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Archive for January, 2010

What is a “bona fide intent” to use a trademark?

Posted by ipelton on: January 29th, 2010

There are two types of trademark applications in the US:

  • one based on current use of the trademark in commerce in the US for the goods or services claimed [a 1(a) application]
  • one based on a “bona fide intent” to use the trademark in commerce in the US for the goods or services claims [a 1(b) application]

In recent years, several oppositions to applications filed based on the “bona fide intent” have been cancelled because the applicant could not provide enough evidence to support its claim that it had a bona fide intent.  How much evidence should be required to show that an intent is bona fide?  Should evidence of  the applicant’s “bona fide intent” be required at all if there is no evidence showing that the intent in filing the application was malicious or deceptive?  These are questions that may be re-examined in a new light given last year’s decision by the Court of Appeals for the Federal Circuit in Bose, which made it clear that claims of fraud are subject to a higher standard, and that they must be proven by “clear and convincing” evidence.  At least that is what our office argued this week in a filing to the Trademark Trial and Appeal Board.

Full brief here: http://ttabvue.uspto.gov/ttabvue/v?pno=91178539&pty=OPP&eno=50

Here is  an excerpt:
[A] declaration regarding an Applicant’s bona fide intent to use its mark is
exactly the type of statement that Bose addresses and for which the Federal Circuit mandates a
higher standard. Consequently, Bose requires that an allegation that an applicant under §1(b)
lacked a bona fide intent to use the mark on goods and services must be plead with particularity
and proven with clear and convincing evidence. FRCP 9(b); Bose, 91 USPQ2d 1938.

In other words, a declaration regarding an Applicant’s bona fide intent to use its mark is exactly the type of statement that Bose addresses and for which the Federal Circuit mandates ahigher standard. Consequently, Bose requires that an allegation that an applicant under §1(b)lacked a bona fide intent to use the mark on goods and services must be plead with particularityand proven with clear and convincing evidence. FRCP 9(b); Bose, 91 USPQ2d 1938.

Comments from any attorneys who have encountered this issue or have any thoughts on it are welcome.

Recent Trademark Filing Statistics

Posted by ipelton on: January 28th, 2010

CSC’s Trademark Insider Report for Q3 2009 came out last week.  There are a variety of interesting items in the report.  Overall, filings are still down considerably from before the recession.

The full report is here (PDF): https://www.cscglobal.com/img/marketing/pdfs/Q3-09Trademark-Insider.pdf

The list of top company filers contains the usual suspects – Mattel, Time Warner, Walt Disney Company, Johnson & Johnson, etc.  These are companies that are investing in the future, not shrinking in a recession, and recognize the value of protecting their intellectual property. You don’t have to be a Fortune 500 company to execute the same philosophy.  Companies are flooding to our firm with new products and services – things like iPhone applications, websites, restaurants, exercise for kids, and lots more.  These companies recognize that there are industries where people are spending lots of money, and that while some competitors whittle away cutting spending and waiting for the end of the recession,  others are growing now and preparing to grow even more as the economy continues to get better.

I was in the top 40 trademark attorneys (in terms of number of filings) for the year through the 3rd quarter.  While we handle an impressive volume of applications, we focus more on quality and value for our clients than shear numbers.  And about 1/2 of those ranked higher on the list are from much larger law firms.

Lesson: Are you preparing for the future like those companies at the tip of this list?

Wall Street Journal features client and their trademark

Posted by ipelton on: January 22nd, 2010

Congratulations to IntenSati® and Patricia Moreno who were featured in the Wall Street Journal and on the Today show this week! We registered IntenSati on behalf of our client a few years ago.  The best part of the WSJ article is that it specifically references the trademark!

  • “IntenSati was invented by fitness instructor Patricia Moreno and trademarked by her. It combines aerobics, martial arts, dance, yoga, strength training and positive affirmations. The program is offered at gyms across the country. IntenSati resonated with Ms. Byalick, even though she lasted just 15 minutes of her first class.”

