Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
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`ESTTA773927
`
`Filing date:
`
`09/30/2016
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
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`92059939
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
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`Filer's e-mail
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`Anytime Realty, LLC
`
`NATHAN P SUEDMEYER
`LARSON & LARSON PA
`11199 69TH ST N
`LARGO, FL 33773-5504
`UNITED STATES
`tmdocket@larsonpatentlaw.com
`
`Opposition/Response to Motion
`
`Nathan P. Suedmeyer
`
`tmdocket@larsonpatentlaw.com
`
`/Nathan P. Suedmeyer/
`
`09/30/2016
`
`Response to Petitioners Motion for Sum Jud - Anytime.pdf(165787 bytes )
`Exhibit A - Sangsuvan_final_v2.pdf(391497 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`
`
`
`
`
`
`
`
`
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`
`
`
`Cancellation No. 92059939
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`Mark: ANYTIME REALTY
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`Registration No. 4,180,871
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`Registration Date: July 24, 2012
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`
`
`
`
`
`
`
`
`
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`
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`ANYTIME REALTY, LLC,
`
`
`Petitioner,
`
`
`v.
`
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`ANYTIME REALTY, LLC,
`
`
`Registrant.
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`
`
`
`
`
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`COMBINED OPPOSITION TO PETITIONER’S CROSS-MOTION FOR SUMMARY
`JUDGMENT AND REPLY BRIEF IN SUPPORT OF REGISTRANT’S MOTION FOR
`SUMMARY JUDGMENT
`
`Registrant, Anytime Realty, LLC, pursuant to the Board’s order dated August 31, 2016,
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`submits this combined opposition to Petitioner’s cross-motion for summary judgment and reply
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`in support of summary judgment against Petitioner, Anytime Realty, LLC.
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`MEMORANDUM OF LAW
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`
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`The parties’ motions for summary judgment ask the Board to decide the same legal
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`issue—whether Respondent’s use of its ANYTIME REALTY mark for real estate services for
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`real property located solely in Florida constitutes use in commerce, as defined by the Trademark
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`Act. In its motion for summary judgment, Registrant presents its legal contentions and argues
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`that Registrant’s use constitutes use in commerce. Registrant respectfully requests that the Board
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`incorporate the legal authority and arguments Registrant asserts in its summary judgment motion
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`into this response, as if fully asserted herein. Incorporating Registrant’s legal authority and
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`argument alleviates the need for Registrant to re-hash the arguments in this opposition to
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`Petitioner’s motion.
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`

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`
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`Registrant explains below why Petitioner’s argument is misplaced and conflicts with
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`federal precedent holding that the real estate industry substantially affects interstate commerce.
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`Argument
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`Petitioner’s argument fails because it applies an incorrect legal framework and
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`misconstrues the legal issue. Each of Petitioner’s arguments is addressed in turn.
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`A. Petitioner applies the wrong legal framework.
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`Congress regulates local real estate activities because the industry has a substantial effect
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`on interstate commerce. Congress has the “power to regulate purely local activities . . . that have
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`a substantial effect on interstate commerce.”1 Petitioner erroneously contends that use in
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`commerce exists only if intrastate use directly affects a type of commerce that Congress may
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`regulate.2 The U.S. Supreme Court has departed from the distinction between “direct” and
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`“indirect” effects on interstate commerce, and in some cases, explicitly rejects the distinction.3
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`An overview of the evolution of the rule away from the “direct/indirect distinction” to the current
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`rule requiring a “substantial effect on interstate commerce” is instructive.
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`Federal precedent departs from the direct/indirect distinction. In 1935, the U.S. Supreme
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`Court characterized the distinction between direct and indirect effects of intrastate transactions
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`upon interstate commerce.4 The Court held that “[a]ctivities that affected interstate commerce
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`directly were within Congress’ power; activities that affected interstate commerce indirectly
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`were beyond Congress’ reach.”5 “Two years later, in the watershed case of NLRB v. Jones &
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`Laughlin Steel Corp., 301 U.S. 1, 57 S.Ct. 615, 81 L.Ed. 893 (1937), the Court . . . departed from
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`
`1 Gonzales v. Raich, 545 U.S. 1, 17 (2005).
