Tuesday, January 30, 2007

2 More Press Releases

Surfing for trademark news shows two more trademark press releases.

The Associated Press sent over its wires the press release from the Lawrence County Tourist Promotion Agency's release regarding its FIREWORKS CAPITAL OF AMERICA mark. It is noted that the mark is registered on the Principal Register under Trademark Act Section 2(f), 15 U.S.C. §1052(f). That is, the mark has acquired distinctiveness or secondary meaning.

Actually, the Trademark Examining Attorney suggested that the mark be registered under 2(f).

Of course, the release contains some factual errors, such as "the Lawrence County Tourist Promotion Agency has obtained the trademark for the "Fireworks Capital of America" from the U.S. Trademark Office." You don't obtain trademark rights through registration. You get it through use. But I do like this quote from the agency's president, Robert Del Signore, "Our organization is extremely conscious of the obligation we have to promote the brand while maintaining the dignity it deserves."

The second press release is Benefit Informatics, Inc.'s registration for BENEFIT MANAGER. This mark is also registered under 2(f). The Trademark Examining Attorney rejected the application because it is merely descriptive of the services. After some argument, the applicant finally accepted registration under 2(f).

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First video post - Running a TMBC Search

Well now I'm just having fun. Enjoy (or not) this first video post on how to run a tmbrandingcap search.

I did this because no matter how much you explain things in writing on how to do something, sometimes it's just easier seeing the process. Especially when you're trying to say what link to press when there are so many links on a page. And that's what you find on the PTO website, a plethora of links. I would link directly to the search page, but unfortunately, when you link to the search page on the PTO website, you sometimes get the message that the session has expired.

Anyways, I hope you enjoy this first video post. Hopefully I'll do more in the future.

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Friday, January 26, 2007

Is Stoney River Confusingly Similar to Rocky River?

That's what O'Charley's Inc. claims in it's lawsuit against Darden Resaurants Inc. O'Charley's claims that Darden's Rocky River Grillhouse (below) infringes upon its trademark Stoney River Legendary Steaks (top). This all reported in The Tennessean.

Personally I wouldn't be confused, but I am not the standard. ; )

Despite the outcome, this case shows the importance of having a name cleared before actually using it and incurring the expense involved in creating and marketing the name. (Please note that I do not know whether or not Darden conducted a trademark search). While Darden may have the financial wherewithal to defend the suit, I suspect that most mom and pop restaurants would not. They would either have to change their names or divert funds in their defense.

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Thursday, January 25, 2007

Trademarks Are The Real Competitive Advantage

Marketers and trademark attorneys must read Professor James Conley's article Trademarks, Not Patents: The real competitive advantage of the Apple iPod.

S/N 78661217

Here's an excerpt:

Our findings overwhelmingly support the conventional wisdom that design decisions cast a big shadow on the commercial success of the product over its lifecycle. But more recently, we have found that some firms know how to build brand identity through great design, and they understand how to leverage and secure critical design elements and cognitive touch points [shape, color and sound] of the user experience through non-traditional marks. In the process, they build strong, transferable brand identity throughout the product lifecycle that can be leveraged in future offerings.

This has led us to consider the possibility that the cognitive touch points of the user experience can be reconciled—and secured or monopolized—as unique brand elements through non-traditional marks. Marks, unlike patents or copyrights, never expire if used properly. Registered design elements that serve as a brand foundation are therefore indefinite forms of competitive advantage.

One minor beef with the article is that it seems to imply that trademark registration is the basis for protection. For example, Professor Conely says "to be clear, Apple's trademark, if successfully registered, will not give them the kind of functional invention or ornamental exclusivity that one gets with of a patent." As we well know however, trademark rights are obtained through use.

Regardless, I found the article well written and informative. It illustrates nicely how a company can employ the different forms of intellectual property to their competitive advantage.

See also Professor Conley's Intellectual Property Strategy and Value Articulation presentation to the Management Circle Patente 2005.

