tmbrandingcap.com: April 2007

Monday, April 30, 2007

More news on the open source / trademark front. eWeek reports on Ubuntu's trademark policy.

Trademarks have recently become something of an issue in open-source circles. Debian, for example, recently took exception to Mozilla's Firefox trademark rules and called its version of the popular browser, IceWeasel. So, Ubuntu has decided to address possible trademark issues by creating its own trademark policy.

As many of you know, open source licenses generally grant the licensee the right to freely modify and distribute the subject software's source code. In essence, open source takes away the copyright restrictions that so many proprietary software companies use to protect their code.

However, open source licenses do not grant the licensee rights to use the licensor's trademarks. In fact, trademarks rights are enforced strictly by companies that distribute branded open source software.

As Mark Webbink, Red Hat's deputy general counsel and secretary, said in 2004, Red Hat has no problems with anyone using its source code. But Red Hat does have problems with anyone using its name or its trademark "shadowman." That, Webbink said, Red Hat guards zealously. "In the open-source economy, it's the Red Hat brand, as well as its service, that carry value."

Thus, as eWeek points out, while CentOS' operating system is derived from Red Hat's code, it can't use the Red Hat trademark to identify its code. And so CentOS says that "CentOS is an Enterprise-class Linux Distribution derived from sources freely provided to the public by a prominent North American Enterprise Linux vendor."

So open source companies such as Red Hat and Ubuntu sell commodities and build their value by building brands that customers prefer. If the value of these companies exist solely in the brand, then you'd expect them to vigourously protect their trademarks. See excerpt from Open Sources: Voices from the Open Source Revolution talking about Red Hat:

If we do not own intellectual property the way almost all of today's software companies do, and if those companies insist that their most valuable asset is the intellectual property represented by the source code to the software they own, then it is safe to say that Red Hat is not in the Software Business. Red Hat is not licensing intellectual property over which it has ownership. That's not the economic model that will support our customers, staff, and shareholders. So the question became: What business are we in?

The answer was to look around at other industries and try and find one that matched. We wanted an industry where the basic ingredients were free, or at least freely available. ...
We looked at the commodity industries and began to recognize some ideas. All leading companies selling commodity products, including bottled water (Perrier or Evian), the soap business (Tide), or the tomato paste business (Heinz), base their marketing strategies on building strong brands. These brands must stand for quality, consistency, and reliability. We saw something in the brand management of these commodity products that we thought we could emulate. ...

This was Red Hat's opportunity: to offer convenience, to offer quality, and most importantly to help define, in the minds of our customers, what an operating system can be. At Red Hat, if we do a good job of supplying and supporting a consistently high-quality product, we have a great opportunity to establish a brand that Linux OS customers simply prefer. ...

The power of brands translate very effectively into the technology business. We have evidence of this in the Venture Capital investors who have recently invested in several Open Source software companies. The one common denominator between all of the investments to date have been that the companies or their products have great name recognition, and are recognized as being quality products. In other words, they have successfully established a brand.

Technorati Tags: trademark, open source, brands, branding, commodity, licensing

Wednesday, April 25, 2007

Good Bank Brands Make Bad Bank Trademarks

Law review article by John M. Conley and Jayne C. Hunter - The Curse of History: Good Bank Brands Make Bad Bank Trademarks.

From the conclusion:

From a normative standpoint, it is clear that trademark law has never offered any special accommodations to the banking business, and shows no likelihood of doing so in the future. Nor should it. Unlike patent and some aspects of copyright law, which have developed highly technical and frequently unpredictable doctrines, trademark decisions have consistently been based on common-sense assessments of how consumer markets work. Although new technologies have sometimes posed novel questions (for example, whether use of someone else’s trademark as an Internet metatag is infringement), the framing of the analyses has been remarkably consistent and the answers given tolerably predictable over time and across industries. Neither banking’s economic and social significance nor its quirky history creates a mandate for special treatment.

