Category Archives: Konrad Gatien

SAM Alert – “.sucks” gTLD – End of Sunrise Period Quickly Approaching

.sucksAs the Internet Corporation for Assigned Names and Numbers (ICANN) has released new generic top-level domains (gTLDS), clients concerned about protecting their trademarks and famous names need to review their positions with respect to “defensive” domain name registrations.  The new gTLD receiving a surprising amount of attention is “.sucks”. Owners of registered trademarks who register prior to June 19, 2015 ( end of ‘Sunrise Period) with the Trademark Clearing House of ICANN will have the first opportunity to purchase the “.sucks” gTLD domain names. Those trademark owners who do not register or are not registered may still have an opportunity to acquire this gTLD . Unfortunately they may also face having to buy the “.sucks” gTLD from cybersquatters or those who seek to criticize the business or activities of the trademark owner.

The Trademark Clearing House fee to acquire the “.sucks” domain name during the Sunrise Period is higher than after the window closes as no priority is guaranteed. So the rights holder must consider how far it needs to go in defensively protecting its reputation or famous marks. Is it important to stop all gTLD’s using your trademark or name? Do you want to have to manage a portfolio of non-productive domain names? While critics of a company or individual might use the new “.sucks” gTLD to launch a website that contains criticism, how much of a difference would such a website make to the business or career of the target?  Couldn’t the same critics more easily use social media such as TWITTER or FACEBOOK to communicate the same criticism and possibly with greater impact and less effort?  A rights holder must also consider how difficult it will be under the current law to be able to stop such websites based on trademark infringement as such websites have been found not to violate owners’ trademark rights. Although the content of the site may be the basis for other legal claims.

Nevertheless, there are certain businesses and personalities for whom the existence of a critical or seemingly defamatory web presence cannot be tolerated. In such instances, obtaining the “.sucks” gTLD as well as “.XXX, .porn, and .adult” gTLD’s makes sense and provides a comfort level knowing that someone cannot post on these websites or hold up the rightful name owner for large sums of  money to acquire these gTLD’s.

Please contact your principal attorney at SAM or SAM’s Intellectual Property Group to assist you in obtaining any of the new gTLD’s during the sunrise period or thereafter.


Please contact:

Tony or (310) 746-9802

Konrad or (310) 746-9810

Kevin or (818) -444-4521



Earlier this month, Brand Development & Content Protection co-chairs Tony Keats and Konrad Gatien attended the annual meetings of the International AntiCounterfeiting Coalition and the International Trademark Association in Hong Kong.  In addition, Tony Keats traveled to Shanghai, Xi’an and Beijing.  During their trip to China, they witnessed several issues that blatantly affect brand protection efforts of high-fashion design and consumer product companies.


Tony Keats  reports on visiting Beijing’s notorious Silk Market Building  with some 1,700 vendors, over 3,000 salespeople, 10 sales floors, and located on seven floors  at Yonganli, in the Chaoyang District. Here, the sales personnel openly flaunt the availability of enormous volumes of counterfeit apparel and luxury goods.  In the prior decade, famous brand owners from Burberry, Louis Vuitton, Chanel  and Gucci, to The North Face and LaCoste had achieved ground-breaking legal successes  obtaining relief against the owner/landlord of Beijing’s Silk Market complex, including obtaining injunctive relief, signage requirements, and even small amounts of damages. However, less than a decade later, this litigation has had little impact as Tony Keats was shown back-rooms of various stores with floor to ceiling inventories of counterfeit luxury products. On the first floor, vendors selling unlicensed apparel were not even hiding the merchandise in backrooms but were openly displaying enormous quantities without any effort to cover up their sales. Tony also reports that dozens of tour buses unloaded anxious buyers at the Silk Market while he was at the market. It is reported that there are approximately 20,000 visitors on the weekdays and between 50,000 to 60,000 shoppers on weekends.







It has been suggested that as China develops more of its own famous brands which are counterfeited, that the IP community will see greater enforcement efforts by the authorities in that country.  For example, on May 14, the state paper The China Daily reported that customs officials in  Jiangmen City in  Guangdong Province recently seized nearly 3 million fake batteries with a value of US $90,000. The counterfeits, which were to be shipped to Dubai, have a graphic logo very similar to that of SUNWATT, a famous brand owned by Chinese manufacturer, Guangxi company.

