TradeMark Express Blog: All Things Trademark

2011-12-13T10:52:00.001-08:00

More Changes Coming to the USPTO's Online Presence

The USPTO issued a press release on December 7th. Here are the details:

On or about December 16, 2011, the USPTO will introduce a new system, Trademark Status and Document Retrieval (TSDR 1.0). TSDR 1.0 will redefine the way Trademark status data and all documents will be displayed to the public. It reengineers the existing functionality that TARR and TDR currently provide and adds new features, providing access to one place for viewing, printing, and downloading snapshots of the data the USPTO stores about a trademark application or registration.

New features include:

The ability to preview and print the status content being presented.
The ability to download a PDF or the original form of the status content (an Extensible Markup Language (XML) file).
The ability to view the mark as stored in the USPTO mark image repository, and expand the size thereof through mouse rollover feature.
The organization of content into logical sections, with a more logical arrangement of the content within those sections.
The ability to collapse and expand sections of the data.
The ability to move easily between status and document content.
The presentation of basis data at both the case and class levels.
Links to related properties, where applicable.
Access to Trademark status data without going to the TSDR site via an Application Programming Interface (API), which is accessible via unique URL’s that allow the retrieval of data in a specified format (PDF or XML).
Significant decrease in the amount of time between an update to the internal USPTO database record and what is available externally (seconds as opposed to hours).

Please note that, at a currently undetermined point, both TARR and TDR will disappear. Until then, the links for both TARR and TDR will take the user to an "interim" page, from which either the existing system can be reached or the new TSDR 1.0 can be accessed.

2011-12-02T09:15:00.000-08:00

Occupy Trademark

The Occupy Wall Street movement has moved into the trademark arena with a number of new trademark application filings.

There are currently two filings for Occupy Wall Street both of which were filed on the same day:

* Occupy Wall Street, which appears to be owned by those directly involved with the movement.
* Occupy Wall Street, which is owned by Fer-Eng Investments, LLC. "Fer-Eng Investments appears to be a shell corporation with the only officer named as “The Ferraro-Eng Family Trust.” The names provided on the address refer to Vincent Ferraro and Wee Nah Eng. Interestingly enough, Ferraro, a Stanford Business School grad, is the former Vice-President of Worldwide Marketing for Hewlett-Packard"

Now, those affiliated with the movement filed as in-use so Fer-Eng's intent-to-use filing will likely not end well.

The two latest to jump into the trademark pool are:

OCCUPY Las Vegas
Occupy Los Angeles

The LA mark filed for "political action committee services, namely, promoting the interests of Occupy Los Angeles in the field of politics" whereas the Las Vegas mark filed for clothing.

In a Las Vegas Review Journal interview, Mary Underwood (the protester who filed the application) stated ""This way we can make the argument that they are harming our brand...This is just a bulwark against people using the term in sketchy ways."

Underwood said she doesn't intend to restrict use of the term by people from the Occupy Las Vegas site and has plans to turn over the trademark to whatever entity develops to represent Occupy LV."

I'm sure this won't be the last of the Occupy trademarks. My bet is on parody marks next.

What do you think of these filings? Is it hypocrisy, as some have opined? Or is the movement coalescing in order to protect their voice?

2011-12-01T09:31:00.000-08:00

Update on the Steve Jobs Exhibit at the USPTO

The USPTO exhibit I wrote about last month honoring Steve Jobs' patents & trademarks is up and running. Check out the awesome iPhone models here.

To check out the more unusual Apple trademarks, read this Atlantic article. I don't know...I think the glass retail store is pretty cool.

Are you going to the USPTO exhibit? Do you have a favorite Apple trademark?

2011-11-29T08:56:00.000-08:00

Eat More...

Chick-fil-A, the Atlanta-based fast-food chain, has sent a cease and desist to a Vermont-based artist to stop using the phrase "Eat More Kale" with claims that the mark "is likely to cause confusion of the public and dilutes the distinctiveness of Chick-fil-A's [slogan "eat mor chikin"] and diminishes its value." Read the full article here.

Bo Muller-Moore isn't selling food but rather is promoting a food movement, specifically, "eating locally, supporting local farmers, bakers, famers markets, farm stands, CSA's, community gardens and restaurants, sustainable lifestyles, social commentary and community."

This certainly isn't the first time Chick-fil-A has disputed an "eat more" mark; see their opposition history here.

Is this "over-enthusiasm for brand protection" on Chick-fil-A's part? Or is there a legitimate complaint here?

2011-11-22T08:46:00.000-08:00

Tootsie vs Footzy: The Famous Trademark Lawsuit

Here's a great example of the "famous trademark" claim: "Tootsie has decided to file suit in federal court against the makers, a company called Rollashoe, for 'infringing on the brand name' Tootsie Roll." Read the full article here.

Last year, the candymaker, Tootsie Roll, filed an opposition at the USPTO against the shoe brand, Footzyrolls, and then upped the ante last week with a lawsuit.

Is Tootsie Roll's claim of dilution and likelihood of confusion hitting the sweet spot? Or is Footzyrolls correct in claiming this lawsuit is "completely frivolous?"

2011-11-21T09:19:00.001-08:00

Gobble, Gobble

Since Thanksgiving is upon us here in the US, I got to thinking how I could relate this holiday to trademarks. For most of us, Thanksgiving is a time of the year where we eat a lot of great food and spend time with family. That being said, let's look at some of the trademarks that may be on your table this holiday season:

Butterball ®: While this company is best known for their poultry products, they also sell soups, marinades, seasonings, and spices.

Stove Top ®: There were plans for 'dinner meal kits' but that application was abandoned at the applicant's request back in 2000.

Sara Lee ®: At this point in the meal, buying a pie is much easier than making your own.

What are your favorite Thanksgiving brands?

2011-11-18T07:00:00.000-08:00

Ch-Ch-Changes Coming to the USPTO Filing System

Starting November 19th, the USPTO is instituting several changes to their TEAS or Trademark Electronic Application System. Nothing too major really. Here are some highlights:

1) "Applicants will have the opportunity to list multiple email addresses" -- there can only be one primary email and any others are to be considered "courtesy emails."

2) "Sound/motion/multimedia files (.wav, .wmv, .wma, .mp3, .mpg, or .avi formats, not exceeding 5 MB in size for audio files and 30 MB for video files) may be filed directly as part of the form" -- this is going to apply for new applications only.

3) There will be a new voluntary amendment form available for "dba" applicants to ensure that section is filled out correctly.

4) "Links for Trademark Information Network “how-to” videos incorporated into appropriate sections of the forms (e.g., at applicant section, drawing section, goods/services section)."

The last point, actually, makes me a bit concerned in that this may provide people a false sense of security when it comes to filing trademarks. There are just so many variables for each and every application that generalized instructions may lull folks into a false sense of complacency. I'll take a look at these videos once they launch and write up reviews for our TradeMark Express blog readers.

Here's the entire press release. Any other changes stand out to you?

2011-11-17T09:21:00.000-08:00

The Trademark Situation: Jersey Shore Star Suing A&F

Not too long ago the clothier Abercrombie & Fitch offered to pay the cast of MTV's Jersey Shore NOT to wear their clothes. Looks like one of the reality stars has found his fee - $4 million. Mike "The Situation" Sorrentino is looking for that dollar amount "in a complaint he's filed...that accuses Abercrombie of trademark infringement, unfair competition and false description."

Is The Situation on the money? Or is A&F in the right?

2011-11-16T10:29:00.000-08:00

A Couple of Big Time Trademark Disputes End

First up is the "three-year trademark" fight between Cadbury and Nestlé over the use of the color purple. "A preliminary ruling by the Intellectual Property Office (IPO) states that Cadbury can trademark the colour for packaging its chocolate" Read more here.

Next is the battle of the birds. Kellogg had originally asked the Maya Archaeology Initiative to cease using their toucan logo. However, in a turn of events, the owners of Sam the Toucan have decided to "contribut[e] $100,000 to help launch one of the MAI's priority projects to improve the lives of the Maya people in Central America. Kellogg will also be featuring major Mayan accomplishments and a link to MAI's website on Kellogg's Froot Loops cereal boxes next year." Read more here.

2011-11-15T10:32:00.000-08:00

Steve Jobs Exhibit at the USPTO

The USPTO has decided to pay tribute to the late Steve Jobs with an exhibit highlighting the Apple innovator's patents and trademarks. Here is part of the press release:

"In tribute to the tremendous influence of Steve Jobs, the United States Patent and Trademark Office (USPTO) will showcase The Patents and Trademarks of Steve Jobs: Art and Technology that Changed the World. The free exhibit will open to the public on November 16 at the USPTO’s campus in Alexandria, Virginia.

“This exhibit commemorates the far-reaching impact of Steve Jobs’ entrepreneurship and innovation on our daily lives,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “His patents and trademarks provide a striking example of the importance intellectual property plays in the global marketplace.”

Located in the atrium of the Madison Building, the exhibit features more than 300 of the patents that bear the name of the iconic innovator along with many of the trademarks that have given Apple its instantly recognizable identity around the world...

The Jobs exhibit, which runs through January 15, 2012, is free and open to the public, as is the National Inventors Hall of Fame and Museum."

2011-11-08T09:52:00.000-08:00

University of Missouri Buys Porn Domain Extensions

Nope, our nation's universities are NOT moving into the adult entertainment field. Actually, MU purchased mizzou.xxx, missouritigers.xxx and missouri.xxx to prevent others from using those names in salacious ways.

"Division of Information Technology spokesman Terry Robb said. "People could mistakenly go to mizzou.xxx, and there you are. It's our trademark name, and a porn site obviously should not use our trademark name for their activities.""

Is this going to start a triple-x trend akin to the heyday of domain name squatting? Or is this an unnecessary worry for trademark owners? Either way, ICM Registry stands to make a whole lot of money.

2011-10-20T10:21:00.000-07:00

Urban Outfitters Stops Using the Word 'Navajo'

Last month, the clothing-and-home-decor retail store Urban Outfitters pulled the word 'Navajo' from a new line after criticism from the Navajo Nation as well as numerous bloggers.

However, items that were affiliated with the name are still being sold - everything from underwear to shirts to flasks.

Does the offense stop with the name? Or does it extend into appropriation of Native patterns?

2011-10-20T10:03:00.000-07:00

The Art and Science of Brand Names

On October 12th, NPR's Talk of the Nation had John Colapinto on to talk about the "the art and science of creating brand names." It's a fascinating interview - check it out here.

