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

 

 

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.

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.

Trademarks – What Types Of Trademarks Are There? Reply

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-BMcCarthy 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.

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

 

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

“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.

For personalized legal services you are welcome to contact me at 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

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.

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

 

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

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.

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

 

Stamp of trademark approval for dripping wax seal on Maker’s Mark Bourbon 1

Did you realize that the red dripping wax seal on bottles of Makers’s Mark is a registered trademark of the brand?  Well, it is…  and the US Court of Appeals for the 6th Circuit (in Kentucky) upheld the famous trademark earlier this month.

The trademarked red dripping wax seal (US Registration No. 1370465) was challenged when tequila maker Jose Cuervo started using a similar red dripping wax seal on bottles of premium tequila.  Cuervo’s use of a red dripping wax seal prompted a lawsuit to determine the enforceability and validity of the trademarked seal.  In the case, Cuervo challenged the registration of the red dripping wax seal on the basis of “functionality.”  Interestingly, under US Trademark law, a registered mark may be found invalid if it is “functional.”  A trademark is functional “if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.”  To evaluate functionality, courts consider if  “it would be difficult or costly for competitors to design around” the mark (comparable alternatives test) or if competitors are at a significant disadvantaged by being prevented to use a red dripping wax (the effective competition test).  In this case the courts held that the registered trademark was not “functional” and as a consequence is an enforceable trademark.

(The court also considered and evaluated several other factors including: the strength of the mark; the length of time the mark had been registered, relatedness of the two parties goods, assessed similarity of the wax seals used by both parties and actual confusion).

The court held that the trademarked red dripping wax seal was enforceable.  (Also included in the court’s opinion is an impressively romantic history of Kentucky Bourbon.  Including fun facts about Maker’s Mark… for example, did you know that the red dripping wax seal was first applied using the family deep frier?)

See also the case: Maker’s Mark Distillery, Inc. v. Diageo North America, Inc. , 10-5819 (6th Cir. 2012); http://www.ca6.uscourts.gov/opinions.pdf/12a0126p-06.pdf; http://courtlistener.com; www.uspto.gov; @iplegalfreebies and www.kasterlegal.com.

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

For personalized legal services you are welcome to contact me at 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.

For personalized legal services you are welcome to contact me at 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)  and www.kasterlegal.com

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

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