Trademarks And Descriptive Terms I Saw On My Way to Work Today
April 29, 2008
March 28, 2008
I'd Going To Use One Of Those Hotels.Com Services
TTAB decision holding HOTELS.COM to be generic.
August 23, 2007
Which Movie Has The Line "Nobody Puts Baby In A Corner"?
If you got that right, you may be needed to testify as to secondary meaning. Story regarding the trademark suit here.
Update: WSJ Lw Blog points out that it woudl be great to attend a hearing in this suit, so that you can hear the judges and lawyers repeat the line over and over again.
May 13, 2007
Secondary Meaning In Color Mark Decision In Washington
Seattle Trademark Lawyer: "No Secondary Meaning for Color Mark Means No Enforceable Trademark Rights"
April 23, 2007
Ninth Circuit: DISINFECTABLE Not PROTECTABLE
This Ninth Circuit decision on the word 'DISINFECTABLE" ends with a flourish.
April 13, 2007
CAFC Affirms Ruling That LAWYERS.COM Is Generic
Text of In re Reed Elsevier here.
February 17, 2007
Stanford/California v. The NFL
More about The Big Game here. Background about the NFL's published application for The Big Game here.
February 10, 2007
BIg Game Hunting
December 04, 2006
INTA Bulletin
The latest INTA Bulletin arrived. Highlights include an illustation of a fishing line guide (discussion of the registrability of same in this decision), report of Dutch case involving the Adidas three-stripe mark, and news of a famous mark decision from Poland (LEXUS).
September 26, 2006
Zunecast?
Slashdot makes the point that several companies would gladly trade places with Apple and its classy problem regarding PODCAST.
PODCAST To NETCAST?
September 07, 2006
More On Super Heroics
Virgina Postrel discusses her run-in with Marvel over Super Heroes, and suggests that perhaps IP lawyers can be protection-wise and free promotion-foolish. 43(b)log comments.
Super Hero background.
July 05, 2006
Have A Nice Day
NY Times: 'Smiley Face Is Serious To Company' Story of the Loufrani family, which owns trademark registrations to the 'smiley face' around the world. If you have tiume to kill, you can go to TTABVue and use 'Loufrani' as a search term, to pull up dockets for its various oppositions against the likes of Wal-Mart.
The article claims that the smiley face was created by Harvey Wall in 1965 (and doesn't credit Forrest Gump). Loufrani reportedly filed in the U.S. in 1997, Wal-Mart reportedly used the mark in 1996.
June 23, 2006
You Chose TTABlog For The Writing, You'll Come Back For the Great Taste
That sweet John Welch at TTABlog displays his great sense of taste with a delicious discussion of the refusal to register orange flavor as a trademark for a medication, a decision that will no doubt leave the applicant sour, and about which drug manufacturers will probably feel bittersweet.
I'm not aware of a registration covering taste in the U.S. If you're aware of one outside the U.S., please email us. This decision reportedly states that a trademarked taste is conceivable upon a strong showing of acquired distinctiveness, but points out the logistical problems in a trademark office examining a taste.
To which I would add: the problem a proving that one taste is confusingly similar to another.
June 15, 2006
Look For MARTY SCHWIMMER Brand Legal Services
In view of this article reporting that a departing lawyer has failed to bar his former firm from using his name, based in part that the lawyer failed to show that his name has acquired secondary meaning as a trademark, I am motivated to build up as much secondary meaning in my name as possible.
To my fellow bloggers: I would much appreciate it if you could post the following:
"Gosh, the MARTY SCHWIMMER name sure is distinctive of and designates a unitary source of quality legal services."
If you are a qualified notary, or have other indicia of truthfulness, please indicate that in your post.
June 04, 2006
Comments on WEB 2.0 Dust-Up
Comment thread from Don Park's Daily Habit on WEB 2.0, HT D. Winer.