2010-05-07T07:27:00.000-07:00

Nominate Your Favorite Charity for a Free Branding Makeover!

TradeMark Express is so proud to be one of the sponsors of this amazing offer. Here are the details:

The word is out! From now until May 31st, Tungsten Branding will be receiving nominations for a complete branding makeover for America’s most deserving charity. To qualify, it must be a 501c corporation with a compelling mission that benefits the most people possible. The bright minds here at Tungsten will sort through the nominations and then put them up for a final vote in May. Voting will then run from June 1st through June 15th with the winner receiving a complete brand makeover. What does that include?…

Name development
Tag line creation
Matching, or closely matching, domain name
Corporate logo design
Five page web design package

Total value of this package is typically $7,500 to $20,000. To nominate your favorite charity for a rebranding makeover, just fill out the form below. (It's the "bright" thing to do!)

http://www.puretungsten.com/nonprofit-corporate-branding/

2010-03-24T11:41:00.001-07:00

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2010-03-17T10:04:00.000-07:00

Organic Trademarks

With all the rage about Organic products and services weighing on our minds recently, I thought it would be a good time to address how this applies to trademarks. While the label of a product or the website for a service may say ORGANIC, does this mean they really ARE organic? Well, the USPTO is taking issue with that as well with their clause on “Deceptive Matter”. Here’s what they have to say about it:

“[There] is an absolute bar to the registration of deceptive matter on either the Principal Register or the Supplemental Register. Neither a disclaimer of the deceptive matter nor a claim that it has acquired distinctiveness can obviate a refusal on the ground that the mark consists of or comprises deceptive matter.

A deceptive mark may be comprised of (ANY ONE of the following):

(1) a single deceptive term;

(2) a deceptive term embedded in a composite mark that includes additional non-deceptive wording and/or design elements;

(3) a term or a portion of a term that alludes to a deceptive quality, characteristic, function, composition, or use;

(4) the phonetic equivalent of a deceptive term; or

(5) the foreign equivalent of any of the above

In laymen’s terms what it means is that a mark may not contain the word ORGANIC, or any spelling or phonetic variation thereof, unless the product or service truly is ORGANIC by definition. ORGANIC can generally be defined as a product or service produced WITHOUT the use of chemical fertilizers, growth stimulants, antibiotics or pesticides. Therefore, when a trademark name includes the word ORGANIC, the consumer naturally assumes it has conformed to the definition of the word. It is this assumption on the part of consumers that has prompted the USPTO to start handing out trademark refusals based on deceptiveness.

When an application comes across the desks at the USPTO that includes ORGANIC in the title, the applicant is required to state that the product or service is, in fact, Organic in nature. Here is an example of the USPTO’s response to one such application, which is now abandoned due to failure to respond:

“In this case, applicant’s mark includes the wording “ORGANIC,” which indicates that the goods contain organic ingredients. This feature or ingredient is important to a purchasing decision because consumers looking to purchase organic products will believe the applicant’s goods to be made from organic ingredients.

If the goods do not, in fact, contain organic ingredients, the applied-for mark will deceive the public as to an important factor in its purchasing decision...If the goods do contain organic ingredients, applicant can amend the identification of goods to state this fact, and the refusal will be withdrawn.”

Of course, there are many other situations in which USPTO would refuse a mark based on deceptive matter, but the use of ORGANIC as part of a name is just one example that is the basis for trademark refusal.

So, while consumers continue to see ORGANIC claimed on products and services more often, we can be assured that at least the USPTO is making steps to ensure we aren’t being deceived or misled while trying to make the conscious choice to go “green.”

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2010-03-17T09:55:00.000-07:00

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2010-03-17T07:57:00.001-07:00

Happy St. Patrick's Day!

I hope all of you out there have a fun AND safe St. Patrick's Day! Let's take a look at some St. Patrick themed trademarks:

Here's a film production company named Saint Patrick, which, quite appropriately is located in Ireland. Check out their fun site here.

Killian's Red is the O'fficial Beer of St. Patrick's Day, at least according to MillerCoors trademark.

Need something to go with that beer? Try Saint Paddy's Cooked Corn Strips.

2009-12-29T11:29:00.000-08:00

What is Immoral or Scandalous Matter?

Some may think this is a very subjective definition, but I assure you, the USPTO sees it differently. Here is what they have to say about it:

“Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), is an absolute bar to the registration of immoral or scandalous matter on either the Principal Register or the Supplemental Register.

Although the words “immoral” and “scandalous” may have somewhat different connotations, case law has included immoral matter in the same category as scandalous matter.

In affirming a refusal to register a mark as scandalous under §2(a), the Court of Customs and Patent Appeals noted dictionary entries that defined “scandalous” as, inter alia, shocking to the sense of propriety, offensive to the conscience or moral feelings or calling out for condemnation. McGinley, 660 F.2d at 486, 211 USPQ at 673 (mark comprising a photograph of a nude, reclining man and woman, kissing and embracing, for a “newsletter devoted to social and interpersonal relationship topics” and for “social club services,” held scandalous). The statutory language “scandalous” has also been considered to encompass matter that is “vulgar,” defined as “lacking in taste, indelicate, morally crude.” In re Runsdorf, 171 USPQ 443, 444 (TTAB 1971).

Dictionary definitions alone may be sufficient to establish that a proposed mark comprises scandalous matter, where multiple dictionaries, including at least one standard dictionary, all indicate that a word is vulgar, and the applicant’s use of the word is limited to the vulgar meaning of the word...(1-800-JACK-OFF and JACK OFF held scandalous, where all dictionary definitions of “jack-off” were considered vulgar) ...(Board sustained opposition finding that SEX ROD was immoral and scandalous under §2(a) based on dictionary definitions designating the term “ROD” as being vulgar, and applicant’s admission that SEX ROD had a sexual connotation)...(multiple dictionary definitions indicating BULLSHIT is “obscene,” “vulgar,” “usually vulgar,” “vulgar slang,” or “rude slang” constitute a prima facie showing that the term is offensive to the conscience of a substantial composite of the general public).”

A lot of verbiage to read in an attempt to get a feel for “scandalous” or “obscene”, I know, but the USPTO is pretty strict on their definition. And it’s no use using your creative spelling variations such as FUK or SH*T, the USPTO isn’t going to be fooled or lenient. Both of those variations are Abandoned marks after the USPTO had this to say:

Refusal: Immoral or Scandalous Matter

Registration is refused because the proposed mark consists of or comprises immoral or scandalous matter:

Certain commonly “scandalous”, or at least questionable words or phrases, may be allowed depending on the connotation and/or industry. For example, DICK, a series of hand tools, is a registered trademark. Since no evidence of a refusal for scandalous matter is recorded, I can only attribute this to the fact that Dick is a common nickname for Richard and that the product is nothing at all to be perceived as immoral or scandalous. I am sure it would be a different outcome if the product was, for example, a line of adult toys.

On the same token, we must consider that an application is at the mercy of the Examining Attorney at the USPTO that receives the application. An example is the mark YOU [heart] COCK, refused and now abandoned on the basis of immoral and scandalous matter, while COCK BRACELET, sporting a logo inclusion of a rooster, is registered for jewelry, namely bracelets.

So, you see, there is a small window of gray area, again depending primarily on connotation, but also on the subjective opinions of the specific Examining Attorney. A good rule of thumb, however: don’t expect to get a registered trademark and make a million bucks on your favorite, crude, insulting cuss rant that you coined over a couple of drinks with your buddies. Have fun, but keep it clean, folks!

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2009-12-28T12:28:00.000-08:00

Suggestive Marks

One of our amazing researchers, Heather Roberts, took some time to write this article, which I'm extremely thankful as time has been limited as of late. Heather wrote a few more great articles that I'll be sharing during the rest of the week. Thanks Heather!

The strength of a particular trademark is gauged according to the Distinctiveness & Descriptiveness Continuum. To see a chart, click here.

What is a Suggestive Mark?

Here’s what the USPTO says: “Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought, or perception to reach a conclusion as to the nature of those goods or services. Thus, a suggestive term differs from a descriptive term, which immediately tells something about the goods or services...(SNO-RAKE held not merely descriptive of a snow-removal hand tool)...(QUIK-PRINT held merely descriptive of printing services)...(BUG MIST held merely descriptive of insecticide).

Suggestive marks, like fanciful and arbitrary marks, are registrable on the Principal Register without proof of secondary meaning. Therefore, a designation does not have to be devoid of all meaning in relation to the goods/services to be registrable.” Basically, suggestive trademarks contain words or words that are seen as suggesting the product or service being offered but are not directly descriptive.

Should I Choose a Suggestive Mark?

While suggestive marks can walk the fine line of descriptive, it is certainly possible to find a suggestive mark that will lead your consumer to a certain conclusion of what product or service you offer by merely looking at the name.

While keeping in mind the issues of descriptive marks and making a conscious lean toward a suggestive mark, it will be something you’ll need to decide in terms of your industry, your customers, your competitors, your customers and your overall plans. Some of our clients really WANT to find a name that does the explaining for them in terms of what the service or product is at a glance at the name. Other times, our clients want something very unique without suggestion to the service or product within the name.

While Suggestive marks don’t necessarily “tell” a person what the product or service is, they do tend to make a very strong impression of what it might be. This may help cut down on explaining what the product or service is in the way or marketing, website content and advertising space.

What to Avoid When I Create a Mark:

Creative a suggestive mark is similar to that of creating a business name. You'll have to keep in mind all of the issues outlined above (industry, customers, plans, etc.). But when it comes to suggestive marks, don’t rely simply on spelling variations of a descriptive word or words associated with your product or service.

Because the USPTO will assign what is called a PSEUDOMARK when presented with a trademark application with unconventional spelling, this can be a curse to the success of your suggestive mark. We’ll explore PSEUDOMARKS in more detail another time, but what it means in laymen’s terms is that the USPTO is recognizing an unconventional spelling to mean a very conventional word or words.

As with the example shown above, the trademark Sno-Rake for a snow-removal hand tool is registrable on the Principal Registrar, however, if that description had read: “snow-removal rake” then the mark would likely be refused for being merely descriptive.

Here is a good rule of thumb:

* If any word or words of the suggestive mark also appear in the description of the product or service, even if spelled unconventionally, it is likely that the mark will be deemed descriptive.

