TradeMark Express Blog: All Things Trademark: 2006

Do You Hear What I Hear?

I received a question in response to this post about sound trademarks. "

'What has to be provided to trademark a particular sound?'

According to TRIPs the ability to file and register a sound trademark "depends on [the] aural perception of the listener which may be as fleeting as the sound itself unless, of course, the sound is so inherently different or distinctive that it attaches to the subliminal mind of the listener to be awakened when heard and to be associated with the source or event with which it struck."

Okay, now what does that actually mean? Basically, the sound has to be 'inherently different or distinctive' in that when someone hears it the sound is associated with the mark.

For instance, MGM has successfully filed and registered their distinctive lion's roar. To see more sound trademarks, go here.

Filing a sound trademark application is similar to filing a traditional trademark except in respect to the sound itself. Further details can be found here.

'In The US what does this cost to trademark a sound?'

The filing fee for the USPTO is determined by the number of classifications filed and not by the type of mark. The USPTO filing fee is $325 per International Class. "

'Are there many countries where sounds cannot be trademarked?'

There are different rules and restrictions, which more can be read about here.

Read more about trademarks

What if someone's using your trademark or trade name without your permission?

Sony PS3 Sony PS3 Playstation trademark trademark news trademark infringement

Oxfam Gets into the Fray

Oxfam, "a development, relief, and campaigning organisation that works with others to find lasting solutions to poverty and suffering around the world," has voiced their concerns to Starbucks ® about Ethiopia's coffee trademarks.

trademark news trademarks trademark Oxfam Starbucks Ethiopia coffee

For more about trademarks, click here. For more about USPTO Application FAQ, click here.

Buffett Settles

The latest news to this post was updated today with word of a settlement.

trademark news trademark trademarks Jimmy Buffett trademark infringement

Even Gene Simmons knows what's up.

Jimmy Buffett wants his Cheeseburger back

Ok, well not really but he does want Robert Akard to stop using his name and likeness.

trademark news trademark Jimmy Buffett trademarks

Apple ® Says NO to the gPod

Ichiro Kameda, a Japanese based businessman, has joined the ranks of those getting not-so-fun letters from Apple ®. There was quite a bit of hub-bub last year about Apple ® launching their own gPod but so far that hasn't seemed to surface in the marketplace.

However, Mr. Kameda's device is, uh, um of a sexual nature and even passed through the USPTO's research process so we'll see how successful Apple is with their latest bout.

I wonder if people are associating POD names with Apple because the brand is so well-known OR because of all the press about the company threatening legal action against the random POD's 'round the world. Hmm…

trademark news trademark apple trademark ipod gpod apple

K-Fed's Having a Helluva Week

Britney Spears has filed a petition for divorce from Kevin Federline. And if that wasn't enough for the wanna-be rapper, he also "made an undisclosed cash payment" to Thomas Dolby in their copyright infringement case.

K Fed Kevin Federline Britney Spears copyright copyright news

Patent Your Invention -- Resources, Links & Books

To protect an original invention OR a significant improvement to an existing product, a patent would be filed. Here's the USPTO's definition.

NOLO is a great, free informational site. Also, be sure to read what else the USPTO (United States Patent & Trademark Office) has to say about patents:

• USPTO's FAQ about Patents
• USPTO's How to Get a Patent
• Search Patents

Associations may be a good avenue to explore. These organizations will address many of the thoughts, questions and concerns you'll inevitably have as well as many you haven't anticipated yet.

• International Federation of Inventors' Associations
• United Inventors Association
• Directory of Local USA & Canada Groups

Research, research, research – this cannot be stressed enough. Read as much as you can. Here are some book titles that are relevant:

Getting a Patent:
* Patent It Yourself (11th Edition) by David Pressman
* Patents and How to Get One : A Practical Handbook by U.S. Department of Commerce
* How To Make Patent Drawings Yourself: A Patent It Yourself Companion by Jack Lo
* The Inventor's Notebook: A Patent It Yourself Companion by Fred E. Grissom

There are plenty of free informational resources out there.

Free Articles:

• Patent – How to Get One by Michael Russell
• Invented Something? Get a Patent by Thomas Choo
• How to Select a Patent Attorney by Lisa Parmley
• How to Patent Your Invention by Neil Armand
• Can You Start Selling Your Invention Before Patenting It? by Xavier Pillai

patent patents patent info invention invent

Lawyers on the Loose!

The USPTO will be experimenting with telecommuting lawyers starting next year. Read more about that here.

trademark trademark news trademark info USPTO

A Veritable Voluminous Vat of Varying Varieties of Vagueness
aka The USPTO Glossary

The USPTO offers a great service to the public by having the glossary available for viewing. However, some of the language makes you want to say 'huh? what was that?'

So, let's take a look at some of the important words/terms that every person wanting a trademark should know.

