A trademark must be
examined by viewing the trademark as a whole, rather than by dissecting
E-Stamp Corp. v. Dave Lahoti, Case No. 00-9287, C.D. Calif.
Was "E-stamp" Generic?
In 1990 Motorola, Inc. filed for the trademark "E-stamp." After
having received a final refusal - probably because the USPTO's initial
position was that it was indeed generic, Motorola's attorney wrote a convincing
argument ("a prosecution") and the USPTO allowed the trademark for registration
in connection with radio communications systems and apparatus. The
sad part is that they fell asleep at the switch and the application went
abandoned because they didn't file a statement of use within three years
of the initial application filing date.
In 1994 E-Stamp Corporation of Delaware applied for the trademark "E-stamp."
The trademark was approved for publication for use in connection with postage
and mailing system computer software. They filed for and received
5 extensions of time in which to file their "statement of use," before
actually filing it in December 1997. That of course is surprising,
because the public launch of E-stamp was in August 1998.
Not satisfied that they had covered all of their bases, E-Stamp Corporation
of Delaware applied for the trademarks "E-stamp" and "E-stamp.com" in connection
COMPUTERIZED ON-LINE SERVICES, NAMELY, ELECTRONIC PROCESSING
AND COORDINATING PAYMENT OF POSTAGE AND DISPENSING OF POSTAGE
Still, not satisfied that they had covered all of their bases, E-Stamp
Corporation of Delaware applied for the trademark "E" in 1999, for use
in connection with computerized on-line services, namely, electronic processing
and coordinating payment of postage and dispensing of postage. Surprisingly,
on 09-14-2000, the USPTO approved the application for publication - on
the Principal Register!
COMPUTERIZED ON-LINE RETAIL SERVICES IN THE FIELD OF POSTAL PRODUCTS
In 1997, Dave Lahoti of Tustin California, registered the online domain
name estamps.com -- and a series of slight variations
thereof -- after he learned of an emerging
Internet postage industry, according to
findings of fact by U.S. Judge Gary Allen Feess
of the Central District of California.
A large part of that industry centered around
E-Stamp Corp., which, after winning the
approval of the U.S. Postal Service, became
one of the first and only companies permitted
to offer sales of postage over the Internet. After
obtaining the domain names, Lahoti offered to
sell estampsnow.com and estamps.com back
The judge found that Lahoti's conduct qualified
his as an exceptional case within the meaning
of Section 35(a) of the Lanham Act (15 U.S.C.
1117[a]), which holds that fees may be
awarded in a trademark case when an
infringement is "malicious, fraudulent,
deliberate or willful."
"Lahoti's attack on Plaintiff's mark occurred at
a time when E-Stamp Corp. was particularly
vulnerable. Yet it was at this early stage of
development that Lahoti directed much of his
activities with the admitted hope of profit
through increasing the value of his web site ...
Under these facts, this case is exceptional and
E-Stamp Corp. should recover its attorneys'
fees," Judge Feess wrote.
Because Lahoti allegedly attempted to skirt the
trademark issue by creating Web pages with
similarly named domains, Judge Feess
instituted a permanent injunction to negate the
issue in the future. In his July 31 order, the
judge prohibited Lahoti from "using any
Internet domain name that is identical or
confusingly similar to E-STAMP," including
estamps, as well as lengthened version such as
estampsnow or second-level domain names
such as estamps.net.
Furthermore, Lahoti was ordered to provide
the plaintiffs with all rights, titles, interest in or
control over any remaining Internet domains he
created which bear resemblance to the
E-Stamp Corp. trademark. Judge Feess
retained jurisdiction over the case to enforce
the injunction in the future if needed.
During the three-day trial, Lahoti attempted to
justify the use of the trademark by
characterizing it as generic in nature --
because e-stamps begins with the letter "e" --
but because the trademark in question was
federally registered, the burden of proving its
genericness rested with the defendant. Judge
Feess rejected Lahoti's assertion, citing
California Cooler, Inc. v. Loretto Winery, Ltd.