If you want a suggestive mark, my suggestion (pun intended) is to put on your thinking cap, find variations on the name you’ve got in mind using a thesaurus and/or dictionary and play with variations of 2 or 3 word-combos. Always be sure to check your competition! If your competition has a variation on a suggestive mark that is similar to what you want to register, take heed as you don’t want your customers going to them on accident. Be creative, try out your choices on your friends and family, use them as your focus group and by all means, have fun with it! Happy suggestive mark hunting!

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2009-12-04T07:29:00.001-08:00

Arbitrary Trademarks

The strength of a particular trademark is gauged according to the Distinctiveness & Descriptiveness Continuum. To see a chart, click here.

Arbitrary marks are not as strong as fanciful marks but they are still strong in terms of trademarks. Choosing an arbitrary mark certainly makes the trademark filing process easier, provided, of course, that the mark is legally available.

What is an Arbitrary Mark?

Here’s what the USPTO says:

“Arbitrary marks comprise words that are in common linguistic use but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality, or characteristic of the goods or services.”

This is an area that confuses folks a bit. I know that’s a question we get a lot – I can’t trademark a name that’s in the dictionary, right? Well, like anything with trademarks, it’s a gray area. If the product is apple juice then, no, the name APPLE cannot be filed for a trademark as it’s descriptive of the goods. However, if the product is a line of computers then, yes, APPLE can be filed for a trademark.

As long as your arbitrary word is just that – arbitrary – in relation to your goods/services AND the name is legally available, you’ve got a strong mark on your hands!

How do I Choose an Arbitrary Mark?

Choosing an arbitrary mark is similar to that of creating a business name. When it comes to arbitrary marks, your imagination is really needed. Here are some helpful guidelines:

1) Write down all of the adjectives that you want your customer to associate with your product or service.

2) Research your competitors - how often are arbitrary words used? Do most of your competitors use descriptive terms? What kind of keywords/keyphrases are used when searching for your product or service online?

3) What's the personality of your business? Is it serious and formal? Is it fun and funky? Describe your business as if it were a friend of yours.

Those are just some ways to go about finding the "feeling" that you want your product or service to convey. Once you’ve got that set, start thinking about all the different words that convey that feeling.

For instance, if your business is fun and funky words/phrases like Grave Concerns or Staid are probably not a good idea. Conversely, if your business is serious and formal, you’ll probably want to stay away from words like Bubbles or Poodles. Most of all, have fun with it!

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2009-12-03T10:15:00.001-08:00

Fanciful Trademarks

The strength of a particular trademark is gauged according to the Distinctiveness & Descriptiveness Continuum. To see a chart, click here.

On the very left of that continuum are fanciful marks, which arguably are the strongest sort of marks to file. Filing these types of marks increase the likelihood of trademark registration (provided, of course, that the mark is legally available).

What is a Fanciful Mark?

Here’s what the USPTO says: “Fanciful marks comprise terms that have been invented for the sole purpose of functioning as a trademark or service mark. Such marks comprise words that are either unknown in the language (e.g., PEPSI, KODAK, and EXXON) or are completely out of common usage (e.g., FLIVVER).”

Basically, fanciful trademarks are either made up words or words that are seen as archaic.

Should I Choose a Fanciful Mark?

While fanciful marks are certainly the strongest types of trademarks, does it necessarily mean you should choose a fanciful word for your service or product? This is something you’ll need to decide in terms of your industry, your customers, your competitors, your customers and your overall plans.

Fanciful marks don’t necessarily “tell” a person what the product or service is so informing the public of that might require extensive work on your end. For a fantastic article about this very subject, I suggest reading Monster Amazon Crocs - Why Creative Brand Names Work Best by Phillip Davis.

How do I Create a Fanciful Mark?

Creative a fanciful mark is similar to that of creating a business name. You'll have to keep in mind all of the issues outlined above (industry, customers, plans, etc.). But when it comes to fanciful marks, your imagination is really needed. Here are some helpful guidelines:

1) Write down all of the adjectives that you want your customer to associate with your product or service.

2) Research your competitors - how often are fanciful words used? Do most of your competitors use descriptive terms? What kind of keywords/keyphrases are used when searching for your product or service online?

3) What's the personality of your business? Is it serious and formal? Is it fun and funky? Describe your business as if it were a friend of yours.

Those are just some ways to go about finding the "feeling" that you want your product or service to convey. Now when it comes to actually creating the fanciful mark, you can peruse through dictionaries of archaic words should you want to go that route.

If you want a completely made-up word, think about words and letters in terms of appearance and sound. For instance, many pharmaceutical companies employ common sounds (e.g. Vs, Xs and Zs are often used). Start with two or three letter combos and most of all, have fun with it!

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2009-11-24T08:48:00.000-08:00

A Trademark Touch

Check out this interesting article on 'touchmarks' written by Stephen R. Baird, Esq. He defines what a touchmark is as well as the various challenges for claiming a 'touchmark.'

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2009-11-17T08:40:00.000-08:00

What a Tweeting Mess!

Back in August, I posted about Twitter filing for the mark Retweet. The USPTO has since sent Twitter's legal counsel an Office Action suspending Retweet's application based on prior filings. However, let's take a closer look at these filings & perhaps we can figure out where Retweet is going to end up - abandoned or a real, live Federal trademark.

Here's what the USPTO is telling Twitter:

"Although the examining attorney has searched the Office records and has found no similar registered marks which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), the examining attorney encloses information regarding pending Application Serial Nos. 77724346, 77802071, 77797006, 77697186, 77749897, 77746004, 77725866, 77701645, 77695071...

Action on this application will be suspended pending the disposition of these application upon the applicant’s response to the office action."

Wooo, that's a whole lot of sevens! Okay, let's look at each one, in order...

TweetLaw is currently suspended pending the outcome of Tweet, which is owned by Twitter.

tweetdealz is currently suspended pending the outcome of a whole lot of filings, which includes Tweet.

TweetTV is currently suspended pending the outcome of quite a few filings. And yup, Tweet is one of them.

Cotweet is being published for opposition. This filing went to publication on the 3rd of this month. So far, no oppositions have been filed. If no oppositions are filed, this filing will move to registration.

TweetNetworking is currently suspended pending the outcome of 7 filings, which include Tweet.

tweetworking is also suspended because of other filings. And guess what? Tweet is in the mix.

TweetDeck is suspended because of Tweet.

tweetPhoto has filed using Twitter's pretty distinctive looking bubbly blue font but their refusal has to do with descriptiveness: "The relevant definition of ‘tweet’ is “[a]n entry posted on the microblogging service Twitter.” See attached. The relevant definition of ‘photo’ is “photograph.” See attached. Thus, the term ‘tweetphoto’ means an entry posted on Twitter to which a photograph is attached."

TweetMarks looks pretty to good to go except the USPTO is waiting for clarification on a specimen from them. They have until December 9th of this year to respond or the mark becomes abandoned.

Wowza. Okay, let's take a step back & look at these filings. A good chunk of them are suspended based on Twitter's filing for Tweet so let's look at that filing:

"Action on this application will be suspended pending the disposition of Application Serial Nos. 77695071, 77697186, and 77701645 upon receipt of the applicant’s response resolving the following."

TweetMarks, CoTweet, and tweetPhoto are the marks mentioned. Look familiar?

So what do you think the outcome of Retweet or Tweet will be?

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2009-11-11T07:54:00.000-08:00

Trademarks for the Troops

A hearty THANK YOU from all of us at TradeMark Express to our troops.

Since it's Veteran's Day, I thought it'd be nifty to take a look at filed trademarks that are about the vets.

Hope for Veterans is owned by Community Hope and "is a transitional housing program...to provide a safe, supportive environment wherein former servicemen and women can start rebuilding their lives." Find out more about them here.

Recruit Veterans "is a service-disabled veteran owned and operated staffing and recruiting firm." Read more about them here.

Thank a Vet is a pending trademark for a clothing line. Buy the clothes here.

2009-11-10T07:25:00.000-08:00

Trademarkia

Launched in September of this year, Trademarkia is a free, incredibly easy to use search engine that allows users to search the USPTO database of Federal trademarks, be they live or dead.

Two of my favorite features:

* Logo Themes: The USPTO does offer the capability to search logos on their site but it's a bit cumbersome. Here's an article about how one can do so. But Trademarkia's interface is much easier & really, it's just neat to browse through logos.

* Trademark Categories: aka Goods/Services Each classification is accounted for here & each has it's own snazzy design leading you into the International Classification. Once you're in a class, you can then look at Federal trademarks alphabetically.

Now it should be said that while Trademarkia is super snazzy, very easy to use & just overall cool looking -- this is a search of the Federal trademarks ONLY, meaning we're missing State trademarks & Common-Law databases.

Also another thing I noticed is in conducting my SAM test, the engine seems to work pretty similar to the USPTO, which means the user will need to be sure to check all possible variations of the mark when conducting this preliminary search.

SAM Test

USPTO Flaw #1, Sound: Trademarkia, like the USPTO, brings up 3 marks for IShine but not Ice Shine.
USPTO Flaw #2, Appearance: Again, same results as the USPTO - Trucool but not Turcool
USPTO Flaw #3, Meaning: This one was a bit odd as Trademarkia resulted in only 1 hit whereas the USPTO comes up with 23. Not sure what happened there.

Even given the above, I still strongly recommend folks use Trademarkia as a preliminary clearance Federal trademark search engine. It's far & above easier to use than the USPTO. Then once your mark clears that preliminary step, you can move on to the comprehensive part of the trademark process.

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2009-11-04T12:24:00.000-08:00

Distinctiveness & Descriptiveness Continuum

Here's a visual snapshot of the USPTO's Distinctiveness & Descriptiveness Continuum. Click to view a larger version. I hope it makes the PTO's guidelines a little clearer plus I like charts, graphs & whatnot :)

So far I've written about merely descriptive marks so I'll be sure to hit the other sections & re-post this visual with links to each new post.

2009-10-29T13:41:00.000-07:00

Descriptive Trademarks

The title here is a bit misleading as descriptive words are not typically allowed to be registered on the USPTO’s trademark Principal Register. Let’s back up a little...

One of the main points (some would argue THE main point) of having a Federal trademark is to have exclusive rights to a name, a logo or a slogan within your industry. Given that, words that “merely describe” the goods or services are not going to be allowed.

