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Archive for July, 2011

Anatomy of a certification trademark

Posted by ipelton on: July 29th, 2011

The great majority of trademarks identify the source of services or goods offered by the owner. But there are a few categories of special trademarks. Once such category is “certification marks.”

What is a Certification Mark?

In the words of the USPTO,

“Trademarks or service marks and certification marks are different and distinct types of marks, which serve different purposes. A trademark or service mark is used by the owner of the mark on his or her goods or services, whereas a certification mark is used by persons other than the owner of the mark. A certification mark does not distinguish between producers, but represents a certification regarding some characteristic that is common to the goods or services of many persons. Using the same mark for two contradictory purposes would result in confusion and uncertainty about the meaning of the mark and would invalidate the mark for either purpose.” TMEP 1306.05(a).

A mark registered as a certification mark cannot be registered as a standard trademark for the same goods or services certified, and vice-versa.

How is a Certification Mark registered?

When registering a certification mark with the U.S. Patent and Trademark Office, many of the requirements are the same as standard trademarks and service marks. For example, certification marks can still be refused as being merely descriptive or as likely to be confused with one or more registered trademarks.

The biggest issue in many certification mark applications is proper evidence of use – the evidence must show how a person or company other than the owner uses the mark to indicate certification. And the mark bust be used by that person or company to promote the type goods or services which are certified.

Certification marks are classified differently by the USPTO when it comes to the category of goods or services. Certification of goods is in International Class A. Certification of Services is in International Class B.

Other features of certification mark registrations:

  • The application must contain a statement about the characteristics or features of the goods or services that are certified.
  • A copy of the certification standards used to determine who qualifies for certification must be submitted.
  • A statement that the certification mark exercises legitimate control over use of the mark in commerce is required.
  • The application must contain a statement that the applicant is not engaged in the production or marketing of the goods or services to which the mark is applied.

What are some examples?

Here are a few examples of certification marks registered with the USPTO:

SERVICES:

  • (Serving of food and beverages in restaurants and providing lodging in hotels and motel)
  • (Internet access services in public venues utilizing wireless LAN products)
  • (Moving services, Eye care, Automotive repair and maintenance services)

 

GOODS:

  •   (kosher foods, beverages and food products)
  • (foods, prepared food products, beverages and printed materials complying or consistent with applicant’s applicable guidelines or criteria relating to cardiovascular health and fitness, and/or applicant’s medical or science positions relating thereto)
  • (Fresh Florida-grown citrus fruit)
  • (musical sound recordings)
  • (PRODUCTS MADE WHOLLY OR PREDOMINANTLY OF WOOL, INTENDED FOR ULTIMATE CONSUMERS.)

Additional reading:

 

Love it or Leave it: HEINZ ketchup logo

Posted by ipelton on: July 27th, 2011

Not all brand logos and themes come from an obvious source. I was recently reading a post from friend and consultant Seth Kahan about the “keystones” to a business – the core message and principle. Seth’s post was very perceptive, and often the “keystone” is capture in the brand and logo created by the company; but while the brand and the keystone for  business should overlap, they are not the same thing. The brand is the part of the tangible persona of the keystone.

What really blew me away from Seth’s post was something I learned about a brand and logo that I have seen and used thousand’s of times over my life. How many times have you picked up a bottle of Heinz ketchup? Most know that Heinz is a family name and that it comes from the Pittsburgh, Pennsylvania area. But I had never really paid attention to the Heinz logo and what it is or what it means.

Well, the Heinz logo is literally a “keystone”! Why? Pennsylvania is the “keystone” state. A great logo – it is simple. It is unique. It has meaning and a story behind it. It symbolizes strength and significance. I love it.

And even better, the logo, the bottle, and the “57 varieties” phrase are all protected and registered trademarks [click trademark/image for USPTO records]:

  • - canned baked beans, chili sauce, ketchup, vinegar, canned soups, and meatless sauces
  • - canned goods and bottled goods – namely, sauces for vegetables and meats
  • - “The mark consists of a glass bottle, the lower portion of which contains eight hexagon panels which are round on the top and bottom and the upper portion which tapers inward slightly from the top of the panels to the top of the bottle and cap thereto.” Registered for tomato ketchup.
  • - ketchup
  • catchup, sauces

What is the keystone of your business? Does your brand – brand name, logo, slogan – capture it in some way?

I was recently interviewed by technology consultant – and president of CB Software Systems, Inc.Chad Barr. We discussed the importance for consultants and other professionals to protect their brands and their content.

Proper trademark use (video)

Posted by ipelton on: July 22nd, 2011

In this video presentation, Mark Donahey (associate) and Michael Melmer (law clerk) discuss trademark use, including tips for proper use and examples.

 

Love it or Leave it: Cheerios trademark

Posted by ipelton on: July 20th, 2011

Cheerios® cereal is celebrating its 70th birthday this year. It is a great name and logo. Simple. Suggestive — happy, fun and “O” shaped. The logo and packaging has been remarkably consistent for years. Kids love it – it is fun and easy to say.

Believe it or not, the product was initially launched as “Cheeri-oats” for the first four years. And it was changed because of a trademark dispute with Quaker Oats! I’d say the change worked out rather well!

Some other Cheerios facts (from “Cheerios cereal celebrates its 70th birthday” via ABC 7):

  • Cheerios are produced at a plant in Buffalo.
  • In 1979, Honey Nut Cheerios were introduced, followed by Apple Cinnamon Cheerios in 1988, MultiGrain Cheerios in 1992, Frosted Cheerios in 1995, Berry Burst Cheerios in 2001 and Chocolate Cheerios in 2010.
  • Since 2009, Honey Nut Cheerios have outsold plain Cheerios.
  • Cheerios are made by heating balls of dough then shooting them out of a puffing gun at 100 mph.

USPTO Registrations:

  • CHEERIOS – ready-to-eat cereal
  • - breakfast cereal

Lesson: sometimes a change of brand name – even when the result of a trademark dispute – is a positive move that makes a brand even better.