`2 Petitioner’s Cross-Motion for Summary Judgment, p. 5, ¶ 1 (August 31, 2016) (citing Larry Harmon Pictures
`Corp. v. Williams Rest. Corp., 929 F.2d 662, 667 (Fed. Cir. 1991)).
`3 See generally U.S. v. Lopez, 514 U.S. 549, 558 (1995).
`4 U.S. v. Lopez, 514 U.S. 549, 555 (1995) (citing A.L.A. Schechter Poultry Corp. v. U.S., 295 U.S. 495, 550 (1935)).
`5 Id.
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`
`
`2
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`

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`the distinction between ‘direct’ and ‘indirect’ effects on interstate commerce.”6 “The Court held
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`that intrastate activities that ‘have such a close and substantial relation to interstate commerce
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`that their control is essential or appropriate to protect that commerce from burdens and
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`obstructions’ are within Congress’ power to regulate.”7 In 1942, the Court in Wickard v.
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`Filburn, explicitly rejected earlier distinctions between direct and indirect effects on interstate
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`commerce, stating:
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`[E]ven if appellee’s activity be local and though it may not be regarded as
`commerce, it may still, whatever its nature, be reached by Congress if it exerts a
`substantial economic effect on interstate commerce, and this irrespective of
`whether such effect is what might at some earlier time have been defined as
`“direct” or “indirect.”8
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`
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`By departing from the direct/indirect distinction, the Court “ushered in an era of
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`Commerce Clause jurisprudence that greatly expanded the previously defined authority of
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`Congress under that Clause.”9 “[T]he doctrinal change . . . reflected a view that earlier
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`Commerce Clause cases artificially had constrained the authority of Congress to regulate
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`interstate commerce.”10 Today, the Court “identifie[s] three broad categories of activity that
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`Congress may regulate under its commerce power.”11 The categories Congress may regulate are:
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`1. “the use of the channels of interstate commerce[;]”12
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`2. “the instrumentalities of interstate commerce, or persons or things in interstate
`commerce . . . [;]”13 and
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`3. “those activities that substantially affect interstate commerce.”14
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`
`
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`6 Id. (citing NLRB v. Jones & Laughlin Steel Corp., 301 U.S. 1 (1937)).
`7 Id. (quoting NLRB v. Jones & Laughlin Steel Corp., 301 U.S. 1, 37 (1937)).
`8 Id. at 556. (quoting Wickard v. Filburn, 317 U.S. 111, 125 (1942)).
`9 Id.
`10 Id.
`11 Id. at 558.
`12 Id.
`13 Id.
`14 Id. at 559.
`
`
`
`3
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`

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`
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`Here, Petitioner artificially constrains “use in commerce” within the meaning of the
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`Trademark Act by relying on the Court’s earlier, and now revised, distinction between direct and
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`indirect effects on interstate commerce. The correct rule to apply is one determining whether
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`local real estate substantially affects interstate commerce. This rule affords Registrant the
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`expanded authority of Congress’ commerce power recognized by the Court. By applying the
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`wrong rule to its argument, Petitioner’s analysis is flawed. This is because Petitioner’s argument
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`is grounded neither in proper authority nor scope. Registrant stands on its argument and the
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`authority of the Fifth Circuit in Groome.15 Groome holds that real estate transactions implicate
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`an entire commercial industry involving capital outlay, financing and mortgage arrangements,
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`profit, debt and investment considerations; all of which have a substantial effect on interstate
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`commerce.16 Because Petitioner applies the wrong rule, Petitioner’s motion should be denied,
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`and summary judgment should be granted in favor of Registrant.
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`B. Petitioner misconstrues the issue as one of first use or priority.
