Tips from the Trademark Insider: Keep Records of Key Information Concerning Your Trademarks.

Keep records of relevant information relating to your trademarks. If your mark is ever challenged, it will be helpful to have evidence of use and records relating to the first use date for each of the associated goods/services. “First use” has a legal definition.

With respect to goods, “first use” means the date when the goods bearing the mark are actually sold or transported in commerce. “First use” with respect to services means the date the mark is used or displayed in the sale or advertising of services and the services are rendered in commerce.

The Trademark Company

Tips from the Trademark Insider: Keep your trademark portfolio updated.

An increasing number of registrations in the U.S. Patent & Trademark Office (“USPTO”) are being canceled due to inaccurate descriptions of goods/services, inaccurate dates of first use, and other relevant information included in the application, registration and post-registration process. For example, in one recent case the USPTO canceled a registration based on an inaccurate statement of use that included clothing items for men, women and children when, at the time the applicant filed the statement of use, the mark was only being used on women’s clothing and accessories. Although the registrant attempted to eliminate the erroneous goods at a later date, the USPTO still found fraud against the Office stating that a subsequent attempt does not remedy the fraud at the time the statement of use was filed. Therefore, before signing any paper before the USPTO, or having your representative do the same, be certain that all information is accurate and current. In other words, conduct a thorough investigation to ensure the mark is actively being used on each and every good and service listed in the application or registration and that the first use date is accurate.

The Trademark Company

1 Day Referral Contest: Win $100

Whoever refers us the most trademark applications today will win $100. We will notify the winner of the contest today via Facebook and Twitter.

The Trademark Company

Tips from the Trademark Insider: Codify All Licenses in Writing.

Whenever you or your company allows others - such as members, chapters, affiliated entities, or endorsed vendors – to use you or your company’s trademark(s), name, logos, copyrighted works, or other intellectual property, put the terms and conditions of the license in writing. While oral or implied non-exclusive licenses can exist, they can be difficult to interpret, difficult to enforce, limiting in nature, and otherwise problematic for you or your company.

The Trademark Company

Tips from the Insider: Register Your Copyrights.

Register your association's Web site, publications and all other important, original, creative works (that are fixed in any print, electronic, audio-visual, or other tangible medium) with the U.S. Copyright Office. While such registration is not required to obtain and maintain a copyright in a work, it is a prerequisite to filing suit to enforce your rights and confers other valuable benefits. Copyright registration is a very simple and inexpensive process and assist in the overall protection of your intellectual property rights.

The Trademark Company

Tips from the Trademark Insider: Register Your Trademarks.

Register your association's name, logos, slogans, certification marks, and all other important marks with the U.S. Patent & Trademark Office. It may seem obvious to some. But it is actually not as well-known of a concept as you think.

While federal registration of your marks is not required to obtain and maintain trademark rights, it can be extremely helpful in enhancing and enforcing them.

The Trademark Company

Tips from the Trademark Insider: Keep Your Trademark Portfolio Updated

An increasing number of registrations in the U.S. Patent & Trademark Office (“USPTO”) are being cancelled due to inaccurate descriptions of goods/services, inaccurate dates of first use, and other relevant information included in the application, registration and post-registration process. For example, in one recent case the USPTO cancelled a registration based on an inaccurate statement of use that included clothing items for men, women and children when, at the time the applicant filed the statement of use, the mark was only being used on women’s clothing and accessories. Although the registrant attempted to eliminate the erroneous goods at a later date, the USPTO still found fraud against the Office stating that a subsequent attempt does not remedy the fraud at the time the statement of use was filed. Therefore, before signing any paper before the USPTO, or having your representative do the same, be certain that all information is accurate and current. In other words, conduct a thorough investigation to ensure the mark is actively being used on each and every good and service listed in the application or registration and that the first use date is accurate.

The Trademark Company

Tips from the Trademark Insider: Use Your Trademarks Properly – Part II

Never use your trademark as a product descriptor. In so doing, you will give an infringer an argument that you have admitted that your mark is descriptive and of limited scope. If the mark has a propensity to be used as a product descriptor, it is a good idea to follow the mark with the generic name of the product. For example, instead of saying, “Our Widgets are awesome,” say, “Our ‘WIDGETS®’ brand kitty treats bites are awesome.” For instance, to prevent its mark from becoming generic, Kimberly-Clark refers to its products as “KLEENEX® tissues” or even “KLEENEX® brand tissues.”

The Trademark Company

Tips from the Trademark Insider: Use your Trademarks Properly – Part I

Are you aware that you can actually dilute the value of your company’s trademarks by improperly using them? If a mark is not federally registered, use the “TM” or “SM” designation with the mark until it achieves registration. Once it’s registered, always use the "®" designation. If you use the mark in a textual sentence, place it in all caps, surround it with quotations, and use the proper designation to the right of it. By doing this, everyone who sees it will know that you claim trademark rights and others should choose a different mark.

The Trademark Company

Tips from the Trademark Insider: Make Sure You Own or Have Permission to Use All Intellectual Property

Ensure that you or your company owns or has appropriate permission to use all intellectual property (e.g., text, graphics, photos, video) that is used in your publications, Web site, and in all other media. More copyright problems arise in this area than any other. You may have conceived the idea, supervised the work's creation, and paid for it, but that does not mean you own the work. You may have only a limited license for a specific use. When you wish to use the work on another project or in another medium, you may learn that a separate fee and permission is required.

The Trademark Company

Tips from the Trademark Insider: Agreements with Employees of Other Company Employees

Obtain a written assignment from all employees or otherwise assigning ownership of all intellectual property that they create (within the scope of their service to the company) to the company. Such a form also can be used to impose confidentiality obligations on employees or otherwise and to require conflict of interest disclosure.

Such terms are typically added to an Employee Manual or the like and distributed on the first day of an employee’s employment with the express provision that employment is subject to the acceptance of all terms and conditions maintained in the agreement.

The Trademark Company

Tips from the Trademark Insider: Obtain Domain Names

Obtain domain name registrations for all available trademarks you own or plan to use in the future, and pursue obtaining registrations from others (i.e., domain name disputes) if you or your association has superior rights to the domain name.

The Trademark Company

Tips from the Trademark Insider: Police the Use of Your Intellectual Property.

Police the use of your copyrights and trademarks by others and enforce your rights where necessary. Use periodic Web searches, among other means, to do so. Enforcement does not necessarily involve the filing of a lawsuit. It does involve knowing who is out there, what they are using, and whether what they are using infringes upon any of your rights.

The Trademark Company

Tips from the Trademark Insider: Beware of "Domain Name Search Engine Submission Services"

Yesterday we here at The Trademark Company received the attached "Important Notice" concerning submitting one of our background domain names to search engines. Should anyone else out there receive similar notices please note that this is not a notice that your domain name is expiring nor is a response required prior to the requested reply date.

This is merely an advertisement for a company's services done, in our opinion, under the false pretense of necessity.

As always, if you have any questions on this or any other matter email us or just post a reply to our blog.

The Trademark Company

Tips from the Trademark Insider: Use Trademark Notices.

Use trademark notices on all trademarks, service marks, and certification marks owned and used by your association (e.g., TM for non-registered marks and ® for registered marks). While trademark notices are not required, their effective use can significantly enhance your intellectual property rights, including eliminating an "innocent infringement" defense.

The Trademark Company

Fraud Alert: Asian Domain Name Registry Services

For Immediate Release.

Purportedly reputable domain name registrars from Honk Kong and other Far East countries are using a new scheme to drum up domain name registrations among U.S. Trademark registrants.

How it works. U.S. Trademark registrants receive an email from a domain name registrar reporting that they have received an order to register domain names with various TLDs corresponding to the registrant’s registered U.S. Trademarks.

The registrar then reports to the registrant that in searching the U.S. Patent & Trademark Office’s records they “discovered” that the domain names to be registered are identical or highly similar to the trademark holder’s marks.

The registrar then offers the trademark holder the option to register the domain names before the other party does. Unsuspecting trademark holders take the registrar up and register multiple domain names under this veiled threat often for U.S. $50 to U.S. $100 per domain name per year.

In reality this is, at best, a hard marketing sale. At worst, it is a complete scam.

The genius of the plan is that if due diligence is conducted the alleged company referenced in the domain name registrar’s email as the entity which is about to register the domain names actually exists. So the trademark holder believes that their may be an actual threat to their marks.

