Trademark Blogs

A Less Possessive Hershey’s Brand?

Duets Blog - Tue, 09/02/2014 - 08:36

The possessive form of the Hershey’s brand dates back to at least as early as 1894, according to U.S. Reg. No. 54,041 – a more than 100 year old trademark registration from 1906.

Last week, Brand New reported on Hershey’s new logo and corporate identity – without the apostrophe and letter “s” at the end:

I’m guessing that the possessive form of the HERSHEY’S trademark will continue to appear on chocolate bars and packaging, since all references to the rebrand seem to focus on the corporate identity, but if others have more information on this point, please feel free to weigh in.

Moreover, so far, there is no record of any trademark filings in the U.S. to match the new truncated look, perhaps also signaling that this look won’t hit packaging, at least in any dominant kind of way.

Here is how AdAge reported the change:

“The new branding will impact all visual aspects of how The Hershey Company presents itself, from consumer communications to websites to the interior design of its office spaces and the look of its retail stores,” the company said in a statement. While rooted in a rich heritage, the new corporate brand reflects a modern, approachable look that reflects the company’s openness and transparency as it has grown into a global company.”

Marketing types, if that is the goal, why leave the truncation and elimination of the possessive form to corporate communications, why not take it all the way to packaging? And, do you believe that makes sense as the next logical step, or does the trademark syrup just become too sticky?

Perhaps Hershey’s is merely dipping its toe in the chocolate of the less possessive format?

Given that Hershey’s has more than 150 live U.S. Registrations smooching the possessive form of the brand name (and many multiples of that number outside the U.S., I’m sure), if the truncated un-possessive format were to replace the more than 100 year old Hershey’s format, trademark types, would you feel comfortable advising the brand managers that amendments could be obtained safely without losing all these valuable registrations?

In other words, do you believe that removing the apostrophe and “s” creates a material alteration of the Hershey’s trademark? In the U.S.? What about outside the U.S.?

Would you hedge by having the new corporate identity appear in a trademark sense but in a more subtle way, almost as a corporate signature on the back corner of a packaging label?

There is certainly a lot to think about when an entire worldwide trademark portfolio is already in place — seems to me, this is a perfect opportunity for a graceful collaboration between legal and marketing types.

Categories: Trademark Blogs

Let’s Kill the “Naked License” Defense

Property Intengible - Tue, 09/02/2014 - 06:44

Those of you who have been reading my blog for awhile know that I’m not a fan of the naked licensing defense. The Trademark Reporter was kind enough to print a Comment I wrote explaining why I dislike it so. Click on the image for a copy.

Thanks to The Trademark Reporter for granting permission to provide a copy of this article, which is Copyright © 2014 the International Trademark Association and reprinted with the permission of The Trademark Reporter®, 104 TMR 4 (July-August 2014).

Categories: Trademark Blogs

TTAB Posts September 2014 Hearing Schedule

TTABLog - Tue, 09/02/2014 - 04:57
The Trademark Trial and Appeal Board has scheduled five (5) oral hearings for the month of September, as listed below. The hearings will be held in the East Wing of the Madison Building, in Alexandria, Virginia. The hearing schedule and other details regarding attendance may be found at the TTAB website (lower right-hand corner)]. Briefs and other papers for these cases may be found at TTABVUE via the links provided.

September 3, 2014 - 10 AM: In re Seacret International LTC, Serial No. 78811559 [Section 2(d) refusal to register SEACRET (in stylized form) for "products containing ingredients from the Dead Sea, namely, non-medicated skin care preparations, namely, moisturizers, facial cleansers, facial peels, masks, lotions, creams , scrubs, soaps, nail care preparations, hand creams, cuticle oils; after shave," in view of the registered mark SECRET for body spray, antiperspirant, and deodorant].

September 18, 2014 - 3 PM: The North Face Apparel Corp. v. Sanyang Industry Co. Ltd., Opposition No. 91187593 [Section 2(d) opposition to registration of the mark shown below left for a variety of goods and services in classes 7, 11, 12, 16, 25, 35, and 37,  including motorcycles, lawnmowers, clothing (including shirts and coats), and auto repair services, in view of the registered mark shown below right, for footwear, backpacks, sleeping bags, and clothing (including shirts and coats)].