SAM’s Brand Development and Content Protection group was able to assist client Stanley Black & Decker in shutting down a counterfeit battery manufacturer in Fushon City, which was producing counterfeit DeWalt brand batteries used with the companies power tools.


On May 1, 2014, revisions of the trademark law went into effect. One provision prohibits the use of “well-known trademarks” in advertising and on packaging. The state paper The China Daily reported that the new law was causing a number of companies to change their labels and even destroy products. One Chinese company, Jing Wu Agribusiness Group, a company specializing in food and feed processing, which won the title of most well-known trademark in China in January 2013, has now recalled and destroyed nearly 2 million packages at a cost of approximately US $500,000.


The state China Intellectual Property News proclaimed that agencies nationwide investigated more than 4,700 intellectual property infringements in the first quarter of 2014 that had a combined potential retail value of US $43.25 million. Enforcement officials claimed to have checked a wide range of sectors including garments, electric appliances, toys, shoes and furniture. They claim in March alone, 183 shipments of food and six shipments of cosmetics were proven counterfeit, then destroyed or returned to exporters. These efforts are at best a step in the right direction but a paltry amount in light of the size of the Chinese counterfeiting problem.

It was reported by The China Daily on May 21st, that a district court in Beijing handed jail and monetary penalties against seven men convicted of illegally offering movies and TV downloads in what was described as China’s largest copyright piracy case.  The president of the company that operated the website was sentenced to five years in jail and fined US $160,200. The other six defendants were given jail sentences ranging from one to three years., founded in 2008, had seven managers and 140 website administrators, becoming the largest portal of pirated movies, TV shows, and music in China. The parent company also had two brick and mortar stores in Beijing. The website had more than 20 million downloads.

For more information about Stubbs Alderton & Markiles’ Brand Development & Content Protection Practice, contact Tony Keats at or (310) 746-9802, or Konrad Gatien at or (310) 746-9810.


Unfair Competition – Lexmark Int’l, Inc. v. Static Control Components, Inc.

Unfair CompetitionWashington, D.C. – This dispute between printer ink cartridge suppliers has encountered a blotchy area of the law. Lexmark, a laser printer manufacturer, encrypts the ink cartridges it manufactures for use in its printers with a microchip. Static Control Components engineered a microchip that allowed competing ink cartridge manufacturers to have access to Lexmark printers. Lexmark sued Static Control for copyright infringement, among other things, and Static Control countered with a false advertising claim against Lexmark. Lexmark sought summary judgment on the false advertising claim, alleging that Static Control did not have standing to sue under the Lanham Act. On Tuesday, March 25, 2014, a unanimous Supreme Court resolved a split of authority amongst the Circuit Courts over the issue of standing in false advertising claims brought under the Lanham Act, 15 U.S.C. § 1125(a). Who has standing to bring a false advertising claim under the Lanham Act? Justice Scalia’s opinion answers this question by establishing a two-prong test for interpreting the Act to determine whether a particular plaintiff “falls within the class of plaintiffs whom Congress has authorized to sue under §1125(a).” Lexmark at 9. First, a plaintiff’s interests must “fall within the zone of interests protected by the law invoked.” Id at 10. The Court explains that this “Zone of Interest” requirement “applies to all statutorily created causes of action… unless it is expressly negated” by Congress. Id at 10. However, “the breadth of the zone of interests varies according to the provisions of law at issue” for any particular statute. Id at 11. Second, “a statutory cause of action is limited to plaintiffs whose injuries are proximately caused by violations of the statute.” Id at 13. This “Proximate Cause” requirement asks “whether the harm alleged has a sufficiently close connection to the conduct the statute prohibits.” Id at 14. The Court explains that this second requirement “generally bars suits for alleged harm that is ‘too remote’ from the defendant’s unlawful conduct.” Id.