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Mattel most active corporate user of TEAS

According to this article from the USPTO, Mattel, Inc. is the most active user of the PTO's Trademark Electronic Application System (TEAS). The same article also announced TEAS' one-millionth electonically filed trademark application by Donald Junck for his BAIT CRAFT trademark. Congratulation to both Donald and Mattel.
Digging a bit deeper, Mattel filed 780 application in 2006 (search strategy: 2006????[fd] and (mattel)[on]). Notably, 778 were filed as intent-to-use applications (search strategy: 2006????[fd] and (mattel)[on] and (1b)[ob]).

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Trademark Issues for Real Estate Developers

Article with the same title from the good folks at the Canadian Trademark Blog.

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How Sony BMG Prevents Online Brand Abuse

Free online webinar from law.com entitled "How Sony BMG Prevents Online Brand Abuse."

Date: January 31, 2007
Time: 1:00 pm, Eastern Standard Time


Please join MarkMonitor for a complimentary educational webinar featuring Sony BMG. During this Law.com-hosted event, you will hear about the latest trends and best practices in establishing, maintaining and protecting your brands on the Internet.

This live event will be moderated by Law.com and will conclude with a highly-collaborative Q&A session with our panelists.

You will learn about:
- Establishing strong identity ownership rights globally
- Monitoring broadly for trademark abuse on the Internet
- Surfacing online channel infringements
- Detecting and prioritizing the most serious abuses
- Responding rapidly, appropriately and cost-effectively to each type of abuse

Colbert on AT&T

Funny clip from the Colbert Report on the rebranding of Cingular to AT&T. Hat tip to Cultural Branding.

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Microsoft claims Vista light rays as its trademark

With the new look and feel of Microsoft's Vista, it's not surprising that it is claiming the background for the operating system as it's Trademark.

The following search pulls up other operating system marks claimed by Microsoft: 2006????[fd] and (microsoft)[on] and (2)[md] and ("operating system")[gs]

Serial No. 77068882

Serial No. 7706880

Serial No. 78890187

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Wednesday, January 24, 2007

Oh Snap! That's Pretty Cool

New to the TMBC is the Snap Preview Anywhere. It's a pretty cool tool. When you roll over a link, you'll see a preview window of the outgoing site.

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Marketing Prepares Your Prospects

Excellent post from Chris Brown over at Branding & Marketing on the role of marketing.

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Tuesday, January 23, 2007

Tyra Banks, the next Oprah and Martha Stewart

Just read Vanity Fair's piece on Tyra Banks (sorry, no online story).

A MODEL MOGULWith two TV hits—America's Next Top Model and her eponymous talk show—Tyra Banks has proved she's not just a pretty face. Nancy Jo Sales gets the former supermodel talking about guys, Oprah, and her ridiculous paycheck. Photographs by Michael Roberts.

It's a nice story, which of course got me wondering whether she's applied to register her name as a trademark. She has. Tyra, or more properly Ty Loke, LLC, has 23 pending applications. I haven't looked through them all, but all of the ones I've seen are intent to use applications. Her applications range from frozen confections to kitchen wares to furniture to bags.

So next time you walk down your store isles and see Tyra Banks branded goods, remember you read it here first.

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Branding Diseases

Checkout this CBS Sunday Morning piece regarding one piece of the Brand Institute's business, which makes up 20% of its overall business, of coming up with new names for diseases. And the client that's paying to re-name diseases? The drug companies. The key, according to the Brand Institute's President, is making up a name that describe the symptoms in a nice way ... making it okay to seek help preferably with the client's drugs. According to CBS, it works. For every $1 spent in advertisements, the drug companies make $4.

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Another TM Registration Press Release

SaVi Media Group Receives Registered Trademark for "DynoValvePro(R)"

Related: Turning Trademarks Into News

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Ringtones and golf

The Golf-Patents blog has a nice follow-up post on my mark drawing codes post.

Mark Drawing Codes

As far as I can tell, there are six Mark Drawing Codes that the PTO classifies submitted drawings:


Number 6 is an interesting code. The search (6)[md] pulls up a surprisingly low 317 records. But it does turn up some familiar tones, such as the registrations for the Intel chimes, which "consists of a five tone audio progression of the notes D FLAT, D FLAT, G, D FLAT and A FLAT," and the ESPN chimes, which "consists of the following six musical notes played in a fast tempo: "D, C sharp, D, D, C sharp, D"."