September 23, 2014 - 2 PM: In re CTI Electronics Corporation, Serial No. 85150436 [Refusal to register INDUSTRIAL MOUSE on the Supplemental Register, for "inductive joystick cursor controller, namely heavy duty computer pointer" on the ground of genericness].

September 24, 2014 - 10 AM: In re Mannatech, Incorporated, Serial No. 85558774 [Section 2(d) refusal to register NUTRIVERUS for dietary and nutritional supplements, on the ground of likelihood with the registered marks NU VERUS & Design for "liquid nutritional supplement; nutritional supplements; vitamin and mineral supplements," and VERUS PHARMACEUTICALS & Design for "pharmaceutical products primarily intended for pediatric use for treating asthma, allergies and related respiratory diseases and conditions; auto-injectors containing epinephrine for treatment of anaphylactic reactions"].

September 24, 2014 - 2 PM: In re Ren Acquisition, Inc., Serial Nos. 85787527 and 85787531 [Section 2(e)(1) mere descriptiveness refusal of BLENDS and BLENDS, INC. for "marketing, advertising, and promoting the sale of wine"].

Read comments and post your comment here.

TTABlog note: Any predictions? See any "WYHA"s or "WYHO"s here?

Text Copyright John L. Welch 2014.
Categories: Trademark Blogs

WTO: Antigua Has New Idea For Gambling Case; Cuba Rails Against US Trademark

IP Watch - Mon, 09/01/2014 - 11:18
In a longstanding World Trade Organization dispute about measures affecting the cross-border supply of gambling and betting services, Antigua and Barbuda has made a new proposal to the United States on a way to solve the issue of the US not complying with a WTO ruling it lost. And in a separate matter at the same WTO meeting last week, Cuba referred to the US failure to change a law barring a rum trademark in the context of railing against US policy of "economic suffocation" of the island nation.
Categories: Trademark Blogs

Group Calls For ITU Constitution Amendment To Protect Right To Privacy

IP Watch - Mon, 09/01/2014 - 06:42
A report of the United Nations High Commissioner for Human Rights on the right to privacy in the digital age has been lauded by a group of civil society organisations who also called states to curtail mass surveillance and for the ITU constitution to be amended.
Categories: Trademark Blogs

Industry Applauds Marti Nomination As US IP Enforcement Coordinator

IP Watch - Mon, 09/01/2014 - 06:16
The US IP industry is applauding the nomination of trademark attorney Daniel Marti to be the next US Intellectual Property Enforcement Coordinator.
Categories: Trademark Blogs

Don’t Litter, Eh?

Duets Blog - Mon, 09/01/2014 - 02:00

The Toronto Globe and Mail recently reported on a clever anti-littering campaign that was launched and quickly aborted in Toronto due to trademark concerns.  The premise for the campaign was to take wrappers and packaging from some well-known brands and position it to create words describing litterers–words like dipstick, dumb, lazy, lowlife, pig, etc.  While it’s a close call, I suspect this campaign was expected to be slightly more effective than my headline for this post.

Now, I’m no Canadian lawyer (although I do own a Canadian tuxedo), but I wonder how in the name of Bryan Adams this ad campaign was approved all the way through publication without anyone thinking about getting the permission of the brand owners.  Not surprisingly, the brand owners whose packaging was used for the ads raised concerns about negative associations that might result from the ads.  And if Canadian trademark law is anything like U.S. trademark law, they would have probably had a pretty decent case.  That’s not to say that Toronto (or whatever ad agency put the campaign together) would be defenseless–indeed, I can imagine a couple arguments based on the fact that the packaging is not being used as a trademark and this could potentially constitute a type of fair use–but, at the very least, this campaign was something that was likely to start a fight.  Well-established brands are precious commodities and it’s unthinkable that any reputable brand would be okay with its brand being equated with trash.  (Unless, of course, you’re in the trash business.)

Perhaps the ad campaign was launched under the theory of “better to beg forgiveness than to ask permission,” or perhaps the ad agency that put the campaign together was willing to gamble in an effort to get their name out.  Whatever the logic, I think it was always an unfortunate foregone conclusion that this ad campaign would not survive long.  What do you think?