Applying the first prong to a false advertising claim under the Lanham Act, the Court identified the “interests protected by the Lanham Act” by referring to the “’unusual, and extraordinarily helpful,’ detailed statement of the statute’s purposes.”

Section 45 of the Act, codified at 15 U. S. C. §1127, provides:

“The intent of this chapter is to regulate commerce within the control of Congress by making actionable the deceptive and misleading use of marks in such commerce; to protect registered marks used in such commerce from interference by State, or territorial legislation; to protect persons engaged in such commerce against unfair competition; to prevent fraud and deception in such commerce by the use of reproductions, copies, counterfeits, or colorable imitations of registered marks; and to provide rights and remedies stipulated by treaties and conventions respecting trademarks, trade names, and unfair competition entered into between the United States and foreign nations.” Id at 12.

Although “[m]ost of the enumerated purposes are relevant to false association cases,” the Court explains that “a typical false-advertising case will implicate only the Act’s goal of ‘protect[ing] persons engaged in [commerce within the control of Congress] against unfair competition.’” Id. Justice Scalia looks to the common law for the definition of “unfair competition,” stating that it was “understood to be concerned with injuries to business reputation and present and future sales.” Id. Thus, a plaintiff comes within the zone of interests in a suit for false advertising under §1125(a) when that plaintiff “allege[s] an injury to a commercial interest in reputation or sales.” Id at 13.

Applying the second prong, the Court explained that the “[p]roximate cause analysis is controlled by the nature of the statutory cause of action,” and asks “whether the harm alleged has a sufficiently close connection to the conduct [that] the statute prohibits.” Id at 14. The Court held that, when suing for false advertising, a plaintiff “ordinarily must show economic or reputational injury flowing directly from the deception wrought by the defendant’s advertising.” Id at 15. This occurs when a defendant’s deception causes “consumers… to withhold trade from the plaintiff.” Id. Several examples include “afford[ing] relief under §1125(a) not only where a defendant denigrates a plaintiff ’s product by name… but also where the defendant damages the product’s reputation by, for example, equating it with an inferior product.” Id at 19. Further, a defendant who “‘seeks to promote his own interests by telling a known falsehood to or about the plaintiff or his product’” may be said to have proximately caused the plaintiff ’s harm. Id at 20.

The Lexmark decision is important in two aspects. Narrowly, in order to have standing under the Lanham Act for a false advertising claim, “a plaintiff must plead (and ultimately prove) an injury to a commercial interest in sales or business reputation proximately caused by the defendant’s misrepresentations.” Id at 25. Broadly, the decision adopts a two-prong test for evaluating standing under any statutorily created cause of action, and provides a rubric for analyzing each prong. It will be interesting to watch the development of the jurisprudence of standing as lower courts apply Zone of Interest and Proximate Causation to false association claims under the Lanham Act and extend this analysis to other federal statutes.


For more information about our Brand Development & Content Protection Practice, contact Konrad Gatien ( or Tony Keats (


SAM Client Alert – New Domain Names and the Trademark Clearinghouse

Important Business News From

Stubbs Alderton & Markiles, LLP

New Domain Names and
the Trademark Clearinghouse


The new generic top level domains (gTLDs) are continuing to launch in 2014. While there were previously only 22 top level domain names (e.g., .com, .net) and the various country code registries (e.g.,, .de), within the next year there may be as many as 1,500 active top level domains, each with their own registries.

To assist you in protecting your trademark rights as much as possible, The Trademark Clearinghouse will allow trademark holders to submit their trademark information to a one-stop shop centralized repository. After verification, the trademark holder will be able to register its corresponding domain name(s) during the pre-registration period of multiple TLDs – also known as the “Sunrise period”. Trademark holders will also have the option to be notified when someone registers a domain name that matches their record in the TMCH.

An application to the Trademark Clearinghouse serves two main purposes:

1) Participation in the Trademark Clearinghouse is the only way to pre-register brands in the sunrise-phase which precedes all new gTLD launches. This process will greatly reduce the administrative burden and associated costs for trademark holders.

2) During the Trademark Claims period 60 days after the Sunrise period, trademark holders may choose to be notified immediately when someone registers a domain name, in any of the new gTLDs, that match the registered trademark.