There are two main reasons the USPTO provides:

1) “to prevent the owner of a mark from inhibiting competition in the sale of particular goods”

What this means: The owner of the descriptive word(s) can’t trademark it as it could create a stranglehold, of sorts, on the word(s) within the industry. For instance, the word “trademark” is disclaimed on our Federal trademark registration on TradeMark Express, meaning we’re not claiming exclusive rights to the word “trademark” as it’s a descriptive word for our industry.

2) “to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products”

What this means: People should have the freedom to use descriptive words in advertising or in describing their goods/services. Using the example above, other companies offering trademark services should be able to use the word “trademark” to describe their services, in their advertising, etc.

So How do I Know if my Name is Descriptive?

As with anything trademark, it’s never black & white. Each situation is going to vary from the next. The basic litmus test is “does this word describe the product and/or service?” and if the answer is yes, then you’ve most likely got a descriptive name on your hands.

It is not necessary that a term describe all of the purposes, functions, characteristics, or features of a product/service to be considered merely descriptive; it is enough if the term describes one significant function, attribute, or property.

Here are some examples provided by the USPTO:

• APPLE PIE held merely descriptive of potpourri (most likely because the words describe the scent)
• BED & BREAKFAST REGISTRY held merely descriptive of lodging reservations services
• MALE-P.A.P. TEST held merely descriptive of clinical pathological immunoassay testing services for detecting and monitoring prostatic cancer

If you’d like help determining if your name is descriptive, please leave a comment or email me at dc@tmexpress.com

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2009-10-29T11:29:00.000-07:00

Brainstorming Tips for Creating a Business Name

Here's a few things to keep in mind:

1) Keep your industry, your clients/customers, your advertising plan in mind.

2) The more unique & distinctive a name, the higher the chances that the name is legally available for use. And the higher the chances of obtaining the trademark.

3) Think of your business as having a personality. What kind of image do you want your business to portray?

Specific brainstorming tips:

Think about what you want but more importantly, think about what you DON'T want. If you don't want a 3-word name, don't bother with those. If you don't want non-English words, don't bother with those & so on and so forth.

What are the "types" of names you like? Think about words in their simple forms, e.g. adjectives, Latin roots, mythological names, etc. Compile a listing of the types & then seek out resources, such as books or sites, which specialize in those types.

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2009-10-27T11:49:00.000-07:00

Free Preliminary Trademark Search

TradeMark Express implemented a new service recently - ONE free preliminary USPTO search completed over the phone with you. We always conduct a preliminary USPTO search before we start comprehensive search but this new feature does NOT require that an order be placed first.

If you'd like your ONE free preliminary USPTO trademark search, contact me: shannon@tmexpress.com; Contact Page; 800.340.2010

2009-09-28T07:47:00.000-07:00

Twitmark Express

TradeMark Express has joined the twitter party finally. I've been toying around with the idea for awhile and finally got around to it.

Follow me at TradeMarkExpres

Tweet you later!

2009-09-22T14:46:00.000-07:00

Trademark International Class: Class 36 (Insurance and Financial Services)

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2009-09-22T09:14:00.000-07:00

Trademark International Class: Class 35 (Advertising and Business Services)

All goods or services are categorized within International Classes (IC hereafter). Goods run from classes IC 1-34, while Services are in IC 35-45. Please see a complete chart here. Let's take a closer look at one of these trademark classes – class 35.

What is International Class 35 All About?

Each class has a short title heading that gives a snapshot of what that class is all about -- IC 35's short title is advertising and business services. Pretty vague, eh? The USPTO has 1476 accepted descriptions that fit into IC 35; check them out here.

The first part of IC 35’s description, advertising, is straightforward. If it’s advertising, marketing or promoting services that are being offered, then IC 35 is where it goes. Now there are going to be some exceptions, as with anything related to trademarks.

Tangible advertising goods, such as signs, flyers, brochures, are NOT going to be in IC 35 as those items are not technically a service though are definitely part of a service; tangible paper-based advertising goods are in IC 16. Training, coaching, educating, etc. about advertising, marketing or promotion is NOT going to be in IC 35 but rather in IC 41, which is the educational class.

The second part of IC 35’s description, business services, is not straightforward at all. Semantically, all services could be considered as business services, yes? No way says the trademark powers that be; at least no way if those services can fit within a different international classification.

So What Business Services are in International Class 35?

Ooh this is a tough nut to crack as there are definitely some discernible patterns within this class but there’s a whole lot of slap-dash in here too. Here’s a general breakdown:

• If your services consist, in part, of the word business, you’re likely in IC 35. This includes consulting, advising, administration, management, development, information, organization, research, planning, etc.

• Employment services are in this class, which includes hiring, recruiting, placement, staffing and career networking.

• Retail services selling ANY products under the sun, which means a brick and mortar store, online retail sites, mail order, catalog, wholesale, etc.

Obviously there’s a whole host of other services in IC 35. If you’re wondering about your services, feel free to email me.

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2009-09-11T07:45:00.000-07:00

Yadda Yadda Yadda

The suit against Jerry Seinfeld's author wife, Jessica, has come to an end. The District Court dismissed all claims set forth by Missy Chase Lapine; however, there apparently is still the matter of the defamation claims stemming from Jerry Seinfeld's remarks on the David Letterman show. Read the entire article here.

2009-09-10T09:38:00.000-07:00

New McRuling

In Malaysia, local restauranteurs McCurry won an 8 year legal battle against McDonald's for the right to use the Mc- prefix. The McReign of McDonald's seems to be nearing an end as long as other restaurants serve food that is different enough from McDonald's so as not to confuse customers. Read the entire article here. This ruling will undoubtedly result in a McBurst of new restaurants.

2009-08-26T13:00:00.000-07:00

Trademark International Class: Classes 32 & 33 (Light beverages; Wines and spirits)

All goods or services are categorized within International Classes (IC hereafter). Goods run from classes IC 1-34, while Services are in IC 35-45. Please see a complete chart here. Let's take a closer look at a group of these trademark classes – classes 32 & 33.

What are International Classes 32 & 33 All About?

These 2 classes represent the beverage classifications for trademarks. Class 32 is light beverages and has 182 possible descriptions; class 33 is wines and spirits & has 129 possible descriptions.

Almost any non-alcoholic beverage is in IC 32 except beer, which is in IC 32. This class includes waters, juices, sodas as well as syrups and essences used in making non-alcoholic beverages.

IC 33 is going to be any type of liquor, wine or spirit. Also included are syrups and essences using in making alcoholic beverages.

Geographical Indications for Wines & Spirits

Wines and spirits get a special little section of their own in the Trademark Manual of Examining Procedure and it's all about location, location, location. When a geographic name is used as part of a name for wine or spirits, the USPTO has all kinds of things to say about that. Let's break it down by what they say and what that means:

Geographical Indications Used on Wines and Spirits That Do Not Originate in the Named Place

"Geographical indications" are defined...as "indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin." ... Obscure areas or those that do not have a reputation or other characteristics generally associated with wines or spirits should not be prohibited from registration (emphasis added).

Clear as a bell, eh? Basically this means that USPTO will refuse a mark that contains a place name if (1) the place is known for that particular good (e.g. Champagne, France as cited in the refusal against Champagne from Spain AND (2) your goods do not originate from that place, as in the champagne example.

There is an exception and that's for obscure areas or for areas that don't necessarily have a reputation for wine or spirits, such as with Tropical Liqueurs of Florida.

Geographical Indications Used on Wines and Spirits That Originate in the Named Place

This one's a bit easier to understand. Here's what the USPTO says:

"If the wines or spirits originate in the identified place, and the primary significance of the mark is a generally known geographic location, the examining attorney should presume the requisite goods/place association, and refuse the mark under §2(e)(2) as geographically descriptive, or require disclaimer of the geographic term, as appropriate."

This is talking about wines or spirits that do originate in a known geographic location and the above has a two-fold explanation.

First, if the ENTIRE mark is the name of the place, the USPTO will refuse it on the grounds that it's descriptive, as they did with Shampagne. As you can see in this case, even an alternate spelling does not bypass the descriptive refusal.

Second, if a PORTION of the mark is the name of the place, the USTPO will require a disclaimer of that portion, as they did with Bialla Napa Valley.

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2009-08-24T11:51:00.000-07:00

Retweet This

Last Thursday, Twitter filed a Federal trademark application for RETWEET for three different classes. Take a look at the record here.

What does this mean for the 4.9 million uses found online? Does this mean Twitter's going to start sending out please-stop-using-our-trademark-as-a-verb letters a la Google?

2009-08-18T11:19:00.001-07:00

Trademark International Class: Classes 29, 30 & 31

(Meats & processed foods; Staple Foods; Natural agricultural products)

All goods or services are categorized within International Classes (IC hereafter). Goods run from classes IC 1-34, while Services are in IC 35-45. Please see a complete chart here. Let's take a closer look at a group of these trademark classes – classes 29, 30 & 31.

What are International Classes 29, 30 & 31 All About?

These 3 classes represent the food classifications for trademarks. Class 29 is meats & processed foods and has 699 possible descriptions; class 30 is staple foods & has 900 possible descriptions; class 31 is natural agricultural products and has 345 possible descriptions.

Meats, poultry, seafood, game are, of course, going to be in IC 29. Also within that class are things like oils, frozen foods composed primarily of meat or fish, canned meats, fruits & vegetables. Nearly anything you'd find at the butcher or in most of the food aisles is going to be in IC 29.

IC 30 are for goods you find in your baking aisle and also includes things like coffee, tea, flavorings, noodles, breads, etc.

Most anything you find in the produce section is going to be in IC 31. Also included are things like fresh flowers and things that are alive be they animals or Christmas trees.

How do I file in International Classes 29, 30 or 31?

Filing in any of the food classes has the same process as any other name. First, comprehensive research is needed to ensure that the name is legally available. That research should entail looking at the ENTIRE of the food and beverage industry. There can be some crossover when it comes to the same or similar name within the entirety of the industry but each situation is different. Let's look at a couple of examples:

1) In 1948, Bluebird was filed for canned fruits and juices in IC 29

2) In 1972, Bluebird was filed for ham & pork in IC 29

3) Fast forward 20+ years when the USPTO was a lot stricter and you'll find that Bluebird was still able to be registered for snack cakes in IC 30.

This does NOT mean that same or similar names can be trademarked all over the food & beverage industry. Again, like with anything trademark related, it's taken on a case by case basis.

