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Archive for August, 2010

Like elsewhere in the business side of music, there are plenty of ways to make mistakes. When it comes to trademarks, three to avoid are “failing to use an original and creative name, failing to do a clearance search for a name before using it and failing to register the artist’s name properly,” says Pelton.

Trademarks and The Business of Securing An Artist’s Brand Name | The Atlanta Post.

Click link above for a recent article about the importance of trademarks for a musician /artist / rapper / stage name.  I am quoted several times in the article.

The article does a nice job of detailing the risks as well as the benefits of proactively protecting trademarks.  A music band or rapper’s name is their brand, and changing it or not being able to enforce it can be disastrous, not to mention expensive both in the change itself and in the loss of confused fans.

Trademarks and The Business of Securing An Artist’s Brand Name - Atlanta Post

Facebook tries to register ‘Like’ button

Posted by ipelton on: August 30th, 2010

[tweetmeme source=”tm4smallbiz” only_single=false http://wp.me/pz34L-cf]
Facebook Inc. recently filed more than 10 applications with the USPTO a few months ago to register its “Like” button and the word LIKE.

The applications have all been denied initially due to conflicts or potential conflicts.  Following a “letter of protest” filed by TiVo, the button has been refused registration. (TiVo owns registrations for use of the ‘thumbs up‘ and ‘thumbs down‘ symbols.)

In addition, applications filed earlier for ILIKE which cover, among other things “Internet based introduction and social networking services” and and an application and registration for LIKE, owned by Like.com, block many of the Facebook applications.

Has Facebook overreached in this attempt? I certainly support protecting a wide variety and extensive amount of intellectual property to add value and stop others from infringing it. But even if Facebook were somehow able to obtain a trademark registration for LIKE or the Like button, it would – in my opinion – be virtually impossible to enforce. LIKE is common word, likely used by many websites (and many people) to note something with approval. And ‘thumbs up’ is also very common way to express one’s approval of something.  The Facebook “LIKE” effort smells a little like Subway’s footlong trademark efforts!

If LIKE is not generic, does it function as a trademark to identify the source of the services? My instinct is that it actually does function – that the combination of the button, the image, the color and the text create enough of a mark that when users see it on a website, if they are familiar with Facebook, know what clicking the button will do, namely lead to a connection with Facebook software to tell others that they recommend the page or post. If the LIKE button is not generic, perhaps is has acquired distinctiveness as a mark? If it is approved by the USPTO, perhaps competitors will oppose it in order to ensure that they will be permitted to use the word “like” when allowing users to make referrals.

Adding interest to the efforts to protect LIKE is the fact that Google last week acquired Like.com.  See news story here, which ironically has a Facebook “Like” button on it. Or see another story on it featuring PCWorld.com’s thumbs up and down buttons.

Bottom line: I think in the end Facebook likely could register the LIKE button design upon showing acquired distinctiveness – only if it first overcomes the confusion issues, perhaps with a consent agreement. But the word LIKE itself I think is generic and/or fails to function as a trademark. And any registration received for the word LIKE or the button will be very difficult to enforce, and may be opposed by competitors trying to make sure Facebook cannot try to muffle their use of the word “LIKE” or the ‘thumbs up’ symbol.

Here are Facebook’s LIKE trademark applications (click for link to USPTO.gov data):

85020085
85020084
85020083
85020082
85020081
85020080
85020077
85020073
85020071
85020068
85020066
85020064
85020062
85020058

smar(tm)ark newsletter 1.6

Posted by ipelton on: August 27th, 2010
1.6 : August 2010

smar(tm)ark

brand and trademark newsletter from
Erik M. Pelton & Associates, PLLC

In This Issue
Trademark Tip
Trademarks in the News
Firm News



Interact with EMP&A


Upcoming Events
Speaking Engagements:

  • Falls Church Arts: presentation about copyright and trademark – Sept. 14, 2010
  • Social Media Summit panelist:
    Harrisburg University of Science & Technology – September 15, 2010
  • National
    Association of Professional Background Screeners: 2010 Mid-Year Meeting
    Oct. 10-12 @ La
    Jolla, CA
  • IVAA Online VA Summit: October 8, 2010
  • Video from Erik’s recent presentation “Leveraging Your Intellectual Property” can be found here.
Questions?
Comments?
Contact us at:

Erik M. Pelton & Associates,
PLLC
PO Box 100637
Arlington, VA 22210
ph
703-525-8009
f 703-997-5349
emp@tm4smallbiz.com
Join Our Mailing List

If you enjoy our newsletter or our work, a referral is the greatest gratitude you can provide us. We continually strive to reach as many businesses and entrepreneurs as possible to provide them the benefits of trademark protection and flat fee services.If you are a member of an organization that would benefit from a presentation about brands and intellectual property protection, we would love to hear about it as so we can continue to educate the business community about the value of trademark and copyright protection.

You can also spread the word by becoming a fan on facebook, subscribing to our YouTube channel at erikpelton.tv, or forwarding this newsletter. Thanks in advance!


