Posts in Trademark

Request for Comments: PTO Trademark Litigation Tactics Study

The stories of abusive cease and desist orders are legendary. In fact such letters are indeed typically referred to as being “a dime-a-dozen.” Trademark owners and their representatives have long been believed to grossly overstate the rights a trademark conveys when they send letters to unsuspecting and often legally unsophisticated individuals who are immediately petrified and will do nearly anything to resolve the matter. These individuals and small businesses are frequently coerced to give up legal rights they have without justification, which alters their business plans without justifiable reason.

Trademarking a Domain Name? Sure, why not?

A common misconception is that a website that just advertises your goods or services can be a trademark. It can’t. The domain has to be a unique source indicator all on its own, meaning it has to tell people what your goods or services are on its own. Basically, if your domain name is just an Internet address where your customers can find you, it can’t be registered. It just tells people where to find you. It is merely incidental to your primary business purpose.

Wine & Spirits Industry Fight Chinese Counterfeiting

It is unfortunate for businesses, but China is becoming practically synonymous with intellectual property theft, piracy and counterfeiting. On top of that, many technology companies are learning that doing licensing deals with the Chinese means they turn over the technologies and as soon as the Chinese corporation is capable of employing the technology the sever the relationship and then compete against American companies with American technology, they just don’t have to recoup the research and development costs and they have a cheap labor force.

The Business of Social Media: Protecting Trade Secrets & Trademarks in a Socially Networked World

The demographics on users of social media can be surprising – a large percentage are over 35, and have six-figure incomes. These users have a lot of buying power and are often making the purchasing decisions for their households. Once they know this, clients can grasp the importance of both using social media proactively. But what is the risk? In the trade secret arena you could lose everything through inappropriate use by you or your employees, and the same is true in the trademark context as well.

Combating Copyright Infringement: DMCA Take Down Notices

We shouldn’t fool ourselves and try and pretend that the lack of respect for intellectual property rights is limited to those who seek to share movies, music or make a buck selling knock-off products. Everyone who produces original content on the Internet is at risk of having that content stolen; simply cut and pasted onto some other website or blog. Even if it is not passed off as original content and you do get “credit” the copyist is using your work for their own benefit. They are stealing eyeballs, diverting traffic and likely costing you money. At the very least, they are free riding, which is a hard pill to swallow.

Apple and Microsoft Fight Over “APP STORE” Trademark App

The Apple application for “APP STORE” is currently in opposition proceedings at the Trademark Trial and Appeal Board. Here’s the skinny in 4th grade prose. Back in ’08, Apple opened up its first app store. Shortly thereafter, it filed a trademark application for “APP STORE” in the United States Patent and Trademark Office (“USPTO”). The Examiner said “No way! That mark is descriptive!” Apple said “Nu-uh!” Examiner said “Yes huh!” Apple said, “Nu-uh!!!”, and appealed. Examiner said “OK, fine” and published the application for opposition. Then Microsoft said, “No way! That mark is descriptive!”

Trademark Collective Marks: Trademarking the Tea Party?

While Tea Partiers generally oppose federal government intervention, a U.S. judge has agreed to referee a dispute among Florida political activists that questions whether anyone has a trademark or any other intellectual property rights to the “Tea Party” name. Given their anti-establishment fervor, one might also be surprised to hear that a Tea Party group filed for federal registration of a trademark. But in April of this year, Marylynne Cellamare filed an application for TEA PARTY in the USPTO (serial number 85011226). The Examiner rejected the mark in an Office action a month later because the mark was merely descriptive. Ms. Cellamare has not responded. And there’s an application for TEA PARTY PATRIOTS (serial 77777712) that wasn’t flat out rejected, but the Examiner did require a disclaimer to “Tea Party”. The application is now before the TTAB in opposition proceedings. There are many more of these types of applications ranging from clothing to bumper stickers to political activism.