For example, Jack Daniel's has attempted to oppose numerous filings food products using either the name Jack or Daniel. Sometimes they succeed as they did with Whiskey Jack and sometimes they don't such as with Doc Jack's.

As you can see, filing a name or logo within the food and beverage industry can be complex so be sure to get the proper help first.

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2009-08-10T13:05:00.000-07:00

Trademark International Class: Class 28 (Toys and sporting goods)

All goods or services are categorized within International Classes (IC hereafter). Goods run from classes IC 1-34, while Services are in IC 35-45. Please see a complete chart here. Let's take a closer look at one of these trademark classes – class 28.

What is International Class 28 All About?

Each class has a short title heading that gives a snapshot of what that class is all about -- IC 28's short title is toys and sporting goods. But, as with anything trademark, there's more to it than that. The USPTO has 1317 accepted descriptions that fit into IC 28; check them out here.

This class is fairly straightforward -- essentially almost any tangible item that's used in play or as part of a sport is going to be living here. This includes things like balls, bats, paddles, rackets, nets, poles, boards, pucks, sticks, clubs and on and on. Bags for specific sports are in this class, while all-purpose sporting bags are in IC 18.

Almost (emphasis on this word) any toy you can think of is going to be in this class. There are some exceptions for different products that you'd think would fall into this class - video games are in IC 9 but hand held and stand alone video games machines are in IC 28; arts and craft kits are in IC 16; costumes are in IC 25 while masks are in IC 28.

What Else is in International Class 28?

Seems like with any of these trademark classes, there always seems to be the oddball item or two and IC 28 is no exception. Here are a few items living in IC 28 that seem a bit weird:

• aquatic canine treadmill
• Christmas tree ornaments, decorations and stands
• confetti
• lottery cards and tickets

What's New for International Class 28?

The classification guide is constantly being updated with new goods or services. As the marketplace changes, the trademark office must adapt. Here are some of the 2009 listings for international class 28, good plus date added to the guide:

• Amusement devices, namely, bounce houses in the nature of an air inflated cushion in an air inflated structure 23 Apr 09
• Arm bands for designating team member positions in sports activities 30 Apr 09
• Educational toys in the nature of an illustrated wall map 08 Jan 09
• Game equipment set sold as a unit comprised primarily of a playing board and playing cards and also including rules of play, dry erase boards and erasers, markers, a timer and T-shirts 25 Jun 09

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2009-08-05T07:17:00.000-07:00

Gonna Keep Going

Looking over the blog's stats I can tell that all the different international classification posts have been fairly popular. Given that, I'm going to keep on keeping on.

I wanted to give my readers a quick summary of the different classes I'll cover as well as any respective issues.

If you see something missing or you have a question (or five) about classes, please comment below & I'll be sure to post about it.

Left off at IC 25, clothing -- any other questions or issues not yet resolved for anyone?

Will write posts about:
IC 28
ICs 29, 30, 31
ICs 32, 33
- geographically deceptively misdescriptive marks (say that three times fast)

Then it'll be time to move on to Services and I'm thinking it'd be a good idea to write a post for each class, from IC 35 to IC 45. As I go along, I'll address any other side issues that seem to come up when talking about these classes. Of course, feel free to ask questions galore in the comments section.

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2009-07-31T15:31:00.000-07:00

The House of Mouse is at it Again

And boy have they been busy bees...or er, mice? Disney filed 10 applications on June 24th for Mickey By... for a whole mess of products: toys, clothing, textiles, linens, fabrics, housewares, furniture, pillows, photo frames, bags, backpacks, luggage, books, publications, printed materials, jewelry, audio & video recordings, video games, cosmetics, fragrances. PHEW!

2009-07-28T12:54:00.000-07:00

Trademark International Class: Class 25 (Clothing)

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2009-07-27T15:28:00.000-07:00

Trademark International Class: Class 20 (Furniture and articles not otherwise classified)

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2009-07-27T15:10:00.000-07:00

Trademark International Class: Class 18 (Leather goods)

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2009-07-16T07:20:00.000-07:00

Trademark International Class: Class 16 (Paper goods and printed matter)

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2009-07-15T12:50:00.000-07:00

Trademark International Class: Class 14 (Jewelry)

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2009-07-15T12:06:00.000-07:00

Trademark International Class: Class 9 (Electrical and Scientific Apparatus)

All goods or services are categorized within International Classes (IC hereafter). Goods run from classes IC 1-34, while Services are in IC 35-45. Please see a complete chart here. Let's take a closer look at one of these trademark classes – class 9.

What is International Class 9 All About?

Each class has a short title heading that gives a snapshot of what that class is all about -- IC 9's short title is electrical and scientific apparatus. But, as with anything trademark, there's more to it than that. The USPTO has 3107 accepted descriptions that fit into IC 9; check them out here.

This class encompasses nearly any tangible goods that are scientific, nautical, surveying, electric, photographic, cinematographer, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.

PHEW! Let's break that down a bit. Here are some of the more often used descriptions for International Class 9:

Software of all kinds.
Video games, which also include the peripherals such as joysticks, players, interactive floor pads and interactive remote controls as well as what used to be considered a service – providing online video games.
CDs, DVDs, audiocassettes, records, whether blank or filled with content, as well as the devices used to play them.
Computer peripherals such as mice, keyboards, printers, and monitors as well as virtually any good related to the telephone, the television or the camera.

What Else is in International Class 9?

Seems like with any of these trademark classes, there always seems to be the oddball item or two and IC 9 is no exception. Here are a few items living in IC 9 that seem to be a weird fit:

• sun glasses, eye glasses and pince-nez
• protective clothing
• dog whistles
• helmets

What's New for International Class 9?

The classification guide is constantly being updated with new goods or services. As the marketplace changes, the trademark office must adapt. Here are some of the 2009 listings for international class 9, good plus date added to the guide:

• Graduated rulers for office and stationery 25 Jun 09
• Hands free devices for mobile-phones 18 Jun 09
• Holders for magnetically encoded gift cards 02 Apr 09
• Life vests 26 Mar 09
• Articles of protective clothing for wear by motorcyclists for protection against accident or injury 5 Feb 09
• Digital music system that synchronizes digital music files stored on a home unit and a car unit 15 Jan 09

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2009-06-25T09:06:00.000-07:00

Any Requests?

I've slowed down a bit in my blog posting lately because work is a bit busy. I fully intend to continue the International Classification train but I thought it'd be a good idea to devote a post for requests.

Are there any of the trademark classes you'd like to know more about? If so, please comment with any questions.

Thanks! I'll be back soon!

2009-06-18T11:00:00.000-07:00

Trademark International Class:
Class 5 (Pharmaceuticals)

All goods or services are categorized within International Classes (IC hereafter). Goods run from classes IC 1-34, while Services are in IC 35-45. Please see a complete chart here. Let's take a closer look at one of these trademark classes – class 5.

What is International Class 5 All About?

Each class has a short title heading that gives a snapshot of what that class is all about -- IC 5's short title is pharmaceuticals. But, as with anything trademark, there's more to it than that. The USPTO has 955 accepted descriptions that fit into IC 5; check them out here.

This class contains within it all the normal items you think of when you hear the word pharmaceuticals – antibiotics, antivirals, aspirin (which used to be a trademark), decongestants, etc. But within this class there also exists other items that have to do with medicating or healing or disinfecting.

If something is anti, it likely resides within class 5 – antibiotic, antibacterial, anti-inflammatory, antifungal, antimicrobial, anticoagulant, antiseptic, antiviral, anti-itch. Vitamins, minerals and supplements are filed in this class as are pesticides, parasiticides, repellents. You're also going to find things like bandages, bath preparations for medical purposes, deodorizers, herb teas for medicinal purposes.

What Else is in International Class 5?

Seems like with any of these trademark classes, there always seems to be the oddball item or two and IC 5 is no exception. Here are a few items living in IC 5 that seem a bit weird:

• baby food
• skin care preparations, hair care preparations, lotions, etc. that are medicated
• gluten free food
• fly paper

What's New for International Class 5?

The classification guide is constantly being updated with new goods or services. As the marketplace changes, the trademark office must adapt. Here are some of the 2009 listings for international class 5, good plus date added to the guide:

• Algaecides [chemicals for swimming pool maintenance] 04 Jun 09
• Aromatized beverages based on fruit, protein, cordial, sugar and other fluid nutrients, namely, meal replacement drinks for use as a food fillers 26 Mar 09
• Dental tablets for disclosing plaque and tartar on the teeth 05 Mar 09
• Disposable wipes impregnated with disinfecting chemicals or compounds therefor for use on {indicate items being disinfected, e.g., railings, countertops, toilet seats} 15 Jan 09
• Face creams and cleansers containing benzoyl peroxide for medical purposes, namely, the treatment of acne 19 Feb 09
• Medicated cosmetics 26 Mar 09

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2009-06-17T14:57:00.000-07:00

Trademark International Class:
Class 3 (Cosmetics and cleaning preparations)

All goods or services are categorized within International Classes (IC hereafter). Goods run from classes IC 1-34, while Services are in IC 35-45. Please see a complete chart here. Let's take a closer look at one of these trademark classes – class 3.

What is International Class 3 All About?

Each class has a short title heading that gives a snapshot of what that class is all about -- IC 3's short title is cosmetics and cleaning preparations. But, as with anything trademark, there's more to it than that. The USPTO has 995 accepted descriptions that fit into IC 3; check them out here.

Cosmetics of almost all kinds are to be listed in class 3. Now this includes cosmetics in the truest sense of the word (e.g. mascara, lipstick, etc.) but also includes lotions, creams, shampoo & conditioner, perfumes, etc. Basically any non-medicated liquid, creams, powder, gel, etc. that you can apply to your body is going to be in class 3. The one exception to the non-medicated rule is, for some reason, soaps. Soaps whether they're medicated or not fall into class 3. Cosmetic items for your animal friends – pet shampoos, pet odor removers – are also in class 3.

Cleaning preparations include soaps, be they for your body or your dishes, waxes, polishes, detergents, varnishes, removers, etc.

What Else is in International Class 3?

Seems like with any of these trademark classes, there always seems to be the oddball item or two and IC 3 is no exception. Here's a few items living in IC 3 that seem a bit weird:

• sandpaper
• ambergris
• beauty beverages
• fake blood
• temporary tattoo sprays & stencils

How do I file a Trademark in International Class 3?

Let's assume you've had your comprehensive research conducted and are now at the application stage. The folks preparing your application should help you with compiling a list but here are some guidelines that should help expedite the whole thing.

