Trademark Law: Using someone’s trademark in your book, blog or website Reply

Using someone’s Trademark in your book, blog or website is something that you need permission to do.  Generally, trademark owners monitor use of their registered trademarks diligently and will often send cease and desist letters asking that unauthorized uses of their trademark be removed.  (For example the NFL and POPSICLE trademarks are heavily monitored and policed in this way.)

How do you figure out if a word is a registered trademark?  Sometimes you can tell by doing a quick GOOGLE search, or for a more definitive search look on in the USPTO’s list of registered trademarks.  Here are instructions for running a basic USPTO (US Patent and Trademark Office) search to see if a word is a trademark:

  • Click – http://tess2.uspto.gov/
  • Then Click on – New User Form Search (Basic)
  • Enter your business name in the ‘Search Term’ field
  • Click – ‘Submit Query’
  • To be really comprehensive, Back-page and search the key words in your business name separately

If you discover that a word is a trademark, it is possible that the trademark owner will give you permission to use their mark… ask em.

You might enjoy knowing that the inspiration for this post came up last night while I was talking to my mom.  She is currently writing a children’s story about a horse that likes specific types of candies as treats.  So, in order to list the candies in the text of her story, it’s important to know which ones are trademarks and which ones are not.  This way she can acquire the needed permissions to use the trademarks.  (my mom’s site —  http://www.bayouponytales.com/)

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

vk@kasterlegal.com.

A monopoly over Red-Soled shoes denied to designer Louboutin 2

In the US, color alone may be protectable as a trademark when it identifies and distinguishes a particular brand.  This type of color, trademark protection is most common with industrial goods like fiberglass insulation that must conform to strict regulatory standards.  For example, ‘pink’ fiberglass is a trademark of Owens Corning.

FASHION, however, is another world entirely and the high-end shoe designer, Louboutin, was recently denied a monopoly over the color RED used on the soles of designer footwear.  Even though Louboutin was granted a US trademark registration for red soled shoes in 2008, a Manhattan judge recently held that Louboutin could not prevent Yves Saint Lauren (and other designers) from designing and selling red-soled shoes.  The judge also stated that Louboutin’s ‘Red Sole’ trademark registration was likely to be cancelled.  (This holding is likely to be challenged, appealed… and possibly overturned).

Wouldn’t it be strange to think of only one designer or fashion house owning an exclusive right to use a particular color?  The court thought so and held the fashion industry is a highly creative industry dependent on access to the full spectrum of colors.

(Interestingly, the judge did create a distinction between Louboutin’s Red Sole mark and other fashion color marks like the Burberry Plaid because the plaid is an arrangement of different colors and not a specific, single color.)

Enjoy this new freedom to paint your soles red.

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

vk@kasterlegal.com

For more information: NY Law Journal: http://www.law.com/jsp/nylj/PubArticleNY.jsp?id=1202510810474  and Judge Marrero’s 8/10/11 Decision:  http://www.nylj.com/nylawyer/adgifs/decisions/081111marrero.pdf.  Red Sole USPTO Registration # 3361597. @iplegalfreebies and www.kasterlegal.com.

Launch of .XXX domain puts Trademark Owners on Defensive 2

An adult entertainment domain .xxx (instead of .com / .net / .gov)  has been given the green light (or red light, rather) to launch later this year.  Evidently, the domain will promote ‘responsible business practices’ within the universe of on-line, adult entertainment.  The launch of .xxx has been received with mixed levels of support both from within the adult entertainment industry and without.

As .xxx primes itself to shimmy into existence, trademark owners are playing defense.  Obviously, there is concern that the launch of the .xxx domain will put trademark owners at risk of having their REGISTERED TRADEMARKS incorporated into unauthorized .xxx domains that divert traffic to porn sites.  This will impact all types of businesses, municipalities, non-for-profit organizations, educational institutions and blogs who own registered trademarks.  For example, TOYS R US which is a famous, children’s brand would take on a wildly different dimension if attached to an .xxx domain.  Not only would an unauthorized .xxx domain potentially tarnish the reputation of the brand but it could also divert internet traffic if it is not safeguarded against.

To minimize this risk, a defensive registration system has been set up for registered trademark owners to BLOCK the use of their marks in .xxx extension domains.  The defensive registration system is called SUNRISE B and it opens September 7, 2011 and closes October 27, 2011.  The initial registration fee with SUNRISE B is free, open to owners of registered trademarks (registered by 9/1/11), and will involve a verification process for approval. (Fees are anticipated to complete the defensive registration process.)

For more info –>  http://www.icmregistry.com.  Paid pre-registration is also available  through several providers.

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

vk@kasterlegal.com

 

MUMMYOLOGIST Trademark Applications accompany a new Mummy Exhibit 1

Fashion exhibits often have strong trademark connections due to the popularity of iconic fashion labels and brands; however, archeology exhibits are less likely to be ‘name branded’ with trademarks.  Generally speaking, anything that can be exhumed from an ancient resting place predates trademark registration systems.

