TRADEMARK
February 20, 2008
Test your trademark knowledge
For a fun way to kill a few minutes, check out this Company Logo Quiz on AOL.com. How strong is your trademark awareness?
Posted by Emily Campbell at 05:35 PM.
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TRADEMARK
January 17, 2008
Scrabble v. Scrabulous
Check out this statement from an article that I read today: 
Now, as if you needed more proof that we live in a time in which stuffy lawyers don't dig the digital age, take a look at this: It looks like toy-makers Hasbro and Mattel have sent their legal goons to Facebook and demanded that it remove the immensely popular 'Scrabulous' from its site.
Woah, woah, woah. Come on, that wasn’t very nice. Let me explain. Hasbro and Mattel have probably asked their Intellectual Property attorneys to look into this matter. Intellectual property attorneys dig the digital age. In fact, we are advocates for the digital age. That is why we have chosen to devote our working lives trying to protect the very technology and innovation that you create.
If intellectual property attorneys did not step in and advocate for our clients intellectual rights, like the copyright and trademark rights of Scrabble®, everything would be free game and copying and stealing would suddenly become the norm. In fact it’s legal goons like us that advocate and protect the copyright held in the very article written above.
Trust me, I may be a legal goon, but I dig the digital age.
Posted by Emily Campbell at 02:01 PM.
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TRADEMARK
October 05, 2007
Ode to the Trademark
I probably should have left the IP poem writing to Laura and Michael but I decided to take a stab at it. Here goes…
A trademark can be a color,
Like John Deere® green, it can’t be confused with any other.
A trademark can be a logo,
Like the Nike® swoosh, you’ll recognize it anywhere, even if you’re on the gogo.
A trademark can be product packaging,
Like the Coke® bottle, you recognize the shape, you’ll never wonder… what is that thing?
A trademark can be a slogan,
Like Bud Light®’s catchy phrase, “I Love You … Man!”
And in closing,
I- P, you P, we all P for I - P!
Posted by Emily Campbell at 05:04 PM.
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TRADEMARK
May 30, 2007
An Adventurous Trademark Weekend: Mystery Science Theater 3000 v. Mr. Sinus Theater and Katie Holmes v. Katee Holmes
Over the Memorial Day weekend my husband and I went to
Other than being the home of the
But don’t worry this was not the end of Mr. Sinus Theater. Mr. Sinus Theater later changed its name to The Sinus Show. Although the comedy group decided later to part ways, in January 2007 one of the original members formed Master Pancake Theater under the same movie-mockery premise. You can see Master Pancake Theater at the Alamo Drafthouse in
Also during my weekend, I woke up after a nap to a television blasting in the background, “Katie Holmes Threatening Legal Action Against Porn Star”. What?! Sure enough, a fashion student who is hoping to launch a career as a porn star recently changed her name to Katee Holmes. Apparently, "Katee is using the name as a tribute to Katie, who has always portrayed in innocence in everything she's done, beginning with '
This could get interesting.
Posted by Emily Campbell at 04:07 PM.
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TRADEMARK
May 22, 2007
hershey's joins the war on drugs; uses trademarks to fight munchies
Fox News reported Sunday that Hershey’s Candy has filed suit against Kenneth Affolter, a 40–year-old man recently sentenced to 5 years in prison for selling marijuana-laced candies and sodas. Hershey’s is seeking $100,000 in damages for trademark infringment, trademark dilution, and unfair competition.
Affolter sold a number of snacks with names such as Rasta Reese’s, Stoney Ranchers, and Keef Kats, in packaging similar to Reese’s, Jolly Ranchers, and Kit Kat, respectively.
Additionally, it appears that Affolter may have infringed the trademarks of Jones Soda, Pepsi, and Coca-Cola. Oddly enough, he was apparently careful to avoid infringing the beverage mark “Marijuana” registered to Daniel Sinclair, Jr. of Louisiana.
Despite the importance of policing one’s mark, I can’t help but wonder if Hershey’s has considered the reduction in legitimate candy sales that such an attack on appetite-inducing imitations could entail. Fortunately for Hershey’s, this litigation may be relatively inexpensive, as likelihood of confusion should be easier to prove among THC-intoxicated consumers.
Posted by Eagle H. Robinson at 09:08 AM.
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TRADEMARK
March 30, 2007
No "Big Love" for use of a Mormon Trademark
In a recent article by the Associated Press, the Church of Jesus Christ of Latter-day Saints sent a cease and desist letter to Just Add Coffee, a 
gel holding a trumpet up at an angle as coffee is poured into it. The
Posted by Emily Campbell at 04:47 PM.
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TRADEMARK
March 09, 2007
Them's fightin' words
Check out this week’s WAR OF THE WORDS:
Businessweek reports that in Beijing, China, a pharmaceutical company was refused permission to use the name of a disgraced official as a trademark to sell rat poison.
Forbes reports that Jimi Hendrix’s sister, Janie Hendrix, is suing a Seattle company, which is backed by other relatives, for using the legendary guitarist’s image to sell vodka under the name Electric Hendrix.
The Hill reports that two well-known business trade associations, namely the U.S. Hispanic Chamber of Commerce and the U.S. Chamber of Commerce, are embroiled in a legal battle as to the right to use the words "United States" and "chamber of commerce."
JSOnline reports a “food fight” between Palermo's Pizza and Trader Joe's. The complaint claims that Trader Joe's Pizza Palermo frozen pizzas are trading unfairly on the Palermo's Pizza frozen pizza brand. The fun twist to this story is that Palermo is not only the last name of the family that owns the company that makes Palermo's Pizza, Palermo is also a city in Sicily, Italy, having a style of pepperoni pizza distinctive to the region.
Posted by Emily E. Campbell at 03:30 PM.
Permalink: Them's fightin' words
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TRADEMARK
February 08, 2007
UT Regents Hacked, I mean Saw'ed Off, with Aggieland Outfitters' Use of Longhorn Logo
As a precursor, I am a graduate from the University of Oklahoma and I have admittedly participated in the OU/TX college rivalry by displaying upside-down longhorns on numerous t-shirts as well as the back windshield of my car. So I simply could not pass up the opportunity to share this story with you about two of OU’s rival schools. 
The University of Texas Board of Regents recently filed suit against Aggieland Outfitters, a Texas A&M apparel store owned by Fadi Kalaouze in College Station, Texas.
Aggieland Outfitters sells various apparel items featuring the "Saw’em off" logo (seen right). The lawsuit asks that Kalaouze destroy all current logos and refrain from using the "Saw’em off" logo in the future. The UT Regents argue that the similarity of the marks is likely to create consumer confusion and that Aggieland has been and continues to be unjustly enriched at UT's expense by the unauthorized use of the "Saw’em off" mark. Kalaouze argues that the mark is a parody and is protected by the First Amendment.
What are your thoughts? Is this a parody? Is this just poor sportsmanship? Do you think consumers would confuse the UT longhorn silhouette with an upside-down longhorn or one with sawed-off horns? Isn’t this just all part of college rivalry?
Boomer Sooner!
P.S. As a side note, Aggieland Outfitters has set up a legal defense fund at, http://www.sawemoff.com.
Posted by Emily E. Campbell at 04:01 PM.