1) Be specific. For instance, if you're selling a wax indicate what it's used for – the face, body, a car, furniture, etc. If you're selling a line of cosmetics, take the time to really think on your brand and detail all of the items.

2) Stay away from words like products, items, materials, goods, etc.

3) Don't be specific. Whoa, what? Yes, I know this is contradictory and really this is one of those trademark classes that have contradictions in it. One of the USPTO's approved descriptions for this class is "Cosmetic preparations," which is general as general can be, right? This is where your research & any advice from a trademark attorney is going to come into handy. It may be advisable to use such a generic term to allow freedom of movement within your filing. Again, this is all going to depend on two things – the results of your comprehensive research and what a trademark attorney recommends.

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2009-06-17T10:40:00.000-07:00

Explanation of the Trademark International Classification System

Filing a name, logo or slogan is not all about the mark itself but also what you're doing with it, i.e. your goods and/or services. All goods or services are categorized within International Classes (IC hereafter). Goods run from classes IC 1-34, while Services are in IC 35-45. Please see a chart here.

A Bit of History

On September 1, 1973 the USPTO adopted the international classification system as set forth by the Nice Agreement. Prior to that date, the USPTO used their classification system, which was long-winded to say the least.

For instance, let's say you wanted to file a name for clothing, shoes and hats – today you'd file it in 1 class, IC 25 but before 1973 2 classes were filed, 22 & 39. Another example – IC 16 (paper & printed materials) used to be divided across 8 classes, 2, 5, 22, 23, 29, 37, 38, 50. Suffice it to say, the IC system is far easier to wrap your mind around.

What are Goods?

As mentioned before, goods fall into classes 1-34 but what constitutes a good? The easiest way to think about it is to consider if what you're selling is tangible or not. Can you touch it, see it, hear it, wear it, smell it, so on and so forth?

Goods can include items like cosmetics, vitamins, jewelry, backpacks, clothing, cigars, food & beverage items, guitars, chemicals, paints, tools, machines, cars and on and on.

What are Services?

Services fall into classes 35-45 but what is a service? This one tends to be a bit trickier as some services deal with tangible items. One simple way to look at is to bear in mind if you're doing something for someone.

For instance, if you prepare taxes, are a real estate agent, teach something, run a restaurant or a hotel, are a doctor, lawyer, cosmetician then you're offering a service.

Can I be Selling Goods and Services?

Absolutely and these seems to almost always be the case for certain industries. Let me provide a few examples:

1) You have a name that you use for your hair salon as well as an eventual line of hair care products. To trademark the name, you'll want to file in IC 3 (cosmetics and cleaning preparations) as well as IC 44 (medical, beauty & agricultural).

2) You have a name for your retail clothing store where you sell all types of clothing from different designers. Since you are not selling your branded line of clothing, you'd need only to file in IC 35 (advertising & business).

3) You have a name for your line of baked goods, specifically cakes, candies and cookies that you distribute to coffee shops and kiosks. Since another party is selling your goods, you'd need only to file in IC 30 (staple foods).

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2009-06-16T10:42:00.000-07:00

Coca-Cola: Two New Trademarks

Coca-Cola filed 2 new trademarks this month. Let's take a look at both:

On June 8th, a name and logo was filed for bottles, waters, juices, soft drinks, energy drinks and most interesting, for educational services. The design is pretty neat and gives us some clues about the line.

Based on Coca-Cola's press release, the bottles will be made, in part, from plants. Later this year, Dasani and vitmainwater will be the first beverages to use these bottles. It also looks like there will be an informational site: " Web-based communications will also highlight the bottles' environmental benefits," which is likely where the educational services claim is going to come from.

Yesterday, an application for Whole Press Squeeze was filed for "fruit drinks and fruit juices." I wonder if Whole Press Squeeze will be inside of a plant bottle?

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2009-06-16T10:32:00.000-07:00

The Imagineers are at it Again

On June 15th, Disney Enterprises filed 5 applications for Where Style Meets Story. The merchandising runs the gamut - from jewelry to clothing to bags & backpacks as well as bed linens and appropriately enough, sewing supplies and hair accessories.

Any guesses out there as to what this tag line might belong to? Possibly the newest Disney movie, The Princess and the Frog? Or something entirely different?

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2009-06-10T09:55:00.000-07:00

Facebook Getting into the Trademark Game

Jonathan Handel wrote an informative piece about Facebook's new User Name Rights policy. Check it out at The Huffington Post here.

To register your trademark with Facebook, click here. Be sure to have your registration number handy.

And, yes I practice what I preach - TradeMark Express has been registered.

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2009-06-09T09:24:00.000-07:00

Swine Flu in the Trademark World

The swine flu is still making news around the world. Any hot button topic in the news is, more often than not, quickly followed by trademarks. Check out these H1N1-tinged filings:

On May 27th, this logo was filed for a t-shirt line

Sixteen days earlier, this mark was filed, also for clothing, though I can say right now the USPTO is going to take issue with the wording in the goods description area.

So who gets it? Swine Flu Sucks filed first BUT Swine Flu! has claimed a first use date of May 12th. I'll revisit these marks in a few months once the applications have been reviewed. The decisions made by the USPTO will make for an enlightening post, I think.

Also filed in May were two marks by the health care products company, Novartis for "vaccines for human use." Swinflunov and Swineflunov certainly imply that they're connected, somehow, to the swine flu.

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2009-06-07T16:36:00.000-07:00

NameMedia Partners with TradeMark Express

We here at TradeMark Express are pleased and excited to be offering premium domains through BuyDomain's premium domain name inventory. Check it out here. Read the press release at NameMedia's site here.

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2009-06-03T14:28:00.001-07:00

Here Comes a New Font

On June 1st, Apple filed a Federal trademark for Menlo in International Class 9, specifically for "typeface fonts recorded on computer software." Typography fans are sure to be all over this whenever Apple decides to premiere it. MacNN noted that Apple also has a European Union filing for Menlo. A helpful comment on that post leads here.

I am not a typographic whiz at all. Anyone care to comment on how big a deal, if any, this is to the font world? Will it be the new standard? Or just one of many?

2009-06-03T14:01:00.000-07:00

Recession Trademarks

You can always count on enterprising folks to take those proverbial lemons and turn them into lemonade, even in a recession. And with new enterprises come new trademarks. Check out the newest recession focused trademarks:

The Recession Cookbook

Anna Watson's blog The Recession Cookbook has been around since March 2nd of this year but on May 1st, she filed a trademark for the name for "on-line journals, namely blogs, featuring recipes and cooking tips." Congratulations Anna!

"you might be in a recession if..."

This future line of calendars was filed on April 15th aka Tax Day in the US. I'm betting that the applicant has plans for a more lighthearted, tongue in cheek take on the recession. And there's certainly nothing wrong with having a few laughs, especially when you're down.

The Great Recession

This play on the Great Depression was filed on April 6th for an eventual athletic apparel line.

Kudos to these enterprising folks and my best wishes for success!

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2009-06-02T10:12:00.000-07:00

Filing a Trademark: Standard Characters vs Stylized/Logo

When filing a trademark, the USPTO gives you two options: Standard Characters or Specialized Form (Stylized and/or Design). Let's look at each one in detail and that should help you decide the best way to file for your mark.

As with any discussion about filing for a trademark, it is always assumed that you've done your due diligence and had comprehensive research conducted. That being said…

Standard Characters

This option is selected to register "word(s), letter(s), number(s), or any combination thereof, with no design element and when you are not claiming any particular font, style, size, or color, and absent any stylization or design element." In essence the USPTO is talking about plain text.

To qualify for this claim, the mark entered must fit within the standard character set. This includes letters and numbers but also some symbols, such as the ampersand (&), the dollar sign ($), the asterisk (*), etc.

To see the entire standard character set click here.

Special Form (Stylized and/or Design)

This option is selected to register marks that are "comprised of stylized word(s), letter(s), and or number(s), and/or a design element." For example, if your business name is shown in a certain font and that font is an important element to your overall brand, it might be a good idea to file it as such. This is also the selection you'll make if filing a logo/design. A logo can be filed on its own or with your name. If you're not sure if you should file your logo and name together or separate, read here.

Can you File for Both?

Technically, yes though not at the same time. Two separate applications (meaning double the fees) would have to be filed if you wanted to choose the standard characters and the special form.

Why Would I File for Both?

Most small business owners would not but as with anything in the trademark world it is going to depend on your overall plans for the brand. Let's say you have a name and a logo – easy enough, you use the special form. But let's assume that your name is going to be shown without the logo in a variety of fonts. Perhaps you have several product lines or your product line is geared towards different types of consumers and you have different font styles for each. Then it may be a good idea to also file the name as standard characters so as not to claim any one distinctive look to the mark but rather protect the name overall.

If you're not sure about how you should file, feel free to email me directly at Shannon@tmexpress.com.

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2009-06-01T14:50:00.000-07:00

Trademark Monitoring

After you've had your trademark application filed, it's absolutely necessary that you monitor your trademark in some way. The USPTO does conduct a search of their own files so if someone does file for a Federal trademark after your registration it typically is rejected. However, relying on the USPTO to protect your trademark is a mistake for several reasons.

First and foremost, the USPTO is going to operate by their guidelines, which are strict to an extent. However, they may not be strict enough for your own liking. Let's look at a real life example:

• Norcross Safety Products has a registered Federal trademark for Ladybug for "garden clogs and garden boots," which is in International Class 25, the clothing class

• TSP Fashion has a pending Federal trademark for Lady B. for clothing of all types in International Class 25 and specifically mentioned "shoes, sandals and slippers"

On the surface they look different except in looking at the record for Lady B. you can see that there is also an inclusion of a design of a ladybug. Again, the names are different but the message of the name is similar as is the industry, namely clothing. This is not to say that the USPTO is wrong in not refusing Lady B's filing but it does prove my point.

Let's just assume that Norcross would take issue with this mark. Unless they're monitoring their mark in some way, Norcross would not have a clue that Lady B. is close to becoming registered.

Second, it can take the USPTO almost 6 months to conduct a search of their records. This means that a competitor can be using the same or similar name that whole time, which means you're likely losing customers and if so, you're definitely losing money.

Third, the USPTO only searches their records, which consist of the Federal trademarks. Yes, that's a large number of records however State trademarks are going to be relevant to your business as well.

