Filing USPTO trademark applications is an unusual birth announcement for Beyoncé & Jay-Z’s twins Reply

The USPTO trademark database is the source of prized celebrity news … the names ofRUMI SIR CARTER Beyoncé & Jay-Z’s newborn twins (drum roll) RUMI CARTER & SIR CARTER.   The names RUMI CARTER & SIR CARTER were no longer secret after USPTO trademark applications were filed for both names in over a dozen classes of goods and services.  The products and services covered in the applications range from baby gear & toys to hair accessories, moisturizers & picture frames to fan clubs, music, movies & video games.

The filing of USPTO trademark applications for RUMI CARTER & SIR CARTER can serve a dual purpose: 1) act defensively to block or prevent other trademarks for the same or similar names being filed for the same types of goods and services; and 2) act as place holders in case the twins develop brands or products as they grow.  [USPTO Serial Numbers: 87506224, 87506186, 87506188]

Not surprisingly, similar USPTO trademark applications have been filed for Beyoncé & Jay-Z’s other child, BLUE IVY CARTER. [USPTO Serial Numbers: 86883293 and 85526099]

Why aren’t we all doing this?  Because it’s expensive.  The filing fee for each of the USPTO trademark applications for the kids names cost over $4,000 due to the large number of “classes of goods and services” included in the applications.  (The USPTO filing fee for each class of goods and services is $275).  Additionally, there are ongoing filing fees to maintain “intent to use” trademark applications and depending on how long it takes these wee ones to launch brands and products, new applications will need to be filed once the prescribed time limit for “intent to use” trademark applications expires.

I’m already a fan of RUMI CARTER & SIR CARTER, because, the filing of USPTO trademark applications for their names seems to have occurred shortly after their first breath!

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

vk@kasterlegal.com

See also: other blog posts on related topics –  “Do You Have a Right To Use Your Own Name As A Trademark?“;NAME Brand’ – Using your name as a brand and trademark; Blog posts on trademarks at https://iplegalfreebies.wordpress.com/category/t-r-a-d-e-m-a-r-k/; @iplegalfreebies and www.kasterlegal.com.

Dueling Noodle Trademarks: CHUBBY NOODLE vs FAT NOODLE Reply

CHUBBY NOODLE has challenged FAT NOODLE for using a trademark too similar to its own to sell noodles to folks in San Francisco.  Evaluating whether these two trademarks are “confusingly similar” will be key to the outcome of this lawsuit.  In trademark law, evaluating if two marks are “confusingly similar” is critical.  For example, will noodle-loving patrons be confused by the similarity of the CHUBBY NOODLE and FAT NOODLE trademarks (pictured below) and think these two separately-owned restaurants are related, affiliated or have the same owner?Screen Shot 2015-02-06 at 5.17.44 PM

Curiously, do you think the two trademarks look so similar that you would assume the two restaurants are related?

Are the CHUBBY NOODLE and FAT NOODLE trademarks more or less “confusingly similar” to you than these registered trademarks for other noodle shops?

other noodle regIn the lawsuit filed by CHUBBY NOODLE they also claim that, since the words “CHUBBY” and “FAT” are synonyms consumers are more likely to be confused and think the restaurants are related.  It will be interesting to see how this duel between the noodle shops pans out.

A copy of the complete complaint filed by CHUBBY NOODLE against FAT NOODLE is available at: http://insidescoopsf.sfgate.com/files/2015/01/11329862-0-48091.pdf

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

vk@kasterlegal.com

See also: other blog posts on trademarks at https://iplegalfreebies.wordpress.com/category/t-r-a-d-e-m-a-r-k/; the U.S. Patent & Trademark Office website at www.uspto.gov; @iplegalfreebies and www.kasterlegal.com.

MoveOn.org lawsuit- Trademark Infringement or Free Speech? Reply

Did you know that it’s a trademark infringement issue that Louisiana’s lieutenant MoveOn billboardgovernor has sued the nonprofit MoveOn.org over? (I gotta tell you that the defense of “free speech” keeps coming to my mind).

The trademark at issue is PICK YOUR PASSION [likely USPTO Reg. No. 4022761] which is owned by the Louisiana Department of Culture, Recreation & Tourism for the purpose of “promoting culture, tourism and business in Louisiana.”  The claimed infringement is an alleged misuse of the tourism trademark PICK YOUR PASSION by MoveOn.org which criticizes Louisiana’s governor for refusing to expand Medicaid with the following slogan, “LOU!SIANA Pick your passion! But hope you don’t love your health. Gov. Jindal’s denying Medicaid to 242,000 people.”

