Topic: Trademark

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Legal considerations for social network APIs

An application programming interface (API) is a library or structured set of software tools that provides an interface to a backend software platform, such as a social networking platform, without providing direct access to the underlying source code of the platform.

For example, Facebook™, Twitter™, Instagram™, LinkedIn™, Google Plus™, and Tumblr™ offer APIs so that developers can interface with their social networking platforms, resulting in widespread development of various social network based software applications.… Continue Reading

Consumer confusion with marketing on social media

Social media often serves as a powerful mechanism that trademark owners can employ to promote and expand their brands, but a case currently pending in the Southern District of California illustrates just how easily social media can also be used to spread consumer confusion.

In Faegin v. LivingSocial, Inc., No. 14CV00418-WQH-KSC, 2014 WL 5307186, at *1 (S.D. Cal. Oct. 15, 2014), the plaintiffs operated a residential and commercial cleaning service in San Diego called A.T. Your Service Cleaning and Janitorial.… Continue Reading

Beware of counterfeit advertisements on social media

Despite the efforts of brand owners and entities providing online advertising space to police against counterfeit goods, advertisements for counterfeit goods on social media continues to be a recurring problem. Moreover, the appearance of many of these advertisements as genuine and leading to websites that contain the logos and trademarks of the brand owner or a similar website template can often deceive consumers into believing that they are purchasing authentic goods.

Italian cyber-security experts Andrea Stroppa and Agostino Specchiarello recently conducted a survey of more than 1,000 advertisements on Facebook, including 180 advertisements in the category of luxury and fashion. … Continue Reading

Facebook blocks Facemba

In September, we blogged on the successful opposition by Facebook to a trade mark registration in Australia for ‘Friendbook’. Facebook has had further success in the Australian Trade Marks Office, protecting their brand through a successful opposition to an international registration of the trade mark FACEMBA.

Application 1504587 for the word mark FACEMBA was an international registration that designated Australia. It was filed in the name of company FACEMBA, LDA under the Madrid Protocol on 30 April 2012.

International trade mark registrations under the Madrid Protocol

The system of international registration of marks is governed by two treaties:

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Facebook de-friends FriendBook

A trade mark application for ‘FriendBook’ has been refused by the Australian Trade Marks Office, following a successful opposition from Facebook.

Australian company Northsword Pty Ltd filed an application on 19 February 2012 for the word mark ‘FriendBook’ in respect of Class 45 services for:

Consultancy services relating to social planning; dating and social introduction services provided via online personal advertisements; escort agencies (social); providing information, including online, about personal and social services meeting the needs of individuals; social escort agency services; social escorting; social work services.

Facebook opposed this application under Australia’s Trade Marks Act 1995  under Section 60… Continue Reading

Google – Hanginout in court

In November 2013, Hanginout, Inc. (“Hanginout”) filed a lawsuit against Google Inc. (“Google”) alleging, among other things, that Google had infringed on Hanginout’s HANGINOUT mark.

Hanginout, a Virginia based social media company, uses its HANGINOUT mark for its interactive video response platform, which enables its users to create, promote, and sell their own brands by engaging directly with potential customers via pre-recorded video messages and/or video profiles. Google alleged that by 2009, it had already developed its internal version of what would become its HANGOUTS product. Google made its HANGOUTS product accessible to the public as part of its Google+ … Continue Reading

Update – CANDY Mark Dispute

We have written previously about the trademark dispute in the US between Limited and Runsome Apps Inc., the creators of the mobile/social media/web games “Candy Crush Saga” and “CandySwipe,” respectively. It appears that the year-long battle between the two developers has ended.

On April 16, 2014, Albert Ransom posted this statement on the website:

“I am happy to announce that I have amicably resolved my dispute with King over my CandySwipe trademark and that I am withdrawing my opposition to their mark and they are withdrawing their counterclaim against mine. I have learned that they picked the CANDY

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Mobile/ Facebook game developers face off in CANDY mark dispute

Our readers are probably familiar with a game that can be played on Facebook or on a mobile device known as CANDY CRUSH SAGA.  Also available on Facebook and on mobile devices is another game called CANDYSWIPE.  This posting summarizes the trademark application dispute between the two companies, one of which has leveraged the power of social media for support.