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TRADEMARK
November 17, 2006
andy griffith sues andrew griffith
And you thought all the news about political campaigns and intellectual property would be over now that elections have ended. Don’t worry, it’s not over yet. Check out this story. William H. Fenrick, candidate for sheriff in Grant County Wisconsin, recently legally changed his name to Andy Griffith, allegedly in hopes of increasing his chances of winning the election. Andy Griffith, the actor, found out and recently filed suit against Fenrick alleging he violated various trademark, copyright, and privacy laws. The actor claims that Fenrick changed his name for the "sole purpose of taking advantage of Griffith’s notoriety in an attempt to gain votes." Fenrick argues that he did not benefit from the name change as he lost the election and that the lawsuit is absurd because no one would actually think that he was the actor. Looks like he should have tried appropriating a different name. One of the posted comments to this story suggested that Fenrick should hire Matlock as his attorney.
Posted by Emily E. Campbell at 02:33 PM.
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TRADEMARK
October 27, 2006
Friday Fun : How Duct Tape is Made
... or as millions of kids say, "How Duck Tape is Made."
Once you are done looking at the video, you might want to have a look at the patents and history.
Posted by Douglas Sorocco at 10:07 PM.
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TRADEMARK
October 20, 2006
The Philly Cheesesteak Family Feud: Pat’s King of Steaks v. Rick’s Steaks
WARNING: This article may contain information about mouth watering Philly cheesesteaks - Do not attempt to read this article if you are hungry or on a diet. 
Birth of the cheesesteak: In the early 1930s Pat and Harry Olivieri invented the cheesesteak while operating a hot dog stand in South Philly. The story is that Pat asked his younger brother Harry to go to the Italian market and buy a hunk of steak. The brothers cut up the steak, grilled it on their hot dog grill with some onions, and put it on a bun. The sold their first “steak sandwiches” for a dime. Cheese whiz was later added to the sandwiches in the 1950s. Later on, provolone and American cheeses were added to the menu of condiments. Along with the birth of the cheesesteak came the birth of Pat’s King of Steaks.
In the 1970s there was a family feud and afterwards Pat left for California. The Olivieri family fought over the restaurant and the trademark rights to Pat’s King of Steaks. Pat died in 1974, not so surprisingly from heart failure. After Pat’s death, Frankie (Harry’s son) eventually bought the Pat’s King of Steaks business from his family. Rick (Pat’s grandson) later started Rick’s Steaks less than 2 miles from the original and current location of Pat’s.
The lawsuit: The event that gave rise to this lawsuit occurred in May 2006 when Rick Olivieri, President of Rick’s Steaks, was interviewed by Al Roker on The Today Show. During the interview, Rick allegedly made reference to Pat’s Steaks. Pat’s King of Steaks argues that these references were made in an effort to profit from the goodwill of the trademark Pat’s King of Steaks.
Additionally, Pat’s King of Steaks alleges that Rick’s uses the marks “Pat’s Steaks”, “Pat’s King of Steaks”, as well as a crown logo similar to the crown used in Pat’s trademark in signage and print advertisements on a story-board, hats, and shirts at its restaurant. Pat’s King of Steaks is asking the court to enjoin Rick’s Steaks from using the mark Pat’s King of Steaks and any other mark confusingly similar to Pat’s King of Steaks.
One may think that Rick may raise the defense of nominative fair use, but will it succeed? Take a look at Rick’s website describing the story behind the steak sandwich. Does Rick’s suggest sponsorship or endorsement by the trademark holder, i.e. Pat’s Steaks? What are your thoughts? What other issues may arise?
Posted by Emily E. Campbell at 02:33 PM.
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TRADEMARK
October 16, 2006
Starbucks v. Starpreya: The Branded-Beverage Battle
First off, does anyone know how to say “Grande Soy Latte with Sugar-Free Hazelnut” in Korean?
On Wednesday, South Korea’s patent court ruled against Starbucks in a trademark infringement suit against Elpreya. Elpreya, a Seoul-based company, was established in 1999 and operates about 40 coffee shops mostly out of roving trucks (similar to ice-cream trucks). Elpreya sells its products under the brand name Starpreya.
Kim Woo Ki, chairman of Elpreya, stated that the brand name Starpreya was derived from the name Freja, a Norse goddess. He stated that Starpreya has nothing to do with Starbucks and that the letters of the name Freja were changed to make it easier for Koreans to pronounce.
Starbucks claimed that consumers confused the Starpreya-branded products with its corporate and brand name. The Korean Intellectual Property Tribunal disagreed and held that the marks were too dissimilar to be confused.
Starbucks Korea opened its first store in South Korea in 1999 and currently operates 177 stores. This is not Starbucks first bout with Elpreya. Last year the Starbucks filed suit against Elpreya arguing that their logo, a woman’s face within a green circle, was too similar to the symbol of Starbucks. The court rejected Starbucks’ claim that the marks were too alike, noting the mermaid versus goddess distinction.
What are your thoughts? Does the mark Starpreya infringe the mark Starbucks?
Posted by Emily E. Campbell at 09:46 AM.
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TRADEMARK
September 20, 2006
What's in a name....
He has been known as Puff Daddy, P. Diddy, Sean John, Puff, and Puffy, but as of September 2006 just call him Diddy…..except in Europe. It looks as though Sean Combs has upset the “Diddy” of Europe a.k.a. Richard “Diddy” Dearlove. Richard, credited with the dance remix of Blondie’s “Atomic” back in the 90s, filed a lawsuit for unfair competition claiming confusion. The case never made it to the High Court since Sean Combs agreed to drop the “Diddy” name in the U.K and pay “significant damages”. Let Richard’s words on being “Diddy” leave an impression on others who consider name changing an art (hint – J.Lo, Prince):
“It doesn’t matter how big people become. This is my name. I’ve been successful too. I’m not a global megastar, but what I do is valid.”
Posted by Laura Wood at 03:41 PM.
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TRADEMARK
August 04, 2006
Reality TV junkie
What do intellectual property attorneys do in their spare time? On this Friday, I have decided to let you in on one of my hobbies – looking up future TV reality show names on the United States Patent and Trademark Office website. See, an interesting little fact unknown to the rest of the world is that production companies usually like to file trademarks on the TV reality show names long before they air on TV. Looking up the names just takes a simple search on the Trademark Electronic Search System.
For example, say you want to know what the production company that brings you American Idol has planned for the future or thought of in the past. If you don’t know the production company name, then first use “American Idol” (with the quotations) as the search term. Clicking on the serial number will bring up information including the trademark owner, FremantleMedia. Now use FremantleMedia as your search term and you have a list of past ideas, current shows, and names of shows that you may see in the future. Some of my favorites from FremantleMedia include:
- Bad Mothers of America (this sounds like a train-wreck worth watching);
- Celebrity Idol (because I would love to see D-List celebrities battling it out to win my vote);
- American Caveman (a game show that caught my attention because I have no idea what it would entail); and last but definitely not least
- Dallas Wives (big hair and accents – I’m still a Texas girl at heart).
Posted by Laura Wood at 04:55 PM.
