ENTREPRENEUR Archives - Martin IP Law Group

BRANDING, COPYRIGHTS, ENTREPRENEUR, INNOVATION, INTELLECTUAL PROPERTY, INVENTORS, PATENTS, SOCIAL MEDIA, TRADEMARKS

Twitter Trademark – Is It Legal?

When you see a little blue bird, what’s the first thing that comes to mind? If you’re an active social media user, it’s probably Twitter. Since March of 2006, the distinctive emblem coupled with its bright blue hue, has become widely recognized.

However, Elon Musk, Twitter’s newest owner, has changed its branding – a logo and name that’s stuck with the company for the past 17 years. Now, it’s just X with a white “X” logo inscription on a black background. Musk also altered Twitter.com to X.com.

Before Musk’s ownership, Jack Dorsey, Evan Williams, and Christopher Stone were the company’s co-founders. During this time, the logo was only changed three times. While Dorsey and his colleagues were no strangers to controversy, Musk’s recent rebranding has sparked debate about whether this was a logical choice – and the legality of it.

Trademarking the Alphabet

Because the logo is just the letter “X”, trademarking is tricky. Nondescript marks, which include letters and numbers, are trademarkable but require substantial proof for acceptance. The most important thing to prove is that the mark is distinctive enough from other businesses’ trademarks. The letter or number must give a second meaning (apart from the original) associated with a business or organization. If it’s too general, the chances of acceptance are slim.

Potential Complications Ahead

According to the United States Patent and Trade Office (USPTO), trademarks protect a business’s name, logo, and designs related to its products or services. It also stops other businesses from using your name in any form of fashion. This is where things get tricky.

Take McDonalds™, for example. Kantar reports that the fast-food chain is one of the world’s most valuable businesses, coming in 5th place after other large companies like Google and Amazon. Despite its size, the name wouldn’t be protected without a trademark. The company also owns the rights to the golden arches logo and the phrases “Egg McMuffin,” “Happy Meal,” “McNugget,” and more, making these designs and terms off-limits for others in the restaurant industry.

If another business were to market or profit off these terms in any way, they would be committing trademark infringement. According to the USPTO, this is an “unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.” When this happens, the offender can be sued, served a court order to remove anything with the stolen trademark, or other legal consequences.

Our blog about the 2022 Bridgerton trademark and copyright infringement debacle details how this looks in real-time.

Limited Protections, Higher Liability

In short, Twitter’s trademark is legal, but it’s complicated. Since the “X” design is so simple, it may be hard to distinguish it from other businesses’ use of the same branding. This limits the amount of protection Twitter has over its new name and logo, narrowing opportunities for future use.

It’s going up against other tech giants like Microsoft and Meta (formerly Facebook) – plus the thousands of other, smaller businesses that have already trademarked some form of the letter X. Currently, this number is estimated to be almost 900. Because of these numbers, the company will likely experience challenges with its trademark.

Either way, trademarks this broad open the door to potential legal action from other businesses. And because Twitter’s biggest competitors are already using similar branding, although, for lesser-known branding projects, the consequences of this latest rebranding might come more quickly than expected.

Trademark Specialists at Martin IP Law Group

While we don’t know the future of Twitter and its rebranding, we do know we can help you with your trademark ideas. If you’re looking to gain exclusive rights to your brand’s logo, designs, and more, the Martin IP Law Group is ready to get you started.

COPYRIGHTS, ENTREPRENEUR, FRACTIONAL IP COUNSEL, INNOVATION, INTELLECTUAL PROPERTY, INVENTORS, PATENTS, TRADE SECRETS, TRADEMARKS

What is Intellectual Property (IP)?

As a business owner, inventor, or creative thinker, coming up with unique, new, and innovative ideas is what you’re best at. But despite the individuality that comes with creating new concepts, it’s easy to have them stolen in today’s consumer culture. The old saying, “copying is the oldest form of flattery,” isn’t as true today as it was in the past.

Stealing an idea and profiting from it as if it was your own has always been frowned upon, but being copied in 2023 could significantly impact your business – or land you in a lengthy legal battle. While the Martin IP Law Group team can help if this happens, we’d rather help ensure that your ideas, or intellectual property (IP), are protected from the beginning.

