Trademark Lawyer Blog

The European Court of First Instance has denied a German clothing and perfume retailer’s bid to register an exclamation point as a trademark. Joop! applied for a trademark on an exclamation point logo, both in free form, and enclosed within a box.

A mark has to indicate the source of a good in order to qualify for registration as a trademark. The court said that an exclamation point alone isn’t enough to show a link between a manufacturer and its product. In other words, consumers would not necessarily associate an exclamation point with Joop!

While decisions outside of the United States are not binding on us here, they may be helpful in interpreting our trademark statutes. I think that the analysis done by the EU court is analogous to what an American court would do. Intellectual property is a global field so it’s important to stay on top of both domestic and international rulings!

Want to know if your mark is registrable? A thorough trademark attorney can let you know what the law allows!

“Power to the People – Power Belongs to the People.” The Rock Art Brewery in Morrisville, VT adopted that phrase in celebration of being able to keep the name of their 10th anniversary beer, the Vermonster, after settling a trademark dispute with a national beverage manufacturer. Earlier, the makers of Monster energy drink, Hansens Beverage Company, attempted to stop the small brewery from using that name. The Rock Art owner received a cease-and-desist letter demanding immediate abandonment of the term Vermonster. The letter explained that use of the word 'monster' would create confusion among consumers between the beer and the energy drink.

After receiving the notice, the brewery owner used the internet to broadcast what had happened. Public outcry ensued as he received support from the internet community. He also received support from stores in neighboring states as they pulled Monster Energy drinks and other Hansen Beverage Co. products from their shelves. Even a United States Senator observed anyone confusing energy drinks and beer should “lay off the energy drinks.”

Though the precise details of the settlement are confidential, Hansen will allow Rock Art to continue marketing the Vermonster brew throughout the nation and Rock Art will not enter into the energy drink business.

A Florida boat manufacturer, Hell’s Bay , obtained a settlement in its case (which included a trade dress claim) against Beavertail, a Minnesota based boat manufacturing company. Hell’s Bay, located in Titusville, Florida, has many boat designs, including several shallow water skiffs. In Hell’s Bay’s case against Beavertail, Hell’s Bay claimed that a number of Beavertail’s skiff designs copied those of Hell’s Bay designs for skiffs. Hell's Bay also claimed its shallow water skiffs were entitled to trade dress protection because of the uniqueness of the hull designs and the skiff’s look.

Trade dress deals with the way providers of goods and services package or design their products. In evaluating whether “packaging” or design of products can receive trade dress protection, courts use the same criteria as they use in trademark claims, and trade dress may be entitled protection even though it is unregistered. Some of the criteria courts look at in determining whether to afford trademark or trade dress protection are whether there is a likelihood of confusion as to the source of the goods, whether the mark is functional, and whether the mark is inherently distinctive or has acquired a secondary meaning. If the packaging or design deserves trade dress protection courts can award injunctive relief along with monetary damages. In the Hell’s Bay case, the exact settlement terms were not disclosed and no liability was found or admitted; however, as part of the settlement, Beavertail did discontinue manufacturing the questioned designs, destroy its molds for those hulls, and give Hell’s Bay some monetary compensation.

If you are a business owner it is important to remember that product design and packaging, including the ‘look and feel’ of your business, may be entitled to trade dress protection as long as they meet the required standards. If you have questions about trade dress and trademarks, please let me know.

Oprah Winfrey and Dr. Mehmet Oz are suing over 50 small beauty product and dietary supplement companies across the country, claiming that the businesses falsely professed that the TV personality and her recurring talk show health expert endorsed their merchandise.

Among Oprah’s list of grievances are consumer fraud and unauthorized use of names, likenesses, and trademarks. Many of the defendant companies appear to be fly-by-night outfits, running credit card scams. The victims are unsuspecting buyers of their vitamins, anti-cellulite and anti-wrinkle creams, and tooth-whitening products. Oprah is incensed that her reputation was purportedly tied to these questionable organizations.

The clout Oprah has today is mind-boggling, but not surprising! People will run out and buy anything if it gets a thumbs-up from her. The same goes for any powerful or famous person. To think that these companies would misrepresent the facts just to capitalize on her sphere of influence is a testament to Oprah’s power in the market. While we could argue that a little more caution from viewers in making purchases couldn’t hurt, trademark laws exist to protect consumers from being confused as to who endorses which products.

Ensure that your name isn’t associated with sketchy characters! Contact a trademark attorney for protection!