The complaint filed in the lawsuit alleges that MoveOn’s “political statement” (which is on a highway billboard, YouTube videos and television commercials) is a trademark infringement, because, it “confuses the viewing public as to the source” of the billboard message.

Confusion, specifically, the likelihood of confusion as to the source of goods and services is paramount in evaluating trademark infringement (codified in the Lanham Act).  However, the free speech protections granted by the First Amendment can be a defense to allegations of trademark infringement (parody is one type of free speech).  The general rule, regarding the free speech defense, is that “anyone, competitor, critic or comedian” is permitted to use a trademark to criticize the policies of the mark owner.   Here, MoveOn is using non-commercial speech to criticize the governor of the State of Louisiana and not the State’s Department of Culture, Recreation & Tourism (who owns the PICK YOUR PASSION trademark) with their political statement.  It will be interesting to see how this lawsuit develops.

It seems the lawsuit has already launched a whirlwind, national campaign for MoveOn.org to raise money and awareness about their political agenda.  It’s hard to say how many folks noticed the billboard on the I-10 interstate approaching Baton Rouge, Louisiana before the lawsuit was filed…. it’s getting attention now.

The MoveOn.org billboard was still up yesterday (3/25/14), when my mom took the photo above.  (And as a humorous post script, the next next billboardbillboard on I-10 after the “pick your passion” billboard at issue touts a steamier message).

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

vk@kasterlegal.com

See also: The case, Dardenne v. MoveOn.org, case number 3:14-cv-00150 available at http://media.nola.com/politics/other/Dardenne%20Complaint.pdf; McCarthy On Trademarks, vol 4 and vol 6 on parody and free speech defenses; MoveOn.org which features the lawsuit on their website’s homepage at http://front.moveon.org/; The Louisiana Office of Tourism’s website at http://www.crt.state.la.us/;  photos by Pam Kaster at www.pamkaster.com; @iplegalfreebies and www.kasterlegal.com.

 

Maasai Trademark – Maasai tribe wants control over commercial uses of its name 2

The Maasai tribe in Tanzania has a unique identity, name and culture that various companies use to sell products.maasai  For example, Diane von Furstenberg sold pillows and necklaces using the Maasai name and Jaguar Land Rover sold a limited-edition vehicle named after the tribe.  Presently, the Maasai tribe is seeking control over commercial uses of its name.   Seems fair for the Maasai tribe to share in the profits earned by folks using their name, especially, since the Massai name is used to invoke the integrity, sensibility and style of the tribe members.

Personally, I find the arguments against granting the Maasai tribe ownership rights, trademark rights, and licensing rights to their name offensive.

CLAIM 1 AGAINST THE MAASAI OWNING THEIR NAME: because the tribe has never made an effort to enforce ownership of its culture and name until now, the rights have been lost.

COUNTER THIS CLAIM: To me, this is a rather colonial, imperialistic view of rights and ownership; however, tribes and indigenous people all over the world continually fight against this claim.  In an effort to set a global standard for respecting indigenous peoples’ rights in their names, culture, trademarks, traditional knowledge and other intellectual property, the UN has adopted a Declaration on the Rights of Indigenous Peoples.  It may take a high profile challenge by the Maasai to raise international awareness regarding the rights of tribes and indigenous people to their name, trademarks, customs, traditional knowledge and other intellectual property.

CLAIM 2 AGAINST THE MAASAI OWNING THEIR NAME: “It’s a nice idea, but if it would work, the French deficit would be gone by asking for royalties on French Fries.”

COUNTER TO THIS CLAIM:  A more accurate comparison than the french fry comment (which I don’t believe the French have ever claimed and may not even want) is the French zeal and persistence in successfully laying claims to and defending the right to use the word CHAMPAGNE as a regional indicator of bubbly wine from the Champagne region of France.

Evidently, the Maasai have launched a campaign to reclaim their name, traditional knowledge and other intellectual property so that they can share in the profits made off their name and likeness.  (They also have an attorney and a USPTO grant for support).

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

vk@kasterlegal.com

For more information see, The United Nations Declaration On The Rights Of Indigenous Peoples at http://www.un.org/esa/socdev/unpfii/documents/DRIPS_en.pdf; WIPO’s Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore at http://www.wipo.int/edocs/mdocs/tk/en/wipo_grtkf_ic_26/wipo_grtkf_ic_26_inf_8.pdf;  article by Stephan Faris in Bloomberg Businessweek magazine titled, For Years, Companies Have Been Making Millions Off The Maasai Name, Now The Tribe Wants Its Cut; @iplegalfreebies and www.kasterlegal.com.