Permalink: Reality TV junkie
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TRADEMARK
June 13, 2006
Rethink(IP) Announcement: New Weekly Newsletter Covering Trademark Litigation
The fine folks over at Rethink(IP) (ok – it is Steve, Matt and I) announce a new service based upon our highly successful “lawsuit filing” email subscription service.
The fact that a lawsuit has been filed can be an incredibly valuable piece of information, especially in the practice of trademark law. To wit, Rethink(IP) has released a new weekly e-mail newsletter. Called Trademark Lawsuit Mojo, the newsletter consists of a list of Federal trademark lawsuits that surfaced in the previous week.
Why is the existence of a lawsuit being filed such a valuable piece of information?
First, the defendant might not know that he/she/it has been sued!
Your company, or your client, might have no idea that a lawsuit has been filed. How can this be? Remember that in the United States, a plaintiff has 120 days from the date of filing to serve a Complaint upon the defendant(s). To reserve a preferred venue/forum, many times a plaintiff will preemptively file the suit and not serve the Complaint, spending up to the next 120 days putting their case together, acquiring additional evidence, and (sometimes) attempting to settle the dispute.
Knowing that your company or client has been sued (but hasn't been served) can be priceless information when counseling them. How's that for a valuable "heads up?"
Second, the filing of a lawsuit can also be a valuable piece of competitive intelligence.
Knowing that competitor X just sued competitor Y may change discussions you're having with competitor X, Y, and/or A! It could also help in decision-making on several issues, such as marketing and product development. Best of all, it may allow you to monitor the case for information that might be helpful in a variety of situations.
As one reader recently put it:
I subscribed last week and already impressed a client yesterday by being aware of a lawsuit filed by one of its competitors.
You can subscribe to Trademark Lawsuit Mojo using one of the below links. Current rates are $99.99 a year or $9.99 a month. The first three weeks are free (free trial). After the free trial expires you can decide whether you would like to continue your subscription.
We don't expect any of us will be quitting our day jobs anytime soon … commercialization of this project (and eventually Copyright and Patent newsletters) is done to fund the “Rethink(IP) Projects Account” and let us provide additional cool tools and services to the legal community. Apparently computer programmers don’t work for free.
Please contact Stephen M. Nipper at steve@rethinkip.com for additional information.
| $99.99/year | |
| $9.99/mo |
Posted by Douglas Sorocco at 04:48 PM.
Permalink: Rethink(IP) Announcement: New Weekly Newsletter Covering Trademark Litigation
TRADEMARK
May 29, 2006
Recently on Rethink(IP)'s RSS Mojo Blog
- Listings of recently filed IP Lawsuits
- Trademark Lawsuit Filing Update (through May 27, 2006)
- Patent Lawsuit Filing Update (through May 27, 2006)
- Copyright Lawsuit Filing Update (through May 27, 2006)
- Trademark Lawsuit Filing Update (through May 21, 2006)
- Patent Lawsuit Filing Update (through May 21, 2006)
- Copyright Lawsuit Filing Update (through May 21, 2006)
- USPTO Notices:
- Patent Prosecution Highway Pilot Program between the United States Patent and Trademark Office and the Japan Patent Office (signed 22May2006)
- Notice of Collection of Practitioners’ E-mail Addresses
- Commerce Deputy Under Secretary to Address Midwest Businesses On U.S. Government Efforts to Combat Counterfeiting and Piracy in China
- USPTO Exam Guide for Geographical Indications Used on Wines and Spirits
- Request for Comments on Patents Search Templates (16May2006)
- Commerce Deputy Secretary to Speak at USPTO's Community Day
- U.S. GOVERNMENT BRINGS ANTI-COUNTERFEITING AND PIRACY PROGRAM TO OHIO
Posted by Douglas Sorocco at 10:58 AM.
Permalink: Recently on Rethink(IP)'s RSS Mojo Blog
TRADEMARK
May 09, 2006
who cares if we were 5-6 last season, the 12th man is ours
We can all breathe a sigh of relief. The 12th Man trademark is remaining with Texas A&M. Spelled out in a joint statement released by Texas A&M University and the Seattle Seahawks, the two sides have formed an agreement and the pending lawsuit is dismissed.
As a small victory for Texas A&M, “..the Seahawks acknowledge Texas A&M's ownership rights in the mark and will continue to use the mark under license in connection with the Seahawks' operations, promotions and fan activities throughout the Pacific Northwest."
But there’s more……I’ve got the inside scoop, and I’m willing to share. As a distinguished alumni of Texas A&M, I received an e-mail circulated to Texas A&M students, faculty and staff from the Chief Marketing Officer & Vice President for Communications, Steven B. Moore.
I think his words sum up just what this victory means to Texas A&M:
“I'm pleased to inform you that, after months of negotiations, the university has reached an amicable agreement with the Seattle Seahawks resolving the controversy regarding the use of Texas A&M's 12th Man trademark. Under the agreement, the university has granted the NFL team a license to use the 12th Man trademark in a seven-state area in the northwest that encompasses the current primary broadcast area of the Seahawks. As is the case of all licensees, the Seattle Seahawks will pay the university a licensing fee and will state publicly that Texas A&M owns the 12th Man trademark each time it is used.
It is hard for non-Aggies-and the media-to understand the depth of what the 12th Man reference and depiction-and the underlying tradition - means to Texas A&M and as a result, the university was criticized for vigorously opposing use of the trademark by the Seahawks. As you know, the 12th Man is more than a trademark, greater than football and certainly more than changing the course of a football game. The 12th Man is a call to action for Aggies. It symbolizes loyalty and our unique Aggie Spirit. It creates friendships where none existed before, heals wounds that seemed to be beyond repair and creates a common language that Aggies speak all over the world.We had no choice but to challenge the Seattle Seahawks, just as we must protect and defend in every way possible all of our trademarks - and none is more crucial than that of the 12th Man because of all it means to Aggies. We have not only protected the 12 Man trademark, but have strengthened it for the future to ensure that others cannot successfully challenge us.
Now, we are in a position to license our trademark as a means of broadening our coverage and unquestioned ownership of the mark in both professional and collegiate sports.In the fall, you will see an unprecedented focus on our 12th Man trademark here at Texas A&M. Our goal is to maximize the recognition and connection to our school.
Gig 'em,”
That’s right Steven…..Gig ‘em.
(Click here for more information about the dispute.)
Posted by Laura Wood at 05:45 PM.
Permalink: who cares if we were 5-6 last season, the 12th man is ours
TRADEMARK
May 07, 2006
Turn that frown upside down?
Dare we say – could Walmart be turning that frown upside down?
It appears that Walmart is opposing (PDF complaint 219 KB) Mr. Loufrani’s registration (U.S. Serial No. 75–977,376) of the iconic smiley face image. Sacrebleu!
Of course, Walmart call their mark a “happy face” rather than a “smiley face” – can you smile without being happy afterall?
As long as they leave my Jeep smiley alone… let them all eat cake!
For decades, the yellow happy-face symbol has encouraged millions to smile.
The smiley face and "Have a Nice Day" helped to define the '70s. With two dots and a pencil stroke, schoolchildren have brightened handwritten messages by filling in their O's with mini-smileys. These days, nary a cheery e-mail is complete without a typographical smile.
But now a bitter legal battle over smiley could be enough to make the happy little symbol frown.
