Trademark Blogs

3 Really Is the Magic Number

Duets Blog - 7 hours 2 min ago

- Mark Prus, Principal, NameFlash

Schoolhouse Rock fans already know this, but it took a January 2014 publication in the Journal of Marketing for marketers to get confirmation.

I blogged about Procter & Gamble’s “Secret of the Number 7” a few years ago on DuetsBlog, and later observed that their “magic number” had dropped to 5.

Well now there is scientific evidence that the actual magic number is 3.

The publication was titled: “When Three Charms but Four Alarms: Identifying the Optimal Number of Claims in Persuasion Settings”. The authors Suzanne B. Shu & Kurt A. Carlson conducted a study where consumers were shown messaging that consisted of one, two, three, four, five and six positive claims about a product such as shampoo or a breakfast cereal or even a politician.

For example, in the case of the “six claim” breakfast cereal situation, participants were told:

“Imagine that you are shopping at the grocery store and you notice that a brand of cereal you sometimes buy has a new package design. As you look closer you discover that they have also changed the product itself. The packaging says that it is now:

“Healthier, better tasting, crunchier, sweeter, organic, and with higher quality ingredients.”

After the participants saw the messaging, the researchers measured the attitude of each respondent to gather positive or negative impressions. They also measured the amount of skepticism the respondent had about whether the messaging was intended to inform them or to push them to choose a particular product.

The results clearly demonstrated that those who read three claims rated all of the subjects of the ads (e.g., breakfast cereal or politician) significantly more positively than respondents who had read the ads with one, two, four, five or six positive claims. The results seemed to indicate that adding additional positive claims increased appeal until the third claim, but after the third positive claim, additional claims increased skepticism which in turn lowered the overall level of persuasion.

So 3 really is the “Magic Number,” at least when it comes to adding positive claims to your advertising!

Categories: Trademark Blogs

Sports Broadcasters Make Case For International IP Rights Protection

IP Watch - Tue, 09/30/2014 - 06:24
On the side of the World Intellectual Property Organization General Assembly last week, sports and entertainment broadcasters held an event to highlight the challenges they are facing in the digital world, in particular unauthorised retransmission of live events.
Categories: Trademark Blogs

Coca-Cola’s Significant Interest in Zero Marks

Duets Blog - Tue, 09/30/2014 - 05:39

Coca-Cola just announced it is introducing Coke Zero in India, which will make it the sub-brand’s 149th market in the world, a truly remarkable reach.

As the popular Coke Zero brand is approaching its tenth anniversary in the U.S., it seems like a good time to explore Coca-Cola’s trademark position in COKE ZERO and COCA-COLA ZERO here in the U.S., especially given the news last week that the beverage giant escaped a trademark infringement suit over the marks in the Northern District of Illinois.

After looking into that case, I was surprised to see, as long as Coke Zero has been on the market  — none of the ZERO marks sought by Coca Cola have registered, all seventeen remain pending in the U.S., including COKE ZERO, COCA-COLA ZERO, SPRITE ZERO, PIBB ZERO, VAULT ZERO, and POWERADE ZERO, among others.

In fact, the series of ZERO marks has been the subject of at least two very large and significant consolidated trademark oppositions at the TTAB of the USPTO, since 2007, and the one brought by Royal Crown Company (RC) remains active — in fact, the case was fully briefed this past summer and Coca-Cola requested just last month that the Board schedule final oral argument in the case. In the Royal Crown opposition, RC contends that Coca-Cola must disclaim any exclusive rights in the term ZERO, as that term is either generic for zero calorie beverages or merely descriptive without any secondary meaning or acquired distinctiveness.

The other consolidated opposition was brought by AMBEV, back in 2007, also asserting mere descriptiveness and lack of secondary meaning, but AMBEV’s consolidated opposition was dismissed just over two years ago by the TTAB, as the Board was convinced at that time, Coca-Cola had established acquired distinctiveness in its ZERO marks based on the factual record developed in that case.

So, if ZERO marks can be owned in connection with beverages, how did Coca-Cola escape liability in the trademark infringement suit in the Northern District of Illinois last week? The plaintiff in that case had asserted exclusive common law rights in NATURALLY ZERO for spring water, but it admitted to gross sales of $150,000 between 1998 and 2004, no production or sales after 2004, and no attempt to resume sales until 2010, well after Coca-Cola had launched its ZERO series of beverage products in the U.S.

