UK Trademark Fees Change Effective October 1
The London trademark firm of MW Trademarks sets out the new fee structure for the UK trademark office, including introduction of the Right Start service.
September 30, 2009
September 17, 2009
Shocked, Shocked That There Is No Hoisin In The Hoisin Sauce - Rule 11 Sanctions Ordered
On the one hand its prudent to advise all attornies to read any decision where Rule 11 sanctions are actually awarded. On the other hand, it's hard to imagine an attorney finding him or herself in this situation.
Trademark owner, who sells hoisin sauce, prevails on partial summary judgment against infringer. Five months after summary judgment, defendant seeks to amend its answer. Hoisin means seafood and defendant has 'just' learned that there's no seafood in trademark owner's hoisin sauce. Therefore trademark owner has allegedly committed fraud on the PTO in obtaining its registration and has committed fraud in general. Judge rolls his eyes and points out that sauces are often named after what they are used with, not what they contain (think BBQ or steak sauce). Judge says in effect "I can't stop you from making this motion but I can make you sorry that you did" and specifically warns of sanctions.
So defendant defers from making the motion to dismiss in that action before that judge and instead files a new action to cancel the registration, and alleging fraud on the hoisin sauce-using public. (The first action had concluded in chief, but apparenty there is still fighting over fees). Trademark owner moves to dismiss second action, and moves for Rule 11 sanctions.
The new judge finds that as the protectability of trademark owner's registration was a litigated point in the first action, all claims were barred by res judicata and collateral estoppel. Furthermore, as defendant was aware of the ingredients of the hoisin sauce for years (given that the ingredients were on the label), the claims were also time-barred. And, as icing on the frivolous motion cake, none of the plaintiffs in the second action had standing (for various reasons).
So there you have it - claims dismissed and Rule 11 sanctions ordered.
July 28, 2009
Harry Potter and the Trademark Search
A blog does a trademark search and reports on what the planned Harry Potter theme park might be like.
March 30, 2009
Take Advantage Of The Transitional Provisions Of The CTM
OHIM has announced a reduction in overall Community Trademark Fees effective in May. The upfront fee will be raised but the back-end registration fee will be abolished. Applications filed now will have the current soon-to-be-raised upfront fee and no back end fee. Friends of the blog Mastovito Wyness explain why the time to file is now.
March 16, 2009
Anticipating a Fraudit
Registration Ruminations reports that PTO numbers regarding the withdrawal of 'inadvertently' filed documents with the PTO suggests that people are following John Welch's advice as to how to avoid a 'fraudit.'
March 02, 2009
TTAB Says No Go On Santiago
TTABlog: TTAB Dismisses Claim Invoking Unsatisfiable Santiago Trademark Convention (The Santiago Convention requires certification by an 'Inter-American Burea. Alas, there have been no IABs since 1949).
August 07, 2008
The TTAB Means What It Says About Evidence, con't
TTABlog: Evidentiary Errors Lead to Dismissal of 2(d) Opposition for Failure to Prove Prioirty:
Rule 2.120 is a bit long, but it is worth reading now and then.
April 17, 2008
Text Of Petition To Cancel FACEBOOK Registration
Aaron Greenspan, a college classmate of Mark Zuckerberg, has filed a petition to cancel Facebook's first registration for FACEBOOK, on three grounds: (1) prior rights; (2) genericness; and (3) fraud on the PTO.
April 07, 2008
Stoller Wins Procedural Motion Against Google
Latest in Stoller saga. Google went after Stoller 'alter egos' but not Stoller himself so Stoller 'intervened.' Next to last paragraph re $10,000 fine of interest.