If you are thinking about registering a company trademark under an alternate domain name, think again. The American Automobile Association (AAA) recently sued James Van Johns, a Pennsylvania resident, for violating federal cybersquatting laws. According to the Anticybersquatting Consumer Protection Act, a trademark holder can sue anyone who registers or uses a domain name that may confuse consumers or mislead them into believing the website is endorsed by the mark holder. Van Johns had registered the website AAA.net which appeared similar to AAA’s website, AAA.com. This would have likely confused consumers trying to connect with AAA, especially since Van John’s site featured advertisements for AAA’s competitors.

Fortunately, the parties were able to settle and each side paid their own legal fees. As a result of the settlement, Van Johns had to release AAA.net to AAA without any payment. He is further prohibited from registering any other web addresses similar to AAA.

Louis Vuitton, the high-end fashion retailer, has been awarded $32.4 million dollars in its trademark and copyright infringement case against Akanoc Solutions, Inc., and Managed Solutions, Inc., a pair of website hosting companies. The case, Louis Vuitton Malletier v. Akanoc Solutions, Inc. et al., was held in the U.S. District Court for the Northern District of California and a jury rendered the verdict.

What’s unique about this case is that the defendants did not commit any direct violations themselves, but hosted sites that sold Louis Vuitton knock-offs. Contributory trademark infringement is a legal theory wherein a defendant may be liable for assisting trademark infringement or having control over others who directly infringe.

In order to be held accountable for the acts of others, the defendant must know or should have known that another’s conduct constitutes infringement and the defendant must give substantial assistance or encouragement to those that directly infringe. I think it’s fair that secondary actors and entities that enable infringement are liable for either actively helping infringers or looking the other way!

Want to keep your trademark safe from any type of infringer? A trademark lawyer can preserve the strength of your brand!

David Kappos, nominated to become the next Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, addressed the Senate Judiciary Committee on July 29 as part of his confirmation hearing. As I had mentioned in an earlier post, Mr. Kappos previously served as IBM’s vice-president and assistant general counsel for intellectual property.

Among other things, Mr. Kappos vowed to root out counterfeiting and piracy, highlighted his plethora of qualifications, and tackled questions about potential conflicts of interest with regard to future IBM patents. He intends to pursue an international anti-piracy strategy, working in conjunction with many foreign governments, particularly those in Asia. Many senators reacted favorably to Mr. Kappos and his confirmation appears to be imminent. The panel is expected to vote on Kappos in early August.

Mr. Kappos’ resume certainly is impeccable, and he seems to be saying all the right things about his upcoming position. His plate will definitely be full as budget concerns at the USPTO loom over all policy decisions. I only hope that his ambitions aren’t just pipe dreams and that concrete actions will be taken to make good on his promises!

Judge Sotomayor’s career in the judicial system has spanned 30 years and she has ruled on both ends of the spectrum, issuing favorable judgements to both plaintiffs and defendants in IP matters.

In 1997, in Castle Rock Entertainment, Inc. v. Carol Publishing Group, 150 F.3d 132 (2d Cir. 1998), Judge Sotomayor held that a trivia book based on Seinfeld, called The Seinfeld Aptitude Test, violated various copyrights. She also found in favor of licensees of the rights to The Three Stooges in an action to protect their property.

However, in another major case, Tasini v. New York Times et al., 533 U.S. 483 (2001), Judge Sotomayor ruled against a number of freelance journalists claiming that major news outlets had improperly duplicated their work and displayed it on databases like LexisNexis without permission and in violation of copyright laws. Judge Sotomayor opined that these news organizations were in compliance with the Copyright Act of 1976. Ironically, the U.S. Supreme Court ultimately struck down her ruling!

Despite the variation in her decisions, I am glad that there will be a judge on the U.S. Supreme Court with some IP savvy to tackle what is sure to be a huge slate of cases involving new technology.

How do you feel about Judge Sotomayor's qualifications? How do you think her background will affect the Supreme Court's decisions? Please post your comments or contact me to discuss!

Judge Sonia Sotomayor was confirmed by the United States Senate on August 6 and will be sworn in as a member of the U.S. Supreme Court on August 8. Despite coming under fire from a variety of Republican opponents, Judge Sotomayor was voted in by a 68-31 tally.

Judge Sotomayor was a highly-decorated intellectual property attorney in private practice, and served as a partner in a Manhattan law firm prior to her tenure as a judge. She has relevant experience in cyberlaw and appears to be a quantum leap over Judge David Souter, the technologically-challenged Justice she is replacing.

Judge Sotomayor has impeccable credentials from her college years through her time on the bench. Her dedication and enthusiasm are striking: while doing trademark work for Louis Vuitton, she routinely took to the streets in a bulletproof vest and tracked down people peddling fake Louis Vuitton purses!

