Category Archives: *Trademark: Name

Use Google Alerts to monitor use of your trademarks, copyright & online presence Reply

*C O P Y R I G H T*, *T R A D E M A R K, *Trademark: Name, *Trademark: Use, *Vanessa Kaster

IMG_1761 copyUsing  a “Google Alert” is an easy way to monitor how your trademark, copyright, business name or storybook (ie your intellectual property) is being used or written about on the internet.  Google Alerts are FREE and help track the pulse of your online presence.

Setting up a Google Alert is simple.  Click on http://www.google.com/alerts and enter the trademark, name or term you would like to track.   Putting your entry in quotation marks is a good way to refine the search results.  Additionally, a string of search terms can be used to further refine the results.  For example enter the search term as:  “your trademark”  OR  “storybook title”  and  “your name”.

BY: Vanessa Kaster, Esq., LL.M.  –  vk@kasterlegal.com

 

USPTO Trademark Registrations can be updated due to New Technology Reply

*T R A D E M A R K, *Trademark: Exclusive, *Trademark: Name, *Vanessa Kaster

Cassette tapes are one example of outdated technology that has prompted the USPTO tocassette tape issue a new pilot program to allow the identification of goods and services in trademark registrations to be amended due to technology evolution. Many moons ago it was important to have a trademark registration for the sale of music that included the sale of music on cassette tapes.  However, today the sale of music on cassette tapes could become obsolete due to the evolution of technology.  The sale of music has shifted toward digital formats and streaming services.

Having this new pilot program allowing for amendments to identification of goods and services in trademark registrations due to technology evolution is important, because, it allows trademark owners/brands to keep their trademark registrations alive longer.  Otherwise, extending the life of a USPTO trademark registration could be impossible due to changes in how registered trademarks are used (trademark use corresponds to the types of products or services a trademark is used with).

For example: If I obtained a USPTO trademark registration to use my logo to sell music on cassette tapes nineteen years ago and now I no longer sell music on cassette tapes but instead use my logo to sell a music streaming service, the pilot program could be a lifesaver for my USPTO trademark registration.  USPTO trademark registrations have ongoing filings due throughout the life of the trademark and without this pilot program, changes in how a trademark is used (music streaming vs. music on cassette tapes) can cancel a USPTO trademark registration.  As a result a new USPTO trademark application would have to be filed to cover music streaming.

Currently, requests for revising trademark registrations due to changes in use based on new technology requires filing two forms with the USPTO and a processing time of approximately 3-4 months. The cost is $200.  (Each form has a $100 fee). (USPTO fees are subject to change)  USPTO Announcement of Technology Evolution Pilot Program 

The sports car in the photo above had a tape deck!

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

vk@kasterlegal.com

See also: USPTO website at https://www.uspto.gov/trademarks-application-process/filing-online/petition-forms; USPTO website for sample G&S that have been revised https://www.uspto.gov/trademark/trademark-updates-and-announcements/proposed-amendments-identifications-goods-and-services; @iplegalfreebies and www.kasterlegal.com.

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

*T R A D E M A R K, *Trademark: Infringers, *Trademark: Name, *Trademark: NEW BIZ, *Vanessa Kaster

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.

Trademark – in a stylized font Reply

*T R A D E M A R K, *Trademark: Exclusive, *Trademark: Name, *Vanessa Kaster

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.

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

 

 

Wholesome trademark image…. An Apple A Day Reply

*T R A D E M A R K, *Trademark: Name, *Vanessa Kaster

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.

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.

Using the Registered Trademark Symbol: ® Reply

*T R A D E M A R K, *Trademark: Exclusive, *Trademark: Name, *Trademark: NEW BIZ, *Trademarks: TM & SM, *Vanessa Kaster

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.

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.

Trademarks – What Types Of Trademarks Are There? Reply

*T R A D E M A R K, *Trademark: Exclusive, *Trademark: Name, *Trademark: Search, *Trademark: Use, *Vanessa Kaster

For fun, here is a list of some types of trademarks.  Are there more types than you would have guessed?

  • Logo
  • Numbers
  • Slogan
  • Nickname or abbreviation
  • Internet domain
  • Words
  • Packaging
  • Character
  • Color
  • Distinctive Building Shape

The key to “being a trademark” is “being USED as a trademark.”  One way to explain this is to ask if the trademark is being used to identify and distinguish goods and services of a particular company or brand. For example, does the trademark enable consumers to identify the company that makes the goods?  Do you notice the trademark on the items or in advertising? Does the trademark distinguish the goods of one producer from the goods of competitors?

