Thursday, March 29, 2007

I ♥ NC opposition dismissed

The News & Observer reports that the New York State Department of Economic Development's opposition to the registration of "I ♥ NC" was recently dismissed by the Patent and Trademark Office. NYSDED opposed stating that the I ♥ NC mark is likely to cause confusion with its I ♥ NY mark. Unfortunately for NYSDED, it didn't properly introduce into the record its priority of use of the I ♥ NY mark.
The TTAB stated that there are two aspects to a likelihood of confusion claim: priority and likelihood of confusion. The TTAB didn't get to the issue of likelihood of confusion because NYSDED failed to prove that it has made use of any trademarks and thus it cannot show priority of use.

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Tuesday, March 27, 2007

Blawg Bracket

Inspired by the Brand Autopsy's Marketing Bloggers Bracketology post, I decided to put up a bracket for blawgs, i.e. legal blogs. This is for entertainment purposes only, so please, no betting.

Anyways, the blogs that I included are those that I'm aware of, or of blogs that were linked to from other blogs. Of course, I'm certain that I've excluded some very fine law blogs, and to those blogs I apologize.

I determined ranking by way of the number of links each blog has on Google. For example, the number one ranked blog, The Volokh Conspiracy, has 39,800 links to it. Enjoy.

UPDATE: By the way, I purposely left out TMBC, which would have been a 16 seed in the East with 144 hits. If that were the case, I'm sure I would have been thoroughly trounced by Professor Bainbridge.

Blawg Hits Seed
The Volokh Conspiracy 39800 1M
lessig blog 26400 1W
Professor Bainbridge 19700 1E
Balkinization 14500 1S
Over Lawyered 11800 2M
Scotus blog 11300 2W
Freedom to Tinker 10400 2E
PrawfsBlawg 8140 2S
Bag and Baggage 7710 3M
Ernie the Attorney 7440 3W
Point of Law 7030 3E
Concurring Opinions 7010 3S Law Blog 6720 4M
Be Spacific 6240 4W
Copyfight 5520 4E
LawMeme 5090 4S
JURIST - Paper Chase 4770 5M
Dennis Kennedy 4680 5W
Susan Crawford blog 4650 5E
The Patry Copyright Blog 4000 5S
Above the Law 3720 6M
Adam Smith, Esq. 3610 6W
Blawg Review 3430 6E
The Legal Reader 3410 6S
The Trademark Blog 3400 7M
Sports Law Blog 3370 7W
Patently O 3130 7E
May it Please the Court 3100 7S
Appellate Law & Practice 2620 8M
Silicon Valley Media Law Blog 2370 8W
Arbitrary and Capricious 2290 8E
bIPlog at 2020 9S
I/P Updates 1970 9E
Technology & Marketing Law Blog 1840 9W
GrepLaw 1830 9M
Law Pundit 1790 10S
IPKat 1720 10E
Likelihood of Confusion 1520 10W
The Barrister Blog 1410 10M
f/k/a … 1300 11S
InHouse Blog 1290 11E
Internet Cases 1150 11W
Consensus at Lawyerpoint 1100 11M
Info/Law 983 12S
Counterfeit Chic 850 12E
Florida Intellectual Property Law Blog 800 12W
The Invent Blog 784 12M
271 Patent Blog 748 13S
The TTABlog 663 13E
43(B)log 626 13W
Mass Law Blog 325 13M
Have Opinion, Will Travel 320 14S
Academic Copyright 301 14E
The Becker-Posner Blog 234 14W
Guiding Rights Blog 223 14M
Erik J. Heels 184 15S
Now, Why Didn't I Think of That? 181 15E
Inside the Firm of the Future 175 15W
Human Law 160 15M
Photo Attorney 148 16S
Canadian Trademark Blog 129 16E
ICANN Watch 82 16W
Seattle Trademark Lawyer 74 16M
Likely to be Confused 41 Bubble
Legal Fixation 36 Bubble
Cobalt 32 Bubble
Patry Treatise Blog 23 Bubble
Golf Patents 22 Bubble
Bridging the Gap 0 Bubble

Katonah and Martha Stewart Update

A few months back, Marty Schwimmer posted about the uproar in Katonah, NY about Martha Stewart's attempt to register the mark KATONAH for indoor lighting, paints, home furnishings, and furniture.

