands.  

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What’s Behind the Decline in Internet Privacy Litigation?

Posted September 8, 2015 by Roman Vayner 0

The number of privacy lawsuits filed against big tech companies has significantly dropped in recent years, according to a review of court filings conducted by The Recorder, a California business journal.

According to The Recorder, the period 2010-2012 saw a dramatic spike in cases filed against Google, Apple, or Facebook (as measured by filings in the Northern District of California naming one of the three as defendants). The peak year was 2012, with 30 cases filed against the three tech giants, followed by a dramatic drop-off in 2014 and 2015, with only five privacy cases filed between the two years naming one of the three as defendants. So what explains the sudden drop off in privacy lawsuits?

One theory, according to privacy litigators interviewed for The Recorder article, is that the decline reflects the difficulty in applying federal privacy statutes to prosecute modern methods of monetizing, collecting, or disclosing online data. Many privacy class action claims are based on statutes passed in the 1980s like the Electronic Communications Privacy Act (ECPA), the Stored Communications Act (SCA), both passed in 1986, and the Video Privacy Protection Act (VPPA), passed in 1988. These statutes were originally written to address specific privacy intrusions like government wire taps or disclosures of video rental history.

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Website Policies and Terms: What You Lose if You Don’t Read Them

Posted July 15, 2015 by Roman Vayner 0

When was the last time you actually read the privacy policy or terms of use of your go-to social media website or you favorite app? If you’re a diligent internet user (like me), it might take you an average of 10 minutes to skim a privacy policy before clicking “ok” or “I agree.” But after you click “ok,” have you properly consented to all the ways in which your information may be used?

As consumers become more aware of how companies profit from the use of their personal information, the way a company discloses its data collection methods and obtains consent from its users becomes more important, both to the company and to users.  Some critics even advocate voluntarily paying social media sites like Facebook in exchange for more control over how their personal information is used. In other examples, courts have scrutinized whether websites can protect themselves against claims that they misused users’ information, simply because they presented a privacy policy or terms of service to a consumer, and the user clicked “ok.”

The concept of “clickable consent” has gained more attention because of the cross-promotional nature of many leading websites and mobile apps. 

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.SUCKS: Extortion or Free Speech?

Posted June 9, 2015 by Roman Vayner 0

Domain names are an essential part of modern commerce and convey important information about the website’s affiliation and legitimacy. Consumers may briefly glance at the .com or .edu at the end of the page they land on to make sure they’re on the right site, but soon they may see an unfamiliar suffix next to their favorite brand’s page – .sucks.

In 2014, the Internet Corporation of Assigned Names and Numbers (ICANN), a California-based nonprofit that manages and coordinates domain names, agreed to allow Vox Populi, a Canadian domain name registrar, to operate the registry for the new “.sucks” top-level domain (TLD).

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Targeted Election Ads: New Frontier in Political Advertising

Posted March 19, 2015 by Roman Vayner 0

The next U.S. President won’t be sworn in for almost two years, but the jostling and positioning among likely candidates has already begun. When candidates consider how to reach potential voters, an increasingly sophisticated weapon in their arsenal will be targeted advertising to reach voters in-between commercial breaks of their favorite TV shows. These “addressable ads” allow advertisers – in this case political campaigns – to pay content providers, such as satellite networks, to reach specific homes. Addressable ads present a sharp departure from previous eras of political advertising that used a “shotgun approach” to appeal to as many potential voters as possible, regardless of demographics, previous political affiliation, or likelihood of voting.

Satellite television providers DirecTV and DISH Network have already embraced this technology by selling data about subscribers’ individual viewing habits to campaigns. Subscriber data are initially anonymized, but with addresses intact, and then matched to the addresses on voter-registration and canvassing databases. According to a USA Today report, once the targeted households are selected, the satellite provider sends the addressable ads to the home’s digital video recorder (DVR), and the ad airs in the next available commercial slot as part of whatever programming the customer is watching. After the ad plays, the remainder of the user’s TV show continues unaffected until the next ad slot opens.