Wal-Mart Stores Inc., which uses a yellow happy face to try to put its shoppers in a carefree mood, is saying -- with a straight face -- that it has exclusive rights to the familiar image, at least among retail department stores. (Via the Redding: Business News)
Posted by Douglas Sorocco at 08:37 AM.
Permalink: Turn that frown upside down?
TRADEMARK
May 05, 2006
Trumped out
Ivana Trump is making her move into the real estate business, and taking a piece of the Trump pie. Two years ago, Ivana Trump filed for a trademark in the USPTO for the mark “Ivana Trump” to be used in (you guessed it) “real estate services.” As The Smoking Gun reported, this time the Donald isn’t sharing. Citing his many real estate ventures including Trump Tower, The Trump Organization, Trump International Hotel & Tower, Trump World Tower, Trump Royal, Trump Palace, etc., Trump is challenging Ivana’s use of her former married name as confusingly similar. Although it looks as if Donald is only going after only the one mark, there are actually a couple of marks Ivana is seeking: Ivana, Ivana Trump, Summit by Ivana Trump, Ivana Las Vegas by Ivana Trump, and Ivana Las Vegas. The Las Vegas trademarks are probably for Ivana – The Supertower, which coincidently will be battling it out against the Trump Tower Las Vegas. Guess the world is finally going to see whether Donald was born with the real estate gift or if he learned everything he knows from Ivana. I know where my bets are….
Posted by Laura Wood at 11:06 AM.
Permalink: Trumped out
TRADEMARK
April 12, 2006
Trademarking Corruption
Well, it appears that it isn’t just tax cuts, immigration and hurricane Katrina rebuilding that threaten congressional members these days – now they have to worry about trademark infringement.
“Conservative activist Grover Norquist is seeking a trademark on “K Street Project,” saying Democrats and Majority Leader John Boehner (R-Ohio) have wrongfully acquired the term to describe unethical practices that have nothing to do with his organization.
Far from running away from the term, as most other Republicans have since January, when lobbyist Jack Abramoff agreed to plead guilty to corruption charges, Norquist is embracing it.
His project is a branch of Americans for Tax Reform (ATR), which he heads. He says the project is an innocuous list of job openings for Washington lobbyists and a database of lobbyists’ political ties and federal campaign contributions.”
While there are no apparent pending registrations for “K Street” or “K Street Project” currently available online at the US Patent and Trademark Office, there is a trademark registration for “K Street Coffee” — could the two be considered confusingly similar?
Furthermore, since the purpose of a trademark is to indicate a single source or origin of goods or services – could Mr. Norquist claim that the term “K Street Project” is indicative of a single source or has it become more generic for lobbying corruption in general (a la escalator and aspirin)? If nothing else, it will be an interesting political “hot potato” when and if Mr. Norquist actually files an application.
In any event, what does Mr. Norquist want to do:
“Some people say Kleenex when they mean tissue,” Norquist said. “We will jealously guard the real phrasing the way Kleenex and Coca-Cola do. We will sue anyone who says it wrong and make lots of money.”
So, does this make Mr. Norquist a “trademark troll”?
Posted by Douglas Sorocco at 01:30 PM.
Permalink: Trademarking Corruption
TRADEMARK
December 11, 2005
why you should do a trademark clearance - tiffany's versus tiffany's
When starting a new business, launching a new product or even shortening a previous business/product name, you should always do a trademark clearance search in order to “clear” the proposed mark.
The goal is to ensure that the mark you are considering for use is not “confusingly similar” to a mark used by another for similar goods/services. Obtaining a competent opinion up front can save you a lot of time, frustration and money (for changing everything later).
A good cautionary tale comes from Diamonds.net about the recent lawsuit brought by Tiffany & Co. against Tiffany’s Restaurant (U.S. District Court for the District of New Jersey ::: 05-cv-05074-DMC-MF TIFFANY AND COMPANY et al v. ROMANELLI et al – complaint PDF - 577 KB).
The lawsuit, filed at a federal court in New Jersey, claims that Tony Siragusa, a former NFL lineman, and his
business partners are seeking to create a restaurant empire based on the Tiffany’s name.
"Tiffany jewelry is well known, and it's not like you're going to drive by our restaurant, think it's owned by Tiffany jewelers, and say this is where I'm going to buy a watch," Siragusa told The Star-Ledger of Newark.
As Tony went on to comment – no one is going to push him around! What he doesn’t realize, however, is that the mark “Tiffany’s” is arguably a famous mark and will be given significant scope and latitude with respect to prospective infringers. Is it likely that consumers might be confused – you never know. With the trend for brand expansion into restaurants and eateries, it is at least plausible that Tiffany & Co. may or could expand into the restaurant business.
It is a classic struggle — diamonds versus clams Di Napoli.
Posted by Douglas Sorocco at 10:17 AM.
Permalink: why you should do a trademark clearance - tiffany's versus tiffany's
TRADEMARK
November 25, 2005
BitTorrent, Hollywood Reach Piracy Deal
This seems like a reasonable approach to a troubling issue:
BetaNews | BitTorrent, Hollywood Reach Piracy Deal
BitTorrent and the MPAA struck a deal on Tuesday that may prevent future legal action against the file sharing network, and will make it tougher for users to find feature films through the service.
In May, Bram Cohen, the creator of BitTorrent, introduced technology that allowed users to search the Internet for Torrent files. A good deal of the content found was legal, the company claims, but searches also found copyrighted material, such as movies and television shows.
Under the terms of the deal, Cohen will add technology to the search engine used by bittorrent.com that would effectively remove content owned by the studios that make up the MPAA.
Posted by Douglas Sorocco at 12:10 PM.
Permalink: BitTorrent, Hollywood Reach Piracy Deal
TRADEMARK
BitTorrent, Hollywood Reach Piracy Deal
This seems like a reasonable approach to a troubling issue:
BetaNews | BitTorrent, Hollywood Reach Piracy Deal
BitTorrent and the MPAA struck a deal on Tuesday that may prevent future legal action against the file sharing network, and will make it tougher for users to find feature films through the service.
In May, Bram Cohen, the creator of BitTorrent, introduced technology that allowed users to search the Internet for Torrent files. A good deal of the content found was legal, the company claims, but searches also found copyrighted material, such as movies and television shows.
Under the terms of the deal, Cohen will add technology to the search engine used by bittorrent.com that would effectively remove content owned by the studios that make up the MPAA.
Posted by Douglas Sorocco at 12:10 PM.
Permalink: BitTorrent, Hollywood Reach Piracy Deal
TRADEMARK
September 21, 2005
"Cheap" Logo Design Can Be Costly
Today, I came upon the boingboing post Logo rip-offs, which links to an internal page on Bad Design Kills. The page, titled LOGOWORKS.COM RIP-OFFS, shows several logos that are suspect from a trademark view. 
For example, the logo on the right looks strikingly similar to the one on the left. According to the sources I could find on the internet, the one on the left was created by the discount logo designers at logoworks.com.
This caused me to think about the liability of the designers for trademark infringement. I looked to their Terms and Conditions of Use and discovered that "no trademarks or service marks . . . are being conveyed." Unfortunately, the design firm is not responsible for any kind of trademark clearance. This would likely be true even without such a disclaimer.