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`Petitioner misconstrues the dispositive issue as one of first use or priority instead of
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`whether real estate substantially affects interstate commerce. As explained above, use in
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`commerce exists for purely local activities that substantially affect interstate commerce.17 It is
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`undisputed that Registrant provides real estate services for real property located solely in
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`Florida.18 It is also undisputed that Registrant renders real estate services to buyers, tenants, and
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`property owners residing in states other than Florida despite the fact that the real property is
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`located solely in Florida.19 These undisputed facts are sufficient under the legal precedent cited
`
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`15 See Registrant’s Motion for Summary Judgment, p. 5, ¶ 1 (March 7, 2016) (citing Groome Resources Ltd., L.L.C.
`v. Par. of Jefferson, 234 F.3d 192, 206 (5th Cir. 2000)).
`16 Id.
`17 Gonzales v. Raich, 545 U.S. 1, 17 (2005).
`18 Petitioner’s Cross-Motion for Summary Judgment, Exhibit 7, pp. 63 – 67 (attaching Registrant’s Responses to
`Petitioner’s Requests for Admissions to Registrant, requests 1 – 4, 9 – 12, 19, 21 (March 7, 2016)).
`19 Registrant’s Motion for Summary Judgment, p. 6, ¶ 4 (March 7, 2016).
`4
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`

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`herein for the Board to hold that Registrant’s real estate services substantially affect interstate
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`commerce. The location of the real property is not dispositive of the commercial issue because
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`location alone fails to consider real estate services’ substantial effect on interstate commerce.
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`Real estate services are use in commerce.
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`Petitioner’s argument is focused on first use or priority rather than use in commerce. In
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`this case the Board previously stated that:
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`Petitioner has not asserted claims of likelihood of confusion or abandonment as
`grounds for cancellation. Accordingly, information regarding Respondent’s first
`use of its mark, whether Respondent has prior use of its mark, or whether
`Respondent has continued use of its mark is not essential to Petitioner’s claim that
`Respondent’s use of its ANYTIME REALTY mark for real estate services for real
`property only located in Florida does not constitute use in commerce, as defined
`by the Trademark Act.20
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`
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`Petitioner argues that “Registrant does not provide any evidence that the mark was in use
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`in commerce in November 2010.”21 As noted by the Board, Registrant’s use of the ANYTIME
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`REALTY mark in connection with commercial and residential real estate agency services is not
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`at issue in this case. First use is not relevant because Petitioner failed to plead the issue in its
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`Amended Petition for Cancellation.22 Notwithstanding the Board already ruling on this issue,
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`Petitioner continues to argue the sufficiency of Registrant’s evidence concerning first use.
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`Petitioner’s first use arguments are unavailing because Petitioner’s pleading is silent on these
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`issues. For this reason, Registrant stands on its arguments that its real estate services
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`substantially affect interstate commerce. Summary judgment should be granted in favor of
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`Registrant.
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`20 Board Order denying Petitioner’s Motion for Rule 56(d) Discovery, p. 5, n. 2 (July 31, 2016).
`21 Petitioner’s Cross-Motion for Summary Judgment, p. 6, ¶ 2 (August 31, 2016).
`22 See Petitioner’s Amended Petition for Cancellation ¶¶ 5 – 9 (December 19, 2014).
`5
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`C. Petitioner’s “inherently local” argument is unsupported by legal authority.
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`Petitioner fails to distinguish Registrant’s real estate services from cases involving
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`intrastate use of a registrable trademark. Real estate transactions implicate an entire commercial
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`industry involving capital outlay, financing and mortgage arrangements, profit, debt and
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`investment considerations, all of which have a substantial effect on interstate commerce.23
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`Petitioner argues that real estate transactions are inherently local transactions without citing any
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`legal authority in support. Petitioner fails to cite any authority establishing an “inherently local”
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`standard as the test for use in commerce. Registrant’s real estate services under its mark
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`substantially affect interstate commerce because the sale of real property involves capital outlay,
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`financing and mortgage arrangements, profit, debt and investment considerations. Thus,
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`Registrant uses its mark in commerce.
