TTABulous webinar replay
Trademark oppositions and cancellations are quite different from applications and office actions, even if they share much of the same body of law. The procedures, deadlines, dockets, rules, and writing styles are all different. If the very thought of a Notice of Opposition or Petition for Cancellation makes you nervous, this is the class for you. Whether you have never handled a TTAB case, or have handled a few but would like to learn the process in more depth, this course will deliver including, templates for pleadings, motions, and discovery.
The 2.5 hours TTABulous course features Erik Pelton sharing experience from nearly 20 years and dozens of TTAB cases.
- Click here for more information and a syllabus.
- Click here to purchase replay ($697)
- Click here to purchase workbook ($497) – This unique TTAB workbook features more than 150 templates and samples covering pleadings, motions, discovery, testimony, case resolution, and much more. (You can use image of the workbook cover please – attached)
Testimonials for Erik and Sonia’s courses:
- The course was great and came at the right time for me as I am adding more and more trademark work to my core patent practice. The material answered directly some simple practical questions I had – e.g., how to retrieve only registered live marks in a search and downloading multiple records for evidence – and also provided valuable depth to legal arguments for traversing refusals. Kudos to Sonia and Erik! ” — BETSY DOWD
- I just wanted to reach out and say thanks. I purchased your Office Action Boot Camp. You and Erik absolutely crushed it. The info was so helpful and actionable.” — JOEY VITALE
Supreme Court #trademark hearing (B&B Ha
Supreme Court #trademark hearing (B&B Hardware v Hargis) transcript: http://www.supremecourt.gov/oral_arguments/argument_transcripts/13-352_kifl.pdf audio: http://www.supremecourt.gov/oral_arguments/audio/2014/13-352
USPTO Solicitor issues ruling regarding
USPTO Solicitor issues ruling regarding amendment to Louboutin registration, but 2nd cir arguments are possible: http://ow.ly/gTRoK
Love it or Leave it: Cheerios trademark
Cheerios® cereal is celebrating its 70th birthday this year. It is a great name and logo. Simple. Suggestive — happy, fun and “O” shaped. The logo and packaging has been remarkably consistent for years. Kids love it – it is fun and easy to say.
Believe it or not, the product was initially launched as “Cheeri-oats” for the first four years. And it was changed because of a trademark dispute with Quaker Oats! I’d say the change worked out rather well!
Some other Cheerios facts (from “Cheerios cereal celebrates its 70th birthday” via ABC 7):
- Cheerios are produced at a plant in Buffalo.
- In 1979, Honey Nut Cheerios were introduced, followed by Apple Cinnamon Cheerios in 1988, MultiGrain Cheerios in 1992, Frosted Cheerios in 1995, Berry Burst Cheerios in 2001 and Chocolate Cheerios in 2010.
- Since 2009, Honey Nut Cheerios have outsold plain Cheerios.
- Cheerios are made by heating balls of dough then shooting them out of a puffing gun at 100 mph.
USPTO Registrations:
- CHEERIOS – ready-to-eat cereal
– breakfast cereal
Lesson: sometimes a change of brand name – even when the result of a trademark dispute – is a positive move that makes a brand even better.
explosion of app icon trademark filings
The big discussion in recent weeks in the trademark community has been about new domain name extensions. The Internet Corporation for Assigned Names and Numbers (ICANN) recently approved procedures for the creation of new TLDs, meaning .apple, .work, .computer, .facebook, and the like could be in our future. Of course, this could be fertile grounds for trademark disputes. Who should be permitted to own and control .bank? or .delta? or .smith?
But in my opinion there is a bigger and growing “domain” that will see many more trademark disputes in the coming months and years: mobile app icons. Only so much graphics and text that can fit within a small square icon on a phone. If a company other than Google uses a logo featuring a lowercase “g”, would it infringe Google’s trademark? These types of questions will likely arise with greater frequency as the number of apps continues to explode and as companies realize the trademark protection implications in the app world.
For example, the following icons have been registered by the USPTO in the first half of 2011:
[click images for USPTO TARR records]
In addition, dozens of new applications for app icons have been filed in 2011, including Google and Amex.
More brands creating and launching apps and more app users will inevitably lead to more trademark disputes related to the app names and logos.
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Introducing the beta version of GenericTrademarkPage.com, a free tool for trademark practitioners and owners! GenericTrademarkPage.com contains easy to use searches and links to many USPTO functions and other commonly used tools.
GenericTrademarkPage.com is a single webpage from which users can conduct a variety of searches:
- USPTO pages:
- TESS
- TARR
- TDR
- TTABvue
- Trademark Assignments
- Other pages:
- IPRS database from U.S. Customs and Border Patrol
- Google internet search
- Google news search
- Google blog search
- Yahoo! internet search
- Hoovers search
- Twitter search
- MySpace people search
- YouTube video search
- eBay search
As this project is a work in progress, any feedback or suggestions are most welcome!