Categories: Trademark Blogs

TTAB Sustains Section 2(d) Opposition: VS vs. VS for Skin Moisturizers

TTABLog - Sat, 08/30/2014 - 13:44
The Board sustained an opposition to registration of the mark shown below left for various organic hair and skin care products, including skin moisturizers, finding it likely to cause confusion with the registered mark shown below right for various personal care products, including body lotions. Both parties stumbled a bit with their proofs, but the similarity of the marks and the overlap in the goods proved to be insurmountable obstacles for applicant. Victoria's Secret Stores Brand Management, Inc. v. Yael Mamroud/Cummins, Opposition No. 91201001 (August 7, 2014) [not precedential].

Applicant argued that her products are different from opposer's because they are "made in Canada, vegan, cruelty free, hypoallergenic, fragrance free, free trade" and furthermore are not unisex, whereas opposer's products are for women only. The Board pointed out, however, that no such limitations appear in the opposed application or cited registration. The Board found the goods to be legally identical, in part: applicant's "skin moisturizers" encompass registrant's "body lotions." Of course, the Board then presumed that the legally identical goods travel in the same channels of trade to the same classes of consumers.

Applicant next argued that her goods are more expensive than opposer's and therefore would be purchased with extra care, but again that argument failed because there were no such limitations as to price in the opposed application or cited registration.

Turning to the marks, both contain the letters "V" and "S," and in strikingly similar fonts. However, the Board noted that its must consider the marks in their entireties. Applicant argued that the inclusion of an ampersand in her mark "changes the sound, appearance, connotation, and overall commercial impression to 'vee' and 'ess,'" thus avoiding a likelihood of confusion. But the Board agreed with opposer that the ampersand in applicant's mark "looks like an afterthought."

[G]iven the relatively small size of the ampersand in relation to the letters "V" and "S," it is more likely that prospective consumers encountering Applicant’s stylized mark will overlook the ampersand, and perceive and pronounce the mark as the acronym "VS" as opposed to "V and S."
The Board consequently found that the letters "V" "S" are the dominant feature of applicant’s mark, and so the involved marks "are far more similar than dissimilar in sound, appearance, connotation and commercial impression."

Opposer pointed to the fame of its VICTORIA'S SECRET mark, asserting that consumers would likely see VS as a shortened version thereof, but applicant correctly pointed out that opposer did not plead ownership of any of its VICTORIA'S SECRET trademarks and so the fame of that mark was irrelevant. Applicant, in turn, claimed that the cited mark is weak in view of numerous VS marks used on similar goods, but she failed to provide any supporting evidence.

Because all of the relevant duPont factors were either neutral or favored opposer, the Board found confusion likely and it sustained the opposition.

Read comments and post your comment here.

TTABlog note:  After reading this decision, I think VS stands for very soporific.

Text Copyright John L. Welch 2014.
Categories: Trademark Blogs

Biosimilar Medicines Need Strong Regulation, IP Crucial For Innovation, Pharma Says

IP Watch - Fri, 08/29/2014 - 06:44
Biosimilar medicines might prove to be a new reservoir for innovation for the pharmaceutical industry. However, the complexity of their manufacture needs a stringent regulatory framework, according to the industry.
Categories: Trademark Blogs

Test Your TTAB Judge-Abiliity: Which One of these Four Mere Descriptiveness Refusals Was Reversed?

TTABLog - Fri, 08/29/2014 - 02:24
By my estimation, somewhere around 80 to 85% of all Section 2(e)(1) mere descriptiveness refusals that reach the TTAB are affirmed on appeal. Well, here are four appeals that were decided in the last week or so. One refusal was reversed. Which one, pray tell? [Answer in first comment].

In re US Digital Media, Inc., Serial Nos. 85752995 and 85753010 (August 27, 2014) [not precedential]. [Refusal of BUD BAG and EAR BUD BAG for "ear bud accessory, namely, ear bud case"].

In re Internet Promise Group LLC, Serial No. 85637786 (August 25, 2014) [not precedential]. [Refusal of SPICE WATER for "a water-based beverage with a blend of tropical fruit extracts and spices from Indian subcontinent [sic]"].