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`D. The attempt to distinguish based on Equal Protection grounds is misplaced.
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`Petitioner’s attempt to distinguish Registrant’s use from the holdings involving
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`application of the Fair Housing Act is misplaced. “Congress may regulate an entire class of
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`activities which affect interstate commerce . . . .”24 Petitioner asserts that the primary basis for
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`Congress’ power to regulate housing is “ending and preventing discrimination.”25 Petitioner’s
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`logic is flawed because Petitioner reverses the cause and the effect of equal protection cases
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`when analyzing the Fair Housing Act. Federal laws affording equal protection in housing result
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`from Congress’ power to regulate housing, not the other way around.26 Likewise, a federal
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`statute penalizing arson applies to an apartment building used as a rental property because of
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`23 Groome Resources Ltd., L.L.C. v. Par. of Jefferson, 234 F.3d 192, 206 (5th Cir. 2000).
`24 Morgan v. Sec. of Hous. and Urb. Dev., 985 F.2d 1451, 1456 (10th Cir. 1993).
`25 Petitioner’s Cross-Motion for Summary Judgment, p. 9, ¶ 1 (August 31, 2016).
`26 See Groome Resources Ltd., L.L.C. v. Par. of Jefferson, 234 F.3d 192 (5th Cir. 2000).
`6
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`

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`Congress’ power to regulate the class of activities that affect interstate commerce.27
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`Additionally, the Sherman Act extends to a price-fixing agreement among real estate brokers
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`because real estate brokerage activities have an effect on interstate commerce.28 Thus, the reason
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`the federal government can lawfully prevent discrimination in real estate is because Congress has
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`the power to regulate real estate, not the other way around.
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`A case-specific analysis of Registrant’s real estate services is not required. The Tenth
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`Circuit held that the Fair Housing Act applies to a discriminatory housing practice barring new
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`tenants with children from living in a mobile home park because housing affects interstate
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`commerce.29 “Neither Congress nor the Secretary was required to show ‘that these mobile home
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`space rentals in any way affect interstate commerce,’ . . . because Congress may regulate an
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`entire class of activities which affect interstate commerce, a case-by-case analysis is not
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`required.”30
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`Petitioner asserts that “real estate is not inherently interstate commerce but instead such
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`an analysis must be fact specific.”31 Petitioner further states that “[u]se of a mark in commerce
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`must be determined by an analysis of the actual scope of the activity conducted by the
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`Registrant.”32 As mentioned above, “inherently interstate commerce” is not the rule. Petitioner
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`cites no legal authority for either of its rules requiring a case-specific analysis. Petitioner’s
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`contention conflicts with the Tenth Circuit’s holding that Congress may regulate real estate
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`services, without engaging in a case-by-case analysis. A case-specific analysis of Registrant’s
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`27 See Russell v. U.S., 471 U.S. 858, 862 (1985) (citing 18 U.S.C. § 844(i)).
`28 See McLain v. Real Est. Bd. of New Orleans, Inc., 444 U.S. 232, 246 (1980)
`29 Morgan v. Sec. of Hous. and Urb. Dev., 985 F.2d 1451, 1456 (10th Cir. 1993)
`30 Id.
`31 Petitioner’s Cross-Motion for Summary Judgment, p. 8, ¶ 2 (August 31, 2016).
`32 Id.
`
`
`
`7
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`

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`real estate services is not required because Congress may regulate real estate services.
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`Therefore, Registrant’s motion for summary judgment should be granted.
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`E. Petitioner’s policy argument concerning trademark squatting fails.
