TRADEMARKS Archives - Page 4 of 5

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!

BRANDING, INTELLECTUAL PROPERTY, TRADEMARKS

UNAUTHORIZED USE OF SUPER BOWL®️ MAY RESULT IN A PENALTY

With the “Big Game” between those football teams from Kansas City and San Francisco just days away, many people are gearing up to host or attend watch parties to celebrate the NFL championship game. You may have noticed in my opening that I didn’t use terms such as SUPER BOWL®️, CHIEFS®️, or 49ERS®️. That is because those names are federally registered trademarks. The improper and/or unauthorized use of those names could result in you being flagged for a penalty in the form of a cease and desist letter from the NFL, the Kansas City CHIEFS®️, or the San Francisco 49ERS®️ organizations. So what are the rules? When can I use SUPER BOWL®️, CHIEFS®️, 49ERS®️ and the plethora of other related words, phrases and images that are registered trademarks of these organizations?

As with many other legal questions, there is no simple yes or no answer to this question. Trademark infringement is defined as the unauthorized use of a trademark or service mark in connection with goods or services in a way that is likely to cause confusion in the minds of consumers about the source or sponsorship of the goods or services offered under the parties’ marks. It is the sponsorship aspect of infringement that is most likely to be at issue with regard to the use of SUPER BOWL®️ and related marks in that the use of those marks may give the impression that the event, goods or services are somehow endorsed or approved by the NFL. So technically, any use of such registered marks would constitute infringement.

However, Courts, as they often do, have recognized exceptions to this – the most notable of which is the “fair use” exception. The concept of free speech and nominative fair use falls under the fair use exception and allows for marks to be used for purposes of reporting, commentary, criticism, parody, and comparative advertising. That branch of the exception is what allows me to use these marks as a part of this blog.

Noncommercial use is also recognized as falling within the realm of fair use on the basis that the mark is not being used in connection with a good or service. Based on this exception, an individual hosting a watch party in his or her home for friends that are not being charged admission may use the marks on invitations and the like without infringing. On the other hand, commercial use by bars, restaurants and businesses that stand to make money off of the event, regardless of whether they charge admission, likely does not fall within the fair use exception and may subject the owners to a penalty for trademark infringement.

Over the years, the NFL has aggressively pursued infringers in this category by sending out cease and desist letters to those commercial establishments who are using the marks without authorization. This stands to reason since many other commercial enterprises pay big money for the right to use the marks in connection with their products and services. For example, Anheuser-Busch InBev reportedly pays in the neighborhood of $250 million a year to the NFL for Bud Light to be the official beer of the NFL. This deal includes rights to use NFL trademarks, including those related to the SUPER BOWL®️.

A gray area also exists between those two extremes – private and/or not for profit entities that wish to host their own SUPER BOWL®️ party. In 2007, John D. Newland of Fall Creek Baptist Church in Indianapolis received a cease and desist letter from the NFL after promoting a church sponsored event where they planned to show the game on big screen TVs and charge $3.00 for admission. Newland ended up cancelling the party to avoid further entanglement. Arguably, notwithstanding copyright issues involved with the rebroadcasting of the game on big screen TVs, had Fall Creek not charged admission for the party, the fair use exception would likely have applied.

Whether you are a CHIEFS®️fan, 49ERS®️ fan (or a PATRIOTS®️fan licking your wounds this year), we hope that you enjoy the game with family and friends safely wherever you are and without issues of trademark infringement. If you have questions about trademarking a name for a product or service, or if you are concerned that your use of a name, symbol or phrase may infringe on the trademark rights of someone else, contact us to discuss how we can help you avoid being penalized or sacked and score a touchdown for your team!

BRANDING, ENTREPRENEUR, INTELLECTUAL PROPERTY, START UP, TRADEMARKS

DAMSEL IN DISTRESS – HOW CHOOSING THE WRONG NAME CAN COST YOUR COMPANY BIG TIME

Toward the end of last month, Maiden’s Brewery & Pub in Evansville quietly changed its name to Damsel Brew Pub. It was reported by River City Weekend that the change was made in response to a demand from the legendary rock band, Iron Maiden, giving Maiden’s Brewery & Pub until the end of 2019 to change the name of its establishment and beer products.

My first reaction upon hearing this news was disbelief. How could someone confuse a simple brewery and pub in Evansville, Indiana with a legendary rock band, or somehow be lead to believe that the brew pub was somehow affiliated with or endorsed by the rock band? Impossible! But after doing just a little bit of research, it appears that Iron Maiden’s demand is most definitely legitimate.

