The Trademark Blog

I hear this every so often, usually in the context that the corporate lawyer who created a legal entity told the client that the name of the business was available, which meant that it was available as a corporate name in that state, but which the client understood to mean, simply, available.

The problem is that a corporate name is the name that the Secretary of State (which oversees incorporation in a state), allocates to a legal entity, after conducting an idential or near-identical search of the name, in that state. The availability of a corporate name means only that there is no other legal entity by that name in that state, and there is no trademark significance to this fact (a Secretary of State will apply some other restrictions to naming, usually relating to words associated with regulated entities such as banks or insurance, but thats besides this particular point).

Sometimes the Secretary of State will prohibit you from incorporating under an obviously problematic name, such as Coca Cola LLC, but the state will not conduct a likelihood of confusion analysis for corporate names. And they search the registry in their state, not all states. They are only concerned that tax bills and process gets served on the right corporation. Note: I am not referring to state trademark registries - I am talking about state corporation registries.

So you may be the only Acme Widgets, Inc. in California, but if there is a Rhode Island entity (incorporated or unincorporated) that started selling ACME brand widgets before you did in interstate commerce, you may have problems (and that you incorporated as Acme Widgets, Inc. two years ago will be no defense).

The good 'how to start your business' literature does address the corporate name/trademark distinction. I have only anecdotal evidence about how widespread is the misperception (and, to steal a saying I heard recently, the plural of anecdote is not data). I would imagine that lawyers who do a fair amount of incorporation work know to advise that unless a trademark search is performed, they are not clearing a name for trademark use (a disclaimer that a client may forget three years later when they get the demand letter). BLATANT PITCH TO CORPORATE LAWYERS - CONTACT US FOR YOUR TRADEMARK CLEARANCE AND FILING NEEDS.

I'm in favor of more education on this point, directed to the clients and the corporate law bar and the Secretaries of State, because it will lead to fewer nasty surprises and of course because it will lead to more clearance work for trademark lawyers.

The Australian Government has started addressing this issue. It has issued a report on the conflict between business names and trademarks here. Its proposals are discussed by Warwick Rothnie here.

Update: As I said, the good 'how to start a business' literature discusses this: 'What Do You Mean I Can't Use My Corporate Name' from Riker Danzig.

Posted by Marty at 09:42 AM | Permalink

TTABlog: TTAB affirms refusal of SEPTEMBER 11, 2001 as Deceptively Misdescriptive.

Posted by Marty at 02:17 PM | Permalink

Stoller has now filed more extension requests than Barry Bonds' and Babe Ruth' combined home run total. One applicant moved the TTAB to revoke the extension and the Board denied the motion, ruling that an extension as of right is an extension as of right.

TTABlog suggests a procedural step - make only the first 30 days free - charge a fee from then on.

My reaction - the issue isn't 1500 extension requests - the Board is right, an extension as of right is an extension as of right. The issue is the mailing of 1500 letters using, imho, extortion-like language - asking for $10,000 based on allegations of common law usage of, by now, 1500 different marks (which happen to be confusingly similar to marks all of which were published over the last four months). And I would have to speculate that someone, sooner or later, will send him money.

It isn't an issue for the TTAB - it's an issue for the FBI.

Posted by Marty at 09:38 AM | Permalink

SacBee: 'Name's Not So Lucky For Grocery Outlets' (Albertson's sues supermarket using LUCKY mark despite reportedly stopping use of mark six years ago).

Finnegan Henderson article on goodwill in 'abandoned' trademarks.

Posted by Marty at 10:45 AM | Permalink

Law.com: 'How to Unmask an Anonymous Blogger.'

Posted by Marty at 10:10 AM | Permalink

No, just joshin'. But Stoller has written to TTABlog about his recent filing of hundreds of extension requests, putting the arm on perhaps a thousand applicants by now, asking each for thousands of dollars.

You know, if a homeless person had camped out in front of the PTO for four months and hassled each person entering the building for $5, the PTO might have called the cops by now.

Posted by Marty at 09:14 AM | Permalink

Los Angeles Times column against claim by Marvel and DC in SUPER HEROES trademark.

I've discussed the potential issues re the SUPER HEROS trademark here in 2004, the last time the issue made news. In (brief) response to the emails I'm receiving from readers on this: (1) Despite the text book definition of a trademark as a symbol designating a single source, two or more otherwise unrelated entities can own a trademark registration (the SWISS ARMY KNIFE mark being perhaps the best known mark that exemplifies this); (2) Registration 1179067 exists and is more than five years old, which means that various presumptions flow in Marvel/DC's favor.

Posted by Marty at 09:50 AM | Permalink

Word Mark NOSE PLAY

G & S: Computer peripherals and computer software used in connection with computer peripherals in connection with a computer video games to dispense scent and fragrance at appropriate times during the play of the video game; electrical connectors for use with video game programs and for use with personal computer hardware

IC 028. US 022 023 038 050. G & S: Hand held unit for playing video games

Serial Number 78703330

Filing Date August 30, 2005

Owner (APPLICANT) International Flavors & Fragrances Inc.

Posted by Marty at 07:39 PM | Permalink

The Oblon Spivak firm has started the TTAB Rules Blog, the title not being a claim of superiority on behalf of the TTAB, but rather a commentary on the rules package recently proposed by the Board. From the intro:

". . . The rules package published on January 17, 2006 is quite extensive, some 12 pages in length, and comments to the proposed rules must be filed with the USPTO by March 20, 2006.

The proposed rules are likely to have a serious and negative impact on the ability of trademark owners to solve trademark issues before the Board in a cost-effective manner. We are concerned that the new rules will encourage more trademark owners to resort to the federal courts, as the procedures at the Board will become far more cumbersome, with increased costs to the parties.

