Tag Archives: PTO Practice

In a family way

Originally posted 2010-11-11 23:59:08. Republished by Blog Post Promoter

Family of Marx

Family of Marx

I’ve written, as is my wont, at great length regarding my skepticism about the “family of trademarks” concept. Well, once you’ve digested that, you may want to head over to Property, intangible, where Pamela Chestak — as is her wont — does some pretty darned heavy lifting on what seems to me to be a related idea:

It may make business sense to put ownership of related trademarks in different subsidiaries.  Under In re Wella, one can generally register similar marks owned by sibling companies, as long as it’s done properly.

But In re Koolatron Corp. discloses a risk I hadn’t thought about before, that is, that the registrations won’t serve the function of preventing the registration of the same or similar marks. How is that, you say?

You may need a chart to follow this one, but if you register trademarks for money, it’s probably worth doing so.

Redskins redux 2

Originally posted 2014-02-27 18:10:01. Republished by Blog Post Promoter

I didn’t have a chance to mention that last month, the order denying the legal challenge to the Washington Redskin’s use of its trademark American Indian logo was upheld.

Now I have a chance!

And do the unhappy Indians have a chance?  They think they do.

UPDATE: They don’t (via @ABAJournal).

Mark their words

Originally posted 2013-08-20 13:17:59. Republished by Blog Post Promoter

Stop Islamization of America Logo

Very incorrect.

Jihad Watch and Atlas Shrugs — two websites run by friends of mine who have very clearly articulated views about Islamic radicalism, and controversial ones about what to do about it — are busy, and then some, with this story:

A federal agency has rejected a request for a trademark by the organization “Stop Islamization of America” because its name may “disparage” Muslims.

The group launched by Atlas Shrugs blogger Pamela Geller and Robert Spencer of Jihad Watch has drawn national attention for its bus-sign campaign offering support for Muslims who want to leave Islam. SIOA currently is organizing opposition to plans for an Islamic mosque at Ground Zero in New York City.

Now the group reports the U.S. government has refused its request for a trademark designation for its name.

The government response, posted on the site, states, “The applied-for mark refers to Muslims in a disparaging manner because by definition it implies that conversion or conformity to Islam is something that needs to be stopped or caused to cease.

“The proposed mark further disparages Muslims because, taking into account the nature of the services (‘providing information regarding understanding and preventing terrorism’), it implies that Islam is associated with violence and threats,” the government agency said.

This is the application; the Office Action is here.

Forget the politics of this.  Besides the fact that I have no idea why these two thought a word trademark (as opposed to protection for the logo) was needed here — being dubious, as I am in general, to the extension of trademark protection to words people say to mean things in English — I’m not too surprised about the outcome of their application on the “scandalous or offensive” denial.

This is because, as I’ve written before (and of course I’m in good company), while the PTO’s criteria for “scandalous and offensive” denials under Section 2(a) of the Trademark Act are a conceptual and a practical mess, the outcome’s certainly predictable when it comes to racialethnic or other “protected class” categories:  Only the politically correct need apply.

That’s a “criterion” Pam and Bob are not going to meet!

Predictable or not, though, that “standard” doesn’t have much to recommend it as either law or policy.  But I can’t blame these two bloggers for not knowing this when they dove head-in to their trademark registration application the way they do with everything else in life:  With passion and abandon.  They know more than I’ll ever forget (maybe more than I want to remember; certainly more than others want to even think) about radical Islam.

But what could they do if they just didn’t know a decent radical trademark lawyer?

Best of 2011: Trademark do it yourself?

Originally posted 2011-12-24 08:50:57. Republished by Blog Post Promoter

First posted on June 28, 2011.

The Gifted Amateur

Aaron Franklin, co-founder of LazyMeter — an intriguing project that’s still in Beta but is not what it sounds like — writes as follows on Seattle 2.0:

At first glance, a trademark can be a complicated and expensive legal process. This is the story of how I successfully registered a trademark for a total of $275 (the minimum USPTO fee).

