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Archive for October, 2015

Only one trademark question matters for businesses. Most small business owners look into trademark protection and consider whether they can afford the costs of protecting their trademarks? Yet this is not the correct question.

The real question that small business owners should ask is: Can they afford not to protect their trademarks?

Potential Costs Resulting From Unprotected Brands:

  • Greater chance of being copied inadvertently since the trademarks are not listed in the USPTO database
  • Greater chance of being copies intentionally since the ® cannot be used
  • Greater costs (lawyers, court fees, and more) when going after copycats and infringers in general
  • Greater risks and stress when going after copycats and infringers in general
  • More company time drained when going after copycats and infringers in general
  • Failure to show consumers the importance of your brand
  • Less valuable brand assets to monetize in a sale of the business
  • More challenges to license or franchise the brand
  • Reduced brand credibility
  • Potentially missing opportunities for protection by US Customs
  • Missed opportunities to stop cybersquatters
  • Missed opportunities to reclaim social media usernames registered by others

Yes, trademark protection is an expense. But there is nothing you can do for your brand that provides more protection – and insurance – than obtaining a trademark registration from the USPTO.

Beware of trademark scam from TM-DB

Posted by ipelton on: October 28th, 2015

The list of scams soliciting business from trademark holders in the US continues to grow. The latest one that I received (as a trademark owner) was from “TM-DB”. It is for a directory listing that is worthless. And the cost is $980 for 2 years. A picture of the offer that I received is below. I wonder how many people have been duped?

If you have been taken by this scam, I suggest that you file a complaint with the FTC, write a letter to the USPTO Commissioner, and contact law enforcement.

TM-DB SOLICITATION_001

For more information about dealing with these scams, see:

 

Trademark Guide to the 2015 World Series®

Posted by ipelton on: October 27th, 2015

Tonight, the Mets and the Royals will square off in the baseball World Series. Both teams have a lot of trademarks, with multiple logo variations. Surprisingly, I can’t find any players from either team with a trademark.

Here are is a trademark guide to the World Series® [click names and logos for USPTO registration records]:

Mets:

Royals

Some general Major League Baseball marks:

Are the Chicago Cubs champion trademark bullies?

Posted by ipelton on: October 22nd, 2015

Regardless of what happens on the field this October, there is a strong argument that the Chicago Cubs are ahead of the pack when it comes to filing trademark oppositions at the TTAB. The team files myriad trademark oppositions at the USPTO. Of course, a “C” logo is not unique, neither is use of the term “Cub.” (Although admittedly there may not be any other sports teams using the “Cub” term.)

I don’t throw around the phrase “trademark bully” lightly. But to me there is no question that the Cubs are arguably in that category. Does the team (business) take protecting its trademarks too far? 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. The “bully” 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, especially is there is a pattern of behavior.

In addition to protect “C” and “Cubs,” the team also makes a lot of claims regarding “W.” You will see in the list below, that many of the filings are against companies that make products or services that have little or nothing to do with baseball.

I am not the first to raise this issue:

Below are some of the Oppositions filed by the Cubs at the TTAB since the beginning of 2014. You can review the records by clicking on the links:

