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Archive for November, 2011

Update: Google finally files to protect CHROME trademarks

Posted by ipelton on: November 30th, 2011

More than 6 months ago, I wrote on this blog about Google’s failure to protect the Chrome trademark. Now, more than 3 years since the launch of the Chrome browser, Google has finally filed with the USPTO to register the Chrome trademarks.

As of October 2011, Chrome is the third most widely used browser with 25% worldwide usage share of web browsers. (Source: Wikipedia)

Given how big the browser and operating system is and how valuable the name is to Google, it is astonishing that this took so long. 

The applications were filed with the USPTO in the first week of November [click trademark or logo for USPTO records]:

  • CHROME – computer software, computer operating software, computer browsing software, computer software for providing access to the Internet, computer hardware, computers, desktop computers, laptop computers, tablet computers, mobile phones, personal handheld devices; retail store services featuring computer software provided via the Internet and other computer and electronic communication networks; retail store services featuring computer software for use on handheld mobile digital electronic devices and other consumer electronics; computer design services; application service provider (ASP) services, namely, hosting computer software applications of others; technical support services; troubleshooting; providing a website featuring information relating to computer software
  • CHROMEBOOK – computer software, computer operating software, computer browsing software, computer software for providing access to the Internet, computer hardware, computers, desktop computers, laptop computers, tablet computers, mobile phones, personal handheld devices; retail store services featuring computer software provided via the Internet and other computer and electronic communication networks; retail store services featuring computer software for use on handheld mobile digital electronic devices and other consumer electronics; computer design services; application service provider (ASP) services, namely, hosting computer software applications of others; technical support services; troubleshooting; providing a website featuring information relating to computer software
  •  – computer software, computer operating software, computer browsing software, computer software for providing access to the Internet, computer hardware, computers, desktop computers, laptop computers, tablet computers, mobile phones, personal handheld devices; retail store services featuring computer software provided via the Internet and other computer and electronic communication networks; retail store services featuring computer software for use on handheld mobile digital electronic devices and other consumer electronics; computer design services; application service provider (ASP) services, namely, hosting computer software applications of others; technical support services; troubleshooting; providing a website featuring information relating to computer software
  • GOOGLE CHROME – computer software, computer operating software, computer browsing software, computer software for providing access to the Internet, computer hardware, computers, desktop computers, laptop computers, tablet computers, mobile phones, personal handheld devices; retail store services featuring computer software provided via the Internet and other computer and electronic communication networks; retail store services featuring computer software for use on handheld mobile digital electronic devices and other consumer electronics; computer design services; application service provider (ASP) services, namely, hosting computer software applications of others; technical support services; troubleshooting; providing a website featuring information relating to computer software
  • CHROMEBOX – computer software, computer operating software, computer browsing software, computer software for providing access to the Internet, computer hardware, computers, desktop computers, laptop computers, tablet computers, mobile phones, personal handheld devices; retail store services featuring computer software provided via the Internet and other computer and electronic communication networks; retail store services featuring computer software for use on handheld mobile digital electronic devices and other consumer electronics; computer design services; application service provider (ASP) services, namely, hosting computer software applications of others; technical support services; troubleshooting; providing a website featuring information relating to computer software

Trademark blunders can be quite costly. Just ask Twitter, Apple and other companies that have failed to secure brand names early and have had to pay other companies to resolve disputes, spend money on litigation, and deal with a multitude of headaches managing and protecting their brand.

I am glad to see that Google appears to have the CHROME brand on track now — better late than never.

Tip: when launching a major new product or service, clear the name first, then file for it as soon as you can to maximize the protection and minimize the chances of problems.

Google’s Chrome logo

A report in Monday’s Wall Street Journal discusses how Staples – a real office supply company selling real printer paper – is now selling “Dunder Mifflin” brand paper via its online division Quill.com. Dunder Mifflin is (was?) a fictional paper company on the television show “The Office.” Even better, according the article, “the Dunder Mifflin packages will be emblazoned with slogans such as “Our motto is, ‘Quabity First’ ” and “Get Your Scrant on,” well-known phrases from the comedy series.”

This is part of a trend called “Reverse Product Placement” wherein brands that began as fiction become reality.

The concept is fascinating… and if Staples sells more of its paper because of it – even if they are paying a commission to NBC Universal – it will be a win-win I presume. However, the trademarks in the arrangement have not been well executed.