While I believe that the "copycat" designers may have a copyright problem, I think they're probably okay when it comes to trademarks. They are not using the mark to sell similar goods. Rather, they're selling the mark itself.
The moral of the story: Call your favorite trademark lawyer before using a new logo, especially if the logo comes from a discount designer.
Posted by Melody Wirz at 02:43 PM.
Permalink: "Cheap" Logo Design Can Be Costly
TRADEMARK
"Katrina" Trademarks
New
York Daily News reports Bad taste! Katrina booze logo sought. Apparently a few guys from Louisiana have decided to capitalize on the disaster by filing a registration on "KATRINA" for alcoholic beverages. I guess the drink is probably more potent than the average New Orleans Hurricane.
However, other "Katrina" applications have been filed since the storm. For example, "KATRINA BLOWS BUSH SUCKS" for bumper stickers and "KOKUA FOR KATRINA" for musical entertainment. However, the most startling mark was registered in 1986: "KATRINA AND THE WAVES" for musical entertainment services. You probably don't remember the band, but I would be willing to bet anyone over the age 25 remembers the hit, "Walking on Sunshine." How's that for serendipity?
Posted by Melody Wirz at 10:06 AM.
Permalink: "Katrina" Trademarks
TRADEMARK
September 19, 2005
Fate of Redskins Trademark Registration Still Uncertain
The good folks over at IP News Blog point out Court Revives case against Redskins. The Court of Appeals for D.C. reissued the opinion earlier this month.
The court reversed the lower court ruling on the issue of latches. Pro-Football, Inc. claimed that this finding would bring uncertainty to trademark owners. However, the court was unsympathetic. While the plaintiffs in the case claim that the term "Redskins" was disparaging from its registration, I still wonder about the impact of this case on a mark that later becomes disparaging.
Interestingly, the impact from a loss in the case would not require the NFL franchise to change its name. Instead, it would result in the registration being cancelled. The team would still have all the rights associated with trademarks at common law. While a registration provides proof of the strength of the mark, the fact that the mark was registered for decades would probably have some bearing on the outcome of any future trademark dispute.
Although it has been ongoing since 1992, this is still a case to watch.
Posted by Melody Wirz at 02:53 PM.
Permalink: Fate of Redskins Trademark Registration Still Uncertain
TRADEMARK
September 15, 2005
Cold Cereal Battle Heats Up
Cereal
bars may be the next great thing to happen to fast food. But, should the first person to capitalize upon the idea get the exclusive rights to the concept? Maybe. According to this, The owners of Cereality are very serious about cereal. They have sent informative letters to competitors "Bowls - A Cereal Joint" and The Cereal Bowl. According to the article, the letters threaten "serious legal consequences" for infringement of Cereality's trademarks - I found 5 registered and 2 currently pending in the USPTO.
While I don't see much similarity in the trademarks, Cereality also has a patent pending for "Methods and Systems for Providing Food, Beverages, and Associated Goods and Services in a Retail Environment." However, a pending patent doesn't mean much until the patent issues, and a non-final rejection was mailed last month. So, the question remains whether the patent will issue, and if so, whether the patent will stand up to the test of litigation.
However this dispute turns out, I'm looking forward to visiting a cereal bar soon.
Posted by Melody Wirz at 10:36 AM.
Permalink: Cold Cereal Battle Heats Up
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TRADEMARK
September 08, 2005
IP and Katrina
- As many reports plainly show, there is little that survived Katrina.
However, IPFrontline reports Intellectual Property Survives Hurricane Katrina. The author states "it occurred to me that intellectual property - copyrighted artwork, patented inventions, computer code, brand names - may be all that remains of thousands of innovative businesses in the New Orleans, Gulfport, Biloxi, Mobile and other Gulf coast areas. In certain other institutions - hospitals and universities, for example - intellectual property licensing may in fact be the primary way to collect new revenues for some time to come."
I guess the nifty thing about intangible property is that it can survive even a category 5 hurricane.
- There is an interesting post at The Trademark Blog: Seized Counterfeit Goods Given To Katrina Evacuees. The post refers to a Washington Times article, and asks whether this type of distribution has happened before. It also brings up a point about the safety of the goods. Usually seized goods are destroyed (after a final determination of infringement).
I also found another Washington Times article about this. Are the policy reasons for destruction of infringing goods overridden by the necessity of the hurricane victims? What if there has not been a final determination of infringement? Why weren't the goods already destroyed? Things that make me go hmmm.
Update 9-12-05: The USPTO considers Katrina to be an "extraordinary situation," so if you were affected and have late maintenance fees as a result, you're off the hook. But the USPTO urges you to act promptly to remedy the delay.
Posted by Melody Wirz at 10:12 AM.
Permalink: IP and Katrina
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TRADEMARK
September 07, 2005
ip memes' newest members
IP Memes will include a couple of new contributors in the next issue due out on September 26 - namely, Matt Buchanan of the Promote the Progress blog and myself.
If you're not familiar with The TechnoLawyer Community...you should be. TechnoLawyer provides a number of great newsletters (including IP Memes), and a forum where "technolawyers" can ask one another questions about technology (i.e., "has anyone every used _______ and what did you think about it?"). It is an excellent resource for all tech attorneys, and has an archive which I have searched from time to time with questions (what scanner to purchase, whether I should upgrade to the latest version of __________, etc.). The best part? It is free. Try it, if you don't agree you can easily unsubscribe.
Over the past year Steve Nipper of The Invent Blog has been writing the IP Memes newsletter. IP Memes is described as “a weekly newsletter that explores emerging technology-related intellectual property issues — or “memes” as we call them. Think of it as your coal-mine canary for intellectual property issues.”
Steve has been doing a solid job this past year - Matt and I are both thrilled to be asked to join him to continue IP Memes' tradition of excellence and join some of the IP community's finest commentators and thinkers - including Dennis Kennedy, Denise Howell, Gail Standish, Kevin Grierson and Kurt Calia - all of whom, are IP Memes alumni.
Click the image above to be taken to the signup form for IP Memes and yes, it is just another example of the collaboration taking place over at Rethink(IP). You never know where we might "pop up" next.
Posted by Douglas Sorocco at 08:06 PM.
Permalink: ip memes' newest members
TRADEMARK
LEGO My LEGOS - The Significance of "S"
You have most certainly heard of "LEGOS." 
They have long been one of my favorite toys. However, when you try to go to the website legos.com, you will quickly find that you have made a mistake. A message sponsored by "LEGO" appears to inform you that the product is called '"LEGO bricks or toys" and not "LEGOS."' The site then directs you to the proper site, lego.com.
According to a techdirt post, this is a little unsettling. The post states that the website "gives you a lecture on how to properly spell their name."
Why would LEGO be so protective of this mark? I cannot say. The company website provided little explanation outside of the origin of the name: 'The name LEGO comes from the Danish words "Leg Godt," which means "Play well." In Latin it means "I put together."'
I found a federally registered trademark for "LEGGO'S," but it was for frozen food (not likely confused with interlocking plastic building blocks). My best guess is that this message is an attempt to avoid genericism. However, the avoidance of using an "S" on the end of "LEGO" seems a little weird to me. It is common to pluralize a word by adding an "S," and "LEGO" in my mind refers to a single "LEGO brick." Therefore, multiple "LEGO bricks" would still be "LEGOS." Maybe I'm missing something about why we are not supposed to use the simple term "LEGOS" instead of the much more complex "multiple LEGO brand bricks or toys."
