Geekview IP Weeks(ish) in Review

Posted by | January 23, 2012 | Disputes, Geekview IP recap, General | 3 Comments

About Lara

Lara Pearson is a trademark attorney with Exemplar, where she also serves as the firm's Sustainability Steward. Lara's legal practice focuses on trademark and copyright law, including: intellectual property audits; trademark search & clearance; trademark and copyright registration & maintenance; intellectual property transfers; transactional work; and dispute resolution, including litigation when necessary. Lara primarily represents other social enterprises -- those leveraging their businesses and brands as catalysts for positive social and environmental change. Such businesses engage in CSR (Corporate Social Responsibility) to have a positive "triple bottom line" of people, planet and profit. As Exemplar's Sustainability Steward, Lara works with others in her law firm to measure and reduce the firm's carbon emissions and encourage engagement in social responsibility initiatives, including pro bono legal work and volunteering. Lara is a proud member of the Social Venture Network. Brand Geek is a member of 1% for the Planet and a Certified B Corporation, whose Incline Village office is certified under the regional Keep the Sierra Green program. Exemplar Companies is the most innovative professional services firm in the New Economy. Our unique, diversified expertise spans the disciplines of corporate law, business advisory, and capital/investment banking to better meet the needs of our high-potential customers. We have assembled a comprehensive suite of service to meet the complex issues facing companies in today’s challenging business environment. Our unique, holistic approach ensures the growth and success – and greatly increases the competitive advantage - of our customers. The Exemplar team is comprised of knowledgeable, highly skilled experts in a wide range of industries and disciplines. They work closely with our customers to provide trusted advice, incomparable support, expert guidance and the ultimate competitive advantage as they accelerate their businesses and position themselves to transform industries.

3 Comments

  • Richie says:

    RE: Wolf Trap Foundation v. Barns of Rose Hill

    The Barns of Rose Hill has been here for over 100 years and commonly referred to as such. Tha barns, an old mansion & land was donated to the town in 1964. Wolf Trap was not founded until the 1970’s and their barns were not imported to their site until 1981. Clearly on their own social media sites not many people are familiar with The Barns at Wolf Trap. Personally, in my 15 years of being in Northern Va, I have yet to see an ad for them only for Wolf Trap. I have never seen and they have not produced ANY ads stating “The Barns” which is what their trademark application is for. The one posted in their application is not an ad. It is a single page brochure. There is no direct web site for them. BarnsofRoseHill.org has existed for years. Open public fundraising has been existing for 48 years. How is this so clear to you? To the rest of the world, it is crystal clear Wolf Trap cannot coin the commkon every day words “The Barns”. Their application has NOT been approved. Do a “google” search and you will see tons of places called “The Barns”.

    • Lara says:

      Thanks for reading and commenting on my post, Richie. Sorry for my delayed response, but I thought it more important to respond thoroughly rather than hastily.

      You state that The Barns of Rose Hill has been in existence for over 100 years. While that may be true of the physical structures, my understanding is that Rose Hill’s use of THE BARNS OF ROSE HILL brand for entertainment services is relatively recent and subsequent to use of THE BARNS AT WOLF TRAP for identical services (please correct me if I am wrong). Further, Wolf Trap Foundation owns an incontestable federal service mark registration for THE BARNS AT WOLF TRAP for entertainment services. Although Wolf Trap’s federal trademark registration application for THE BARNS remains pending, its rights in THE BARNS AT WOLF TRAP are prior or superior to those in THE BARNS AT ROSE HILL for identical services. THE BARNS is the dominant portion of the THE BARNS AT WOLF TRAP mark and the Wolf Trap Foundation had to prove that it acquired distinctiveness (aka brand recognition) in the geographically descriptive term WOLF TRAP through its longstanding use of that term.

      I easily found evidence of service mark use of THE BARNS AT WOLF TRAP on Wolf Trap’s website: THE BARNS AT WOLF TRAP may not be the most prominent mark on the Wolf Trap website, but use of the mark on the event calendar is sufficient to acquire service mark rights therein. Brand owners need not promote each mark via a separate ad or website (imagine how many websites big brand owners like Nike or Facebook would have to have, were that the case!); a single page brochure, or a website page (or even a portion thereof) is a sufficient basis on which to acquire service mark rights.

      If Barns at Rose Hill has existed for years, the Rose Hill organization may be able to assert the legal defense of acquiescence and/or estoppel, if it can prove that Wolf Trap knew about Rose Hill’s use of THE BARNS AT ROSE HILL for entertainment services for years and did nothing about it. However, if the THE BARNS AT ROSE HILL website and mark were used solely for fundraising services, then such use doesn’t help Rose Hill in the current dispute with Wolf Trap, since Wolf Trap’s complaint concerns use of THE BARNS AT ROSE HILL for entertainment services, not for fundraising services. Again, you have to keep in mind that trademark rights are relative to the specific goods and services on or in connection with which the mark is used. Hence the existence of The Barns at Rose Hill as physical structures and/or use of THE BARNS AT ROSE HILL for fundraising services is irrelevant to the entertainment services infringement analysis, only use of the THE BARNS OF ROSE HILL for entertainment services is relevant.

      The courts examine the following factors when determining whether infringement (consumer confusion) is likely:

      (1) Similarity of marks and overall commercial impression (sight, sound & meaning trilogy)

      (2) Relatedness of goods/services

      (3) Similarity of channels of trade

      (4) Impulse purchase v considered purchase

      (5) Fame of the prior mark

      (6) Number and nature of similar marks for similar goods/services

      (7) Nature and extent of any actual confusion.

      (8) Concurrent use without actual confusion

      (9) Variety of goods on which a mark is used

      (10) Market interaction between prior (1st) and junior trademark user

      (11) Extent of exclusive rights of prior user

      (12) Extent of potential confusion

      (13) Any other established probative fact

      When the first two factors favor one party, that is usually enough for that party to win. In this case, the dominant portion of the marks — THE BARNS — is identical, as are the services. I just don’t see how Rose Hill comes out ahead on these facts (unless it can prove Wolf Trap waited too long to assert its rights in relation to Rose Hill’s use of THE BARNS for entertainment services, which does not appear to be the case).

      I’m sure this isn’t what you want to hear, but I hope it helps you understand my opinion of the case.

      Please feel free to respond to this comment if you have additional questions or comments and thanks again for making the time to reach out to me.

    • Lara says:

      The case settled with The Barns at Rose Hill agreeing to:

      (1) Omit the word “The” from its name so it will be known as Barns at Rose Hill
      (2) No longer reference its service area as “Northern Virginia,” but instead refer to it as the “Shenandoah Valley.”
      (3) Refrain from Opposing Wolf Trap’s federal trademark registration application for THE BARNS for entertainment services.

      (2) and (3) make sense to me but (1) . . .

      I know I said that this seemed to be a case of lawyers getting in the way insofar as the approach taken to resolve the dispute, but where were the lawyers when Wolf Trap needed them to resolve the dispute?

      How do you get from:

      We’re concerned that people will mistakenly believe our organizations are related due to the similarity in our marks.

      to . . .

      Just drop the ‘The’ in your mark and everyone will be able to differentiate between us.

      THE BARNS AT WOLF TRAP / BARNS AT ROSE HILL

      Yup, that clears up everything!

      I presume the parties will include a provision to revisit the issue if either experiences consumer confusion, which still seems highly likely given the minor changes to Rose Hill’s mark. Although, perhaps as Richie says, no one knows about Wolf Trap’s BARNS mark, in which case no one should be confused. Except me.

      http://www.clarkedailynews.com/breaking-news-on-the-barns-of-rose-hill/28927

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