The times are changing… and ‘The Mummies of the World’ exhibit, currently on display at the Franklin Institute in Philadelphia, has submitted trademark registration applications for the term: MUMMYOLOGIST in several classes.  The MUMMYOLOGIST trademark applications are ITU (Intent to Use) applications and it will be interesting to see how the MUMMYOLOGIST brand is developed to establish the requisite USE for trademark registration.

Every trademark registration application must designate at least one class of goods or services where the mark is ‘used in commerce’ (as a brand) in order to qualify for trademark registration.  The MUMMYOLOGIST trademark applications designate 4 classes: 2 classes of services (‘educational exhibitions’ and ‘providing information on archeology’) and 2 classes of goods (‘clothing’ and ‘printed material’).  The two service classes for which ITU applications are pending could be a good fit for developing a MUMMYOLOGIST brand; because, it seems likely that a MUMMYOLOGIST brand can be developed and used to promote and sell the services of ‘educational exhibitions’ and ‘providing information on archeology.’  However, the two classes of goods for which ITU applications are pending could be a bit trickier; since, the mark will need to be used as a brand and not merely as ornamentation on clothes and other goods to qualify for trademark registration.

USPTO rejections for ‘merely ornamental use’ are difficult to overcome and often leave popular graphics without the protection of a trademark registration.  (Just because a graphic or logo is printed on a t-shirt that is bought by a lot of people, doesn’t means that it is operating as the trademark or BRAND of the shirt.  The brand is generally the mark that’s on the inside label in the back of a shirt.)  It will be interesting to see how USE will be claimed for the MUMMYOLOGIST trademark applications.

That’s a wrap on the MUMMYOLOGIST trademark applications. Let’s see if they dig up the requisite use requirement to register this neat mummy mark.

Info on the exhibit: http://www.fi.edu/mummies/info.html  and the trademark serial numbers: 77829439; 77829436; 77829434; 77829430; @iplegalfreebies and www.kasterlegal.com.

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

vk@kasterlegal.com

Trademarks are a defense against cybersquatters 3

Popular internet domain names are a hot commodity… and brands and business names are often used as internet domain names.  (for example: www.coca-cola.com and www.nike.com )

Businesses often seek to register and own their business names and brands as internet domain names; however, it’s not uncommon for cybersquatters to beat them to the punch and register internet domain name out from under them.  What can be done if this happens?  If the domain name purchased by the cybersquatter contains a trademark owned by another party, then there a good chance that the cybersquatter will be forced to surrender the domain name.   A cybersquatter can be forced to surrender a domain name if: 1) the cybersquatter who registered the name has no legitimate business interest in the name; 2) the domain name was registered in bad faith; and 3) the trademark owner’s trademark is confusingly similar to the registered domain.

If all three of these points can be proven, then the domain name can be cancelled or transferred to the trademark owner.

For more info on TRADEMARKS and Exclusive Use Rights –> http://t.co/llWyfhN; @iplegalfreebies and www.kasterlegal.com.

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

vk@kasterlegal.com

Trademark Bullying: use common sense when enforcing your trademark 3

Enforcing and policing a trademark against unauthorized use is an important part of keeping a trademark alive, healthy, valuable and strong.  However, as with all things… there is a fine line between being strong and being a bully.  It’s important to use common sense to discern these two categories… because, not only is bullying unattractive (in any context) but it can also be counterproductive when policing trademarks.

Trademark enforcement is often based on ‘the likelihood of customer confusion’ …ie will folks at the store or shopping online be confused when making purchases and inadvertently buy one product instead of the other or think that the products are made by the same company.  If there is no way that folks could possibly be confused about the two products or the source of the two products… then Trademark Bullying begins.

For example, would you be confused when buying a $9 ‘Chewy Vuiton’ dog toy and think that you are actually buying a Louis Vuitton handbag?  …No.

For example, would you be confused when buying couch potato ‘South Butt’ loungewear and think that you are buying ‘North Face’ mountaineering gear?  …Probably not.

Not only are consumers not confused, but they think it’s funny and often rush to purchase the spoof brand once news surfaces of the alleged infringement.  Trademark Bullying in situations like these often increases the popularity of the alleged infringer.  What’s the moral?  Use common sense when enforcing a trademark and avoid Trademark Bullying.

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

vk@kasterlegal.com

Avoid Trademark Rejection for Descriptiveness Reply

Descriptiveness is a slightly unexpected and common pitfall when it comes to registering a trademark.  If your trademark is descriptive, meaning that your mark merely describes your goods and services in a common and generic way, then trademark registration will be difficult  unless modifications are made to enhance the uniqueness of your mark.