Iron Maiden Holdings Limited is the owner of at least six (6) U.S. Trademark Registrations for the name “Iron Maiden” as both standard character marks and in stylized forms. The earliest registrations date back to September 1984 and include the words “Iron Maiden” in the stylized form as shown below. Compare that to the stylized wording used by Maiden’s Brewery & Pub, and we begin to see the basis of the rock band’s complaint

U.S. Trademark Registration owned by Iron Maiden Holdings

Maiden’s Brewery & Pub Logo

The font used by Maiden’s Brewery & Pub appears to be nearly identical to the distinctive font in the “Maiden” portion of Iron Maiden’s registered mark. The 1984 trademark registrations were for entertainment services, namely live musical entertainment performances (Registration No. 1,308,370), clothing, namely T-shirts, jerseys, sweat-shirts, hats, jackets and leather wrist bands (Registration No. 1,307,146), and posters, souvenir concert programs, stickers, calendars, photographs and decals (Registration No. 1,306,972).

When determining trademark infringement, the penultimate question is whether there would be a likelihood of confusion as to the source of the product. In other words, would the consumer of beer and related products (such as koozies) sold by Maiden’s Brewery & Pub likely think that those products were somehow produced by, or sold with the authority of the band Iron Maiden. Given the striking similarity of the very distinctive font used in both instances, in our opinion, Iron Maiden did in fact have a strong claim that confusion was likely.

You might be asking yourself at this point why Maiden’s didn’t just drop the stylized font and keep the name Maidens for its brewery, beer and related products. Surely just the mere use of the word “Maidens” without the distinctive Iron Maiden font would not lead to confusion given the products covered by the three trademark registrations. If those were the only registered trademarks for the name Iron Maiden owned by the band, Maiden’s may well have been able to do just that. However, in 2010, Iron Maiden Holdings was granted U.S. Trademark Registration No. 3,840,031 for Iron Maiden (standard characters) in connection with a number of products and services, including beverage ware, bottle openers, portable beverage coolers, barware and coasters. Then, in 2014, Iron Maiden Holdings was further granted U.S. Trademark Registration No 4,848,431 for Iron Maiden (standard characters) for use in connection with beers and alcoholic beverages.

The owner of a federally registered U.S. Trademark has the exclusive right to use the mark in association with the goods or services for which it is registered and with any other goods or services that may create confusion as to the source of the product or service. For trademarks which are considered to be famous (one could argue that IRON MAIDEN falls within this category), infringing use may occur where the use occurs in relation to products or services which are not the same as or similar to the products or services in relation to which the owner’s mark is registered.

Maiden’s plight is an all too common occurrence. Many fledgling businesses either don’t know the risks associated with choosing a name or simply decide not to spend the money up front to properly vet the name before adopting and using it. This strategy is penny wise, but pound foolish. The business that chooses not to invest hundreds of dollars to ensure the name they want to use is available may end up spending thousand or more in damages for trademark infringement not to mention the costs of starting over with branding after Wasted Years building a brand that they may be forced to abandon.

Are you thinking of starting a business or have started a business and want to ensure that you don’t make the same mistake? Before you Run to the Hills, let us conduct a trademark clearance search to determine if there are any trademark issues with your business name. Contact us to iron out your trademark concerns before you become a damsel in distress.

BRANDING, ENTREPRENEUR, INTELLECTUAL PROPERTY, TRADEMARKS

FREE TACOS! LEBRON’S ATTEMPT TO TRADEMARK “TACO TUESDAY” FAILS

Here at Martin IP Law Group we love tacos so much that we celebrated Katlyn’s last day of work with our firm by hosting a taco bar, on a Tuesday no less! Thanks to the U.S. Trademark Office, we were able to use the name “Taco Tuesday” without fear of stepping on LeBron’s rather large feet.

In August, LBJ Trademarks, LLC, owned by LA Laker’s superstar LeBron James filed a U.S. Trademark Application attempting to register the phrase “Taco Tuesday” for a number of goods and services including downloadable audio/visual works, advertising and marketing services, podcasting services, and online entertainment services. On September 11, 2019, the USPTO rejected LeBron’s application to register “Taco Tuesday” on two separate grounds.

The primary grounds for refusal was that the phrase is a commonplace message that cannot function as a trademark or service mark to indicate the source of LBJ’s goods or services and differentiate them from the goods and services of others. The trademark examiner cited a variety of sources where “Taco Tuesday” was used to convey an “ordinary, familiar, well-recognized concept or sentiment.” Among the sources cited were several restaurants that used the phrase, and numerous newspaper articles showing wide usage of the phrase Taco Tuesday by various parties to express enthusiasm for tacos. In the end, the examiner concluded, correctly in my opinion, that Taco Tuesday conveys an informational message and would not be perceived by consumers as representing a particular party’s goods or services.

Registration was also refused based on the likelihood of confusion with U.S. Trademark Registration No. 5,505,122 for TECHNO TACO TUESDAY. In the refusal, the examiner referred to the two primary considerations for likelihood of confusion – the similarity of the marks and the similarity of the goods/services. Other than the omission of the word “Techno”, the marks are identical. The examiner concluded that, notwithstanding this difference, LBJ’s mark was “highly similar to the registered mark.” Further, the registered mark TECHNO TACO TUESDAY is registered for use in connection with a number of services including “advertising, marketing and promotion services”. As with the mark itself, the good/services need not be identical to find a likelihood of confusion. They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that the goods or services emanate from the same source.” Here, the examiner concluded that LBJ’s services are “highly similar” to the registrant’s services.