However, having now witnessed this hundreds of times this routine is truly just a hard sell and U.S. Trademark holders should be aware of this fact before rushing to register such domain names under such an artificial threat.

The Trademark Company

Disabled Vet Files Suit Against GMA ABC Alleging Trademark Infringement

Joseph “Sam” Sammartano, the former U.S. Army Policy Development and Training Officer whose designs are used today worldwide to counter terrorism and more, is suing ABC/Disney alleging they used the trademarked phrase AmeriCAN® without his permission. It was used during a segment on the popular Good Morning America broadcast during the week of Sept. 28, 2009.

The complaint, filed by D. Yellen of Ballon Stoll Bader & Nadler P.C. NY, in New York City Federal Court (Docket # 09CV9318), alleges, “The acquired mark of the defendant is so similar to the plaintiff as to be unquestionably be the product of a scheme of deliberate copy by the defendant. As such it is highly likely one or more of the defendants acted in concert (and) with knowing intent…” Paragraph # 17 of the complaint identifies cases of the alleged infringement of the registration AmeriCAN® mark.

“No single brand, trademark or word can make all 300 million citizens react. Every person in the U.S. has a direct kinship with this word, and is perhaps the most recognized brand in the entire world by its name alone. I did not create, nor was I compensated or inspired to design the AmeriCAN® trademark for any entertainment company, especially for their own good. I created it to help protect all people, inspiring students, parents and teachers through a not for profit organization,” said Sammartano.

Jack Campaign of Graham Campaign who notified ABC of the complaint by registered mail stated, “I would only point out at this time that the test of infringement is not whether the marks are identical, but whether they are confusingly similar."

According to the complaint, MediaBistro.com numbers show GMA’s market share actually increased while airing the AmeriCAN® segment -- Click here: Morning Show Ratings: Week of September 28 - mediabistro.com: TVNewser

“There is no justice in this world, there is just us!” Sam states. “Everyone should visit the American Challenge.org (www.americanchallenge.org) for your sake. Call ABC and show corporate America who you are: I CAN, You CAN, We CAN because we are AmeriCAN®.”

The Trademark Company

Who's Your Patty? Who's Your Patty? - Not McDonald's!

The Lion's Tap restaurant settled its trademark infringement lawsuit against McDonald's over the mega giant's use of the slogan "Who's Your Patty?"

"It's our trademark," said Bonnie Notermann, co-owner of the Eden Prairie restaurant, and "we will be using it."

Lion's Tap filed the lawsuit in federal court in August, claiming the slogan it had used since 2005 had been used by the company to launch its Angus burger.

A notice was filed today in Minneapolis federal court stating that the suit had been settled. "We reached a mutually satisfactory resolution," said Michael Lafeber, attorney for Lion's Tap. "I won't go into the details."

"The matter has been resolved," McDonald's said in an e-mailed statement. "Both parties reached a mutual satisfactory agreement. The terms of that agreement are considered confidential."

Notermann said she also could not go into details, other than to say that Lion's Tap -- which has a single location on Flying Cloud Drive in Eden Prairie -- is keeping the slogan and that it is not lending it or leasing it to McDonald's, the world's largest food-service retailer with more than 31,000 restaurants worldwide.

Does that mean McDonald's will stop using the slogan? "Draw your own conclusions," said Notermann.

Although neither side disclosed how much, if any, money changed hands, Lion's Tap was seeking exclusive use of the phrase and also monetary damages from McDonald's.

However, the stipulation of dismissal filed in federal court indicates the victory might not have been a roaring success financially for Lion's Tap.

"All claims ... are dismissed with prejudice and without costs and disbursements of attorney's fees to either party," Thursday's filing stated.

Lion's Tap, a Twin Cities institution among food aficionados, filed the lawsuit after its owners noticed that McDonald's was using "Who's Your Patty?" in billboards and ads in Minnesota and around the country.

The Trademark Company

Get Up, Stand Up, Defend Your Trademark Rights

Bob Marley's heirs are waging a global war on trademark pirates.

Heirs of the Jamaican reggae legend are plunging into the global trademark wars, seeking to enforce their exclusive rights to an image that has grown steadily in scope and appeal since the Jamaican superstar died of brain cancer in 1981 at age 36.

The Marley name, look and sound are estimated to generate an estimated $600 million a year in sales of unlicensed wares. Legal sales are much smaller - just $4 million for his descendants in 2007, according to Forbes magazine. The Marleys refuse to give a figure.

Now the family has hired Toronto-based Hilco Consumer Capital to protect their rights to the brand. Hilco CEO Jamie Salter believes Marley products could be a $1 billion business in a few years.

"The family managed all the rights before Hilco was brought on board," said Marley's fourth son, Rohan - a former linebacker for the University of Miami. "We didn't have a real good grasp on the international scope prior to Hilco, nor the proper management."

The turn to big business has stirred some grousing from die-hard fans in Internet chat rooms, who say it goes against the grain of a singer who preached nonmaterialism and popularized the Rastafarian credo of oneness with nature and marijuana consumption as a sacrament. But it is doubtful that this crew will be vocal for long, after all, they need to go to the store soon to get cookie dough.

Lorna Wainwright, who manages a Kingston studio and music shop called Tuff Gong, Marley's nickname during his boyhood in a nearby slum, backed the move, saying "the world needs the Bob Marley police."

"It's a free-for-all out there with all the fakes, all the piracy," she said. "It's important to continue getting his real message out like when he was alive because the world is in a crisis and Bob Marley's lyrics provide a solution." Translation - pay the man.

Rather than focusing on street vendors, who hawk everything from Bob Marley T-shirts to beach towels, the partnership is creating a new line of products dubbed "House of Marley" and will police the trademark vigilantly.

"You're never going to stop the guys in the streets, flea markets ... but you try as much as you can," said Salter.

Snowboards and tropical Jamaica may seem an odd pairing, but they're among a wide variety of planned merchandise featuring the dreadlocked musician's image, name or message - backpacks, stationery, headphones, musical instruments, restaurants. What no, err, pipes?

Items are expected to hit the market in mid-2010.

The Trademark Company

Rosetta Stone: Can It Unlock the Secrets of Trademark Infringement?

Language education company Rosetta Stone Inc. and rival Topics Entertainment Inc. sued each other this week alleging trademark infringement and seeking a declaration of non-infringement over use of yellow boxes with black lettering.

Renton, Washington-based Topics Entertainment Inc. filed suit Monday in U.S. District Court for the Western District of Washington. Topics wants the court to declare its use of yellow boxes with black lettering on its language software, along with images of blue icons and smiling people, does not violate any rights held by Rosetta. It also wants the judge to declare that its use of the phrase ''As effective as Rosetta Stone for a fraction of the cost!'' is not false advertising. It also asks for attorney's fees and other costs of the suit.

The following day, Arlington, Virginia-based Rosetta filed suit in the U.S. District Court for the Eastern District of Virginia. Rosetta Stone, in turn, wants the court to hold Topics liable for infringing on its yellow-and-black boxes and for the alleged false advertising. The company wants Topics to be barred from those practices and is asking for unspecified damages.

Topics said it began using the coloring scheme on its products in 1999, five years before Rosetta began using it in 2004. Rosetta said in its suit that it began using the colors in 2004, and consumers now associate the packaging with Rosetta Stone. The company said the coloring is ''an exceptionally valuable asset'' because consumers rely upon it to identify Rosetta's products. Topics' Instant Immersion product packaging is ''confusingly similar'' to Rosetta's, it said in the suit.

Both sides said they had tried to settle the issue earlier this summer, but when that failed, they decided to file suits.

Topics Entertainment tried to explain it was first and that other companies in the same category use similar packaging, company president Greg James said in a statement. The Instant Immersion language software makes up about 25 percent of Topics' total revenue.

''We finally decided that we weren't getting anywhere and that's when we went to court to get some help,'' he said.

Rosetta Stone denies that Topics began using the yellow coloring as far back as 1999, said general counsel Michael Wu. He said the company feels Topics is trying to confuse consumers.

''Consumers have come to identify us and purchase the Rosetta Stone brand based on the style of our box and we think they're trying to free ride on the goodwill we've earned through our recognition,'' he said.

