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Archive for September, 2011

Anatomy of a Section 7 amendment to trademark registration

Posted by ipelton on: September 30th, 2011

Under certain limited circumstances, a US trademark registration can be amended. Such an amendment is called a Section 7 filing. An amendment to the mark itself is only permitted if the amendment does not materially alter the character of the mark. 37 C.F.R. §2.173(d). Whether or not a change is a “material alteration” is not always a simple question. A Section 7 request could also be used to delete or restrict the description of goods and services used in connection with the registered trademark (which is often advisable if some of the goods or services are no longer in use by the registrant).

For example, I recently amended my registration for TM4SMALLBIZ.COM to TM4SMALLBIZ. The amendment was accepted. The deletion of the .COM is not really significant as .COM is treated like other very common wording with little or no trademark significance, such as “THE”, “A”, “INC” and “LLC”.

I filed for the amendment because the domain registry for the new .XXX domains was refusing my sunrise application to block any TM4SMALLBIZ.XXX application filed by anyone else, contending that my trademark registration did not match the portion of the domain to the left of the “dot”. I disputed their analysis, but in the end it was easier to file the Section 7 amendment.

Below I have included the entire Section 7 filing made with the USPTO.

 

For more details about the requirements for a Section 7 filing, see Trademark Manual of Examining Procedure (TMEP) Sect. 1602.

Section 7 Amendment to USPTO Trademark Registration

Erik Pelton quoted in the New York Times

Posted by ipelton on: September 29th, 2011

Today’s New York Times (online and on the first page of the Business section) features an article about a small business taking on a Proctor & Gamble in a trademark dispute. The article features a quote from yours truly!

“The big corporations often send these cease-and-desist letters and issue threats regardless of the merits of the claims,” said Erik M. Pelton, a trademark lawyer in Alexandria, Va. “They then use their endless resources and legal firepower to get the result they want: the small businesses often go away because they can’t afford to fight back.”

Read the full article here.

Do you think “Willa” has a good claim that it is not likely to be confused with “Wella”? Leave a comment!

A Start-Up Takes On Procter & Gamble Over a Name - NYTimes_com

New York Times - September 29, 2011

Bonus:

The New York Times owns more than 200 trademark registrations, including: NYTimes.com, and “ALL THE NEWS THAT’S FIT TO PRINT”.

DEALBOOK – Trademark Registration from NY Times for: providing online business news and information; providing databases featuring information in the field of business; providing online financial news and information; providing databases featuring information in the field of finance; providing newsletters in the fields of business and finance via e-mail; providing online newspapers in the business and financial fields

Earlier, the trademark was registered on the “Supplemental Register“, the above registration was obtained on the Principal Register 

Trademark application for the DealBook logo

Believe it or not, not every brand name has to be unique. It certainly should be unique within your industry and anything that relates to over overlaps with it. But it does not have to be the sole use of the brand name.* Of course, many of the successful brand names today are unique – eBay, Google, Microsoft, Exxon, CapitalOne, YouTube, LinkedIn, Coca-Cola and many others are essentially made up or uncommon words and are either the only brand name using their term or a far and away the most dominant.  

For example, DELTA airlines and DELTA faucets co-exist. Many companies have the word APPLE in their name (and Apple Records and Apple Computer have battled with each other over trademark rights for years).

FORD is used and registered for automobile goods and services while FORD MODELS (with “models” disclaimed) for model agency services.

I recently took my kids to see a production of the musical Peter Plan. It got me thinking about this subject in depth, and how there are several well known PETER PAN brands that co-exist on the USPTO register of trademark (click mark for USPTO records):

  • PETER PAN  - Entertainment in the nature of horseraces 
  • PETER PAN – wheat flour and corn meal
  • PETER PAN – peanut butter
  • PETER PAN – variety of printed items from Disney
  • PETER PAN – canned salmon, and crab, frozen salmon and frozen king crab
  • - Bus chartering and transport; arranging travel tours

MONEYBALL is the title of a movie that just came out, based on a book of the same name. MONEYBALL is registered by one company for financial services and by another for clothing. A third company has a pending application to register MONEYBALL for gaming machines that has been approved pending a demonstration of using the trademark in commerce. See the USPTO MONEYBALL records here.