It’s also interesting to note that US Trademark Registration No. 1,572,589 for TACO TUESDAY used in connection with restaurant services was issued in 1989 to Taco John’s and is still a registered mark today. One has to wonder if, given the comments of the examiner in LBJ’s trademark application, that registration has succumbed to genericide (see our X/x/x blog post for further description on that issue).

The ball is now in LeBron’s court. He has until March 11, 2020 to respond to the refusal to register Taco Tuesday. Maybe if he spent a little more time on the court, rather than looking for ways to get into court, he could lead the talented Lakers to another NBA title.

Do you have a phrase or slogan that is of value to you or your company? If so, it might be registrable as a federal trademark which gives you several competitive advantages. Contact us to see if your phrase or slogan is appropriate for protection.

BRANDING, INTELLECTUAL PROPERTY, TRADEMARKS

THE GENERICIDE OF A BRAND – TRADEMARK OWNERS WHO FAIL TO ENFORCE THEIR MARKS COULD SEE THEIR RIGHTS “BANDERSNATCHED”

Genericide is the act or process whereby a trademark term becomes so commonplace for the goods or services associated with it that the owner’s rights are diminished or lost as a result. Examples of once robust trademarks that fell victim to genericide include ASPIRIN (originally a trademark of Bayer declared generic in the U.S.), ESCALATOR (originally trademarked by Otis Elevator Company), THERMOS (declared generic in the U.S. in 1963) and LINOLEUM (declared generic following a lawsuit for trademark infringement in 1878). Genericide can be devastating to a brand that a company has spent significant time and money to develop.

One way to avoid genericide of a trademark is to timely obect to other’s generic misuse of the mark. Generally, this is done through the sending of cease and desist letters, and, sometimes through litigation to enjoin such misuse. Last month, Netflix released a new interactive narrative program entitled “Black Mirror: Bandersnatch” where the viewer makes decisions for the main character. In Bandersnatch, the decisions the viewer makes range from the mundane, such as whether to listen to Thompson Twins or Now 2, to more difficult decisions, such as whether to chop up a body or bury it. Bandersnatch is set in 1984 and revolves around a young video game programmer’s development of a video game based on the interactive narrative book “Bandersnatch” that lets the user make choices that affect the outcome of the game (much like the show itself).
In one early scene in the show, the main character refers to the Bandersnatch book as a “choose your own adventure book.” Chooseco, a small publishing company based in Vermont, is the owner of several U.S. Trademark registrations for CHOOSE YOUR OWN ADVENTURE which relate to it’s interactive narrative series of books for young adults. Last month, Chooseco filed suit against Netflix seeking $25 million dollars in damage for unauthorized use and disparagement of its registered trademarks. Chooseco effectively had no choice (no pun intended) but to take action against Netflix. If it would have ignored the alleged misuse, their mark would almost certainly be sliding down that slippery slope toward genericide. However, as Bayer AG discovered in 1922, bringing suit carries risks as well. Netflix will almost certainly raise the defense of genericism to the alleged infringement. So, ultimately, the court may decree the mark to be generic despite Chooseco’s attempts to avoid genericide by filing the action in the first place.

So, other than objecting to the misuse of the mark by others, how does the owner of a trademark or service mark prevent their mark from becoming generic? Wherever possible, the mark owner should give proper notice that the mark is registered. This is typically done through use of the ® symbol for marks registered with the U.S. Trademark Office or ™️ for marks protected by common law. The mark owner should never use, nor permit others to use, the mark as a noun (Kleenex instead of KLEENEX tissue) or verb (i.e. “Google it” instead of perform an internet search using the GOOGLE search engine), and it’s always best to use the mark in connection with the generic term (i.e. BAND-AID adhesive bandages). The mark should also always be displayed in all capital letters or a distinctive font which differentiates it from the surrounding text. In addition, unless the mark is already in the plural form, it should never be made plural (i.e. not two Cokes, but two COKE beverages). Lastly, if the mark is in danger of falling prey to genericide, the owner may want to educate the public as to their rights and the proper usage. One such clever campaign conducted by Xerox advised consumers that “you can’t Xerox a Xerox on a Xerox. But we don’t mind at all if you copy a copy on a Xerox®️ copier.”

While it’s a great thing for a mark to be well known and widely used, don’t let your mark get so well known and widely used that it becomes the generic or common name for a particular product or service. If you follow these guidelines from the start, it is unlikely that your mark will fall victim to genericide.