The Trademark Company

Mischa Barton in Trademark Battle

SYDNEY, AUSTRALIA - U.S. actress Mischa Barton is reportedly embroiled in a trademark battle over the use of her name by an Australian handbag maker.

According to a report in the Daily Telegraph, Barton is attempting to trademark her name, signature and logo in Australia but Mischa Accessories in the state of Queensland is disputing her right.

Lawyers say that the Gold Coast-based handbag company opposing Barton is a reversal of the legal fight between US singer Katy Perry and Sydney fashion designer Katie Perry earlier this year.

The Sydneysider won the case but lawyers said the Gold Coast handbag firm might not be able to stop Barton's claims.

Neither Mischa Accessories manager Mervill Allen nor Barton's Melbourne-based trademark lawyers would comment on the case.

The Trademark Company

Politics as Unusual: Democrat Owens Accused of Trademark Violation

The Democrat running for New York's 23rd Congressional district is accused violating trademark rights in one of his ads.

Several media outlets are reporting that the California Milk Processor Board is taking legal action against Bill Owens' campaign for using their "Got Milk?" trademark.

In an ad Owens appeals to New York dairy farmers by asking "who's got milk money?" Owens says he'll work in Congress to rid the price manipulation of milk.

The Trademark Company

For Immediate Release: Case Update: Domainers Beware

The U.S. District Court for the Central District of California (Los Angeles) recently entered an order concerning domain names that is very important for ALL domain name holders.

In short, where a domain name holder was sued for cybersquatting and failed to respond (some report because he could not afford counsel) the judge held the domain name holder in default. Here is where it gets interesting (scary). The plaintiff could locate no other property owned by the defendant domain holder but for roughly 800 domain names by looking it up through WHOIS.

In a case we believe to be the first of its kind the judge awarded all 800 domain names to the plaintiff as part of a damages award for the defaulting defendant. In short, the judge held that the domain names, without viewing their individual worth, if any, were personal property of the defendant and thus attachable with the ability to be taken by a plaintiff even if the defendant did not show up and have his day at trial.

There is no word as to whether ICANN will weigh in on this. We believe this to be the furthest we have ever seen a judge go to assess a remedy against a domain name holder. In the past judgments had been limited to the transfer of the actual domain name at issue. Now this sets an interesting and possibly dangerous precedent for domainers throughout the world – loose one – you could loose them all!

In the past we have helped domainers to structure ownership of their domains to avoid such a possible catastrophe. While we will be reviewing our strategies in doing this we will undoubtedly keep an eye on this case and have plans in place to make sure this cannot happen to anyone who uses one of our recommended plans.

As always, if you have any questions please do not hesitate to contact us. But we just wanted to post this to let you all know to be aware!
To read more about the case see Christopher Bosh vs. Luis Zavala et al., Case 2:08-cv-04851-FMC-MAN.

The Trademark Company

Coach Hits the Target

Upscale bag manufacturer Coach, Inc. has sued Target alleging the mass retailer is selling handbags that infringe upon its designs.

The suit claims Target is selling handbags that are “confusingly similar” to Coach’s Ergo and Signature Patchwork lines.

Target confirmed that they are looking into the allegations. We’ll keep our eyes on this one.

The Trademark Company

Getting to the Heart of NFL Throw-Back Jerseys: Its All About the Trademarks Baby!

Sunday several of us tuned in to see the New England Patriots take on the undefeated Denver Broncos at Invesco Field in Denver. When the Patriots took the field we were all struck by the throw back uniforms they wore circa the 80s, the Jim Grogan era – the only quarterback in the NFL to ever wear a neck brace.

And then Denver took the field in uniforms that could only evoke feelings of what it must look like to view monkey poo – brown all over with streaks of banana yellow. And we thought – why on earth would they dress in such a manner? Did they loose a bet?

In a league that mandates the color of shoes worn by players, the height of the socks, as well as other minutia, to let Denver take the field in those, um, jerseys - wow.

But we believe we have discovered the reason why. In a word, trademarks!

As you may be aware the marketing machine that is the NFL, its franchises, and its official licensees continue to sell throw-back jerseys as well as other merchandise. Although we doubt they sell many of Denver’s (at least the monkey poo ones) they more than likely sell plenty of old Dallas and New England retro jerseys among others. And while their trademarks for these in connection with the Jerseys may be able to be maintained by the sale of the old jerseys themselves, other trademarks such as the New England Patriot’s registration for the original “Patriot” design in connection with exhibition football games cannot. To avoid abandoning those marks, the league must use the marks on jerseys or other advertisements in the connection with the actual advertisement or provision of the football games themselves. Hence every so often, we bet at least every three years or less, we see the old retro jerseys rolled out.

The obvious winners, the trademark holders and merchandising machine that is the NFL. The losers, if any, are players who play for teams like Denver charged with keeping up the rouge of “throw-back” weekends and having to wear the aforementioned monkey poo jerseys.

The Trademark Company

Tips From The Insider: Trademark Lawyers’ Dirty Little Secret

Do you want to know a little secret about the practice of trademark law? Have you been approached by companies promising to protect your trademark from infringement for monitoring services for hundreds or thousands of dollars per year?

Well here’s a little tip – don’t pay em’. You can do it about as effectively as they can without the costs.

What most trademark practitioners and so-called “monitoring services” don’t want you to know is how they “monitor” your trademark for their monthly and yearly fees – and it only takes a few minutes per month!

In essence they use Google and the U.S. Patent and Trademark Office’s site to conduct their monitoring and so can you.

Let’s say your trademark WIDGET (Sorry – all of our law school professors always used “Widgets” as an example. Better than our undergrad economics professors who always used “pizza and beer”).

Simply go the U.S. Patent and Trademark Office’s site at www.USPTO.gov, under Trademarks select the second option – Trademark search, and from there select “New User Form Search (Basic)”. Plug in your term or terms (i.e., your trademark) into the search field and simply click “Submit Query”.

Congratulations! You have just pulled up all the marks on the U.S. Patent and Trademark Office’s register having WIDGET therein – 133 as of this posting. Now you can scroll through them to see if you feel any are too close to your mark. Believe it or not that is essentially it!

Of course, if you really want to get comprehensive about it, search Google as well. Depending upon your mark, however, the results that come up, as some recent television commercials suggest, may be a little harder to filter.

So if you want to save some cash but make sure no one knocks off your marks there you go! Of course if you have lots of marks and little time or if you prefer a slightly more comprehensive plan - which do exist - there may be some good deals out there from certain providers.

Also, once you find someone knocking your mark off or if you do not have the time to do this on a regular basis we are always here to help. But if you want to unlock the mystery of monitoring that’s pretty much all she wrote.

As always, if you have questions or concerns about this posting just let us know.

Otherwise see you later and thanks for reading.

The Trademark Company

Trademark Infringement to the Max: Trademark Protection Extended to Yard Signs

Re/Max International Inc. of Denver, one of the world’s largest residential real estate brokerage companies, has won some major decisions in a trademark infringement lawsuit it filed in a Texas federal court.

Judge Lee Rosenthal in the U.S. District Court for the Southern District of Texas in Houston ruled in September that Texas real estate brokerage firm Trend Setter Realty LLC’s for-sale yard signs and other marketing materials infringe on Re/Max’s trademarked red-over-white-over-blue so-called “horizontal bar design,” Re/Max said Thursday.

“A real estate yard sign is intended to catch the attention of people driving past. … In this context, the color and dominant design … can communicate a source to consumers viewing the signs from a distance, or while passing,” the court’s initial decision said.

Following the initial order the court recently issued an injunction that granted Re/Max’s request that Trend Setter and its agents be prohibited from using signs, business cards, advertising and other materials that resemble Re/Max’s design.

The orders foretell the beginning of the end of the 2007 suit filed in 2007 against Trend Setter, which has 700 agents at offices in Houston and San Antonio, which claimed that the firm was infringing on the Denver firm’s trademarked sign colors and design. Re/Max International further alleged in the suit that Trend Setter violated a contractor agreement that a broker/owner at the Texas firm had with the Re/Max Elite franchise, which she left to help launch Trend Setter.

The Trademark Company

Tips from the Insider: Do You Need a Research Report to Clear Use of Your New Trademark? In a Word – YES!