I admire Judge Sotomayor for her remarkable experiences and, being an intellectual property attorney myself, share her passion for clients! Up next, I’ll go through some of her past history with IP cases.

Twitter can’t seem to catch a break when it comes to trademarks. The United States Patent and Trademark Office has preliminarily denied Twitter’s bid to trademark the word “tweet.” Twitter appears to have lost the race, not against time to prevent their potential trademark from becoming generic, but against three other companies that filed applications containing the word “tweet.”

TweetMarks, Cotweet, and TweetPhoto all submitted trademark applications for their respective names that predate Twitter’s filing. What’s ironic is that these are all independent sites that were created to piggyback onto Twitter! The USPTO wrote that a trademark on “tweet” would likely cause confusion among consumers as to its source. The goal of a trademark is for the public to be able to unequivocally identify a brand.

Twitter has indicated that it even if the trademark is ultimately registered, it would allow liberal use of “tweet” unless it would be injurious to the company. Now it seems that Twitter will be unable to protect the term at all. No matter what the outcome, millions will still be tweeting, including me!

I can think of other grounds upon which "tweet" would be denied registration. Trademarks should describe a product or service. They cannot be generic nouns, like "milk," "car," or "scissor." I have heard the word used as a noun ("Post a tweet so I'll know what you are doing"). Similarly, trademarks cannot be used as verbs ("Her thumbs are sore from tweeting on her phone"). Thus, trademark registration should only be granted if "tweet" was used as an adjective, as in, "Your tweet micro-blog is always updated," or "Stop sending tweet messages at the dinner table."

I can help you navigate the subtle trademark registration rules. Let me know if you have a question about them.

Have you noticed that some brand names include the name of a location to denote where the products originate, while others include a location that is completely unrelated?

You can use a geographical or regional name in your trademark as long as its meets two requirements: the mark cannot be geographically misdescriptive or deceptive. First the term cannot be geographically misdescriptive. This means the mark identifies a location other than the origin of the goods or services. For example, Durango chewing tobacco is completely unrelated to the city of Durango. The product is neither produced or distributed from there.

Second, the mark cannot be deceptive. A mark is deceptive when consumers reasonably believe the goods or services originate from the described area due to that area's reputation. Back to the Durango example, that brand is both misdescriptive and deceptive because the city of Durango does in fact produce similar tobacco products. Therefore, consumers would reasonably infer that the Durango brand also originates from the named city.

On the other hand, misdescriptive terms are permitted if they are not deceptive, meaning consumers will not likely believe goods or services come from that area. For example, the Yukon is a trademark for an SUV. Although the Yukon is also the name of a location, it is not known for manufacturing SUVS. Therefore, consumers are not deceived into making the false connection between the product and the location.

Many known brands incorporate punctuation, such an asterisk (E*Trade) or an exclamation point (Yahoo!), into their trademarks. But does this translate into a stronger mark? More importantly, will punctuation make your trademark stronger?

In general, punctuation will not increase your trademark’s strength unless it alters the actual meaning of the words or creates more consumer identification with the mark. In other words, punctuation tends to strengthen trademarks when it causes consumers to associate the mark with a particular good or service. For example, E*Trade and Yahoo! are known partially for their punctuation.

If a mark consists of terms that are generic or merely descriptive of goods or services however, adding punctuation will not increase its strength or make it more capable of being registered as a trademark. This is because changing the appearance of the mark does not change its meaning in the eyes of consumers. For example, the Trademark Trial and Appeal Board held that the mark “3-O’s”, used in connection with car wheel rims, to be merely descriptive and denied trademark registration. The TTAB noted the term thirty is commonly used to describe the diameter of wheel rims. Despite the unique configuration of the hyphenated 3 and O, there is no difference between the mark and the descriptive term because consumers understand the two as synonyms.

Are you considering registering a trademark? Be sure to consult with an intellectual property attorney to assess the strength of your mark and possible methods for improvement.

Like most other modern business owners, you likely use keyword adverting through internet search engines. Most advertisers use generic terms such as ‘massage’ or ‘furniture’ as keywords. However, using the registered trademark of another as a keyword for your product or service may constitute infringement. So if you plan on using a third party trademark in this manner, proceed with caution and observe the tips below.

In case you are unfamiliar with the terminology, keyword advertising involves the advertiser using the services of an internet search engine, such as Yahoo! or Google to attract customers. The advertiser will purchase from the online search service certain terms or keywords that correspond to its products or service. When a potential customer enters the keyword into the search engine’s website, they are directed to the advertiser website.