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`Petitioner’s policy argument concerning trademark squatting fails because Registrant
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`uses the ANYTIME REALTY mark in connection with real estate services. “Generally,
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`trademark squatting is an act of registering other people’s marks as their own by squatters in
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`other countries in order to gain benefits from original marks or real trademark owners.”33 Even
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`extrapolating this definition of trademark squatting to domestic squatters is misplaced because
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`Registrant’s use of the ANYTIME REALTY mark in connection with real estate services is not
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`at issue. Again, Petitioner misconstrues the issue as one of first use or priority instead of use in
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`commerce. Furthermore, holding that real estate services substantially affect interstate
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`commerce is consistent with federal precedent concerning Congress’ commerce power. Such a
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`ruling does not open up the floodgates to trademark squatters because Congress has been
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`regulating real estate services for decades. Therefore, Petitioner’s policy argument fails, and
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`Registrant’s summary judgment motion should be granted.
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`Conclusion
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`The Board should grant summary judgment in favor of Registrant and deny Petitioner’s
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`cross-motion for summary judgment because real estate services substantially affect interstate
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`commerce. Because Congress regulates real estate services, Respondent’s use of its ANYTIME
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`REALTY mark for real estate services for real property located solely in Florida constitutes use
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`in commerce, as defined by the Trademark Act.
`
`
`
`
`33 Kitsuron Sangsuvan, Trademark Squatting, 31 Wis. Int’l L.J. 252, 252 (Summer 2013); Exhibit A, p.1 (providing
`courtesy copy of the secondary source for the sole purpose of defining the term “trademark squatting”).
`8
`
`
`
`

`
`
`s/Nathan P. Suedmeyer
`Nathan P. Suedmeyer, Esq.
`Florida Bar No. 70787
`nathan@larsonpatentlaw.com
`
`LARSON & LARSON, P.A.
`11199 69th Street North
`Largo, FL 33773
`(727) 546-0660 tele
`Counsel for Registrant
`
`CERTIFICATE OF SERVICE
`
`
`
`
`
` I
`
`
`
` hereby certify that on September 30, 2016, a true and correct copy of this document was
`filed with the TTAB via electronic filing and served via electronic mail to Petitioner, Anytime
`Realty, LLC, 18 Oakridge Road, Scituate, Rhode Island 02847, through its attorney Mark E.
`
`Tetreault, met@barjos.com and Joshua A. Stockwell, jas@barjos.com, Barlow Josephs &
`
`Holmes Ltd., 101 Dyer Street 5th Floor, Providence, RI 02903, counsel of record for Petitioner,
`pursuant to the parties’ agreement to accept electronic service.
`
`
`s/Nathan P. Suedmeyer
`Nathan P. Suedmeyer, Esq.
`
`
`
`
`
`9
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`

`
`EXHIBIT A
`EXHIBIT A
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`
`
`

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`SANGSUVAN_FINAL (DO NOT DELETE)
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`
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`
`
`TRADEMARK SQUATTING
`
`KITSURON SANGSUVAN
`
`*
`
`ABSTRACT
`
`
`Trademark squatting is a nightmare for brand owners and global
`business entities today. It is also increasing in many countries around the
`world. Generally, trademark squatting is an act of registering other
`people’s marks as their own by squatters in other countries in order to
`gain benefits from original marks or real trademark owners. Many brand
`owners or business entities have recently confronted this problem while
`there is no particular resolution. For example, Apple Inc. was in its
`dispute over the iPad name with the Proview in China. The iPad dispute
`was ended when Apple
`Inc.
`transferred 60 million
`to
`the
`Proview. Therefore, this Article describes the aspects of trademark
`squatting and how the principle of territory results in trademark
`squatting. The Article also addresses how to protect original marks from
`trademark squatting and how to regain trademark rights from trademark
`squatters. Finally, the Article proposes using WIPO Arbitration to
`resolve trademark squatting cases rather than domestic litigation.