Once you select your trademark or brand identity, it is highly recommended you have a clearance search performed so that you may insure your mark will not be rejected by the United States Patent and Trademark Office (USPTO). This preliminary search may also protect you from lawsuits initiated by others claiming infringement.

Claiming fame to a trademark can be a risky business if you don't first make sure you are not infringing on another's patented idea. Lawsuits can arise quickly making it imperative that you do the proper research.

So you can throw caution to the wind, file for your mark, and hope that the fees associated therewith are not spent in vain as a blocking mark may already be on the register. Or worse, hope that you don’t spend years of your life, your blood, sweat, and tears developing your brand only to find out you are infringing upon another’s.

Or you could just get a clearance report and put your mind at ease. Your choice. Choose wisely.

The Trademark Company

The Apple of Their Eye

Apple is taking Woolworths to court over the retailer's latest logo: a green, stylized "W" Apple claims bears too much resemblance to its trademarked Apple. The logos appear as follows:



Can Apple really claim any Apple? Hans Hulsbosch, who designed Woolworth's new logo, quips that the company is going too far. "Based on this logic, they would have to take action against every fruit-seller," he said.

Not so. But one does have to wonder why the "W" in Woolworths' new logo has a stem.

The Trademark Company

Tips from the Insider: Selecting a Great Trademark

Our clients often ask us for suggestions in selecting a Trademark for their products or services. Our response is always the same – it depends...

On one hand, do they want to create a completely coined name (i.e., something no one has ever heard of like eBay or Google) or use an arbitrary mark (i.e., a term we have heard of but that’s use is arbitrary in connection with the goods or services provided such as AMAZON for online retail store services or APPLE for computers).

On the other, do they want a mark that creates instant interest in the product or service because it is suggestive or describes of trait thereof (e.g., ORANGE CRUSH for orange-flavored soft drinks or COPPERTONE for suntan oil).

No matter what they decide a great name should be catchy and memorable, should create interest in the product or service, and most importantly be registerable as a trademark - that is capable of registration on the principal register maintained by the United States Patent and Trademark Office ("USPTO").

A common problem in selecting a trademark that would create instant interest is the temptation to use descriptive or generic terms - marks that directly convey characteristics of the goods (e.g., RED SHOES for shoes that are red).

Unfortunately, descriptive terms are not registerable as trademarks, absent proof of a secondary meaning (i.e., you have been using it for five years or you have spent millions in advertising of the mark).

So what is the best way to select a trademark for your products or services?
Coin or use arbitrary terms if you intend on building the brand from scratch. Note, this will take more effort and resources as consumers will need to be educated via advertising and otherwise as to your product or services provided in connection with that mark.

In the alternative, if you want that instant buzz which comes with suggestive marks, be cautious and avoid generic, descriptive, and non- inherently distinctive marks as they will not be registerable before the USPTO nor protected from infringement by others. Make sure that the terms you use in your trademark do not merely describe an ingredient, quality, characteristic, function, feature, purpose or use of your products or services. Rather, select a trademark that requires some bit of imagination, thought or perception to reach a conclusion as to the nature of your products.

The Trademark Company

Tips from the Insider: USPTO Releases New Examination Guides on Deceptiveness Refusals

The U.S. Patent and Trademark Office has released two new examination guides concerning refusals issued for Deceptiveness and Geographically Deceptiveness Refusals.

Read The Full Texts for the Examination Guides >>> http://www.uspto.gov/web/offices/tac/notices/notices.htm

The Trademark Company

A Win for Google: EU Court Sanctions Use Of Use of Competitor's Trademarks in Pay-Per-Click Advertising

An adviser to the European Union's top court has backed Google in a fight with luxury goods maker LVMH over Internet advertising stating that the Web search firm has not aided in the infringement of trademark rights by permitting third parties to bid on the trademarks of others in its pay-per-click advertising campaigns.

In short, companies providing restaurant services, for example, pay Google so their name appears alongside Internet search results for restaurant-related keywords such as “Chinese Food” and the like.

LVMH's Louis Vuitton fashion brand and others have been fighting such advertising after makers of imitation products began bidding on LVMH’s trademarks as keywords to attract customers to their competing brands.

In a blow to trademark holders, however, the European Court of Justice said Tuesday that Advocate General Poiares Maduro "considers that Google has not infringed trade mark rights by allowing advertisers to buy keywords corresponding to registered trade marks."

The French courts last year referred the case to the EU tribunal, seeking guidance on whether Google's use of keywords contravened companies' rights under EU trade mark laws.

The Trademark Company

Tips from the Insider: Solicitations Not Always a Scam

This morning we received a facsimile from a South Korean firm purporting to offer its services concerning opposition of a mark pending before the Korean Intellectual Property Office (“KIPO”) which, in their opinion, would create a likelihood of confusion with one of our client’s marks applied for here in the U.S.

Familiar with scams such as “monitoring services” which are presented to our clients under the guise of fake intellectual property office symbols or “domain name registration services” from the Far East we were naturally skeptical of this blatant solicitation.

Upon review, however, it appears that the solicitation is legitimate and that our client’s mark may well be in jeopardy in the Democratic Republic of Korea.
Against this backdrop, we should always be leery of any overt solicitations concerning our intellectual property rights. This must now be taken with a grain of salt that truly legitimate services are out there and should not be so confused with those with lesser business practices.

As always, if you have any questions concerning a solicitation or any other trademark matter do not hesitate to contact us here at The Trademark Company.

The Trademark Company

USPTO Changes the Method of Issuance and Content of Notices of Publication in Trademark Applications

On October 6, 2009, the USPTO will begin sending electronic Notices of Publication to trademark applicants who have authorized e-mail communication with the USPTO. The new emailed Notices of Publication will contain the same information as the updated Notices of Publication sent via mail in other cases, but will have clickable hyperlinks to allow applicants to access the Trademark Official Gazette (OG).

All Notices of Publication, including those sent on paper and post cards, will now invite applicants to review the publication information contained in the OG and take the appropriate steps to correct any inaccurate information prior to registration or the issuance of a Notice of Allowance.

Notices of Publication issued by email will be sent on the publication date. This is a change from the current practice where the notices are mailed three (3) weeks before the date of publication. Paper notices will continue to be mailed prior to publication.

This new approach should benefit both applicants and the USPTO. For example, issuing Notices of Publication via email will allow applicants to receive the notice almost immediately and will save the USPTO the cost and time of mailing paper notices to applicants who have already authorized email communication with the Office. All Notices of Publication will still be accessible either for direct viewing or downloading via the Trademark Document Retrieval (TDR) system, which is available 24 hours a day, seven days a week, 365 days a year. Additional notices may be sent via email in the future, based on the success of the project to issue electronic Notices of Publication.

The Trademark Company

Beyonce Singin' The Blues after Suit by Abercrombie

Abercrombie & Fitch Co. has sued singer Beyonce Knowles, saying her plan for a fragrance named after her alter ego Sasha Fierce violates the teen clothing retailer's trademark.

The chain, which has sold a men's fragrance called Fierce since 2002, wants a court to order Knowles to abandon the plan. Abercrombie has held a trademark for the word "fierce" since 2003, according to the lawsuit it filed Tuesday in U.S. District Court in Columbus, Ohio.

Fierce is the scent dispersed by employees and machines in Abercrombie stores with the goal of infusing all the apparel they sell.

Knowles, who released an album in 2008 called "I am ... Sasha Fierce," will unfairly benefit from the reputation Abercrombie has built for the scent and could confuse or deceive customers into thinking Abercrombie is associated with her fragrance, the New Albany, Ohio-based retailer claimed in its lawsuit.

The singer announced Tuesday that she had signed a deal with Coty Inc. to market her new fragrance, set to launch next year, the lawsuit says.

But in a statement released late Wednesday, Coty said that neither the terms Fierce or Sasha Fierce will be used in Knowles' fragrance.

"Details related to the fragrance, including the official name, will be revealed prior to the launch in early 2010," the company said.

When Knowles applied in September 2008 to trademark "Sasha Fierce" for a fragrance and other items, Abercrombie asked her to refrain from using the name for fragrance, but she disputed there would be any confusion, according to the lawsuit.

Sales of the Abercrombie & Fitch fragrance reached $190 million, according to the lawsuit. The company projects 2009 sales at $64 million. It estimates it spent more than $3 million in 2008 and 2009 on scent machines for its stores.