For more information about how to register your marks with the Trademark Clearinghouse, or if you would like more information about our Brand Development & Content Protection practice, contact Konrad Gatien at or (310) 746-9810.


How to Protect Your Brand — By Konrad Gatien

Brand 101

Partner Konrad Gatien was recently the featured speaker at a San Fernando Valley Bar Association event. Konrad spoke on the topic of “How to Protect Your Brand.”  Key points included the business perspective, legal perspective, a primer on copyrights, trademarks trade dress, and how to make your brand unique.

For more information regarding Brand Development & Content Protection, contact Konrad Gatien at (310) 746-9810 or



Trade Dress for Websites

Konrad GatienKonrad Gatien, Partner and co-chair of Stubbs Alderton & Markiles’ Brand Development & Content Protection Practice,  discusses the importance of establishing a distinctive website to create trade dress, and therefore protect your unique brand. Konrad is involved in all aspects of brand creation, promotion and protection, assisting clients in the selection and adoption of brand names, securing copyrights and trademarks worldwide, and running specialized global enforcement programs.


What is Trade Dress in the Electronic Age?

The digital age has seen the migration of store fronts from brick-and-mortar locations to the Internet.  Currently, Amazon is the largest online retailer in the world, with over 48 billion in sales.  Given the importance of e-commerce, it comes as no surprise that making an online “storefront” distinctive has become a key element in a company’s branding strategy.  Not only must the website be eye-catching and interesting, it must stand out from among the over 600 million active websites online.

One means of achieving distinction is for a company to create a website that has a unique “look and feel” that sets it apart from the rest.  In legal terms, this overall visual appearance is known as “trade dress.”  Trade dress traditionally has consisted of the specific characteristics or visual appearance of a product or its packaging.  The scope of trade dress protection has expanded from these traditional notions to include magazine covers,[1] store interiors,[2] and websites.[3]

The elements of trade dress with respect to websites include such elements as the images, frames, colors, highlights, orientation, layout, graphics, animation, borders and sounds, as well as the selection and arrangement of all of these elements.[4]

The purpose of trade dress protection is prevent marketplace confusion by ensuring that a consumer’s reliance upon the distinctive features associated with a single source are not copied and associated with another business and its products.

 Trade dress is protectable once it has achieved secondary meaning, a status achieved when a substantial number of purchasers associate a particular appearance only with a single source.  Once secondary meaning is established, the trade dress owner may prevent others from copying it under the Lanham Act, which prohibits unfair competition.

Articulation and Distinctiveness

To establish trade dress, a person or business seeking protection must be able to sufficiently articulate which elements of its website are distinctive.  These elements cannot be “functional,” meaning they cannot be merely essential to the product’s use.  For example, a shopping cart or check out feature in and of itself would be functional; however, a unique logo or graphic for this feature may be a protectable element of the site’s trade dress.  The purpose of the requirement that trade dress consist of specific, articulable, non-functional elements is to give competitors sufficient notice of what the protected trade dress is, and to protect legitimate competition by prohibiting the monopolization of useful product features.[5]

Preemption by Copyright

It is worth noting that where online trade dress is at issue, a trade dress owner’s claims may still be dismissed if the appearance of the website falls under the protections of the Copyright Act.[6]  Given the preemption rule, a brand owner cannot seek to protect the look of its website as both a copyrighted work and trade dress.  Therefore, a website owner should be careful in selecting the elements of its trade dress in a manner that clearly distinguishes them from elements protected by copyright law.  For example, common geometric shapes are not protectable through copyright law, so the owner should consider including those in its trade dress articulation.  In addition, the format and layout of a website should be included in the trade dress articulation because they are not proper subjects of a copyright claim (though text and photographs would be proper subjects).[7]

Closing Thoughts

Your website’s appearance is the first impression consumers have of your business.  A well-designed website that is distinctive and pleasing to the eye builds consumer confidence in your brand, and helps define your brand’s commercial integrity.    To ensure that you maximize the impression of your brand, you should take care to populate your website with elements that are not only distinctive, but also that are legally protectable.  From a trade dress standpoint, this will include the layout of the site, certain graphic elements, and its overall appearance, as opposed to its content.  When articulating your trade dress, you should be careful to distinguish those elements from the text, original graphic elements and photographs protectable under copyright law to ensure that your trade dress claims are not preempted by the Copyright Act.