`
`Introduction ........................................................................................... 253
`I. Trademark Squatting .......................................................................... 258
`A. An Appearance of Trademark Squatting ............................... 258
`B. The Principle of Territoriality and Trademark Squatting ...... 260
`C. Acquisition of Trademark Ownership: First-to-Use &
`First-to-File ......................................................................... 261
`D. Trademark Squatting as Trademark Infringement ................. 264
`E. Extraterritorial Jurisdiction in Trademark Squatting ............. 267
`
`
`
`* Kitsuron Sangsuvan received his LL.B. from Ramkhamhaeng University, Bangkok, Thailand. He
`also obtained his first LL.M Degree in Global Legal Studies and his second LL.M. Degree in
`Intellectual Property from the John Marshall Law School, Chicago. He wishes to thank Mr.
`Clifford W. Browning, an Adjunct Professor of Trademark Law at the Indiana University Robert
`H. McKinney School of Law in Indianapolis, who taught him trademark law. He also wishes to
`thank Professor Michael P. Seng at the John Marshall Law School for advice.
`
`

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`Vol. 31, No. 2
`
`Trademark Squatting
`
`253
`
`II. Protecting Original Marks from Trademark Squatting through
`Registration .................................................................................... 271
`A. Convention Priority ............................................................... 271
`B. International Trademark Registration .................................... 273
`1. A General Rule ................................................................ 275
`2. International Registration in the United States ............... 276
`III. Cancellation and Opposition Grounds for Trademark Squatting .... 279
`A. Well-Known Marks ............................................................... 281
`1. Protection for Well-Known Marks .................................. 281
`2. How Is A Mark Shown to Be Well-Known? .................. 282
`3. A Guideline for Proving Well-Known Marks ................. 284
`B. Bad Faith ................................................................................ 286
`1. Defining “Bad Faith” in a Trademark Application or
`Registration ................................................................... 287
`2. A Guideline for Finding A Bad Faith Application or
`Registration ................................................................... 288
`C. Non-Use Ground .................................................................... 290
`IV. WIPO Arbitration ............................................................................ 291
`Conclusion............................................................................................. 294
`
`
`INTRODUCTION
`
`“A global economy establishes an integrated market for all
`goods or services which are produced across the world.”1 Many firms
`thus enter foreign markets to increase sales and profits because they see
`international markets.2 Worldwide
`enormous growth potential
`in
`branding has become an increasingly important marketing tool as
`companies seek to provide their goods and services to a public that is less
`restricted by international borders.3 As the Internet becomes a common
`form of global communications4, trademarks have an important role in
`
`
`
` 1
`
` 2
` 3
`
` 4
`
`2010), available
`30,
`(June
` Define Global Economy, ECONOMY WATCH
`http://www.economywatch.com/world_economy/world-economic-indicators/global-
`economy/define-global-economy.html.
` KATE GILLESPIE & H. DAVID HENNESSEY, GLOBAL MARKETING 5 (3d ed. 2010)
` Stephanie Chong, Protection of Famous Trademarks Against Use For Unrelated Goods and
`Services: A Comparative Analysis of The Law In the United States, The United Kingdom, and
`Canada and Recommendations For Canadian Law Reform, 95 TRADEMARK REP. 642, 642
`(2005).
` Thomas L. McPhail, Global Communication: Theories, Stakeholders, and Trends, 124 (3d ed.