I expect that the popularity of ring tones may vary well increase the number of marks with the No. 6 mark drawing code. Here's two ring tone applications: the sound of a childlike human giggle and THE SOUND OF A GOLF CLUB HITTING A GOLF BALL, THE SOUND OF THE GOLF BALL LANDING ON A PUTTING GREEN, AND THE SOUND OF THE GOLF BALL FALLING INTO THE CUP.

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Monday, January 22, 2007

Mall Marks III

Up in the Great White North, the Canadian Trademark Blog noticed a recent uptick of real estate developers applying to register mark of individual properties, such as malls.

A developer’s business or corporate name normally has a shelf life that’s longer than any single development. In many cases the name of the developer is featured as much (or more prominently) in the marketing of each development than is the name of the development itself. Because of this, the protection of such corporate or business names is likely as or more important than the protection of marks for specific development projects, particularly where the marks for development projects are not distinctive.

As creative marketers begin to shake up the industry with more interesting and distinctive marks for specific projects, the need to protect these distinctive project marks will no doubt increase.

It looks like there's a similar thing going on down here in the states as well. Even properties developed years ago are now subject to trademark applications and registrations. For example, the Briarwood Mall in good ol' Ann Arbor, Michigan was first used in 1973, but the trademark application was filed on June 17, 2005, nearly 32 years after the mall opened. The Mall at Tuttle Crossing, which is about 10 minutes away from me in Dublin, Ohio, was first used in 1997. The application was filed on April 18, 2005 (by the same attorney that filed the Briarwood Mall application).

So what's good advice up north is good advice down south. As real estate developers come up with distinct names for their individual projects, they should consider protecting those marks. Also important is to conduct a search before you adopt the mark.

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Mall Marks II

Always looking for different angles to stories, my Mall Marks post got me to think about malls and trademarks. I wanted to see what other marks General Growth Properties have submitted to the PTO. The search ("general growth properties")[on] pulls up 36 records. However, companies such as GGP typically create separate entities to own and operate their malls. I noticed on the N Natick application that the attorney for GGP shares the same address for GGP. Therefore, he's probably in-house and files applications for all of GGP's marks. So I searched for all of the applications or registrations where Michael McVickar was the attorney of record. The search (Michael)[at] and (McVickar)[at] pulls up 114 records. A sampling of records show: that GGP-MINT HILL L.L.C. owns THE BRIDGES AT MINT HILL; GGP Ala Moana L.L.C. owns HO'OKIPA TERRACE; Landmark Mall L.L.C. owns LANDMARK VILLAGE; etc. All these companies share the same address with GGP.

So, there's a competitive intelligence lesson in the above exercise. Faced with finding marks of Company A which tends to apply to register marks using various companies, try finding a common element between them, such as common address or attorney. If you find a common element, you'll probably be able to find more marks then just searching for Company A.

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Mall Marks

Saw this January 15, 2007 Natick Bulletin & Tab article about how some Natik town folk are concerned about General Growth Properties application to register the N NATICK (and design) mark for its Natick Mall property. The applied for Goods and Services include: Advertising services, namely, promoting the goods and services of others by disseminating advertising and promotional material in Class 35; Real estate leasing services for commercial and residential communities in Class 36; and Real estate property development services in Class 37.

According to the article:

Natick officials and some residents have become increasingly uneasy with the mall's efforts to market itself simply as "Natick" instead of as the Natick Mall. They say the trademark protection would link the name "Natick" more closely with the mall, instead of the community.

"I don't want to use the term `identity theft,' but it's not Natick," said Selectman John Connolly. "It's a mall."

Natick officials were even considering opposing the registration. Apparently, the uproar got to GGP as it filed for an express abandonment on January 18. Probably a wise move given that the application was an intent to use application. No need to alienate your customers over a mark you haven't yet used.