Here are the specifics of why this constitutes poor trademark management:

- No trademark notice with use of “Dunder Mifflin” name or logo on the paper packaging (see image below)

- No trademark notice in the online product listing for the paper (see below):

Dunder Mifflin Copy Paper; 8-1/2×11″, Letter Size

- No USPTO trademark filing from NBC or Staples for “Dunder Mifflin” name for paper

- No USPTO trademark filing from NBC or Staples for “Dunder Mifflin” name for paper

- No USPTO trademark filing from NBC for “Dunder Mifflin” name for television programming

- No USPTO trademark filing from NBC for “THE OFFICE” for television programming

- No filing from NBC or Staples for any of the great slogans mentioned in the article (“Get Your Scrant On!”)

For example, see the advertisement below – it features at least four trademarks (The Office, Dunder Mifflin, Quill.com, NBC) and zero trademark symbols next to any of them. It has a generic trademark notice in the lower left corner, but this is not very useful and does little if anything to help identify the “Dunder Mifflin” as a protected trademark. (Also, the * next to Oscar’s head noting that the ad does not constitute celebrity endorsement is quite interesting. Does this mean that the actors are not standing to gain in any way from the sales of the paper? I wonder!)

In short, NBC Universal Staples have invested money and risked their brand in part to launch this product. They stand to potentially make a lot of money. And they have completely overlooked protecting the names properly! If I was hoping to make millions of dollars off of a product name, I would certainly spend a few thousand to enhance the protection of that same! Why wouldn’t NBC Universal?

DUNDER MIFFLIN, INC

from Quill.com

image from Quill.com

The U.S. Small Business Administration recently published an article called Follow These Steps to Starting a Business.

The article makes some good suggestions for important practical steps that small businesses should do when launching a new business, such as determining the legal structure, getting a tax ID,  and obtaining licenses and permits.  The suggestions don’t really address at all the necessity to have a creative idea, an idea about to whom it will be sold and how it will be marketed. It does recommend a business plan, although some people believe such plans to be overrated and to actually limit long term visions for growth and achievement.

But the ‘steps’ suggested is that they do not properly cover intellectual property. While registering the business or fictitious name with the state is recommended, such filings do not provide any real protection and can be terribly misleading. Generally, a business in the same state would be blocked from registering an identical name. But if they change the spacing, add a basic word like “The” or “Inc” it generally will not block the name. And the register is only within the individual state, providing minimal protection in the other 49 states. Other intellectual property protection is not included in the recommended steps in the SBA article. 

Any list of top 10 steps to starting a business should include “Protect Intellectual Property.” If the IP is not protected, any growth or value achieved by company could be significantly affected or limited. If a trademark is used in during start up – and not protected – and shortly thereafter an  infringement situation or accusation arises, the result could included costs that could have been avoided, uncertainty, delay, or worse – changing brands mid-stream and confusing customers.

If I were writing for the SBA, here is what I would tell start ups about the value of protecting their intellectual property:

Most new businesses in the 21st century are built around a significant amount of intellectual property. Between brand names, logos and slogans used in marketing  (trademarks); content in the form of web pages, blogs, video, software, and more (copyrights); and patentable inventions; intellectual property is often a key to the potential success of any new venture. As a result, early in the start up phase – ideally before the doors are literally or figuratively opened – business owners should take steps and investments to make sure intellectual property can be and is protected.  In addition, small businesses should be careful to include intellectual property provisions in contracts with partners, employees, contractors, and others to properly control and acknowledge who owns newly created intellectual property.

Home

I am thankful for many things, including trademarks for every holiday and occasion!

For fun, here are a few Thanksgiving themed trademark registrations – including food, parades, and one of my all time favorites, Turducken® (click marks or logos to open USPTO records):

  • Thanksgiving Farm – wine

  • Thanksgiving Day Dinner – pet food

  • - Providing of food and drink; Restaurant services

  • - Charitable services, namely, coordination of the procurement and distribution of food donations and sporting goods donations directly to needy families or indirectly through other not-for-profit organizations

  • - Poultry, namely, turkey

  • - Association services, namely promoting the interests of turkey conservationists and sportspersons

  • HAWLLOWTHANKSMAS – Calendars; Greeting cards; Paper party decorations; Postcards