If your advertising efforts result in a likelihood of consumer confusion, you could be liable for trademark infringement. The best practice is to refrain from using another company’s name as a keyword. Instead, employ generic terms that refer to your business. If you do use another company's exact name or trademark, avoid using the term in the description of your website. Alternately, make it clear to consumers that another party owns the mark and that you are only using it for advertising or comparison purposes.

When applying for trademark registration with a use-based application, it is necessary to provide information regarding use of the mark in commerce. While the lay definition of ‘commerce’ is simply business transactions, the legal definition provides specific requirements.

In Federal Trademark terms, commerce refers to that which is regulated by the U.S. Congress. This includes interstate commerce, which is any transaction between states. For example, using the mark in the ordinary course of trade across state lines or out of the country is satisfactory. Other forms of interstate commerce include advertising over the internet because it involves the transfer of information through communication networks that cross state lines and is available to a national audience. In addition, advertising through television qualifies as use in commerce even if produced and broadcasted within one state. This is because television is federally regulated.

Proof of use in commerce is accomplished with a sworn statement declaring how the trademark is used as well as the date of its first use. For more information regarding use in commerce or trademark applications in general, contact a qualified trademark attorney.

Popular social networking website Facebook implemented a new policy effective as of June 13, 2009 enabling users to register URLs for their usernames. What this means is that a Facebook user may register, for instance, www.facebook.com/pepsi as the address for his or her profile. The registry process is a first-to-register system awarding a specific username to whomever requests it the earliest.

Users with no connection to, or legal permission from, registered trademark owners may seek to register existing trademarks on Facebook and preempt the registered trademark owners from obtaining their rightful usernames. An association of your trademark with an unrelated profile, especially on a platform as prevalent as Facebook, unfortunately can have detrimental consequences for your product, service, and/or brand image.

My firm has used its own trademark on its Facebook page. It is "www.facebook.com/WoodAtterWolf." I would be incensed to know that other law firms might be using our trademark to direct traffic away from our profile, towards themselves, and I would certainly take measures to stop this infringing use.

Facebook has included some limited safeguards but the onus is on the registered trademark owners to actively ensure that misuse does not occur. If you have discovered infringement, Facebook provides a link to report unauthorized use of your trademark to them.

I am curious as to ICANN’s (the Internet Corporation for Assigned Names and Numbers) role in this subject. ICANN has adopted several domain name dispute policies, including the UDRP (Uniform Domain Name Dispute Resolution Policy) for its accredited registrars. My guess is that many Facebook users who use another’s trademark name for their profile will find themselves tangled up in a domain name dispute resolution procedure. This could be a messy situation, since there are many complicated and intricate rules even under the UDRP.

Unsure of the implications this development may have on your registered trademark? A trademark attorney can inform you of all the potential ramifications.

If you have a successful business, you may want to consider expanding through franchising. By franchising, you can grow larger and faster because the franchisees provide the funds for the growth, not you.

One important issue to consider before franchising is whether you have developed a strong trademark for your business. This is crucial because a strong trademark delivers a consistent message to consumers about your franchise’s products and services. Franchisees will pay higher royalties for a franchise like Subway, which has a nationally reputed trademark, than they will for a franchise with little or no consumer recognition.

In the very least, be sure to register your trademark before franchising. Registration provides a presumption that your trademark is valid. This will facilitate any claim of infringement in the unfortunate event that one of your franchisees attempts to improperly license or use your trademark.

A strong trademark is a term or phrase that does not merely describe the goods or services. Rather, strong trademarks require imagination, thought, or perceptions to link the mark with the provider of the goods or services. Such marks may suggest the quality of the goods or services, or may not have anything at all to do with the goods or services. For example, Greyhound might imply that a bus line provides fast transportation. Apple, on the other hand, may have nothing to do with a line of computers.

Wood, Atter & Wolf will be hosting an exhibit at the 2009 Business & Career Expo, hosted by the Jacksonville Regional Chamber of Commerce. It will be on Wednesday, May 27, 2009, from 1-7pm, at the Prime Osborn Convention Center. Admission is FREE to the public!

We will be showcasing Trademark and Franchise law with Alpha Growth Strategies, who are experts in business development and franchising. Together, we will feature legal and business consultations regarding trademark registration, licensing, and business/franchise evaluations.

As always, we will also have attorneys available to ask questions about our other areas of practice, including Personal Injury, Wrongful Death, Criminal Law, and Family Law.

Last year, the Expo featured 250 exhibits, and attracted over 1500 people. For more information, contact us.

In response to businesses' growing frustration with the limited availability of simple internet domain names, the Internet Corporation for Assigned Names and Numbers (ICANN) plans to sell new top-level domain (TLD) names.