We believe that further time is needed to carefully evaluate the impact of the new rules, and former TTAB Judge David Kera appeared before the Trademark Public Advisory Committee (TPAC) earlier this week and encouraged the PTO to extend the public comment period, and to hold hearings on the proposed rules. The PTO has not yet decided whether to extend the deadline, or whether to hold public hearings, and we encourage you to request that the Board do so."

Posted by Marty at 06:36 PM | Permalink

When things are slow, go to TTABVUE and put in 'Sentra' as a search term, to pull up the applications that Leo Stoller has filed extension requests to oppose. He appears to have 25 requests approved this week alone.

It is my understanding that Stoller is sending out requests for $10,000 to these applicants. One of my clients has received such a letter (the letter also notes that to defend a TTAB proceeding would cost $150,000).

I have been told that Stoller has filed 500 extension requests since November.

What are the odds that someone would have superior trademark rights to 500 of the marks that have been published for opposition since November?

What is the duty of the PTO to protect trademark applicants from, for want of a better term, something that appears to be a scheme?

Posted by Marty at 04:43 PM | Permalink

Oasys Mobile maintains the PHEROTONES site to promote ringtones that (like pheromones) arouse the listener. This NY Times article details how PHEROTONES are a fake product, part of a viral marketing strategy (which seems to be working).

Now, assuming that the joke takes off and the PHEROTONE name acquires some value. Can a 'fake' trademark be used in commerce?

The answer is that the 'fake' trademark will need to be used with real goods or services. In this case, it appears that Oasys is using PHEROTONE to promote its 'real' ringtones.

Not as fortunate was the applicant in this TTAB appeal for the mark AUTHENTIKRUD, which was the name of a fake product intended to promote applicant's catalog services. In rejecting the application, the TTAB articulated a two part fake mark test: (1) the consumers have to get the joke; and (2) they have to perceive the joke mark as promoting the 'real' services.

Posted by Marty at 10:00 AM | Permalink

By this point, I feel bad for the person at Wiley who wrote the letter protesting the use of ____ FOR DUMMIES in a blog post title. BuzzMachine is now organizing a protest encouraging bloggers to end their posts with a FOR DUMMIES. Details here.

Background here.

Without speaking to this specific case - many owners of trademarks send out letters motivated by a speculative theory that unattributed non-commercial use of their trademarks dilute the value of their trademarks. In the era of the blogosphere where lawyers letters get posted and linked to, some trademark owners may be trading the possibility of dilution for the reality of tarnishment.

Posted by Marty at 11:36 AM | Permalink

We've run several items on registry-watchers who speculate on coporate moves based on trademark filings. This week there is coverage of Apple's application on MOBILE ME (from which it is inferred that Apple will bring out an IPOD phone). Some corporations deliberately file trademark applications in the 'dummy' names to frustrate this practice (See discussion here). Apple, for whatever reason, filed its first application for MOBILE ME in Hong Kong back in July, claiming the July priority date in the U.S. pursuant to the Paris Convention.

Posted by Marty at 12:36 PM | Permalink

There is a rumor that Leo Stoller, in the name of Sentra Industries, has filed upwards to 275 extension requests over the past few months to oppose recently published applications. I've seen one such request, and it provides a telephone number to call if you want to send money to XYZ Brand Licensing, where XYZ is part of the published mark. And XYZ doesn't appear on Stoller/Rentamark's 20 page list of the trademarks it purportedly owns.

The TTAB charges $300 in filing fees per class per opposition so good luck on those 275 oppositions.

Question for discussion: What to do? One attorney said to me: The TTAB won't want to intervene because they're not in a position to decide which if any of the 275 are legit.

I agree that the TTAB may not be in a position to take dispositive action for this reason. However, isn't it possible that among these 275 are applicants who don't read the Trademark Blog or TTABlog, and don't know the background, and may cough up money? Based on what we know of judicial decisions against Stoller in the past, we have a reasonable apprehension regarding these requests for payments.

The Trademark Office is the government agency tasked with the administration of the trademark system, and it may be argued that within its duties is an obligation to protect applicants from this sort of thing.

At a minimum, could the TTAB send an informational bulletin to applicants who have received extension requests from Sentra?

UPDATE: I am told that as of January 10, recent filings have approached 300. Also, some requests have been filed in the names of Central Mfg. Co. or Inc.

Wikipedia entry on Stoller here.

Posted by Marty at 10:15 AM | Permalink

Go to the Trademark Search site and look up serial number 78706886 for the mark KATRINA BLOWS, BUSH SUCKS. Go to TDR and look at the office action rejecting the mark on 'sandalous and disparaging' grounds.

Coupla points:

1. How come this application got an office action after two weeks, when every other application waits seven months?

2. Note the usual interesting interplay between free speech and section 2(a).

3. Is 'sucks' that scandalous and disparaging these days?

4. The thought of the applicant getting the President's consent is, uh, funny.

5. Note the last name of the examining attorney.

UPDATE: It has been brought to our attention by a reader who apparently has too much time on his hands that this same examiner has rejected the application LIAR LIAR BUSH ON FIRE. Shouldn't she recuse herself?

Hat tip: JW.

Posted by Marty at 03:58 PM | Permalink

MacDailyNews.com and other Apple rumor blogs report that Apple filed on October 7 for the name VINGLE.  Why do I post that?  Because it illustrates the growing trend of 'registry-watchers.'

On a related topic, The Privacy and Security Law Blog of the Davis Wright Tremaine firm has recently posted 'Inadvertent Disclosure of Business Secrets Through Intellectual Property Filings."

Posted by Marty at 08:25 PM | Permalink

Due to efficiency gains, OHIM, the Eurpoean Community trademark office, is lowering prices of Community Trademarks. You read that right.

Posted by Marty at 08:15 PM | Permalink