Michael Phelps’s swim cap: winner trademark placement Reply

Have you noticed the MP logo front and center on Michael Phelps’s swim cap?  Visible on MP picthe starting block and many close-ups, MP is a trademark for Michael Phelps’s brand of swim gear (USPTO Serial No. 86966342).  According to a press release on www.michaelphelps.com; Michael Phelps, coach Bob Bowman and swimming equipment manufacturer Aqua Sphere have collaborated to design a line of premier swim gear and training equipment for the MP brand.  Outfitting Michael Phelps in MP gear for the Rio Olympics – including adding the MP logo front and center on Michael Phelps’s swim cap is brilliant trademark placement and likely required a savvy negotiation.  Three cheers for Michael Phelps, the MP trademark and the negotiator who secured the trademark placement.

Don’t be fooled into thinking trademark placement like the MP on Michael Phelps’s swim cap wasn’t negotiated for.  Brand promotion at the Olympics (and almost anywhere) is big business.  Official partners of the Olympics pay big bucks to share the spotlight with Olympians.  Did you notice the tape and American flag stickers placed on Olympic swimmers’ headphones to cover the BEATS trademark?  Evidently Beats gave Michael Phelps and other high-profile Olympians free headphones but did not pay to be an official Olympic partner… hence tape and stickers over their trademark.

BY: Vanessa Kaster, Esq., LL.M.

See also: Previous blog posts on trademarks at https://iplegalfreebies.wordpress.com/category/t-r-a-d-e-m-a-r-k/; The Wall Street Journal article titled, Rio 2016: Michael Phelps’s Golden Change to Rebuild His Brand by M. Futterman and R. Bachman at http://on.wsj.com/2bdgnW1 ; Reuters article titled, Phelps Challenges Former Sponsor Speedo With New Brand by L.B. Baker at http://reut.rs/1Sa6c47 ; Business Insider article titled, Michael Phelps was forced to cover the logo of his Beats headphones and he did a lackluster job with the tape by C. Gaines at http://www.businessinsider.com/michael-phelps-beats-olympics-headphones-2016-8; @iplegalfreebies and www.kasterlegal.com.

 

Trademark – in a stylized font Reply

A trademark or logo can include an original font.ImageAgentProxyFor example, COCA-COLA (in a stylized font) is a famous registered trademark that includes an original font. Note that the COCA-COLA Company has registered COCA-COLA as a trademark with and without the stylized font. There are legal advantages to having registrations for a word trademark with and without a stylized font.

  • An advantage to registering the COCA-COLA trademark with a stylized font is that copycat brands can be prevented from using the typeface in a trademark to sell goods and services.
  • An advantage to registering the COCA-COLA trademark without a stylized font is that the trademark owner is granted rights to protect the text element of the trademark in any font.  Another advantage to registering a trademark without a stylized font is that it grants a level of domain protection.

A key to including a font or stylized lettering in a trademark is originality of the font or stylized lettering.  In addition to originality, other factors to consider when assessing whether to apply for USPTO registration of a trademark in a specific font or stylized letter are:

  • How instrumental the font or stylized lettering is to the brand, andIMG_2903
  • How long the specific font or stylized lettering will be used.  Back to the example of COCA-COLA, the famous trademark in stylized script has been used by the company as a trademark since 1886. (U.S. Reg. No. 0022406).

By: Vanessa Kaster, Esq. LL.M.

For personalized legal services you are welcome to contact me at vk@kasterlegal.com

See also: Blog posts on use the TM & SM symbols on unregistered trademarks at: https://iplegalfreebies.wordpress.com/category/t-r-a-d-e-m-a-r-k/trademarks-tm-sm; USPTO (U.S. Patent & Trademark Office) resources at www.uspto.gov; @iplegalfreebies and www.kasterlegal.com

 

 

Famous Trademarks Have Broad Protection (royal treatment) Reply

Famous trademarks are treated like trademark royalty and have broad protection against Screen Shot 2016-02-17 at 5.40.07 PMsimilar trademarks used on both related and unrelated goods and services.

For example, a winery applied for USPTO trademark registration of the term “PINK FLOYD” for wine and was refused registration because:

the applied-for mark consists of or includes matter which may falsely suggest a connection with PINK FLOYD the music group.  Although PINK FLOYD is not connected with the goods and/or services provided by applicant under the applied-for mark, PINK FLOYD is so famous that consumers would presume a connection.