Non-traditional trademarks: Lighting displays
I love non-traditional trademarks and have spoken and written about them many times. My favorites include the marching ducks of the Peabody Hotel and “goats on a roof” at a restaurant.
I recently came across a new category of non-traditional trademarks: lighting displays. Can the way something such as a building is lit serve to indicate the source of the services or products offered? Sure.
The Gloria Gemma Breast Cancer Resource Foundation has registered the lighting display below in connection with ‘Promoting public awareness of the importance of the early detection of breast cancer’
– The mark consists of a white capitol building illuminated in different shades of pimk and white lighting, with green trees in the foreground and black shadowing all around
Six Continents Hotels, Inc. (Holiday Inn?)owns registered trademarks for the following lighting designs in connection with hotel services (click images for USPTO records):
-
– The mark consists of green lighting formed by four light fixtures placed in a symmetrical fashion near the entryway of the building. One set of two green lights is evenly placed on columns to the right and left of the entryway and direct the green lighting downward thereby casting a green shadow down the length of the column; while the other set of two green lights is evenly placed on the building wall above the entryway and direct the green lighting upwards, casting a green shadow up the length of the wall and roof overhang. The matter shown by the dotted lines is not a part of the mark and serves only to show the position of the mark
– The mark consists of blue lighting formed by four light fixtures placed in a symmetrical fashion near the entryway of the building. One set of two blue lights are evenly placed on columns to the right and left of the entryway and direct the blue lighting downward thereby casting a blue shadow down the length of the column; while the other set of two blue lights are evenly placed on the building wall above the entryway and direct the blue lighting upwards, casting a blue shadow up the length of the wall and roof overhang. The matter shown by the dotted lines is not a part of the mark and serves only to show the position of the mark
What about lighting within a store? Presumably it could serve as a trademark as well, provided the lighting display was unique within the industry and not merely functional. While not exactly for lighting, Washington Mutual banks owns a USPTO registration for the color plumb on a variety of surfaces including the lighting fixtures. Lighting fixture designs and locations are frequently included in the descriptions for trademark registrations covering store displays and configurations, like this one from Huddle House.
Are there other lighting displays which function as a trademark? Are trademark lawyers and owners missing an opportunity here to register and protect more lighting as trademarks?
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Bar Code trademarks
As I have noted often on these pages, almost anything can serve as a trademark. Uniforms, shapes, smells, textures, moving images, and much more. I recently came across an article about creative bar code designs on Mashable (Trivia: what was the first product to have a UPC code on it? A $0.67 10-pack of Wrigley’s Juicy Fruit gum purchased at a supermarket in Troy, Ohio.) The article featured some very creative designs that incorporate functional UPC codes.
Of course, this got my trademark brain working. Are there companies with bar codes in their trademark logos? Sure enough, there are! Here are some designs with bar codes in them registered with the USPTO [click images for USPTO records]:
– Wearable garments and clothing, namely, shirts
– providing logistics services and supply chain solutions related to the movement of documents, packages and freight, namely selecting, arranging and scheduling various modes of transportation; and the pick-up, storage, transportation and delivery of documents, packages and freight by land and air
– Bikinis; Flip flops; Halter tops; Hats; Polo shirts; Sandals; Shirts; Swimwear; T-shirts; Tank tops
– DNA analysis services
– Wholesale distributorships and retail store services featuring clothing, accessories, namely purses and handbags, sandals, slippers, and imported and exported goods namely clothing, accessories, namely purses and handbags, sandals, slippers, shoes, toys, children’s clothes, children’s novelties, knives, boots, jewelry, art work, photography, bracelets, key chains, dolls, Indi
– Insurance consultation
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It has been two months since the Department of Commerce (of which the USPTO is a part) released its long anticipated study on trademark litigation tactics. So, what has happened since we summarized the report’s findings and recommendations? In a word: nothing.
The study fell like a tree deep in the woods. It made a thud that was barely perceived in the trademark law community. Beyond that small community, the study went unnoticed. Since the report was issued there has been no follow up from the Department of Commerce or the USPTO about implementing any of the recommendations. No hearings have been held or scheduled by either chamber of Congress (note that the judiciary committees of the House and Senate have oversight over intellectual property matters and the USPTO). No cries that the study went too far nor any cries that the study did not go far enough.
image from Prospect.org (click for link)
The US Intellectual Property Enforcement Coordinator recently issued her 2011 U.S. INTELLECTUAL PROPERTY ENFORCEMENT COORDINATOR JOINT STRATEGIC PLAN. Her office was directed to take part in the trademark litigation tactics study by the statute creating it. What did her recent annual report mention about the study? Nothing. What did it say about the USPTO? Nothing except a small mention of its new database that will help Federal agencies better coordinate trainings across the government.