When I started to think about a trademark, I visited a lawyer.  He wanted over $1,000 to manage the process, and told me I would regret submitting it myself.  He said I wouldn’t be equipped to respond if the application was challenged.

Moreover, the application is confusing.  What is a trademark class?  What description should you use for your goods/services? What qualifies as a specimen to prove use in commerce?  It’s no wonder most fork over the cash to a lawyer.

Wondering how it turns out?

I decided to break down the process by researching the implications of making a mistake.  During my research, I found that only 3% of trademark applications are challenged. With those odds, I decided I could apply myself, and then go to a lawyer if it was challenged.

All that was left was filling out the application, and this turned out to be more simple than expected.  Since you can search trademarks on the USPTO Site or Trademarkia, you can find similar trademarks (e.g. competitors) and look for patterns.  Other questions had simple answers as well.  For example, all you need for a specimen to prove use in commerce is a screenshot of your site.  I filled out the form in less than an hour, and 6 months later we received the trademark certificate pictured above.

Hurray!

Okay, so my sarcasm is a little obvious. It isn’t meant to be all that sarcastic. This is, rather, a teaching moment.

But first, the disclaimers. Read More…

Best of 2009: “Keeping it real — the ultimate use in commerce”

Originally posted 2009-12-27 16:56:22. Republished by Blog Post Promoter

This was first posted on May 7, 2009.

The TTABlog® reports, again, on the fraud issue, but that’s not what interests me here so much this time. Rather, it’s the question of the lifecycle of a trademark’s “use in commerce” status when plotted against that of a specific product which may no longer be manufactured, but which arguably may have trademark significance.

Ron ColemanI have looked at this question in other contexts before, particularly in this post where I wrote about a company called River West Brands, that pokes through the junk-heap of “abandoned” consumer-products trademarks and tries to make money off them. The focus in that post was on trademarks for lines of goods that no longer exist, and I linked to related items by Pam Chestek and, guess what, John Welch that dealt with the issue. But here there’s a twist: The trademark, WAVE, is very much alive in Bose’s successful line of high-end audio equipment. But, as befits a “fraud on the PTO” case, the focus here is on one particular product in the list of goods and service that is no longer in production. Can the trademark still be a trademark?

Read More…

Bar none

Michael Atkins:

ATT Bars Design[University of Washington] School of Law Professor Sean O’Connor, guest blogging at Legal Satyriconwrites about AT&T’s trademark registration of the bars indicating cell phone signal strength (depicted left).

“The bars are purely functional representations of the strength of cell service and a standardized one at that,” he writes. “If anything were unworthy of being captured as a trademark, this should have been it.

Ok, well, maybe not anything, but the point is well taken.  More from O’Connor:

Fortunately, the PTO seems to have come to its senses and is going to cancel the mark.  But in the meantime, at&t continues to paste billboard all over the country with the “More bars in more places” campaign and the bars logo with “®” attached.  I understand that until the mark is fully cancelled, they probably have a right to keep using the “®”.  But I think it is shady and misleading at best, given the cancellation proceedings underway.

Well, you ain’t canceled till you’re canceled, but read his post, because he does a great job of addressing how corporations use dubious claims of IP rights as very sharp elbows to crowd out others for market position.  “You have to admire that kind of Machiavellian cunning,” he says.  “And it’s a testimony of the continuing power of high cost lawyers and blanket marketing campaigns.”  180px-Ayats_bravo_t-mobile

Well, all right, but it’s testimony to a damned good cell signal too, Professor!

After all, take it from a T-Mobile customer — you don’t see T-Mobile trying to  “own” the icon for robust cell coverage.  They were reduced to trying to corner the market for magenta.

Best of 2008: Tackiness not grounds for refusal to register

[Posted December 1, 2008.]