Trademark Tip: 5 Free Ways to Monitor Your Trademark
To maintain and increase protection of a trademark, the owner must
guard against unauthorized use or infringement. Generally, the sooner
such a situation is discovered the easier it is to resolve, and the less
impact it will impose upon the trademark owner. Conversely, the more money
an infringer or cybersquatter has invested into his or her business, name, or
website, the more likely her or she is to put up a fight against a claim of
infringement. Doing nothing about a known infringement situation for a long
period of time can lead to laches,
a legal theory that could prevent you from later enforcing any
rights you may have once had. On the other hand, evidence that you have
vigorously pursued infringements can be used as evidence in future
trademark disputes to demonstrate the strength of your trademark.
As a result, consistent monitoring of a business’ trademarks has
great value because quickly finding and addressing infringements costs less and generally strengthens your mark.

Here are 5 free resources for monitoring your brands:

  • Google Alerts:Google will grab items from all over the web – including news, blogs,
    and websites – and will then email you results matching your
    trademark.  You can be alerted daily, weekly, or “as it happens.” This
    is a wonderful resource.  If you have a name with multiple words,
    consider using quotes. Also consider creating several alerts with
    variations of your trademark(s) in spelling and spacing (and singular
    vs. plural).
  • Scour the web: Search a variety of websites for
    variations of your trademarks.  Set a “reminder” in your task or
    calendar program to do this monthly. A great website for searching
    multiple search engines is Window1.
  • Industry search: Make a bookmark list of several
    main online resources in your industry. News sites, publications, blogs,
    etc. – any site with comprehensive and popular coverage of the relevant
    industry.  Search on those main sites for your trademarks quarterly.
  • USPTO: The USPTO records of registered and pending trademarks can be searched for free. Check quarterly for any new applications that might be infringements
    of your trademarks. Consider variations in spelling, sound and spacing
    in your searching to capture names which may not be identical but very
    similar.
  • Username search: Check for usernames containing
    your trademarks that are registered and used on the major social media
    and other websites. A free search of 400 social media websites is available
    from KnowEm.

Tip:Once you learn of a possible infringement, unauthorized use, or
cybersquatting, consult an attorney for options to address the matter.

Trademarks in the News

Here are a few recent interesting trademark situations in the news that underscore the importance of having good advice before filing a trademark application or sending an infringement demand letter:

  • Subway is attempting to own exclusive rights to the FOOTLONG name for sandwiches. They
    even sent a cease and desist letter to “Coney Island Drive Inn, a
    restaurant in Brooksville, Florida, that has been selling 12-inch hot dogs for more than 40 years and calling ‘footlongs.’
    Listen to NPR  story for more; also see my blog post about about Subway’s efforts.
  • The FBI (yes, that FBI), recently sent a cease and desist letter to Wikipedia regarding its use of the FBI logo in reference materials about the FBI. Story here. FBI counsel’s letter here; response here. Wikipedia page here(no doubt the page has receive far more traffic since this incident was
    reported than it would have otherwise over the next 10 years combined).
    The FBI claimed that Wikipedia was violating a federal statute, but their letter
    selectively quoted from that statute and (in my
    opinion) misconstrued its meaning.
  • The National Pork Board’s attorneys sent a cease and desist letter to a
    website regarding an April Fools Day advertisement for a fake product: canned Unicorn
    meat, “the new white meat.”  The lawyers apparently didn’t realize it was fake, having not studied the website nor the general lack of “unicorn meat.”
  • Nicole Polizzi, better known as “Snooki” of Jersey Shore fame, was denied in her attempt to register the Snooki name for books due to a likelihood of confusion with the registered trademark for series of children’s books called “Adventures of Snooky.” As expected, the media has not quite reported accurately. Many stories question whether she will “Appeal” the decision when in fact she automatically has the right to file a response to the initial letter from the USPTO. Also, the refusal only applies to registration of her trademark for books; it will not block her application to register Snooki for “Entertainment in the nature of
    personal appearances by a television personality,” and it may not prevent her from using the trademark for a book.

Firm News
The last six months have provided a record number of oral arguments by our firm at the Trademark Trial and Appeal Board in such a span – four. These arguments are the last chance to make the client’s case in an appeal or dispute and are an excellent opportunity to have a dialogue with the panel of judges in each case and address their questions. Oral arguments also provide an opportunity for the judges to get to know us, the quality of work we do, and the vigor with which we represent each client’s case.

Did You Know?

In the first 7 months of 2010 164,217 trademark applications were filed at the USPTO? During the same period in 2009 155,385 applications were filed. Another sign that the economy is growing and improving!

Suggestions
If there are any topics or issues you would like to see covered here, let us know!
——————————————————-

This publication has been prepared for the general information of clients and
friends of the firm. It is not intended to provide legal advice with respect
to any specific matter. Under rules applicable to the professional conduct
of attorneys in various jurisdictions, it may be considered advertising
material.

© 2010
Erik M. Pelton & Associates, PLLC.
ALL RIGHTS RESERVED.

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What is a “likelihood of confusion” between two trademarks?