We are always here ready to help you acquire, protect and enforce your trademark rights. If you need to register a brand name, or if your brand is in danger of becoming generic, contact us to find out how to best protect your valuable asset.

BRANDING, COPYRIGHTS, INTELLECTUAL PROPERTY, TRADEMARKS

Rocket City Trash Pandas – A baseball team in Northern Alabama or a Guardian of the Galaxy?

After several months of consideration and public polling, on September 5, 2018 the town of Madison, Alabama (a suburb of Huntsville, nicknamed “The Rocket City” for its close association with U.S. space missions) and team owner BallCorps, LLC announced the name of its new AA baseball team, which will be known as the “Rocket City Trash Pandas.” For those of you unfamiliar with the modern slang terminology, “trash panda” is a commonly used term for a raccoon. The name makes sense, right? Rocket City for the region where the team will be based and Trash Pandas for an animal (commonly used as mascots for many sports teams) that is indigenous to the region. The name is fun, catchy and creative and perfectly suitable for use in connection with a baseball team in this universe. But, for a moment, let’s consider the Marvel Universe®.

Marvel Characters, Inc. currently holds, or is pursuing federal trademark registrations on almost 1,500 different marks and has been granted almost 10,000 federal copyright registrations. Included in that mix are trademark and copyright registrations to the Guardians of the Galaxy®️ movie and characters, including Rocket Raccoon®️, depicted in the second photo. When compared to the first photo that accompanied the Rocket City Trash Pandas announcement, we think you will see why we have concerns. Will a company that spends millions (perhaps billions) of dollars creating, developing and marketing its characters sit idly by while a AA baseball team in Northern Alabama uses images of an armor-clad Rocket Raccoon®️ to brand its new baseball team called the Rocket City Trash Pandas? We would be surprised if they do – Marvel even has a page on its website for people to report suspected infringement.

In the Trademark Universe, the owner of a mark may be provided with protection for a character’s name, physical appearance and distinctive designs and perhaps other qualities. Famous marks, which invoke an immediate connection in the minds of the consumers with a specific product or service and the source of that product or service, are given a broader scope of protection than ordinary marks. Examples of famous trademarks are APPLE, GOOGLE, MICKEY MOUSE and MAGIC KINGDOM. Acquiring famous mark status “often requires a very distinct mark, enormous advertising investments and a product of lasting value.” It is more than plausible that Marvel could make a case that its Guardians of the Galaxy®️ and Rocket Raccoon®️ marks have achieved “famous mark” status.

Even in the absence of a likelihood of confusion, the owner of a famous mark can bring an action for trademark dilution, which allows the owner of a famous trademark to forbid others from using that mark in a way that would lessen its uniqueness. In most cases, trademark dilution involves an unauthorized use of another’s trademark on products or services that do not compete with, and have little connection with, those of the trademark owner. So it is not inconceivable that a famous trademark used by Marvel to refer to a comic book character might be diluted if another company began using a similar mark to refer to a baseball team.

In some ways the Copyright Universe presents a parallel universe. Under federal copyright law, it is well settled that stock characters are free for anyone to use. However, characters that are depicted graphically or visually, such as in comic books, television, or film are more likely to be extended copyright protection. Thus, a stock picture or graphic of a raccoon as part of the Trash Pandas logo would not likely constitute an infringement. However, as we can see from the second photo, the Rocket Raccoon character is not a “stock” character. Rather, there are elements to the character that render it protectable under copyright law – the particular look and features of the character’s face and the clothing are a few examples. Comparing the two photos above raises some serious issues of copyright infringement should BallCorps use the proposed logo design or one similar to it. Use of a stock image of a raccoon, or one that doesn’t look so strikingly similar to the Rocket Raccoon®️ character would diminish the potential for copyright infringement significantly, but may not be enough to avoid allegations of infringment which can be very expensive to defend.

Apparently BallCorps is not totally oblivious to issues of intellectual property regarding the naming of its team. On July 26, 2018 it filed two applications with the U.S. Trademark Office for registration of the name TRASH PANDAS. If the mark passes muster with the trademark examiner, it will be published for opposition for 30 days in the Official Gazette. It would not surprise us in the least to see Marvel oppose registration of this mark on the basis of potential dilution of its marks. We will continue to monitor the status of these applications as they progress and provide updates along the way.

What lessons can we take from this situation? When starting a new business and branding for that business, file early and often. The US Trademark Office allows an applicant to file an application for registration based on “intent to use” the mark, so actual use is not required. Thus, it may be possible to obtain approval of the mark before you even begin using the name/mark. The applications should also cover any and all goods AND services you intend to offer under the mark. You should also register your logo, slogans and other branding associated with your products and services. A clearance search and opinion from an experienced intellectual property attorney can also give you insight into the rights of others who may have similar marks, which could avoid costly litigation in the future. If you are starting a new business, launching a new product, or re-branding an existing company or product, contact us to ensure your path is clear and your assets are protected.