Let’s start by defining what IP is. The World Intellectual Property Organization defines intellectual property as “creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names, and images used in commerce.” These are all intangible assets, which carry the same weight as tangible assets.

What are the different types of intellectual property protection?

Intellectual property laws give you exclusive rights to your property and allow you to sell it to the public and profit from it. However, there are different types of IP protection.

Copyright: Copyrights protect literary or artistic creations like books, films (i.e., movies, documentaries), software, or music. It prevents other business owners from distributing, reproducing, or using the work in other ways without permission. For example, an author would copyright a series of books to stop other writers from copying their ideas.

Trademark: A trademark is a unique word, phrase, design, or symbol distinguishing a business’s products or services. Other businesses cannot create a similar or identical material with this protection. Brands like Apple or Burger King are examples of trademarks.

Patent: Patents are government-granted exclusive rights protecting inventions or discoveries. The patent owner is the only one allowed to produce, use, or sell it. Some of the most well-known patents are items you use every day, such as the telephone (Alexander Graham Bell) and the lightbulb (Thomas Edison).

Trade Secrets: Unlike the other types of IP protection, trade secrets are confidential pieces of information vital to the operation of a business. Examples are manufacturing processes, customer lists, or marketing strategies. When this information is classified as a trade secret, it prohibits public disclosure or competitor use. Famous trade secrets include the Coca-Cola recipe or the KFC Original Recipe.

How do you start protecting your intellectual property?

IP laws help maintain a balance between creativity and providing incentives for individuals and organizations like you to invest their time, resources, and talents into producing groundbreaking ideas and original products. At Martin IP Law Group, we work with entrepreneurs to protect their information, propelling your business toward success. From the application process to celebrating the finalization of IP rights, our legal experts are with you every step of the way. Contact us today to schedule a consultation.

COPYRIGHTS, ENTREPRENEUR, FRACTIONAL IP COUNSEL, INNOVATION, INTELLECTUAL PROPERTY, INVENTORS, PATENTS, TRADE SECRETS, TRADEMARKS

What’s New at the USPTO?

The United States Patent and Trademark Office (USPTO) released new updates about the patenting process! Here’s everything you need to know about the changes.

As a new patent holder, one of the things you might look forward to the most is receiving your certified patent grant. With its gold seal and official display, it gives you something to show for your accomplishment. However, as of 2023, these certificates will no longer be sent to patentees – or, at least not for free.

So how does this benefit you?

Although you now have to pay more for a physical paper certificate, it does reduce the time it takes between when the issue fee is paid and the issuance of the patent. In addition to that, if you’re a client of Martin IP Law Group, you’ll get your certificate AND a plaque with a copy of your patent on it. We know how important it is to commemorate your accomplishment, and we want to celebrate with you!

The USPTO is also reducing rates for micro and small entities, saving you money and making it easier for small and local businesses to obtain a patent. Instead of a 50% and 75% reduction, you can receive 60% or 80% off the total cost.

Both updates went into effect after April 2023.

Want to stay in the know about future USPTO updates and other legal news? Follow us on LinkedIn, Instagram, or Facebook to keep up with everything intellectual property-related!

ENTREPRENEUR, FRACTIONAL IP COUNSEL, INNOVATION, INTELLECTUAL PROPERTY, INVENTORS, PATENTS, TRADE SECRETS

USPTO First-Time Filer Expedited Program Requirements

As you may have heard, the United States Patent and Trademark Office (USPTO) recently announced the new “First-Time Filer Expedited Examination Pilot Program.” In years past, this expedited process would cost several thousand dollars, but it’s currently being offered for no additional charge. Inventors must typically wait over 20 months for an examiner to review the application and return a written notice of findings. With this pilot program, that time is reduced to less than two months in most cases! The pilot program does have some rules and guidelines you need to know before filing.

First, let’s go over the patent basics. Starting with, who can apply? You, your legal representative, or you and a joint inventor, with the exception of the death of an inventor, the inventor refusing to apply, or the inventor cannot be found. Your invention must also oblige with these four conditions. The invention has the ability to be used, a clear description of how to make and use the invention, the invention is new and not something that has been done before, and the invention is new and not a change to something that has already been invented.

