More intel on genericness, or a parody of trademark rights

Originally posted 2013-02-27 12:25:04. Republished by Blog Post PromoterSometimes you can build up trademark rights, even spectacularly valuable ones, in a word that subsequently becomes a part of the English language.  That’s what happened to Intel, which shares its INTEL trademark with the rest of the English speaking world that uses the word “intel.”  It’s a tough break for them, but not an awful one since they can pick and choose who, when and where to sue people who use that word just about any way, regardless of whether there is any possible confusion or damage to Intel.  Or have…

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Rutgers, Archer and Me: Using Social Media to Power Your Business

Originally posted 2016-05-11 23:09:41. Republished by Blog Post Promoter And I’ll be presenting! How do you like them apples! See you in sunny #Camden next Thursday, @Rutgers_Camden! https://t.co/jALesE7kn7 — Ron Coleman (@RonColeman) May 10, 2016 By the time you read this I will be “presenting,” as we say, at a course in the “Small & Family Business ‘Unlock Your Potential’ Training Series entitled — yup — Using Social Media to Power Your Business which is co-sponsored by the Rutgers School of Business at Camden and my partners (law, not blog) at Archer & Greiner, P.C. Now of course to do this right,... Read more

Too square

We all understood by now that under Wal-Mart, trade dress that is deemed to be “product packaging” — unlike “product configuration” — “may be inherently distinctive and therefore, registrable, without proof of acquired distinctiveness.” Now John Welch writes about a TTAB decision in a case called In re Icelandic Provisions, Inc. concerning a container for some kind of Viking food (no, not this) called “skyre.” The question presented by the distinctively-represented applicant, appealing a refusal to register product packaging on the Principle Register, was, how square is too square to be inherently distinctive? In the TTAB, the test for what qualifies as inherently... Read more

Jiggering it out at the PTO

Originally posted 2015-12-30 15:27:59. Republished by Blog Post PromoterOriginally published on September 21, 2009. Oh, to be a hip, Jewish intellectual… property owner.  Stick with me here. A while back I was following the story of the PTO’s refusal to register the mark NIGGA.  As I put it then: Forget “immoral or scandalous,” which, as we have said before, is an increasingly hopeless position for national government to take on almost anything in this enlightened era. Interestingly, though, this one will probably stick. Political correctness — in this case, quite correct! (most of the time) — is the empty husk... Read more

Best of 2012: That distinctive date

Originally posted 2012-12-30 15:00:08. Republished by Blog Post Promoter Originally posted October 3, 2012. In a recent TTAB case my office faced a motion to compel answers to interrogatories requesting what would seem like a very relevant, and very critical, piece of litigation information:  The date on which our client’s trademark “acquired distinctiveness,” i.e., achieved secondary meaning in association with our client’s goods or services.  Its birthday as a trademark, in other words. Our response to both the demand and the motion was that while we could — and wanted to — acknowledge that we must demonstrate that the mark acquired distinctiveness,... Read more

Search or destroy

Originally posted 2014-05-22 10:48:29. Republished by Blog Post PromoterThe Cincinnati Enquirer reports this chilling story: A local attorney and instructor in legal studies at the University of Cincinnati’s Clermont College has been hit with a $1.3 million malpractice judgment for negligence that helped put a local company out of business. . . . According to Judge Triantafilou’s ruling in the bench trial, Davis was negligent in performing his duties as the company’s trademark attorney when My Girl Friday was starting to sell franchises around the country. That negligence included telling Collinsworth for more than two years that he had done... Read more

Gucci v. Frontline Processing: Giving credit for infringement where it’s due

Originally posted 2010-07-12 08:05:37. Republished by Blog Post Promoter The essential role played by credit card companies in online trademark infringement was recognized in Gucci America, Inc. v. Frontline Processing Corp. In that case, the court allowed contributory infringement claims to go forward against companies that had established credit card processing for an online counterfeit merchant. The payment for the counterfeit goods sold on its website was part of the infringing process, the court reasoned, drawing on Judge Kozinski’s dissent in Perfect 10, Inc. v. Visa Intern. Serv. Ass’n, and most of the infringing sales – of which the companies... Read more

Impaneled in Seattle

I’m here now for tomorrow’s McCarthy Institute and Microsoft Corporation Symposium, “Trademark Law and Its Challenges 2017” at the Amazon Corporate Conference Center. My panel looks like this: 9:50AM-11:00AM Trademark Disparagement and the First Amendment Marc Levy, Partner, Seed IP Law Group (Moderator) Tom McCarthy, Senior Professor, USF School of Law Lorelei Ritchie, Administrative Trademark Judge, USPTO TTAB Ronald Coleman, Partner, Archer & Greiner Makalika Naholowaa, Attorney, Corporate, External & Legal Affairs, Microsoft Stephen Coates, Senior Counsel, Amazon Yes, that does seem like a lot to pack into 70 minutes.  But I have carefully chosen 26 words and I am,... Read more