BRANDING, ENTREPRENEUR, INTELLECTUAL PROPERTY, START UP, TRADEMARKS

RESPONDING TO A REFUSAL TO REGISTER A TRADEMARK BASED ON DESCRIPTIVENESS

Even if the mark you are attempting to register is different enough from other registered marks such that there is not a likelihood of confusion between your applied for mark and a registered mark, registration may be refused if the mark is not distinctive. Distinctiveness of a mark generally lies on a spectrum, with inherently distinctive marks (registerable) on one end of the spectrum, and generic marks (unregisterable) on the other end. Inherently distinctive marks include those marks that are fanciful (made up terms such as EXXON, GOOGLE, ADIDAS), arbitrary (words that have no relation to the product or service such as APPLE for computers), or suggestive (words that provide a hint to a particular quality or feature of the product or service). Inherently distinctive marks are registrable without proof of acquired distinctiveness. Generic marks ( such APPLE for the fruit) are those words that are commonly used to identify the product or service, and as such are not registerable. Somewhere in between lie descriptive marks – those marks that describe a characteristic of the goods or services. Descriptive marks are only registrable if they have acquired distinctiveness or secondary meaning.

One of the more common grounds for rejection of an application for registration of a trademark is that the mark is “merely descriptive” of the trademark owner’s goods or services. In response to an initial (first office action) descriptiveness refusal issued against an application, the trademark owner has four options: (1) file a response to the office action arguing that the mark is inherently distinctive, (2) accept that the trademark is descriptive and provide evidence that it has “acquired distinctiveness”, (3) accept registration on the Supplemental Register, or (4) abandon the application. The decision on which of these options is best depends on the descriptiveness of the trademark, the length of use, the past sales and marketing, and the trademark owner’s budget. However, each of these has its hidden weaknesses that a trademark owner should discuss with an experienced trademark attorney before making their decision.

Filing a Response to the Office Action Arguing the Mark is Inherently Distinctive

The line between descriptive marks and suggestive marks is often blurry and an experienced trademark attorney can assist you in determining (and arguing to the Trademark Office on your behalf) on which side of the line your mark falls. There are a number of decisions out there where Federal Courts and/or the Trademark Trial and Appeal Board (TTAB) have established guidance as to where that line should be drawn in certain situations. An experienced trademark attorney can apply that law to the facts of your application and, in some cases, can make an effective argument that your mark is suggestive (registerable) rather that descriptive (not registerable). If there is a possibility of overcoming the rejection, this option should always be on the table and included in a response to the office action.

Submitting Evidence of Acquired Distinctiveness

Another option in responding to a rejection based on alleged descriptiveness is to submit actual evidence that the applied-for mark has acquired distinctiveness in connection with your goods or services. This can be done alone, or in combination with a response arguing that the mark is inherently distinctive. Acceptable evidence of use can include:

advertising and promotional materials that specifically show or promote the applied-for mark in use as a trademark and source-identifier;
dollar figures for advertising devoted to such promotion;
dealer and consumer statements indicating recognition of the applied-for mark as a trademark;
other evidence that shows consumer recognition of the applied-for mark as a trademark for applicant’s goods.

Unless your mark is extremely descriptive, if it has been in use for five years or more, the trademark office will generally allow trademark owner to claim acquired distinctiveness under the Lanham Act’s five-year presumption by filing an affidavit attesting to five years use with no additional evidence. If the trademark is extremely descriptive or if it hasn’t been in use for five years, the trademark owner can provide evidence of customer affidavits, sales, advertising, earned media and more to show that it has met this threshold.

Registering on the Supplemental Register

Another option would be to accept the trademark examiner’s assertion that the mark is merely descriptive, but amend the application to seek registration on the Supplemental Register. However, marks registered on the Supplemental Register do not receive all the protections given to those registered on the Principal Register. Specifically, placement on the Supplemental Register does not provide constructive notice of ownership or a presumption of ownership in the event of infringement litigation, does not support a later claim of incontestable status, does not imply the right to exclusive use of the mark, nor does it allow the mark owner to request exclusion of imports by the Bureau of Customs. It does allow the registrant to use the federal registration symbol ® and it serves as a bar to subsequent registrations that would create a likelihood of confusion.

Abandoning the Application

While this may seem obvious, it is important to note that a trademark application may be withdrawn without prejudice at any time before it is adjudicated before the TTAB in an appeal. This means that a trademark owner may abandon its trademark application for any reason and file it again sometime in the future. This approach has a few clear drawbacks: the trademark owner will have no federal protection for their trademark and will have to rely on their common-law rights, which apply to the geographic area where a trademark owner can show it has trademark recognition of its mark. This will make enforcement of the trademark difficult and potentially expensive. There will also be a public record that the application was abandoned. This will not be a legal admission of any kind, but could provide an opposing party with additional ammunition in a legal dispute.

