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                                                                                         
• 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

 

WORLD CUP – National Teams & Big Brands out on the field Reply

While watching the US play Ghana yesterday in the World Cup, I couldn’t help but notice that in addition to the rivalry between the two national teams on the field… there was also a competition between famous brands on the field too.  Adidas, Nike and Puma were the three famous brands and trademarks that I noticed all over the field, players, officials, equipment and gear.  Adidas trademarks were on the game ball, officials and frequently appeared on the stadium’s sidewall advertising. Nike’s swoosh trademark was on the US jerseys and many cleats.  Puma’s leaping-cat trademark was prominently featured on Ghana’s jerseys.

Adidas, Nike and Puma are all famous brands.  Nike owns nearly 300 USPTO trademarks including their famous swoosh.  Adidas owns close to 150 USPTO trademarks including their famous three stripes.  Puma also owns many USPTO trademarks featuring its leaping cat.

Flashing trademarks out on the field, and World Cup endorsements is big business.  According to a recent Bloomberg Businessweek article, Nike is the largest sportswear company in the world, with $25 billion in revenue.  Adidas (based in Germany) is a close second with $20 billion in revenue. Combined, these two brands control 70 % of the market for soccer gear.  Soccer is a big focus for Adidas and the brand has a long history with soccer sponsorship, including sponsoring FIFA since 1970.  Nike joined the soccer sponsorship game more recently in 1994 when the US hosted the World Cup.

Enjoy watching the rivalries play out during the World Cup this summer!  National Teams (and the sponsoring brands) will be giving it their all.

Great game last night. Thrilling 2-1 victory by the US over Ghana.

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

vk@kasterlegal.com

See also FIFA stats on the US v Ghana game at http://www.fifa.com/worldcup/matches/round=255931/match=300186512/index.html#nosticky; the USPTO TESS data base at http://www.uspto.gov/; Bloomberg Businessweek article by Brendan Greeley, titled “Shootout Can Nike Beat Adidas at Soccer?”; Scores online at http://www.fifa.com/worldcup/index.html and http://msn.foxsports.com/soccer/schedule?competition=12&season=2014; @iplegalfreebies and www.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

How you NAME your business is important Reply

Run a simple USPTO search to see if anyone else has trademarked a business name similar to yours. More…