Congratulations, you’ve met all the basic patent requirements! Now, can you file in the USPTO First-Time Filer Expedited Examination Pilot Program? First, you must be a first-time filer; your name cannot be on other nonprovisional applications. The applicant and/or joint inventors must qualify under the gross income basis requirement for micro entity status. Inventors must understand the basics of the patent application process. The pilot program is not open to those continuing applications, applications claiming a right of foreign policy, and those entering the national stage under the Patent Cooperation Treaty.

Lastly, let’s go over the basics for the application to the USPTO First-Time Filer Expedited Examination Pilot Program. Your application must include a specification of the invention, drawings if necessary, at least one claim, an oath or declaration in compliance with 37 CFR 1.63 for each named inventor, and payment of all appropriate fees prior to or concurrently with filing the petition.

Remember, this opportunity lasts until there are 1,000 applicants or March 11, 2025. If you’re interested in this opportunity to bring your invention’s impact to life much quicker than typically expected, contact our team to set up a consultation! The Martin IP Law team has helped successfully register hundreds of patents for our clients.

BRANDING, COPYRIGHTS, ENTREPRENEUR, FRACTIONAL IP COUNSEL, INTELLECTUAL PROPERTY, PATENTS, START UP, TRADE SECRETS, TRADEMARKS

Fractional IP Counsel – Is it right for your business?

Fortune 500 companies like Apple, Microsoft, and Google have teams of in-house intellectual property attorneys who constantly monitor and advise the company on how to identify and protect their ideas, inventions, and identity. The intellectual property of a small or medium sized business can be even more valuable to that company, but may not be extensive enough to justify a full-time, in-house intellectual property attorney on staff. Under our Fractional IP Counsel plans, your small to medium sized business will get the same or similar services as the Fortune 500 companies, albeit to a lesser extent based on your company’s needs, but for a fraction of the cost.

Intellectual Property is a huge asset that is often overlooked. It’s a big part of a lot of businesses, whether it be trademarks, patents, copyrights, or trade secrets. Whether you are a startup, small or medium sized business, or even a large business with an in-house general counsel who does not have expertise in IP law, your business would benefit greatly from one of our fractional IP counsel plans that can be tailored to your specialized needs.

Our Team works with you to provide proactive legal representation

One of the best benefits of hiring fractional counsel is that you are taking a proactive approach to risk management rather than a reactive approach. Instead of reacting to legal problems, you are working with an IP attorney and staff to prevent or mitigate future liability. Regardless of the size of the company, a reactive approach to dealing with legal matters increases the risk of future liability. A proactive approach can reduce the time and cost of dealing with legal matters.

Through our fractional counsel plans, we learn about your business, your goals, and your team to help you grow your company and develop legal strategies and plans that work for your company. Your fractional legal counsel is available to address your legal needs when you need a lawyer, not when a law firm can return your call. Our plans are customizable, so if your needs change, we can adjust the plan to grow with you.

Our fractional counsel plans provide all of the legal services that your company needs for a set monthly fee. This allows small and medium sized companies to have the immediate access to legal counsel that has historically only been available to large companies with in-house attorneys. And by having a set monthly fee, your company has greater control over legal expenses and can budget for legal expenses much more effectively.

Free up your time to grow your business and save money on legal fees

Because our fractional counsel plans are proactive, legal emergencies rarely happen. When they do, you can rest assured that we will be there to handle them so you can continue to do what’s important – run and grow your business! Because the attorney is a part-time contractor, you control how much money you spend for ongoing legal services and what legal services are included in the contract.

Hiring a full-time in-house attorney with salary and benefits is cost prohibitive to many smaller companies. Hourly rates at law firms with attorneys experienced in handling complex intellectual property transactions can exceed $500 per hour. Hiring a part-time attorney with a flat-rate fee is less expensive than either option. And because we are contractors, not employees, you don’t incur the costs in providing comprehensive benefits.