There any many factors to consider when deciding the best way to deal with a descriptiveness refusal. If a trademark is truly descriptive (i.e. there little to no chance of winning on an appeal), then providing evidence of acquired distinctiveness (if possible) or amending to the supplemental register may be the only way to gain any federal rights in the descriptive mark. However, for a company faced with this decision, it is always important to consider the long-term consequences. Remember that every huge company was once a startup facing similar decisions about their trademarks and a trademark registration is only as valuable as its owner’s ability to enforce it against potential infringers. A trademark owner should consider all of the options before making a decision that could affect the long-term strength and scope of their trademark.

ENTREPRENEUR, INTELLECTUAL PROPERTY, PATENTS, TRADEMARKS

U.S. PATENT & TRADEMARK OFFICE ISSUES TEN MILLIONTH PATENT

On June 19, 2018, nearly 228 years after the first U.S.patent was issued to Samuel Hopkins for a process of making potash, U.S. Patent No. 10,0000 was granted to Raytheon Company for Coherent LADAR Using Intra-Peel Quadrature Detection. I wonder if the Founding Fathers, including President George Washington who signed the first patent, ever thought we would reach this milestone.

In order to “promote the progress of science and useful arts”, at the Constitutional Convention in 1787 the founding fathers granted to “authors and inventors the exclusive right to their respective writings and discoveries.” From these words sprang a patent system that spurs innovation by granting temporary monopoly rights to inventors in exchange for their disclosure of their invention to the public. The inventor benefits from the right for 20 years to exclude all others from making, using, selling, offering to sell and importing their patented invention. In exchange, the public receives a detailed description of the inner workings of the invention, which often times leads to further innovations and improvements.

It has long been rumored that, in 1899, then Commissioner of Patents Charles Holland Duell said “everything that can be invented has been invented.” Mr. Duell served as the twenty-fifth Commissioner of the United States Patent Office at the turn of the last century (from 1898-1901). There is little proof that Duell actually made this statement, and a number of authors have attempted to bust this myth over the years.

A quick look at Duell’s accomplishments as Commissioner of Patents would lead one to doubt that he made such a statement. His reports suggest that the Patent Office was experiencing significant growing pains during his tenure. Issues of office overcrowding, storing of soft copies of patents and a shortage of examiners to deal with the increased flow of applications appeared in his annual reports to Congress. Apparently Duell had some success in convincing Congress to fund the hiring of additional examiners when the wait time for a newly filed application to be examined was reduced to six weeks (according to current USPTO statistics, the wait time for a first office action is now 15.5 months!). The Division of Classification was also organized under Duell’s tenure to deal with a growing diversity of inventions.

A look at the state of industry and technology at the dawn of the 20th Century is further proof that no one in their right mind would have made such a statement at that time. By the end of the 19th century, the principles of generating electricity had been solved and production of electricity on a large scale was just ramping up. In 1899, German chemist Felix Hoffmann patented aspirin, and Bayer registered its name as a trademark. The petroleum industry was mounting a comeback as the trust creating the behemoth Standard Oil Company was formed in 1899. On August 5, 1899, Henry Ford resigned from the Edison Corporation and founded the Detroit Automobile Company. The founder of the Edison Corporation, Thomas Alva Edison was busy working on a number of inventions for which he was ultimately awarded 1,093 U.S. patents, including US Patent No. 425,761 which issued in 1900 for the Incandescent Lamp. Also in 1899, after Wilbur Wright had written a letter of request to the Smithsonian Institution for information about flight experiments, the Wright Brothers designed their first aircraft. In 1900, a 21 year old by the name of Albert Einstein became an assistant patent examiner at the Federal Office for Intellectual Property after graduating from the Eidgenössische Technische Hochschulethe in Zurich.

Without a doubt, the state of inventions and technology expanded at a meteoric rate in the first quarter of the 20th Century. At the end of 1899, a total of 640,166 patents had been issued in the then 109 year existence of the Patent Office. By the end of 1925 and additional 927,873 U.S. Patents had been issued. Patent No. 5,000,000 issued a mere 27 years ago when a then 23 year old by the name of Rick Martin was a patent examiner at the U.S. Patent & Trademark Office. While impressive, that rate of growth has continued to climb. At present, over 300,000 U.S. Patents are issued every year!

From this exponential growth, it is clear that the patent system has been instrumental in driving innovation. To celebrate this milestone, the USPTO unveiled a new patent cover design beginning with the 10 millionth patent and has prepared a multimedia presentation on the history of the US patent system. If history is any indication, we are nowhere near the point where “everything that can be invented has been invented.” In fact, at the current rate of growth, many of you reading this article will likely live to see the issuance of US Patent No. 20,000,000.

Do you have an idea for the next Process of Making Potash or Coherent LADAR? If so, contact us to discuss how we can help you protect these valuable assets!