March 12, 2008
TTAB Decision Re Attorney Signing Declarations and Fraud On The PTO
TTABlog commentary here.:
In a case "similar to Medinol," the Board granted Petitioner's motion for summary judgment on the ground of fraud as to four registrations owned by Respondent, finding that Respondent had made knowingly false statements in its Statements of Use (signed by its attorney) regarding use of its XEL HERBACEUTICALS marks on some of the goods listed in the registrations. Herbaceuticals, Inc. v. Xel Herbaceuticals, Inc., Cancellation No. 92045172 (March 7, 2008) [precedential]
March 05, 2008
Recently Filed Trademark Lawsuits
Rockbridge Capital, LLC v. Rockbridge Equity Partners, LLC
Ohio Southern District Court
Filed: March 5, 2008
Plaintiff: Rockbridge Capital, LLC, Rockbridge Capital, LLC Defendant: Rockbridge Equity Partners, LLC
Case Number: 2:2008cv00208
Stahls' Incorporated et al v. All American Supply, Incorporated
Michigan Eastern District Court
Filed: March 3, 2008
Plaintiff: Stahls' Incorporated, Stahls' Special Projects, Incorporated Defendant: All American Supply, Incorporated
Case Number: 2:2008cv10888
RVCA Platform, LLC v. Nautica Apparel, Inc. et al
California Central District Court
Filed: February 29, 2008
Plaintiff: RVCA Platform, LLC, RVCA Platform, LLC Defendant: Nautica Apparel, Inc., Does
Case Number: 2:2008cv01436
Virco Mfg. Corporation et al v. Jonti-Craft, Inc. et al
California Central District Court
Filed: February 27, 2008
Plaintiff: Virco Mfg. Corporation, Virco Mfg. Corporation, Virco Mfg. Corporation, Virco Mgmt. Corporation, Virco Mgmt. Corporation and others... Defendant: Jonti-Craft, Inc., DOES
Case Number: 2:2008cv01332
Garmin Ltd. et al v. Pacific Coast Radio, Inc. et al
California Central District Court
Filed: February 26, 2008
Plaintiff: Garmin Ltd., Garmin Ltd., Garmin Corporation, Garmin Corporation, Garmin USA, Inc. and others... Defendant: Pacific Coast Radio, Inc., David George, DOES
Case Number: 2:2008cv01305
Appulate, Inc. v. ATIN For Small Business, LLC et al
California Central District Court
Filed: February 26, 2008
Plaintiff: Appulate, Inc. Defendant: ATIN For Small Business, LLC, James E Gilmore
Case Number: 2:2008cv01314
I obtained these listings from the Justia Docket Search.
February 26, 2008
TTABlog: Recent Developments in U.S. Law May Trouble Foreign Trademark Owners"
TTABlog: Unfriendly Shores? Recent Developments in U.S. Law May Trouble Foreign Trademark Owners
Foreign trademark owners who seek registration in the United States may be troubled by several recent developments in American trademark law. The Trademark Trial and Appeal Board’s current fraud jurisprudence holds an applicant or registrant strictly responsible for false statements made to the United States Patent and Trademark Office (USPTO) regarding use of its mark on the goods and services involved, with very little room for error or innocence. Recent case law on the issue of an applicant’s bona fide intent to use a mark indicates that, if a challenge is raised in an inter partes proceeding before the TTAB, the mark owner will be expected to corroborate its assertion of such intent with documentation. And a recent federal appellate court ruling requires a foreign applicant or registrant to appear in the USA for testimony in an inter partes proceeding involving its mark.
February 03, 2008
Well, You Get Three Years To File A Statement Of Use on That 19-0 Application
Giants 17, Patriots 14.
December 19, 2007
Trademork.com: A Reminder That TESS Is A Public Database
Trademork.com is an anonymous blog scouring new filing in TESS for interesting new filings.
Background on disclosure in trademark filings here.
December 13, 2007
Neologisms
This will be interesting:
Word Mark VAJAYJAY
Goods and Services beauty, hair care and personal care products
Serial Number 77337809
Filing Date November 27, 2007
Owner (APPLICANT) Twist, New.Brand.Venture
Background here.
December 07, 2007
TTAB 2007 Update
John Welch, of TTABlog: TTAB 2007 Update
December 03, 2007
The Following Are Not Government Trademark Offices
Trademark applications are stored on publicly accessible databases. As a result, private entities can idnetify trademark applicants, and send them solicitations. Some of these solications are formatted to resemble official documents. While some solications may be for watching services, some request fees for listing on directories of no apparent merit.