(774 F. 2d 1451, 1455 [9th Cir. 1985]),
Continental Airlines, Inc. v. United Air Lines,
Inc. (53 U.S.P.Q. 2d 1385 [T.T.A.B. 1999]) and
Tech 2000 Realty Group v. Internet Home
Services, Inc. (No. C-99-21135 RMW [N.D. Cal.
2000]) as proof.
"Although those cases are not controlling, this
Court nevertheless concludes that they are
distinguishable and do not support Lahoti's
assertion that the E-STAMP mark is generic ...
The fact that E-STAMP contains the prefix 'e '
does not render the mark generic ... A
trademark must be examined by viewing the
trademark as a whole, rather than by
dissecting its parts," Judge Feess wrote.
Lahoti has filed a notice of appeal with the 9th
U.S. Circuit Court of Appeals, sources said.
John A. O'Malley and Nicole E. Krasny of
Fulbright & Jaworski in Los Angeles represent
E-Stamp Corp. Neil A. Smith of Limbach and
Limbach in San Francisco and Brett P. Wakino
of Alhambra, Calif., represent Dave Lahoti.
July 17 2000
Cybersquatters in England
MBNA America Bank NA & anr v Freeman.
Law. Internet law. Domain name. Interlocutory injunctions.
Claimants (the British word for "plaintiffs") are the world's largest credit
card issuer. They conduct Internet business from their website www.mbna.com.
They have also registered other domain names including MBNA.shopping.com
and MBNA.offers.com. Their trademark consists of a stylised representation
"mbna". The Defendant is in advertising and registered the domain name
mbna.co.uk. The Claimants want that name. Since the claimant's case was
arguable and since it would be undesirable that the Defendant should be
left in a position in which he could, pending trial, sell the domain name
at a price which might have been enhanced through improper use of the Claimant's
goodwill. Accordingly, injunction granted respect of that part of the application.
Chancery. N Strauss (sitting as a deputy judge of the Chancery Division).
17/07/00. P Acland (instructed by Bristows) for the Claimants. The Defendant
appeared in person. (C) Copyright Law///Alert 2000. Edited by: Sophie Mortimer
- No 1 Serjeants Inn
March 28, 2000
Should 'e' words be trademarked?
LightSurf Inc. v AGFA
SANTA CRUZ, California
Afga's parent company, BAYER CORPORATION,
trademarked the word 'ephoto', in relation to digital cameras. USPTO
Registration Number 2158159.
LightSurf Inc. owns the domain name 'ePhoto.com'
AGFA previously filed an action against
LightSurf, for trademark infringement, in an effort to obtain the disputed
domain name. In response, LightSurf Inc. is seeking to cancel
BAYER CORPORATION's trademark registration.
At issue is whether 'eWords' should be
in the public domain. Has the prefix 'e' become so commonly used,
so as to put 'eWords' in the public domain? Does the 'e' prefix simply
imply that the connecting word has some nexus with the internet?
Examples are "e-ticket" and "e-commerce,"
"eGift" and so on.
In this case, is 'ePhoto' descriptive of the fact that digital cameras
produce electronic photos, in this millenium's common lingo? Probably.
Does it describe the nature of the camera, namely that it may be hooked
up to the internet? Not really, but it is very suggestive the camera's
March 22 2000
v. Zuccarini, No. 00-494
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF PENNSYLVANIA
One of the first motions for a preliminary
injunction under the new Anticybersquatting
Consumer Protection Act ("ACPA"), Pub. L. No. 106-113 (1999) (to be
codified at 15 U.S.C. 1125(d)).
Motion to enjoin Zuccarini from using his
variations of the "Joe Cartoon" domain name during the pendency of this
action, namely, joescartoon.com, joecarton.com, joescartons.com,
joescartoons.com, and cartoonjoe.com.
February 2, 2000
GOTO COM V DISNEY
Case Number: 99-56691
UNITED STATES COURT OF APPEALS FOR THE 9th CIRCUIT
Whether two remarkably similar logos used commercially on the World
Wide Web are likely to confuse consumers under federal trademark law. GOTO.com