Full Wall Street Journal story here:

http://online.wsj.com/article/SB10001424052748704130904574644550250747562.html

and video here: http://online.wsj.com/video/spiritual-aerobics-rev-up-new-york/7804B9CA-4B86-4788-9F97-1C26FC6E6925.html

IntenSati trademark registration here: http://bit.ly/7yF0pM

Lesson: Protect your brand before it gets big, then when it gets big you have a strong protected brand already and can leverage it to more protection and more brand awareness.  If you ignore your brand, when your business is ready for its big break perhaps the brand will be unprotected or worse yet confused with a competitor.

NFL Championships – Battle of the Logos

Posted by ipelton on: January 20th, 2010

The AFC and NFC championship games in the NFL will be played this weekend and decide who will meet in the Super Bowl. The Super Bowl is certainly one of the most well-known, valuable and well-protected trademarks in the US.  Advertising surrounding the Super Bowl has become its own event.

Last year, Doritos held a contest giving away $1 million dollars for the favorite add submitted by the public.  This was a great “social media” campaign as the video makers were doing unpaid promotion seeking votes via a Doritos website and the winning commercial was ranked as one of the best of the game and received great publicity for Doritos.  [Full disclosure: The winners Joe and Dave Herbert are former clients.]  Article about the commercial makers here: http://www.usatoday.com/money/advertising/admeter/2009admeter.htm

Of the four teams left trying to reach the Super Bowl this year, Jets, Saints, Vikings, and Colts, which has the best brand?

My personal opinion is that the Vikings is the coolest of the bunch, with the Saints a close second.  It is rather unusual that all 4 of these team names are rather unique – as opposed to the Cowboys, Chiefs, Panthers, and other team names that are also used by many college and/or high school teams.

The Colts has a nice simplicity to it and to the logo/helmet.  But that logo came from the Baltimore Colts, and there is a long and bitter history about the team leaving Baltimore.  The “Colts” and Indianapolis have never seemed like a natural fit, more like the name was always an loan to them.  When I think of the Indianapolis Colts it does not conjure up much of any image of the team of the fans.

Not true with the Vikings.  The Vikings tells a whole story.  Fans dress up.  Mascots have beards and weapons.  The image matches the brute physical nature of football, and also the cold weather in Minneapolis.  It fits the city and the team very nicely.

The Saints also fits the city and fans of New Orleans.  The teams was names for the jazz tune “When the Saints Go Marching In.”  The colors black and gold were chosen as a link to the oil industry.  It fits and it works.  And how many other pro teams have a name with such direct religious meaning?

The NY Jets got their name because they originally played in Shea Stadium in Queens with the sound of airplanes from nearby LaGuardia Airport roaring overhead.  The colors green and white a match to those of Hess gas stations (Mr. Hess was one of the owners).  Other than the J-E-T-S JETS JETS JETS cheer, I’m not sure there is much character there in the name.  It is unique.  But a football team named after airplanes?  It does not evoke images of toughness, physicality, and the other characteristics of the game of football.

Regardless of the outcome on the field, I think the Vikings have the best logo and brand of the four teams left vying for the Super Bowl.

LESSON: Does your brand reflect your community?  Does it have an emotional tie to your products/services or to your customers?  The “Vikings” name and brand does.

twitter username infringer removed

Posted by ipelton on: January 16th, 2010

Do you use twitter?  Millions do.  If your trademark is being used as a username by someone else, you may have the right to get it back. The process is relatively simple and quick — last week our firm successfully recovered a username for a client that had been reserved by a competitor.

The rules from Twitter: http://help.twitter.com/forums/26257/entries/18370

My twitter feed: http://twitter.com/tm4smallbiz

Do you have a presence on web 2.0 and social networking sites? Even if you do not, it is likely a good idea to reserve key usernames just to keep others from getting them.  And if you do have a presence, have you incorporated your trademarks and made sure others are not abusing them with usernames they have no rights to?

TIP: here is a great tool to search the availability of usernames on the most popular sites: http://knowem.com/