`2010)
`
`at
`
`

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`254
`
`Wisconsin International Law Journal
`
`global business.5 Basically, a trademark is a distinctive sign used to
`differentiate between identical or similar goods and services offered by
`different producers or services providers.6 A trademark is also a valuable
`asset, part of the “goodwill” of the business.7
`Since trademarks attach to virtually every good and service
`traded, the globalization of trade
`leads
`to
`the globalization of
`trademarks.8 Many firms have therefore developed their global brands in
`global markets.9 However, there has been an increase in international
`trademark infringement or trademark counterfeiting behind the growth of
`the global markets.10 Foreign infringers seek the opportunity to profit
`from the goodwill of other major marks, while trademark owners have
`tried to protect their marks on the international level.11
`As a result of this trademark squatting has emerged in the past
`decade. Similar to brand piracy, trademark squatting is based on a
`circumstance in which identical trademarks are registered in different
`countries by different people. Many firms seeking to do business in other
`countries have found that their trademarks have already been registered
`by local businesses or squatters who will release the marks only if they
`receive a payment from the real owners.12 Companies may have to buy
`their own brand rights from a squatter in another country because the
`squatter first register the mark in his country.13 This problem has been
`increasing in many countries around the world and is disrupting the
`growth of global business. Even major brand owners are at risk from
`
`
` 5
` 6
`
` 7
`
` 8
`
` 9
`
` Les R. Dlabay, Jim Scott & James C. Scott, International Business, 191 (2010)
` Trademarks
`Gateway, WORLD
`INTELLECTUAL
`PROPERTY
`ORGANIZATION,
`http://www.wipo.int/trademarks/en/ (last visited Oct. 26, 2012).
` RUSSELL L. PARR & GORDON V. SMITH,
`INTELLECTUAL PROPERTY: VALUATION,
`EXPLOITATION, AND INFRINGEMENT DAMAGES 37 (2005).
` Thies Bosling, Securing Trademark Protection in Global Economy-The United States’
`Accession to The Madrid Protocol, 12 U. BALT. INTELL. PROP. L.J. 137, 138 (2004).
` ADRIAN DAVIES, THE GLOBALIZATION OF CORPORATE GOVERNANCE: THE CHALLENGE OF
`CLASHING CULTURES 79 (2011).
` 10 Miriam Bitton, Rethinking The Anti-Counterfeiting Trade Agreement’s Criminal Copyright
`Enforcement Measures, 102 J. CRIM. L. & CRIMINOLOGY 67, 68 (2012) (“Counterfeiting today is
`a $600 billion industry worldwide and accounts for 5%-7% of global trade. It is estimated that in
`the United States alone, counterfeiting accounts for over $200 billion annually. In the last two
`decades, counterfeiting has increased by more than 10,000%.”).
` 11 Bosling, supra note 7, at 137; Scott A. McKenzie, Comment, Global Protection of Trademark
`Intellectual Property Rights: A Comparison of Infringement and Remedies Available in China
`Versus the European Union, 34 GONZ. L. REV. 529, 530–531 (suggesting that business entities
`and individuals have a legitimate interest in protecting their trademark abroad.).
` 12 Steven Seidenberg, Trademark Squatting on the Rise in U.S., INSIDE COUNSEL (May 1, 2010)
`http://www.insidecounsel.com/2010/05/01/trademark-squatting-on-the-rise-in-us?page=2.
` 13 WILLIAM M. PRIDE & O.C. FERRELL, MARKETING 407 (2012).
`
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`Trademark Squatting
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`trademark squatting.14 Russia and China are two prime example of
`countries in which trademark squatting has taken place.15
`In 1997, the Starbucks Corporation, from Seattle, Washington,
`registered its trademark “Starbucks” in Russia.16 The mark was not used
`in Russia in association with the operation of coffee shops, but somehow
`Starbucks brand coffee was being sold in a small café in Moscow.17 In
`2002, Sergey Zuikov, a lawyer and trademark squatter in Russia, filed to
`cancel the chain’s trademark because it had not been used in commerce,
`and he then registered it in the name of a Moscow company that he
`represented, Starbucks LLC.18 After Starbucks LLC obtained a
`registration for the trademark Starbucks in Russia, the company began to
`offer Starbucks franchises and announced plans to set up a chain of
`Starbucks coffee shops throughout Russia.19 It also approached the
`Starbucks Corporation with an offer to sell the registered trademark
`rights for approximately $600,000.20 Starbucks Corporation refused to
`pay the squatter, but brought an action to cancel the Starbucks trademark
`registration.21 The Federal Service for Intellectual Property or Rospatent
`which controls and supervises the legal protection and exploitation of
`intellectual property rights in Russia ruled in favor of the Starbucks
`Corporation and the “pirated” registration was cancelled.22 Zuikov
`
`
`
` 14 Seidenberg, supra note 11.
