Just about anything that helps distinguish a brand from competitors can function as a trademark — a name, a logo, a slogan, or even a color, a sound, or a shape. Brands can be so powerful that sometimes all it takes is a single letter to identify a product or service.
Can you identify the product or service that goes with each of these one letter logos?
What are your favorite one letter logos or brands?
As I detailed yesterday, I submitted a FOIA request to the USPTO for communications and comments regarding the “Trademark Litigation Tactics” study (a.k.a. “bullies study”).
The contents of the box of materials provided by the USPTO was not entirely in order. I have pieced it together and organized the materials as best as I could. Comments come from businesses, individuals, attorneys and organizations. There are also some inter-USPTO email communications about the study, though nothing very substantive.
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Since the request for comments deadline was extended several times by the USPTO, the materials received from the FOIA request do not include all comments. I previously blogged about Trademark lawyer groups weighing in on “litigation tactics” study.
What do you find most interesting about the comments? In a few days I will post what I find to be the highlights.
I recently made a request under the Freedom of Information Act (FOIA) to the USPTO for comments and communications related to the Trademark Litigation Tactics survey (a.k.a. “trademark bullies” study). The USPTO’s report, under the law passed last year, was recently due to Congress. To date, neither the USPTO nor Congress has published the study.
With an interest in obtaining as much information as possible about the study and the comments, on January 25, 2011 I submitted the following FOIA request to the USPTO:
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A few weeks back, after paying a copying fee to the USPTO, I got back this a package containing about 300 pages of materials, including the cover letter below from the USPTO FOIA officer:
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Tomorrow, I will post links to the comments which were included in the FOIA package from the USPTO, including those from:
- John A. Clifford (Attorney)
- eBay
- Fancaster
- GoDaddy
- Internet Commerce Association
- Internet Commerce Coalition
- Lara Pearson (Attorney)
- Professor J. Thomas McCarthy
- Rock Art Brewery
- Victor Mosely
- and more
One potential way to deal with a refusal from the USPTO to register a trademark is to obtain consent from the owner of the registration (or application) that is blocking the path. In order to do so, the other party – the one that filed to register its trademark first – generally must have some incentive to cooperate. It could be that they do not have ‘priority’ – they did not use their trademark first – and thus their application/registration could potentially be attacked. It could be that the two parties services or products really have nothing to do with each other and there is no need to spend money and time (and attorney fees) on a potential dispute.
In the last year, I have seen more and more of these scenarios. Why? Here are some reasons:
1) Someone did not file for their trade early enough. If the company who’s application gets blocked had applied when they first began using the trademark, odds are the situation would have been avoided.
2) A trademark application was not carefully filed: it was filed without guidance of an attorney or – even worse – by a document filing company. The later filer did not consider choosing or avoiding particular terms or subjects in the description of the goods or services may reduce the risk of any finding of a conflict by the USPTO.
3) A consent agreement is a more economical and reasonable approach to a dispute in many situations and while the economy is growing and recovering, most companies prefer to avoid spending money on attorneys when possible.
What does a consent agreement look like? In general, the following are some of the key elements:
- Agreement that if the terms are followed, no confusion is likely
- Agreement not to contest each others trademarks if the parties are in compliance with the agreement
- Agreement that if any instances of confusion are discovered, the parties will attempt to cooperate to resolve
- Agreement to cooperate filing any documents with the USPTO
- A recognition of which party has priority
- Possible restrictions on one or both of the parties regarding the scope of goods/services sold in connection with the trademark(s), how the mark is used, fonts, logos, etc.
Below are two examples (public records) of responses to the US Patent and Trademark Office filed by our firm featuring consent agreements. Both applications were subsequently approved for registration by the USPTO.
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Zippo lighters apparently come with a lifetime guarantee. Zippo’s maker thus has extra incentive to prevent and recognize copycats – the copies are taking away sales potentially, and are cost Zippo time and money if they get sent in to be repaired. A cheap disposable lighter costs about $1, I would guess, while according the article in today’s Wall Street Journal, a Zippo® brand lighter costs about $20. Wall Street Journal (March 25, 2011: The Lighter Side of Counterfeiting Puts Zippo in a Fix.
from zippo.com (Product No. 28063)
The article goes on to detail some of the ways Zippo Manfucturing Co. tries to stay one step ahead of the copycats and tries to avoid repairing “Rippos” or fakes. Curiously, the article fails to mention one ‘weapon’ that Zippo might use to shut down infringers and to try to stop the importation of knock offs: Trademark registration. In addition to registrations for the ZIPPO brand name and the logo, Zippo has wisely registered the product shape as a trademark.
U.S. Trademark Registration No. 2606241 for “cigarette lighters.”
Does Zippo have an aggressive intellectual property enforcement program? The “Rippos” described in the article all appear to violate one or more of Zippo’s registered trademarks. Since Zippo lighters are only made in the United States (Bradford, PA), Zippo would likely have some success using a recordation with U.S. Customs, paired with briefings with Customs officials at ports, to block a large amount of counterfeits from abroad (the article states that Zippo estimates 12 million fake Zippos are made per year in China). Zippo’s US Customs recordal for the registered trademark featuring the lighter configuration can be found here. Given these registrations, why are there so many “Rippos”?
Lesson: Register trademarks – and then use the registrations when appropriate and necessary in enforcement and in Customs recordation.