We have accumulated this list by reviewing such solications and from 'warning' notices sent by other firms. We cannot comment on the legitimacy of any of the entities on this list but we can note that NONE OF THESE ENTITIES ARE GOVERNMENTAL ENTITIES and that NO PAYMENTS ARE REQUIRED TO THESE ENTITIES TO MAINTAIN TRADEMARK REGISTRATIONS OR PENDING APPLICATIONS.
American Trademark Agency
Company for Economic Publications Ltd. - Vienna, Austria
CPI (Company for Publications and Information Anstalt, and not be confused with Computer Packages Inc. of the U.S. and the Netherlands).
Globus Edition S.L. - Spain
INFOCOM - Switzerland
Publication et Information SARL - Liechenstein
Societe pour Global Edition KFT
TM-Collection Kft - Hungary
TMI Trademark Info Corporation - Texas
Trademark Renewal Service - Washington D.C.
U.S. Trademark Maintenance Service - Houston, TX
U.S. Trademark Protection Agency - Washington DC.
ZDR-Datenregister GmbH - Germany
If you have suggested additions to this list, please forward the questionable invoice to marty at schwimmerlegal dot com.
November 19, 2007
The TTAB Means What It Says With Regard To Entering Evidence
TTABlog: "New York Fails to Prove Standing and Priority, TTAB Dismisses"
(')(') <- me rolling my eyes after reading this decision.
323,527 U.S. Trademark Applications in FY 2007
USPTO: 2007 Fiscal Year-End Results Demonstrates Trent of Improved Patent and Trademark Quality.
The PTO press release also indicated that the average time for receiving a first office action was 3 months. I silently thought "really?" as I read that. Interesting how fragemented, the trademark filing business is. The largest trademark practice doesn't have 1% of the market.
August 14, 2007
Good Tip Re Using ETEAS Plus
The Trademark Office rewards use of a check-off list for identifying goods and services as opposed to free-text entry, by providing a $50 per class discount. However many new and specific goods and services aren't in the PTO's ID Manual of goods and services. Carl Oppedahl points out that you may suggest the inclusion of an identification by emailing TMIDSUGGEST [at symbol] USPTO dot GOV.
July 31, 2007
Great Moments In Mobile Trademark Lawyering
I was on the train last night. I received an email from a client asking if its application had been opposed. I used the web browser feature on the iPhone and by dint of perserverance and rapt attention to what key I was hitting, I logged onto TESS, entered the mark, looked at the TTAB status, and reported the status to the client. It probably only took ten times as long than were I doing this on a laptop (but I did receive an acknowledgement from the client before I had arrived home).
As Dr Johnson said of walking dogs and lady preachers, it's not that it's done well, it's that it's done at all.
July 27, 2007
More On Qualifications Of Deputy Director of PTO
Very long, very interesting comment thread on Volokh about the suit regarding Deputy Director Peterlin's qualifications to be Deputy Director of the PTO. Background here.
One comment: The point is made that the statute requires a background in either trademark or patent law. Does anyone know the thinking that went into this clause? It's ok to be half inepxerienced but not totally inexperienced? Or was the thinking that the Deputy Director would be a specialist in one field, and the Director the specialist in the other?
A point made on the thread was that Director Bruce Lehman, appointed by Clinton, had a copyright background, not patent or trademark, and this is correct. Lehman was followed in 1998 by Q. Todd Dickinson, who practiced both patent and trademark law, who was followed in 2000 by Jim Rogan, who, as a congressman, was a manager of Clinton's impeachment trial, who was followed by the current Director, Jon Dudas, who served six years as Counsel to the U.S. House Judiciary Subcommittee on Courts and Intellectual Property, and Staff Director and Deputy General Counsel for the House Judiciary Committee.
I asked an Administrative Law professor who might have standing in a suit challenging whether the Director abused discretion in selecting the Deputy Director, and he responded (off the cuff): "someone challenging a decision made by the Deputy Director" and then wondered whether there are such people.
July 23, 2007
Lawyers Sue PTO Over PTO Deputy Director's Qualifications
From Slashdot:
"According to the suit, filed Monday in the U.S. District Court for the District of Columbia, Congress amended the Patent Act in 1999 to require that the Director and Deputy Director of the USPTO each have "professional experience and background in patent or trademark law." Peterlin's appointment, announced May 8, violates the statute because she "lacks the requisite professional experience and background," the suit said. [...] They are asking the court to order Gutierrez to dismiss Peterlin immediately and establish rules to assess what qualifies as a professional background and experience in patent or trademark law. They also want the court to order Gutierrez to appoint a replacement for Peterlin who fulfills those requirements."