Trademarks as Membership Marks – Hells Angels, Fresno Bulldogs Reply

Trademarks are often used as membership insignia for various organizations, groups and fans… like the Hells Angels and the Fresno State Bulldogs football team.  In fact, one of the primary reasons why a trademark registration is so valuable is because it can create a clear link between brands and their members and fans.  Members and fans generally want to be associated with brands and will wear merchandise bearing their favorite brands.  (The exclusive rights granted to an owner of a trademark registered with the USPTO helps make this happen.  By granting an owner exclusive rights to use a trademark on particular goods or services, then it’s easier to avoid customer confusion as to the source of the goods and services. This in turn often strengthens brands by increasing brand awareness and public recognition).

Using trademarks as Membership Marks can raise some interesting situations regarding trademark use and infringement.  Here are two interesting situations raised by membership marks that are registered USPTO trademarks:

  • Hells Angels, Example #1: The Hells Angels motorcycle club owns registered USPTO Reg No. 1136494  trademarks which are valuable membership insignia and the Hells Angels, like all trademark owners, have the right to pursue folks and businesses who use their trademarks without permission (ie trademark infringers).  In a recent NY Times article, the trademark attorney for the Hells Angels addressed the issue of pursuing trademark infringers by stating that, “[t]he intent is not just to punish the infringers but to educate the public that the Hells Angels marques are well guarded and not generic and that they must not be infringed upon.”  This statement relates to a strategy for dealing with other folks or businesses who use the Hells Angels trademarks without permission or who use confusingly similar trademarks.
  • Fresno State Bulldogs, Example #2: Fresno State University in California owns registered trademarks featuring their bulldog mascot.  Wearing merchandise produced by the University featuring the bulldog mascot and team name displays allegiance to the team – ie “fan membership insignia.”  A recent NY Times arUSPTO Serial No. 86050169ticle reported that it’s not only wholesome football fans who are flocking to buy and wear jerseys, shirts, hats and other merchandise produced and sold by the University bearing the registered bulldog trademark… but that a violent street gang has also adopted the Fresno State Bulldogs trademark and apparel as a gang symbol.  Evidently, the gang is purchasing and using legitimate University shirts, jerseys and other merchandise bearing the registered Bulldogs trademark as a gang symbol indicating gang membership.  Buying legitimate University merchandise is obviously not trademark infringement; although, it will be interesting to see how the University develops a strategy for dealing with upholding its brand image.  Unfortunately, the University’s registered trademark is now playing a double “membership” role… indicating two drastically different types of membership.

These two situations highlight two vastly different circumstances involving membership marks that are registered USPTO trademarks.  Reading NY Times articles on both situations described above that were printed only 20 days apart inspired this blog post on trademarks that are used as membership insignia.

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

vk@kasterlegal.com

For more information see, USPTO Registration 1136494 for one of the Hells Angels’ trademark registrations; USPTO Serial Number 86050169 for one of Fresno State’s trademark applications;  Pride and Peril of a Logo, published in the NY Times on 11/9/13 by M. Wollan and Despite Outlaw Image, Hells Angels Sue Often, published in the NY Times on 11/29/13 by S.E. Kovaleski, and the USPTO Trademark Electronic Search System (TESS) which is a tool for searching the USPTO’s database of registered trademarks and prior pending applications at http://tess2.uspto.gov; @iplegalfreebies and www.kasterlegal.com.

Keep Calm and Carry On (#$&!@!) a Trademark Dispute 4

A trademark dispute is brewing around the phrase “Keep Calm and Carry On.” Contrary to the intention of the phrase… kc01Thumbnailfolks in the UK are fighting over the exclusive right to own the phrase as a registered EU trademark.

The phrase originated as part of a government propaganda campaign in the UK during World War II (not very popular at the time) and has morphed into a marketing phenomenon within the last decade. Evidently, a long-forgotten propaganda poster was rediscovered by a bookshop owner in England thirteen years ago. Upon discovery, the bookshop owner framed and hung the poster in his shop, Barter Books… and customers began noticing the catchy phrase on the poster… and the bookshop owner began creating and selling merchandise. Then along came another Englishman who trademarked the phrase within the EU and began creating and selling more merchandise. (See Application No. 010494441). Hence the brouhaha begins.