For example, if you have a Doughnut shop where you sell hot doughnuts and you submit an application to register the trademark ‘hot doughnuts’ …your application will likely be denied because, your mark merely describes your goods and services in a common way.  [i.e. – a Google search on ‘hot doughnuts’ returns over  1,740,000 results in 0.18 seconds and these results are linked to doughnut shops and bakeries all over the world that also use the phrase ‘hot doughnuts’ to describe what they sell.]  Since ‘hot doughnuts’ is commonly used to describe doughnuts, it is too literal of a description to be registered as a trademark for a shop selling hot doughnuts.

Fire up your creative juices and make your trademark unique and not merely descriptive.

See also: more info on recent disputes involving this issue: Coppola and his family trust have sued a small restaurant in Novato, CA –> http://wp.me/p10nNq-kz and designer Louboutin’s Red Sole Shoes–> http://wp.me/p10nNq-cy ; @iplegalfreebies and www.kasterlegal.com.

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

vk@kasterlegal.com

‘NAME Brand’ – Using your name as a brand and trademark 3

It is not uncommon for businesses to be named after their founders… nor is it uncommon for famous celebrities and politicians to create businesses using their names.   In both instances, a person’s name can become their brand and trademark.  For a person’s name to be registered as a trademark it must be associated with goods or services in commerce (or soon to be in commerce).

For example, Sarah Palin recently filed a trademark application with the U.S. Patent and Trademark Office to register her name as a trademark.  The service that she is using her name to sell and promote is a website featuring political issues and motivational speaking.

Sarah Palin is certainly not the first politician to trademark their name.  In fact, one of the fist U.S. Trademarks was granted to Paul Revere as a trademark for his pots and pans.  The Revere cookware lives on today.

The only downside to using your own name as a trademark is that if you sell your business and trademarks… then you sell the commercial use of your name in association with the type of business you established.  (…This may not be much of a downside if you negotiate a good price.)

For more on the power of trademarks-> Owning a Trademark = Power (Exclusive Use of a Trademark)www.kasterlegal.com  and vk@kasterlegal.com

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

 

“Super Bowl” is a registered Trademark and permission is required to use it in advertising and promotions. 7

“Super Bowl” is a registered Trademark and permission is required to use it in advertising and promotions.

The NFL owns the registered trademark “Super Bowl” and using their trademark in a commercial context requires authorization.  For example you must get permission from the NFL to use the term “Super Bowl” in commercials, promotions and advertising of any kind, including ticket giveaways.  By contrast, the term “Super Bowl” can be freely used in news stories, commentary or discussions.  The difference in these two examples is commercialization.  If a trademark is used for a commercial purpose, then the use must be authorized by the trademark owner.

Many trademark owners aggressively police their trademarks and it is important to keep in mind that commercial use of a trademark term requires authorization.

See also: USPTO registrations #3138590, #3343714, #76572704, #0882283, and #0846056 at www.uspto.gov; Owning a Trademark = Power (Exclusive Use of a Trademark); @iplegalfreebies and www.kasterlegal.com.

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

vk@kasterlegal.com

Owning a Trademark = Power (Exclusive Use of a Trademark) 7

A major benefit of registering a Trademark is the exclusive right to use the Trademark, which comes with registration.  Ownership of a registered Trademark bestows an exclusive right to use the Trademark with or on ALL similar goods and services.  This exclusive right restricts other people, companies and businesses from using your Trademarked term or logo on similar goods and services.  This exclusive right can be a powerful tool in the marketplace.

For example, POPSICLE is a registered Trademark of Unilever and only Unilever has the authority to use the word POPSICLE when selling, advertising and promoting frozen treats on a stick.  This means that the word POPSICLE is off limits to any other person or company selling frozen treats on a stick.  POPSICLE cannot be used on other companies’ product names, blogs, napkins, merchandising, or advertising.  As you can see, this carries a lot of weight in the market place against competitors.  The unauthorized use of the mark POPSICLE recently put a small shop in Brooklyn in a bind when they started making and selling a product called ‘People’s Popsicles.’  Since the shop did not have permission from Unilever to use the POPSICLE trademark, the shop had to rename their product, print new merchandising, and erase every use of POPSICLE from their menu and blog.

Exclusive use rights that come with owning a registered Trademark are powerful.  Don’t underestimate their value in the market place.

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

vk@kasterlegal.com

More information on this subject: ‘NAME Brand’ – Using your Name as a Brand and TrademarkIs Unilever’s Popsicle Trademark Melting Away? at  http://www.kasterlegal.com/storage/NYSBA%20Electronically%20In%20Touch.%20%20Article%20by%20Vanessa%20Kaster.pdf and http://www.nysba.org/Content/NavigationMenu24/ElectronicallyInTouch/2010Issues/September2010/default.htm; @iplegalfreebies and www.kasterlegal.com