  • Trademark image– Breakfast cereals
  • Trademark image– Underwear for girls, boys and men, undershirts for girls, boys, and men, underwear for women, and rompers
  • Trademark image– Providing an on-line and mobile directory of information regarding merchants who accept contactless mobile payments
  • Trademark image and Trademark image– Providing and rental of advertising space on the internet; On-line social networking services
  • Trademark image– cellular telephone accessories, namely, antenna bases, antenna warning lights, replacement antennas, replacement batteries, flashing batteries, wireless cellular phone headsets, pouch bags for carrying cellular phones, battery chargers for car and travel, data cables, face plates, devices for hands free use of cellular phones, holders, clips, magnets for attachment of mobile phones to metal surfaces, LCD screens specially adapted for cellular phones; MP3 accessories, namely, protective carrying cases for portable music players, fitted silicone films known as skins for covering and providing a scratch proof barrier or protection for electronic devices, namely, MP3 players, mobile telephones, smart telephones, digital cameras, global positioning systems, and personal digital assistants; protective covers specifically adapted for protecting screens of personal electronic devices, and decorative charms for cellular telephones; retail store and on-line retail store services featuring cellular telephones, equipment, and accessories
  • Trademark image– Distributorship services featuring frozen desserts
  • Trademark image– advertising and publicity services, namely, promoting the goods, services, brand identity and commercial information and news of third parties, through text, audio, video, digital and on-line medium; entertainment and educational services, namely, providing information, news commentary and reporting in the fields of entertainment, education, current events, pop culture, and sports; providing requests, reviews, recommendations, rankings, trackings, votes, and information related to people, places and things, and products and services and events in the fields of current events, pop culture, entertainment, education, and sports; internet based computer services, namely, hosting on-line web facilities for others for organizing and conducting online meetings, gatherings and interactive discussions and the transfer and exchange of information; computer services, namely, creating an on-line community for registered users to participate in discussions, get feedback from their peers, form virtual communities, and engage in social networking; computer services, namely, enabling online users to create personal profiles featuring social networking information, creating virtual communities, and transmitting audio, video, photographic images, text, graphics and data; providing temporary use of nondownloadable computer software for uploading, posting, sending, transmitting, displaying, filtering, tagging, blogging, sharing, viewing, searching, scanning, navigating, compiling, indexing, and organizing electronic media and information over the internet and other communications networks; providing temporary use of nondownloadable computer software for uploading, posting, sending, transmitting, displaying, filtering, tagging, blogging, sharing, viewing, searching, scanning, navigating, compiling, indexing, and organizing user-generated content; providing customized on-line web pages featuring user-defined information which includes search engines and on-line web links to other web sites; providing news and information in the field of fashion and lifestyles; on-line social networking services
  • Trademark imageand Trademark image– : Containers of plastic for storage of feminine products for household or domestic use; General purpose storage bins for household use; Plastic storage containers for domestic use; Plastic storage containers for household or domestic use
  • Trademark image– Clothing, namely t-shirts, shirts, sweatshirts, jackets, hats, caps
  • Trademark image and Trademark image– Footwear
  • Trademark image– Paper goods and printed matter, namely,address books; children’s activity books; comic books; coloring books; notebooks; composition books; picture books; children’s story books; books containing puzzles and games; instructional manuals and printed strategy guides for games; book covers; scrapbook albums; arts and crafts kits for painting and drawing; stamp albums; photograph albums; diaries; invitations; lunch bags; modeling materials and compounds for use by children; paper table cloths; trading cards; writing pads; posters; book marks; non-electronic personal planners and organizers; artist materials, namely, pencils, pens, sketchbooks; gift wrap paper; paper gift tags; paper gift bags; paper gift boxes; correspondence note paper; greeting cards; paper party decorations; paper napkins; paper ribbons; paper party bags; postcards; stickers; sticker books; calendars; temporary tattoos; school and office supplies, namely, drafting and drawing rulers, pencils, pens, markers, glue for stationery or household use, desk top organizers, desk stands and holders for pencils, pens, tape, paper clips, and notepads; binders; stationery; notepads; pencil cases; pencil sharpeners; desk pads and stationery sets comprised of paper, envelope, seals, notepads; stencils; read-along children’s books and cassette tapes sold as a unit; printed children’s books featuring electronic sound buttons; patterns for making costumes; arts and crafts paint kits containing sponges, brushes, paint and paint cups; activity kits containing stamper markers, rubber stampers, ink pad, colored pencils, stamperholder; modeling compounds and accessories for use therewith, namely, molds andextruders; crayon and color by number kits containing crayons and coloring books; series of fiction books in the field of entertainment and science fiction; : Toys, games and playthings, namely, dolls, doll clothing and doll accessories; doll playsets and accessories; toy action figures and accessories for use therewith; toy vehicles and accessories for use therewith; toy playsets for use with toy action figures and toy vehicles; children’s multiple activity toys; plush toys; stuffed toys; bean bag toys; toy modeling compounds; toy molds and toy extruders for use with toy modeling compounds;plastic and vinyl toy characters and toy animals; ride-on toys; pull toys; pushtoys; mechanical toys; toy constructionsets; building toys; wind-up toys; water squirting toys; inflatable toys; role-playing toys; toy ball and dart shootersand foam toy balls and darts for use therewith; board games; parlor games; skill and action games; card games; playing cards; trading card games; hand held units for playing electronic games other than those adapted for use with an external display screen or monitor; jigsaw puzzles; paper party hats; video game apparatus, namely, video game machines for usewith televisions

Wrigley Field is the second oldest active ballpark in the major leagues. It is famous for its character, including the ivy wall in the outfield. Balls actually can get lost in it. In fact, last night in Game 3 of the National League Championship Series (NLCS), a ball hit by Met Wilmer Flores was lost in the ivy and ruled a “ground rule double.”

Does the ivy wall function as a trademark? Does it identify the services of the team? If someone else built a baseball stadium with a brick outfield wall covered in ivy, could it damage the Cubs’ brand or be confused as licensed by or endorsed by the team? I think there is a very good possibility that it is a trademark. The ivy wall is certainly (and uniquely in the sport of baseball) associated with Wrigley Field and the Chicago Cubs.

Nontraditional trademarks can cover just about anything. The red soles of Louboutin shoes. The KISS band member’s makeup. Lighting configurations. Sounds. And much more, including the blue turf field of Boise State football.

photo via https://commons.wikimedia.org/wiki/File:Wrigley_Field-Right_Field_Ivy_and_Bleachers.jpg

PS – the Cubs are playing the Mets in the NLCS this year, and I also think that the Mets’ home run apple could be registered – even more easily than the ivy wall since it is easier to identify and describe what is being protected.