Use Fractional IP Counsel to avoid the five most common mistakes businesses make in protecting their IP

Companies utilzing the traditional approach to hiring an outside IP attorney may ultimately obtain patents, trademarks or copyrights to protect their assets, but they are leaving a lot on the table in additional assets that could and should be protected. Issues concerning proper ownership and the best form of IP protection are often overlooked. Thinking global and monitoring competitors’ IP positions and portfolios are not often considered in the traditional approach. If you want to avoid the five most common ways in which companies fail to adequately protect their intellectual property, click here to download a copy of our FREE REPORT.

BRANDING, ENTREPRENEUR, INTELLECTUAL PROPERTY, TRADEMARKS

CRAFT BEER NAMES WORTH PROTECTING

To celebrate Craft Beer Week, we thought that we would post some of our favorite names for craft beers. But before we do that, lets take a look at how the industry has grown since our last post on beer names in 2015 (Where have all the good craft beer names gone?). According to the Brewers’ Association, as of 2021, there are 9,124 brew pubs, tap rooms, microbreweries and regional breweries in the United States. That is more than double the number (4,225) in 2015.

In 2015 we questioned whether, with such explosive growth, brewers could continue to come up with new, distinctive names for their breweries and their beers. As you might have guessed, we were dead wrong. With more brew pubs, breweries and tap rooms, we have been exposed to more new and creative names for beers and breweries. A recent search of the records of the US Trademark Office revealed over 63,000 active registrations and published applications for beer names alone. This number is up from the 22,000 we found in 2015. Registration of your brewery and beer names is vital to protecting your brand and to prevent others from using the same or similar names in a way that may confuse your customers.

It looks like brewers are not only running out of names for their beers, but they are getting more creative. And some of the more savvy brewers are registering their beer names to protect their brand. Here are some of our favorites:

10. HOPOPOTOMUS, Big Rock Brewery, Calgary, Alberta. A hazy and full bodied Pale Ale with notes of ripe mango, guava and tropical fruit coming from the hop varieties and Kviek yeast.

9. HOPPY ENDING PALE ALE, Palo Alto Brewing, Palo Alto, CA. U.S. Trademark Registration No. 4,723,684. A great way to end the night!

8. GOATMEAL STOUT, Turoni’s Pizzary & Brewery, Evansville, IN. Every week, local goat farmer Dennis Brenner picks up our spent grain and hauls it back to his farm in Princeton, Indiana. The grain is then drained and served to his stock of Billy Goats. This partnership keeps our grain waste program environmentally sound, and those goats don’t even know they’re on our payroll. You’ll never meet some of the most important members of our team, but at least you can drink to them!

7. WEE MAC, Sun King Brewery, Indianapolis, IN. U.S. Trademark Registration Nos. and 4,064,657 and 4,176,639. A Scottish-style Ale is an enticing and malty brown ale with caramel, cocoa, and hazelnut character balanced with toffee undertones. Also, a personal friend of mine claims the beer was named after her. Not sure if I believe her or not?

mockups-design.com

6. POLYGAMY PORTER, Wasatch Brewing Co., Salt Lake City, UT. U.S. Trademark Registration Nos. 4,345,494 and 4,253,333. Why just have one? Polygamy Porter is a smooth, chocolatey, easy-drinkin’ brown porter that’s more than a little naughty. Take some home to the wives!

5. SEXUAL CHOCOLATE, Foothill Brewing, Winston Salem, NC. A cocoa-infused Russian Imperial Stout, brewed with responsibly-sourced organic Peruvian cocoa nibs. Big chocolate aroma with notes of espresso, blackstrap molasses, dark sweet toffee and dark fruit.

4.DRIVER PICKS THE MUSIC, Myriad Brewing, Evansville, IN. A crisp tangerine wheat.

3.COCOMUNGO, 3 Floyds, Munster, IN. Behold the legend of Cocomungo. This devastating Imperial Stout was aged for over a year in Willett bourbon barrels with maple syrup and toasted coconut.

2.WHEELS GOSE ‘ROUND, Left Hand Brewing Co., U.S. Trademark Registration No. 5,686,348. Refreshingly tart & crisp ale with raspberry, a twist of lemon & a hint of salt. Enjoy this tart ale brewed to raise awareness for Multiple Sclerosis, a disease millions of people around the world fight today.