The town expresses concern as to the effect that Martha Stewart's ownership of the KATONAH trademark. However, there will be no effect. The local businesses will continue to be able to truthfully claim that they are located in Katonah, even the furniture stores. They, like us, however, will not be able to use KATONAH as a trademark for the goods covered by Stewart's registrations. So, in the end, it's a good thing.

Now comes this news report about the Katonah Village Improvement Society's vote to "authorize its trademark committee to take whatever action it deems necessary regarding Martha Stewart Living Omnimedia's proposals to use the hamlet name for lines of furniture, paints and other homemaking products." The article further said that the vote authorized the trademark committee to file an opposition to the trademark application and authorized spending $200 toward legal cost.

In addition to the Katonah Village Improvement Society, the following entities have filed for extensions of time oppose: Katonah Architectural Hardware Limited, and Katonah Paint & Hardware, Inc.

Postings to commence in a flurry

In order to bury this embarrassing post wherein I said "Happy World Intellectual Property Day" a month in advance, I hope to put forth a flurry of posts.

Monday, March 26, 2007

Happy World Intellectual Property Day

This year's theme is Encouraging Creativity.

Egg on Face Update: Next month on the 26th is World Intellectual Property Day, not this month. Gotten ahead of myself : )

Birkhead trademark application

Trademark news from the Anna Nicole Smith front. Larry Birkhead has applied to register the trademark GOODNIGHT MY SWEET ANNA BABY for "movies, books, television programs, programs broadcast over the Interent, programs broadcast over electronic media; stage plays." Birkhead used this line at Anna Nicole's funeral service.

PTO search shows no applications yet filed from Virgie Arthur, Howard K. Stern, Larry Seidlin, or Frederic von Anhalt.

Friday, March 23, 2007

Trademark news from the Open Source world

eWeek posted a story titled "Is Red Hat Acting Like Microsoft?" Next eWeek posts a story that "Red Hat Responds to Claims It's the 'Next Microsoft'" InfoWorld blog's about eWeek's story as much ado about ...?

So what's going on here. Well, it all started with Bill Dudney's blog post (but eWeek links to another blog, probably because it makes for a better headline) which alleged that Red Hat is preventing Bill's former company from offering "Hibernate Services." Red Hat owns the federal registration for HIBERNATE for "Technical support services, namely, troubleshooting of problems with and consulting services relating to enterprise server software for objective relational mapping."

One commenter posted a cease and desist letter sent by Red Hat to companies offering Hibernate consulting and training:

Dear Sir or Madam:

Red Hat, Inc. has become aware that your company is offering Hibernate training courses. Red Hat does not allow the use of its trademarks without a written agreement.

Red Hat is the owner of numerous trademarks, including but not limited to, its Hibernate mark, U.S. Federal Registration Number 3135582. RedHat has made extensive use of its Hibernate marks in interstate and international commerce in connection with the advertising, promotion, and sale of its goods and services. Due widespread use, advertising and extensive marketing, the RedHat marks have
become famous.

Red Hat requests that you immediately cease offering Hibernate branded training, as well as any other training that may contain Red Hat marks or marks that are confusingly similar. Although you may offer object oriented relational database mapping training, you may not use the Hibernate name to promote and advertise your products and services.

We trust you will understand Red Hat's interest in protecting its valuable intellectual property and ensuring that consumers are not misled as to the source and sponsorship of goods and services sold and/or distributed under the RED HAT marks. We trust this matter can be resolved promptly and amicably and appreciate your attention to this matter.

We look forward to your reply and request a response no later than {WITHHELD}.


Meredith K. Robertson
Legal Specialist
Red Hat, Inc.

Mark Webbink, Deputy General Counsel for Red Hat commented to clarify Red Hat's position:

I am writing to clarify the issues raised by the publication of Ms. Robertson's communication on behalf of Red Hat. First, the letter is not placed into the context of the situation it was addressing. That presents the opportunity for misinterpretation. At the same time, I would agree that the letter is less than precise in defining what has been done wrong and the corrective action that is required. Ultimately, that is my fault as the person in charge of trademark enforcement at Red Hat.

Contrary to Gavin's statements above, you cannot offer HIBERNATE Training or JBOSS Training. This is an improper use of Red Hat trademarks in that the marks are being used (a) either as nouns or (b) to promote a good or service that is directly branded with Red Hat owned marks. What is permissable, and I am sure this is what Gavin meant, is that you are permitted to offer HIBERNATE(R) Object Relational Mapping Software Training or, as another example, JBoss(R) Application Server Training. Here the marks are being applied to the goods in a proper manner and it is clear that the training is being provided for that branded technology, not by the brand owner. As a further common courtesy, it would also be appropriate for those properly using the marks in this manner to make clear that they are not in anyway associated with Red Hat or its JBoss Division.