Domain names have historically ended with these popular TLDs: .com, .net, and .edu. Currently, there are only 21 TLDs. ICANN proposes to make "personalized" TLDs available to any business with $185,000. Allowing a business to have their name become the TLD opens up an enormous, and possibly endless, combination for domain names. For example, a famous fast food chain can end their domain name in ".mcdonalds." Subdomain names for the TLD can also be available to identify a particular business, like "bankofamerica.bank."

The availability of personalized TLDs will become a nightmare from the intellectual property enforcement standpoint. The increasing number of domain names means additional time and money to monitor misappropriation, and to protect customers from infringers.

In attempting a preemptive strike against infringers, ICANN proposes that it will review applicants who must argue why they should be awarded a particular TLD. Grounds for rejecting an applicant include: having a TLD that is confusingly similar to another, pursuing an immoral TLD like .xxx, or seeking a culturally or politically insensitive TLD.

Availability of these personalized TLDs was scheduled to launch this month.

In order to register your trademark with the USPTO, you will need to submit a specimen. You may have heard this term or read about it, but what exactly does it mean? Also, what is the proper way to submit a specimen for a trademark application?

First of all, a specimen is “an actual example” of your mark being used in commerce or with the identified goods or services. This is more than a drawing of your mark.

For trademarks used with goods, a specimen is an example of the mark with the actual product or packaging. This includes tags or labels, containers, displays, or simply a photograph of the product bearing the mark. Invoices, brochures, and other documents are generally not acceptable forms of specimens for goods. However, such materials may be sufficient for service mark specimens.

For service marks, a specimen should show the mark used in conjunction with sale or advertising of the service. Examples include, signs, brochures, business cards, or stationary. The only requirement is that the document containing the mark also references the nature of the service. For example a business card bearing your mark along with the phrase automobile detailing service is sufficient.

In any event, your specimen should not include the actual product (or service for that matter) and must be either flat and no larger than 8 ½ by 11 inches if filing by paper application or contained in a digital JPEG image if filing electronically.

For questions regarding protecting your works of authorship, contact an intellectual property lawyer today.

You may have seen advertisements wherein one brand name compares its product with that of its direct competitor. Such ads point out key differences between the products while displaying the competitor’s trademark. You may have wondered how an advertiser can use another company’s trademark without being liable for infringement. Also, if you own a business, you may have wondered if you are permitted to use your competitor's trademark in your advertisements.

Comparative advertising is widely used and even encouraged in the United States because it relays more information to consumers, enabling them to make better choices. If you plan to engage in comparative advertising, however, you should be careful to use the competitor’s trademark in a way that is accurate and non-deceptive. You should also show that the products sold under the competitor’s mark are different form yours. Also, do not give the impression that the competitor endorses or supports your product. Finally, in displaying the competitor’s trademark in your advertisement, do not alter their logo or name in any way, and remember to include the proper designation such as “TM” or “®.”

The most popular form of comparative advertising is when a product is "compared with other leading brands." Other brand names are not specifically identified, therefore avoiding allegations of improper use of the marks.

Another form of comparative advertising actually involves permissive use of the competitor's brand name. For example, if Cheer laundry detergent wanted to compare their product with Tide, Cheer may agree to pay Tide for permission to use the Tide logo.

It is possible to have a federal trademark, state trademark, or both. You can register a mark with the United States Patent and Trademark Office to obtain a federal trademark. By registering with the USPTO, you may protect your mark from infringement throughout the United States for a fee of $275.00 per class of goods or services. On the other hand, you can register your mark through The Florida Department of State, Division of Corporations to acquire a state trademark. In this manner, you may protect your mark from infringement in the State of Florida for a fee of only $87.50 per class of goods or services.

Why register in both? In the event of infringement, you can seek remedies under both the federal and state laws. I recommend filing both federal and state applications if your competition in your industry is fierce and lucrative. An example of this would be the technology industry, especially prior to the ".com" bubble bursting.

You must, however, qualify to file for a trademark registration. Be sure that your trademark qualifies for registration before paying the filing fees, since those are non-refundable.

If you are a trademark applicant or registrant with the United States Patent and Trademark Office, be weary if a company contacts you offering services such as trademark monitoring or document filing. Such companies may appear to be affiliated with the USPTO and often request fees for their services. They usually send official looking communications that include personalized information like your trademark file number or the name of your mark. Such items are public information. Do not be confused as these companies are not government entities. They merely attempt to profit from public naivety. In a recent news article, the USPTO has warned that it does not provide such trademark services and is not affiliated with any such companies that do.

