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Archive for April, 2012

Effective last week on April 24, 2012, Customs and Border Patrol (CBP) announced a new procedure that benefits those trademark registrants who record their marks with the agency. CBP will now

disclose to an intellectual property right holder information appearing on merchandise or its retail packaging that may comprise information otherwise protected by the Trade Secrets Act, for the purpose of assisting CBP in determining whether the merchandise bears a counterfeit mark. Such information will be provided to the right holder in the form of photographs or a sample of the goods and/or their retail packaging in their condition as presented to CBP for examination and alphanumeric codes appearing on the goods. The information will include, but not be limited to, serial numbers, universal product codes, and stock keeping unit (SKU) numbers appearing on the imported merchandise and its retail packaging, whether in alphanumeric or other formats. These changes provide a pre-seizure procedure for disclosing information about imported merchandise suspected of bearing a counterfeit mark for the limited purpose of obtaining the right holder’s assistance in determining whether the mark is counterfeit or not.

See Disclosure of Information for Certain Intellectual Property Rights Enforced at the Border (Federal Register, 4/24/12). For the full Federal Register notice, see here: http://www.gpo.gov/fdsys/pkg/PLAW-112publ81/pdf/PLAW-112publ81.pdf (see Sect. 818(g) in particular).

In other words, if Customs has information about a counterfeit, in addition to possibly stopping the shipment, will provide the trademark holder with information regarding the shipment. This is additional trademark monitoring and investigation that could save trademark owners a great amount of time and money to gather details about infringers that could be used to make demands (e.g. ‘cease and desist’ letters) or to use in court, including seeking injunctions.

The new policy is part of the NATIONAL DEFENSE AUTHORIZATION ACT - FOR FISCAL YEAR 2012, but the provision does not appear to be limited to only “defense” related products.

For more details about the “how’s” and “why’s” of recording a trademark registration with Customs and Border Patrol, see:

Update: US Customs will work to protect your trademark

Anatomy of a U.S. Customs Recordation

Non-profits have brands and trademarks too

Posted by ipelton on: April 27th, 2012

This guest post, by former intern W. Reid Morris (JD, 2012, Howard University School of Law), discusses the importance of trademark and brand protection for non-profit organizations:

In 2011, the value of Apple Computer’s “brand” was calculated to be over $153 BILLION. Apple, at the top of the list, was followed by Google at $111.5 billion, IBM at nearly $101 billion, and McDonalds at $81 billion.[1] The brand value of these companies is made up by a number of factors with one of the most important being the consumer goodwill associated with the brand. This consumer goodwill helps to signal future profitability and is anchored by the name and trademarks that identify these brands. These four brands are for-profit enterprises. In fact, all 100 brands on the BrandZ top-100 chart are owned by for-profit corporations. But, creating, maintaining, and enhancing the value of non-profit brands is just as important for the public and the owners, managers, and stakeholders of those brands.

With a brand like Apple, we know their name, but we also know their logos, products, stores, staff, services, and even their top managers. While this breadth of brand image may not be practical for all non-profits, crafting a cohesive image that fairly represents who you are and what you do is important. It is also important for non-profits to look beyond just a name and logo and to follow the example of these valuable brands by creating more complete brand images that can be instantly recognized by the public.

Whether or not you seek federal trademark registration for multiple facets of your brand, consistent use of those branding elements will create consumer associations that add to the value of your brand. Protecting a broader range of elements of your brand through federal trademark registration can allow your organization to exclusively use those brand elements to identify your goods or services, which will further strengthen the value of your brand.

A stronger and more valuable brand means that your non-profit can have greater awareness amongst the consuming (or donating) public, and it means that your campaigns can get more done with less money and effort.

If you are interested in learning more about how your organization’s trademarks can be better utilized, better protected, and further developed, get in touch with a trademark attorney, and don’t be afraid to ask about pro-bono legal services for your non-profit.

© 2012. W. Reid Morris. All Rights Reserved.


[1] Millward Brown Optimor “BrandZ Top 100 Most  Valuable Global Brands 2011” index, available at http://www.millwardbrown.com/libraries/optimor_brandz_files/2011_brandz_top100_chart.sflb.ashx (last accessed April 24, 2012).

Habitat for Humanity

Related posts:

Love it or leave it: ETCH-A-SKETCH

Posted by ipelton on: April 26th, 2012

Thanks to a Mitt Romney staffer, ETCH A SKETCH® has been in the news quite a bit lately. The toy has been around since 1960. According to Wikipaedia, it was “inducted into the National Toy Hall of Fame at The Strong in Rochester, New York in 1998. In 2003, the Toy Industry Association named Etch A Sketch to its Century of Toys List, a roll call commemorating the 100 most memorable and most creative toys of the 20th century.”

Etch A Sketch is a great name.

  • it suggests what the product does, draw
  • it is fun to say;
  • it is one of a kind; and 
  • it is easy to reminder

   Etch-A-Sketch on the campaign trail advertisementEtch-A-Sketch on the campaign trail advertisement   

Recent ads from Ohio Art wisely tapping into its recent turn in the news 

 Even better, the name and the product are well protected [click trademarks/images for USPTO records]:

  • ETCH A SKETCH – registered for ‘Toy Self-Contained Opaque Screen Sketching Device’ since 1961
  • TRAVEL ETCH A SKETCH  - registered for ‘toy self-contained opaque screen sketching device’
  • POCKET ETCH A SKETCH – registered for ‘toy self-contained opaque screen sketching device’
  • “WORLD’S FAVORITE DRAWING TOY” -toy self-contained opaque screen sketching device
  • - registered for variety of good and services
  • - registered for ‘self-contained opaque screen drawing device’
    • Description of Mark: The mark consists of the configuration of the goods and the color red applied to the frame surrounding the opaque drawing screen.
    • Lining and Stippling: The drawing is lined for the color red, and the color red is claimed as a feature of the mark.

A great name and brand, well protected, such as ETCH A SKETCH, is invaluable. And when a political staffer uses it as an analogy, everyone understands the reference.

For an amazing gallery of Etch A Sketch images, see http://www.gvetchedintime.com/gvetchedintime/gallery.php.

 

For those visiting Washington, DC for the 2012 INTA annual meeting, I have created a guide to sites, shopping, and dining in Washington, DC seen through the eyes of a trademark attorney. Let me know what you think!

A Trademark Lawyer’s Guide to courts, sites, restaurants and shopping in Washington, DC

 

Yours truly helped edit the trademark chapter. The book is full of summaries all the major patent, trademark, and copyright cases from 2011.

To order your copy, visit the ABA bookstore here.