From Ms Peterlin's bio:
Before joining the USPTO, Ms. Peterlin was Counsel for Legal Policy and National Security Advisor for the Speaker of the U.S. House of Representatives, J. Dennis Hastert. In this role, she advised the Speaker, House and Senate leadership, and senior staff on legislative policy and strategy, including judiciary issues such as IP protection, and international relations issues.
She previously was General Counsel to Richard Armey, Majority Leader of the U.S. House. She clerked on the Fifth Circuit Court of Appeals for Judge Jerry E. Smith. Ms. Peterlin also served as an Officer in the U.S. Navy for four years, working in the communications field.
A native of Daleville, Alabama, Ms. Peterlin holds a bachelor of arts from the College of the Holy Cross. She earned a legal degree cum laude from the University of Chicago, where she was the founding Editor in Chief of The Chicago Journal of International Law. She is a member of the New York State Bar and lives in Virginia.
Ms Peterlin is a member of the Federalist Society.
From Alice's Restaurant:
You know, if one person, just one person does it they may think he's really sick and they won't take him. And if two people, two people do it, in harmony, they may think they're both f----s and they won't take either of them. And three people do it, three, can you imagine, three people walking in singin a bar of Alice's Restaurant and walking out. They may think it's an organization. And can you, can you imagine fifty people a day,I said fifty people a day walking in singin a bar of Alice's Restaurant and walking out. And friends they may thinks it's a movement.
July 02, 2007
A Very Comprehensive To-Do List For Brand Protection
A very long list of things to do for brand protection on the Internet, written by Erik Heels. This is a very comprehensive list - and as I read it, I think of the inhouse departments that feel that they don't have the resources for the 'gotta haves,' let along the 'nice to haves.' So I wonder: what are your thoughts about prioritizing the items on this list?
April 13, 2007
43(B)log: Recent Developments in TM Law
February 25, 2007
Carl Oppedahl on ETEAS, Paper and Madrid
Carl Oppedahl practices trademark and patent law from beautiful offices perched in the Rockies, and from that vantage point, he monitors the online infrastructure of the PTO. He maintains a listserv concerned with the Madrid Protocol (subscribe here) and posted the following, presenting interesting statistics on ETEAS, paper filings and Madrid (reprinted with permission):
"Today a client of our firm asked me "How long does it take for my USPTO applications to show up in TESS?" I did some searching to see how long it takes these days.
Used to be it averaged two weeks for an e-filed case and almost three weeks for a paper-filed case to turn up in TESS. Back in those days, a case would turn up in TARR several days before it would turn up in TESS. So a persistent searcher who wished to try very hard to learn about the most recently filed cases would do so by searching TARR, not TESS (plugging in successive serial numbers until the most recent case had been found).
Summary: These days it seems to average just under a week for an e-filed case to get into TESS. And TARR and TESS match, in the sense that anything that is in TARR is also in TESS; there is not a delay with things turning up in TARR first and then only later in TESS.
Paper-filed cases take about a week and a half to get into TESS and TARR.
Madrid cases get into TESS and TARR essentially instantly, meaning they get into TESS and TARR the same day that WIPO communicates them to USPTO.
Details: Here are some actual search results carried out today (the 25th, a Sunday). I looked for e-filed US trademark applications (1(a) and 1(b)). I looked for paper-filed US trademark applications (1(a) and 1(b)). And I looked for Madrid Protocol applications (66(a)). In each case my goal was to find the most recently filed case. I defined this as the highest-numbered serial number in each series (77, 76, and 79 respectively).
The most recent records to enter TESS and TARR were Madrid Protocol records. The highest-numbered "79" case (Madrid Protocol) was 79034226. This is a case which WIPO communicated to USPTO on February 22, 2007 (this past Thursday). Its US filing date was January 8, 2007, meaning that the time between January 8, 2007 and February 22, 2007 were spent at the Office of Origin (in this case, Sweden) and at the International Bureau. USPTO loaded this case into the USPTO databases on the same day that WIPO communicated it to USPTO.