[1] Reader’s Digest Ass’n v. Conservative Digest, 821 F.2d 800 (D.C. Cir. 1987).

[2] Apple was issued a service mark registration for the design and layout of its Apple retail stores on January 22, 2013  (see Reg. No. 4,277,914).

[3] See, e.g., Sleep Science Partners v. Avery Lieberman, 2010 U.S. Dist. LEXIS 45385 (N.D. Cal. 2010).

[4] See id.

[5] Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165 (1995).

[6] Sleep Science Partners, 2010 U.S. Dist. LEXIS 45385, at *13.

[7] See Copyright Office Circular 66.


For more information about Trade Dress  and other intellectual property related questions, please contact Konrad Gatien at (310)746-9810 or


SAM Encourages You to Attend – Ideas2Apps: How to Build an App Business June 24, 2013



ideas2apps:  How to Build an App Business

Produced by: LLC

Co-Hosted by:

Mobile Monday


Monday, June 24, 2013 from 6:30 PM to 9:30 PM (PDT)

Cross Campus
820 Broadway
Santa Monica, CA 90401


Do you have an app idea?

If you have been thinking about building an app for sale on iTunes or Google Play Market, this is the event for you. If you have an business and think you need an app (you do- maybe a few) this is also the place to be.

  • How do you protect your app idea?
  • How do you take an idea and build an app?
  • How do you design an app people want to use?
  • How is an app developed?
  • How do you market your app & gain new users?
  • How do you monetize your app?
  • What business functions can you automate with an app?

These and more questions are answered June 24, 2013 @ 6:30PM – 9:30 PM. Come learn about the App Development process for you, your venture or your existiing business @ Cross Campus. Michael Devellano is a principal of a boutique mobile app development and design shop.

With over 15 years in the wireless and mobile application development industry this will be a chance to understand end to end how to successfully launch your idea into an iPhone, iPad and/or Android application.


Moderator: Ryan Azlein, Partner at Stubbs Alderton & Markiles, LLP.




6:30-7:00 – Arrival & Networking
7:00-7:35 – Intro to ideas2apps Methodology
7:45-8:00 – Ideas Pitch! Open Mic
8:00-8:15 – Break
8:20-9:00 – Panel of app experts, Q&A
9:00-9:30 – Networking & Close

Meet the Expert Panelists: 

 Mike DevellanoMichael Devellano

Michael Devellano has spent 20 years in the wireless and application development space with companies such as Rhythms, RIM (BlackBerry) and Rogers Wireless. He was the founder of social music network which grew to over 4 Million users; was a co-founder of Portable Intelligence, an early stage iPad; and, a platform for sales organizations. He is a principal of LLC a boutique mobile application development shop with a team of 25+ designers and software developers.

Michael will take us through the end-to-end considerations and provide insight into taking an idea from nascent stage, to validation, planning, design, development, and to successful launch & monetization.

Eli MorinEli Calderón Morin (right)

Eli has been an early member of some of the fastest growing, game changing, and innovative mobile companies in the world (AdMob, SnapTell, Mojiva, & InMobi). Through his experience he has focused on hyper-revenue growth and business development globally and within the US by managing a variety of full stack demand & supply relationships which have include work with Brands, Agencies, Local & Performance Advertisers, mobile publishers, App Developers, and building app dev communities.

Eli received his B.A. from the University of California Irvine in Arts & Humanities and holds a certificate in Entertainment & Media Management from the UCLA Anderson School of Management. He is the Chairman & Founder of Mobile Monday Silicon Beach (a mobile non-profit) and recently joined OpenX (Samsung $22M) to ramp up their mobile initiatives. In addition he holds numerous advisory positions in the mobile industry and currently lives between Pasadena/ Palo Alto California.  Eli can be reached at or (626) 817-3440 for advisory roles or other projects.