Moreover, the plaintiff there had admitted NATURALLY ZERO communicated “no calories, you know, a drink about nothing . . . .” As a result, the court granted summary judgment to Coca-Cola, ruling as a matter of law that the plaintiff’s merely descriptive mark had not acquired distinctiveness, and even if it had, the claimed NATURALLY ZERO mark had been abandoned.

Coca-Cola has been careful to straddle the fine lines of trademark protectability, since it has found itself on both sides of trademark disputes. Taking the position that ZERO is descriptive permitted Coke to defend the above-referenced trademark infringement challenge, while at the same time maintain that Coca-Cola’s juggernaut of marketing, sales and promotion established that is has acquired distinctiveness in its ZERO marks.

Yet, it remains to be seen whether Coca-Cola will prevail in the consolidated opposition brought by Royal Crown Company, perhaps its most significant challenge to date regarding the ZERO series of marks. I’ll have to say, RC’s Trial Brief makes out a pretty strong case for finding ZERO generic for zero calorie beverages. In other words, is ZERO like LIGHT for beer, STONE OVEN for pizza — basically denoting the name of a product category instead of a source identifier?

In the end, given the Board’s recent genericness rulings regarding Subway’s claimed FOOTLONG mark, and Frito-Lay’s successful PRETZEL CRISPS challenge, it will be worth watching to see whether the Board finds that “ZERO” primarily means Coke or just a soft drink having “no calories, you know, a drink about nothing . . . .”

Categories: Trademark Blogs

TTABlog Quarterly Index: July - September 2014

TTABLog - Tue, 09/30/2014 - 02:49
E-mail subscriptions to the TTABlog are available. Just enter your e-mail address in the box on the right to receive a daily update via Feedblitz. You may also follow the blog on Twitter (here). And don't forget to leave your comments! [Note that E-mail subscribers may gave to go to the blog to see comments]. Finally, please report any broken or inoperative links, as well as any errors and omissions, to the TTABlogger at jwelch at

Section 2(a) - Deceptiveness:
Section 2(a) - False Association:
Section 2(a) - Immoral or Scandalous:
Section 2(b) - Governmental Symbols:
Section 2(d) - Likelihood of Confusion:
Section 2(e)(1) - Deceptive Misdescriptiveness:
Section 2(e)(1) - Mere Descriptiveness:
Section 2(e)(2) - Primarily Geographically Descriptive:
Section 2(e)(3) - Primarily Geographically Deceptively Misdescriptive:
Section 2(e)(4) - Primarily Merely a Surname:
Non-Use/Specimen of Use:
Recommended Reading:
Text Copyright John L. Welch 2014.
Categories: Trademark Blogs

WIPO Amends Patent Cooperation Treaty Fee Schedule

IP Watch - Mon, 09/29/2014 - 10:48
World Intellectual Property Organization members have approved an amendment to the Patent Cooperation Treaty (PCT) aimed at lowering fees for a greater number of users.
Categories: Trademark Blogs

Health Advocates Demand U-Turn In EU Trade Policy To Align With Its Health Objectives

IP Watch - Mon, 09/29/2014 - 08:42
Health Action International Europe, and Oxfam today issued a briefing paper entitled, “Trading Away Access to Medicines: How the European trade agenda continues to undermine access to medicines.” The paper argues that new concerns such as the ebola virus and the threat of unchecked antimicrobial resistance show the need for a new model for financing pharmaceutical research and development.
Categories: Trademark Blogs

Lisbon Agreement Members To Move Ahead With Treaty Talks Despite Resistance

IP Watch - Mon, 09/29/2014 - 06:35
The revision of a World Intellectual Property Organization agreement to include geographical indications, raising their status, was challenged in vain by some countries in the past week. In addition, this week’s WIPO General Assembly has been working intensively on a range of other issues.
Categories: Trademark Blogs

The Promiscuous Licensor

Property Intengible - Mon, 09/29/2014 - 06:27

I recently took the federal courts to task for what I submit is a disconnect between the statutory definition of “abandonment” and the “naked license” defense. My argument is that trademark owners are simply being punished for behavior that is seen as too lax, without any regard for whether that laxness has actually effected a loss of distinctiveness, which is what an “abandonment” under the Lanham Act requires. On cue, we have a state court opinion comparing and contrasting the naked license defense under state law, Michigan in this case, and federal law.