1.HAZED & INFUSED, Boulder Beer Company, Boulder, CO. U.S. Trademark Registration No. 2,784,476. A unique infusion of floral hops creates a piney, earthy, floral ascent, belayed by a complex, dank, fruity backbone. The surprisingly nimble balance of this Hazy proves sometimes the original is the best route.

In researching this blog, we even came across AI beer naming tools! Like any other branding, it’s important to protect your more valuable brands by registering them with the U.S. Trademark Office. As you can see, some of the more creative and recognizable brands above have done just that! If you need help registering your beer name or brand, contact us, we can help – and we’d love to try your beer too!

BRANDING, ENTREPRENEUR, TRADEMARKS, Uncategorized

AVOID COSTLY BRANDING MISTAKES

The following story is fictional. The names and places have been changed to protect the innocent and naive. However, the scenario depicted occurs frequently (see our other posts – Damsel In Distress and A Juicy Tale, involving real live situations), and can be easily prevented.

The story of Nonna’s Kitchen (fictional)

As a child, Maria loved to cook. She was a proud third generation Italian-American. Her grandparents immigrated from the town of Varese in the Italian Alps to the United States in 1946 after the end of World War II. They settled in the small town of Clinton, Indiana where Maria’s grandfather worked as a coal miner. Maria’s grandmother, her “Nonna” was an amazing cook. Maria would spend hours in the kitchen cooking with her Nonna and learned many of her best recipes. After graduating from culinary school at the prestigious Sullivan University School of Culinary Arts in Louisville, Kentucky, Maria moved to Nashville, Tennessee and opened her own restaurant in the Hillsboro Village area near Belmont University and Vanderbilt University. To honor her grandmother, who had passed away during Maria’s last year of culinary school, she named her new restaurant “Nonna’s Kitchen”.

The restaurant was an overnight success! It seemed like the people of Nashville couldn’t get enough of the savory pasta dishes that Maria had been cooking with her Nonna since she was a little girl. The restaurant was full almost every night. After five years in operation in Nashville, Nonna’s Kitchen was mentioned by Giada De Laurentiis on the Food Network. After that, things went crazy! Maria was approached by a group of angel investors who wanted to partner with her to franchise her restaurant nationwide. It seemed like everything was falling into place and Maria’s wildest dreams of sharing Nonna’s Kitchen with all of America were about to come true. But Maria was about to discover that some branding mistakes made by her early on could stand in the way of making her dream a reality.

About a month after the mention by Giada, Maria received a letter from an attorney in New York City. The letter advised her that his client was the owner of a U.S. Trademark Registration for the mark Nonna’s Kitchen. They had been operating an Italian restaurant also called Nonna’s Kitchen in the Little Italy neighborhood of New York City for over a decade. On the advice of their attorney, they registered the mark Nonna’s Kitchen with the U.S. Trademark Office shortly after opening. The U.S. Trademark Registration granted them exclusive rights to use the name Nonna’s Kitchen for restaurant services in the United States. After the mention by Giada, the owners of the New York Nonna’s Kitchen received several calls from confused patrons who believed Giada was referring to their restaurant. The cease and desist later was sent shortly after.

How to avoid costly branding mistakes

Maria was heartbroken. She had spent five years and thousands of dollars building her Nonna’s Kitchen brand. Now it looked like all of that brand building was wasted and she would have to change the name of her restaurant. What could she have done to prevent this?

Vet you chosen name by conducting a Trademark Clearance Search

When adopting a name for a new product or service, the first thing that anyone should do is conduct a trademark clearance search. A trademark clearance search is a systematic search for registered or unregistered (common law) marks that: (1) are the same or similar to the mark you wish to use; (2) are being used by others anywhere in the country; (3) are being used for the same or similar product or service; and (4) would likely cause confusion in the mind of the customer. While there are resources available for you to conduct a trademark clearance search on your own, it is better to leave the searching, and the determination of whether there is a liklihood of confusion to skilled trademark attorney. Had Maria conducted a trademark clearance search prior to adopting the name Nonna’a Kitchen, she almost certainly would have been aware of the existence of the previous trademark registration for Nonna’s Kitchen. Armed with that information, Maria could have chosen another name that still honored her grandmother, but didn’t infringe on another’s registered trademark.