Further, if you have employed an attorney to file your trademark application, then you should not receive any correspondence from the USPTO. Your attorney acts as your agent in dealing with trademark matters. Therefore, all USPTO communications should go to your counsel.

If a company or organization that appears to be affiliated with the USPTO has contacted you or requested fees, you may file a complaint with the Federal Trade Commission.

If you have any questions regarding the trademark filing process, or are unsure if you have received a communication from the USPTO, contact an experienced trademark attorney.

"You got the right one baby!"

"The breakfast of champions”

“Reach out and touch someone”

These are slogans that identify Pepsico, Wheaties, and AT&T. Slogans and jingles can add enormous value to your business or brand by generating consumer good will and awareness. Not only will customers associate the slogan with your product or service, but the slogan may also evoke positive feelings. How many times have you had Mazda's "Zoom zoom zoom" song stuck in your head all day? A trademark identifies the source of origin of goods or services. However, trademark registration is not limited to names and logos. You can also register a slogan. In order to register a slogan as a trademark, the slogan must have acquired a distinctive character as a consequence of use and the slogan must associate, in the eyes of the public, between the goods or services and their origin. For more information about obtaining trademark registration for a slogan, contact a competent trademark attorney.

As the Internet becomes a more integral part of life and business, disputes inevitably arise over domain name use. A domain name, sometimes called an "Internet address" or "URL", is registered with a domain name registry. The Uniform Domain Name Dispute Resolution Policy (UDRP) provides trademark owners a remedy against infringing use of domain names.

Domain name registrars can adopt the UDRP by incorporating its language. In that case, you will be contractually bound to the terms of the UDRP when you sign a registration agreement. By registering a domain name, you represent that you are authorized to use that term. In other words, you warrant that the word you use for your domain name will not infringe on another person's protected trademark.

A valid trademark owner can file a complaint with an approved dispute resolution service provider if abusive domain name registration is suspected. Abusive registration includes using a domain name that’s considered identical or misleadingly similar to a protected mark, in bad faith, and with out authorization from the owner of the protected mark. The offender may be required to submit to an administrative proceeding such as arbitration by an independent panel of the dispute resolution service. If the panel determines that the offender has violated policy rules, the offender's domain name may be suspended or transferred to the owner of the original trademark. In any event, offenders are not entitled to refunds from the domain name registrar.

If you suspect improper use of your registered trademark in an internet domain name, contact a competent trademark attorney to explore the possibility of filing a complaint.

In October 2008, federal agents arrested over 60 members of the California based Mongols Motorcycle Club. The three-year undercover operation was code named “Operation Black Rain .” In addition to the normal criminal charges, the indictment also sought to control the gang’s “very identity": their own registered trademark.

The Mongols, investigators learned, operated more like a legitimate corporation rather than a typical gang of outlaws. Most notably is their ownership in intellectual property. "Mongols" is a registered trademark (Reg. No. 2,916,965) listed as being used with “services, namely, promoting the interests of persons interested in the recreation of riding motorcycles. The bikers have also registered as a trademark their logo, seen above.

These marks could be classified as "collective marks", that is, a trademark used to identify membership in an association. As an intellectual property attorney, I am appalled to find out that a registrant could be banned from using their own trademarks for the purposes they have claimed. Sure, they may be involved in criminal activity, but if they are, in fact, a group of people interested in riding motorcycles, punish their criminal acts, not the way they identify themselves. Is it even constitutional to prevent someone from identifying themselves as a member of a group? Is it rational to presume that every member of this group is a criminal?

In what was termed an unprecedented move, the U.S. Attorney filed a restraining order against the motorcycle gang to prevent them from using their name or trademark. The order was granted in United States v. Ruben Cavazos, et. al. The Federal judge stated that, as an asset to the defendant, Mongol Nation, the trademark would be subject to forfeiture as the defendants were convicted in criminal proceedings. Additionally, the court ordered defendants and virtually anyone connected to them–agents, family members-to surrender all paraphernalia containing the name and trademark.

What are your opinions in this matter? I welcome your thoughts and comments.

The trademark application can only be filed by the party who is the owner of (or is entitled to use) the mark as of the application filing date. The applicant may be any person or entity capable of suing and being sued in a court of law. "Entities" includes corporations, partnerships, joint ventures, unions, associations and other organizations capable of suing and being sued in a court of law.

If the president of a corporation is identified on a trademark application as the owner of the mark, when in fact the corporation is the owner, the application is void, because only an owner can file an application. However, if the president and a related company both use the mark, the president will be permitted to be named the owner, if in fact he or she really is using the mark.

If the applicant owns all (or substantially all) of the related company in such a way that he or she controlled that company's activities, there is unity of control, meaning that the the applicant and the company are considered to be a single source, and either could be named as the trademark owner for purposes of trademark application.