The Trademark Company

Twitter Sued for Infringement - For A Day - Even Their Lawsuits Are Fast

One day after natural gas distributor Oneok Inc. sued social networking site Twitter for trademark infringement the company said Wednesday the issue has been resolved and it will drop the lawsuit.

Oneok filed the lawsuit Tuesday in U.S. District Court in Tulsa, saying San Francisco-based Twitter wrongly allowed an anonymous customer the user name "ONEOK." Oneok spokeswoman Megan Washbourne said that account since has been transferred to Oneok.

On Twitter's Web site, an account with the name "ONEOKNews" is serving as Oneok's official account, Washbourne said. Another account labeled "Oneok_i" that used the company's logo had been "suspended due to strange activity," according to the Twitter site. It hadn't been updated since March 19. It wasn't immediately clear if that was the account being protested by Oneok.

Oneok said in the lawsuit it holds the rights for "the word mark ONEOK and Diamond design," which serves as the company's logo. Oneok said the anonymous customer using the "ONEOK" account on Twitter had "on at least two occasions generated Tweets containing information" about the company, which had "the appearance of being an official statement issued by ONEOK on the Twitter system."

Oneok said that it had asked Twitter to obtain the contact information for the account holder, but Twitter refused. Oneok also said it asked Twitter to assign the account to Oneok, but "Twitter has failed to follow through with such assignments."

"If this situation is allowed to persist the unknown ONEOK Twitter account holder can use the Twitter system to damage ONEOK's reputation in the investor community and energy industry," the suit said. "Such damage would be irreparable."

Washbourne said Oneok had tried to work with Twitter before filing the lawsuit.

The Trademark Company

“I MEAN LIKE WHAT’S DEAL WITH INFRINGMENT” Seinfeld Asks

On Thursday a federal judge proclaimed “No Soup for You” in tossing out a cookbook author's claim that comedian Jerry Seinfeld's wife was a culinary copycat when she came out with her own book explaining how to entice children to eat vegetables.

U.S. District Judge Laura Taylor Swain threw out the lawsuit brought against the Seinfeld couple by Missy Chase Lapine. The judge rejected Lapine's claims against Jessica Seinfeld, saying that the books, both best sellers, were not similar except for their goal of hiding healthy food inside the favorite meals of children – like a Marble Rye.

She called Lapine's book "a dry, rather text-heavy work" done predominantly in black, gray and shades of brownish-orange. She said Seinfeld's book was "bright and cheerful, full of different colors and various patterns" much like the comedian’s iconic show. Consumers who looked at each book were unlikely to be confused, the judge said, tossing out trademark infringement claims.

However, the judge declined to rule on Lapine's claim that Jerry Seinfeld libeled her on David Letterman's show last year when he noted her three names and joked that people with three names - including James Earl Ray and Mark David Chapman - have turned out to be assassins.

Seinfeld will reportedly defend the remaining claim on the fact that its funny - he’s a comedian. If this occurs, however, Lapine will no doubt contend that she knows comedians, she knows Jerry Seinfeld, “…and Jerry Seinfeld, you are no comedian."

The Trademark Company

Would You Like a McLoss with That Order

McDonald has lost the battle for the “Mc” trademark. As widely reported, McDonald's Corporation, the multinational fast food chain, has lost an eight-year trademark infringement dispute with a small Indian restaurant in Malaysia.

The McCurry restaurant in Kuala Lumpur was challenged on its use of the prefix "Mc", which is associated with many of the American company's products. Similarities in the sign displayed on the restaurant to McDonald's own were also alleged, and that McCurry was, as a consequence, "passing off" McDonald's business as its own.

The Malaysian High Court dismissed McDonald's request to appeal the judgment handed down by the Appeal Court in April, which had ruled there was no evidence that McCurry was guilty of such infringement.

There were a number of distinguishing features, principally that McCurry sells Indian food and not burgers like McDonald's!

It was also upheld that McDonald's does not hold a monopoly on the prefix "Mc" in Malaysia.

The Trademark Company

Who's Your Patty? - Not McDonald's

McDonald's Corporation, the world's largest chain of hamburger fast food restaurants, has been sued by Lion's Tap for trademark infringement.

Lion's Tap accuses McDonald's of stealing its "Who's Your Patty?" tagline which it contends it has been using since 2005.

In commenting on the case, Betsy Schneck, the Lion's Tap's manager, said that their customers are actually confused when they see the same tagline in two different places.

Further updates regarding the progression of the case will be posted as they become available. For now, however, the battle over Who's Your Patty will rage on.

The Trademark Company

Cuba Libre! Let the Next Revolution Begin: The Battle for its Brands.

Jose Navarro's taste buds rejoice when he sips Havana Club, a sweet spirit distilled in a small farming town south of Havanna.

"It has to be Cuban," said Navarro, the oldest of the island's nine certified rum experts. "Havana Club can't exist anywhere else."

But it does. Oh does it ever. Another Havana Club is made by Bermuda-based rum giant Bacardi Ltd. Moreover, a variety of Cohiba cigars, once rolled exclusively for Fidel Castro, is produced by Swedish Match North America of Virginia, and a Miami firm offers its own version of Cubita, a top Cuban coffee.

While Washington's 47-year-old trade embargo may have kept Cuban products out of the U.S. — at least officially (FYI - Key West is filled with them) - it hasn't prevented companies from using the communist island's brand names in the development of products in our country.

As the fall of the embargo becomes more of a reality such trademark issues will be pushed to the forefront in the soon-to-be post embargo era.

In one precursor to the numerous issues which will arise, the fight between Bacardi and the Cuban government for the Havana Club name has already played out in the U.S. courts and Congress for more than a decade — and is now before Spain's high court.

But as many in Miami can attest, the battles are about so much more than brand names. They are charged with 50 years of emotion over Fidel Castro's 1959 revolution and expropriation of private companies as he implemented socialism. They are also rooted in the future as U.S. corporations face the specter of new competition from Cuban products, which may carry a special allure after being banned for nearly a half century.

"There are U.S. interests thinking about how they are going to be affected by an influx of Cuban products, and the outlook is not always positive," said Jake Colvin, director of the Washington-based USA Engage, which opposes the embargo.
Americans craving all things Cuban already can buy products inspired by the Caribbean island — just not made there.

Bacardi's Havana Club is an 80-proof rum that has sold in Florida since 2006, and sales have been so strong, it's thinking of expanding the label to other states, said spokeswoman Patricia M. Neal.

Even though Cuba's Havana Club rum can't be sold in the U.S., the Cuban government still sued Bacardi for using the name.

Bacardi argues it owns the name because the original Havana Club was expropriated by Castro from its Cuban producers, the Arechabala family, who went into exile. Bacardi bought the name and recipe from the Arechabalas in 1997.

Cuba says it registered the Havana Club trademark in the U.S. in 1976 after the Arechabalas let their claim on it expire. It has sold the rum internationally since 1993 in a joint partnership with French spirits consortium Pernod Ricard.

So far the U.S. courts have sided with Bacardi based on a 1998 federal law that prevents the registration or renewal of U.S. trademarks tied to companies nationalized by the Cuban government. Cuba has appealed its most recent case to the U.S. District Court of Appeals in Washington.

Meanwhile, Cuba's Havana Club is winning abroad. A Bacardi suit filed in a Spanish court against the Cuban government and Pernod Ricard over the trademark in that country was thrown out in 2007. Bacardi, too, has appealed, and the case is before the Spanish Supreme Court.

The true argument is over who can claim to produce authentic Cuban rum — especially if the country opens up to global commerce.

Bacardi, a family-owned spirits conglomerate founded in Santiago, Cuba, in 1862, pioneered the light, dry smoothness Cuban rum is now famous for, devising a charcoal-filter system and aging in oak barrels for added sweetness.

But the Bacardis joined the fiercely anti-Castro exile community in Miami after Castro nationalized the company in 1960. Havana Club, like all Bacardi rums, is made in Puerto Rico — and says so on the bottle.

Still, Neal says her company's Havana Club transports consumers "back to the time it was created: sultry nights, classy nightclubs, and pulsating Latin music, enjoyed by locals and visitors alike."