The fact pattern is what you would imagine when hearing the words “naked license.” Plaintiff Movie Mania Metro, Inc. first operated a video rental business in 1989. (As the court did, I will just refer to the “plaintiff,” since, referring to the plaintiff as “Movie Mania” when those words are used as a mark by multiple parties would confuse things even more.) The plaintiff registered (gigantic pdf alert) the trademark with the State of Michigan and then, according to the court, “acted as a promiscuous licensor.” In 1999 the plaintiff sold one location to another company, CLD, and allowed CLD to continue to use the mark for $1 in royalties per year. Further, “[T]he licensing agreement placed almost no restrictions on the use of the mark, nor did it contain standards on advertising or store operations, or include any requirements related to the rental or sale of merchandise.”

In 2005 CLD sold the store to Adnan Samona. Samona asked the plaintiff if it could continue to use the name, which the plaintiff allowed without requiring any license agreement at all. In 2006 and 2007 Samona opened more stores with the “Movie Mania” name and the plaintiff imposed no restrictions on use of the mark. By the end of 2007 there were six Movie Mania stores, four owned by Samona and two by plaintiff. The plaintiff’s state trademark registration also expired in 2006.

In 2010 Samona closed one store and sold the rest of the business assets to the defendants. Defendant Zielke asked the plaintiff for permission to use the Movie Mania mark, but the plaintiff decided now was the time to demand a licensing agreement. The defendants refused and we have a trademark lawsuit.

The Michigan Court of Appeals considered the naked license defense under both federal and state law. We start with a bit of history:

Because naked licensing of a mark destroys the mark’s ability to serve as a source identifier for consumers—in other words, destroys the mark’s ability to function as a trademark—state courts held at common law that plaintiffs who engaged in naked licensing could not prevail in trademark-infringement actions against defendants who used the mark plaintiff nakedly licensed. In trademark-law terms, a mark that is the subject of naked licensing is not “distinctive,” and thus not a valid trademark that is properly protectable under trademark law.

But then we have the passage of the Lanham Act in 1946. The court, absolutely wrongly, suggests that the common law standard survived under the Lanham Act until 1988, when the Trademark Law Revision Act was passed, at which point “Congress revised 15 USC §1127(2) and codified the concept of naked licensing in a specific context: ‘abandonment.'” Well, no, the definition of abandonment on which the court relies was in the original Lanham Act of 1946 in largely similar language. NB, however, that the court’s misreading is understandable: early post-Lanham Act naked licensing opinions simply used the common law standard for naked licensing without a firm fix on how it all fit into the new Lanham Act.

But the point of the exercise is that the naked licensing defense has different statutory bases under federal and state law. Under federal law, the basis for the naked license defense is abandonment, where “any course of conduct of the owner, including acts of omission as well as commission, causes the mark to … lose its significance as a mark.” 15 U.S.C. § 1127(2). But Michigan state law doesn’t have this language. The only definition of abandonment in the Michigan Trademark Act is where the use has been discontinued with an intent not to resume use (the equivalent to the first definition of abandonment under the Lanham Act, for those of you keeping score).

So, rather than a question of abandonment, under the Michigan Trademark Law naked licensing is a question of validity, an element of the plaintiff’s case-in-chief. Here, “defendants have offered convincing evidence—plaintiff’s naked licensing of the ‘Movie Mania’ mark— that ‘Movie Mania’ is not ‘distinctive’ and thus not valid”:

Because plaintiff’s licensing arrangements placed little or no control or restrictions on the business operations of its licensees, it was impossible for consumers to use the “Movie Mania” mark to distinguish the videos and other merchandise on offer as coming from a particular source. Videos rented at Samona’s locations might have been of completely different quality or type than those on hand at plaintiff’s locations, and consumers had no ability, on the basis of the “Movie Mania” mark alone, to tell that the videos came from two separate providers. Accordingly, “Movie Mania” cannot be a valid mark because it is not distinctive, and thus does not function as a trademark: the mark does not “tell shoppers what to expect—and whom to blame if a given outlet falls short.”