In re Ethos USA, Inc., Serial No. 85675559 (August 25, 2014) [not precedential]. [Refusal of PROGEAR for "covers for golf clubs; gloves for golf; golf bag covers; golf bags; golf clubs"].

In re Nanomech, Inc., Serial No. 85602143 (August 22, 2014) [not precedential]. [Refusal of nSert for "machine tools for the cutting of materials, namely, coated substrates manufactured using nanotechnology"].

Read comments and post your comment here.

TTABlog note:  See any WYHA?s here, Bud?

Text Copyright John L. Welch 2014.
Categories: Trademark Blogs

Another Real Lulu: Anatomy of an Affidavit

Duets Blog - Fri, 08/29/2014 - 01:48

On Tuesday of this week, we discussed the trademark infringement case filed by Lulu’s Market & Deli against Lulu’s Public House (depicted above), here is a link to a pdf of the Complaint.

As you will recall, we expressed a healthy dose of skepticism about the claims being asserted by Lulu’s Market & Deli, and we predicted that no emergency injunction would issue before the closing of the 2014 Minnesota State Fair next Monday. It appears our prediction will hold, given that today is the last opportunity to obtain an emergency order from the court to impact use this season.

Although the complaint was filed last Friday, along with a Motion for Temporary Restraining Order, as Ramsey County District Judge Robert A. Awsumb — who was assigned the case on Monday — noted in his Order on Tuesday, no emergency hearing will be scheduled until Lulu’s Market & Deli files with the court, proof of service of the complaint and motion on Lulu’s Public House.

Let’s count the number of ways, according to the actions of Lulu’s Market & Deli, that this is so not an emergency that would require immediate court intervention.

First, despite District Judge Awsumb’s warning on Tuesday, still no evidence of serving notice on Lulu’s Public House has been filed with the court.

Second, the owner of Lulu’s Market & Deli, submitted his Affidavit, last Friday to explain the need for the emergency injunction, but in doing so, admitted: “On or about June 26, 2014, I read a story in the St. Paul Pioneer Press about new food vendors entering the Minnesota State Fair, which is taking place this August 21 through September 1. Among the new vendors who were reported to be entering the State Fair was an operation called ‘Lulu’s Public House,’ . . . . The newspaper story ran in the ‘Eats’ section of the Pioneer Press. Since June 26, 2014, I have also seen several other internet news and information sites publicize the entry of ‘Lulu’s Public House’ at the State Fair.”

So to be clear, Lulu’s Market & Deli waited to file suit and request emergency court action until after the State Fair opened and more than eight weeks after admitted knowledge of Lulu’s Public House coming to the State Fair — and, the June 25 Pioneer Press article specifically referenced the “Breakfast Juicy LuLu” menu item that Lulu’s Market & Deli is complaining about.

Third, the Affidavit of the owner of Lulu’s Market & Deli also admitted: “Since the June 26, 2014 Pioneer Press story ran, I have been contacted by between five and ten people each week who mistakenly believed that ‘Lulu’s Public House’ was affiliated, associated, or connected in some way with Lulu’s Market & Deli.”

So, by the third full week of July, Lulu’s Market & Deli had heard from twenty to forty ”confused” people, but waited more than another four weeks to take formal action (the papers are also silent about and beg the question of when Lulu’s Market & Deli first contacted Lulu’s Public House), tellingly after the opening of the State Fair.

By Tuesday of next week, when the court reopens after Labor Day, the claimed need for emergency relief will be moot.

To be serious about seeking an emergency temporary restraining order, Lulu’s Market & Deli needed to move quickly upon learning what it learned in June, it needed to communicate through its actions that immediate attention and court action was required to avoid irreparable harm. Yet, the complaint, motion for temporary restraining order, and supporting affidavits, all beg the question of why Lulu’s Market & Deli waited so long, seriously undermining the request for immediate and emergency court intervention.

Of course, actions speak louder than words.

Just curious, why does the operation of Lulu’s Public House at the Minnesota State Fair create a twelve day emergency for Lulu’s Market & Deli, when another’s food truck – operating under the name ”Lulu’s Street Food” — has been circling the streets in the Twin Cities for more than a year?