The USPTO has not published any of the comments it received. [Note, I have published those I obtained via FOIA request here.] The Commissioner of Trademarks, when asked about the USPTO’s follow-up after submission of the study at a recent meeting of the Trademark Public Advisory Committee (TPAC), said the agency was not implementing any recommendations made in the study, but was waiting for affirmation, if any, from Congress.
INTA, the International Trademark Association, recently summarized the study on the front page of its INTABulletin newsletter (June 1, 2011, Vol. 66, No. 10). The summary spoke glowingly of the report and its recommendations and noted that the USPTO made a special effort to reach out to stakeholders, resulting in 79 comments. Anyone who has followed my writing on the topic knows that I believe the government outreach to publicize the study was paltry and the response of 79 comments was lackluster.
One could certainly argue I was too harsh on the USPTO for not publicizing the study and too harsh on the public and the bar for not commenting more. One could argue that there is genuine apathy because the issue does not generate any excitement, and most people and companies in the world of trademarks are content with the status quo. But I refuse to believe it because many small businesses are economically and practically impacted by unfair trademark litigation tactics and there is little question that issues affect the business and spirit of entrepreneurship.
Small businesses with experiences dealing with trademark disputes have spoken. And many members of the bar have spoken on the subject – though not directly and not in comments for the study. See for example the recent comments of attorney Paul W. Reidl (via TTABlog®), former INTA President, regarding a TTAB request for comments concerning TTAB involvement in settlement discussions, which touch on some bullying tactics used in TTAB proceedings. Several trademark bloggers criticized the report when it was released, but few if any of them submitted comments before the report’s release.
As with many legal and political questions, who is asked and how the questions are framed have a large influence on the answers received. I believe that there was not a large enough effort to reach out to small businesses, the very stakeholders who are impacted adversely by the issues in the stud. Of course, small businesses do not generally have trademark specialists, organizations, or lobbyists on hand to respond to requests for comments such as this one. INTA and the other relevant bar associations are generally dominated by big law firms and big corporations and their views dominated the study. Their interests clearly diverge from those of small businesses.
I will continue to call for the Department of Commerce and USPTO to – at a minimum – actually take steps to implement the recommendations made in the study. I will also continue to call for Congress to hold hearings. Unfortately, I may be standing deep in the woods next a tree that has already fallen.
July 4th themed trademarks
As we celebrate our nation’s birthday today, here are a few fun trademarks related to the July 4th themes:
[click trademarks/images for USPTO records]
- UNCLE SAM – breakfast cereal
– Clothing, namely, jackets, jeans, pants, pullovers, shirts, shorts, sweaters, beach wear, polo shirts, gym shorts, sweat pants, t-shirts, underwear, track suits, leotards, swimsuits, swim trunks, socks, footwear and headgear, namely, caps and hats
– Clothing bearing defunct sports team logos, namely t-shirts, sweatshirts, jerseys, hats, and caps
- BOSTON’S FOURTH OF JULY – entertainment services, namely, conducting entertainment exhibitions in the nature of musical, theatrical and firework productions, event production, and television production
- 4TH OF JULY EXTRAVAGANZA – fireworks
- WHERE EVERY DAY IS INDEPENDENCE DAY! – Tour guide services
Here are some creative logos incorporating stylized US flags:
– purposes, on counter mats, mouse mats, placemats, coasters, memo boards, calendars and other promotional items
– government education; entertainment services in the nature of fantasy politics/congress leagues where users choose legislators for teams to which they manage; entertainment services, namely, conducting contests and providing on-line computer games
– House painting; Painting contractor services
– Paper, cardboard and goods made of these materials, not included in other classes, namely, postcards, posters, calendars, time planners, general feature magazines and magazines featuring computers and travel, greeting cards, comic books, school writing books, drawing tablets, note books; stationery; stickers; office requisites, namely, pencils, pencil sharpeners, fountain pens, ballpoint pens and drafting rulers; Clothing, namely, hats, pants, caps, jackets, t-shirts, footwear, shirts; Non-alcoholic beverages, namely, fruit juices, non-alcoholic beer; Alcoholic beverages, namely, vodka, gin, whiskey, rye whiskey, rum, liqueur, scotch whiskey, brandy and wine; Advertising services
– Collection and refurbishing services for the recycling and redistribution of packaging components, namely, shipping platforms and containers; Transportation services for others, namely, delivery of shipping platforms and containers; Manufacturing for others of packaging components, namely, shipping platforms and containers
– Martial arts instruction; Operating of martial arts’ schools; Operating of martial arts’ studios
– Sheep vaccine
– fabric flags; mail order catalog services featuring flags, flagpoles, aprons, bags, bunting, pleated fabric fans, flag display cases, flag stands, and belts for carrying flags
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