The USPTO’s refusal to register the applied-for PINK FLOYD trademark for wine includes a four-part test used to evaluate the existence of a false connection:

The following is required for a showing of false connection under the Trademark Act Section 2(a)[in the U.S.]:

  1. The mark sought to be registered is the same as, or a close approximation of, the name or identity previously used by another person or institution;
  2. The mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution;
  3. The person or institution identified in the mark is not connected with the goods sold or services performed by applicant under the mark; and
  4. The fame or reputation of the named person or institution is of such a nature that a connection with such person or institution would be presumed when applicant’s mark is used on its goods and/or services.

This is one example of the broad protection granted to famous trademarks.  (Find another way to pay tribute to a favorite band or music group).

BY: Vanessa Kaster, Esq., LL.M.    crown

For personalized legal services you are welcome to contact me at vk@kasterlegal.com

See also: a copy of the USPTO’s final office action for the PINK FLOYD application above [Serial No.77588367]; an earlier post on new business trademarks at http://wp.me/p10nNq-B; an INTA fact sheet on Famous and Well-Known Marks at www.inta.org; earlier posts on trademarks at https://iplegalfreebies.wordpress.com/category/t-r-a-d-e-m-a-r-k/; a link to U.S. Federal Trademark Law at www.uspto.gov; @iplegalfreebies and www.kasterlegal.com.

 

 

 

Copycat Cookie = Trademark Lawsuit Reply

Last month, Pepperidge Farm sued Trader Joe’s over copycat cookies. Screen Shot 2016-01-11 at 1.57.56 PMPepperidge Farm claims the copycat cookies look too similar to its popular Milano cookies (and feature a similar “fluted paper cup” on their packaging). See the photo to the right. Pepperidge Farm claims these similarities damage its goodwill, confuse consumers and infringe its registered trademark. Interestingly, the Milano cookie shape is a registered trademark [U.S. Registration No. 3,852,499].

A few interesting details:

  • Milano cookies are famous cookies that Pepperidge Farm started selling in 1956.
  • Pepperidge Farm is a successful company, makes lots of money selling Milano cookies and can afford this litigation. (Trader Joe’s can likely afford this too).
  • The packaging of Trader Joe’s cookie features a picture of its cookies displayed in fluted paper cups (which is how Milano cookies are sold); however, the interior packaging is actually a plastic tray.
  • The two cookies are not the exact same shape. Trader Joe’s cookies are more rectangular.

This last point may be difficult to overcome. The court may be Screen Shot 2016-01-11 at 1.46.06 PMreluctant to enforce a product design trademark for a sandwich cookie when the allegedly infringing cookie is not the same shape.  It will be interesting to follow this case and see what happens next.

BY: Vanessa Kaster, Esq., LL.M.

For personalized legal services you are welcome to contact me at vk@kasterlegal.com

See also: a copy of the Complaint filed in December at http://ia601509.us.archive.org/4/items/gov.uscourts.ctd.110383/gov.uscourts.ctd.110383.1.0.pdf; earlier posts on trademarks at https://iplegalfreebies.wordpress.com/category/t-r-a-d-e-m-a-r-k/; a Reuters news article on the lawsuit: Pepperidge Farm sues Trader Joe’s over Milano cookie at http://www.reuters.com/article/us-traderjoes-pepperidgefarm-lawsuit-idUSKBN0TN1X020151205; @iplegalfreebies and www.kasterlegal.com.

Fans say YES after LEGO says NO (& refuses to fulfill an order for artist Ai Weiwei) Reply

Reading excerpts from a rejection-letter from the LEGO toymaker to the Australian National Gallery in response to a bulk legoorder for an upcoming instillation by the famous, artist Ai Weiwei… is a cautionary reminder of how quickly viral backlash can unfurl.

In addition to refusing to fulfill a bulk order for toy bricks placed by the museum, the LEGO toymaker evidently requested the following in their rejection-letter:

  1. The LEGO trademark cannot be used commercially in any way to promote, or name, the artwork; and
  2. It must be clear to the public that the LEGO Group has not sponsored or endorsed the artwork/project.

In response to the LEGO toymaker’s rejection-letter, collection points have been established around the world for LEGO brick donations to support the art project and the artist has decided to make a new work defending freedom of speech and political art.  (I’d say it’s pretty clear to the public that the LEGO Group has not sponsored or endorsed the art project).

