Saturday, 29 January 2011

Trade mark depletion and foreclosure

Two similar stories on the web today (or not long ago): first, Managing Intellectual Property asking whether Apple is a trade mark bully for trying to register App Store as a trade mark (or trademark, I should write, as we are considering the United States here), and second a Minnesota-based maker of Scandinavian-style clogs by the name of Ugglebo challenging Deckers' controversial registrations of UGG for footwear.

There are important differences between them, I believe. The whole UGG thing smacks of avarice, and will have a central place in the book I might one day write about intellectual property absolutism. It seems well-established that the name was widely used in a generic way in Australia, and Deckers should not (on that basis) have been allowed to enclose it as a trade mark (or trademark). There might be more to it than that, but from what I know of it UGG simply should not have been registered as a trade mark.

Apple, on the other hand, do operate an online retail facility known as the App Store, which gives them a legitimate reason to wish to register that name as a trade mark. It is relevant that the name of the store reflects the first part of Apple's corporate name, but probably more to the point is that given the success of its iPhone and iPad the App Store has probably achieved widespread renown in a very short time. If so, it functions as an indication of source - in other words, it is a trade mark. I guess Apple will have to argue that it is distinctive enough, and that it isn't merely descriptive or generic, but if they can, they should have the trade mark. Their application is not a bid for world domination so much as an attempt to protect an important sign in its corporate portfolio - and (here's the point) if the law gives it a chance to register it, the company owes it to its shareholders to do so. Especially if, were it to hold back, someone else might grab it first.

That being the case, I beg to differ from what appears (from the summary) to be the thesis of the MIP article. The writer of that article, Eileen McDermott, notes that under the Trademark Technical and Conforming Amendment Act of 2010, the US Patent and Trademark Office asked stakeholders for comment on a number of questions relating to two topics: "(1) the extent to which small businesses may be harmed by litigation tactics the purpose of which is to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner; and (2) the best use of Federal Government services to protect trademarks and prevent counterfeiting." I know of plenty of examples of such bullying, from the UK and EU (and I would be surprised if the same thing did not go on in the US), but I don't see the Apple case as one - and as for UGGs, the problem there surely is that someone (at the USPTO) has permitted an undeserving trade mark to be registered. Both highlight defects in the system, which are not limited to the US, but not the defect identified by MIP.

No comments:


blogger templates | Make Money Online