For more detailed rules on the trademark process, refer to the TMEP (Trademark Manual of Examining Procedures).

Trademark registration is a complex task, with legal implications lurking in every field on the application. Seek the assistance of a trademark attorney to guide you through this process.

Last summer I took a vacation far from my office in Jacksonville, Florida, to visit New York City for the first time. It was an interesting experience, to say the least. One of the most interesting sights, of course, being The Naked Cowboy.
The Naked Cowboy is not your average guitar-strumming entertaininer. You can't miss him: he's the buff guy in white briefs, a straw hat, cowboy boots, and oh yeah, he spends most of his days in the middle of Times Square. If that's not surprising enough for you, he allegedly makes $5,000 per hour.
Recently, Mars, Inc. launched an ad campaign for their product, M&Ms. The TV commercial features a blue version of their candy coated chocolate, standing in Times Square, dressed in a manner that unmistakably is mimicking The Naked Cowboy.
The Naked Cowboy, whose real name is Robert Burke, is Mars, Inc. for $6 million for trademark infringement, unfair use of his image to endorse a product he does not support, and attorneys' fees. See the Complaint he filed here. The trademark infringement allegations are based on Burke's registered trademarks of the name "The Naked Cowboy," and his image (Reg. Nos. 2560456 & 2760208, respectively).
With the Complaint filed in February, it could be months or years until the case is dismissed, settled, or goes to trial. For updated information, contact me, and I'll see what information I can dig up.

If I am sitting in my office in Jacksonville, Florida, on May 8-9, 2009, there is somewhere else i'd rather be: the Trademark Expo at the U.S. Patent & Trademark Office headquarters in Alexandria, Virginia.

Trademarks play a critical role in our marketplace both here at home and around the world. From the moment our GE alarm clocks wake us up, until we turn off our Sony TVs after the late night news, we are bombarded with brand names. The Trademark Expo pays homage to this enormous influence on our choices of goods and services by featuring displays, exhibits, company booths, roaming mascots, and seminars.

The Expo is free and open to the public. All individuals, businesses, and educational institutions that hold a valid registered U.S. trademark are encouraged to apply to exhibit; the deadline is January 9, 2009.

Last year's Expo attracted 7,000 people.

Labels: trademark

Trademark rights continue as long as the owner continues to use it consistently to identify goods or services. A trademark owner can lose rights to the trademark through abandonment of the mark, non-use of the mark, or by granting naked licenses. Tally-Ho Inc. v. Coast Community College District, 889 F.2d 1018, Footnote 6 (11th Cir. 1989).

Getting our minds out of the gutter, "naked licenses" have nothing to do with nudity. Naked licenses are when a trademark owner licenses the use of a trademark without controlling the quality of the goods or services provided by the licensee. If consumers cannot expect consistency of goods or services associated with a trademark, in effect, consumers will cease to attribute those products with that mark. This is essentially the same as non-use of a trademark.

Quality control is vital in trademarks and licensing, which is why many franchises thrive. The intolerance for anomalies assures consumers that they can depend on the goods and services to be exactly as they expect. This high level of predictability is the secret to many franchises' success.

So trademark owners, don't be caught with your pants down when licensing the your rights. Ensure that your licensees are delivering the same quality of goods and services that you have originally attached to your trademark.

Labels: consumer confusion, franchise, franchising, goods and services, licensing

While monogamy is the prevailing standard accepted in our society when it comes to spouses and boyfriends or girlfriends, this is not necessarily so when it comes to a license for your patent or trademark.

When you offer the rights to use your patent or trademark, in exchange for fees and royalties, you are licensing those opportunities to another. That other party is called the licensee.

A monogamous license, more appropriately termed, an exclusive license, is where you have only one licensee. Typically, licensees agree to paying higher fees and royalties for the benefit of being the only ones who are allowed to benefit from the intellectual property. NBC was hugely successful last month, because they were the exclusive network to provide Olympic coverage.

There are times, however, where it benefits the patent or trademark owner to enter into a licensing agreement with as many licensees as possible. This is a non-exclusive license. Although a licensee will probably pay less in fees and royalties, the patent or trademark owner benefits from collecting this revenue from multiple licensees. Franchises are an excellent example of non-exclusive licenses to numerous franchisees for the use of trademarks, patents, and other proprietary assets.

Labels: franchise, franchising, licensing, patents, royalty, trademark

Federal statutes governing trademark laws are found under the Lanham Act (Title 15 of the U.S. Code). The federal statutes are extensive, providing definitions, detailing procedures, and laying out remedies for aggrieved parties. Disputes under the Lanham Act are brought under federal court.

