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
Friday, September 25, 2009
Wednesday, September 23, 2009
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
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
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
Friday, September 18, 2009
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
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
Thursday, September 17, 2009
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
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
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
Friday, September 11, 2009
“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
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
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
Friday, September 4, 2009
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
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
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