Let's say your business primarily does business on the West Coast but you have plans to expand to the East Coast. A Federal trademark does give you the right to the entire country, however, if someone has a New York trademark you'll have new hurdles to deal with in expanding that can be time consuming and costly.

Those are three important reasons why monitoring your registered trademark is a necessary part of your business plan. There are a couple of different ways you can go about monitoring your mark – 1) hire a trademark monitoring service OR 2) have comprehensive trademark research conducted every 2-3 years.

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2009-06-01T10:10:00.000-07:00

Trademark a Name and Logo: Together or Separate?

Trademarks can be names of products or services, logos, slogans, packaging and even sounds and smells. In essence, a trademark can be almost anything that is used to identify a particular product or service. Registering a trademark grants the owner exclusive rights to the mark within the specified industry. Of course, it's necessary to research the mark comprehensively prior to filing to ensure that there is no possibility of infringing upon another party.

Let's assume you've done your due diligence, had comprehensive research conducted and your name and logo are legally available. The next step is filing for a Federal trademark.

Now when it comes to filing, a big question is should the name and logo be filed together or separately?

This decision is going to depend on a number of circumstances, as with most things in the trademark world. Let's take some time to go through a few different scenarios:

1) Your comprehensive trademark research on the logo shows that it is legally available whereas the trademark research on the name shows a similar, not the same, name within a related, not the same, industry. Your trademark attorney may then advise you to file the name and logo together to ensure registration.

2) In showing your mark (e.g. advertising, web site, tags or labels, etc.), the logo is ALWAYS shown with the name but the name is sometimes shown without the logo. In this case, you may want to file two applications – the name and logo together AND the name alone.

3) The logo you're using is the crux of your brand and the name you're using is entirely descriptive of your goods/services. You may want to trademark your logo only OR trademark your logo alone AND trademark the name & logo together.

An important thing to keep in mind regardless of your particular situation is that whatever is filed with the USPTO is exactly how you should be using the mark. The USPTO wants to see your mark as you present it to your customers.

If you're not sure about your own name and logo, feel free to email me directly at Shannon@tmexpress.com.

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2009-05-27T12:44:00.000-07:00

When deciding to protect your logo or design it can be a bit confusing trying to decide how to protect it. After all, your logo is basically the face of your product line or your services so it makes sense that you'd want to do the right thing when it comes to ensuring that you have exclusive rights to it.

The question is should you copyright your logo or trademark your logo? The answer, surprisingly, may be both.

The US Copyright Office states "copyright protection may be available for logo artwork that contains sufficient authorship." What does this mean exactly?

Each logo or design is going to vary from the next in regard to being eligible for copyright protection, of course, but the key to understanding is learning what is meant by "sufficient authorship." Logos or designs that fall into any one of the two categories are not eligible for copyright protection:

• familiar symbols or designs, e.g. the peace sign, a single arrow, a Latin cross, etc.
• mere variations of typographic ornamentation, lettering or coloring, e.g. text in Times New Roman font, Text Using Only Sentence Case, text in purple

An even easier way to think about is to ask yourself one question about your logo – was there any creativity involved at all in designing the logo? If you're using a symbol you found in Microsoft Word or in a clip art program, then no. If you're using a logo you or someone else designed for you that contain a degree of creativity and/or uniqueness of some form or fashion, then yes. If you're not sure, feel free to email me directly at Shannon@tmexpress.com.

Even if your logo does qualify for copyright protection, do not assume it's the same as trademark protection. Copyrights and trademarks are fraternal twins – obviously related but look nothing alike. Copyrights protect the image itself whereas the trademark protects the image as it is used within the marketplace.

To protect your logo IN CONNECTION with your product line and/or services, a trademark is the way to go. The purpose of having a trademark, be it for a name, logo or slogan, is to obtain exclusive rights to the mark within your particular industry. This ensures that there will not be customer confusion when it comes to your goods/services and another within your industry.

Filing a trademark for a logo is similar to filing a trademark for a name. Comprehensive research is likely needed to ensure that the same or similar design is not already filed. I know what you're thinking – I know my logo is unique OR I paid for my logo to be designed so I know no one else has it – we hear that a lot. The one thing to always remember about trademarks is that the mark need not be exact to another. If there's a chance for customer confusion, it can be a problem.

If you'd like some help deciding if your logo should be searched and/or filed for a trademark, feel free to email me directly at Shannon@tmexpress.com.

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2009-03-20T10:47:00.001-07:00

Recovery Project Logos Revealed

What do you guys think? What do you like? Dislike?

2009-03-12T10:55:00.000-07:00

Specimens of Use for Trademarks

I’ve detailed the concept of specimens before but it’s a good idea to get into details about specimens as they apply to trademarks.

The simplest explanation is that the USPTO wants something that clearly shows the mark (i.e. the name, the name & logo, etc.) AND something that once read it is obvious that the mark is tied to the good.

In regard to trademarks, this can be accomplished several ways: "a label, tag, or container for the goods, or a display associated with the goods."

1) The Hanes clothing line has been in existence since 1901. One of the specimens they've provided for one of their many trademarks is a photograph of the tag printed on to their t-shirts. Check it out here.

2) Cover Girl is another well known American business, operating since 1958. One of the specimens they've provided over the years falls into the 'container' category, specifically the packaging lipstick comes in. You can see it here.

While there are only four ways mentioned in the USPTO's somewhat generic quote regarding acceptable specimens, there are several others that are within acceptable limits as well:

• Stampings, whether it be metal, rubber or inked on.

• Catalogs as long as it passes a three-fold test – a picture of the goods, shows the mark near the picture of the goods and provides ordering information, be it an order form, phone number, etc.

• An electronic display aka a web page. The same three-fold test that applies for catalogs is in play here.

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2009-03-10T15:17:00.000-07:00

What is NOT a Trademark?

Now that we’ve determined what a trademark is, let’s get into more detail about what a trademark is not.

Here are just a couple of examples. If there's something that you're not sure can be protected by a trademark, shoot me a line: Shannon@tmexpress.com

1) Trade Name

It can be easy to confuse trademarks and trade names so let's get into some detail here. "The terms 'trade name' and 'commercial name' mean any name used by a person to identify his or her business or vocation," is the USPTO provided definition.

Now, a name can be both a trade name AND a trademark. The USPTO determines this based on the specimen.

Here are a couple of examples to illustrate this:

a) "It is our opinion that the foregoing material reflects use by applicant of the notation 'UNCLAIMED SALVAGE & FREIGHT CO.' merely as a commercial, business, or trade name serving to identify applicant as a viable business entity; and that this is or would be the general and likely impact of such use upon the average person encountering this material under normal circumstances and conditions surrounding the distribution thereof."

This means that Unclaimed Salvage & Freight Co. did not or could not show how that name was creating an impression outside of being just the name used to conduct their services.

b) "'LYTLE' is applied to the container for applicant’s goods in a style of lettering distinctly different from the other portion of the trade name and is of such nature and prominence that it creates a separate and independent impression."

This means that Lytle Engineering & Mfg. Co. provided a specimen that clearly showed Lytle, alone, as being unique and distinctive from their trade name, Lytle Engineering & Mfg. Co.

2) Ideas

When folks call asking how to protect their ideas, they're talking about this definition: "any conception existing in the mind as a result of mental understanding, awareness, or activity." This is worth noting because many people express confusion over the concept of ideas when it comes to intellectual property.

Let me provide a couple examples I've heard over the years.

a) "I've got this idea for a clothing line and want to protect it." Now clothing is clothing; there's really nothing new there. Yes, patterns can be unique from one designer to another. If that's the case, look into copyrights.

However, 9 times out of 10, what the person is really saying is that they have an idea based around a brand. This typically means they have a name & logo, which falls into the trademark category.

b) "I've got an idea for a new product." This as well as ideas to significantly improve an existing product is more than likely going to fall into the patent category.

Intangibilities cannot be protected but the various representations of your ideas may be protected be it with a patent, a trademark, a copyright or a combination of two or more.

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2009-03-05T14:03:00.000-08:00

What is a Trademark?

While the USPTO does use the term trademark to denote businesses offering goods or services, there is a distinction between a trademark and a service mark. To be clear, there is no difference between trademarks or service marks when it comes to needing comprehensive research or filing a Federal application. All of that remains the same.

For the most part determining if you're offering goods or services is pretty simple. For instance, toys are a tangible good therefore Mattel® is technically a trademark while tax preparation is a service there H&R Block® is technically a service mark.

There are plenty of companies that have both. Nike®, for one, offers a line of branded goods as well as retail store services, therefore, they technically hold a service mark / trademark combination. Where folks get confused when it comes to trademarks is mistaking products or goods for services. Let's take a look at the USPTO's criteria for determining what is or isn't a trademark.

The term "trademark" includes any word, name, symbol, or device, or any combination thereof-

(1) used by a person, or

(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.

Essentially, one can take this to mean that the owner of the trademark is either 1) CURRENTLY selling the product in association with the word, name, symbol or device in 2 or more states, OR 2) WILL, in the future, be selling the product in association with the word, name, symbol or device in 2 or more states.

This can be translated to: you must sell a product, displaying the word, name, symbol, or device, which is your UNIQUE product. For example, in the instance of clothing, you can not purchase a Hanes® tshirt and merely print a name across the front and call that your UNIQUE product. The USPTO would consider that shirt a product of Hanes® that you have merely made ornamental.

In the case of either trademark or service marks, keep in mind that merely displaying the symbol next to the word, name, symbol, or device does not create or denote any level of protection unless the application has been filed: "The presence of the letters 'SM' or 'TM' cannot transform an otherwise unregistrable designation into a mark."

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2009-01-30T12:24:00.000-08:00

The Change Message

President Barack Obama's message of change has been a constant since he announced his candidacy on the steps of the Old State Capitol building in Springfield, IL. And on January 20, 2009 a huge change in the face of politics happened.

The President's theme has inspired folks all around the world. It's even made it's way into the world of trademarks.

A mere 2 days after the inauguration, 562 Media Inc., a marketing and design firm, filed for MakeAChange.org, which will be "a website that gives users the ability to make donations for charity"

And just yesterday, 3 more applications were filed using change as a central word in their marks.

Erasoul Enterprise filed for Embrace Change in 3 different classes, namely, the jewelry, houseware and clothing classes.

Dreams for Kids Inc, a children's charity, filed for We Are the Change, which is a youth leadership program.