UPDATE 9/7/05: An "expert" has helped me understand a little more by pointing me to the part of the LEGO company website that covers this better. It states 'If the LEGO trademark is used at all, it should always be used as an adjective, not as a noun.' I guess I should have realized that trademark always refers to the source and not the product itself. I believe this is the second law of trademarks. The first law of trademarks is trademarks arise out of USE. Even so, it is still common to use trademarks as nouns, with the intent to identify the source. Source is often implicit in the noun itself. For example, people do not say they drive a "Ford brand car," they say they drive a "Ford." This use leaves little question about the source of the "Ford."
Posted by Melody Wirz at 10:11 AM.
Permalink: LEGO My LEGOS - The Significance of "S"
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TRADEMARK
September 02, 2005
Diddy's Newest Ditty
Model Tyson Beckford has sued Diddy for breach of contract and use of his trademarked image. The suit was filed in the Southern District of New York on August 12. For the story, click here. For the complaint, click here. Apparently, Mr. Beckford has only been paid about half of the contract price for modeling Sean John clothing.
In other Diddy trademark news, rapper 50 Cent claims Diddy has changed from his previous name "P. Diddy" in order to more closely resemble 50's nickname "Fiddy" (an alternate pronunciation of "fifty"). According to this post, Fiddy has been quoted as saying "I'm Fiddy and now Puffy wants to be Diddy, trying to move his name closer to me, you know what I'm saying?"
Posted by Melody Wirz at 01:50 PM.
Permalink: Diddy's Newest Ditty
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TRADEMARK
August 24, 2005
President Bush is an Alumnus of Phillips Academy, But Which One?
Both Presidents with the last name Bush attended Phillips Academy. You may be surprised to learn that the school they attended was in Andover, not next to the St. Bernard public housing development in New Orleans.
Okay, so maybe you aren't surprised by this. However, the lawyers representing the Phillips Academy in Andover were very serious about policing their registered mark, "PHILLIPS ACADEMY" (Registration Number 2,862,212). In a phone call to the new Phillips Academy in New Orleans, the law firm for the old Phillips Academy threatened a lawsuit over the 227 year-old trademark. Rather than spending precious education money on a lawsuit, the New Orleans school agreed to change to KIPP Phillips College Prep. This was probably a wise choice. The endowment for Phillips of Andover is $556 million, which exceeds the budget of the entire Orleans Parish school system. Hopefully, the avoidance of a lawsuit will leave precious money for the education of the 125 eighth-graders enrolled at the New Orleans school this year (nearly half of whom are statistically expected to drop out).
This story isn't all about bullying, though. Phillips Academy in Andover agreed to donate $2,000 of its $556,000,000 to cover costs involved in changing the name on signs and uniform T-shirts. This is the first time I've heard of a trademark owner paying the costs for the alleged infringer to move off the mark.
For more on this, see Bush's old school gives N.O. school a test in the Times-Picayune. Additionally, the websites for the schools can be found here (Andover) and here (New Orleans).
Thanks to Andrew in New Orleans for sending us the link.
Posted by Melody Wirz at 12:50 PM.
Permalink: President Bush is an Alumnus of Phillips Academy, But Which One?
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TRADEMARK
Trademarks - Logos and Beyond
After reading Time for a Sensory Trademark Audit? at I/P UPDATES, I got to thinking. Obviously, most people think of logos or words when they hear the term "trademark."
However, the public does not necessarily realize that other observable source identifiers can also be trademarked. An example often taught in law school is color. After all, who doesn't think of John Deere when they see a "John Deere Green" piece of farm equipment. But, we're still talking about trademarks that use only one sense, sight. Marketers are increasingly aware of the need for multiple sensory input for a lasting impression. I've heard that smell is the sense most closely associated with memory. So, why not trademark a smell? Actually, that's already been done, along with sounds. Some examples of sensory marks that are registered include the following:
- 2752053 - a blinking LED-type light placed conspicuously on the front of the product packaging for nutritional supplements
- 2927617 - the ding of an airplane intercom, followed by the wording YOU ARE NOW FREE TO MOVE ABOUT THE COUNTRY
- 2607415 - the sound of a duck quacking the word "AFLAC"
- 2692077 - the sound of a childlike human giggle which represents the Pillsbury Doughboy giggle
- 2560618 - a scent mark having the scent of bubble gum for oil
- 2442140 - a human voice yodeling "YAHOO"
- 2821863 - the spoken words YOU'VE GOT MAIL
- 2519203 - a deep, male, human-like voice saying "Ho-Ho-Ho" in even intervals with each "Ho" dropping in pitch"
- 2323892 - pre-programmed rotating sequence of a plurality of high intensity columns of light projected into the sky to locate a source at the base thereof
- 1395550 - MGM's lion roaring
However, noticeably absent from this list are any tactile marks. As far as I can tell, texture may be the next great frontier in trademark protection. I wonder who will be the first to register a trademark on a fuzzy soap box or a hairy shampoo bottle.
Posted by Melody Wirz at 12:04 PM.
Permalink: Trademarks - Logos and Beyond
TRADEMARK
August 18, 2005
The Artist Formerly Known As P. Diddy
Word on the street is that fans should now refer to Sean Combs as "Diddy." Actually, I didn't hear this on the street, but rather on television, and again in the article Diddy is more personal. So, Sean Combs, previously known as "Puffy," "Puff Daddy," and "P. Diddy," now wants to be known simply by "Diddy." The most recent name change was to relieve the formality of the "P." Apparently, Mr. Combs feels that his alter-ego should be known only by last name, claiming "Diddy is more personal."
So, I got to thinking. Has "Diddy" registered all of these trademarks with the USPTO. I was surprised to find that he has applied for at least 27 different registrations, with 7 actually being registered. The first registered mark is "Daddy's House," first used in 1994 for charitable fund raising services and other charitable services for children. Maybe "J. Lo" was able to see this softer side of "Diddy."
Other registered marks include "Puff Daddy," "Puffy," and "Sean John." But my favorite is the dead application requesting registration of "Farnsworth Bently." The USPTO rejected the mark because it is almost identical to the alter-ego of "Diddy's" former assistant, Derek Watkins, a/k/a "Farnsworth Bentley." In the application, "Diddy" claims that he created the character, and controlled Mr. Watkins when he appeared as the character. However, the application was ultimately abandoned, along with the very similar "Fonzworth Bently."
Since all the cool kids seem to have an alter-ego, I think I will also have to give some serious thought to what my fans should call me.
Posted by Melody Wirz at 10:37 AM.
Permalink: The Artist Formerly Known As P. Diddy
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TRADEMARK
August 12, 2005
NCAA Mascot Controversy
As you may know, the NCAA has banned certain Native American nicknames in postseason play. The banned names are those that the NCAA deems "hostile or offensive." Unfortunately, the determination of which schools will be affected is subjective. This has created quite a bit of press. However, I haven't seen anything discussing the trademark aspect of the names.