As predicted, it appears this dispute will be sorted out after the 2014 Minnesota State Fair ends.

If so, that will provide Lulu’s Public House plenty of time to redeem itself and probe the claims and motives of Lulu’s Market & Deli, if it is inclined to defend itself.

There appears to be plenty to probe, based on a cursory review of the complaint, motion, and affidavits filed by Lulu’s Market & Deli.

First, Lulu’s Market & Deli does not appear to own a registered trademark, so it actually will have the burden of proving the existence of common law rights and the scope of those rights.

Second, although Lulu’s Market & Deli’s motion for a temporary restraining order contends that Lulu’s is an “arbitrary term” that “deserves the highest protection” and “no proof of secondary meaning” is required — the owner’s Affidavit admits that the “Lulu’s Market & Deli” name “is derived from the original owner’s last name. . . .”

Surnames are considered descriptive, and as such, they don’t enjoy exclusive rights upon first use, but they require a showing of secondary meaning or acquired distinctiveness. Here, the current owner’s Affidavit admits to only “spending $15,000 on advertising and marketing using the business’s name” since he became the owner in 2010.

Secondary meaning is not assured to Lulu’s Market & Deli. And, it will be interesting to see how Lulu’s Market & Deli plans to prove that Lulu’s enjoys a special significance or secondary meaning while another’s food truck — also using the Lulu’s name — has been roaming the Twin Cities for more than a year.

It is unclear whether Lulu’s Market & Deli will be able to rely on the claimed 13 years of use of Lulu’s by the prior owner with the last name Lulu — no chain of title has been made of record yet, and the current owner seems to lack personal knowledge of any prior use (“[t]o the best of my knowledge, since it first went into business, it has always operated under the name Lulu’s Market & Deli”), calling into question whether a proper assignment was made when he took over the business on the corner of Selby & Fry in St. Paul, Minnesota.

Indeed, the plaintiff’s assumed name filing for “Lulu’s Market & Deli” is dated September 14, 2010.

Nevertheless, assuming for the moment that prior common law rights can be proven, Lulu’s Market & Deli also will have to establish more than de minimis and otherwise manageable confusion in the marketplace.

Keeping that in mind, all of the customer, employee, and friend generated Affidavits purporting to prove “actual confusion” appear tainted by a leading questionnaire admittedly provided to each of them by the owner of Lulu’s Market & Deli, specifically asking: “When you heard or read about Lulu’s Public House entering the Minnesota State Fair, did you believe that it was affiliated or associated with Lulu’s Market & Deli?”

Ouch, that burns a lot like molten cheese dripping from a juicy lucy. This kind of evidence is not persuasive and it isn’t going to cut it, if the case is pursued beyond the closing of the State Fair in 2014.

The complaint and other papers filed by Lulu’s Market & Deli also question the good faith of Lulu’s Public House in adopting and using its name. Those filings call out the actions of the owner of Lulu’s Public House as ”wrongful,” “cavalier,” “willful, deliberate, and/or intentional,” “infringing,” and “unlawful.”

We had the distinct pleasure of meeting Lulu — the owner of Lulu’s Public House — and snapping the photo (above and to the right) two nights ago.

The Lulu we met is anything but the way described, she is charming, and seems to be a real and authentic sweetheart who wears the American flag quite well, by the way.

Oh, and did I mention, her name is Lulu? I’m thinking that quiets at least the motive behind selecting the name Lulu’s Public House.

So, we’ll be following this case closely, stay tuned dear readers.

Categories: Trademark Blogs

Tesla Trademark Dispute in China Resolved

Intellectual Property News - Thu, 08/28/2014 - 16:42

IPNews® - Tesla has announced that it has amicably and completely resolved a trademark dispute in China making way for CEO Elon Musk to grow the company's brands in the world's largest automobile market.