Otherwise, why would John Welch be reporting this appeal?:

December 4, 2008 – 10 AM: In re Chippendales USA, LLC, Serial No. 78666598 [Refusal to register the apparel configuration shown below for “adult entertainment services, namely exotic dancing for women in the nature of live performances” on the ground that the design is not inherently distinctive].

Frankly we would have relied on tackiness for the refusal if we were the PTO, because when we see this classy outfit we think “Chippendales” every time.  “Inherently distinctive?” I’d say!

10 Years of LIKELIHOOD OF CONFUSION®

10 Years of LIKELIHOOD OF CONFUSION®

Then again, that’s how we worked our way through law school, so we’re biased. (UPDATE: Marty raises an eyebrow — obviously doesn’t remember what LIKELIHOOD OF CONFUSION® himself  used to look like.)

More interesting is the concept of apparel configurations as the subject matter of a trademark.  Indeed, as the applicant’s brief by friend Stephen Feingold (of our former firm Day Pitney — didn’t realize he’d handled my favorite Yiddish IP case!) makes clear, that question is indeed a matter of first impression. Read More…

Secret defrauder ring (UPDATED)

I want one, too!

What is the FRAUD-O-METER™?  Its creator, John Welch, explains:

Some say that a picture is worth a thousand words, and that is certainly true with regard to the TTABlog FRAUD-O-METER™ brand legal indicator. We all know that the CAFC in In re Bose Corporation jettisoned the TTAB’s “knew or should have known” standard for fraud set out in Medinol v. Neuro Vasx, ruling that the Board had “erroneously lowered the fraud standard to a simple negligence standard.”  The appellate court also held that proof of intent to deceive is required to establish fraud and it indicated that even “gross negligence” is not enough, but it declined to address the issue of whether “reckless disregard for the truth” would suffice.

The FRAUD-O-METER™ illustrates the current state of trademark fraud jurisprudence: the now defunct Medinol standard is depicted by the grey arrow resting in the “Negligence” wedge, while the white arrow, representing our post-Bose uncertainty, unsurely leans toward the “Reckless Disregard” wedge.

If the chart looks a bit blurry, then I suggest that you (1) move closer to your computer screen; (2) check your eyeglass prescription; or (3) double click on the chart for a larger version that you can print out or save as your computer wallpaper.

Or, kids, you can collect the whole set!

This is very clever.  Yet I have the sneaking feeling that John…  he is not to laugh from this PTO fraud, so much.

UPDATED:  The Beta for version 2.0 is out!  John explains:

The Board has yet to decide whether “reckless disregard for the truth” is enough to support a fraud ruling. There are some suggestions (including a recent article by TTAB Judge Lorelei Ritchie [TTABlogged here]) that “willful blindness” may be enough. With that in mind, I have created Version 2.0 of the Fraud-O-Meter, still in beta testing.

No more Wikipedia…

… for Patent Examiners. Trademark practitioners are, however, still stuck with it and its unpredictable effects.

Vintage PTO “fraud”?

The TTABlog® almost breathlessly — and, quite understandably, considering — links to Seattle Trademark Lawyer, who reports on a case,  One True Vine, LLC v. The Wine Group LLC, just now being uncorked in a California District Court that could well answer a lot of the questions about application of the new “fraud on the PTO” legal standards to an old, familiar fact pattern:

This factual situation looks a lot like the facts in Medinol v. Neuro Vasx: two listed items in the identification of goods, use on only one of the two, a claim of inadvertent mistake. Of course, the Board found fraud in Medinol under the TTAB’s “should have known” standard that was recently rejected by the CAFC in Bose.No whine

What standard will the court apply? How will defendant prove fraud? Is it enough for plaintiff to say that the error was inadvertent? Suppose the two listed goods were wine and nuclear reactors, and the Registrant claimed that the inclusion of “nuclear reactors” was inadvertently overlooked? Suppose plaintiff here had never sold any white wine at all under any label? What if Defendant showed that plaintiff had made the same error in other registrations?

Well, in vino veritas, right?

We’re all looking forward to the answers, which we will no doubt learn… though not before their time.