The most prominent protester of the NCAA ban is Florida State, with the nickname of "the Seminoles." The University first obtained registration of the mark "SEMINOLE" in 1984, and has been using it since 1947, according to records in the USPTO. Under 15 U.S.C. § 1052, the USPTO will not register a mark that "[c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute." However, many of these "hostile or offensive" nicknames are registered marks.
This leads to the question whether the registered marks should also be cancelled. This has been addressed with regard to the "Washington Redskins." However, the resolution of the matter was based on procedural and evidentiary determinations. In fact, in Pro-Football, Inc. v. Harjo, the D.C. District Court states
Ultimately, the evidence in the case does not answer the legal question of whether the trademarks, in the context of their use during the relevant time frames, may have disparaged Native Americans. The evidence chips away at the sides of this legal question but never helps answer it directly.
The promise by Florida State to fight will obvioulsy challenge the NCAA ruling. However, it doesn't seem likely that any party will try for cancellation of the registered marks in the near future. But, the challenge is waiting, and the outcome will certainly be interesting.
Go Pokes and Boomer Sooner (er, should I say "Go friendly range-living, cattle-driving, land-loving sort of people" and "Good luck to those who wait for the boom of the gunshot before staking their claim to land, as well as those who couldn't quite wait for the official start")
Posted by Melody Wirz at 10:13 AM.
Permalink: NCAA Mascot Controversy
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TRADEMARK
August 11, 2005
FedEx Fuming Over Boxy Furniture
From the Wired News story, Furniture Causes FedEx Fits:
Most of us have been there. You can just barely afford to pay the rent. But forget about buying furniture -- not if you want to eat, anyway. . . . But instead of scouting street corners for a ratty, unwanted couch, [an innovative guy] got creative and built an apartment full of surprisingly sturdy furniture -- out of FedEx shipping boxes.
The creator of FedEx furniture has posted a blog, and an entire website devoted to his works. So, you think FedEx would be pleased. After all, this is proof that their boxes are VERY sturdy, right? Not really.
Apparently FedEx has sent a letter insisting that the furniture itself, along with the internet website and the pictures violate the copyright and trademark rights held by FedEx. The letter even claims that the actions fall within the purview of the DMCA. Luckily, the creator is represented by the Stanford Law School Center for Internet and Society who sent this letter in response.
While I am not familiar with the entire dispute, my guess is that FedEx doesn't want people using their "free" boxes for anything but FedEx shipping. However, I think claiming copyright and trademark infringement is an unproductive way of stopping poor folks from using boxes for furniture.
Posted by Melody Wirz at 08:59 AM.
Permalink: FedEx Fuming Over Boxy Furniture
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TRADEMARK
July 13, 2005
Aussie Meets Opposition in "McBrat" Trademark
An Australian lawyer by the name of Malcolm McBratney has been using his nickname, "McBrat," to sponsor a rugby team. However, when he attempted to register the mark, he was blocked by McDonald's Australia. McDonald's claims the mark is too similar to McKids.
McBrat (aka Mr. McBratney) disagrees, stating "[w]hat it boils down to is that McDonald's seems to be trying to own not only the McDonald name but everything beginning with Mc . . [t]here are a lot of people with Irish and Scottish heritage who'd dispute that."
The fun part about this dispute is that McBrat specializes in intellectual property law.
For more on the story, check out Australian lawyer vows to fight McDonald's in trademark row.
Posted by Melody Wirz at 09:16 AM.
Permalink: Aussie Meets Opposition in "McBrat" Trademark
TRADEMARK
July 11, 2005
Typosquatter Loses Battle With Google
Last week, the National Arbitration Forum released a ruling in favor of Google. The issue was whether certain domain names were confusingly similar to Google's domain name. The disputed domain names included googkle.com, ghoogle.com, gfoofle.com and gooigle.com. Since the extra letter in each name is next to a correct letter, it appears that this is a case of "typosquatting." According to Wikipedia, "[t]yposquatting is a form of cybersquatting which relies on the chances that a person who enters a website address into a web browser will accidentally enter an incorrect website address and be led to an alternative address which the cybersquatter owns"
The decision is only one of thousands of domain name disputes heard annually by the National Arbitration Forum.
For more, check out the National Arbitration Forum Blog, or the AP story (via BusinessWeek Online).
In my research, I found that ggogle.com, gooogle.com, gogle.com, and googlee.com all lead to Google (with googlee.com leading to the English version). However, googgle.com and googlle.com lead to other sites. I wouldn't be surprised if we saw these sites challenged soon.
Posted by Melody Wirz at 10:39 AM.
Permalink: Typosquatter Loses Battle With Google
TRADEMARK
June 21, 2005
Busted! - Unlicensed Piñatas
According to an article in the LA Times, piñatas sporting the likeness of cartoon characters were the subject of an undercover sting by entertainment industry representatives.
"Disney declined to comment on the piñata lawsuits, filed in U.S. District Court in Los Angeles in February and April."
I did a little research and found a number of Disney characters in piñata form. For example, Ariel (aka the little mermaid). I don't know about you, but I'm not sure the piñata likeness does the cartoon image much justice.
Posted by Douglas Sorocco at 09:25 AM.
Permalink: Busted! - Unlicensed Piñatas
TRADEMARK
June 17, 2005
risqué Friday continues - trademarked sirens
Let's make it an all risqué Friday!
From the Deadprogrammer's Cafe blog: How the Starbucks Siren Became Less Naughty
Corporate logos often have elements that most people don’t know about. For
instance the arrow in the Fedex logo that was covered in depth on The Sneeze. This arrowmade me think a little about the Starbucks logo.
….
Basically, from what I gathered from different sources, including that book, there is a lot of confusion between the different mythological half-women.
Typically they are called Sirens - both the half-bird/half-woman and the half-fish/half-woman varieties. The fish type are usually called Mermaids. Both types according to the ancient Greeks were in the business of seducing mariners with songs and promises of sex and then killing them, but Hans Christian Andersen and Disney mostly made everybody forget that.
Posted by Douglas Sorocco at 08:50 PM.
Permalink: risqué Friday continues - trademarked sirens
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TRADEMARK
June 08, 2005
Gripe Site Meter
I've previously posted about the trademark implications of gripe sites. I recently came upon a website with a "meter" that shows which websites have "sucks" sites and which ones have "rules" sites. It even has a nifty bar chart.
Posted by Melody Wirz at 05:09 PM.
Permalink: Gripe Site Meter
TRADEMARK
May 31, 2005
Canadian Trademark Practice Change - First to File for Examination Purposes
I just received an urgent alert from one of our Canadian trademark associates, Ridout & Maybee, about a significant change to Canadian trademark practice.
According to their memo – the Canadian Federal Court of Appeal handed down a decision on May 10, 2005 in Attorney-General of Canada v. Effigi In., (French appellate opinion and English trial court opinion) holding that Canada is a “first to file” country with respect to trademark examination.
“In other words, for examination purposes, where there are confusingly similar marks which are the subject of co-pending Canadian applications, the Canadian Trademarks Office need look only at the filing or priority date of the application. The first one filed will be approved for advertisement, irrespective of any dates of Canadian use set out in the applications. This change in Canadian practice takes place immediately.”