Tesla was locked in a legal battle with Zhan Baosheng, who registered the Tesla trademark before the California-based carmaker came to China. But, with the matter resolved, Tesla expects to have undisputed rights to its trademarks in China.  To continue reading, click: Tesla Trademark Dispute in China Resolved

Categories: Trademark Blogs

UN Inspectors Find Need For Transparency, Changes In Governance At WIPO

IP Watch - Thu, 08/28/2014 - 06:51
The United Nations Joint Inspection Unit (JIU) has issued a substantive analysis of management and administration in the UN World Intellectual Property Organization. And while the report highlights significant progress in a number of areas, it offers a list of ways WIPO can do better – including on transparency and sorting out staff concerns and strengthening member state oversight.
Categories: Trademark Blogs

Copyright Watch: Suit over the NCIS Bert the Far***g Hippo

Duets Blog - Thu, 08/28/2014 - 06:37

I can’t even say the word!  Don’t worry, I’ll have to eventually.  Let’s just say the folks at CBS are likely pretty steamed up over getting hauled into court on a smelly copyright suit involving a noisy character from its popular NCIS show.

The California designer, developer, and manufacturer of the original “Bert the Farting Hippo” is suing CBS as well as a host of others including the online retailer authorized by CBS to operate and sell goods in the CBS Store.  The copyright infringement suit alleges that the retailer went rogue in 2012, opting to source the copyright-protected plush and popular noisemaker in China rather than the California company that developed the original, Folkmanis, Inc.

As of this morning, Bert the Farting Hippo appears to be pulled from the virtual shelves of the CBS Store.  Earlier this week, The Hollywood Reporter noted that the hippo was still for sale at 53% off.

According to the Folkmanis complaint filed Monday in the Northern District of California, Bert’s first appearance on television came back in 2003 when the producers of NCIS acquired a silent version of the stuffed hippopotamus for use on the show.  When the hippo appeared on the show, the complaint alleges, “it was often accompanied by a dubbed sound effect of a fart attributable to the Hippo 1 puppet, and the show puppet was referred to and came to be known as ‘Bert the Farting Hippo.’”

Quick aside: I love the way lawyers write sometimes: a “fart attributable to…”  It almost hearkens to patent claim-writing parlance.  Attorney H. Michael Brucker, who filed the suit, must not be aware of the time-old rule, “you smelt it, you dealt it.”  It’s so much more conversational that way!  Then again, I see nothing about Bert’s ability to smell.  But I must admit, it’d be pretty cute if parents started to teach their children to assign blame using a more proper form of attribution.  But I digress.

The suit goes on to allege that in 2010, CBS and its online retailer-licensee “surmised that a hippo puppet would be a profitable product to offer for sale on the CBS Store.”  Folkmanis obliged, developing a version of its hippo that included “a sound box that emulates the sound of a fart.”  Emulates! Much to the chagrin of parents everywhere, of course.  In 2011, a keychain version of Bert was introduced.

Can you guess how many hippos they sold between just 2010 and 2012?  I’m not an NCIS fan so I didn’t know about Bert until I caught wind of this suit this week, so I’d never heard of this creature.  Would you believe it if I told you they sold some 30,000 farting hippos?  That’s what the complaint alleges.

Enter the presumably cheaper Chinese counterparts.  Folkmanis alleges that the online retailer operating the CBS Store started sourcing the hippos in China starting in 2012 and hasn’t purchased a single hippo or hippo keychain from Folkmanis since that time.  The lawsuit cites two copyrights, one for the stuffed animal toy, and one that’s pending that covers the keychain.

Since 2012, Folkmanis alleges that it has suffered an estimated $733,000.00 in damages.

Categories: Trademark Blogs

Test Your TTAB Judge-Ability on this Service Mark Specimen of Use

TTABLog - Thu, 08/28/2014 - 02:52
This applicant tried to register the mark ANOTHER GIANT EAGLE ADVANTAGE for "supermarket services," relying on the specimen of use displayed immediately below. The examining attorney refused registration, maintaining that the specimen did not show use of the mark in connection with the recited services. Applicant appealed. How would you rule? In re Phoenix Intangibles Holding Company, Serial No. 85355964 (August 26, 2014) [not precedential].

(click on photo for larger picture)
"A service mark specimen must show an association between the mark and the services for which registration is sought, although the services need not be expressly referenced." The question was this: how would consumers perceive applicant' use of the mark on this specimen? Does it identify supermarket services?