May 31, 2006
This Is What I'm Talking About Re WEB 2.0
This illustration for Tim O'Reilly's article "What Is Web 2.0?" suggests the challenge that CMP created for itself in maintaining WEB 2.0 as a trademark (as opposed to a meme). Forget for the moment whether lawyers are necessary, or whether it was bad PR for CMP to send a demand letter, or if O'Reilly, as a champion of open-source ideas, should be held to different standards, or whether somebody was rude to somebody in an email.
There is a branding and trademark protection point here.
When the ITU was filed for WEB 2.0 in 2003, WEB 2.0 was, imho, an inherently registrable mark. I base this on one fact and one assumption. The fact is that the PTO (correctly) didn't give the mark a descriptiveness objection and the assumption is that the term was not widely used in 2003 (although some dispute this). So CMP had the potential for a strong exclusive trademark.
But O'Reilly took another (understandable) tact. It promulgated the term to have universal meaning other than as an indicator of a CMP/O'Reilly product. When O'Reilly, for example, talks about WEB 2.0 principles and WEB 2.0 applications and WEB 2.0 companies, he breaks the link of meaning between the trademark and his company's services.
So, despite what Mr. O'Reilly states in paragraph of his post today, this may indeed be that rare trademark creature, genericide, but self-incurred genericide.
This can be a totally acceptable branding strategy. But the trademark lawyer has to advise the client that adopts this 'brand as buzzword' strategy that its likely result is razor-thin trademark protection, and backlash when those thin rights are asserted.
May 28, 2006
Web 2.0 v. Web 2.0
Web 2.0 t-shirt here.
Wikipedia on Web 2.0 here.
Blog of IT@Cork, organzation that received demand letter from CMP (parent of O'reilly) re use of WEB 2.0 to describe its IT@Cork Web 2.0 conference, here.
O'Reilly essay: What is Web 2.0
Most recent post from O'Reilly.
Cory Doctorow on the controversy.
IMHO, the 2005 O'Reilly piece begins and ends the discussion. If you coin and promulgate a term, you can sell it as a buzzword or you can sell it as a brand, but under trademark law, it's virtually impossible to do both. (And if I want to promote the Trademark Blog Web 2.0 Conference about protecting trademarks in the Web 2.0 space, then I will cite the O'Reilly essay as Exhibit A as to how I am using the term to describe a quality of my offering.
p.s. CMP is a trade publication specialist. It owns trademarks like VIDEOGRAPHY and CALL CENTER. Its lawyers are familiar with Section 2(f) of the Lanham Act.
Wikipedia on the term "Drinking the Kool-Aid" here.
March 16, 2006
EASY.COM Easily Registrable In U.K.
UK Patent Office decision dismissing opposition to EASY.COM in inherent registrability grounds. Decision rests on viewing the mark as a whole and not on a finding of secondary meaning. Notable finding: consumers are trained at this point to view [example].com as a trademark.
December 29, 2005
LAWYERS.COM Unregistrable As Generic Term
Citable TTAB decision rejecting application for LAWYERS.COM on genericness grounds.
Echoing TTablog, my reaction to the decision was 'coulda told you that in fewer than 29 pages' although to be fair to the Board, most of the decision is concerned with shutting down a ploy in drafting applications for [generic].com marks.
Trademarks build brands and domain names build pre-brand traffic. When it comes to generic domain names, it appears that you cannot have everything (though some of us will keep trying).
December 09, 2005
Dave Winer on Wiki
Dave Winer comments on the flap caused by Adam Curry allegedly anonymously altering the contents of the Wiki entry on podcasting. On a different point, I had mentioned earlier this week that trademark owners whose marks were susceptible to genericide would do well to monitor Wiki entries on those marks.
For what it's worth, I entered 'Wiki [trademark]' as a Google term for 10 different trademarks and got that trademark's Wiki entry as top hit 10 of 10.
October 07, 2005
'Alex Ferguson Is Devoid Of Distinctive Character'
This article from the UK's Mirror makes an inherent registrability analysis sound like disparagement.