It is important to note that this change is only for purpose of examination – after examination, later filed marks that have earlier use dates can still be used to challenge the earlier filed mark in an opposition proceeding.
“This decision makes it clear that it is in opposition proceedings, and not at the examination stage, where the party with the earlier Canadian use date (but later filed application) can prevail. Thus, we expect faster prosecution of trade-mark applications but increased numbers of oppositions in Canada.”
Thank you to Ridout & Maybee for the information.
Posted by Douglas Sorocco at 04:14 PM.
Permalink: Canadian Trademark Practice Change - First to File for Examination Purposes
TRADEMARK
May 27, 2005
Barbie vs. Barbie's
= 
?The mammoth California-based toy company is battling a Quebec restaurateur over Barbie's -- even though the name refers to the menu's barbecued food.
Mattel is suing to shut down a BBQ joint in Quebec called "Barbie's," on the grounds that very stupid children might wander alone into the bar/restaurant and order ribs under the mistaken impression that they have something to do with the Barbie dolls.
Posted by Melody Wirz at 01:32 PM.
Permalink: Barbie vs. Barbie's
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TRADEMARK
May 20, 2005
It's Getting Hot - Nelly's Trademark Dispute
For those of you who listen to top 40 music, the following lyrics are probably familiar: "Warm, sweatin' it's hot up in this joint Vokal tanktop, all on at this point." But, if you're like I was, the term Vokal in this statement is nearly meaningless. Well, I should have known it was a promotion for a product. You see, Nelly has a clothing line called Vokal.
This trademark is currently subject to dispute. Interestingly, the insurance company footing the bill for the defense recently filed suit seeking a ruling that they don't have to pay for trademark defense.
No trademark registrations have issued for Vocal, but 6 are currently pending.
For more on this subject, visit Nelly in trademark dispute over clothing line name
Posted by Melody Wirz at 05:30 PM.
Permalink: It's Getting Hot - Nelly's Trademark Dispute
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TRADEMARK
May 06, 2005
Girl Scout Cookies Protected By Intellectual Property - Kinda
The term "Girl Scout Cookies" is a registered trademark (Reg. # 0964309) with a first use date in 1936. However, the most popular cookies sold by the Girl Scouts isn't a registered trademark. In fact, the Girl Scouts have never applied for the trademark on "Thin Mints."
I really can't figure out the reason behind the lack of any trademark for "Thin Mints." It's pretty likely that the term would be considered descriptive. After all, the cookie is a mint flavored cookie that's pretty thin. However, in trademark law, you can get a trademark on a descriptive term as long as it has secondary meaning. I tried a little experiment in the office to determine whether the requisite secondary meaning was present. Unfortunately, I got mixed results when I asked the question "What does the term 'thin mint' mean to you?" Some stated that it's a girl scout cookie. However, other responses included references to York Peppermint Patties, Andes® mints, and Baskin Robbins® Mint Chocolate Chip ice cream.
I still think that "Thin Mints" refer to Girl Scout cookies. The other responses I got referred to mints that were thin, but I suspect that the Girl Scouts have established a secondary meaning for the term "Thin Mints."
Interestingly, Thin Mints are the one cookie created by both bakeries licensed by the Girl Scouts to make cookies. The other cookies may look the same, but they have different names. It seems that ABC/Interbake Foods uses pretty descriptive terms for its cookies: Carmel Delites, Peanut Butter Patties, Classic Shortbread, Peanut Butter Sandwiches, Animal Treasures, and Thin Mints. Little Brownie Bakers, on the other hand, typically uses trademarks for its cookies: Samoas®, Tagalongs®, Trefoils, Do-Si-Dos®, All Abouts, Double Dutch®, Lemon Coolers®, and Thin Mints. Interestingly, the Kellog Corporation, which owns Little Brownie Bakers, owns the trademarks.
For more information on Girl Scout cookies, click here.
Posted by Melody Wirz at 03:26 PM.
Permalink: Girl Scout Cookies Protected By Intellectual Property - Kinda
TRADEMARK
May 03, 2005
Weekend Trademark Fun
Last week, I visited my family in the Big Easy (aka New Orleans). Since my mom is now an official tour guide, we took the free tour of the French Quarter. On the tour, we learned about the "lucky dog" trademark.
For those of you who haven't experienced the wonderful goodness of a lucky dog, I strongly urge you to try one. The only place to get them from a cart like the one shown here is New Orleans. However, you can get lucky dogs at select locations nationwide. Of course, you won't get the questionable street vendor and the interesting New Orleans atmosphere.
If you're interested in the trademarks, the registration numbers are 1430451, 1429464, and 1428637. "Lucky Dog" and "Lucky Dogs" describe the goods as "PREPARED HOT DOG SANDWICHES FOR CONSUMPTION ON OR OFF THE PREMISES." Funny, but I didn't see any lucky dog "premises" in New Orleans, only a cart. The last mark I found in the USPTO registry is below. When a black and white drawing can make your mouth water, you know it's gotta be good.
Posted by Melody Wirz at 12:55 PM.
Permalink: Weekend Trademark Fun
TRADEMARK
April 20, 2005
The New Pope's Unauthorized Domain Name
http://www.benedictxvi.com/ was registered on April 1, nearly three weeks before the world knew the chosen name of the newest pope. Was this an act of divine premonition, or was it something more sinister?
Actually, the domain name was registered by a Florida writer. If you try it, you will find his blog, which is getting 100 hits a minute.
Before you think he's psychic, he also registered ClementXV.com, InnocentXIV.com, LeoXIV.com, PaulVII.com and PiusXII.com. He would have registered JohnPaulIII.com and JohnXXIV.com, but they were already taken.
He's a good Catholic, so it's unlikely he will extort the church for the website. In fact, he said "If I didn't do it, someone less reputable would."
My source for this story was Picking the Pope's Domain Name on Wired News.
UPDATE: 4/22/05: Another pope inspired preditor predator is selling the e-mail address popebenedictxvi@hotmail.it (claiming the "Holy Hotmail account" is a "truly divine way to stay in touch with friends"). The pope's real address is benedictxvi@vatican.va for english speakers.
The article Papal e-mail address goes on sale also claims that "A Canadian seller has a starting price of $100,000 for popebenedictxvi.com."
By the way, the official website for the pope is www.vatican.va.
Posted by Melody Wirz at 08:55 AM.
Permalink: The New Pope's Unauthorized Domain Name
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TRADEMARK
April 06, 2005
what's the harm in buying a knock-off?
From the Advice Goddess Blog comes a great link entitled “What's Wrong With Knocking Off Somebody Else's Design?” The post quotes an article by Glen Beres who interviewed handbag designer Kathrine Baumann on the topic for Idex Magazine.
It is quite poignant and clearly shows the harm incurred by “harmless knock offs” — any response from those of you who buy Gucci and Prada knockoffs?
“Any time someone buys something that’s not authentic, they are damaging the original creator’s business and future,” Baumann said. “The financial toll on companies and their employees can be devastating. When you invest thousands of dollars into researching and developing a piece, and counterfeiters come along with low-cost imitations a few weeks later, you never recoup your original investment. It literally takes food off the table for your employees and compromises the security of their families. Some legitimate designers have been forced to lay off empl