The examining attorney contended that the advertisement is limited to beer, not supermarket services. Applicant, on the other hand, argued that beer is a product often sold in supermarkets and that "many, if not all, supermarkets have advertisements featuring only a portion of the products they sell ...." The Board agreed with applicant: "it is common knowledge that beer and wine may be sold in supermarkets and that supermarkets often advertise a few of the products they sell." [Apparently, the Board took judicial notice of that "fact"]. It noted that the case law does not require that the specimen include a statement as to the nature of the services.

The Board concluded that the specimen, considered in context, shows "direct use of the mark" in connection with supermarket services.

The advertisement submitted as a specimen promotes the sale of beer at a store such as the GIANT EAGLE MARKET DISTRICT shown in the logo at the bottom of the advertisement. A market includes a supermarket. Thus, we have a connection between the mark and a store that offers a variety of goods. *** [A] purchaser or prospective purchaser of Applicant's supermarket services would view the mark ... as promoting the sale of a wide selection of beers at Applicant's supermarket.
And so the Board deemed the specimen of use acceptable and it reversed the refusal.

Read comments and post your comment here.

TTABlog comment:  A strange decision, I think. Why wouldn't consumers think this was an advertisement for just a liquor store?

Text Copyright John L. Welch 2014.
Categories: Trademark Blogs

WHO Raises Its Voice To Underline Health Effects Of Climate Change

IP Watch - Wed, 08/27/2014 - 09:20
The World Health Organization this week is holding its first conference on health and climate change. The major objective of the conference is to raise awareness on the impact of climate change on health, according to the WHO, which said it aims to strengthen its voice in the debate.
Categories: Trademark Blogs

Blue 42. Set. Trademark! I mean, Hike!

Duets Blog - Wed, 08/27/2014 - 07:08

Can you feel it? All around the country, fields are being groomed, stenciled, and painted. Tonight, the college football season begins with Georgia State taking on Abilene Christian in what could be a preview of one of hundreds of games that most of us don’t really care about. But like so many fans around the country, I’ll probably still watch it, at least for a quarter: I missed you Football.

Football certainly hasn’t been gone from the news though, as lawsuits addressing scholarships, unions, and additional antitrust violations have all made headlines. But one headline caught my attention, an article discussing the University of Southern California’s head coach Steve Sarkisian filing a U.S. Trademark Application for his moniker SARK. Sark joins a number of other college football coaches who have applied to register their names.

Just last month, we covered the University of Arkansas’s registration of the SOOOIE RAZORBACK cheer. There was also the Oregon/Oregon State CIVIL WAR, too. This got me wondering, if trademark law can protect coach names, chants, and intrastate rivalry games, what other fun ways can I think about work while watching football?

How about stadiums?

Check. Well, technically only the turf is claimed as a feature of the mark. Steve discussed this registration back in 2009. Also, the red version for Eastern Washington. Not the stadium itself. But still.



Check. Oh, and better get one for the away uniforms, too.

And speaking of uniforms, if you were considering launching a business that sold perfume or deodorant in the form of a football jersey, well. Don’t. Not just because its a terrible idea, but because you might be infringing on the trademark registration below:


And since we’re on the subject of product trade dress, don’t forget about football shaped brownies:


And you definitely won’t want to forget about your football shaped “alcoholic beverages except beers:”


And let’s see if you can guess what kind of goods or services this is a trademark for:

Yes, it’s a kicking tee. And yes, it’s registered on the Principal Register in connection with kicking tees.  How? Well, apparently, the texture on the tee is so unique that it has acquired distinctiveness in the minds of consumers as identifying a particular source. Right.

There’s even a trademark registration for this logo:


Which is apparently in no way associated with this registered trademark of Nike:


Or how about this trademark:

Yep, that yellow line is a trademark of Sportsvision. Martha covered that here around Super Bowl time – Oh, sorry Roger -  The Big Game time.

And if you’re attending a game at Texas A&M, not only will you be surrounded by trademarks, but you will BE a trademark, way to go 12TH MAN®!

There are certainly many more that we could cover, but I think it is pretty clear that this Saturday, whether you’re in the stadium, on the LA-Z-BOY® at home, or at the BLUE 42 SPORTS GRILL in Winter Garden Florida, you will be surrounded by trademarks. And football. Glorious, but possibly not-very-competitive, football. Enjoy it! – I know I will (GO HAWKS!!).