But as the court points out, we get to the same place whether it is characterized as abandonment or lack of distinctiveness:

[L]abeling naked licensing as “abandonment” of a mark is simply another way of saying that naked licensing renders a trademark not valid. In each classification, the trademark holder’s conduct—uncontrolled licensing—causes the mark to lose its ability to function as a source identifier to consumers. Stated another way, naked licensing causes the trademark to lose all significance as a trademark. Calling the trademark “abandoned,” as 15 USC § 1127(2) does, or focusing on the mark’s validity, as the earlier cases did, are thus two ways of describing the same concept, and both mandate the same result….

Movie Mania Metro, Inc. v. GZ DVD’s Inc., No. 311723 (Mich. Ct. App. Sept. 9, 2014).

The text of this work is licensed under a Creative Commons Attribution-No Derivative Works 3.0 United States License.

Categories: Trademark Blogs

NGOs: Farmers’ Rights Should Be Safeguarded In Activities Of Plant Treaty, WIPO, UPOV

IP Watch - Mon, 09/29/2014 - 05:42
Over 50 organisations have co-signed a letter to the International Plant Treaty calling for it to safeguard the implementation of farmers’ rights in the context of joint activities with the World Intellectual Property Organization and the Union for the Protection of New Varieties of Plants (UPOV).
Categories: Trademark Blogs

Precedential No. 38: TTAB Deems "BEAUTV" Use-Based Application Void Ab Initio Due To Non-Use

TTABLog - Mon, 09/29/2014 - 03:14
The Board sustained, on two grounds, an opposition to registration of the mark BeauTV, in standard character form, for "providing information about beauty." It declared the application void ab initio because pro se Applicant Bonnie Tseng failed to prove use of the mark for the recited services prior to the filing of her use-based application to register. And the Board found a likelihood of confusion with opposer's registered service mark THE BEAUTY CHANNEL for providing a website and audio-visual materials in the field of beauty. Opposer overcame an early stumble when it failed to properly submit four of its seven registrations into evidence. United Global Media Group, Inc. v. Bonnie Tseng, Opposition No. 91200786 (September 24, 2014) [precedential].

Four registrations not in evidence: Opposer relied on five registrations (and two pending applications) in its notice of reliance, attaching photocopies of the registration certificates, each accompanied by a page from the PTO assignment database indicating that the registration had not been assigned. However, mere copies of the registration certificates did not comport with Rule 2.122(d), which allows a party to make a registration of record by, inter alia, submitting printouts from the PTO electronic records showing status and title. As to four of the registrations, opposer's submissions did not establish status, and therefore they were not properly made of record. [The Board also noted that the mere inputting of a registration number when prompted by ESTTA, when filing an opposition, does not make the registration of record].

As to the fifth registration, because its date of issuance (March 29, 2011) was "substantially contemporaneous" with the filing of the notice of opposition (July 20, 2011), the copy of the registration was sufficient to make that registration of record. See TBMP Section 704.03(b)(1)(A); Royal Hawaiian Perfumes, Ltd. v. Diamond Head Prods. of Haw., Inc., 204 USPQ 144, 145 (TTAB 1979).

The Board noted that, although applicant had admitted in her answer that opposer owned the pleaded registrations, that did not suffice to make the registrations of record. Opposer did not include allegations regarding the validity of its registrations, and the Board refused to find that Applicant Tseng had admitted "what, at best, might be considered an implied allegation in opposer's pleading, i.e., validity and status of the registrations it claimed to own."

As to the two pending applications that opposer identified in its notice of opposition, those applications issued to registration while this proceeding was pending. The Board pointed out that in such circumstances an opposer may make the registrations of record without having to amend the notice of opposition to assert reliance on the registrations. Opposer submitted, via notice of reliance, the electronic records from the PTO database for those two registrations, showing status and title.

Application void ab initio: In response to opposer's discovery requests, applicant failed to provide any documentation evidencing use of the applied-for mark prior to the filing date. Opposer had thus established a prima facie case of nonuse. Applicant nonetheless submitted a number of documents via notice of reliance (to which opposer objected). Applicant's submissions, however, were either inadmissible (e.g., invoices, letters, and other personal documents not available to the public) or failed to show use of the applied-for mark, or both. [One item comprised pages from applicant's website, where the term "BeauTV" appeared only in the copyright notice and the URL. Neither constitutes use of the term as a service mark].

In sum, the Board found that applicant had not used her mark for the recited services at the time she filed her use-based application, and therefore the application is void ab initio.

