In my previous post, I discussed the Patriot’s trademark application filing for “19-0 The Perfect Season,” and the New York Post’s retaliatory, and possibly clairvoyant, “18-1” trademark application. I was interviewed by New York Post reporter, Charles Bennet, regarding the trademark issues surrounding the now more relevant “18-1” trademark and was quoted in his newspaper article. Click HERE to read the NY Post article.
Palantir.net began using the “palantir” trademark in 1996 for providing website design and development services nationally and registered the domain name in 1997. Palantir.net also filed a trademark application in 2002 with the USPTO, which registration issued in 2006. In early 2007, Palantir.net discovered Palantir Technologies, Inc. (“PTI”) was using the “palantir” trademark for designing database software for others and hiring interaction designers and software engineers, similar to Palantir.net. Palantir.net also learned that PTI was using the “palantir” trademark for Google’s AdWords service to pay for sponsored search results for the word “palantir” on Google.
Palantir.net moved for a preliminary injunction to stop PTI’s use of the trademark “palantir” in advertising its services. The California Northern District Court granted the preliminary injunction and found that: “Palantir.net has easily proven the existence of serious questions going to the merits; indeed, the Court finds that it has also demonstrated a probable success on the merits given (1) the virtual identity of the marks, (2) the strength of the mark, (3) the relatedness of the goods, and (4) both parties’ use of the Internet.”
The Court also found that the balance of hardships also tips sharply in Palantir.net’s favor because of PTI’s recklessness in adopting the “palantir” trademark without first searching for any similar trademarks, Palantir.net’s long-time use of the mark, and the importance of the trademark to word-of-mouth referrals. The Court ordered that PTI not use “palantir” in any Google ads and to place prominent disclaimers on its website disclaiming any affiliation with Palantir.net and advising visitors how to access Palantir.net. Click To Read Order.
Patents, trademarks and copyrights and counterfeiting will be at the forefront at the WIPO’s Fourth Global Congress on Combating Counterfeiting and Piracy that meets in Dubai from February 3-5, 2008. The meeting is to focus on the following key themes:
- Health and Safety Risks Counterfeit Products Pose to Consumers;
- Raising Awareness of the Full Economic and Social Costs of Counterfeiting and Piracy;
The New England Patriots are apparently so confident that they will win the Super Bowl and finish the season with a perfect 19 and 0 record, that on January 17, 2008, they filed trademark applications with the United States Patent and Trademark Office to protect the “19-0 The Perfect Season” and “19-0” trademarks on numerous goods and services. Click To See The Applications. Not to be outdone and to show support for the New York Giants, the New York Post newspaper has reportedly filed a trademark application for “18-1.”
The Patriots, however, may be dismayed to learn that they were beaten to the punch. William Harpole – who was apparently more confident than the Patriots – filed a trademark application for “19-0 The Perfect Season” over two months earlier. Click To See Harpole’s Application. Nine years earlier, Mr. Harpole – a possible clairvoyant – had also filed a trademark application for “The Perfect Season 19-0” on December 7, 1998. But the 1998 application was later unwisely abandoned, thereby drawing the previous “possible clairvoyant” accolade into question.
Because Mr. Harpole’s current trademark application filing date precedes the Patriot’s application by over two months, Mr. Harpole’s application is superior to that of the Patriot’s and a trademark dispute and possible litigation may follow. See 37 C.F.R. § 2.83.