Categories: Trademark Blogs

Médecins Sans Frontières Warns About IP Inclusion In Asian FTA

IP Watch - Wed, 08/27/2014 - 06:41
The inclusion of intellectual property in the ongoing negotiations of the Regional Comprehensive Economic Partnership between 16 countries, most of them Asian, is raising concerns about "TRIPS-plus" measures that could jeopardise generic drugs production in India, according to Médecins Sans Frontières.
Categories: Trademark Blogs

Market Failure, Not IP, The Issue In Ebola Treatment Shortage, WHO Says

IP Watch - Wed, 08/27/2014 - 05:57
Faced with the worst outbreak of Ebola since its discovery some 40 years ago, the world is scrambling for treatments. A World Health Organization-convened panel of experts has decided it is ethical to use experimental treatments. Why is there no treatment available even after 40 years? Market failure, not intellectual property rights, says the WHO.
Categories: Trademark Blogs

TTAB Reverses ENTERPRISE Phantom Mark and Mutilation Refusals

TTABLog - Wed, 08/27/2014 - 03:16
The Board reversed a refusal to register the mark shown below for vehicle rental and leasing and fleet management services, rejecting the PTO's contention that applicant's mark is a "phantom mark" and overruling the Examining Attorney's objection to the specimens of use. In re Enterprise Holdings, Inc., Serial No. 85675437 (August 25, 2014) [not precedential].

Phantom mark: The examining attorney contended that applicant was trying to register more than one mark, because applicant "inserts changeable merely descriptive wording" in the blank space below the word ENTERPRISE. As such, the mark is a phantom mark.

The CAFC has defined a phantom mark as "one in which an integral portion of the mark is generally represented by a blank of dashed line acting as a placeholder for a generic term of symbol that changes depending on the use of the mark." Registration of a phantom mark is prohibited because one cannot conduct a proper search of the mark and fails to give proper notice to other trademark users. [Example: HERBAL ESSENCE OF xxxx, where xxxx may be one of a number of fruit names, such as HERBAL ESSENCE OF APPLE, HERBAL ESSENCE OF KUMQUAT, etc.].

Applicant's description of its mark was as follows: "The mark consists of a green square to the left of a black rectangle. The letter "e" is white and positioned within the green square. The letters "nterprise" are white and positioned within the black rectangle. The foregoing elements are positioned over a barrel-shaped shield design that is white outlined in black."

The Board pointed out that this description does not indicate that there are missing elements or elements that will change. Moreover, the application drawing depicts a single mark. The Board therefore reversed the phantom mark refusal.

Specimens of use: Applicant's specimen brochures are depicted immediately below:

The Examining Attorney maintained that the specimens display the mark as ENTERPRISE FLEET MANAGEMENT and design and ENTERPRISE COMMERCIAL TRUCKS and design, whereas ; and the drawing shows the mark as ENTERPRISE and design without any additional wording. Therefore, he concluded, the mark in the drawing is not a substantially exact representation of the mark as used on the specimen, as required by Rule 2.51.

The question, then, was whether applicant had mutilated its mark, which reduced to this basic query: what exactly is a trademark? It is something that creates a separate and distinct commercial impression that indicates the source of the goods or services. The examining attorney argued that, since FLEET MANAGEMENT and COMMERCIAL TRUCKS are not generic for any particular service, the addition of this merely descriptive language clearly changes the impression of the mark.

The Board disagreed. FLEET MANAGEMENT is generic for fleet management services, and COMMERCIAL TRUCKS is at least highly descriptive of leasing and rental services. These terms not only cannot function alone as marks for applicant's services, but they also are separable from the rest of the mark. Therefore, their deletion does not change the commercial impression of the mark.

Consequently the Board found the specimens of use to be acceptable and it overruled this objection.

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TTABlog note:  In support of its ruling on the specimens of use issue, the Board pointed to the ridiculous TINEL-LOCK decision, which held that a specimen of use displaying the term TR06AI-TINEL-LOCK-RING supported registration of the term TINEL-LOCK for metal rings.

Text Copyright John L. Welch 2014.
Categories: Trademark Blogs