Register your Mark and Register it Early!

Let’s assume for a moment that the owners of the New York Nonna’s Kitchen did not register their mark with the U.S. Trademark Office. Under this scenario, Maria may still be entitled to obtain registration of Nonna’s Kitchen with the U.S. Trademark Office. However, if the New York Nonna’s Kitchen was in operation before the filing of Maria’s trademark application, they may still be entitled to continue using the mark, but their use would be limited to the geographic area of prior use. So, effectively, with her U.S. trademark registration, Maria would be entitled to use the Nonna’s Kitchen name throughout the United States with the exception of New York City, where the New York Nonna’s Kitchen would retain rights as a senior user. Had she filed for registration before the New York Nonna’s Kitchen begain operation, she would have been able to block their usage too. By registering the mark early, Maria would be entitled to exclude any other uses of the mark Nonna’s Kitchen that don’t pre-date the filing of her trademark application. This is a huge benefit for someone with a potentially national brand!

Enforce your Registered Mark!

The owner of a U.S. trademark registration has a legal duty to police the marketplace for infringement of its trademark. If the owner fails to police the mark, it risks losing the protection granted by the trademark registration. Affordable trademark watch services are available to search for unauthorized uses of your mark as well as attempts to register the same or similar marks. Many instances of infringement are unintentional and, more often than not, can be resolved without the need for expensive litigation.

Invaluable Protection for your Brand

The protection provided to your brand by a U.S. Trademark registration can be worth millions. What is the value of the golden arches logo to McDonald’s? The value of the swoosh to Nike? Marks that achieve such iconic status are probably worth millions of dollars. But, like you, they started somewhere. For Steve Jobs and Apple Computers, it was in a garage. Imagine if Jobs had not taken action to protect the Apple marks? Protect your brand before it’s too late! Contact us to see how we can help!

ENTREPRENEUR, INNOVATION, INTELLECTUAL PROPERTY, PATENTS

SMART PRODUCTIVITY TOOLS THAT ARE MAKING AN IMPACT

Being named an Edison Award winner is one of the highest honors a company can receive in the area of innovation. In April, 2021, Edison Universe announced the 2021 winners of the awards for game-changing innovations in several separate categories. This month we take a look at the winners in the Smart Productivity Tools Category.

Cat® Command by Caterpillar Inc.

“Imagine moving dirt with a machine while sitting in the comforts and safety of an airconditioned office. No more all-day full-body vibrations. Coffee in hand, you’ll soon be digging a hole 2,500 (or more) miles away with the new Cat® Command station. Cat.com Link: Cat Command for Construction Video: Cat Command Promotional Overview”

Aido Robot by InGen Dynamics Inc.

Aido is the next generation modular Service Robot specifically designed for Households, Hospitality , Healthcare. Featured by Disney, Forbes, PopSci, IEEE, BCG, Discovery, Mashable, T3, and more. We use complex mechanical designs with state-of-the-art electronics, scalable architecture, and, artificial intelligence with advanced manufacturing.

Oplà IoT Kit by Arduino

The Arduino Oplà IoT Kit is for anyone trying to make their home or office just a little bit smarter. The kit is an edge-to-cloud IoT system that’s backed by helpful tutorials and getting-started projects (e.g. smart thermostat, smart lighting, smart garden etc) that will have you automating your home in no time.

These winners of the Edison Award have looked at problems within the community and have come up with innovative solutions. Do you know of an innovation that is worthy of recognition? Nominations for the 2022 Edison Awards will open August 1, 2021 and close in late November. Winners are announced at the Edison Awards Gala in New York, NY in April 2022.

Before getting too far down the road, it’s important to identify and protect any intellectual property (patents, trademarks, copyrights and/or trade secrets) associated with your innovative product or service. Contact us today to see how we can help you identify and protect these valuable assets.