The next previous day on which Madrid applications got communicated to USPTO was February 15, 2007, exactly a week earlier. I did not pursue this further, but the impression I get is that may be WIPO communicates Madrid cases to USPTO once a week, on Thursdays. If so, then sometimes (as today) the most recent records entered into TESS and TARR are Madrid records, but on other days of the week it might happen that the most recent records entered would be e-filed 1(a) and 1(b) cases.
The second most recent category of cases loaded into TESS and TARR (as of today) were the e-filed cases. The most recently e-filed case to be entered into TESS and TARR was a case that was e-filed at 23:58:34 EST, about a minute and a half before midnight Eastern Time on February 20, 2007 (this past Tuesday). This was application number 77112022.
The remaining category is, of course, the paper-filed cases. The most recently filed paper application to turn up in TESS and TARR was application number 76672824, filed February 16, 2007. So it took about a week and a half for that case to find its way into TESS and TARR.
What fraction of these cases were paper-filed, e-filed, or Madrid?
Of the 1(a) and 1(b) cases (US origin cases) that were filed February 16, 2007, the answer is that just over 95 percent were e-filed and just under 5 percent were paper-filed. This was on a day that there were 1182 US-origin cases filed. On that day, of the 1182 cases filed, 52 were paper-filed and 1130 were e-filed.
At around the same time, a weekly data load from WIPO amounted to 215 cases. This suggests that the workload of the USPTO trademark law offices is lately averaging maybe ten percent Madrid work and maybe ninety percent non-Madrid work."
February 15, 2007
Complaint In Burning Man Trademark Case
January 24, 2007
Pepsi Brings Your Ancestors Back From The Grave
Moronland.net: "Top 13 Worst Slogan Translations Ever" Most of these have been around a while but still worth the 30 seconds.
Note to Trademark Attorneys in non-English speaking jurisdictions: We will happily advise if your client's trademark translates into an obscenity in English.
January 17, 2007
iPhone: Section 8's Day In The Sun
Note to self: never submit a specimen of use I wouldn't want to see questioned on the editorial page of the Wall Street Journal.
A trademark owner has to submit a Section 8 affidavit in the sixth year of the registration term. The affidavit has to state that the owner is using the mark or is not using for good reason (as in, factory burned down).
It may also submit a Section 15 affidavit at that time, which states that the mark has been in continuous use for 5 years. A Section 15 is optional, but it brings important statutory benefits.
As indicated here previously, Cisco filed a Section 8 use affidavit but not a Section 15 affidavit, by the May 06 deadline, for its iPHONE registration. What appears to have occured is that the original iPhone product was taken off the market, use was interrupted, and resumed no later than the Dec 06 re-introduction. The technical issue would be: was Cisco making trademark use in May 06 when it filed the Section 8.
ZDNet took a look at the specimen for Cisco's Section 8 (detail pictured above - the full specimen is available through TDR at USPTO.GOV) and noted that it appears to consist of an iPhone sticker slapped on a box for a pre-existing product. It implies that Cisco fabricated the specimen, which allegation Cisco has addressed.
I emailed the author about errors in the article (including the assertion that Cisco needed to prove continuous use). I tried to make the point that it's not possible for an outside observer to come to any certain conclusion as to the validity of Cisco's filing. I did make the point that Cisco was ably represented when it filed, and it would have been crazy to fabricate use when (1) it knew Apple was watching; and (2) it could have claimed excusable non-use. My comments were included in this follow up ZDNet story (which article, in my view, muddies the issue in its use analysis. That Cisco didn't 'ship' a product until Dec. 06 is relevant to an analysis of the strength of Cisco's rights but not necessarily relevant to whether Cisco met technical user requirements in May 06).
A traditional view of trademark use is that the trademark user has to be able to take orders, but not necessarily fulfill orders, to satisfy trademark use requirements on a particular date. A classic example would be trademark use with regard to airplanes or oil tankers, where the order is placed years before the product is shipped. So given the expansive definition of use, it's hard for an outsider to come to a definitive conclusion as to Cisco's May 06 activities.
