In Scholz v. Goudreau, No. 13-CV-10951, 2015 WL 5554012 (D. Mass. Sept. 21, 2015) rock legends are before the District of Massachusetts grappling, in part, over a familiar band’s legacy.
After guitarist Barry Goudreau left the band BOSTON in 1981, he filed a suit against Thomas Scholz—one of the band’s founders—as well as BOSTON’s other members, in order to ascertain the parties’ rights and obligations going forward.
On September 1, 2015, the U.S. Patent and Trademark Office (USPTO) launched a pilot program that allows some trademark owners the opportunity to amend their identifications of goods or services that would otherwise be beyond the scope of the current identification. The program allows owners to “catch-up” their trademark registrations with the “wheels of technology” so to speak. Did your company at one time obtain a trademark registration covering “printed newsletters” that are now offered as “downloadable online subscriptions?” Or perhaps your company had a registration for “phonograph records featuring music” that is now offered as “downloadable music files?”
The doctrine of “initial interest confusion,” scorned by many legal commentators and rejected by numerous courts, is alive and well in the Ninth Circuit, as evidenced by its recent usage by a watch manufacturer to overcome a summary judgment motion by online retailer Amazon. The initial interest confusion doctrine holds that a defendant can be deemed liable where a plaintiff can demonstrate that consumers are likely to be confused by a defendant’s conduct at the time of the consumers’ initial interest in a product or service, even if that initial confusion is corrected prior to an actual purchase. The doctrine is prevalent in so-called “keywords” cases in which one company pays the proprietor of an Internet search engine (e.g., Google) to prominently display the paying company’s website(s) in Internet searches conducted by consumers that include keywords such as a competitor’s company name or products. Alternatively, in the present case, the proprietor of the searchable website uses particular keywords associated with one company or product to drive consumer traffic to a similar product offering.
Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.