BRANDING, ENTREPRENEUR, INTELLECTUAL PROPERTY, TRADEMARKS

BRANDING LESSON – Copying a famous mark could lead to an un-hoppy ending

Branding issues occur in almost every type of commercially available product or service. If you know me, you know that I am a HUGE fan of micro-brewed beers. Recently, I came across this one courtesy of my neighbors at High Score Saloon. Hop Tarts is a golden double IPA with a slight berry essence achieved by adding raspberries, blueberries & strawberries during fermentation. Sounds delicious, right? I hope to get a chance to try one soon!

Pop Tarts branding similar to Hop Tarts branding

U.S. Trademark No. 4,240,604

But I can’t help but wonder if DuClaw Brewing Co., which prides itself on “Taking Brewing Risks Since ’96” may have taken too big of a branding risk with this new brew. One look at the label on the hop tarts can brought back fond childhood memories of one of my favorite breakfast treats – Pop Tarts. Kellogg Corporation is the owner of several U.S. Trademarks associated with the Pop Tarts brand, including Regi stration No. 4,240,604 which is shown here. On it’s face, the Hop Tarts logo appears to be exactly the same as the registered Pop Tarts mark except that they substituted an “h” for the “p”.

Those of you that follow my blog may recall another post from a few months back – Damsel In Distress – How Choosing the Wrong Name Can Cost Your Company Big Time – about a similar situation where Maiden’s Brewery & Pub was accused of infringing on trademarks owned by the band Iron Maiden. (I know, another blog post about craft beer?) While there are certain similarities to that case, this situation raises some very different issues regarding trademark law.

Branding, Trademark Infringement and Likelihood of Confusion

Whether or not there is trademark infringement under U.S. law hinges on whether or not there is a “likelihood of confusion” as to the source of the products or services offered under the mark. The thirteen so-called DuPont factors determine whether there is a likelihood of confusion between marks and therefore infringement. Those factors are:

The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression.
The similarity or dissimilarity and nature of the goods . . . described in an application or registration or in connection with which a prior mark is in use.
The similarity or dissimilarity of established, likely-to-continue trade channels.
The conditions under which and buyers to whom sales are made, i.e. “impulse” vs. careful, sophisticated purchasing.
The fame of the prior mark.
The number and nature of similar marks in use on similar goods.
The nature and extent of any actual confusion.
The length of time during and the conditions under which there has been concurrent use without evidence of actual confusion.
The variety of goods on which a mark is or is not used.
The market interface between the applicant and the owner of a prior mark.
The extent to which applicant has a right to exclude others from use of its mark on its goods.
The extent of potential confusion.
Any other established fact probative of the effect of use.

The first two factors – the similarity of the marks and the similarity of the goods or services – generally carry the most weight making a determination of infringement. Looking at the Hop Tarts case, as referenced above, the marks appear to be very similar in appearance. Looking at the second DuPont factor, however, presents a different picture. The goods protected by the Pop Tarts mark (toaster pastries) are very different from the goods to which the Hop Tarts mark is applied (craft beer). The trade channels of those goods also appear to differ significantly. Given those factors, it may be difficult for Kellogg’s to make a strong case for trademark infringement here.

Dillution of Famous Marks

However, there is another concept in trademark law known as dillution. Trademark dillution is the use of a mark or trade name in commerce sufficiently similar to a famous mark that by association reduces, or is likely to reduce, the public’s perception that the famous mark signifies something unique, singular or particular. Dilution is comprised of two principal harms: blurring and tarnishment. Blurring occurs when the distinctiveness of a famous mark is impaired by association with another similar mark or trade name. Tarnishment occurs when the reputation of a famous mark is harmed through association with another similar mark or trade name.

A “famous mark” is one that evokes an immediate connection in the minds of the consumers with a specific product or service and the source of that product or service. Examples of famous trademarks include APPLE, COCA-COLA, GOOGLE, MCDONALD’S and WALMART. Famous trademarks enjoy a broad scope of legal protection because they are more likely to be associated and remembered in the public’s mind.

