CITYSTICKS & POPSICLE tale of two trademarks Reply

CITYSTICK picCITYSTICKS & POPSICLE are two different trademarks for tasty frozen treats.  These two trademarks are owed by two different companies and are both registered with the USPTO.  USPTO trademark registration grants the owner of each trademark exclusive rights to use the registered trademark when selling, advertising and promoting their frozen treats.  This means that the words CITYSTICKS & POPSICLE are off limits to any other person or company selling frozen treats.  For example, if another person or company uses either of the trademarks to sell or advertise competitive goods without permission of the trademark owner they may be infringing the trademark and might be asked by the owner to stop using the trademark (i.e. to cease and desist from infringing the trademark).

POPSICLE is the older of these two trademarks and it’s no coincidence that the CITYSTICKS packaging pictured to the left and below does not use the trademarked term POPSICLE.  Instead the packaging reads, “ice pops with personalities.”  (As you can see, I quickly ate half the CITYSTICKS ice pop before I thought to photograph it for this post.  It was tasty).CITYSTICKS USPTO screen shot

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

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

See also: more on the POPSICLE trademark and protecting exclusive trademark rights  at http://wp.me/p10nNq-3t, other posts on exclusive trademark rights at https://iplegalfreebies.wordpress.com/category/t-r-a-d-e-m-a-r-k/trademark-exclusive/; USPTO (U.S. Patent & Trademark Office) resources at www.uspto.gov; #trademark, #branding, #valueyourbrand @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

 

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.

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

For personalized legal services you are welcome to contact me at 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