David TeichnerDavid Teichner

David Teichner is a passionate executive with experiences in building businesses from scratch, raising multiple rounds of capital, team building and doing whatever it takes to win! He has great relationships and enjoys applying his knowledge and contacts to move businesses forward, regardless of size. While entrepreneurial, Teichner is strategic in his approach and never backs down from any challenge.

David Teichner is the CEO of Yowza!!.  Yowza!! is the leading mobile coupon app. Founded in ’09, Yowza!! has a large userbase nationwide with tens of thousands of retail locations advertising their offers on the app.

He also founded Discounts4me and CEO/Chairman at Channel M (12 years).

Konrad GatienKonrad Gatien

Konrad is a partner of the Firm, and co-chair of the Branding Strategy and Content Protection Practice Group. Prior to joining Stubbs Alderton & Markiles, LLP, Konrad was a partner at Keats McFarland & Wilson, LLP.

Konrad is involved in all aspects of brand creation, promotion and protection, assisting clients in the selection and adoption of brand names, securing copyrights and trademarks worldwide, and running specialized global enforcement programs.

Konrad has been the lead litigation attorney for some of the world’s most recognized brands. He has successfully maintained actions involving complex copyright and trademark matters, unfair competition, trade secrets, trade dress and right of publicity violations. Konrad has obtained temporary restraining orders, seizure orders and preliminary injunction orders, and secured multi-jurisdictional seizures of counterfeit goods. He has successfully recovered domain names for leading brands and celebrities through the World Intellectual Property Organization and National Arbitration Forum.

Konrad’s prosecution practice includes overseeing the registration of more than 1000 trademarks in domestic and international markets for clients in the apparel, entertainment, fitness, hospitality and new media industries.

Konrad’s transactional work in new media involves drafting a wide variety of Internet agreements including privacy policies, terms of use, and intellectual property notices. His entertainment practice includes negotiating and drafting production, licensing and distribution agreements for world-famous characters, people and products. Konrad has supervised intellectual property investigations and negotiated purchase, sale, and co-existence agreements for various intellectual property assets.

RyanAzlein2Ryan Azlein

Ryan Azlein is a Partner with the Firm.  Ryan advises a wide range of both public and private clients, focusing on emerging growth, development stage and middle-market companies as well as venture capital firms, angel investors and strategic investors.  Ryan’s practice concentrates on venture capital and corporate finance, mergers and acquisitions, equity and executive compensation matters, intellectual property development and licensing arrangements, SEC reporting and disclosure, public and private securities offerings, complex partnering arrangements, and general corporate matters.

Ryan has substantial experience managing a variety of business transactions, including numerous venture capital, angel and seed financing transactions, private equity and debt financings, mergers and acquisitions in the public and private markets and public and private offerings by public companies.

Ryan also counsels companies in connection with SEC reporting requirements and registrations, federal and state securities laws, corporate governance issues, joint ventures and strategic alliances, technology and licensing issues, employee incentive plans, executive employment agreements and commercial contracts.  In addition, Ryan has expertise in advising companies in their formation process.

Ryan is actively involved in the Southern California emerging company and venture capital community.  Ryan regularly lectures to entrepreneurs, peer groups and students on various topics, including venture capital financing and issued faced by emerging growth companies.

Food and Beverages will be provided and there will be sponsor giveaways.


SAM Partner Konrad Gatien to be a Panelist at Maverick Angels AIM Program at USC

Konrad GatienSAM Partner Konrad Gatien will be a featured panelist at the Maverick Angels‘ AIM (Accelerating, Incubating, Mentoring) Summer program at University of Southern California on June 12th, 2013.  The panel will focus on legal issues that surround the startup process.  Konrad will be discussing the ins and outs of intellectual property and trademarks.  Other panelists include Rick Citron of Citron & Deutsch, and Nick Zargarpour of the Zargarpour Law Firm.

Konrad’s practice includes all aspects of brand creation, promotion and protection, assisting clients in the selection and adoption of brand names, securing copyrights and trademarks worldwide, and running specialized global enforcement programs.  For more information about our Brand Development & Content Protection Practice, please contact Konrad at or 310.746.9810.