This means that banking must come to terms with trademark law in its present state. As the case law we have reviewed indicates, banking has seemingly ignored trademark law for much of its history. There may have been understandable reasons for this in the past, but those reasons are now irrelevant. As bankers (and their lawyers) show increasing interest in making aggressive “offensive” use of trademarks, they must do the work of understanding how trademarks are established, strengthened, and protected. With that in mind, we offer the following practical thoughts:

Technorati Tags: trademark, law review, brand, branding, banking, registration

Tuesday, April 24, 2007

Brough Superior Trademarks for Sale

Auctioneer Bonhams & Butterfields has for sale the ‘Brough Superior’ Trademark and Logos. This Lot consists of the UK, European Community and Japan rights to the trademark and company name, ‘Brough Superior Engineering Limited’ and its associated logos. [HT: Motor Cyclist]

The Trademark, ‘Brough Superior Engineering Limited’ is registered in the UK under ‘1457563’ (renewable in September 2009) [TMBC Note, the number is a misprint, it should be 1467563] Trademark Journal ‘6232’. The European Community application number is ‘1093392’. The Japan trademark application is number ‘11-68981’, Certificate of Trademark Registration ‘4392842’ [run search for "BROUGH" here, then click on "Index" to see results].

However, US Reg. No. 2553038 for BROUGH SUPERIOR is not for sale. Perhaps it's because the US owner, Alan Scott Kvasnik of Minneapolis Minnesota, is not the same owner as listed in the UK and European Community mark, Alec Card of the UK. If I were the purchaser, I'd want to see what's up with this. After all, the US is a big market, and the estimated price for the trademark is $220,000 to $250,000.

Tech Tags: trademark valuation auction brough superior

Friday, April 20, 2007

Friday Rush - Train Speed Record

Not trademark or branding related, but what a rush. Watch as Alstom, the French Rail Network and SNCF break the world rail speed record by attaining the speed of 574.8 km/hr (that's 357.16 miles per hour for us Americans). Interesting that the record speed had to be officially ratified by two lawyers!

574,8 Km/h World rail speed record 2007
Uploaded by V150_

Technorati Tags: train, world rail speed record, France

Amazon sues Alexaholic and the Web 2.0 community is not happy

Alex Graham has an excellent post about the trademark/IP dust up between Amazon's Alexa Internet and Ron Hornbaker, creator of the very popular alexaholic.com (now known as statsaholic.com).

Thursday, April 19, 2007

Copyright issues on the Trademark Blog

Venturing off the trademark path, Marty Schwimmer has a nice post regarding the use of music in audio visual works. His short post illustrates the complexities involved.

Google renames Froogle to Google Product Search

CNet news story here.

Acknowledging that it's better to be clear than clever, Google is rebranding "Froogle" as "Google Product Search" ... The ill-named Froogle was a problem from the start. "I don't think we understood the complications with rolling out another brand," Marissa Mayer, Google's vice president of search product and user experience, said in an interview with CNET News.com. "While it was a cute and clever name, it had issues around copyright and trademark, as well as internationalization…The pun (to "frugal") isn't obvious."

Wednesday, April 18, 2007

We are all Hokies

Tuesday, April 17, 2007

Unnecessarily long trademarks

From time to time I run into what appears to be excessively long trademarks. For example, check out this long mark:

JUST PLAIN JOE COFFEE COMPANY "GOURMET COFFEE AT A REASONABLE PRICE" THE JUST PLAIN JOE COFFEE COMPANY, IN CONJUNCTION WITH THE CAROLINA COFFEE ROASTING COMPANY, GOES ALL-OUT TO BRING YOU THE FRESHEST WHOLE BEAN COFFEE WITHOUT ALL THE PRICEY TRAPPINGS. OUR IDEA IS THAT A FIRST-RATE CUP OF COFFEE SHOULDN'T COST AN ARM AND A LEG AND OUGHT NOT FORCE YOU TO HOCK YOUR STUFF TO BUY A POUND OR TWO. OUR HOPE IS THAT YOU ENJOY THIS REASONABLY PRICED COFFEE AS MUCH AS WE ENJOY PRODUCING IT FOR YOU PROUD TO BE AN AMERICAN COMPANY P.O. BOX 884, STEVENSVILLE, MD 21666 NET. WT. 1 LB

The trademark owner, who filed the application himself online, meant to register JUST PLAIN JOE COFFEE COMPANY.

But instead of selecting a "Standard Characters" mark, the applicant selected "Special Form (Stylized and/or Design)."