Earlier this year, an open letter to Limited, the developer of Candy Crush Saga, went viral, informing all who would read the letter by Albert Ransom, president of independent game developing studio Runsome Apps, which was written at the … Continue Reading

IP enforcement via takedown notices

According to a January 22, 2014 ruling from the U.S. District Court for the Northern District of California, an incorrectly-chosen takedown notice may constitute a violation of the Digital Millennium Copyright Act (DMCA).

CrossFit and its DMCA takedown notice

In Crossfit, Inc. v. Alvies, plaintiff CrossFit, Inc. brought a trademark infringement action against Jenni Alvies for content posted on Alvies’ Facebook page and Blogspot blog. CrossFit, the company that created the very popular fitness training program and training certification program, currently owns multiple federal trademark registrations and applications for the mark CROSSFIT, including in connection with fitness training services, … Continue Reading

Fictitious social media profiles under the Lanham Act

On November 7, 2013, the United States District Court for the Western District of Virginia issued its opinion in AvePoint Inc. v. Power Tools, Inc., a case that, at least in part, has fortified the ability of a competitor injured by a fictitious social media profile to bring a claim under the Lanham Act.

In AvePoint, SharePoint software platform developer AvePoint, Inc. brought several federal and state law claims against its marketplace competitor Axceler. In its complaint, which included allegations that Axceler had defamed AvePoint by falsely “tweeting” that AvePoint’s products were manufactured in China, AvePoint alleged that … Continue Reading

Policies banning photos, videos and confidential information unlawful

On July 15, 2013, the National Labor Relations Board (“NLRB”) released a memorandum providing further guidance on whether a company’s social media policy could be construed to stifle protected, concerted activity.  Over the last two years, the NLRB Office of the General Counsel has issued several memoranda discussing the validity of employer social media policies in light of existing principles under the National Labor Relations Act (“NLRA”).

Section 7 of the NLRA grants employees in unionized and non-unionized workplaces the right to engage in concerted activities for the purpose of mutual aid or protection.  Employers are prohibited under Section 8 … Continue Reading

Pinterest v. Amazon and ICANN’s New gTLDs

On July 16, 2013, the WIPO Arbitration and Mediation Center issued a panel opinion on an objection brought by Pinterest, Inc. (“Pinterest”), the San Francisco-based creator of the social media platform Pinterest, under the New gTLD Dispute Resolution Procedure.

Our readers are probably familiar with the common top-level domains, such as .com and .gov.  In 2012, companies could apply for a new top-level domain that was not so restricted, and could be almost anything.  These new “generic” top-level domains, or gTLDs, can be names, words in the dictionary, the applicant’s own trademarks, etc.  The owner of a new … Continue Reading

The Rise of the #Hashtag

Every day, hundreds of millions of people use social media to share their thoughts about everything that is happening around them. The most popular social media sites do not have simple ways to search for and organize content, so users turned to the hashtag to solve the problem. Hashtags are words or phrases prefixed with the hash sign (#) and provide a means of grouping messages together. When you click on a hashtag (e.g. #socialmedia), you can see what other people are saying about that particular topic. When a hashtag becomes extremely popular, it can “trend” and attract more individual … Continue Reading

Anonymous Yelp! Reviews Used as Proof of Actual Confusion

In any trademark infringement lawsuit, evidence of actual consumer confusion between two marks can play a key role in a court’s “likelihood of confusion” analysis.  This evidence frequently takes the form of a consumer survey demonstrating that certain individuals were in the marketplace, saw the two marks, and believed that they were somehow related.

On February 11, 2013, however, the United States District Court for the Middle District of Florida allowed use of an anonymous Yelp! review to support a finding of likelihood of confusion and a preliminary injunction against the defendant.

In You Fit Inc. v. Pleasanton Fitness LLCContinue Reading