"Trademark Strategies for 2012" Presentation to the American Bar Association's Cyberspace Institute in Austin Texas on January 28, 2011. The presentation explores recent changes to the practice of trademark law, and what the future might hold for trademark owners and attorneys who advise them.

1. Trademark Strategies for 2012: "Is There an App for That?" 2011 Cyberspace Law Institute © 2011 Erik M. Pelton & Associates, PLLC. All Rights Reserved. ® ®

2. What does the future oftrademark law look like? Not terribly different from the present, but with: More social media More apps and technology platforms More brands More entrepreneurs in this economy More expansion of existing brands Reg. No. 2651340 The mark consists of a depiction of the Driskill Hotel as it appeared in 1886.

5. More landscapes for disputes

6. More options for pursuing infringers

7. More options for defendantsCYBERSPACE® Reg. No. 1975275 for “telephone communications service”

9. NEW YORK YANKEES® YANKEES® NY® THE HOUSE THAT RUTH BUILT® YANKEES UNIVERSE® BRONX BOMBERS YANKEE HANKEE® YANKEEOGRAPHY® NEW YORK YANKEES®Portfolio Highlights Reg. No. 2029421 The drawing is a two-dimensional representation of the mark, which consists of the design elements and color combinations appearing on a three-dimensional baseball uniform… The uniform is white with navy blue pinstripes…

12. New gTLDs eventually

13. .delta

14. .windows

15. Social Media

16. Usernames

17. Misuse of trademarksReg. No. 3858099 for “computer application software for mobile phones”

18. More Options Against Infringers Personal jurisdiction based on online sales Seller operating online store may be subject to personal jurisdiction in every state in which it has made sales Chloe v. Queen Bee of Beverly Hills, LLC, No. 09-3361-cv, ___ F.3d ___ (2nd Cir August 5, 2010) Sale of 1 counterfeit bag to Plaintiff’s attorney in NY, plus at least 52 other sales of designer handbags in general to NY, was sufficient shipment of counterfeit bag was not a "one-off transaction," but rather a part of a larger business plan purposefully directed at NY consumers. Illinois v Hemi Group, LLC, No., 622 F.3d 754 (7th Cir. 2010) The only specific sales to Illinois resident identified in complaint were instigated by a special agent of the Department of Revenue But where website expressly stated company would sell to consumers in any state except NY, personal jurisdiction in Ill. found. Court noted refusal to sell in NY indicated Defendant knew sales could subject it to personal jurisdiction

19. More Options Against Infringers Personal jurisdiction in the trademark holder’s state Using Calder test [Calder v. Jones, 465 US 783, 789 (1984)], the 7th and 11th Circuits found personal jurisdiction in infringed trademark owner’s state because the activity expressly aimed at forum where trademark owner located Indianapolis Colts, Inc. v. Metro. Baltimore Football Club ltd. P’ship, 34 F.3d 410, 411-12 (7th Cir 1994) Licciardo v. Lovelady, 544 F.3d 1280, 1288 (11th Cir. 2008) AUSTIN – LIVE MUSIC CAPITAL OF THE WORLD® Reg. No. 2392553 for “Promoting of conventions and tourism in Austin, Texas; retail store services, featuring clothing, …”

20. More Options Against Infringers Potential contributory infringement liability of companies processing payments for the infringing party In 2007, the Ninth Circuit found Visa and Mastercard not liable for copyright infringement even though their credit card services were used to sell infringing photographs. Perfect 10 v. Visa Int'l Service Ass'n., 494 F.3d 788 (9th Cir. 2007) But in a 2010 trademark case, S.D.N.Y. found otherwise Gucci went after three companies that set up and serviced the counterfeiter’s merchant credit card accounts; each had some knowledge of the nature of the counterfeiter’s business. Court found each could be held liable for contributory infringement, because they “knowingly provide[d] a financial bridge between buyers and sellers of [counterfeit products]…. making a profit on every sale.” Gucci America, Inc. v. Frontline Processing Corp., Case No. 09 Civ. 6925 (S.D.N.Y. June 23, 2010)

21. More Options for Defendants Declaratory Judgments Supreme Court creates new test for patent cases in 2007 Rejected previous “reasonable-apprehension-of-suit” standard New test: whether facts alleged, under all the circumstances, show a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 126-27 (2007): TTAB Oppositions sufficient for subject matter jurisdiction 6 yrs. had passed since last Defendant’s litigation threat, but had filed 5 T.T.A.B. Oppositions in the interim Surefoot LC v. Sure Foot Corp., 531 F.3d 1236 (10th Cir. 2008).

22. More Options for Defendants Declaratory Judgments Requesting abandonment of USPTO application sufficient INTEL requested abandonment of INTELLACT USPTO application; stated that use would infringe (was not aware of use at the time) Express Scripts, Inc. v. Intel Corp., Case no. 4:09CV00796 (E.D. Mo. Mar. 3, 2010) Notice to 3rd Party (eBay) of © infringement and email threat of Federal lawsuit was sufficient basis for brining declaratory judgment action in the accused’s state Sending a Notice of Claimed Infringement (NOCI) to eBay’s VeRO program subjects sender to personal jurisdiction in the seller’s state in the seller’s suit for declaratory judgment of non-infringement Dudnikov v. Chalk & Vermillion Fine Arts, Inc., 514 F.3d 1063 (10th Cir. 2008)

23. More Options for Defendants Publicity attacks Increasingly popular tool available for Defendants to fight back. Use social media and other tools to put pressure back on complaining (larger) party The North Face Apparel Corp. vs. The South Butt LLC (E.D. of Mo., filed Dec. 10, 2009) (settled). The South Butt accused of infringing North Face® trademarks. North Face® suit resulted in media attention, and support South Butt. Case was settled and South Butt still in business. Monster Energy & Hansen Beverage Company Owners of Monster Energy® beverage threatened infringement suit over microbrew called The Vermonster®. Facebook fan page grew to 10,000+ fans in less than 2 weeks. Hansen soon backed down. Led to Congress in 2010 directing USPTO to study “aggressive trademark litigation tactics” Federal Bureau of Investigation & Wikimedia Foundation FBI sought to have its seal removed from from Wikpedia page, claiming it was a violation of the law. Wikipedia fought back publicly, posting the FBI’s demand letter and their response, and FBI apparently backed down from its request.

24. Trademarks are increasing in number, in scope and in the level of interaction with the consumer Forward thinking brand owners will continue to expand portfolios creatively Plaintiffs have more tools Defendants have more tools Trademark lawyers will be busy! © 2011 Erik M. Pelton & Associates, PLLC. All Rights Reserved. Conclusion:MORE, MORE, MORE! Reg. No. 3504172