TradeMark Express Blog: All Things Trademark

Humor & Trademarks: The Two are Not Mutually Exclusive

Case in point, the very funny Stephen Colbert's take on the AT&T and Cingular deal – check out the video here.

How to Determine Trademark Infringement?

This post was inspired by all the hullabaloo caused by the iPhone (who owns it? Apple? Cisco?).

Determining if marks infringe can be tricky and each situation varies from another.

The general rules to keep in mind are:

1) Are the names similar in Sound, Appearance or Meaning?

2) Are the industries the same or similar to one another?

3) Are the names confusingly similar to the average consumer? In other words, could customers be confused and assume that both companies are affiliated?

4) Do the trade areas cross? What about the advertising routes -- are the products/services advertised in common places?

Here's what the USPTO has to say about this matter:

"The principal factors considered by the examining attorney in determining whether there would be a likelihood of confusion are:

the similarity of the marks;
and the commercial relationship between the goods and/or services listed in the application.

To find a conflict, the marks do not have to be identical, and the goods and/or services do not have to be the same. It may be enough that the marks are similar and the goods and/or services related."

If you find yourself trying to determine if a similarly named company is going to be a problem, it's best to contact a private search company or a trademark attorney.

What is Conflict? What is a Strong Similarity?
Trademark FAQ

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Cisco & Apple Getting Ready to Duke it Out in Court

There was quite the buzz earlier this week about Apple's latest gadget, the iPhone. Today's buzz is all about the lawsuit Apple received from Cisco for trademark infringement. So, what way do we think this is going to go? My bets are on Cisco getting a princely sum.

Trademark FAQ
Can I get monetary damages when my trade name is used elsewhere ?

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USPTO Celebrates a Milestone

The USPTO announced via a press release that their millionth online trademark application was filed. The millionth applicant since 1997 is pretty impressive. And while, yes, I agree that the electronic system is a thing of beauty if you're in the trademark world, I do have a bit of contention with a portion of that press release.

The millionth application was filed by Donald Junck for the name Bait Craft. Now, of course, I'm going to be biased but I'm going to have to disagree with this: "As many small business owners have done, [Junck] filed the application himself, demonstrating how easy and convenient TEAS is to use--regardless of the applicant's location or resources."

I do think TEAS is a marvelous tool; however, delays tend to be the result for someone not familiar with the verbiage or the process or what the USPTO expects to be on the application. While some mistakes can be corrected, others cannot. And those mistakes that can be corrected still end up delaying your registration.

Also, the press release neglected to mention that Mr. Junck had been through the process once before so he was familiar with what the USPTO wanted. Bait Craft was his registered trademark from September 15, 1998 until June 18, 2005. On June 18, 2005 the USPTO canceled his mark because a Section 8 was not filed. To check out the old listing, go here and enter in the Serial Number 75328408.

Trademark Application FAQs
Why would the USPTO refuse a trademark?

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They're Celebrities AND Inventors

Ironic Sans had a great post yesterday about celebrities and their patents. Using Google's new Patent Search feature, the folks at Ironic Sans found 18 patents by your not-so-typical inventor (is there a typical inventor, though?).

• Is it a patent or a trademark that you need?

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Orlando and Coral Gables Play Nice

Unlike Huntington Beach & a company in Santa Cruz, these two cities in Florida seem to be getting along quite nicely in respect to city slogans.

• Read about USPTO refusals
• Read about the USPTO application process

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2006: The Year That Was…

* Record-breaking:

The USPTO had a 36% increase of final actions on trademark applications from 2005.

* Controversial:

Some debates looked familiar while others were new to the trademark scene.
* A Little Wacky:

From headbutts to podcast (generic or no?), it's been a wacky year of filings.

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Do You Hear What I Hear?

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

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

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

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

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

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

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

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

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

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

Read more about trademarks

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

Sony PS3 Sony PS3 Playstation trademark trademark news trademark infringement

Oxfam Gets into the Fray

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

trademark news trademarks trademark Oxfam Starbucks Ethiopia coffee

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

Buffett Settles

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

trademark news trademark trademarks Jimmy Buffett trademark infringement

Even Gene Simmons knows what's up.

Jimmy Buffett wants his Cheeseburger back

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

trademark news trademark Jimmy Buffett trademarks

Apple ® Says NO to the gPod

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

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

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

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K-Fed's Having a Helluva Week

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

K Fed Kevin Federline Britney Spears copyright copyright news

Patent Your Invention -- Resources, Links & Books

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

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

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

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

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

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

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

There are plenty of free informational resources out there.

Free Articles:

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

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Lawyers on the Loose!

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

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Trademark 101: What is a Trademark?