First & foremost -- trademark. What is it? Do I need it? Why do I need it? The word trademark can have entire posts written about it; luckily, I've got several for you to check out:

What is a Trademark?
What is a Trademark Search?
Do You Need a Registered Trademark?

Okay, let's move on to some of the trickier definitions.

When an application is filed with the USPTO, there are four different filing bases: use of the mark in commerce, intent-to-use, pending foreign application & foreign registration. Having a pending foreign application or registration is a whole different ball of wax & probably won't apply to most folks reading this so let's stick with the first two.

* Use-based application: You can read the USPTO's definition here. Basically, this basis is chosen if the name, logo or slogan has been used in connection with the goods/services across state lines or between the US & any other country. Let's use some examples:

You live in Florida & you have a clothing line with a name & a logo. You've sold some pieces through your on-line web site to customers in Florida, New York and the Bahamas. Your mark is in use in commerce.

Your financial consulting company is based in Mesa, AZ and you have a small roster of clients, all of whom reside in Arizona. Your mark is not in use in commerce. Your mark, however, is in use for the state of Arizona.

* Intent-to-use application: After scrolling a bit, you can read the USPTO's definition here. Essentially, if you're only doing business in 1 state or not at all, you'll be filing as an intent-to-use. Here's a couple of examples:

You plan on starting an on-line retail site selling home decor items. You've got your DBA, the domain name secured & some business cards printed up; however, you have not yet made a sale. Your mark is an intent-to-use.

You live in California & you have a greeting card company. All of your cards are handmade and all carry your name & logo on the back. You've sold at holiday trade shows all across the country. Your mark is in use in commerce.

Now the intent-to-use filing has a bit of a hiccup in the trademark process. The USPTO will not actually grant registration of a mark until it is in use in commerce. Basically, this requires some money & the filing of another form to the USPTO.

Are there any terms or words that you've run across that I could explain for you? Let me know by way of commenting & I'll write up a post for you.

trademark trademarks trademark definitions trademark application trademark filing

Dead Apples

There's been a lot of hullabaloo about Apple's filing for iPhone in the trademark world.

That got me thinking about Apple's dead marks -- let's take a look at what could have been...

iSchool was filed for on September 21, 2001 for International Classes 9, 38, 41 & 42. This mark became abandoned in August 2002 for failure to respond to the USPTO. The mark, specifically IC 41, sounded particulary interesting to me:

"Educational services; educational services, namely, providing a web-based student information system, featuring student grades, attendance records, and homework assignments, that enables school districts, schools, administrators, teachers and parents to record, access, report, and manage their student information and performance data, and allows students and parents to access such information and data, in real time" sounds like a fantastic feature for all schools.

Offlinert became abandoned on July 30, 2004 for failure to respond to the USPTO's refusal for registration on the Principal Register due to the mark being merely descriptive.

Lastly, Cinema Tools became abandoned in March of 2006 again for failure to respond to the USPTO. One of the reasons for refusal was that good ole descriptive tag.

A quick check of the PTO shows 531 dead marks owned by Apple Computer Inc. Some of the more interesting names I came across:

Junkyard for "computer software for sharing, managing, viewing and editing files, documents, and electronic mail messages"
FlowerPower for "computers, computer hardware, computer peripherals, and user manuals sold as a unit therewith"
Internet Safari for "providing temporary use of on-line non-downloadable children's educational computer software"
Espresso for "computer software, namely, programming language software and manuals sold therewith"

Take a look for yourself by following these steps:

Go here and choose New User Form Search

Enter Apple Computer into the Search Term box and change the Field to Owner Name

Click Submit Query and voila!

Trademark Renewal & Maintenance – How Do I Keep My Trademark?

After you’ve applied for your trademark, there will be a waiting period of approximately 18 months before your name is actually registered with the United States Patent & Trademark Office (herein referred to as the USPTO). Until then, it will be listed as "Pending."

Sometimes there are hold-ups; the USPTO may not allow you to use the name you’ve chosen to apply for because there is a similar name already trademarked. In this case, you will receive an "office action", which is a notification from the USPTO. If you do receive an office action, it might be due to the USPTO simply needing more information in order to complete your trademark application.

However, it also may be because your name is blocked by another name, which is the worst case scenario, and another reason why it is incredibly important to purchase comprehensive research before you file for your name!

After your name is registered with the USPTO, between years 5-6 you will file a "Continuous Use Form." This form conveys to the USPTO that you have been using your trademarked name, and you intend to continue to stay in business or to sell your product under that name. After a 10 year period, you will be required to renew your trademark.

It is important to be aware that some maintenance is involved in keeping your trademarked name.

It is recommended that each year you commission research on your name. This is done to ensure that no one has begun using your name since doing initial research on its availability. By continuing to do annual research, you are adding a greater sense of protection for your name and business.