` 15 NATIONTAL TRADE ESTIMATE REP. ON FOREIGN TRADE BARRIERS 315 (25th ed. 2011) (U.S.
`firms complained about “trademark squatting” by Russian enterprises attempting to appropriate
`well-known trademarks not active or registered in Russia. Right holders have countered
`“trademark squatting” scheme though the Russian court system or the Russian Federal Service
`for Intellectual Property, Patents, and Trademark (Rospatent); U.S. INT’L TRADE COMM’N,
`USITC NO. 4226, CHINA: EFFECTS OF INTELLECTUAL PROPERTY INFRINGEMENT AND
`INDIGENOUS INNOVATION POLICIES ON THE U.S. ECONOMY, box 3.4 at 3-33 (May 2011)
`(showing industry comments and concerns about trademark infringement in China, including
`Trademark Squatting.).
` 16 Susan J. Keri, Starbucks Trademark Victory in Russia, INTA BULL. (Int’l Trademark Ass’n.,
`New
`York,
`N.Y.),
`Mar.
`15,
`2006,
`at
`5,
`available
`at
`http://www.inta.org/INTABulletin/Documents/INTABulletinVol61No06.pdf.
` 17 Id.
` 18 Id.
` 19 Id.
` 20 Id.
` 21 Id.
` 22 Id. (cancelling registration on the grounds that: “(1) it was likely to cause confusion as to the
`manufacturer of the goods, contrary to Article 6(2)(1) of the Russian Trademark Law No. 3520-1
`(Trademark Law); (2) it was confusingly similar to the primary component of the Starbucks
`corporate name, the rights to which had arisen prior to the “pirated” mark’s registration date,
`contrary to Trademark Law Article 7(2)(1); and (3) it reproduced the STARBUCKS logo, in
`violation of Starbucks Corporation’s copyright.”)
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`appealed and obtained an injunction preventing the cancellation of the
`registration pending the appeal’s outcome.23 However, the Arbitration
`Court, which deals with intellectual property disputes more effectively
`than Russian courts,24 upheld the Rospatent decision, and the pirated
`Starbucks registration was cancelled.25 Eventually,
`the Starbucks
`Corporation obtained registrations for its Starbucks trademarks in Russia
`and provided the Russian market with its coffee houses and branded
`coffee products.26
`Similarly, Apple Inc. owns a trademark on the term “iPad,”27 but
`was unable to use it in China. The Chinese company Proview
`Technology (“Proview China”) had used the iPad trademark in 1988 and
`first registered it in China in 2001, years before Apple Inc. introduced its
`iPad.28 Apple Inc. entered into an agreement to purchase the iPad
`trademark in a number of countries, including China, from a Taiwanese
`company, Proview Electronics Co. Ltd (“Proview Taiwan”).29 However,
`Proview China argued that it was the real owner of the iPad trademark in
`China and that its subsidiary, Proview Taiwan, had sold the iPad
`trademark to Apple Inc. in a global trademark agreement that excluded
`China.30 Apple Inc. and Proview China battled in both Chinese and U.S.
`Courts. Proview China claimed that it owned the iPad trademark and had
`the authority to prohibit retail sales of Apple’s iPad in China.31 Apple
`Inc., on the other hand, claimed that it had actually wanted to contract
`with the correct party, Proview China, but Proview China had insisted on
`selling the trademark through its Proview Taiwan affiliate to avoid
`having to pay its creditors.32 Apple Inc. offered to pay Proview China
`$16 million for the rights to the iPad name in China, but Proview China
`
`
`
` 23 Id.
` 24 The Russian judicial system is notorious for exhausting litigation. Intellectual property disputes
`have been settled in Russian arbitration courts. Russian arbitration courts are standing
`institutions governed by the rules of arbitration procedure set forth in the Code of Arbitration
`Procedure of the Russian Federation.
` 25 Id.