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Archive for January, 2012

10 Best Spoof Twitter Accounts of 2011 – trademark issues?

Posted by ipelton on: January 31st, 2012

Mashable has compiled a list of the 10 Best Spoof Twitter Accounts of 2011.  The list is interesting and entertaining.

Do these spoof accounts create any trademark issues when the accounts parodied or mimicked are protected brand names? Could @FakePewRearch or @NYTOnIt be shut down as violating Twitter’s terms of use or for infringing trademarks? I think there is at least a possibility of confusion, especially because Twitter feeds can be consumed in many different manners – and the viewer may not always be aware of the message, information, or profile provided on the ‘home’ of the Twitter account.

By the way, the best fake Twitter account ever is the Bronx Zoo’s Cobra (the one who escaped for a few days last year).

Trademark Tip: Words vs. Logo

Posted by ipelton on: January 30th, 2012

One of the most frequent questions I am asked is whether a business should file to protect its name or its logo.

A trademark application for a mark that is just wording is called a “standard character” mark. The mark is usually featured in all capital letters. In essence, a standard character registration covers all variations of the wording, no matter the form. So a registration for “XYZ” covers XYZ in any color, size, or font. It covers domain name uses too. It also covers the wording when it is part of a logo design.

A trademark registration for a logo or design covers only the exact design featured in the drawing of the trademark in the USPTO application/registration.

When a design is original and creative, it is certainly worth protecting. But unless the wording in the design is very weak, protecting the words is generally more important. The protection is stronger for the words since a “standard character” registration is more flexible. And more infringements relate to words than designs. 

Ideally, brand owners should file two or three USPTO trademark applications for each name/logo combination:

  • Standard Character application for the wording alone
  • Logo design in black and white (covers all color variations)
  • Logo design in color

Generally, words are more important to protect than logos. Ideally, they should both be protected separately. Of course, every case is different, so it is important to determine what is right for your brand.

For further discussion of this issue, see:

Information about New Top-Level Domains

Posted by ipelton on: January 27th, 2012

I had the pleasure of speaking recently to an audience of “cyberspace” attorneys from around the world for the American Bar Association’s Cyberspace Law Committee Winter Working Group meeting in San Francisco.

Much thanks to Kristine Dorrain, Director of Internet and IP Services at the National Arbitration Forum, who spoke with me and who has forgetten more about domain names than I will ever know!

Our presentation provided information about the impending release of new top level domain names and was called “The New Top-Level Domains: Guidance for the Business Lawyer.

To view the PowerPoint of the presentation, including links to a lot of valuable information on the new domain name procedures and protections for brand owners, see link below:

 The New Top-Level Domains: Guidance for the Business Lawyer (PDF)

 

I have noticed over the last few years that more and more brands have added a generic product or category name following their brand name on packaging for the goods. 

The first brand to my knowledge that did this was Kleenex years ago. Their packaging says “Kleenex brand tissues” to make it clear that Kleenex is not the name for all tissues and to help people avoid using the “Kleenex” name generically.  

These uses are good strategy for big brands risk becoming such a part of the lexicon that the brand shift towards possible genericness and the resulting loss of trademark protection. Some brands, instead of using the generic product category after the trademark use the term “Brand” for the same purpose.

Kleenex® Brand Logo

Did you know that Frisbee, Jacuzzi, Jet Ski, Rollerblade, Popsicle are all registered trademarks today? But many people misuse each of them to refer to an entire category of goods. A brand name that becomes generic is less profitable, less valuable and less protected under the law.

Here are some brands that I have noticed using the generic term to make it clear that the brand name is not the generic term:

VIA from Starbucks uses the phrase “ready brew” after the mark

Play-Doh – modeling compound

Poland Spring brand

Deer Park brand

Lysol brand

Love it or leave it? PINTEREST website/app name

Posted by ipelton on: January 23rd, 2012

Pinterest is a website and mobile app that has become quite popular during the last few months. Pinterest is a tool for sharing and collecting content online, a “virtual pinboard.”

Pinterest is a great name! Fun to say. Suggestive — “pin” and “interest” combined. The name it is unique, it sounds exciting and interesting. In short, I think it is an A+ name.

But one thing is missing. The mark is not registered with the USPTO. Cold Brew Labs, Inc., the owner of Pinterest, filed for trademark registration in March of 2011. But after a review by the USPTO and initial Office Action - in which no conflicts were found – no response was filed by the applicant and the application was abandoned on December 30, 2011. [Note that under some circumstances an abandoned application can be revived within 2 months.] The only thing standing between Pinterest and approval of its trademark application by the USPTO was the submission proper evidence of use.

Pinterest is a great and creative name. To date, it appears the trademark protection for it has been mismanaged. Twitter went through its own share of trademark problems, issues, and expenses after it failed to protect its brand names early on in its success. Will Pinterest have to learn the same lesson the same hard way that Twitter did?

pinterest