Likelihood of confusion: For the sake of completeness, the Board also considered opposer's Section 2(d) claim. The Board focused on opposer's registered mark THE BEAUTY CHANNEL as the mark most similar to applicant's mark, noting that if confusion is not likely as to that mark, then there is no need to consider the other two registered marks (BEAUTY EVERYWHERE and SYNCHRONIZING BEAUTY).

The Board first found that applicant's services (providing information about beauty) encompassed those of opposer. It therefore presumed that the channels of trade and classes of consumers are the same for both marks.

As to the similarity of the marks BeauTV and THE BEAUTY CHANNEL, the Board found that consumers would likely understand applicant's mark to be a "telescoped" form of "BEAUTY TV." The terms TV and CHANNEL have a similar significance in the marks, and so consumers will perceive the marks as "having the same meaning and engendering the same commercial impression." The Board concluded that the similarities in the marks outweigh their differences.

Balancing the relevant duPont factors, the Board found confusion likely and it sustained opposer's Section 2(d) claim.

Read comments and post your comment here;

TTABlog note: It may not have been BeauTTAB, but all's well that ends well. Opposer won the opposition, applicant's hollow application was rejected, and the Board laid down the law regarding how to plead a registration.

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

Creators Push For Fair Remuneration At WIPO General Assembly

IP Watch - Mon, 09/29/2014 - 03:08
Creative artists came to this week's World Intellectual Property Organization General Assembly to encourage governments to build a sustainable future for creators and ensure fair remuneration for their work. This may mean looking for ways to redistribute the value of content.
Categories: Trademark Blogs

Show More Value, or Lose The Sale

Duets Blog - Mon, 09/29/2014 - 02:27

Neil F. Anderson, Founder & President, The Courage Group, Inc.

Now days, it’s tough for any business, regardless of size, to successfully compete and win new business.

The days of signing up new clients or customers with ease are long gone. The past recession, the anemic economy, the fierce competition and impact of the internet have all made it very difficult to close the sale. Now you have to fight “tooth and nail” to get more new customers.

Breaking News: The reasons really don’t matter. What matters most is generating revenue, continuing to pay the bills, grow the business and stay out of the business failure graveyard.

What will help? Three words-offer more value. Try this strategy on for size, always give people more value for their hard earned money.

Eight Offering More Value Tips

1. Do Your Homework-To win new business, by adding more value, you first need to know what the other guy is doing. That means updating or writing your business plan.

A business plan is simply a written description of what you are going to do and how you are going to do it. It is your roadmap to success.

One of the best reasons for writing a business plan is that it will force you to examine your competition. You can’t add value to your products or services until you have a strong understanding of what your competitors are offering.

Note-Check out the below entrepreneurs, who recognized the value of writing a business plan. Recognized the opportunity to add more value, based on their knowledge of the competition, then delivered it in order to win business and successfully grow the company.

* Phil Knight/Founder of Nike/Annual Revenue-$24 BB/44,000 employees

* Fred Smith/Founder of FedEx/Annual Revenue-$46BB/300,000 employees

* Jim Koch/Co-Founder/Sam Adams/Annual Revenue/$794MM/840 employees

* Jeff Bezos/Founder of Revenue-$74MM/132,000 employees

2. Now Make Your Changes, Fast- Now that you know what the other guy is offering, time now to make the necessary changes to your current products or your service offerings. Not tomorrow, but today.

Ensure that your promotional materials, yours sales and marketing tools, and your website are updated, to reflect the new value offered.

Now go back and work your old sales prospects/leads list asap and re-introduce them to your updated, more value-driven services or products.

Note-Making changes by adding more value should always be ongoing with your business. Not doing so may mean no sale and maybe no business down the road.

3. Get The Word Out, Market More- You know what your competitors are doing, you now have updated your services/products and you have worked your old sales lead list, now it’s time to let more people know about it. Time to put on your marketing hat.

If you have zero or very limited funds for traditional advertising, try getting some free publicity in the media or elsewhere.

Having your articles get published both online and offline, in major news outlets, appearing on television/radio, and regularly speaking in front of groups will help generate new awareness of your services. And more new sales lead opportunities for you.

Here are the ABC’s of getting free publicity:

Note-To get some media attention, remember this- it is not about you or your business; it is all about the story. This may sound harsh but the media does not care about you, they care about a good story. Hint-devote about five hours a week to some publicity driven activity.