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Welcome to the PTO Website You Must be 18 or Over to Enter

Isn't it ironic that the PTO will refuse to register a trademark based on Section 2(a) because the mark consists of or comprises immoral or scandalous matter, yet will display specimens of arguably immoral or scandalous matter? Not that I'm complaining, but applicants for marks of the "adult entertainment" variety frequently submit specimens consisting of screen shots of the applicant's adult entertainment websites. The more discrete applicants will put black bars over the private areas. However, some applicants (and their attorneys) don't even make the effort. And the PTO will publish the uncensored specimen.

I'm not saying that the PTO should remove the specimens. I think it's great that the PTO is putting up complete trademark files. It's a great help for the trademark practitioners and helps us counsel our clients more effectively and efficiently. I just wanted the reader to be aware that there may be some offensive photos on the PTO website.

For example, run this search ("adult entertainment")[gs] in TESS, then check out the specimens in TDR to find uncensored specimens. {update: video explanation on how to run search}

I can envision the following scene:

HR: Mr. Smith, we've noticed that you've been visiting some, um shall we say, inappropriate websites lately.

Mr. Smith: Oh, you mean porno sites?

HR: Yes. And we just wanted to let you know that your behavior will not be tolerated here at Big Firm. We're placing a filter on your internet account, and any further attempts to visit porno sites will result in your termination.

Smith: [switching into Dick Vitale voice] Come on baby. Don't you know I'm the TATTPS?

HR: The what?

Smith: The Trademark Attorney to the Porn Stars! You better get a TO on the termination talk. The big guy approved my porn surfing. I need to visit these sites to gather specimens of actual use.

HR: Specimens? That sounds disgusting.

Jeez. Sounds like I could write dialog for some of the aforementioned applicants. Anyways, you get the picture. Obviously, the names in the above dramatization have been generisized to protect the innocent.

By the way, my posting of this story follows the tried and true method of the mainstream news method of "sex sells." We'll see if the TMBC get a spike in readership. ; )

Also, I've always wanted to start a new meme. Maybe surfing for porn on the PTO website will be a new meme, and we can call it PronTO for Pron Trademark Office. The term "pron" is sometimes used for "porn," which I believe was an early attempt to circumvent spam detection programs.

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Wednesday, January 17, 2007

More good learnings over at The Trademark Blog

See The Trademark Blog's post regarding Section 8 and the iPhone dispute.

Zol is slang Marijuana Cigarette

[Slang list here] But it's also the web address for Zionline, a website for Christians. It's also the name for Zimbabwe Online.

What's the trademark lesson here? Actually, I didn't know that zol is slang for marijuana cigarettes until I read Cherryflava's post. But the lesson is, when you're coming up with the a brand name, make sure that the word doesn't have any negative meanings that you would not want associated with your brand.

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Tuesday, January 16, 2007

Turning Trademarks Into News

When a government agency, such as the Patent and Trademark Office, accepts registration of your trademark, consider making news of that fact. That's what MediaMiser Ltd. of Canada did when the Canadian Intellectual Property Office registered MediaMiser's trademark TURNING NEWS INTO KNOWLEDGE.

It's actually a common practice, issuing press releases when you register a mark.

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Monday, January 15, 2007

Good For You ... you're number 1

Drum roll please. The very first trademark application for 2007 is for the mark G.F.I. GOOD FOR YOU for the following goods and services:

IC 025. US 022 039. G & S: Camp shirts; Dress shirts; Golf shirts; Knit shirts; Night shirts; Open-necked shirts; Pique shirts; Polo shirts; Shirt fronts; Shirt yokes; Shirts; Short-sleeved or long-sleeved t-shirts; Short-sleeved shirts; Sleep shirts; Sport shirts; Sports shirts; Sports shirts with short sleeves; Sweat shirts; T-shirts; Wind shirts. FIRST USE: 20060401. FIRST USE IN COMMERCE: 20060401

And what time was the application filed? 12:06:13 a.m.

That's mighty early on a day the applicant's attorney should have been partying. However, there's probably some sort of badge of honor to be the first applicant of a new year.

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Friday, January 12, 2007

Fisking C|Net

Excellent, excellent fisking of Tom Krazit's article "How Apple could fight Cisco" by Marty Schwimmer of The Trademark Blog fame. To be fair to Mr. Krazit, he's not a trademark attorney (at least as far as I can tell).