With that clarification I hope I have resolved the confusion and/or discontent around this issue. More extensive information on the permitted uses of Red Hat marks can be found at

I would also ask, as a courtesy to Ms. Robertson, that the party who posted her letter please indicate that they were the party posting the letter, not Ms. Robertson.

My apologies for any confusion that has been caused.

Mark Webbink
Deputy General Counsel
Red Hat, Inc.

So, Red Hat says you can use Hibernate if you use it properly and disclaim association with Red Hat or its JBoss Division. While the original letter gave the impression that Red Hat is seeking to foreclose all use of Hibernate, it's nice to see Mark take responsibility for the original mispreception and to clarify Red Hat's position. This serves as a good lesson in drafting and sending out cease and desist letters, especially when those cease and desist letter can easily find themselves on the web. Further, there's a good lesson in using the Internet for damage control. Rather than putting an innocuous press release on Red Hat's website, Mark chose to address through a comment. It would be interesting to hear though, if Red Hat sent the original addressee of the c&d a clarifying note, as one commenter named Captain Crunch asked.

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Sunday, March 18, 2007

The Name Inspector inspects the name Skype

For all ye namers out there, there's an excellent blog that goes by the moniker The Name Inspector. This guy really digs into the origin of names, as in this post about Skype. Other excellent posts include this one and this one regarding the ten name types.

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Thursday, March 15, 2007

A peek into Sun's Open Source Approval Process, with a Trademark Tidbit to Boot

Tim Bray gives us a peek into Sun's internal Open Source Review process. Tim wrote some code he called the Atom Protocol Exerciser, or APE for short. He wanted to release it, but he had to go through Sun's approval process first.

There are a bunch of steps. You have to get approval from your own management chain up to the nearest Vice-President. Along the way, you need sign-off from Brand Management, Trademark Legal, and International Trade Legal (export-control regulations are a cross big companies like Sun have to bear).

And here's the trademark tidbit:

The one that was the most work was the Trademark piece. You just can’t assert “I’ll call this Foobar” and publish the code; lots of good names are taken and if you work for a public company, you really don’t want to accidentally step on someone else’s trademark with your coolio project name because if you do, they’re gonna call their attorneys first thing.

I actually wanted the trademark people to check out both “Atom Protocol Exerciser” and “Ape”; they told me in the politest possible way that this costs real money and real time so would I please bloody well pick one; fair enough. *** Checking out names takes time—a couple of weeks in my case—that’s just a fact of life.

There you have it. Clearing trademarks costs real money and real time. But if you don't take that step, Tim properly states that the first person the owner of the mark you infringe is going to call is their attorney.

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Monday, March 12, 2007

BrandWeek Article on Team Colors

There's a nice article on BrandWeek regarding the recent string of victories schools have been racking up in enforcing their school trademarks.

As these lawsuits show, colleges and universities are on the legal warpath to protect their trademarks. Why? It's something that any marketing major in these schools likely learns in freshman year: Licensing translates to serious revenue.


The message is one that extends to sports marketers everywhere, and it is a warning. The free rides you've been able to take on college coattails (be they green-and-white, crimson-and-gold or scarlet-and-gray) are over. The LSU v. Smack Apparel decision has made this clear—in black-and-white.

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Band Brand Protection

In this month's IP Today: How the Band Protects Its Brand: The Use of Trademarks to Protect and Promote the Musical Artist (Part One of a Two-part Article).

Saturday, March 10, 2007

The Naming Process - HARD

Nancy at Away With Words has a great post regarding the New York Times' article In a Global Marketplace, Claiming a Name Becomes an Art in Itself. And leave it to a namer to come up with an excellent title to her blog post: It's Hard Out Here for a Namer. Now, I can't get the song It's Hard Out Here for a Pimp out of my mind.

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Friday, March 9, 2007

Taste Infringement

Coke vs. Coke Zero. This is a great site from Coke Zero wherein the Coke team asks some unsuspecting lawyers if they can sue the Coke Zero team for taste infringement.