In addition to these statutes, common law and state statutes also govern trademark laws. Common law is the body of law defined by the courts, and detailed research may be required to find the answers to the questions you are looking for. In addition, each state sets forth its own statutes, and its own courts have jurisdiction to resolve disputes. For example, statutes governing Florida trademarks are set forth in Florida Statutes Chapter 495.

It is important to note that the attorney representing you in state or federal court must be admitted to practice in that particular court or jurisdicition.

Labels: trademark

The "secondary meaning" concept is critically intertwined with trademarks and trademark law.

Secondary meaning occurs when a trademark achieves a meaning to consumers associated with the goods or services it identifies.

For example, the primary meaning of the word, "zoom" can be defined as "to move quickly," or "to get a closer look at something." However, when used as "Zoom Zoom," consumers easily associate the slogan as identifying Mazda vehicles. Therefore, "Zoom Zoom" has achieved secondary meaning with the public, because of their association of the phrase with the Mazda brand name.

The stronger the trademark's secondary meaning, the stronger the trademark becomes when disputes arise involving ownership or use of the mark. These disputes typically arise in the form of cease and desist notices, or Complaints filed in court, alleging infringement, dilution, unfair trade practices, consumer confusion, etc.

Labels: cease and desist, consumer confusion, dilution, goods and services, infringement, trademark, unfair trade practices

In order for your trademarks to be eligible for registration at the U.S. Patent & Trademark Office, your goods or services must be offered to consumers in more than one state. This is an easier endeavor for businesses with high visibility and high accessibility to the public, like restaurants, gas stations, hotels, etc. However, internet sales and marketing across state lines can qualify as doing "interstate commerce."

For businesses catering only to their home state, they ought to register their trademarks at the state level.

Labels: goods and services, trademark, trademark application, trademark registration

When considering a trademark to identify your goods or services, it is always a good idea to see if that trademark is already in use by someone else, and to what extent this trademark is being used. This is particularly important if that other party is a direct competitor.

This is done by doing a trademark search. The U.S. Patent & Trademark Office has a database, as do most Departments of State. However, other databases and resources should be checked as well. This is because the proper owner of a trademark is not the first party to file for registration, but the first one to use it in commerce.

Trademark searches can be performed by a attorney or by private firms that specialize in this service. In any event, find a professional competent in trademark searches to perform this service for you.

Labels: goods and services, trademark, trademark application, trademark registration, trademark search

While registering your trademark is not mandatory, registration offers many advantages. The following only scratch the surface at the benefits of trademark registration:

It gives notice to the public and to your competitors that you claim ownership of the trademark. An owner of a registered trademark is presumed to be the rightful owner, unless proven otherwise.

If someone else tries to use the same or a similar trademark, you can then assert your ownership rights. This can be accomplished by sending a cease and desist letter or filing a claim for infringement.

You can allow others to use your trademark by licensing the rights to use your trademarks. You can control the way your trademark is used: for particular purposes, in certain places, or for a given length of time. This strategy is fundamental in business growth, business development, and franchising.

Registration with the U.S. Patent & Trademark Office provides a basis for you to apply for trademark registration in other countries. On a related note, you can prevent infringing foreign goods from being imported.

Labels: business growth, cease and desist, franchising, infringement, licensing, trademark, trademark registration, trademarks in foreign countries

Service marks are names, logos, slogans, and other marks that identify the source of a service. Legally, they are the same as a trademark, which is a mark that identifies the source of goods. The terms "service mark" and "trademarks" are often used interchangeably.

While the "SM" symbol is sometimes used to denote a service mark, "TM" will do just as well. However, once registered with the U.S. Patent & Trademark Office, the "R" symbol is used.

Often, businesses will have both service marks and trademarks. For example, visitors at Disney theme parks who want to avoid the long line for attractions can make a reservation, and get whisked to the front of the line at their designated time. Disney named this service, "FASTPASS," which is a registered service mark. On the other hand the mark, "Mickey Mouse" has been in use since the 1930s, to identify goods like cartoons and comic strips.

Labels: goods and services, R, service mark, SM, TM, trademark

Businesses often use their business name to create a logo. Both the name and the logo are trademarks identifying goods and/or services. Should they be filed on the same trademark application?

No. Even if the logo is a stylistic version of the business name, if they can be used separately, they should each be filed on separate trademark applications. Filing an application for the logo protects only the graphic representation of the business name. To protect the business name itself, separate trademark registration will protect the use of that name, regardless of the font, color, or manner in which the business name is being presented.

Labels: logo, name, trademark, trademark application