Tuesday, January 9, 2007

Happy 1 year anniversary to Howard Stern

Today marks Howard Stern's one year anniversary on Sirius Satellite Radio. And to commemorate here at the tmbc is a list of Stern related brands:

Serial Number Reg. Number Word Mark Check Status Live/Dead
1 75292312
2 75292311 2142868 HOWARD STERN TARR LIVE
3 75292310 2142867 HOWARD STERN TARR LIVE

Serial Number Reg. Number Word Mark Check Status Live/Dead
2 73807145 1684694 BUBBA "THE LOVE SPONGE" TARR DEAD

Serial Number Reg. Number Word Mark Check Status Live/Dead
1 78943158
2 78943154
3 78943148
4 77024941
5 76297377
6 76349502
7 76335417
8 76297912
9 76297378
10 76297379
11 75838489
12 75796898
13 75796875
14 75838490 3121059 GET SIRIUS TARR LIVE
16 75796884 3114506 SIRIUS TARR LIVE
17 75778346 3114505 SIRIUS TARR LIVE
18 75927001
19 75926860
20 75926859
21 75927005
22 75927004
23 75927003
24 75979592 2481900 SIRIUS TARR LIVE
25 75778344
26 75777847
27 75769598 3071291 SIRIUS TARR LIVE

Serial Number Reg. Number Word Mark Check Status Live/Dead
1 76471577
2 76443206
3 76444958 2876144 SYBIAN WORLD TARR LIVE
4 76444956
5 73715406
6 73715405

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Saturday, January 6, 2007

The Name Game - tmbc style

Anantha over at Brandnama has a nice post re: naming the first brand you can think of for each letter of the alphabet. So here goes my attempt:

Frank Gates
Go Daddy
Minute Maid
People Magazine
Tim Hortons
Wolverines (as in the University of Michigan Wolverines)

Y stumped me for a while. I don't know why I didn't choose Yahoo!

Update: Q also stumped me. The first thing I could think of was Qube, which for folks living in Columbus Ohio, was a Time Warner experiment for an interactive cable system. Since it no longer exists, I decided not to list it. What I finally thought of is Qubo. My daughter watches the channel on Saturday mornings. And talks about it alot. That's why I thought of it.

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Thursday, January 4, 2007

Law review article on dead celebrities and IP law

What a way to debut a new "feature" or "label" on celebrity trademarks with an link to a 1993 law review article in the Berkely Technology Law Journal. I had intented to debut the label with a post on celebrities that have filed and registered their names as a trademark with the United States Patent and Trademark Office, but what they hey, a post with the phrase "dead celebrities" was too hard to pass up.

The law review article is "Casting Call at Forest Lawn: The Digital Resurrection of Deceased Entertainers - a 21st Century Challenge for Intellectual Property Law" (PDF, text) by Joseph J. Beard.

By the way, in 1993, I was a 1L in law school.

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Monday, January 1, 2007

Trademark Cheat Sheet

Throughout this blog you'll see statutory references such as 1(b), 2(d), etc. Sometimes I may forget to say what those mean, so here's a little cheat sheet:

Statutory Basis for a Trademark Application:
1(a) - Actual Use (15 USC §1051(a))
1(b) - Intent-to-Use (15 USC §1051(b))
44(d) - Foreign application for same goods/services (15 USC §1126(d)(1))
44(e) - Foreign registration for same goods/services (15 USC §1126(e))

Rejections based on:
Section 2 - 15 USC §1052
2(a) - immoral, deceptive, or scandalous matter
2(a) - disparagement or false connection
2(b) - flag, coat of arms, or insignia or the United States, a State, municipality or foreign nation
2(c) - name, portrait, or signature identifying a particular living individual except by his written consent
2(c) - name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow
2(d) - likelihood of confusion
2(e)(1) - mere descriptiveness
2(e)(1) - deceptively misdescriptive
2(e)(2) - primarily geographically descriptive
2(e)(3) - primarily geographically deceptively misdescriptive
2(e)(4) - primarily merely a surname
2(e)(5) - functionality