Cuba and Pernod Ricard spent $70 million to rehabilitate a Havana Club distillery specializing in darker, higher quality anejo rum in San Jose de Las Lajas.
"If I have a recipe, am I producing a Cuban rum? No. Cuban rum is not a recipe. It's an expression of an entire culture," said Navarro, while scrutinizing stacks of barrels filled with aging rum.

Even without the U.S. market — 40 percent of world rum drinkers — Cuban Havana Club has seen its annual sales soar 13 percent to 3.4 million cases. Bacardi's more than 200 brands and labels sell 20 million cases in 150 countries every year.
It's a debate that may ultimately be decided by consumers.

John Verburg, manager at Cafe Habana in Ann Arbor, Michigan, uses Barcardi to mix his mojitos, the famous Cuban cocktail of rum, sugar and mint. But he's asked all the time when he will get rum "authentically from Cuba."

"I don't know if people are salivating yet," Verburg said, "but it could be something very exciting."

The thought of competing with Cuba is already keeping executives at Swedish Match North America up nights. The Richmond, Virginia-based company owns General Cigar Inc., which has sold Dominican Republic-made Cohiba cigars in the U.S. since 1997.
"It's not the brand that's going to make the difference, it's whether it's Cuban or not," said Gerry Roerty, the company's vice president and general counsel. And smokers are willing to pay a premium for Cuban, he said.

Cohiba was founded in Cuba to make cigars for Castro and visiting dignitaries. Today it is the flagship of 27 premium brands produced by Habanos, equally owned by the government and Madrid-based Altadis SA, which was acquired last year by Britain's Imperial Tobacco Group PLC.

Cuba never registered its version of Cohibas in the United States but still sued General Cigar. The U.S. Supreme Court sided with General Cigar, which has factories in the Dominican Republic and Honduras and produces versions of signature Cuban brands Partagas, Hoyo de Monterrey, Bolivar and Punch. It also makes the La Gloria Cubana, Rico Habano and Havana Honeys brands, which despite their names are unknown on the island.

U.S. industry estimates show 85 million Cuban cigars could be shipped to the U.S. annually in a post-embargo world, slashing profits for U.S. companies that sell about 255 million premium cigars a year.

Roerty said not only would General Cigar face a trademark war, but the company would not have access to Cuban tobacco leaves or other raw materials to match its new competitors.

Some say the forbidden-fruit factor around Cuban cigars and other products won't last if the embargo vanishes.

Still, most U.S. aficionados are anxious to get their hands on real Cubans.
At Havana Connections, a cigar shop in suburban Richmond — General Cigar's own backyard — mention of Cubans sparked an hour-long discussion.

"When you smoke, it's taste. And the Cuban seed and Cuban cigar — they're smoother and creamier," said 60-year-old Dan Tater, a smoker for about a quarter-century. "There's got to be something to that lore that this is really a better cigar."

Americans hankering for super-strong, Cuban-style espresso can get Cubita, a coffee imported by Universal Brands Inc. in Florida that shares a name with the Cuba's best-seller on the island.

Universal Brands President Raul Diaz said his company has held a U.S. trademark for Cubita since the early 1990s and is confident it will stand regardless of any change in America's Cuba policy. But he acknowledged that "at some point, if Cubita from Cuba is sold in the U.S., one of the Cubitas is going to suffer."

More than 3,000 U.S. brands continue to hold trademarks in Cuba, with everything from McDonald's to Macy's to Mr. Peanut paying periodic registration fees in case the island one day embraces the free market, according to a 2002 list compiled by U.S.-Cuba Trade and Economic Council, Inc. in New York.

Experts worried the 2006 decision to nullify Cuba's Havana Club trademark in the U.S. would prompt Cuba to stop respecting American brand names on the island — especially after Castro famously threatened to produce Cuban Coca-Cola.
So far, there has been no retaliation.

Colvin said Cuban leaders know that violating U.S. trademarks will weaken the island's case before the World Trade Organization and other groups, where it claims American laws have allowed multinational companies to trample its trademarks.

"They've always made the case that they are right on this issue and they are the victims," he said. "If they start violating trademarks, they lose the moral high ground."

The Trademark Company

Oprah Sues Dietary Supplement Peddler – No Surprise

Talk show host and overall media magnate Oprah Winfrey has filed a federal trademark-infringement suit against 40 peddlers of dietary supplements alleging that the internet marketers are using her name without permission.

During her shows, Winfrey would feature segments about foods or products that can lead to better health, and the shows often included appearances by a Dr. Mehmet Oz.

According to Marc Rachman, an attorney for Ms. Winfrey’s corporation Harpo, last year, after Oz praised the anti-aging properties of the acai berry, Internet marketers began to sell acai products with implications that Winfrey or Oz had endorsed them.

But, as it turns out, neither has ever sponsored such a product or any other that involved health benefits.

“The subject is discussed on the show, then the scams start. It’s brazen,” the Chicago Tribune quoted Rachman as saying.

Of note, products involving the acai berry had been the main target, and Winfrey’s Web site has fielded more than 2,000 complaints related to it. Some involve viewers who mistakenly believed that a product was actually endorsed by Oz or Winfrey; while others are from consumers who felt they’d been defrauded.

The Trademark Company

“Nude” Rocker’s Wife Sues for Infringement

Do you remember the good ole’ days when you would search for a rock star and “nude” and it would bring up, well, interesting web sites. Sure, neither do we (wink).

Sure Gene married Shannon and a search of those two and nude brings up, well, you may just crash Google.

It seems rockers have an affinity for people who have, at one time or another, considered clothing an optional accessory in front of cameras. And of course the camera swings both ways, those clothing optional ladies love them bad boys.

But as rockers age it seems that even once interesting terms with which they could be associated come with completely different, and less interesting, results.

Take this latest case. Alison Hewson, the wife of U2 rock front man Paul Hewson (you know him as Bono), has sued Stella McCartney for trademark infringement. Stella, an English fashion designer and the daughter of former Sir Paul McCartney – yes that Paul – is accused of knocking off Hewson’s “Nude” trademark in the sale of perfume.

Alison Hewson and her business partner Bryan Meehan, as it is alleged, own the "Nude" trademark in the European Union for perfumes. They also own a company called Nude Skincare.

A press release NudeSkincare clarified its position “Nude Skincare is suing for compensation, not because of anything to do with the scent of the perfume but because of branding and the use of the word ‘nude’."

In reply, a McCartney representatives said “Stella isn’t likely to make any changes now because the fragrance is coming out in September and nudity is a big part of the perfume’s look, the bottle, for example, is a nude color.”

So as the case progresses it will receive more and more press thus diluting true legitimate efforts to search nude and insert rocker’s name here on the web.

A sad sad day in rock history.

The Trademark Company

Google Can Be Sued for Trademark Infringement for its Ad Words Program

The Second Circuit recently reversed a district court's dismissal of an action for trademark infringement, false designation of origin, and dilution under the Lanham Act surrounding Google’s Ad Words and/or Ad Sense programs.

In Rescuecom Corp. v. Google, Inc. Plaintiff Rescuecom alleges trademark infringement against the search engine giant stating that Google is violating trademark law and Rescuecom’s rights by allowing its competitors to bid on its trademark to receive placement of their own competing ads when a user of the search engine searches for Rescuecom.

Although the district court granted a motion to dismiss stating, in essence, Google’s actions could not amount to “use” under the Lanham Act and, accordingly, could not constitute infringement the Second Circuit disagreed.

In short, the Second Circuit concluded that where plaintiff's allegations that Google's recommendation and sale of plaintiff's mark to its advertisers triggers the appearance of plaintiff's advertisements and links in a manner likely to cause consumer confusion when a Google user launches a search of plaintiff's trademark, such complaint adequately pleads a use in commerce and is a proper claim under the Lanham Act.

The case has now been remanded for actions consistent with the Second Circuit’s opinion. More will surely follow.

The Trademark Company

Fire Sale: Buy The Firedog Brand Assets Today!

Come one, come all. Looking for an established brand to sell your pc service wares. Why spend years cultivating you own brand when you can have one instantly!

The Firedog brand, URL and related assets are for sale.

The brand offers the Number 2 market position, multi-service offering under one brand
and an instant national footprint with coverage of over 80% of the US population.

One cautionary note, however, despite the boastful statistics that it generated over $272 million of sales in F2008 and achieved 28% revenue growth and more than doubled EBT in F2008 vs. F2007 it was still not sufficient to keep its parent out of Bankruptcy.