  • TURKEY SLAYER – shotguns and parts thereof

  • MACY’S THANKSGIVING DAY PARADE – entertainment services, namely, organizing and conducting a parade

  • PILGRIM’S FEED – Animal feed

  • GOBBLZ! – Bakery and confectionary goods, namely– brownies, blondies, squares, cookies, shortbread cookies, whoopie pies, scones, chocolates, low carbohydrate bakery and candy goods

  • GobbleBox – Dissemination of advertising for others via the Internet; Marketing, promotional and advertising services provided by mobile telephone connections

  • PUMPKIN PIE – hair products, namely, shampoos; and bath products, namely, gels, and bubble bath

  • TURKEY TESTICLE FESTIVAL – arranging parties for others having a Thanksgiving theme

  • AMERICAN MAYFLOWER LIFE – life insurance underwriting services

  • America’s Turkey Trot – Entertainment services, namely, participation in foot races; and organizing community foot race sporting and cultural events, all performed on or around Thanksgiving Day

  • OPERATING THANKSGIVING EAGLE – Charitable services, namely, providing books to children and families, including children and families of the US military; education services, namely, providing classes, seminars, lectures and workshops in the field of American history and the Thanksgiving holiday; presentation of live musical performances; conducting book signings

  • - Vehicles, namely, trucks; truck chassis; roasted chicken [Description:The mark consists of the design of a truck with the part of a chicken on the top of the truck.]

  • - Meat, poultry, and game, namely, processed chicken and turkey, and deli meats

  • WORLD CHAMPIONSHIP TURKEY CALLING CONTEST – ORGANIZING AND CONDUCTING TURKEY CALLING CONTESTS

  • THANKS-A-LATTE – Issuing gift certificates which may then be redeemed for goods or services

  • THANKSJIBBING - Ski and snowboard resort services; Promoting and conducting skiing and snowboarding exhibitions and competitions; promoting and conducting musical and live entertainment performances; entertainment services, namely personal appearances by sports and entertainment industry celebrities;restaurant services; booking temporary lodging and lift ticket packages

  • TOFURKY- foods, namely, soy and wheat based meat and game substitutes (see image below)

Tofurkey package
  • AMERICA’S THANKSGIVING PARADE – Organizing community festivals, namely, parades

  • PILGRIM’S PRIDE. EAT WELL. – Wholesale food distributorships featuring poultry and poultry products

  • WILD TURKEY – WHISKEY

  • “Thankx-A-Latte” – Coffee and Tea Shops

  • PILGRIM - computer software, namely, for the collecting, tracking and management of quality data in service and manufacturing industries; computer training in the use and operation of computer software for collecting, tracking and management of quality data in service and manufacturing industriescomputer software installation services

  • MR. TURKEY – Fresh and Frozen Turkey Products-Namely, Whole Turkey Toms and Hens, Whole Turkey Hams, Turkey Thighs, Boneless Young Turkey, Turkey Breast, Barbecued Turkey Breast, Smoked Turkey Breast, Turkey Smoked Sausage, Turkey Breakfast Sausage, Turkey Rolls, Ground Turkey, Turkey Franks, Turkey Necks, Turkey Polska Kielbasa, Turkey Patties, Cured Turkey Thigh Meat, Turkey Salami, Turkey Pastrami, Turkey Breast Slices, Turkey Ham Slices, Turkey Bologna, Smoked Turkey Ham, Turkey Loaf, Canadian Breakfast Ham

  • and my favorite, made famous by John Madden:

TPAC Quarterly Meeting Summary (November 2011)

Posted by ipelton on: November 22nd, 2011

The following is a summary of the key points discussed at the November 18, 2011 public meeting of the Trademark Public Advisory Committee (TPAC) at the USPTO.

Chair Maury Tepper began the meeting by welcoming two new members and one returning member. Jody Drake returns as a full member of TPAC after filling in for Mary Dennison as an interim member for one meeting. Linda McLeod of Finnegan and Ray Thomas, Jr. of Miles & Stockbridge – both of whom have worked at the USPTO in the past – are new members of the Committee. The meeting covered many topics, including legislative and funding issues, public outreach, performance measures, developments at the TTAB, ICANN’s new Top Level Domains, and “Trademarks Next Generation”: 

2011-Nov TPAC Quarterly Meeting Summary