Friday Fun Day!

Rather than devote every post to some legal-y aspect of trademarks, I thought it'd be fun to devote Fridays to the lighter side of the trademark world. So...

Welcome to Friday Fun Day!

Today's post is dedicated to that fun-loving bunch - Hipsters!

Okay, so they've been skewered to death, yes, but still hipsters are everywhere (I live in Portland OR, trust me). So let's embrace this subculture & see what it looks like when hipsters and trademarks collide.

Easily, my favorite hipster-related trademark has gotta be Dads are the Original Hipsters. Check out the blog here though be forewarned - you'll easily get lost in the images of flannel-wearing, beard-having, bike-riding dads and the funny, funny commentary.

Here's a fellow who has fully embraced the moniker - Harry the Hipster! Naturally his blog focuses on music and the logo he's thinking about going with is...what else, a mustache! Kudos to you Harry for flinging yourself in wholeheartedly!

What are your favorite hipster-related brands, blogs, funny places?

What Do I Do If...

someone is infringing on my trademark?

Let's assume you've taken our advice to have comprehensive research conducted every 2-3 years and lo and behold, someone is infringing on your mark!

While, yes, it can be maddening to see someone using your good name regardless if done intentionally or on accident (though the intentional misuse is certainly far more annoying). 

However, check your emotions at the door. Most likely, this company is blissfully ignorant of your trademark and is using it in good faith (i.e. assuming that they have every right to the name). You were savvy enough to have comprehensive research conducted before you filed; others may not be as up to speed as you.

That being said, you'll still have to decide what to do next.

1) Do your homework. This company popped up in the research but you'll want to dig a bit more. Doing all of this BEFORE calling an attorney will save you time and money. Plus you'll be educated in case this happens again.

If they have a pending trademark application you'll have their Serial Number and can check their filing here. Go to the Documents tab. Links to click on include:

     * Application - Copy down the contact info, including their attorney. Note any first use dates.

     * Specimen - If they filed as in use, there should be a specimen. Copy & paste this into the file you're creating.

     * Offc Action Outgoing - If you see this link that means the USPTO has an issue with their filing, one of which may very well be a refusal based on your prior filing. 

If the company popped up in the Common-Law research then finding out more info may be a bit more difficult, though certainly not impossible. The research will show you their web site, address, and/or phone number. Cull as much information as you can from these sources. Start with a web search if you don't already have a web site - use the name, reverse address, phone number, etc. to try to locate a site. Information to gather includes:

     * Owner Information including phone numbers, addresses, owner names, etc.

     * Start Date - you can typically find this information on a site's About Us page. If there is no web site check the records provided. An incorporation or fictitious filing record will contain a date.

     * Trade Area - again, check the About Us page but also look at Locations, Services, etc. If there is no web site this may be a bit trickier to determine. 

We offer a competitive check service you may want to consider if you're finding this process difficult. 

We interrupt this broadcast to bring you this message --> Do NOT call them about their infringement directly. Absolutely resist the urge to take matters into your own hands. 

2) Once you've got yourself a hefty file on the infringing company, read it again. Now ask yourself some important questions:

     * Am I going to lose customers to this company? Is it reasonable for people to confuse me with them and vice versa?

     * Do our trade areas cross? Am I only selling on the West Coast with no plans to expand and they're only selling in one state, county, city on the East Coast? Do I want to sell in the areas that they're in even if I'm not yet doing so?

     * Has this been willful infringement? Have I already lost sales and customers to them? (If you're answering yes to either question then you'll want to gather evidence that shows that)

3) Call a trademark attorney. Even if the best case scenario exists (the USPTO is already in the midst of rejecting their application), you will still want to seek that legal advice. You've done your homework, asked and answered some determining questions - now you're ready to take all of that information to a trademark attorney to decide your next step.

The question of what that next step is a tricky one; check out this great article for more on that subject.

What Do I Do If...

someone wants to sue me, sue me? 

Eek! If you're asking yourself this question, you likely received a very scary letter demanding that you cease and desist the use of your name. 

First, take a breath! Yes, this can be a very harrowing experience but there are steps you can take to maneuver through this.

1) Resist the urge to contact the company or their attorney directly. Actually, don't just resist, DO NOT DO IT.

2) Carefully read through the cease and desist. Highlight the exact complaint(s) being made against you. 

3) Research any terminology as well as any highlighted portions of the letter. Scour the internet and the library to educate yourself as much as possible. Of course, you're welcome to give us a ring and we can walk you through the different meanings and terms. Arm yourself with as much information as possible because that's going to make the next step that much easier (and cheaper).

4) Call a trademark attorney. Yes, you will have to spend money on an attorney because you must take this cease and desist seriously. We have a cadre of attorneys we'd be happy to recommend.

5) Make up your own mind. The trademark attorney is going to give you options but the ultimate decision is yours. 

An anonymous former client wrote a great post about this on Tony Wright's blog. It should be noted that this client used us AFTER this experience was over. His post really hones in on why comprehensive research is so needed BEFORE you file for a mark.

Tomorrow's post will be the flip-side - what if you need to sue someone who is infringing on your mark?

Protect Your Mark, Part Two

Yesterday's post was about recording your trademark with Customs, which will prevent the importation of infringing goods. However, you'll want to be sure to take the necessary steps to protect your mark within the U.S. as well.

Straight from the horse's mouth: "You are responsible for enforcing your rights if you receive a registration, because the USPTO does not 'police' the use of marks. While the USPTO attempts to ensure that no other party receives a federal registration for an identical or similar mark for or as applied to related goods/services, the owner of a registration is responsible for bringing any legal action to stop a party from using an infringing mark." 

Ok, so what does this actually mean? Since the USPTO will not police the use of marks it's going to be up to you be your own trademark cop. This means having that comprehensive research done every 2-3 years. Now this is going to be a whole different mind-set from the first time this work was done. Instead of looking to see if your mark is infringing on others you'll now be looking for those that may be infringing upon you. 

The rationale in determining if marks are infringing upon you is going to be the same that was used to decide if your new name might be infringing on others.

Protect Your Mark, Part One

One of the many advantages to owning a Federal trademark on the Principal Register is the ability to record your mark with U.S. Customs & Border Protection (CBP). Why is this important? "CBP officers monitor imports to prevent the importation of goods bearing infringing marks..."

As of October 2005, they've made it very easy to do so with electronic filing, which you can access here.

The fee is $190 per International Class and must be renewed with CBP at the same time you renew with the USPTO. There is one typo on that last link; USPTO filings are for 10 years, not 20.

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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.

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?

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?

Eat More...

VS

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?

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?"

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?

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?

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?

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.

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."

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.

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?

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.

Nominate Your Favorite Charity for a Free Branding Makeover!

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