COPYRIGHTS, INTELLECTUAL PROPERTY, PATENTS, TRADEMARKS, Uncategorized

Love and Litigation – Swarovski accused of Copyright Infringement of “Two In One Heart” Pendant Design

In December 2017, Galatea Jewelry filed suit against Swarovski in a California Federal Court alleging infringement of its copyrighted jewelry design entitled TWO IN ONE HEART. The TWO IN ONE HEART design was created in 2009 by Galatea principal Chi Huynh to “capture his vision of love as a union of two individuals, at once both separate and together, with an optical illusion of a single heart comprised of two overlapping hearts formed from the same continuous loop of metal.” Galatea claims that it began selling its TWO OF ONE HEART design in 2010, and that beginning in around January 2016, Swarovski began selling its infringing design. The two designs are depicted below:

Galatea	Swarovski

While the Swarovski design is not identical to the copyrighted Galatea design, Galatea alleges that Swarovski merely (1) horizontally flipped the Galatea design shown above left; (2) removed the existing diamonds; (3) covered a larger portion of the design with crystals; and (4) tapered the points and rounded the edges as follows:

In general, copyright infringement occurs when a copyrighted work is reproduced, distributed, performed, publicly displayed, or made into a derivative work without the permission of the copyright owner. Of primary concern where copyrights are concerned, is whether or not there was “copying” of the work. In theory, if two people create the exact same work completely independent from one another, there can be no copyright infringement. Copying can be proven by direct evidence (an admission, etc.) or circumstantial evidence. Circumstantial evidence of copying requires a showing of “substantial similarity”: (1) access by the alleged infringer to the copyrighted work and (2) similarity of the alleged infringing work to the original copyrighted work. While Galatea does not claim that it had any direct dealings with Swarovski, it does claim that Swarovski had access to the the TWO IN ONE HEART design through Galatea’s catalog, retail jeweler network and website as well as through various trade shows.

Assuming copying can be proven, a plaintiff must next demonstrate that it was the copyrightable elements of their design that were copied. This requires removing the ideas, scenes-a-faire (commonplace themes), facts, and public domain materials from the alleged infringing work. In the affirmative defenses raised by Swarovski in its answer filed in January 2018, the defense of Non-Copyrightable Material is asserted. Presumably, Swarovski is relying upon the scenes-a-faire doctrine, under which the courts will not protect commonplace elements of a work. Sequences of events which necessarily flow from a common theme or commonplace ideas where the elements of the work are indispensable or are standard in the treatment of a certain idea are considered to be scenes-a-faire and are not protectable under copyright law. For example, a court has held that a motion picture about the South Bronx would need to feature drunks, prostitutes, vermin, and derelict cars to be perceived as realistic, and therefore a later film that duplicated these features of an earlier film would not infringe. Scenes-a-faire are still entitled some level of protection, although it is relatively thin. Where scenes-a-faire are concerned, a plaintiff must prove that the infringing design is “virtually identical” to the copyrighted design.

So how does a jewelry designer or artist protect himself or herself against infringers? The first step is to identify what intellectual property protections are available. Jewelry designs, for the most part, are capable of being protected by copyright. Copyright protection attaches upon creation of the work. The designer should clearly mark each piece of jewelry with the appropriate copyright notice to place potential infringers on notice of his/her claim to protection under copyright laws.

In addition, design patent protection may be available for some jewelry designs. Design patents protect the ornamental features and overall design of an invention. Unlike copyrights, infringement of a design patent may be found in the absence of any proof of copying, so long as an ordinary observer who is familiar with the prior art would conclude that the allegedly infringing article is “substantially similar” to the patented design.

A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. While they normally would not be used to protect the jewelry design itself, trademarks can be used to distinguish the name of the design, or line of designs from others. For example, Galatea use the trademark Two of One Heart™ to identify its line of jewelry related to the copyright registration.

Once the intellectual property has been properly identified, steps must be taken to protect it. Under U.S. Patent Law, a design patent application must be filed within one year of the first public sale, use or disclosure of the invention or the inventor forfeits the ability to secure patent protection. Trademarks may be protected under common law without the need for a federal registration. However, there are several benefits to securing a federal trademark registration, including nationwide protection and incontestability of the mark after a certain period of time. Lastly, as discussed above, copyright protection begins upon creation of the work, but registration provides the owner with a number of additional benefits, including the right to sue alleged infringers in Federal Court.

Lastly, after protections are secured, the designer must enforce his/her rights. While there is not necessarily a duty to actively seek out potential infringers, a copyright or patent owner who turns a blind eye to infringing activity is in danger of having his or her intellectual property rights diminished or extinguished.

A jewelry designer should seek the advice of a qualified intellectual property attorney to guide him/her through the process of identifying, protecting and enforcing his/her rights. While it may not seem too difficult to do it yourself, simple errors in that process can undermine protection. At Martin IP Law Group, we take the time to work with designers, artists and inventors to build the best plan to protect their valuable property. Contact us today to see how we can help you.