And then he attached an image containing the above text:

I'm pretty certain Joe didn't mean to register such a long mark. He just didn't realize that the PTO considers all of the literal elements of the submitted image as the "word mark." While the applicant saved money in attorney fees, he did pay the following fees to obtain registration of the above mark:

$335 - processing fee
$100 - petition fee to revive (11/21/2005)
$150 - extension of time to file statement of use (11/21/2005)
$100 - petition fee to revive (3/24/2006)
$150 - extension of time to file statement of use (3/24/2006)
$100 - statement of use

Related: Erik J. Heels' pointer to the mark:

THE SLEEP SHOP (NOTE: IF THIS NAME IS NOT ACCEPTABLE, AS AN ALTERNATIVE, I WOULD BE SATISFIED WITH THE TRADEMARK "THE SLEEP SHOPPE")

Technorati Tags: trademark, pro se, application, tip, dyi

Interview with Trademark Attorney Scott Duvall

The Seattle Trademark Lawyer links to an interview with Mosley's Trademark Attorney Scott Duvall. Nice link.

Friday, April 13, 2007

The Sanjaya Brand Association Map

Related to my Sanjaya trademark post, now comes the Sanjaya Brand Association Map from Nielsen BuzzMetrics. Here's a discussion over at the Consumer Generated Media blog.

Technorati Tags: branding, trademark, Sanjaya, fun

Thursday, April 12, 2007

What is Electix?

What is Electix? That's what the site electix.net asks. The site will reveal what electix is on July 21, 2007. In the meantime, it conducting a contest to win 1 in 20 of the main product or service which 'electix' will offer visitors.

Okay, I'll take a stab. I searched the USPTO, WIPO, EU, and UK trademark databases, but did not come up with one hit on the exact search for ELECTIX. So moving on, I checked out the whois record. The Registrant Contact info is Firebath Music and Mark Newby or Manchester, Great Britain. So maybe the company has something to do with the concert and event ticket business, hence the "tix" at the end. But alas, maybe I'm wrong because advert-eyes says that the site was created by advertising agency Firebath Creations whose studio manager is Mark Newby. But, also advert-eyes says that Firebath's client is Garcon Limited. As does electix's privacy page.

So just who is Garcon Limited? It appears it was created on February 21, 2006 with an address in Leeds, West Yorkshire. Or is it Le Garcon Limited? This is pretty much a dead end, since I don't want to pay for corporate documents for a little fun investigation.

Turning back to electix, I googled it (um, sorry, I performed an internet search for the term electix using the Google search engine). Looks like a test forum with the title electix was created on March 21, 2007. There's a manufacturing company from Connecticut by the name Electix, Inc. It's most likely not the right one. It's a band from the UK. It's also the name of a Pakistani company. But, at least potentially troubling for Garcon, it's the name and trademark of a site claiming to be "The Ultimate Gadget Site" from The Netherlands.

It appears Electix has done a good job in hiding what they aim to be. So I guess, your guess is as good as mine.

Secretary of State Links

IP Office Links

No Sanjaya trademarks ... yet

I'm voting for Sanjaya! Are you? Seriously, I suspect that it's only a matter of time that we see a trademark application for SANJAYA.

After all, William Hung applied for registration (since abandoned).

Martha Stewart Katonah Update

Opposition to Martha Stewart's KATONAH trademark applications. News Report. Opposition Numbers 91176691 and 91176705.

Tech Tags: trademark, TTAB, opposition, place names, martha stewart

Limited Stores sues Quiksilver for trademark infringement

Columbus, Ohio based Limited Stores, LLC sued Quiksilver, Inc. for trademark infringement over Quiksilver's use of "The Limited Collection" (link to Women's Wear Daily story).

Technorati Tags: trademark, infringement, litigation, clothing, Limited Stores, LimitedBrands, Quiksilver

Wednesday, April 11, 2007

8 criteria of a credibility based logo

Dr. Bill Haig guest writes over on The Credibility Branding Blog on Credibility Based Logo Design (part 1, part 2).

Technorati Tags: branding, logos, credibility

Happy Ernst and Young day

I'm thinking that the folks over at Ernst & Young did not think of the negative branding effect (also here, here, and here) of what appears to be an E&Y recruitment video.

Technorati Tags: branding, Ernst & Young, recruitment video, oh happy day, gag

SEC filings - full text search

It's about time! The SEC now allows for full text searching of EDGAR filings from the last four years. What an excellent source for competitive intelligence. For example, from the trademark prospective, I ran the search "trademark license" and found the following agreements:

Now if only we can get the PTO to initiate full text searching on TDR and TTAB documents.

