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Intellectual Property Litigation : Pretrial Practice
Business and Commercial Litigation in Federal Courts
 by Robert L. Haig, Esq. 
Price: $480.00

A trademark must be examined by viewing the trademark as a whole, rather than by dissecting its parts

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 with:

COMPUTERIZED ON-LINE SERVICES, NAMELY, ELECTRONIC PROCESSING AND COORDINATING PAYMENT OF POSTAGE AND DISPENSING OF POSTAGE

COMPUTERIZED ON-LINE RETAIL SERVICES IN THE FIELD OF POSTAL PRODUCTS

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!
 

E-STAMPS.COM 

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
to E-Stamp. 

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. 

PERMANENT INJUNCTION 

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. 

'GENERICNESS' DEFENSE 

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.
0019902. English 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 ability.


March 22 2000
Shields 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.
 More...


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 v GO.com



August 8, 2000
Who Owns "VoodooChild.com"?
Cybersquatter Ordered to Give Up Hendrix Web Site
Reuters

The family of the late American rock legend Jimi Hendrix has won a case
at an international panel to evict the holder of the Internet address
www.jimihendrix.com, U.N. arbitrators said Monday.  The family of the
guitar genius, who died in 1970, filed the case in May at the
Geneva-based World Intellectual Property Organization (WIPO) against
American Denny Hammerton of Minneola, Florida, who had been the first to
register the address as an Internet domain.

http://news.findlaw.com/international/s/20000807/musichendrixdc.html

http://arbiter.wipo.int/domains/decisions/html/d2000-0364.html
 



 
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