The Brooklyn Museum is accepting LEGO brick donations – donations can be placed in the sunroof of a car parked in front of the museum or can be sent by mail –> https://www.brooklynmuseum.org/exhibitions/ai_weiwei_lego_collection_point

BY: Vanessa Kaster, Esq., LL.M.

For personalized legal services you are welcome to contact me at vk@kasterlegal.com

See also: earlier posts on trademarks at https://iplegalfreebies.wordpress.com/category/t-r-a-d-e-m-a-r-k/; a BBC News article titled, “Australia gallery collects Lego for Ai Weiwei at http://www.bbc.com/news/world-australia-34664262; @iplegalfreebies and www.kasterlegal.com.

Wholesome image…. An Apple A Day Reply

While apple picking recently, I noticed the phrase “An Apple A Day” printed on my apple-picking bag.  AppleSeeing this phrase made me curious as to the origin of the longer, common phrase, “an apple a day keeps the doctor away.”  To me this common phrase is a marketing win, win, win; because, it invokes the following three qualities: 1) Health, 2) Wholesomeness, and 3) Daily Use.  I suspect it is no coincidence that APPLE Inc. selected a word-trademark bearing these qualities.

While I love apples… I do not eat one everyday.  However, I do use my APPLE laptop and iPhone daily.  (What would Johnny Appleseed think?)

BY: Vanessa Kaster, Esq., LL.M.

For personalized legal services you are welcome to contact me at vk@kasterlegal.com

See also: earlier posts on trademarks at https://iplegalfreebies.wordpress.com/category/t-r-a-d-e-m-a-r-k/; a Smithsonian Article on Johnny Appleseed titled, “The Real Johnny Appleseed brought apples and booze to the American frontier” by N. Geiling at http://www.smithsonianmag.com/arts-culture/real-johnny-appleseed-brought-applesand-booze-american-frontier-180953263/?no-ist; Washington Post article: “History behind ‘An apple a day’″ by M. Ely at http://wpo.st/C94j0; @iplegalfreebies and www.kasterlegal.com.

CITYSTICKS & POPSICLE tale of two trademarks Reply

CITYSTICK picCITYSTICKS & POPSICLE are two different trademarks for tasty frozen treats.  These two trademarks are owed by two different companies and are both registered with the USPTO.  USPTO trademark registration grants the owner of each trademark exclusive rights to use the registered trademark when selling, advertising and promoting their frozen treats.  This means that the words CITYSTICKS & POPSICLE are off limits to any other person or company selling frozen treats.  For example, if another person or company uses either of the trademarks to sell or advertise competitive goods without permission of the trademark owner they may be infringing the trademark and might be asked by the owner to stop using the trademark (i.e. to cease and desist from infringing the trademark).

POPSICLE is the older of these two trademarks and it’s no coincidence that the CITYSTICKS packaging pictured to the left and below does not use the trademarked term POPSICLE.  Instead the packaging reads, “ice pops with personalities.”  (As you can see, I quickly ate half the CITYSTICKS ice pop before I thought to photograph it for this post.  It was tasty).CITYSTICKS USPTO screen shot

BY: Vanessa Kaster, Esq., LL.M.

For personalized legal services you are welcome to contact me at vk@kasterlegal.com

See also: more on the POPSICLE trademark and protecting exclusive trademark rights  at http://wp.me/p10nNq-3t, other posts on exclusive trademark rights at https://iplegalfreebies.wordpress.com/category/t-r-a-d-e-m-a-r-k/trademark-exclusive/; USPTO (U.S. Patent & Trademark Office) resources at www.uspto.gov; #trademark, #branding, #valueyourbrand @iplegalfreebies and www.kasterlegal.com

New Rules for Creative Revenue Reply

Creative revenue streams – Here are a few of my favorites:FullSizeRender (8)

  • Inexpensive monthly subscription fees for access to video tutorials (for example teaching folks to use photography equipment or to play an instrument)
  • Parlaying social media followers into an eager audience for a book launch.
  • Composing music scores for videos and films. (It’s often much more economical for film and video makers to commission original compositions than to try and get rights to popular songs.  When I saw a preview of the documentary “Doing It In The Park: Pick-Up Basketball New York City” one of the filmmakers shared that he wished he’d commissioned an all original score from the outset).
  • Demonstration YouTube videos that include a retailer affiliate link. (Retailer affiliate links make money when folks click the link and make a purchase).