Posted by ipelton on: August 25th, 2010

The USPTO will refuse registration of a trademark application if the mark is “likely to be confused” with a registered trademark. But what is a “likelihood of confusion”? The two key, but not exclusive, considerations are generally the similarity between the two trademarks and the similarities between the goods or services.  When comparing two trademarks, the words are usually far more important than the designs. When comparing goods and services, they need not be identical or overlapping to be similar or related – if they could be sold in the same types of stores, or advertised near to each other (such as at an industry trade show or in an industry publication), then they might be similar.

So, how does this play out at the USPTO? Here is an actual recent case:

Applicant (full disclosure, a client of Erik M. Pelton & Associates) filed to register the words “Wish you were here” for use with “underwear.”  The USPTO attorney refused registration due to a conflict with Registration No. 3129654 for the following design used with “womens dresses, shirts, skirts and apparel”:

The Applicant is automatically provided at least one opportunity to respond to the refusal. The response filed by Applicant in this case did not convince the USPTO to withdraw the refusal, and an Appeal was filed to the Trademark Trial and Appeal Board (TTAB).  Following briefs from the Applicant and the USPTO examining attorney, as well as an oral argument before a panel of three judges, the TTAB determined that there are strong differences between the marks as the larger lettering “Love, Jetsy” is the dominant element in the registered trademark, and the lack of evidence presented to show that underwear and outer clothing are closely related goods even though they are related. As a result, the TTAB reversed the refusal to register the “Wish you were here” trademark.

Note: The application for “Wish you were here” was filed in July 2007.  The TTAB decision was issued last week, more than 3 years later – and the registration process is still not complete as the application must now be published in the public record before it can be registered. And here, the TTAB issued its opinion less than a month after the oral hearing – much more speedy than usual. Obtaining a trademark registration can be a long process!

Recent Trademark Registrations

Posted by ipelton on: August 24th, 2010

Here is another sampling of recent registrations our clients have received from the USPTO, so readers can see real examples of brands and marks which are being protected:

  • KIDS FIRST DEFENSE – Website featuring free child safety resources, namely, tips, information and weblinks on how keep children safe from predators; website featuring safety resources, namely, sexual offender registry and locator and criminal background checks, provided to members
  • HD PUBLISHING GROUP – affiliate business marketing services
  • REDEFINING DISASTER RECOVERY – Building construction services, namely, fire, storm, terrorism, vandalism and flood restoration services for both commercial and residential properties; property casualty loss mitigation, namely, reconstruction, repair and cleaning of both structures and content after water, fire, sewage, vandalism, terrorism, smoke damage and the like; and disaster response services, namely, reconstruction, repair and cleaning of both structures and content after water, fire, sewage, vandalism, terrorism, smoke damage and the like
  • EMAIL MARKETING. EVOLVED.Computer software platforms and development tools in the fields of internet and email marketing campaigns, email creation and management, content and display management, recipient and data collection and management, performance analytics, management of message sending; Marketing consulting services in the fields of internet and email marketing campaigns, email creation and management, content and display management, recipient and data collection and management, performance analytics, management of message sending
  • – Vitamin fortified beverages
  • - Building construction services, namely, fire, storm, terrorism, vandalism and flood restoration services for both commercial and residential properties; property casualty loss mitigation, namely, reconstruction, repair and cleaning of both structures and content after water, fire, sewage, vandalism, terrorism, smoke damage and the like; and disaster response services, namely, reconstruction, repair and cleaning of both structures and content after water, fire, sewage, vandalism, terrorism, smoke damage and the like
  • IRESPONSE - Building construction services, namely, fire, storm, terrorism, vandalism and flood restoration services for both commercial and residential properties; property casualty loss mitigation, namely, reconstruction, repair and cleaning of both structures and content after water, fire, sewage, vandalism, terrorism, smoke damage and the like; and disaster response services, namely, reconstruction, repair and cleaning of both structures and content after water, fire, sewage, vandalism, terrorism, smoke damage and the like
  • LEAD WITH LOVE – educational services, namely, providing lectures in the field of leadership, motivation, coaching, business and personal development; online journals, namely, blogs in the fields of leadership, motivation, coaching, business and personal development
  • METRO MERCHANT SERVICES – Electronic payment, namely, electronic processing and transmission of bill payment data; credit card and debit card transaction processing services; check processing services; loyalty program payment processing services; cash advance services for businesses and merchants; debit and credit card merchant cash advance programs for providing working capital financing to small businesses
  • CHICAGO ANYTIME ASSISTANTS – PROVIDING NON-MEDICAL PERSONAL ASSISTANT SERVICES AND ERRAND RUNNING SERVICES FOR OTHERS IN THE NATURE OF PLANNING, ORGANIZING, COORDINATING, ARRANGING, ASSISTING, INDIVIDUALS TO PERFORM DAILY TASKS
  • – Mass media production services in the nature of development, production, and post-production services in the fields of news, feature, sports, and entertainment programming
  • DOCTUSTV – Mass media production services in the nature of development, production, and post-production services in the fields of news, feature, sports, and entertainment programming
  • 3S STONE – Import agency and wholesale distributorship services featuring building materials and stone