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
Wednesday, October 21, 2009
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
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
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
Saturday, October 17, 2009
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
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
Wednesday, October 14, 2009
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
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
Monday, October 12, 2009
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
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
Saturday, October 10, 2009
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
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
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
Tuesday, October 6, 2009
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
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
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
Friday, October 2, 2009
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
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
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