I believe that smart, creative, entrepreneurial folks can rise to the top, get noticed and make money (if they want to).

BY: Vanessa Kaster, Esq., LL.M.

For personalized legal services you are welcome to contact me at vk@kasterlegal.com

See also: “How to write a © Copyright Notice and Why to Use it” at http://wp.me/p10nNq-18; Posts on trademark topics for new businesses: https://goo.gl/xqJrOA; #creativerevenue, #valueyourart, #valueyou; @iplegalfreebies and www.kasterlegal.com.

Using the Registered Trademark Symbol: ® Reply

trademarks on the streetWalking down the block today in New York City, I noticed a dozen famous trademarks: WHOLE FOODS MARKET (store sign), NYC TAXI (decal on a cab);  LOUIS VUITTON (purse), 7 ELEVEN (store sign), CON EDISON (on a service truck), UNITED STATES POSTAL SERVICE (on a blue mail box), DUNKIN’ DONUTS (store sign), POLO RALPH LAUREN (logo on a man’s shirt), NIKE (swoosh on a shopping bag); HAAGEN-DAZS (on an ice cream delivery truck); GAP (store sign) and MTA (logo on a poster announcing a subway update).

Once a trademark has been registered with the USPTO, the trademark owner is vested with a bundle of exclusive rights to use the trademark AND the owner also has the right to use the coveted Registered Trademark symbol: ®.  The photo-collage inserted into this post points out several uses of the ® symbol that I noticed out on the street.

Here is a brief excerpt from the United States Patent & Trademark Office’s website on using the ® symbol:

[Y]ou may use the federal registration symbol “®” only after the USPTO actually registers a mark , and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration.

Registered trademarks are all over the streets of New York City!

BY: Vanessa Kaster, Esq., LL.M.

For personalized legal services you are welcome to contact me at vk@kasterlegal.com

See also: Other blog posts on using trademark symbols at https://iplegalfreebies.wordpress.com/category/t-r-a-d-e-m-a-r-k/trademarks-tm-sm/; USPTO (U.S. Patent & Trademark Office) resources at www.uspto.gov and www.uspto.gov/faq/trademarks.jsp#_Toc275426682; INTA (International Trademark Association) fact sheet on trademark use at http://inta.org/TrademarkBasics/FactSheets/Pages/TrademarkUseFactSheet.aspx; @iplegalfreebies and www.kasterlegal.com.

Epic Launch -> of Hillary’s Trademark and Campaign Reply

Launching a trademark on Sunday night and having it featured in a New Yorker cartoon the next day Screen Shot 2015-04-15 at 10.12.23 AMmay be a trademark dream come true.  It’s Hillary Clinton’s 2016 campaign logo (featuring an H and a right arrow) that has created the buzz of attention.

The Washington Post ran an article on Monday that compiled public comments, reactions and look-a-likes to Hillary Clinton’s 2016 campaign logo.  An interesting look-a-like logo mentioned in the article caught my attention: a logo for a defunct English supermarket chain called “Hillards” that had a similar H-arrow logo. (Pictured in the bottom right corner of the Hillards advertisement.)  The good news for Hillary’s campaign is that this look-a-like should not block nor create any issue with her new campaign logo.  This is because: Screen Shot 2015-04-17 at 2.46.02 PM

  1. The supermarket trademark was not used in the United States. (Trademark rights are acquired by use of the trademark in a particular geographic region and can be registered in a specific country or countries.  Once registered, continued use of the trademark is required to maintain the registration); and
  2. The trademark does not appear to be “in use” any longer in any country due to a reportedly hostile takeover. (Trademark rights are sustained by actual use of the trademark to sell particular goods and/or services.  Failure to continuing using a trademark in commerce to sell particular goods and/or services “kills” a trademark).  Screen Shot 2015-04-15 at 10.11.51 AM

Personally, I like Hillary Clinton’s 2016 campaign logo.

BY: Vanessa Kaster, Esq., LL.M.

For personalized legal services you are welcome to contact me at vk@kasterlegal.com

See also: Basic facts about trademarks issued by the USPTO at http://www.uspto.gov/sites/default/files/trademarks/basics/BasicFacts.pdf; more posts on trademarks at https://iplegalfreebies.wordpress.com/category/t-r-a-d-e-m-a-r-k/; The UK Intellectual Property Office with trademark search options at https://www.gov.uk/government/organisations/intellectual-property-office; @iplegalfreebies and www.kasterlegal.com.