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Archive for March, 2012

Trademark Guide to the 2012 Final Four

Posted by ipelton on: March 30th, 2012

This weekend is the Final Four® men’s NCAA college basketball championship. As with any big sporting event, lots of trademarks will be on display. The logo for this year’s event is quite nice, with some ‘scrolled’ design around the edges to create a New Orleans theme [click links and logo throughout for USPTO records]: 

THE ROAD TO THE FINAL FOUR

ROAD TO THE FINAL FOUR

FINAL FOUR

THE FINAL FOUR

FINAL 4

ELITE EIGHT

NCAA SWEET SIXTEEN

BRACKET TOWN

 The games will be held at the SUPERDOME in New Orleans. The name and shape of the stadium used to be registered, but those registrations have been cancelled because they were not renewed.

- see USPTO records (was registered for “Renting Stadium and Convention Facilities”)

What about the teams that will be playing?

KENTUCKY WILDCATS – The “Wildcats” is not a very unique team name.

KENTUCKY WILDCATS

UK

BIG BLUE NATION

LOUISVILLE CARDINALS – The “cardinal” name is also far from unique. And the logo as well. See for example the Arizona Cardinals or the Stanford Cardinal. But the university has done a nice job registering a variety of names and logos, including:

LOUISVILLE CARDINALS

U OF L

OHIO STATE BUCKEYES – Ohio State is a great brand for several reasons: The Buckeye name is unique. (A buckeye is a “small, shiny, dark brown nut with a light tan patch that comes from the official state tree of Ohio, the buckeye tree.“) The logos are both creative and classic. The brand is protected by dozens of trademark registrations, some of which are below. The only complaint I have is the way they frequently refer to themselves as The Ohio State University.

SCARLET & GRAY

BUCKEYES

OSU

THE OHIO STATE UNIVERSITY

KANSAS JAYHAWKS  - The Jayhawk name is unique. And it is a cool history, see here.

JAYHAWKS

ROCK CHALK JAYHAWK

The Cardinals and the Wildcats are far from unique. On the other end of the spectrum, the Jayhawks and the Buckeyes are very unique. In my opinion the Buckeye brand is the best, because of the uniqueness, the variety of logos and marks, and the number of trademark registrations.

Related Posts:

Two very recent developments related to the trademark scam issue:

  • At a luncheon today at the American Bar Association’s  27th Annual Intellectual Property Law Conference, Director of the USPTO David Kappos was the featured speaker. I was fortunate to be in attendance. Following his remarks, Director Kappos was asked a question about the USPTO’s recent cease and desist letter to the “United States Trademark Registration Office” regarding their solicitations to trademark applicants and registrants. Director Kappos commented that the solicitations are “masquerading as the USPTO” and that they are “clearly misleading.” He noted that the USPTO’s handling of the issue was still in process but that they are “going to follow through on this.”
  • The USPTO has begun sending a written warning about the solicitations enclosed with trademark registration certificates. I received the warning below today. Note that it is printed on bright orange paper!

 Warning from the USPTO Concerning Unofficial Trademark Solicitations

 

David Kappos

Under Secretary of Commerce for Intellectual Property and

Director of the United States Patent and Trademark Office (photo via uspto.gov)

The USPTO recently sent “United States Trademark Registration Officea cease and desist letter related to the company’s sending invoice that resemble official USPTO communications. The USPTO also placed a warning prominently on the trademark section of its website.

It appears that the company has not been deterred. I received the solicitation below from them last week related to a pending trademark application owned by our firm. The solicitation is a scam/bogus/worthless (chose your own term) for the following reasons:

  • It looks and feels like correspondence from the US Patent and Trademark Office. Note that it cites the U.S. Code (“U.S.C.”) several times to make it look official
  • It says: “Reply By: DUE NOW”
  • The “agreement” on the back indicates that USTRO is not liable for any damages beyond the fee paid to them.  So if they make an error causing cancellation of your registration or failing to notify you of a possibly infringement that their “monitoring” service should have caught, your recourse is to recover $375.00. Those errors could cost you thousands of dollars in legal fees and other expenses.
  • The USPTO record on which the solicitation is based, for TTABULATOR, is not yet registered, so it is not yet eligible for recordation by U.S. Customs and Border Patrol (“CBP”).
  • The trademark has been applied to register at the USPTO in connection with services (“On-line journals, namely, blogs featuring information in the fields of law, trademarks and intellectual property”). Since it is impossible or extremely rare to import “services” through a port of entry monitored by CBP, it is not a common practice to record service marks with CBP.

Unfortunately, i appears that it remains to be seen if and when USTRO will stop taking advantage of trademark applicants and registrants. 

 

United States Trademark Registration Office – soliciation

 

What makes a Trademark Bully?

Posted by ipelton on: March 27th, 2012

A lot has been written in the news lately about alleged trademark bullies. Reasonable people can disagree whether trademark bullying is a real issue and whether any particular dispute involves a trademark bully.