To learn more about this fire sale Click Here.

The Trademark Company

Wal-Mart Sues to Prevent Use of Its Name by Wal-Mart Workers

Wal-Mart ,an American public corporation that runs a chain of large, discount department stores filed a court injunction arguing that a website infringes on their trademarks.

This website, www.walmartworkerscanada.ca ,was created to help Canadian Walmart workers.

Wayne Hanley,the president of UFCW Canada National says about this injuction :“This injunction request is an over the top assault on effective freedom of speech. It’s a kneejerk response by Walmart to the idea of its employees trying to understand their options as workers, and trying to share experiences with other ‘associates’.”
“Walmart’s response to the success of www.walmartworkerscanada.ca is just another outrageous example of how the largest retailer in the history of the world will use its bottomless legal budget to manipulate the collective bargaining process and do just about anything to discourage its ‘associates’ from joining the union.”

What will happen? Only time will tell.

The Trademark Company

Show Me The Money!

A former UCLA basketball player is suing the NCAA over its use of former student athletes' images in DVDs, video games, photographs, apparel and other material.

In a federal lawsuit filed Tuesday, Ed O'Bannon alleges the NCAA illegally has athletes sign away their rights to the commercial use of their images and does not share any of the proceeds from their use with former athletes.

"While the NCAA, its member conferences and schools, and its for-profit business partners reap millions of dollars from revenue streams ..., former student athletes whose likenesses are utilized to generate those profit centers receive no compensation whatsoever," the suit claims.

The lawsuit seeks unspecified damages and calls on the NCAA to pay the former athletes what it has allegedly made from the use of their images. That amount has yet to be determined, said Megan Jones, a partner with the law firm of Hausfeld LLP, which is representing O'Bannon.

It also seeks an injunction on behalf of current student athletes barring the NCAA from licensing the rights to their images.

"There has been an awakening in the former student athletes," Jones said. "They are seeing their images and likenesses in more places now than ever before."

Bob Williams, a spokesman for the NCAA, declined to comment on the suit, saying the NCAA had yet to review it. As soon as they stop counting all of the cash they make on the backs of these athletes they intend to look over the allegations.

"However, the NCAA categorically denies any infringement on former or current student athlete likeness rights," he said.

The lawsuit, which also names the NCAA's licensing representative, the Collegiate Licensing Company, seeks class action status on behalf of former NCAA Division I basketball and football players.

As former NCAA athletes ourselves, we’ll be watching this one closely.

The Trademark Company

He Fought the Law and the ... The Law Won

Lifelong resident Eric Ellebracht wanted to get a tattoo of his city’s seal, but a 2000 law won't allow the trademark sailboat to be inked on his arm.

"It's like the people who have the 'I'm a Melbourne resident and I'm proud of it' bumper sticker on their car," the 45-year-old said. "I'm just taking that to a little bit of an extreme."

Undeterred by the city manager's rejection of his request, Ellebracht said he hoped to convince leaders to develop a design for city-approved body art that diehard residents could buy.

He said he plans to present his idea during public comment at tonight's city council meeting.

Ellebracht routinely speaks during council meetings -- at times critical of the city. He said he was inspired to get the seal tattooed on his arm after he said he saw city workers with tattoos honoring the fire and police departments.

The seal is a yellow sailboat circled by a blue band with the city's name, its nickname, "The Harbor City" and 1969, the year it merged with Eau Gallie.

City spokesman Michael Moore said the council's intent was for the city seal to be used only for official documents.

Private individuals have to get the city manager's permission before using the seal. A separate state law makes using a government seal without permission a second-degree misdemeanor, punishable by up to a $500 fine or 60 days in jail.

"At the code level, it's perfectly clear what the intent of the seal is and that is not Mr. Ellebracht's purpose," he said.

Melbourne more often uses its logo, which is the sailboat with "The City of Melbourne" written next to it, on items like stationary, signs and vehicles, Moore said. Citizens also need city manager approval to use the logo.

Ellebracht said he plans on going ahead with a tattoo, but will change the design so it's not an exact copy of the seal.

He wants the city to consider appointing a voluntary committee to select a design that could be sold for about $50.

"I'm going to float the idea as a way to produce revenue," he said. "It doesn't make sense for the city to turn their back on any stream."

The Trademark Company

Michael Jackson: It's Gotta Be the Shoes Money!

In the wake of Michael Jackson's untimely demise we are learning more and more about the man and that not only was he the King of Pop but also a pretty nifty inventor as well.

Who of us recalls the video from the 80s for Smooth Criminal? This is the video in which MJ, in unison with his back-up dancers, liens forward after planting his feet into the ground to an angle which we can only assume is some special effect in the video. We are only now finding out it was no special effect!

No wires. No digitally enhanced frames. Just MJ and his patented shoes. Yes, you heard me correctly, he patented a type of shoe. Gotta be the shoes, money!

In short, he co-invented a system for allowing a shoe wearer to lean forwardly beyond his center of gravity by virtue of wearing a specially designed pair of shoes which engaged or clipped into a hitch member in the stage surface.

How cool is that. So while the rest of the world thought he was just doing it through special effects or otherwise like a great illusionist MJ was actually doing it - with specially designed stage equipment we simply never knew about.

We know this is not a trademark issue. It is a brethren patent matter. But it was just too cool not to share.

The Trademark Company

Drifting Along ...

For over a decade, Faye Treadwell (“Treadwell”), widow of the late music executive George Treadwell, and Larry Marshak (“Marshak”), a promoter of various doo-wop groups, have fought tooth and nail over the rights to use the trademark of “The Drifters,” the legendary singing group.

The dispute in this case centers on the trademark rights to The Drifters , a popular singing group from the 1950s and 1960s.1 The Drifters first appeared in 1953 and came under the management of George Treadwell the following year. George Treadwell hired and paid the individual performers as employees, replacing them frequently. For nearly two decades, The Drifters as an entity persisted, though the membership of the group was constantly in flux. George Treadwell passed away in 1959, and his wife, Faye Treadwell, took over management of the group.

By 1970, The Drifters had largely ceased to perform in the United States, although their songs were still played on the radio. Marshak, an editor for a rock magazine, saw this as an opportunity. Working with CBS Radio, which had shifted to an “oldies” format, Marshak reunited some of the former members o f the group – those who had been replaced over the years by the Treadwells – for a series of reunion concerts. Capitalizing on the success of these concerts, Marshak signed the former members to exclusive management contracts and began marketing them as “The Drifters.”

Over the next three decades, Marshak continued marketing The Drifters in the United States. His efforts at promotion were occasionally interrupted by trademark infringement litigation – Faye Treadwell sued Marshak, and Marshak in turn sued other Drifters promoters – but these lawsuits were often inconclusive.

The case recently came before the Third Circuit focusing on the breadth of the injunction and efficacy of the remedies that were issued along with Judge Politan’s ruling. Judge Politan enjoined Marshak and his company from marketing The Drifters anywhere – not On Broadway, not Up On the Roof, and not Under the Boardwalk – and ordered a full accounting of profits.

Treadwell, thinking that these actions were not Some Kind of Wonderful, thus brought a motion for contempt, arguing that the Politan injunction applied to Marshak’s associates as well as to Marshak. After a lengthy hearing, the District Court found that Marshak and his associates were in contempt of the Politan injunction, but limited Treadwell’s remedies to an award of attorneys’ fees. Both sides then appealed: Marshak and his associates appealed the merits of the decision, while Treadwell challenged the paucity of the remedies.

Reviewing the record in its entirety, the Third Circuit found ample support for the District Court’s contempt findings against the Marshaks and Singer Management for the violation of the lower court’s injunctions and solidifying the ownership of The Drifter’s mark with the Treadwells.

The Trademark Company

SHARON!!!!!!! ... They’re Stealing My Trademarks....

In a Goodbye to Romance, Black Sabbath former frontman Ozzy Osbourne has sued his former band mate Tony Iommi over the ownership of the group's name.

Osbourne, 60, filed a surprisingly clearly-worded lawsuit in federal court in New York on Tuesday accusing the guitarist of falsely claiming to be the sole owner of the Black Sabbath name in what promises to be a Crazy Train of a lawsuit.

