TradeMark Express Blog: All Things Trademark

Generic Names

Scott Allen posed a very interesting question in response to this post. Here's what Scott's wondering:

"How can you go about protesting a first use claim if you're not the one making the claim of prior use, but you simply have material knowledge of it (heck, so does Google) and don't want to see a generic word hijacked as a mark? Last August, it seems that Learn.com filed a trademark on the word "webinar" claiming first use in commerce June 6, 2000. Now I know for a fact that the word was used in commerce before that, because my company was using it, and we borrowed the term from WebEx. I did some searching on Google (webinar + 1999) and quickly found several more examples, including a couple from my employer at the time. I hate to see generic words hijacked like this (familiar with Entrepreneur Media?). What can be done about this?"

Great question, Scott. The USPTO is actually quite good at catching these marks at the gate. For instance, the example you bring up is a perfect case in point. On January 9th of this year, the USPTO issued a refusal based on that the mark is merely descriptive. It's now on the applicant to submit evidence & arguments supporting their rights to registration.

It's my understanding that only those who "believe that he or she would be damaged by the registration of a mark on the Principal Register may oppose registration by filing a notice of opposition with the Trademark Trial and Appeal Board." As far as what the USPTO defines as "damage" – hmm, any ideas out there?

A great lesson here for anyone that coins a catchy name or term is to trademark that sucker right away. A good example of this is mobisodes ®,which is a registered trademark owned by Twentieth Century Fox.A Google ® search pops up 43,900 hits on this term. Now, of course, it's on Fox to protect their trademark

Hope that answers your question Scott! Let me know if I can answer anything else for you!

• What factors should be considered in choosing a strong trademark?
• What are some common causes that the USPTO would refuse a trademark?

trademark * trademark information * generic trademarks * trademark questions * webinar

Thank you to Isabel Isidro from PowerHomeBiz for interviewing me about trademarks and business names! Check out the Home Business Guide to Understanding Trademarks and Protecting Business Names!

Due to unforeseen circumstances, I won't be able to post for a week or so. I'll be back as soon as possible :)

Martha Stewart in the News Again

The residents of Katonah are a tad upset with the 3rd richest woman in entertainment.

My only question is – was there the same ire when she originally filed for the geographic term, Katonah, back in 2005?

Check out the old listings by going here and enter these serial numbers: 78727055 & 78727070

• What are the different types of marks?
• What factors should be considered in choosing a strong trademark?

trademark trademark news trademark application trademark filing Martha Stewart Katonah

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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trademark FAQ
trademark infringement

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

trademark trademarks trademark news Florida Orlando Coral Gables

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.

Trademark 101: What is a Trademark?