It is up to you to remain informed on what businesses are using what marks, and how this might affect your own personal business ventures.

Once trademarked, you may take legal recourse if another business has begun using your name. A "cease and desist" letter is a way of conveying to another business that they are infringing upon your trade-name. While you do not need a trademark in order to draw up a letter such as this, having a federally registered trademark gives you a greater ability to disallow the use of your name by another.

These documents should always be drawn up by an attorney, rather than an individual, as the action conveys that you are taking legal recourse against another business. Please communicate with the USPTO directly, a trademark attorney OR a trademark research company if you have more specific questions about maintaining your trademark!

Author: Marit Lee

trademark trademark renewal trademark renew trademark maintenance trademark application trademark registration

First, let's pinpoint what falls into the sound recordings category. Here's what the US Copyright Office has to say:

"Sound recordings are 'works that result from the fixation of a series of musical, spoken, or other sounds, but not including the sounds accompanying a motion picture or other audiovisual work.' Common examples include recordings of music, drama, or lectures."

Here are some books about copyrights:

The Copyright Handbook
How to Register Your Own Copyright

Now to file an application:

The application is fairly simple & the cost is $45 per application.

Despite what others state, a "poor man's" copyright is NOT the same as registering it. Here's what the US Copyright Office has to say:

"The practice of sending a copy of your own work to yourself is sometimes called a 'poor man’s copyright.' There is no provision in the copyright law regarding any such type of protection, and it is not a substitute for registration."

Lastly, here are two great resources:

NOLO's Copyright Resource Center
NOLO's Creative Arts & Music Resource Center

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copyrights

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I wanted to send out a THANK YOU to David Giacalone, 'the founding editor & host' of shlep for his kind words about our blog.

A Little Bit of This, A Little Bit of That

We'll be moving to a new home soon, which means time for posting has diminished a bit. However, I did want to be sure to share with you some news about trademarks & copyrights that I found interesting.

* Hormel loses bid for spam trademark by OUT-LAW.com

* Coach files trademark suit against Target over handbag by Chad Bray

* Google ducks a legal bullet by Eric J. Sinrod

* Judge tosses copyright suit against Beyonce by The AP

* Copyright owners bust Univ. students by Jessica Levine

trademark trademarks trademark news copyright copyrights copyright news

Copyright Registration: Performing Arts Works

First, let's pinpoint what falls into the performing arts category. Here's the list of examples from the US Copyright Office:

"Performing arts works are intended to be 'performed' directly before an audience or indirectly 'by means of any device or process.'

Included are (1) musical works, including any accompanying words;

(2) dramatic works, such as scripts, including any accompanying music;

(3) pantomimes and choreographic works; and

(4) motion pictures and other audiovisual works."

Here are some books about copyrights:

The Copyright Handbook

How to Register Your Own Copyright

Now to file an application:

The application is fairly simple & the cost is $45 per application.

Despite what others state, a "poor man's" copyright is NOT the same as registering it. Here's what the US Copyright Office has to say:

"The practice of sending a copy of your own work to yourself is sometimes called a 'poor man’s copyright.' There is no provision in the copyright law regarding any such type of protection, and it is not a substitute for registration."

Lastly, here are two great resources:

NOLO's Copyright Resource Center

NOLO's Creative Arts & Music Resource Center

The Web of Trademark Law is About to get Bigger

The Federal Trademark Dilution Act of 1996 is about to expand in scope. The bill is simply awaiting the President's signature in order to become law. The new Trademark Dilution Revision Act of 2006 basically expands the scope of dilution to include blurring or tarnishment.

Here's what the government says about both:

* "Defines 'dilution by blurring' as an association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. Allows the court to consider all relevant factors when determining whether a mark or trade name is likely to cause dilution by blurring, including:

(1) the degree of similarity; (2) the degree of inherent or acquired distinctiveness of the famous mark; (3) the extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark; (4) the degree of recognition of the famous mark; (5) whether the user of the mark or trade name intended to create an association with the famous mark; and (6) any actual association between the mark or trade name and the famous mark.

* Defines 'dilution by tarnishment' as an association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark." You can read the entire summary here.

So what does this mean for companies that sell items like this or this or even this. Warning, some of these are bound to offend. Once this becomes law, are we going to see a crackdown on products like this? How much will Parody as Fair Use protect companies such as these?

trademark trademarks trademark news trademark law

The Pitfalls of Relying on Free Name Research

You found the perfect name for your business and are ready to make your place in the business world. You know you should check to make sure that no one else has rights to your name but where to start?

Doing a search of the web brings up many, many services offering to search your name for free or for a minimal cost. Before you jump on board, make yourself aware of the following pitfalls:

Free research will never give you an accurate glimpse of what's out there in terms of names of products or services. If it's free, by all means, take advantage of it; however, please make yourself aware of any "hidden" costs and, most importantly, that you will be missing large chunks of information that are necessary to any comprehensive name search.