Sometimes companies sharing a brand name or part of a brand name may have a written agreement that defines their scope of use and helps reduce any chance of a conflict (generally called “Mutual Consent Agreements” or “Coexistence Agreements”).

So not every use of a similar or even identical name is a trademark infringement; and not every brand name needs to be unique.  The best trademarks, in my opinion, are unique within their field, and are suggestive of the products or services they promote.

*Note that clearing a new name and analyzing any potential trademark conflicts is complicated and is best left to experienced attorneys.

US Postal Service believes that “PO Box” is a trademark ?!

Posted by ipelton on: September 27th, 2011

Could “PO Box” possibly be a protectable trademark?

Yes… but only for non-postal services in my opinion. “PO Box” could be the name of a band.  Or the name of a board game. Or some other product or services.  But yesterday at my local post office I saw the sign below and snapped a picture. Apparently the U.S. Postal Service believes that “PO Box” should have a “TM” symbol next to it because it is their brand name and they seek protection for it.  Any they use it on the USPS website too, so it is not a fluke. See https://www.usps.com/manage/get-a-po-box.htm.

“PO Box” seems generic to me. It is a box. At the post office. Need I say any more? While the photo and website clearly indicate use of “TM”, I could not find any evidence of USPS having filed to register “PO Box” with the USPTO.

And if “PO Box” was a trademark, I believe it would actually for for a service, namely the rental of an address and storage for delivery of mail. So any use of “PO Box”, if it was protectable, should be accompanied by “SM”, not “TM”.

Looks like the Postal Service has a host of trademark issues. The very same Postal Service that is nearly bankrupt, operating at a huge loss, and closing locations. The USPS has filed more than 75 new trademark applications since the start of 2010, including “FIRST-CLASS PACKAGE” and “US POSTAGE PAID“, and “PRIORITY MAIL FLAT RATE“!

sign at the Clarendon (Virginia) Post Office

It is curious that the nice logo used on the sign for PO Box services looks creative and likely could be registered and protected for postal services. Yet it contains no trademark notice.

Registering trademark is not required under the law. But it is a wise investment. It is in essence a form of “insurance” for your brand. The failure to register trademarks properly and early can create complex situations that are costly distractions, at a minimum. These situations can sometimes suck years and large amounts of dollars out of a company. And failing to protect trademarks can result in a brand that is less valuable as the owner may not be creating a strong a brand as it could otherwise, or it may even be allowing competitors to gain an advantage.

A recent example has been in the news and was featured on the front page of Saturday’s Wall Street Journal: Companies Squawk in ‘Tweet’ Flap – WSJ.com. Twitter was slow to protect “TWEET” and some of its other trademarks. Now it is paying the price.

Twitter has had to file numerous USPTO Opposition and engage in multiple disputes with other parties. Many of these would likely have been avoided if Twitter had been first to file for trademark registration of the relevant terms.

Twitter was launched in the summer of 2006. An application to register TWITTER was not filed until April 2007 – after it had already been a hot topic at the SXSW conference that spring and had already been featured in Newsweek magazine. An application to register TWEET was not filed until April 2009, nearly 3 years later.

Tip: If you dream that your company will be something big – and will be the envy of others – than how you can justify NOT spending a few thousand dollars to protect your trademarks at the first moment possible?

 Twitter has filed at least seven Opposition proceedings at the USPTO [click link of contested trademark for TTAB records]:

The failure to fully and early register the trademarks also has created additional delays and costs in trying to register the trademarks later. Which feeds into the dispute problems at a catch-22 situation. A proactive trademark strategy from the start would no doubt have save Twitter huge amounts of money and many needless headaches.

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