A Plea for Help - In a Press Release

I'm not sure a press release is an appropriate place for one seeking help in a TTAB proceeding, but Kent G. Anderson of apparently thought it was. The title of his release? Because I don't have enough funds, the Brand FUTURE and people's rights will not be equally represented in the oppositions by Pep Boys.

In one instance, Mr. Anderson applied to register the mark FUTURE in class 041 for:

Country clubs, not including golf club services; night clubs, yacht clubs, fan club services; health club services namely, providing instruction and equipment
in the field of physical exercise, wrestling clubs, sports clubs for football, basketball, racing, baseball, and boxing; providing various facilities for an array of athletic events not including golf; special interest clubs in the field of automobiles, aircraft, and land craft, entertainment, finance, transportation, education, inventions, business operations, going to restaurants; music entertainment clubs for amateur musicians

The Pep Boys Manny, Moe & Jack of California opposed the mark citing its registration of FUTURA in class 012 for "automotive accessories, namely, vehicle wheel caps and hub caps."

The Pep Boys and Mr. Anderson are not strangers in the TTAB.

In Mr. Anderson's press release, he says he needs help and support in fighting the Pep Boys. Further, "I'm looking for a law firm to represent me and the Brand FUTURE's rights in exchange for equity ownership." The press release contains his home number for interested attorneys. My plate is full right now.

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Thursday, March 8, 2007

Toto, are we still in Kansas?

Two Kansas related trademark news stories.

Number 1, the Hells Angels have sued a Kansas couple for trademark infringement. According to the lawsuit, the couple was selling patches on eBay emblazoned with an image similar to the Hells Angels federally registered "death head" mark.

Number 2, the University of Kansas, through the Collegiate Licensing Company, sued for printing shirts that reference the University of Kansas. According to Associate AD Jim Marchiony, "many of the shirts attach themselves to the University and are in poor taste." Such as one shirt containing the phrase "Muck Fizzou." Mizzou, being a rival of KU, just switch the "M" and the "F," and you get the point.

In an apparent response to the lawsuit, Joe-College put the following on it's website, in bold no less:


What? "Exhibit A your honor ..."

Further, Joe-College has a Do not be confused page, which says:

  • Nothing you are looking at was made by the University of Kansas
  • Nothing you are looking at originated with the University of Kansas
  • Nothing you are looking at was made for the University of Kansas
  • Nothing you are looking at was authorized or licensed by the University of Kansas
  • No part of the proceeds of the sale of these items will go to, or benefit the University of Kansas
  • All of the above is true for the Collegiate Licensing Company, and for the National Collegiate Athletic Association, and for the NFL, and MLB, and the NBA, and the NHL, and for every other college, university, and professional sports franchise that exists anywhere that sells any kind of clothing

Smack! What are these guys thinking. Oh, they're not. Check out the What Happens in Lawrence Stays in Lawrence shirt. Vegas Baby!

UPDATE: It seems the editorial staff of the KU student newspaper sides with Joe-College.

Trademark law is a malleable field within the developing world of intellectual property, and the University would be wise to not rush into any unnecessary action in this still evolving area. The Jayhawk logo, University name and obvious athletic references are trademarks worth protecting. But the foray into the distasteful shelves of comes dangerously close to infringing upon free market practice by private vendors.

Whoa! Just spilled my drink.

UPDATE 2: Forgive me, but it looks like the editorial staff is engaging in a bit of point/counterpoint.

Yes the shirts at are unlicensed, but the shirts are inextricably linked to the University because of their content. For every person at the game or at home watching that knows the shirts aren’t associated with the University, there’s another person that thinks the two are one in the same. Bill Skepnek, attorney for, was quoted in Tuesday’s Kansan as saying “Trademark law is not intended to protect a fool,” but do we really want our image in the hands of all those “fools” that will create negative associations between the two? Certainly not. Leaving the University’s image in the hands of all those inevitable “fools” is silly.

UPDATE 3: Maybe with these college stutent's new found attention to trademark law, maybe we can get as romantic as copyright law.

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Tuesday, March 6, 2007

Amusing trademark of the day

ROCKING HORSE TURDS in Class 028 for "toys in the form of blocks of wood whimsically suggesting they are droppings from a wooden rocking horse."

Monday, March 5, 2007

Creating Brand Names

Chris Brown over at Branding & Marketing links to five naming tutorials and also to The Best Brands of the World (woorrlld, I say in Keith Olbermann fashion). Of course, make sure you clear your perfect brand name prior to making a substantial investment in its use.