Barter Books has challenged the EU trademark registration of the phrase “Keep Calm and Carry On”… claiming that the trademark registration is an unjust monopoly over a piece of history. The legal opposition to cancel the trademark registration should be decided soon. In the meantime… please remember to heed the warning to Keep Calm and Carry On.

For more information: Check out Barter Books at www.barterbooks.co.uk and www.keepcalmhome.com; EU Community trademarks can be searched at:http://oami.europa.eu; @iplegalfreebies and www.kasterlegal.com.

BY: Vanessa Kaster, Esq. LL.M

vk@kasterlegal.com

Do you have a right to use your own name as a Trademark? Reply

Are you seeing your name in lights? …or preceding the coveted “®” symbol for registered trademark? Using your own name as a trademark in business used to be a sacred, absolute right. Although, over time exceptions to the “absolute right” to use your own name as a business trademark increased and broadened (perhaps mirroring a rise in shady, dishonest business deals aimed at deceiving the public). Due to the public’s possible confusion as to the source of branded goods and services, the sacred and absolute right to use your own name as a trademark in business has been watered down… and melted away. Today the right to our your own name as a business trademark depends on what your name is… and who else is already using it in business as a trademark.

McDonald, Ralph Lauren, Marilyn Monroe, Macy and Seinfeld are a few famous names already being used as business trademarks… and even if you have the same name by birth… you may not have any luck using your own name as a trademark for your business.

The USPTO records show that an application for the trademark CHERRY SEINFELD (Serial No. 78163627 for “fruit smoothies and vegetable juices”) was rejected because of possible confusion and presumed association with JERRY SEINFELD. The USPTO rejection states that, “Jerry Seinfeld is so famous that a connection with the goods will be presumed. In this case, the name Jerry Seinfeld points uniquely and unmistakably to Jerry Seinfeld’ s personality.

(I’ve never heard of anyone checking the USPTO records for trademark availability before naming a child… although if you have a hunch that your offspring is going to hit it big and be a superstar… it might be worth a quick search at www.uspto.gov. I’m kidding… although it couldn’t hurt).

See also, Jerry Seinfeld’s USPTO trademarks Registration Numbers: 3526927, 3526926, 2524199, www.uspto.gov; @iplegalfreebies and www.kasterlegal.com.

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

vk@kasterlegal.com

 

 

The Naked Cowboy… wearing boots and a trademark Reply

It’s not optimal weather here in NYC today for wearing only a cowboy hat, boots, and briefs… in Times Square. But in better weather it’s likely that you have seen (or taken a picture with) the Naked Cowboy. He performs regularly in Times Square wearing only his cowboy hat, boots, briefs and a guitar. The words “Naked Cowboy” are emblazoned on the back of his briefs, on his hat and on his guitar…and the “$” is painted on his boots. Not only does he wear his brand… but he has also registered it as a trademark with the USPTO for Entertainment Services (Reg. No. 3792432). [Click here for photo]

In an attempt to challenge CBS for including a look-a-like character on their daytime show “The Bold and The Beautiful,” the Naked Cowboy sued CBS for trademark infringement. In an episode of the “The Bold and The Beautiful,” one of the characters appeared wearing only briefs, a cowboy hat, and boots while singing and playing the guitar…. and this prompted the Naked Cowboy to sue CBS. An interesting and critical detail to the lawsuit is that the words “Naked Cowboy” did not appear anywhere during the episode, the words were not on the look-a-like, nor were they spoken aloud. Nor did the look-a-like have “$” painted on his boots. Since the words “Naked Cowboy” were not used by CBS, the court held that there was no trademark infringement.

Additionally, the Naked Cowboy challenged the purchase from YouTube of adword advertising for the term “Naked Cowboy”… as well as the use of “Naked” and “Cowboy” as searching TAGS on YouTube. The court held that these actions did not violate the Naked Cowboy’s trademark because the words were not placed on any goods or containers or displayed in a way to indicate source or sponsorship.

If you were wondering if you would violate Trademark Law if you wore only a cowboy hat, boots and briefs… the answer is… NO. This is something you are free to add to your to-do-list. (you won’t violate Trademark Law, anyway)

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

vk@kasterlegal.com

The case: Naked Cowboy, d/b/a Naked Cowboy Enterprises v. CBS and Bell-Phillip Television – Case No. 11 Civ. 0942–BSJ–RLE. Opinion issued by the S.D.N.Y. on February 23, 2012. See also: http://dockets.justia.com; @iplegalfreebies and www.kasterlegal.com.

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.

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