“If I only had two dollars left I would spend one dollar on PR.” Bill Gates — Founder of Microsoft

“If your staff works enormously hard to create something they are proud of, it’s foolish if you don’t let the world know about it. Using yourself to get out and talk about it is a lot cheaper and more effective than a lot of advertising. In fact, if you do it correctly, it can beat advertising hands down and save tens of millions of dollars.” Richard Branson — Founder of Virgin Airlines

4. Demonstrate Your Added Value/Show and Tell Time-Now that you have attracted some new sales prospects, make it easy for potential customers/clients to immediately see the added value.

Don’t forget to showcase the added value offerings with your sales tools; here is XYZ’s price and offerings and here is our price and offerings. But look at all the extra items you will receive with our services, at no extra charge.

Plus, always share your existing client/customer testimonials that showcase the value they received from buying from you. These are a very important tool in your sales kit, use them.

Note-The competition is fierce today. And we live in a hurry up, busy and distracted world, so it’s important to quickly show and demonstrate all of your added value to win new business.

5. Learn More Marketing and Sales Stuff-You can create the best mousetrap, throw in all the added value offerings, but if no one knows about you and the business, or you lack marketing and sales skills, it will be an uphill climb.

Now is the time to make the commitment to become a sponge on both marketing and sales topics. And continually to educate yourself, learn new strategies/tactics that will help you close the deal and grow the business.

Next time you are at the library or bookstore, take the time to browse through all the marketing and sales books and magazines. Or go online and discover a wealth of helpful information. Some favorite’s websites of mine;, and

For any business success- if you don’t love marketing and selling, make sure you have someone on your team that does.

Note-Here is why people don’t buy; no money, no need, no hurry, no trust, no credibility and no value.

6. Adopt a Constant, More Value Mindset-Ok, now that you have done your homework, updated your services/product offerings and are re-focused on your marketing and sales efforts, anything else I can do? Yes.

Starting today, adopt full-time, always added more value mindset within your company. Remember, money has been and will probably always be tight for most consumers. And they are looking to get the most value for their money. Show them the value and increase your sales.

Note-Try this; get into the habit of going to the coffee shop and doing some value brainstorming. With the key question to ask yourself; what else can I offer people with my services or products that will make my deal more attractive to buy?

7. Remember, It’s Not About Me, It’s About You-To close the deal, in an up, down or whatever economy, it pays to do more listening than talking. Once you know what your potential clients/customers really want and need, give it to them, always.

I remember one of my sales prospects telling me that, although it was nice that I could help them with my service offerings. But it would sure be nice if I could offer some start-up consulting, as part of the deal. Bingo-I quickly re-tooled my service offering/package and got the deal done.

If you listen more than you talk, potential clients will usually tell you what value they want and need.

Note-You may want to consider adopting an “ala carte” pricing strategy. These days, potential customers and clients may see more value from you, vs. your competition by having the ability to simply pick and choose only what they need. Rather than having to choose a “one size fits all” package and price.

8. Always Deliver-You have worked hard to close the deal, now don’t blow it by not executing. Time now to live up to your business promise. Deliver the services/products and your added value, always.

FedEx comes to mind here. Here is a company that started out and grew into one of the world’s most successful and admired businesses with their brand promises, speed, execution and delivery. Ship with us and your package will be delivered overnight by 10:30 am. Guaranteed.

Businesses of all shapes and sizes can, and will fail it they don’t live up to their promises with clients and customers.

Note- A quick story- Before starting my own business, I was a salesman for American Airlines in Chicago. I remember the President, from of one of the biggest banks in Chicago, (and a major customer we were trying to win from United Airlines) telling me; “one of the reasons why you got the deal is because when you said you were going to do something, you did it.

Note-He also said that is how he rose through the ranks from a teller to becoming President & CEO. Not bad career advice for anyone.

So see the value, offer the value, and then always deliver the value to your clients and customers. Not a bad recipe for winning in today, tomorrow and beyond.