Technorati Tags: competitive intelligence, trademark, SEC, EDGAR

Tuesday, April 10, 2007

Foreign Trademark Owner Statistics

How many trademark records exists for foreign based owners? 3,625,679.

Here's the search strategy:

not ("united states" Alabama Alaska Arizona Arkansas California Colorado Connecticut Delaware Florida Georgia Hawaii Idaho Illinois Indiana Iowa Kansas Kentucky Louisiana Maine Maryland Massachusetts Michigan Minnesota Mississippi Missouri Montana Nebraska Nevada "New Hampshire" "New Jersey" "New Mexico" "New York" "North Carolina" "North Dakota" Ohio Oklahoma Oregon Pennsylvania "Rhode Island" "South Carolina" "South Dakota" Tennessee Texas Utah Vermont Virginia Washington "West Virginia" Wisconsin Wyoming "american samoa" "federated states of micronesia" guam "northern mariana islands" "midway islands" "puerto rico" "u.s. virgin islands" "us virgin islands")[ow]

Okay, taking that search, I wanted to see what filing basis foreign owners use. So, here's the results:

1A (Filed under Section §1(a) {use in commerce}) - 153,409
1B (Filed under Section §1(b) {intent to use}) - 292,961
44D (Filed under Section §44(d) {foreign application}) - 139,686
44E (Filed under Section §44(e) {foreign registration}) - 96,358
66A (Filed under Section §66(a)) - 35,377
NO FILING BASIS (No filing basis claimed) - 555

So as with my filing habits post, the majority of foreign owners file under an intent to use basis, rather than based on a foreign trademark application or registration. But the numbers may be incomplete, becuase when you add up the above basis numbers you get 718,346. What happened to the other 2,907,333 records? What basis were they filed under? Most likely, the PTO did not record original filing basis from way back. If anyone knows the reason, please leave a comment in the comment section.

Here's the complete search strategies for the above results:

153,409
1a[ob] not ("united states" Alabama Alaska Arizona Arkansas California Colorado Connecticut Delaware Florida Georgia Hawaii Idaho Illinois Indiana Iowa Kansas Kentucky Louisiana Maine Maryland Massachusetts Michigan Minnesota Mississippi Missouri Montana Nebraska Nevada "New Hampshire" "New Jersey" "New Mexico" "New York" "North Carolina" "North Dakota" Ohio Oklahoma Oregon Pennsylvania "Rhode Island" "South Carolina" "South Dakota" Tennessee Texas Utah Vermont Virginia Washington "West Virginia" Wisconsin Wyoming "american samoa" "federated states of micronesia" guam "northern mariana islands" "midway islands" "puerto rico" "u.s. virgin islands" "us virgin islands")[ow]

292,961
1b[ob] not ("united states" Alabama Alaska Arizona Arkansas California Colorado Connecticut Delaware Florida Georgia Hawaii Idaho Illinois Indiana Iowa Kansas Kentucky Louisiana Maine Maryland Massachusetts Michigan Minnesota Mississippi Missouri Montana Nebraska Nevada "New Hampshire" "New Jersey" "New Mexico" "New York" "North Carolina" "North Dakota" Ohio Oklahoma Oregon Pennsylvania "Rhode Island" "South Carolina" "South Dakota" Tennessee Texas Utah Vermont Virginia Washington "West Virginia" Wisconsin Wyoming "american samoa" "federated states of micronesia" guam "northern mariana islands" "midway islands" "puerto rico" "u.s. virgin islands" "us virgin islands")[ow]

139,686
44d[ob] not ("united states" Alabama Alaska Arizona Arkansas California Colorado Connecticut Delaware Florida Georgia Hawaii Idaho Illinois Indiana Iowa Kansas Kentucky Louisiana Maine Maryland Massachusetts Michigan Minnesota Mississippi Missouri Montana Nebraska Nevada "New Hampshire" "New Jersey" "New Mexico" "New York" "North Carolina" "North Dakota" Ohio Oklahoma Oregon Pennsylvania "Rhode Island" "South Carolina" "South Dakota" Tennessee Texas Utah Vermont Virginia Washington "West Virginia" Wisconsin Wyoming "american samoa" "federated states of micronesia" guam "northern mariana islands" "midway islands" "puerto rico" "u.s. virgin islands" "us virgin islands")[ow]

