Tag: Intellectual Property

New York State Senators Joseph A. Griffo (R) and Martin J. Golden (R) introduced a bill empowering courts to order seized counterfeit products to be donated to a not-for-profit corporation rather than destroyed.  The bill passed in the New York State Legislature in June.

If the court determines that the counterfeit products should be donated, then notice must be given to the lawful mark owner of the counterfeit products. The trademark owner has 30 days to object, in writing, to the donation.  Failure to respond within that time frame constitutes consent to having the products donated.

The bill states that counterfeit products may only be donated to a “not-for-profit corporation that has an established history of providing goods and services to indigent individuals.”  The judge determines if an organization qualifies to receive counterfeit products.

The selected organization must have the products’ tags removed or have the products “marked, altered, imprinted, or indelibly stamped so as to prevent their resale or any confusion with the actual products of the lawful mark owner.”  The organization may not sell the counterfeit products.  Similarly, any person or organization in possession of these counterfeit products may not sell these products.  The only type of counterfeit product that currently qualifies for donation is clothing.

On October 7, 2014, My Retirement Account Services, LLC sued the United States Treasury Department for trademark infringement.

My Retirement Account Services, LLC, located in Murray, KY, is the owner of the federally registered trademark GETMYRA.COM, for individual retirement account services. The plaintiff claims to have used the common law mark MYRA to identify and distinguish its services since at least as early as 2009. They have also applied to register it with the United States Patent and Trademark Office. On January 28, 2014, President Obama gave his State of Union Address, during which he announced his plan to create a new retirement savings program to be called “myRA.” After the State of the Union Address, the plaintiff alleges that it saw a substantial increase in visitors. The Complaint states that, “At 8:00 p.m. on January 28, 2014, the site experienced a 1400% increase in sessions, as compared to the hour before.” The site continued to receive a significant number of visitors following the speech.

Notably, on January 30, 2014, the United States Department of Treasury filed an application to register “myRA” for retirement savings program services. The United States Patent and Trademark Office rejected the application and cited the GETMYRA.COM registration as confusingly similar to the “myRA” mark.

In the Complaint, the plaintiff claims that the “myRA” mark is confusingly similar to its own marks. The plaintiff claims that this is reverse confusion. Specifically, the plaintiff is concerned that consumers are likely to believe that the plaintiff is the infringer and thus, it has suffered damage to its reputation and goodwill.