Categories: Trademark Blogs

Several WIPO Committee Reports Stamped by General Assembly; Dissent Persists

IP Watch - Sun, 09/28/2014 - 06:26
Every year at this time, various World Intellectual Property Organization committees give a report to the organisation’s General Assembly on their past year’s activities and recommendations for decisions to be taken, including work they will be undertaking during the next year. At this week’s Assembly, reports were noted from committees on patents, trademarks, WIPO standards, and enforcement.
Categories: Trademark Blogs

Overflow Seats Available: TTAB Comes to Boston: October 3rd

TTABLog - Fri, 09/26/2014 - 13:01
There are some seats still available in the overflow room (video) for the TTAB hearing and morning TM session. Law School students admitted free! On Friday, October 3rd, the USPTO's Trademark Trial & Appeal Board (TTAB) and Patent Trial & Appeal Board (PTAB) will hold hearings in the Moot Court Room on the campus of Northeastern University School of Law. This monumental event is jointly sponsored by the Boston Patent Law Association and Northeastern University School of Law. Details and registration here. Summary of TTAB case here.

The morning program will focus on trademarks at the TTAB, Chief Judge Rogers will explain "Why the TTAB is not like the PTAB or District Court," followed by John L. Welch, TTABlog and Lando & Anastasi, sharing his views on "The Top 8 or 9 Losing TTAB Arguments." A three judge panel of the TTAB will hear the final argument in an inter partes proceeding, and Susan Montgomery and John Welch will then lead a question-and-answer period among the attendees. The luncheon keynote speaker is Kevin Johnson, Associate General Counsel, The Gillette Company, who will discuss "Brand Intellectual Property." The afternoon session will turn to patents, led off by Claire Laporte of Foley Hoag, speaking on "Emerging Issue in AIA PTAB Proceeding: Obviousness." A hearing before a three judge panel of the PTAB will be followed by a reception.

Read comments and post your comment here.

TTABlog comoment:  In my memory, I think this is possibly the most significant double-header since Wilbur Wood started both ends of a twin-bill for the Chicago White Sox against the Yankees in 1973 (he lost both games).

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

Twitpic Resurrected Following Twitter Trademark Dispute

Intellectual Property News - Fri, 09/26/2014 - 11:50

IPNews® - Twitpic, the service that helped Twitter users share images, has announced that it will be acquired by a buyer following the threat of a shutdown earlier this month.

Twitpic's founder Noah Everett said he would rather quit than launch an unwinnable trademark battle against Twitter which had opposed his trademark application for Twitpic. Twitter not only objected to Twitpic's trademark application filing, but also threatened to cut off the image-hosting site's access to its application programming interface (API).  To continue reading, click: Twitpic Resurrected Following Twitter Trademark Dispute

Categories: Trademark Blogs

Countries Begin Push To Reduce Differences In Patent Laws

IP Watch - Fri, 09/26/2014 - 11:01
Some of the leading patent-filing nations this week renewed an effort to harmonise procedures for filing patents in their national offices. “There’s more urgency in terms of the need for harmonisation,” Michelle Lee, deputy director of the United States Patent and Trademark Office (USPTO), told UN journalists on 24 September. This is particularly the case […]
Categories: Trademark Blogs

Patent Landscape For Hepatitis Issued By WHO

IP Watch - Fri, 09/26/2014 - 04:28
The World Health Organization has published an analysis of the patent situation for new hepatitis treatments, and a call for possible pharmaceutical products for prequalification.
Categories: Trademark Blogs

Finding Beer and Wine Closely Related, TTAB Affirms 2(d) Refusal of "5 GOLDEN RINGS" for Beer

TTABLog - Fri, 09/26/2014 - 03:02
The Board affirmed a Section 2(d) refusal to register the mark 5 GOLDEN RINGS for "beer; malt liquor," finding the mark likely to cause confusion with the registered mark GOLD RING for wines. The Board deemed the marks to be similar in sound, appearance, meaning, and connotation, and third-party registration and Internet evidence convinced the Board that the goods are "closely related." The Bruery, LLC, Serial No. 85656671 (September 24, 2014) [not precedential].

Applicant submitted a Wikipedia entry for  the carol, "The Twelve Days of Christmas," arguing that the phrase "five golden rings" engenders a different commercial impression than the cited mark GOLD RING because the former is "so intrinsically associated with Christmas that it is difficult to read it without elongating the vowels." Unfortunately, applicant submitted that bit of evidence with its appeal brief, and the Board sustained Examining Attorney Natalie Polzer's objection that the submission was untimely.

