Trademark Numbers

Just some trademark searches of interest.

As of today, at 1:40 E.S.T.

Number of total "live" registrations: 1,341,391 {live[ld] and `rn > "0"}

Number of total "live" registrations on the principal register (including 2(f) and 2(f)-in-part registrations): 1,288,461 {live[ld] and `rn > "0" and (principal[rg] or principal-2[rg] or part[rg])}

Number of total "live" registrations on the supplemental register: 52,930 {live[ld] and `rn > "0" and supplemental[rg]}

Is your mark registered yet?

Technorati Tags: trademark, registration, trademark registration, search, fun

Fisking PR release

Yet another example of a firm press release announcing the registration of its trademark by the United States Patent and Trademark Office.

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

SANTA ANA, CA -- (MARKET WIRE) -- February 16, 2007 -- SAVI MEDIA GROUP, INC. (OTCBB: SVMI) announces the Trademark registration of our core emission control device, the DynoValve from the United States Patent and Trademark Office.

The United States Patent and Trademark Office have allowed for the registration trademark on one of our core emission control devices, the "DynoValve." The registration number for our DynoValve emission control product is 3204740. The trademark is officially effective on January 30, 2007.

"With our newly trademark registration for the DynoValve and our trademark registration of the DynoValvePro this past November addresses that Savi is fully committed to the name brand protection of our emission control product assets on a long term basis," stated Steve Botkin, Chief Information Officer of SaVi Media Group, Inc.

This is generally a nice release, however it implies, like all of the other press releases I've seen, that SaVi's trademark rights begin on the effective date of registration: "The trademark is officially effective on January 30, 2007." The press agent could have simply said that the registration is effective on January 30, 2007.

Trademark rights are accrued through use, not registration. BUT, registration gives the trademark owner certain advantages including:

• Trademark registration provides constructive notice of the registration, and defeats a claim that an infringer did not know that the company's trademark was registered;
• Federal trademark registration establishes federal jurisdiction to file a trademark infringement action in federal court;
• Federal trademark registration may be the basis to be awarded treble (triple) damages;
• Federal trademark registration establishes the presumptive right of the trademark owner to use the trademark throughout the country;
• The presumptive right can become incontestable with five years of continuous use and the filing of and acceptance of a declaration of incontestability;
• Other companies that conduct a trademark search prior to adopting a trademark would most likely not adopt a mark exactly the same or similar to the company's trademark;
• A registration on the Principal Register (but not Supplemental Register) may be deposited at the U.S. Custom Service to bar importation of goods bearing an infringing trademark;
• A registration on the Principal Register can be the basis for the seizure of counterfeit or infringing merchandise;
• A federal trademark registration may be used as collateral to secure a loan because a trademark registration is viewed as the embodiment of the goodwill symbolized by the trademark; and
• For those companies that wish to expand internationally, the date of registration may be used as the priority date in other countries, if they are a member of an international treaty, such as the Paris Convention.

Assuming no conflict, for the relatively low cost of registration as compared to the value of the trademark, registration is a no brainer.

Technorati Tags: trademark, registration, press release, advantages

IHOP lapsed registrations require amendment to UFOC

Now would be a good time to check up on your trademark docketing procedure.

IHOP Corp. recently announced the following:

IHOP Corp. (NYSE: IHP) today disclosed that it has become aware of issues relating to the lapsing of certain IHOP federal trademark and service mark registrations on file with the United States Patent and Trademark Office. As a consequence of the lapsing of these registrations, IHOP's Uniform Franchise Offering Circular ("UFOC") must be revised.

***

IHOP is in the process of taking the steps necessary to obtain new registrations for the affected trademarks and service marks. Additionally, IHOP has temporarily stopped offering franchises pending revisions to the UFOC and receipt of attendant state regulatory approvals. The Company anticipates that the corrective measures required to resume offering franchises in 45 states will be completed very shortly and within the next few weeks with respect to the five remaining states; however, there can be no assurance that all requisite regulatory approvals will be obtained within this time frame.

The Company has not yet determined the extent or financial impact of the corrective measures, but believes that any issues regarding the validity of its federal trademark and service mark registrations will not have a material impact on the business of IHOP Corp. or its franchisees.

That (temporarily suspending the offering of franchises) is a pretty serious consequence to lapsed filings.

Also, Reuters reported that the lapsed registrations caused IHOP to delay a planned refinancing of the company, which was to be used to pay down debt and buy back shares.

For the record, IHOP has 23 live applications or registrations {(ihop or "international house of pancakes")[on] and (live)[ld]} and 28 dead applications or registrations {(ihop or "international house of pancakes")[on] and (dead)[ld]}. [video explanation on how to run the searches] .


Technorati Tags: trademark, registration, docketing, franchising, UFOC

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.

Technorati Tags: trademark, registration, non-traditional marks, design, competitive advantage, cognitive touch points, value articulation, Professor James Conley, patents, intellectual property, Kellogg Center for Research in Technology and Innovation

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]).

Technorati Tags: trademark, registration, intent to use, mattel, search, strategy

Trademark Issues for Real Estate Developers

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

Technorati Tags: trademark, registration, real estate, malls, development

Another TM Registration Press Release

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

Related: Turning Trademarks Into News

Technorati Tags: trademark, registration, press release

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.


Technorati Tags: trademark, registration, real estate, malls, development, briarwood mall, the mall at tuttle crossing

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.

Technorati Tags: trademark, registration, press release