The Rock-n-Roll Rebel is also seeking a share of the interest in the Black Sabbath trademark and a cut of the profits that Iommi earned while touring under the Black Sabbath name in the 1990s when the British heavy metal band was in disarray after numerous changes to their lineup.

Osbourne said in a statement issued on Friday that he was sorry he had gone to the court over the dispute with Iommi which he said he had tried for three years to resolve amicably. Iommi, for his part, probably just believes Osbourne is being Paranoid and does not have a Shot in the Dark.

Imommi performed in clubs under the Black Sabbath name after Osbourne was thrown out of the band. The original four members -- Osbourne, Iommi, Geezer Butler and Bill Ward -- reunited in 1997 and Black Sabbath was inducted in the UK and US Rock&Roll Hall of Fames in 2005 and 2006.

Osbourne said in a statement that it was thanks to the efforts of his management representatives over the past 12 years – translation Sharon - that "the name 'Black Sabbath' now has a worldwide prestige and merchandising value that it would not have had by continuing on the road it was on prior to the 1997 reunion tour."

"We've all worked too hard and long in our careers to allow you to sell merchandise that features all our faces, old Black Sabbath album covers and band logos, and then you tell us that you own the copyright. We're all in our 60s now. The Black Sabbath legacy should live on long after we have all gone. Please do the right thing," Osbourne said. Translation - Pay Me.

The Trademark Company
June 26, 2009

Fraud Alert: Asian Domain Name Registry Services

For Immediate Release.

Purportedly reputable domain name registrars from Honk Kong and other Far East countries are using a new scheme to drum up domain name registrations among U.S. Trademark registrants.

How it works. U.S. Trademark registrants receive an email from a domain name registrar reporting that they have received an order to register domain names with various TLDs corresponding to the registrant’s registered U.S. Trademarks.

The registrar then reports to the registrant that in searching the U.S. Patent & Trademark Office’s records they “discovered” that the domain names to be registered are identical or highly similar to the trademark holder’s marks.

The registrar then offers the trademark holder the option to register the domain names before the other party does. Unsuspecting trademark holders take the registrar up and register multiple domain names under this veiled threat often for U.S. $50 to U.S. $100 per domain name per year.

In reality this is, at best, a hard marketing sale. At worst, it is a complete scam.

The genius of the plan is that if due diligence is conducted the alleged company referenced in the domain name registrar’s email as the entity which is about to register the domain names actually exists. So the trademark holder believes that their may be an actual threat to their marks.

However, having now witnessed this hundreds of times this routine is truly just a hard sell and U.S. Trademark holders should be aware of this fact before rushing to register such domain names under such an artificial threat.

The Trademark Company

Washington Redskins Win One - Really

Since the dawn of time man has wandered the Earth. Shortly thereafter, the case of Pro Football, Inc. vs. Harjo began.

On May 15, 2009 the U.S. District Court of Appeals for the District of Columbia issued its latest and once-again ruling in this matter focusing on the narrow issue of laches as it applies to the claims in this matter.

At its heart, this case concerns whether various trademarks related to the Washington Redskins football team disparage Native Americans within the meaning of the Lanham Trademark Act, § 2, 15 U.S.C. §1052(a). But that question has been overshadowed by the defense of laches.

Appellants, seven Native Americans, filed a 1992 action before the Patent and Trademark Office seeking cancellation of six Redskins trademarks that were, they argued, impermissibly disparaging towards members of their ethnic group. Pro-Football, the Redskins’ corporate entity and the owner of the marks, argued to the Trademark Trial and Appeal Board that its long-standing use of the name, combined with plaintiffs’ delay in bringing the case, called for application of laches, an equitable defense that applies where there is “(1) lack of diligence by the party against whom the
defense is asserted, and (2) prejudice to the party asserting the defense,” Nat'l R.R. Passenger Corp. v. Morgan, 536 U.S. 101, 121–22 (2002) (internal quotation marks omitted).

Finding on the merits that the marks were indeed disparaging, the TTAB cancelled them, see Harjo v. Pro Football Inc., 50 U.S.P.Q. 2d 1705, 1749 (TTAB 1999). Pro-Football then exercised its option to dispute this holding by means of a civil action in the United States District Court for the District of Columbia. The district court sided with Pro-Football on the laches issue, holding that the 25-year delay between the mark’s first registration in 1967 and the TTAB filing in 1992 indeed required dismissal of the action. Pro-Football, Inc. v. Harjo, 284 F. Supp. 2d 96, 144 (D.D.C. 2003).

The U.S. District Court of Appeals for the District of Columbia reversed the District Court’s decision having inappropriately begun the running of the period of laches prior to the youngest plaintiff having reached the age of majority.

On remand in this case, the district court again found the defense of laches persuasive. On appeal, the U.S. District Court of Appeals for the District of Columbia has now upheld the application of laches in this matter. Accordingly, once again the Washington Redskins’ trademarks are protected.

However, if history is any judge it is likely that this matter may be headed for further proceedings.

One thing is for sure, the Washington Redskins’ franchise has now had their most significant victory in over a decade.

The Trademark Company

Death of Business as Usual: Are the Days of The Mega Law Firms Numbered?

Think of a world in which law firms no longer bill by the hour. Flat-fee services replace billing by the hour. Clients enjoy the benefit of knowing what their legal representation will cost them. That day is coming, and it may be coming sooner than expected.

The legal landscape is changing. The economic downturn of 2008 and 2009 has led companies to examine their bottom lines like never before. One rapidly increasing casualty of this new wave of thought – Why are our legal fees so high?

In a profession that has long rewarded client loyalty with annual increases in hourly rates – a custom that cuts against almost every rationale basis for customer retention – a backlash is developing against the ways of old.

Savvy corporations are looking to outside counsel to develop new approaches to hourly billing including alternative fee arrangements, lower per unit and per project costs, and expanded flat-fee services.

Only time will tell if billing by the hour will survive. But with more and more firms offering quality flat-fee services, corporate flight from the mega firms to firms offering such services will likely continue.

The Trademark Company

New Domain Names May Could Usher In The Next Wave of Cybersquatting

A wave of change may be coming to the Internet in the near future. The familiar .com, .net, .org and 18 other suffixes – officially top level domains – could be joined by a veritable endless variations.

Under a landmark change approved last summer by the Internet Corporation for the Assignment of Names and Numbers (ICANN) tourists to New York City may soon look for information on restaurants at .BigApple. Rock bands could soon post their sites to .rock.

Whatever can be imagined by the registrant will be available. This will translate into one of the largest marketing and branding opportunities in history.

Correspondingly, businesses are increasingly worried that this change lead will significant additional defense costs to guard their brand identities. With the soon-to-be limitless TLD extensions, scammers intent on attacking the trademarks of others will be able to register domain names of the marks of others with any number of TLDs. (e.g., CocaCola.soda, Microsoft.computer).

To beat a cybersquatter to the punch some companies prefer to engage in a campaign of registration of domain names which could be secured by cybersquatters.

Others monitor their marks and respond aggressively to domain name registrations which may attempt to trade on the good will established by their marks.

Whatever the strategy a trademark holder employs one thing is clear: ICANN’s new change will require heightened diligence and effort on the part of trademark holders to protect their brand identities on the Internet.

No Habla Espanol ... or Chinese or even Esperanto .... the U.S. Patent and Trademark Office Mandates Applications be filed in English

Taking a step that some would call controversial, the U.S. Patent and Trademark Office is amending § 2.21(a) to require that trademark and service mark applications be filed solely in English.

There is no mention in the U.S. Constitution that English is the preferred or required language of the United States. Moreover, no legislature has truly taken steps recognizing an “official” U.S. or state language in this country.

Notwithstanding the lack of legislative precidential support the U.S. Patent and Trademark Office has taken a stand where the country has not. Perhaps this new rule will be challenged. Perhaps it will not. If it is challenged one thing is for sure – the challenge will probably need to be in English.

The Trademark Company

The Trademark Company Launches its New Site

Over the years we have prided ourselves in being an innovator in trademark services and knowing what our customers want through a very simple business philosophy – we listen.

With today’s economic realities leading business to rethink the way they do business we have heard our customers and, in response, roll out The Trademark Company 3.0.

Now with an expanded list of flat-fee services we have removed the uncertainty surrounding top-flight legal expenses while still offering our world-class customer service.

Visit us at http://www.thetrademarkcompany.com/ to see our new site.