Hubbell Inc, the international manufacturer, filed for CreateChange for "energy efficient lighting information services."

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2009-01-29T15:16:00.000-08:00

Specimens of Use for Service Marks

I’ve detailed the concept of specimens before but it’s a good idea to get into details about specimens as they apply to service marks.

The simplest explanation is that the USPTO wants something that clearly shows the mark (i.e. the name, the name & logo, etc.) AND something that once read it is obvious what services are being offered. In regard to service marks, this is accomplished in one of two ways: advertising or performing. Okay, so advertising – that’s pretty easy to understand, right? Brochures, yellow page ads, flyers, billboards, etc. In terms of providing a specimen showing the mark “as used in the course of performing services,” examples are best to illustrate this concept.

1) Amazon.com provides online retail services for a large number of goods. They provided a screenshot of their home page. Check it out here.

2) Starbucks provides coffee shop services and provided a picture of one of their coffee shops as a specimen. You can see it here.

Now the USPTO says that letterhead, business cards or invoices are acceptable but there’s a strict rule that must be adhered to – there must be an obvious association between the mark and the services. To avoid the dreaded office action, we recommend that our clients find another specimen as the USPTO tends to be rather strict about this.

We get a lot of calls from entertainers/bands and technically they’re offering entertainment services (live musical performances to be exact). Now providing an advertising specimen is still fairly simple here – a flyer advertising a show will suffice. When it comes to providing a specimen in connection with performance, the USPTO will accept a photograph of the group or artist “in performance with the name displayed,” e.g. name on a banner above the stage, name printed on the drum, etc.

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2009-01-28T11:11:00.000-08:00

What is NOT a Service Mark?

Now that we’ve determined what a service mark is, let’s get into more detail about what a service mark is not.

There are 5 examples the USPTO provides and it’s my guess that these are often filed for accidentally. I know at TradeMark Express we’ve received questions about all 5 of these “services.”

1) Contests and Promotional Activities

Now you’d think that contests and promotions are obviously services, right? It is a real activity and is done for the benefit of others. But it fails the 3rd test in that it’s not necessarily distinct from the primary services. Contests and promotions are typically just tools of advertising. There is an exception which is that if the contest or promotion goes “above and beyond what is normally expected of a manufacturer in the relevant industry.”

For example, “clothing manufacturer’s conducting women’s golf tournaments held to be a service, because it is not an activity normally expected in promoting the sale of women’s clothing.”

2) Warranty or Guarantee of Repair

These activities are merely ancillary to the primary service of repair, auto sales, etc. Again, there’s an exception to this rule. “A warranty that is offered or charged for separately from the goods, or is sufficiently above and beyond what is normally expected in the industry, may constitute a service.”

3) Publishing One’s Own Periodical

Now if you are publishing other parties’ periodicals that is considered to be a service. “Providing advertising space in one’s own periodical may be a registrable service, if the advertising activities are sufficiently separate from the applicant’s publishing activities.”

4) Soliciting Investors

Offering shares and publishing reports for shareholders are not separate services as these are routine corporate activities. Now investing funds for others is definitely a registrable service.

5) Informational Services Ancillary to the Sale of Goods

Providing information, instructions, details, etc. about your goods, the purpose of your goods, how to use your goods, etc. is not considered to be a separate service.

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2009-01-27T14:51:00.000-08:00

What is a Service Mark?

For the most part determining if you’re offering goods or services is pretty simple. For instance, toys are a tangible good therefore Mattel is technically a trademark while tax preparation is a service there H&R Block is technically a service mark. There are plenty of companies that have both. Nike, for one, offers a line of branded goods as well as retail store services.

Where folks get confused when it comes to service marks is mistaking ideas or concepts for services. Let’s take a look at the USPTO’s criteria for determining what is or isn’t a service mark.

1) Service must be a real activity.

The best way to explain this is to explain what is not considered to be a real activity – ideas, concepts, recipes, systems, processes, methods.

2) An activity must be primarily for the benefit of someone other than the applicant.

Who benefits from the activity/service? If it’s yourself or your company, you’re not offering a service in the technical sense of the word. If it’s for others, you are.

“While an advertising agency provides a service when it promotes the goods or services of its clients, a company that promotes the sale of its own goods or services is doing so for its own benefit rather than rendering a service for others.”

3) Sufficiently distinct from activities involved in sale of goods or performance of other services.

This sounds complicated but it’s really not at all. Basically, whatever service is filed for must be distinctive from the primary activity. “For example, operating a grocery store is clearly a service. Bagging groceries for customers is not considered a separately registrable service, because this activity is normally provided to and expected by grocery store customers, and is, therefore, merely ancillary to the primary service.”

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2009-01-26T12:13:00.000-08:00

Guess the Logos, part 2

Okay, so I think I made Friday's test a bit too hard. Let's try this again. Guesses go in the comments section.

The first person to guess all 7 receives $50 off of our Premium Package.

2009-01-23T12:09:00.000-08:00

Guess the Logos

Here's a fun to-do for Friday. The following image is an amalgamation of six famous logos. Can you guess them all? Answer in the comments.

The first person to guess all 6 receives $50 off of our Premium Package!

2009-01-08T12:33:00.000-08:00

14:59 and counting...

While I hesitate to add fuel to the fire that is the Joe the Plumber phenomenon, I figured since he's been in the news (again) this week that it'd be interesting to check out what's going on in the trademark world in terms of the name.

Back in 1996, the name Big Joe the Plumber was filed for plumbing services. The name has been in use since 1916 and is based out of Illinois.

Fast forward 12 years and we've got that phrase saturated into the 2008 political season. As with any pop culture/political phenom, there are folks looking to capitalize on it.

October 12th - Wurzelbacher asks Obama about his tax plan
October 15th - McCain uses the phrase "Joe the Plumber"

October 20th - the USPTO receives the first application for Meet Joe the Plumber
October 21st - two more applications come in, both for clothing
October 28th - three applications filed, 2 for plumbing services and 1 for chicken (I'm confused too). This is also the same day Wurzelbacher appeared at a McCain rally.
November 12th - after a small lull, another application was filed for plumbing services
January 2nd - the most recent filing (and likely not the last) is for clothing.

Now that Wurzelbacher is back in the news, we'll likely see even more filings. My vote for the next filing is for tax planning services. We'll see...

2009-01-08T11:07:00.000-08:00

How many names should I trademark?

A common question we here at TradeMark Express get is should variations on a name also be filed for trademark registration. For example, if your business name is Fly RIght, should variations such as Flies Right, Fly Write, etc.* also be filed? Another example is the singular vs plural variations on a name.

Simply put, no, filing these variations are not necessary. Basically, you should file the name as you use it or as you intend to use it. One of the reasons behind registering a trademark is having exclusive rights to your mark within your industry.

Also, the USPTO requires that a specimen be filed in order to obtain trademark registration. The mark as displayed on the specimen must match exactly to the mark displayed on the application. Therefore, filing variations is pointless as you will not be able to prove to the USPTO that you are actively using those variations.

Now the 2nd part of that common question is - does that mean another party can file a variation on my name and receive registration? This question is a bit trickier to answer so let's go over a couple of scenarios to make things a bit clearer.

Example One:

You have a name for your clothing line called Love Letters* and you're not yet in business. You've done your due diligence and had comprehensive research conducted. After learning the name is clear, a trademark application is filed. A couple of weeks later, another company files for LuvLetterz* for clothing & they are also not yet in business. This would likely not go through for a couple of reasons - (1) the similarity in Sound, Appearance and Meaning is very strong between the two names, (2) the industry is common and (3) you filed first.

Example Two:

Let's use the same scenario as above in terms of your company name. Now let's say another company files for Letters of Love* for a line of stationery goods. As long as there are no pending or registered trademarks, the USPTO would likely allow this mark. The main reasoning is that the clothing and paper goods industry are dissimilar enough as not to cause customer confusion. In other words, someone looking for a t-shirt is not going to go to a stationery store and vice versa.

If you have an example you'd like me to analyze, please post a comment here.

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* No claim is made to the ownership, knowledge or liability of the above company names. The above examples are merely for informational purposes and should only be seen as such.

2009-01-08T09:19:00.000-08:00

Current Filing Fees at the USPTO

There's a number of forms and fees that must be filed in order to keep & maintain your trademark. It's advised that you keep yourself up to date on these fees during the life of your trademark. Prior to filing a necessary form, check this link to ensure that you'll have the necessary funds in time.

Application for registration, per international class (electronic filing, TEAS application)

325.00

Filing an Amendment to Allege Use under §1(c), per class

100.00

Filing a Statement of Use under §1(d)(1), per class

100.00

Filing a Request for a Six-month Extension of Time for Filing a Statement of Use under §1(d)(1), per class

150.00

Application for renewal, per class

400.00

Filing §8 affidavit, per class

100.00

Filing §15 affidavit, per class

200.00

2008-08-18T11:21:00.001-07:00

How to do an Effective Preliminary Trademark Search

Before filing for a trademark, comprehensive research is needed to ensure that the name you want to use is legally available. This entails searching the pending & registered Federal and State trademark files as well as the US National Common-Law files.

However, before having comprehensive research conducted, it is advised that folks take advantage of as many free resources as possible. You can find a listing of sources to check out here. Now let's discuss how to conduct the most efficient preliminary search possible.

Let's say you have a clothing line geared towards women and you want to call it Heroine Next Door. Click on New User Form Search (we'll delve into the other 2 options next month).

Type in the name Heroine Next Door into the Search Term box. Be sure that Plural and Singular & Live and Dead are checked. Also ensure that you're searching for Combined Word Mark. Click Submit Query.

This will result in 0 hits but do not be fooled into thinking that your preliminary work is done. Once you've done the exact name search, it's time to expand your mind about your name. What are all of the possible variations to the name that could be seen as confusing? Here's a partial list:

HeroineNextDoor
Next Door Heroine
NextDoor Heroine
NextDoorHeroine
Heroine Neighbor
Hero Next Door
etc., etc.

And there we go – Hero Next Door, Serial Number 78776159 is a pending mark for, in part, a shirt line. While it's not the exact same name, it is strongly similar and likely similar enough that the average consumer would correlate the two. Now you know it's best to leave your heroine next door.

Let's just assume you weren't blocked at this stage. Now is the time to get into variations of spelling and synonyms. Here's another partial list:

Heroin Next Door
Heroyne NextDoor
Next Door Goddess
etc., etc.