According to Wikipedia, the Pop Tarts brand was introduced by Kellogg’s in 1964 and is one of their most popular brands with millions of units sold each year. In my opinion, Kellogg’s has a strong argument that it’s Pop Tarts mark qualifies as a “famous mark” and is subject to a higher level of protection than an ordinary mark. While some may consider use of their mark in connection with craft beer to be a tarnishment (not anyone that I would associate with, but there may be some out there), the stronger argument for Kellogg’s would be blurring – that their Pop Tarts mark is somehow impaired by association with the Hop Tarts brand. If Kellogg’s were to prevail in a suit against DuClaw for trademark dillution, they would be entitled to an injunction preventing DuClaw from further use of the Hop Tarts brand.

Do you have a new product or service that you are branding and want to ensure that you don’t make the same mistake? Before you hop to it, let us conduct a trademark clearance search to determine if there are any trademark issues with your brand. Contact us about your branding and trademark concerns before you hop into launching your new brand.

BRANDING, ENTREPRENEUR, TRADEMARKS

A LESSON IN BRANDING FROM THE ROCKET CITY TRASH PANDAS

In our September 2018 blogpost we raised concerns about potential trademark issues regarding the newly selected name and proposed logos for Madison, Alabama’s new AA baseball team dubbed the “Rocket City Trash Pandas”. The concern was that the proposed branding could conflict with trademark and copyright registrations held by Marvel Characters, Inc. for Guardians of the Galaxy®️ movie character Rocket Raccoon®️. Shortly after our post, a report indicated that those concerns were echoed by the Madison City Council. In response, Trash Pandas’ owner assured the Council that they had “dotted our I’s and crossed our T’s on the trademark searches”

The resulting Trash Panda logos and branding that were unveiled on October 27, 2018 reflected a decisive pivot away from the mock logo that first appeared on Facebook and that was featured in our previous post. Gone was the snarling, snarky flak-jacket wearing raccoon Rocket. In its place is a smiling, rocket fin adorned trash can wearing raccoon Sprocket. The marked difference in design is almost certainly attributable to the Trash Pandas’ desire to avoid a trademark dispute with Marvel. A good move on their part.

Maybe even a great move. In only thirteen months after the branding release, the Trash Pandas surpassed the $2 million mark in merchandise sales. But for their late start on the 2019 season, the Trash Pandas almost certainly would have cracked the Top 25 in merchandise sales among minor league baseball teams. Keep an eye out for them when the numbers for 2019 are released in July. Given that the average merchandise sales for all 160 minor league teams is less than $500,000 per team, their $2 million should put them squarely in the top 25 when the figures are released this summer.

Another thing that the Trash Pandas did right was to seek early registration of their mark. As we reported in September 2018, Trash Pandas owner BallCorps filed two applications with the U.S. Trademark Office for registration of the name TRASH PANDAS in July 2018. On December 3, 2019 they were granted U.S. Trademark Registration No. 5,927,921 for use in connection with paper goods and printed matter, namely, autograph books, binders, bookmarks, bumper stickers, calendars, catalogs in the field of baseball, decals, merchandise bags, newsletters in the field of baseball, note pads, paper containers, paper pennants, paper game schedules for sporting events, pens, pencils, postcards, posters, printed awards, printed game tickets for sporting events, printed guides in the field of baseball, reference books in the field of baseball, score books, score cards, score sheets, stationery, stickers, sticker albums, and sports trading cards, and clothing, namely, aprons, athletic uniforms, bandanas, boxer shorts, caps being headwear, cloth baby bibs, coats, golf shirts, gym shorts, hats, jackets, jerseys, knit shirts, pajamas, polo shirts, ponchos, pullovers, rain coats, rainwear, sweaters, sweat pants, sweat shirts, socks, sport shirts, t-shirts, tank tops, ties, visors being headwear, wind resistant jackets, and wristbands as clothing. The other application, which seeks registration for entertainment services in the nature of baseball games and exhibitions, should issue before opening day on April 15, 2020.

Selecting a brand for your business can be daunting. It’s important to ensure that you don’t infringe on the rights of others and to properly protect your interest in the potential millions in revenue that a good brand can create. We are pleased to see that Trash Pandas owner BallCorp did branding right! If you need someone to help you navigate the legal issues associated with branding, we are here to help. Contact us to see how we can help you leverage your brand!