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Archive for February, 2013

Lessons learned from a nine year trademark application

Posted by ipelton on: February 28th, 2013

A client was recently granted a trademark registration more than nine years after the application was filed! The application for the MAIN STREET OF AMERICAN U.S. HIGHWAY 66 design (below) was filed in January of 2004. The registration was issued in February of 2012.

There are some valuable lessons to take from this example:

  • The potential length – and suspension of – an application is another good reason to use an attorney for the application process — it can be a long and complex process, and tracking the status alone can be a difficult and burdensome task.
  • An applicant who moves or changes email addresses during the application process may not receive important communications from the USPTO. [For this reason, our firm has used the same PO Box for many years – even though our physical space has moved several times.]
  • Perseverance is important. An application rejected or refused at first may still have a chance of being registered.
  • During the application process here, the USPTO address moved as well. And their online filing system was upgraded and changed several times.
  • The filing date of an application is important, and filing as early as possible is almost always advisable. Here, anyone who filed for a “confusingly similar” mark at any time after January of 2004 would have been behind this applicant in the queue at the USPTO.

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On Monday, the state House of Representatives in Minnesota held an informational hearing on trademark bullying. See video below. This is a welcome development. The panel heard from businesses about the costs and difficulties of defending allegedly overreaching trademark lawsuits.

Since the federal Congress has done little or nothing to consider this issue, this is a welcome development. As detailed on this blog in many posts, in 2010 Congress ordered the USPTO to study “abusive litigation tactics” in the field of trademark. The USPTO sought public comments and in April 2011 issued a report with its findings. Since the study, there have been no public hearings by Congress on the issue. There has been some activity by the USPTO to increase education to the public and business community about trademark issues.

The Study actually made three recommendations (while finding no real problem): (1) urge pro bono efforts from private sector, (2) urge more CLE (continuing legal education) programs on trademark litigation issues for attorneys, and (3) enhance outreach from several government agencies. To my knowledge, nearly two years after the Study, very little if anything has been done regarding (1) and (2).

So to see Minnesota House of Representatives taking on this issue is refreshing. Small businesses are critical to the vitality of the US economy. If Congress is unwilling to help these businesses deal with unfair trademark litigation tactics (which I believe do exist and could be rectified at least in part, though reasonable people could disagree), others must take up the cause.  The SBA, US Chamber of Commerce and other small business advocates have all been largely silent on these issues as well.


Thank you to the House of Minnesota for taking on this issue!

Related posts:

Once again, the “Meet the Bloggers” party will be presented during the INTA conference. This year, the conference is in Dallas.

Meet the Bloggers IX will be on Monday May 6th from 8 to 10 pm.  

Venue and additional details will be forthcoming.  I look forward to seeing everyone there!

The Oscars trademarks of 2013

Posted by ipelton on: February 25th, 2013

Last night was the glitz and glamour of the OSCARS®. As pop culture, celebrity and branding continue to merge, there are many Oscar nominees and winners from this year that have protected trademarks.  In fact, I would be willing to bet that there were more registered trademarks on stage at the Oscars this year than ever before.

Movies

 

Actors & Actresses

 

Music

 

Of course, the Academy of Motion Picture Arts and Sciences recognizes the value of the Oscar brand too:

  • ACADEMY AWARD – registered for “excellence in the field of motion pictures through the issuance of awards”
  • ACADEMY AWARDS – registered for “educational and entertainment services rendered through the medium of a annual live, television program dealing with motion pictures” and “books, pamphlets, brochures, and press kits issued from time to time”
  • OSCAR – registered for “entertainment and educational services – namely, telecasts in connection with the recognition of distinguished achievement in the motion picture industry; library and reference services; theatrical exhibitions of motion pictures”
  • OSCARS – registered for “entertainment services, namely, telecasts in connection with the recognition of distinguished achievement in the motion picture industry”
  • OSCAR NIGHT – registered for “educational and entertainment services rendered through the medium of an annual live, televised program dealing with motion pictures”
  • registered for “educational and entertainment services rendered through the medium of a annual live, television program dealing with motion pictures” and “books, pamphlets, brochures, and press kits issued from time to time”
  • SUNDAY AT THE OSCARS – registered for ”educational and entertainment services rendered through the medium of an annual live, televised program dealing with motion pictures”

 

What would effect of sequestration be on USPTO?

Posted by ipelton on: February 24th, 2013

If the federal government reaches “sequestration” on March 1st, Federal government agency budgets will be affected.  As a part of the Department of Commerce, the U.S. Patent and Trademark Office could certainly be affected. In fact, it is likely that it would be affected in some manner. But given that the USPTO budget is healthy and is sustained by filing fees, the effects would likely be small.

However, a slide from a presentation by the Chief Financial Officer of the USPTO on December 3, 2012 notes that ”

• USPTO has been deemed subject to sequestration, and the potential level of sequester is $242 million.

• Sequestration could also impact the overall condition of the national economy
which could affect filings and fee collections.

See slide 5.