Trademark Tarnishment: Trademark Law’s Dirty Little Secret

Dilution by blurring slowly whittles away at a trademark’s distinctiveness whereas dilution by tarnishment is an attack on the reputation and positive image of a mark. Here’s the thing: dilution by tarnishment is an entirely separate analysis from your garden variety Likelihood of Confusion analysis. But before click up your heels and scream “Yahtzee!” you should know that it’s really hard to make a tarnishment argument stick so don’t get all antsy to trot this one out. The standard is all over the place because it’s typically analyzed under a state’s dilution laws (if there are any). And I hate to do that lawyer “well, it depends” thing, but in this case, a tarnishment cause of action really does depend on the jurisdiction.

Kappos Welcomes Expo to US Trademark and Patent Office

On Friday, October 15, 2010 and again on Saturday, October 16, 2010, the United States Trademark and Patent Office (USTPO) played host to the National Trademark Expo. That is no typo or clerical error. Director Kappos, who was introduced by Lynne Beresford, the Commissioner for Trademarks, started the day with an address and began by welcoming everyone to the United…

Twice in One Week, Russ Feingold Accused of Infringement, Told To Take Down Campaign Ad

After pulling a campaign commercial earlier this week after the National Football League accused him of copyright infringement by using NFL footage, U.S. Senator Russ Feingold (D-WI) made another ad fumble – infringing on a trademark owned by Americans for Prosperity (AFP). In his campaign commercial, “Hands Off,” Senator Feingold infringes on “Hands Off My Health Care,” an AFP trademark used during the debate over the federal health care legislation.

Trademark Double Dog Dare: Do Your Rendition Of Tarzan Yell

Did you know that the Tarzan yell is a registered trademark? So is the Looney Tunes theme song. And Homer Simpson’s “D’oh!” Trademarking a sound or series of sounds is really not that hard to do. The Trademark Manual of Exanimation Procedure (“TMEP”) §1202.15 tells us “A sound mark identifies and distinguishes a product or service through audio rather than visual means.” OK. That’s fairly straightforward. We all know that in order to be eligible for trademark protection, a mark has to be unique, arbitrary, or distinctive and it has to function as a source identifier. This means the consuming public will see that mark and automatically know that it is the brand for a particular product.

IHOP v. IHOP: House of Pancakes Sues House of Prayer

On September 3, 2010, IHOP IP, LLC, a Delaware limited liability company, the owner of various IHOP registered trademarks in the United States, sued the International House of Prayer alleging various trademark infringement theories. The plaintiff IHOP brings two causes of action against the defendant. The first being the claim that the defendant through the use of various IHOP marks is engaging in dilution under 15 U.S.C. 1125(c). The second claim is straight trademark infringement under 15 U.S.C. 1114. Notably, the plaintiff IHOP did not bring a cause of action alleging likelihood of confusion, which is typically a ubiquitous cause of action in these types of cases.

Trademark Power: Not All Trademarks Are Created Equal

You have probably had circumstances when you have positively associated with a certain trademark.  Perhaps you were traveling and had the option to eat at one of several restaurants.  You might have preferred a sit-down meal, but you might have opted for McDonald’s or Burger King instead because you are familiar with what you will get, know it is going…

American Needle Victorious at Supreme Court But Loses Trademark Infringement Jury Verdict in Dallas

Classic Ink, Inc., owner of Classic Sports Logos brand apparel line and rapidly growing trademark licensing firm, secured a major legal victory in the U.S. District Court for the Northern District of Texas against American Needle, Inc., and its Red Jacket apparel business on Aug. 6, 2010. After a five-day trial, the seven-member jury returned a unanimous verdict finding American Needle and its Red Jacket apparel business infringed Classic Ink’s trademark rights. Readers may recall that just a few months ago it was American Needle that celebrated an important win, with a win over the National Football League at the United States Supreme Court. See American Needle v. National Football League.

Wall Street Journal Profiles Medical Marijuana, but not Important USPTO Issues

Earlier today the Wall Street Journal gave front page space to a story relating to the United States Patent and Trademark Office. Widely regarded as one of the “papers of record” in the United States, one might expect that the Wall Street Journal had brought its considerable clout to an important issue plaguing our time, such as an horribly under funded Patent Office that is holding innovation hostage, costing America perhaps millions of jobs. NO! Don’t get me wrong, every tabloid should have front page news story about pot, medical marijuana and have an image of a VW bus over the tag “the Canny Bus,” as the Journal did earlier today. Call me crazy, but I expected more from the Wall Street Journal.