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Legal Threats Don’t Stop Growth of Textbook Pricing Application

Posted February 10, 2015 by Roman Vayner 0

OccupyTheBookstore, a Chrome browser add-on from Texts.com, has become the subject of legal threats from Follett Higher Education Group, one of the largest college textbook retailers in the U.S.  Textbook price comparison tools are not new, with websites like Chegg and SlugBooks, compiling textbook prices from retailers, university bookstores, and online retailers on their own websites.  What makes OccupyTheBookstore unique is that it is provided directly to the user as a downloadable plug-in and works immediately on top of a user’s browser to show cheaper options for print and digital rentals while the user browses a bookstore’s website.

The fact that the user is given the option to employ an immediate filter on top of Follett-affiliated websites rankled the company and prompted it to threaten Texts.com with legal action.  According to an email from Follett to Texts.com’s founders obtained by the Wall Street Journal, the add-on “effectively chang[es] the presentation of the information on the screen.”  Texts.com has not backed down.  In an interview with Red and Black, University of Georgia’s student newspaper, Texts.com says that it “determined that we are totally within our rights to manipulate information in the client’s browser. As it’s opt-in and doesn’t touch the bookstore servers at all….”

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Fertilizer by Any Other Name: District Court Denies Trademark Protection for Generic Term

Posted January 14, 2015 by Roman Vayner 0

Trademark law is designed to protect consumers from confusion as to the sources of products or services.  Strong trademarks are those that are distinctive – that is, they are capable of identifying the source of a particular good.  At the other end of the trademark spectrum are generic marks.  These marks are incapable of functioning as trademarks because they have come to be identified by the relevant purchasing public as common names for the goods or services with which they are associated.  A finding that a mark has become or is generic means that it has lost (or has never had) the ability to identify the source of a product or service, and thus cannot function as a trademark.  For this reason, a finding that a potential mark is “generic” presents a serious problem to a trademark application because it means that a mark has become synonymous in the public’s mind with a particular product or service as opposed to its source.

Dr. Earth, a California organic gardening company, learned this lesson after a lengthy legal battle in which its trademark application for PROBIOTIC was ultimately denied by the U.S. District Court for the Eastern District of Virginia.  Dr. Earth sought to register the word PROBIOTIC for fertilizers.  The U.S. Patent and Trademark Office (PTO) Examiner initially refused registration, stating that the term was generic in connection with fertilizer, and that at most, the term was merely descriptive and had not acquired a secondary meaning.  Merely descriptive marks are similar to generic marks and are considered “weak” marks because they simply convey information about a function, characteristic, or purpose of the goods or services.  As Jeffrey Davidson states in his IP Registration and Enforcement blog, “[d]escriptive terms by their very nature apply to all goods of a particular type, and therefore do not identify any single source.”  Nonetheless, merely descriptive marks can become distinctive of a source by achieving “secondary meaning.”  Daniel A. Tysver, of the comprehensive Bitlaw Legal Resource, notes that if evidence such as long term use or large amounts of advertising and publicity can show that a mark has achieved this “‘second meaning’” (the first meaning being the generally understood meaning of the term or phrase), a protectable trademark is developed.”

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What Should You Consider When Drafting a Privacy Policy?

Posted July 24, 2014 by Roman Vayner 0

Businesses are often faced with the challenge of collecting information about their clients in order to tailor and improve their products and services, while respecting their customers’ privacy and protecting their personal information.  But outside of a narrow set of specific state requirements mandating minimum content requirements for privacy policies (see, for example, this discussion of California’s Online Privacy Protection Act (CalOPPA)), and other than the Federal Trade Commission (FTC) Act, which prohibits deceptive or unfair commercial practices, there are no federal laws or regulations that explicitly say what should be included in a privacy policy.  Nonetheless, the statements a company makes in its privacy policy regarding use and disclosure of personal information are enforceable by consumer protection agencies under regulations such as the FTC Act and state laws that prohibit deceptive commercial activity.

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