I thought that was that and didn't blog it.
Well, today's Wall St Journal editorial page contains a piece entitled "iFoodfight." It is an interesting essay that makes the point that litigation is the continuation of business by other means (and sort of implies that Apple is the moral favorite here). it also notes that:
"What's more, ZDNet, the online news service, examined the paper trail and finds that Cisco may have failed to meet a six-year deadline to show it was making use of the trademark. Cisco did submit something just before an additional six-month grace period ended, but -- according to ZDNet, which backs up its report with a photo -- the filing consisted of slapping an "iPhone" sticker on a box for its Linksys Cordless Internet Telephony Kit."
Well, if push comes to shove, then maybe someday Apple will put Cisco to strict proof and Cisco will have to explain the circumstances behind the specimen. Cisco did or did not satisfy Section 8 requirements. But in the short term, the ZDNet article, and the WSJ citation of it, creates an unfair inference. A sticker on a re-named box is not itself per se evidence of fraud.
Real note to self: don't submit an affidavit to the PTO that you aren't prepared to explain under cross.
Aside: There may be profound issues here regarding (1) the mainstream press reporting on technical legal issues and (2) lawyers speaking to the mainstream press about technical legal issues, but I will leave those for future posts.
January 09, 2007
Reuters: Cisco Expects Apple Agreement On iPHONE Trademark
Reuters:
NEW YORK, Jan 9 (Reuters) - Cisco Systems Inc. (CSCO.O: Quote, Profile , Research) said on Tuesday it expected to reach an agreement with Apple Computer Inc. (AAPL.O: Quote, Profile , Research) later Tuesday on its "iPhone" trademark after Apple unveiled a mobile phone with the same name.
Cisco spokeswoman Penny Bruce said the two companies had been in discussions, and it believed that Apple intends to agree to a final document and public statement concerning the trademark.
"We expect to receive a signed agreement today," she said.
Linksys, a division of Cisco, has launched several wireless products with the iPhone name.
HT Jay.
January 02, 2007
Feel For The Velvety Label In Your Local Wine Shop
In June '06 I blogged that I was aware of one 'tactile' trademark, a German registration for a word in braille. Now I'm aware of two tactile trademarks. The INTA newsletter advises that U.S. Reg. No. 3155702 has been issued to American Wholesale Wine & Spirits, in connection with KHVANCHKARA wine. The description of the mark is "a velvet textured covering on the surface of a bottle of wine."
Questions:
1. What type of texture on the surface of another bottle of wine would be confusingly similar?
2. Would this be confusingly similar to VELVET TOUCH Wine (were such a thing to exist)?
3. Would this be confusingly similar to BLACK VELVET Scotch, sold in a velvet sack?
HT and Happy New Year to JW at the TTABlog.
November 21, 2006
Trademark Rights On The Moon
KFC has unveiled a new logo. It has constructed an extra large version in the Area 51 desert in Nevada. It is claimed that this is visible from space. I read once that the Great Wall of China is the only man-made feature visible from space. Well, now there's two. If mere appearance of a mark in a jurisdiction constituted good trademark use, then this usage may give rise to protectable rights on the moon. However most jurisdictions require at least the potential to fulfill an order in that jurisdiction, if not an actual sales (this is why transmitting mere advertisements into a jurisdiction without more, is problematic for claiming rights). Therefore, someone might still be able to beat KFC to the moon.
October 06, 2006
District Court: PTO Abused Discretion Re LAST BEST PLACE
September 26, 2006
Note To Dave Winer re iPod
You're right, the monkey is wrong. Either you or the monkey would have had to either have used the IPOD mark in commerce, or filed a trademark application prior to Apple. We assume that the monkey acted as your agent. We would be conflicted out of advising you in matters where the monkey's interests are adverse to yours, as the monkey has already retained us.
Monkey with iPod photo from here.