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The overlooked marketing edge

And now a bit of branding, err marketing. This is after all, the TM Branding Cap.

Dustin Staiger over at Casual Fridays has an excellent post with pictures regarding word of mouth marketing.

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Who needs Google's Froogle?

When you can shop at the Google store in Istanbul, Turkey. [HT: engadget]

Saturday, March 3, 2007

Filing Habits

For 2006, there was a total of 276,165 applications filed with the PTO {2006????[fd]}.

162,494 (58.8%) were filed as intent to use applications {2006????[fd] and (1B)[ob]}.

102,035 (36.9%) were filed as in use applications {2006????[fd] and (1A)[ob]}.

7820 (2.8%) were filed on the basis of a foreign application {2006????[fd] and (44d)[ob]}.

3606 (1.3%) were filed on the basis of a foreign registration {2006????[fd] and (44e)[ob]}.

As seen by the above numbers, a majority of the trademark applications filed in 2006 were intent to use applications. However, when you look at the filings of some of the top brands listed below, 92.3% of their applications were intent to use applications.

What do these numbers tell us? Well, for one these big companies tend to file applications for trademarks before they actually use the marks. Presumably, they have conducted trademark searches to clear the marks. For them, trademark protection is a before-thought rather than an afterthought. All to often, smaller firms use trademarks blindly. They think that they'll get around to thinking about trademark protection latter. Sometimes they only think about it when they get a nasty cease and desist letter from one of my colleagues.

Hopefully that won't be you. Learn and follow what the big boys do. Conduct clearance searches first. Then file an intent to use application to stake your claim. Remember, trademarks are a valuable asset to your firm. Big firms see it as a big land grab. They know their value, and they invest time and money to protect it. They don't want to spend money on something already claimed by another, and once they find an appropriate mark for their goods or service, they stake a claim early so as to deter others from adopting the mark.

Company 2006 Totals Search Strategy 1(B) 2006 Totals Search Strategy
The Coca-Cola Company 141 ("coca cola")[on] and 2006????[fd] 129
("coca cola")[on] and 2006????[fd] and (1B)[ob]
Microsoft Corporation 130 (microsoft)[on] and 2006????[fd] 123
(microsoft)[on] and 2006????[fd] and (1B)[ob]
International Business Machines Corporation 26 ("international business machines")[on] and 2006????[fd] 21
("international business machines")[on] and 2006????[fd] and (1b)[ob]
General Electric Company 93 ("general electric")[on] and 2006????[fd] 77
("general electric")[on] and 2006????[fd] and (1b)[ob]
Intel Corporation 5 (intel)[on] and 2006????[fd] 5
(intel)[on] and 2006????[fd] and (1b)[ob]
Nokia Corporation* 13 (nokia)[on] and 2006????[fd] 1
(nokia)[on] and 2006????[fd] and (1b)[ob]
Toyota Motor Corporation 30 (toyota)[on] and 2006????[fd] 26
(toyota)[on] and 2006????[fd] and (1b)[ob]
Disney Enterprises, Inc. 432 (disney)[on] and 2006????[fd] 394
(disney)[on] and 2006????[fd] and (1b)[ob]
McDonald’s Corporation 30 (mcdonald)[on] and ("oak brook")[ow] and 2006????[fd] 19
(mcdonald)[on] and ("oak brook")[ow] and 2006????[fd] and (1b)[ob]
The Procter & Gamble Company 211 ("Procter & Gamble")[on] and 2006????[fd] 199
("Procter & Gamble")[on] and 2006????[fd] and (1b)[ob]
Pepsico, Inc. 120 (pepsico)[on] and 2006????[fd] 106
(pepsico)[on] and 2006????[fd] and (1b)[ob]
The Dannon Company 58 ("dannon company")[on] and 2006????[fd] 46
("dannon company")[on] and 2006????[fd] and (1b)[ob]
Mattel, Inc. 780 ("mattel inc")[on] and 2006????[fd] 778
("mattel inc")[on] and 2006????[fd] and (1b)[ob]
Hasbro, Inc. 113 (hasbro)[on] and 2006????[fd] 99
(hasbro)[on] and 2006????[fd] and (1b)[ob]
Viacom International Inc. 260 (viacom)[on] and 2006????[fd] 232
(viacom)[on] and 2006????[fd] and (1b)[ob]





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