96,358
44e[ob] not ("united states" Alabama Alaska Arizona Arkansas California Colorado Connecticut Delaware Florida Georgia Hawaii Idaho Illinois Indiana Iowa Kansas Kentucky Louisiana Maine Maryland Massachusetts Michigan Minnesota Mississippi Missouri Montana Nebraska Nevada "New Hampshire" "New Jersey" "New Mexico" "New York" "North Carolina" "North Dakota" Ohio Oklahoma Oregon Pennsylvania "Rhode Island" "South Carolina" "South Dakota" Tennessee Texas Utah Vermont Virginia Washington "West Virginia" Wisconsin Wyoming "american samoa" "federated states of micronesia" guam "northern mariana islands" "midway islands" "puerto rico" "u.s. virgin islands" "us virgin islands")[ow]

35,377
66a[ob] not ("united states" Alabama Alaska Arizona Arkansas California Colorado Connecticut Delaware Florida Georgia Hawaii Idaho Illinois Indiana Iowa Kansas Kentucky Louisiana Maine Maryland Massachusetts Michigan Minnesota Mississippi Missouri Montana Nebraska Nevada "New Hampshire" "New Jersey" "New Mexico" "New York" "North Carolina" "North Dakota" Ohio Oklahoma Oregon Pennsylvania "Rhode Island" "South Carolina" "South Dakota" Tennessee Texas Utah Vermont Virginia Washington "West Virginia" Wisconsin Wyoming "american samoa" "federated states of micronesia" guam "northern mariana islands" "midway islands" "puerto rico" "u.s. virgin islands" "us virgin islands")[ow]

555
("no filing basis")[ob] not ("united states" Alabama Alaska Arizona Arkansas California Colorado Connecticut Delaware Florida Georgia Hawaii Idaho Illinois Indiana Iowa Kansas Kentucky Louisiana Maine Maryland Massachusetts Michigan Minnesota Mississippi Missouri Montana Nebraska Nevada "New Hampshire" "New Jersey" "New Mexico" "New York" "North Carolina" "North Dakota" Ohio Oklahoma Oregon Pennsylvania "Rhode Island" "South Carolina" "South Dakota" Tennessee Texas Utah Vermont Virginia Washington "West Virginia" Wisconsin Wyoming "american samoa" "federated states of micronesia" guam "northern mariana islands" "midway islands" "puerto rico" "u.s. virgin islands" "us virgin islands")[ow]

Technorati Tags: trademark, trademark registration, intent to use, use in commerce, trademark search, land grab, trademark application, statistics, search

Wednesday, April 4, 2007

What the Duck - Copywrong

What the Duck is my new favorite cartoon. The author even allows reproducing the strip on blogs: "What the Duck is an online comic strip. Viewers are welcome to link, post, copy/paste, or save the strips to their own sites, blogs, forums, newsletters, etc."

HT: PhotoAttorney

More place name news

Recall the hubbub going on about Martha Stewart applying to register the name of the town Katonah as a trademark for indoor lighting, paints, home furnishings, and furniture. Well, I agree with The Trademark Blog's assessment on the issue.

But what to think of this?

The Orange County Register reports on Coto de Caza resident Joseph Lewis Aguirre's trademarking activities. It appears Mr. Aguirre has applied for trademark registration on Coto de Caza and other California communities.

In fact, Mr. Aguirre has the mark COTO DE CAZA registered on the supplemental register for "retail store service and online retail store services featuring a wide variety of consumer goods for others, namely, hats, golf equipment, golf accessories and clothing suitable for golf course wear."

According to the OCR, Mr. Aguirre contacted the Coto de Caza Golf & Racket Club demanding payment of some sort:

Aquirre applied for trademark registration of many of the symbols used by the Coto de Caza Golf & Racquet Club, but that registration has not yet been granted according to the government's Web site.

"He (Aguirre) made contact with us. According to our legal department he has no standing. We have not paid him any money," said Matthew Gabos, director of operations at the club.

He also contacted various other organizations telling them to cease using his trademarks.

On March 4, Aguirre wrote a letter to the CZ Master Homeowners' Association saying it did not have permission to use his trademarks, including community names and symbols that have long been used by the association and other area businesses.

"He tried to tell us we could not use the name 'Coto de Caza,'" said Bob Varo, president of the CZ Masters' Association board of directors.

For some reason the comments in the OCR story are not too complementary towards Mr. Aguirre. Wonder why?

Technorati Tags: trademark, place names, martha stewart, coto de caza, orange county