Comprehensive searches always cost more than preliminary searches because of the depth and breadth of the thousands of databases that must be searched, at a cost of $1 to $5 per minute wholesale. So, if a search sounds too good to be true it's because it is!

Preliminary searches are just that - a cursory look as to whether a trade name is used or not. This type of low price or free search is often never offered with analysis. Analysis is a key component of name research. It's very easy for people to under-react or overreact to research.

If the research appears to be clear, you still need a comprehensive search because most names are affected by similarities in sound, appearance and meaning, which do not often appear until a comprehensive search is conducted.

Take advantage of free resources just don't ever rely on them as comprehensive!

free trademark trademarks service servicemark tm trademark

Podcast - 204,000,000 & counting

In a somewhat surprising move, it was announced this week that Apple wants to claim rights to the word podcast. A cease & desist letter has already been sent to Texas based Podcast Ready.

Those digits in my headline are how many hits I got for the word podcast when I did a search on Google this morning. It seems to me that trying to prove a point of origin and/or a right of ownership is going to be as close to impossible as impossible can get.

So what do we think? Is this a case of a behemoth company run amok? Or is this simply what Apple has to do - police & protect their trademark?

The online community definitely has an opinion.

A company in Santa Cruz may be Riding a Cruncher

There's been a follow up to the topic I wrote about earlier last month: Going Surfing! Huntington Beach IS Surf City USA ®.

Noland's on the Wharf received a cease & desist letter from the Huntington Beach Conference and Visitors Bureau.

Check out an article from the Santa Cruz Sentinel. The only article I could find in relation to a Huntington Beach paper was almost a carbon copy of the Santa Cruz one; check it out here.

trademark trademarks trademark news huntington beach santa cruz trademark dispute cease & desist

Oh Trademark! My Trademark...your fearful trip is done!

A radio station operating from Lincoln, NE and owned by Clear Channel Communications ® has stopped using the pronoun MY because someone already owns that mark; read about it here.

photo: © martin@party-mania.nl

Doing a quick little search at the USPTO popped up a registered trademark for MY for radio broadcasting services:

Registration Number: 1535807

Mark (words only): MY

Registration Date: 1989-04-18

International Class: 041
Class Status: Active
RADIO BROADCASTING SERVICES
Basis: 1(a)
First Use Date: 1986-04-30
First Use in Commerce Date: 1986-04-30

To check it out, go to the USPTO's Status page and enter the registration number.

The listed owner is George R. Francis, founder and CEO of AmCom General Corporation, the prior owner of the MY trademark. AmCom went through a series of purchases & sales, even once being technically owned by Clear Channel, the very company that owns the radio station in Lincoln, NE that has had to stop using MY! Phew. Check out the history here.

This just goes to show that there are twists & turns when it comes to trademarks.

trademark trademark news trademark dispute lincoln ne news radio station radio news

Supernova meet Rock Star Supernova

The dispute between the two bands has been settled.

Do You Need a Registered Trademark?

Yup, pilfering from Marit's articles again – time seems to be an elusive friend as of late.

It's less of a need than a want. Registering a trademark is NOT mandatory. However, are you a business owner, or do you work with a business that does not currently have a trademark registered or pending with the USPTO? If this last statement in any way describes you, then YES, you may benefit from having a trademark. It is true that many businesses do not register a trademark with the USPTO, but this puts the business at a great disadvantage when compared to another company that does have a trademark.

Having a trademark notifies an individual that you have the corner on your market. It allows you to take court action if another business does attempt to infringe upon your name. You are essentially protecting your market upon registering a trademark by publicly individualizing your name. This protection allows a greater piece of mind for the average business owner, by ensuring that no one may interfere with your customer base by confusing their business with your own. The last scenario is a common occurrence, and many individuals have been forced to deal with legal repercussions because they did not take the time to trademark their name, while a competing business did.

Think about it like this; if your name was Tom Smith and you were a hard-worker, while there was another Tom Smith who was a poor worker, you wouldn’t want to be confused with that other individual, would you? As I mentioned above, this confusion is a common occurrence among businesses. This is why it is important to protect your name, and your products or services! While it is ultimately up to each business owner whether or not they want to protect their name, be aware of the potential ramifications that can come with not applying for a trademark. Whether or not your name is trademarked could have the ability to make or break your business; so why wouldn’t you apply for a trademark?

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Red Rover, Red Rover, Send Ford ® Right Over

It was announced yesterday that Ford ® has acquired the Rover ® brand from BMW, which was part of deal made in 2000.

Part of this deal was a right of first refusal.

trademark trademark news trademark rights ford rover bmw

Trademark 101: What is a Trademark?