COPYRIGHTS, INTELLECTUAL PROPERTY, PATENTS, TRADEMARKS

A LOOK BACK AT 2017 AND A LOOK FORWARD TO 2018 IN THE WORLD OF INTELLECTUAL PROPERTY

As we say goodbye to 2017 and ring in 2018, we thought it would be a good idea to take a look back on some of the biggest game changing decisions from last year in intellectual property and look forward to how they might affect you and the world in 2018. While there were many to choose from, we selected three – a patent case, a trademark case, and a copyright case.

PATENTS

Since the passage of the America Invents Act (AIA) in 2012, there has existed a faster and cheaper alternative to the federal court system for attacking the validity of an issued U.S. Patent. An inter partes review is a trial proceeding conducted at the USPTO’s Patent Trial and Appeal Board to review the patentability of one or more claims in an issued patent under certain limited circumstances. A third party instituting an inter partes review must show that there is a reasonable likelihood that the petitioner would prevail with respect to at least one claim challenged. If the proceeding is instituted and not dismissed, a final determination by the Board will be issued within one year (much faster than the typical case in federal court).

The constitutionality of the inter partes review is under attack in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, which was argued before the U.S. Supreme Court in November 2017. The sole issue now being considered by the Supreme Court is whether inter partes review violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury. A few years back (120 to be exact), in McCormick Harvesting Machine v. Aultman, the U.S. Supreme Court addressed this issue under similar circumstances, holding that “[t]he only authority competent to set a patent aside, or to annul it, or to correct it for any reason whatever, is vested in the courts of the United States, and not in the department which issued the patent.” Stay tuned to see if this “ancient” interpretation of the Constitution holds up in 2018.

TRADEMARKS

In Our September 2017 Blog and Newsletter we reported to you on the death of disparagement in the world of trademarks. In Matal v. Tam, Supreme Court ruled that the United States Patent & Trademark Office (PTO) could not refuse registration of the name “The Slants” to an Asian-American dance rock band from Portland, Oregon on the grounds that the phrase constitutes a slur and is offensive to Asian-Americans. In doing so, the Supreme Court ruled that the trademark law barring disparaging terms infringes on free speech rights, and, as such is unconstitutional.

The issue was raised again last month in In re Brunetti, a decision by the U.S. Court of Appeals for the Federal Circuit. The Federal Circuit held that the “immoral” or “scandalous” marks provision of the Lanham Act is also facially invalid under the First Amendment. Brunetti
is the owner and founder of FUCT – a clothing brand that has been referred to as one of the pioneering brands of modern streetwear, often incorporating various elements and icons of pop culture alongside anti-government and anti-religious campaigns into their designs. It is worth noting that, in its opinion, the Federal Circuit concluded that strict scrutiny (high burden of proof), rather than intermediate scrutiny (intermediate burden of scrutiny as the name implies) is the applicable standard in assessing the issue because the law “regulates the expressive components of speech, not the commercial components of speech”. Even if the government concludes that the “immoral” or “scandalous” provision cannot be saved in light of Tam, there may be good reason to request review by the entire panel of the Federal Circuit or the U.S. Supreme Court on the proper level of scrutiny to be applied, particularly since federal trademarks are. by there very nature, “commercial”. Stay tuned!

COPYRIGHTS
Section 411 of the Copyright Act has long provided that “no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made”. At present, there exists a split between the various Circuit Courts of the United States as to just exactly when such a registration or preregistration “has been made”. In the Fifth Circuit (Texas, Louisiana, Mississippi) and Ninth Circuit (California, Arizona, Nevada, Oregon, Washington, Idaho, Montana) this is considered to have occurred when the copyright holder delivers the required application, deposit and fee to the Copyright Office. In contrast, the Tenth Circuit (Colorado, Utah, Wyoming, Kansas, Oklahoma, New Mexico) and Eleventh Circuit (Alabama, Georgia, Florida) require that the Copyright Office “act” on the application before registration or preregistration is considered to have been made. To complicate things further, our own Seventh Circuit (Indiana, Illinois, Wisconsin) has issued conflicting opinions on the issue.

With any luck, the U.S. Supreme Court will resolve this difference sometime in 2018. The loser of the 2017 decision of the Eleventh Circuit Court of Appeal in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC is requesting the U.S. Supreme Court review the case and resolve the split between the circuits once and for all. At the present time, the U.S. Supreme Court has not yet determined whether it will hear the case, and has asked the U.S. Solicitor General to weigh in with his views on the issue. Hopefully this is a sign that the Supreme Court is considering hearing the case, particularly for those of us situated in the Seventh Circuit where there is no clear answer to this question.

Do you have issues involving patents, trademarks, copyrights, or trade secrets, or want to know more about protecting your valuable intellectual property? If so, contact us to discuss how we can help you protect these valuable assets and make 2018 your most successful and profitable year ever. Happy New Year!