Here are examples of each of the types of trademarks listed above:

  • Logo: NIKE SWOOSH                                                                                          TM Types
  • Numbers: 1664   (Kronenbourg beer)
  • Slogan:  A DIAMOND IS FOREVER   (De Beers)
  • Nickname or abbreviation: VW   (Volkswagen)
  • Internet domain: GODADDY.COM
  • Words: GROUPON or APPLE
  • Packaging: COCA-COLA BOTTLE
  • Character: GEICO GECKO
  • Color: TIFFANY’S BLUE JEWELRY BOX
  • Distinctive Building Shape: APPLE STORE

See also: Another post containing instructions on “how to run a basic search on the USPTO (US Patent and Trademark Office) trademark database” at http://wp.me/p10nNq-B; McCarthy on Trademarks Vol 1, Ch 7[B]; the USPTO website at www.uspto.gov, the trademarks listed above: NIKE SWOOSH (USPTO Reg. No. 2107521 and others); 1664 Kronenbourg (USPTO Reg. No. 2702301, 3282436 and others); A DIAMOND IS FOREVER (USPTO Reg. No. 337133); GODADDY.COM (USPTO Reg. No. 2945200, 3605479 and others); GROUPON (USPTO Reg. No. 3685954 and others); APPLE (USPTO Reg. No.4088195 and others); COCA-COLA bottle (USPTO Reg. No. 4200433 and others); GEICO GECKO (USPTO Reg. No. 3398021 and others); TIFFANY’S BLUE BOX (USPTO Reg. No. 2184128 and others); APPLE STORE (USPTO Reg. No.4021593); @iplegalfreebies and www.kasterlegal.com.

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

vk@kasterlegal.com

 

Trademark: to keep bands called THE SUPREMES from popping up in every State Reply

*Copyright: Music, *T R A D E M A R K, *Trademark: Name, *Vanessa Kaster

“Yeah, I know and can appreciate what you do (as a trademark attorney working with musicians). Back in the day, different bands called THE SUPREMES were popping up in every State. You can’t have that.” A jazz musician friend said this to me the other day and it was music to my ears.

from the USPTO online database

from the USPTO online database

This is right on point. For a band like THE SUPREMES, who became the most popular female group of the Sixties, owning the trademark of their name grants the trademark owner (Motown Records and now Motown Records’ successor) the exclusive right to use the name “THE SUPREMES” for various music performance and recording services. [USPTO Reg. No. 1003076]. Owning the trademark rights in the name of your band grants the trademark owner the exclusive right to use the trademarked band name for specific uses – like music performance and recording services. This can be a tool to keep other bands or music groups from performing under the same name or a confusingly similar name without permission of the trademark owner.

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

vk@kasterlegal.com

See also: the USPTO TESS data base at http://www.uspto.gov/; a copy of the USPTO Certificate of Trademark Registration for THE SUPREMES, USPTO Reg. No. 1003076; The Supremes bio at http://rockhall.com/inductees/the-supremes/ ; Baby Love on YouTube at http://www.youtube.com/watch?v=23UkIkwy5ZM; @iplegalfreebies and www.kasterlegal.com.

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

*T R A D E M A R K, *Trademark: Infringers, *Trademark: Name, *Trademark: Popsicle, *Vanessa Kaster

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

 

 

Turkey trademarks – don’t run a-fowl of descriptiveness Reply

*T R A D E M A R K, *Trademark: Descriptive, *Trademark: Name, *Trademark: NEW BIZ, *Vanessa Kaster

We all know and love many popular TURKEY trademarks… like WILD TURKEY and TURKEY HILL… and notice that these TURKEY marks are used on products that have nothing to do with turkeys. For example:

  • WILD TURKEY is trademarked for whiskey, distilled spirits, and liqueur
  • TURKEY HILL is trademarked for ice cream cones and other frozen confections

By comparison, popular trademarks that are used to sell turkeys don’t use the word ‘turkey’ in their mark. For example: BUTTERBALL, HONEYSUCKLE WHITE… and my personal favorite CAJUN GROCER (that sells delicious turducken – http://www.cajungrocer.com).

THE SECRET? Words that describe the goods and services that they sell are descriptive and are weak trademarks. In fact, it can be difficult and sometimes impossible to register a descriptive mark with the USPTO for trademark protection. (There is a sliding scale for measuring descriptiveness. Some terms are more descriptive than others. This example of trademarking the word TURKEY (as a brand for turkey products) is a highly descriptive use of the word that overlaps with it’s dictionary definition). The reason behind blocking trademark registration for descriptive terms is logical. Since trademark registration grants exclusive use to the owner… and dictionary words are free for us all to use…. USPTO trademarks are not registered for descriptive terms because this would block words from being used in commerce (by competitors) to describe common goods and services.

Back to the trademarks listed above, the popular WILD TURKEY trademark has a fairly strong monopoly on using the word TURKEY to sell whisky and other alcohol products. Similarly, TURKEY HILL is a popular trademark with a fairly strong monopoly on using the word TURKEY to sell ice cream.

When creating brands for your business and registering trademarks… remember not to run a-fowl of trademark descriptiveness. Enjoy your Thanksgiving!

See also www.uspto.gov; @iplegalfreebies and www.kasterlegal.com.

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

vk@kasterlegal.com