The trademark system today almost encourages trademark bullying because there is little repercussion for over-enforcement, especially if picking on a small business, because the odds that the small business can afford to fight back may be minimal. And large brands are embolden by the fact that courts often give weight to the fact that they have successfully enforced their trademarks by getting other businesses to agree to change their names or to default in a proceeding. I believe too much weight is given to these occurrences because many of these results are because of funding and have nothing to do with the merits or with the alleged strength of the trademark being ‘enforced.’ 

These dynamics of situations labeled a trademark bullying are changing in some cases as the internet and social media provide small businesses with a potential platform to gather support for their defense. [See my recent post onSocial media and the future of trademark disputes.] But in the end, going to court still costs money. And many small businesses must make a cost/benefit analysis – is fighting for a name worth it even if I win? And can I risk spending money to fight it and lose?

Of course, trademark bullying is not illegal – again there is little legal repercussion although there may be bad publicity – and arguably I suppose could be a valid business strategy as long as there is little if any punishment. 

So, what makes a trademark bully? I look at two factors to asses whether a “bullying” label is appropriate: whether the claim is over-reaching and whether the tactics are heavy handed.  Over-reaching occurs when the alleged infringer is really making no commercial impact on the enforcer. For example, when the alleged infringer’s use is trivial; their industry or market or products or services are quite different; or there are already tons of third party uses of similar marks and the claim has no merit.  Bullying tactics include unreasonably demanding letters, such as: “respond that you are in compliance with all of our demands within 48 hours.” Or seeking discovery that is overly burdensome and irrelevant just to run up costs for the other party. Or failing to seek a compromise that accomplishes the goal of avoiding confusion or dilution before litigating.

In my opinion, when a business asserts an over-reaching claim with heavy handed tactics, the “trademark bully” label fits. The label may fit even if just one factor is present, i.e. the claim is very over-reaching or the tactics are very heavy-handed.

How do you define a trademark bully? Let me know in the comments.

No Bullying Zone 2" sticker

[image from Kansas Bullying Prevention Program]

Related discussions:

  • Brand Bully Basement™ hosted by brandGEEK®. They define the situation as: Trademark bullying happens when a trademark owner over-reaches in the exercise of its trademark rights.  Usually, though not always, this involves a big company threatening unwarranted costly legal action against a smaller company in order to make the smaller company change its trademark.  Trademark trolls — entities that fraudulently obtain trademark rights for the sole purpose of enforcing them — engage in a similar bullying behavior, though most trolls are individuals or small companies.
  • How Fashionable is the Louis Vuitton “Trademark Bully” Label?
  •  

 

Love it or leave it: Brown color from UPS

Posted by ipelton on: March 23rd, 2012

Brown can be a boring color. It is certainly not a snazzy or noticeable as a brighter more colorful color (does that make sense?). But UPS has adopted brown as its color of choice. And they have done an outstanding job of protecting it is a trademark and making it a cornerstone of their brand.

UPS’ brown is a textbook example of a color trademark. Its use is consistent: trucks, logos, uniforms, etc. And the word is used in “look for” advertising that directs consumers to pay attention to the color – best encapsulated by the “What can Brown do for you?” slogan.

Here are some of the UPS registrations related to the color brown [click for USPTO records]:

  • - Motor vehicle transportation of personal property [Description of Mark: The mark consists of the design of a delivery truck which includes a Bubble Nose hood and rounded roof over the truck’s cab, a design of a half-sphere globe, “UPS” within a shield device, the wording “WORLDWIDE DELIVERY SERVICES”, “1-800 PICK UPS”, and “WWW.UPS.COM” on the side of the delivery truck.]
  • - motor vehicle transportation and delivery of personal property [Description of Mark: The mark consists of the color brown applied to the vehicles used in performing the services.]
  • - delivery of personal property by air, rail, boat and motor vehicle [Description of Mark: The mark consists of the color brown which is applied to the clothing. The matter shown in the drawing in broken lines serves to show positioning of the mark and no claim is made to the configuration of the uniform.]
  • BROWN - Transportation and delivery of personal property by air, rail, boat and motor vehicle
  • BROWN – Headgear, namely, baseball hats and caps, and visors; Shirts; all used in connection with promoting or providing transportation and delivery services
  • WHAT CAN BROWN DO FOR YOU? – Transportation and delivery of personal property by air, rail, boat and motor vehicle
  • BIG BROWN TRUCK – Transportation and delivery of personal property by air, rail, boat and motor vehicle
  • - Transportation and delivery of personal property by air and motor vehicle [Description of Mark: The mark consists of the color chocolate brown, which is the approximate equivalent of Pantone Matching System 462C, as applied to the entire surface of vehicles and uniforms. The mark consists of the color brown alone. The broken lines indicate the position of the mark and do not form part of the mark.]

Color trademarks can be very powerful and very useful. They can be difficult and expensive to obtain – the amount of evidence necessary to show the color as acquired distinctiveness in relation to the goods or services can be substantial. But UPS is a great example of how it can be done and how strong it can make the brand.