The Board found that, considering the marks as a whole, the addition of the number "5" and the pluralization of "rings" in the applied-for mark were insufficient to outweigh the similarities in the marks.

As to the goods, applicant contended that consumers would not be easily confused between its craft brewed products and registrant's wine. The Board pointed out, however, that the issue is not whether consumers would confuse the goods, but whether they would be confused as to the source of the goods. Moreover, applicant's identification of goods is not limited to "craft" beer.

The examining attorney submitted numerous use-based third-party registrations showing that the same entity has registered a single mark for both beer and wine. Moreover, Internet evidence demonstrated that many third parties produce and offer both beer and/or malt liquor and wine. And it is not uncommon for craft/microbreweries to also produce wine, sometimes under the same house mark. The Board therefore found that the goods are "closely related." [Why doesn't the Board just take judicial notice of these facts and declare that beer and wine are per se related for Section 2(d) purpose. That would save everyone a lot of time and agony. - ed.]

The presumed channels of trade channels for beer and wine overlap, and in fact the record showed that both goods are sold in liquor stores and by online retailers. [Doh! Judicial notice?]

Finally, applicant maintained that wine and craft beers are rarely purchased on impulse and that consumers of these goods are highly educated [really?] and able to distinguish different brand names. The Board perceptively noted that not all consumers of these goods are highly educated. The goods may be inexpensive and purchased by the public at large. Moreover, consumers who are sophisticated and knowledgeable about alcoholic beverages are not necessarily sophisticated or knowledgeable about trademarks. [And what about consumers who have imbibed an alcoholic beverage, and are then less careful about the next purchase? - ed.].

Considering the pertinent duPont factors, the Board found confusion likely, and it affirmed the refusal.

Read comments and post your comment here.

TTABlog note:  Had applicant submitted the Wikipedia evidence in timely fashion, would that evidence have made a difference? Or is this like the recent PURPLE HAZE case, where the Board observed that those consumers who were unaware of the Jimi Hendrix classic would find the mark confusable with SUNNY HAZE?

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

Lisbon GI Revision A Hot Topic As Members Prepare For Treaty Talks

IP Watch - Fri, 09/26/2014 - 02:46
A proposed amendment to the Lisbon Agreement protecting appellations of origin at the World Intellectual Property Organization is the object of heated discussions between proponents of geographical indications and countries favouring other systems such as trademarks to protect such intellectual property titles. A side event to this week’s WIPO General Assemblies gathered GI proponents to ponder the future of the agreement.
Categories: Trademark Blogs

Googling Doesn’t Break Google Trademark

Duets Blog - Fri, 09/26/2014 - 02:15

Our friend Professor Eric Goldman, over at his Technology and Marketing Law Blog, reported earlier this week that the Google trademark has survived a genericness attack by a fellow named David Elliot. Here is a link to Mr. Elliot’s complaint filed in Arizona federal court back in May of 2012, and here was Martha’s coverage. And, here is more coverage at the time labeling the challenge as being from the “land of slightly crazy lawsuits.” And, here is the Arizona federal court’s decision rejecting the genericness challenge. There.

Mr. Elliot’s focus in attempting to take down the Google trademark was primarily directed to the common verb meaning of the word to search the internet using any search engine, but the court wasn’t moved:

“The word google has four possible meanings in this case: (1) a trademark designating the Google search engine; (2) a verb referring to the act of searching on the internet using the Google search engine; (3) a verb referring to the act of searching on the internet using any search engine; and (4) a common descriptive term for search engines in general.”

The court noted that even if the third meaning was proven, the first meaning is the key meaning because the “undisputed evidence is that the consuming public overwhelmingly understands the word google to identify a particular search engine, not to describe search engines in general.”

Does this decision slam the door to all successful genericness challenges based on the verbing of your favorite brands? It would be a mistake to read it that broadly, in part, because the plaintiff was an individual, and the defendant was, well, Google — a brand reportedly worth more than $150 billion.

While you will recall that I have not been a nervous nellie when it comes to the risks of genericide based on the verbing of brands, if your opponent is not an individual and you’re not Google, this reading on the subject of trademark verbing and the risk of genericide is still highly useful and recommended:

Having said all that, I’m thinking the brand managers over at Rollerblade must be breathing a sigh of relief with this decision.

How concerned are you about genericide?

Categories: Trademark Blogs