September 21, 2006
Abacus Instruction, Ballet Schools . . . Yacht Clubs, Zoos
September 14, 2006
Warning Re: Laundry Lists On US Applications
After 1989 when the U.S. allowed Intent to Use applications (which required a declaration as to bona fide intent to use), some practitioners worried that applicants with huge laundry lists of goods and services, had potential fraud exposure if it could be shown that there had never been a bona fide intent to use on ALL those goods and services, particularly since the penalty would be cancellation of the ENTIRE registration. Non-US applicants were particularly vulnerable as their 'registered rights only' regimes encouraged massive filings.
The years passed without significant jurisprudence on this point.
Then, as Jonathan Moskin documents in his article "Fraud Alert: Applicants for U.S. Trademarks Beware When Specifiying Goods and Services!" in the September 1 issue of the INTA Bulletin there has been a trend towards the TTAB enforcing a strict interpretation of the fraud rules, since its decision in Medinol v. Neuro Vasx, 67 U.S.P.Q.2d 1205 (TTAB 2003).
The article raises many issues, including:
- the tendency of the TTAB to designate decisions as not citable or for publication is obscuring the extent to which the TTAB is apllying the Medinol decision; and
- the Madrid Protocol is perhaps aggravating the situation, as non-US applicants are using their 'broad' home country application as bases for filing, and not communicating with US counsel prior to filing.
The result is that there are many broad applications at risk of rejection or cancellation.
September 13, 2006
Trademark Application Blows LonelyGirl15's Cover
There's some hub-bub this week re LonelyGirl15, subject of a series of popular videos on YouTube , who turned out to be not a lonely girl but an actress, and the project was in fact a 'pilot' for what might become a movie (coverage here and here). One of the tips that led sleuths to the creators was this application that was filed in the (individual) name of a lawyer connected to the project:
LONELYGIRL15
Goods and Services IC 038: Broadcasting programs via a global computer network.
FIRST USE: 20060524. FIRST USE IN COMMERCE: 20060524
Serial Number 78957059
Filing Date August 21, 2006
Current Filing Basis 1A
Owner (APPLICANT) Goodfried, Kenneth INDIVIDUAL UNITED STATES . . . . CALIFORNIA 91316
July 18, 2006
Stoller Sanctioned
June 27, 2006
NameProtect's Trademark Insider
NameProtect's Trademark Insider for the 1st quarter '06 is out. Highlights include:
-70,860 U.S. trademark applications were filed, up 10% over the comparable period in '05.
-Greenberg Taurig filed the most applications among law firms (542).
-Mattel filed the most applications among companies (230).
It's interesting how fragmented this field is. The largest player has less than 1% market share.
June 06, 2006
PLI Paper On TTAB Practice
PLI Course Handbook Paper: "TTAB Practice" by Judges Simms, Sams, Bottorff and Walters.
April 20, 2006
Why Did I Get A Demand Letter If I Was Allowed To Incorporate Under That Name?
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.
April 15, 2006
Deceptively Misdescriptive Decision
April 06, 2006
Should TTAB Charges $100 For More Than 30 Day Extension Requests?
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.
April 04, 2006
'Residual Reputation' Case re LUCKY For Supermarkets
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.
'How To Unmask An Anonymous Blogger'
Law.com: 'How to Unmask an Anonymous Blogger.'
March 29, 2006
Stoller To Host Reception At '07 Chicago INTA
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.
March 27, 2006
Can Marvel and DC Both Own The SUPER HERO Trademark?
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.
March 17, 2006
Most Interesting Trademark Application I've Seen Recently
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.
March 07, 2006
New Blog From Oblon On TTAB Rules
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."
February 28, 2006
Will The PTO Do Something About Stoller/Sentra?
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?
February 16, 2006
Can A Fake Product Have A Real Trademark?
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.
February 10, 2006
More On 'Trademark Attribution For Dummies'
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.
January 16, 2006
More On Registry-Watching: Apple Files For MOBILE ME
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.
January 11, 2006
Has Stoller Filed 275 (Now 300) Extension Requests?
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.
December 19, 2005
Katrina Blows, Bush Sucks, Examiner Rejects
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.
October 18, 2005
Apple Files For VINGLE and Disclosure Through Trademark Filing
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."
Man Bites Dog: Trademark Fees Fall
Due to efficiency gains, OHIM, the Eurpoean Community trademark office, is lowering prices of Community Trademarks. You read that right.