Blog

‘Media Coverage’ Category

I live and work in Falls Church, Virginia. A few years ago, the city worked with a renowned ad agency, SmithGifford, create a brand and logo – THE LITTLE CITY®. I helped the City secure registration of the name and logo. And last weekend, I was interviewed on Washington Business Report about “The Little City” brand.

See video here (segment starts at 1:45):


For more about city branding and THE LITTLE CITY® trademark, see:

 

I was quoted last week by E Commerce Times in an article:

Judge Knocks Some Wind Out of Apple’s App Store Sails

While the decision was a procedural one dismissing Apple’s claim of false advertising, I said in part that

What do you think of Apple’s efforts to register the “App Store” name? Will it hold up in court?

 

Did you know that the following terms are registered trademarks (click for registration details)?

Each term is commonly mis-used to describe an entire category of products, not a specific brand.

I recently came across the following humorous discussion of ‘Jaccuzzi’ and ‘hot tub’ on the television show The Big Bang Theory. Goody-two-shoes Sheldon properly notes that Jacuzzi® is a brand name and not all hot tubs are Jacuzzis.

See video here: http://youtu.be/t7SHjXEOs5s?hd=1&t=9s

Tip: Help others use your trademark properly – not as a verb, and not to describe an entire category – in order to reduce the chances of it becoming generic. Provide proper use guidelines if necessary, and sent notes asking mis-users to correct the mistake.

What other trademarks are commonly misused as a generic term? Leave your favorite in the comments. Obvious ones include: Hula Hoop, Frisbee, Xerox, Kleenex, Google, and Popsicle.

Anatomy of a certification trademark

Posted by ipelton on: July 29th, 2011

The great majority of trademarks identify the source of services or goods offered by the owner. But there are a few categories of special trademarks. Once such category is “certification marks.”

What is a Certification Mark?

In the words of the USPTO,

“Trademarks or service marks and certification marks are different and distinct types of marks, which serve different purposes. A trademark or service mark is used by the owner of the mark on his or her goods or services, whereas a certification mark is used by persons other than the owner of the mark. A certification mark does not distinguish between producers, but represents a certification regarding some characteristic that is common to the goods or services of many persons. Using the same mark for two contradictory purposes would result in confusion and uncertainty about the meaning of the mark and would invalidate the mark for either purpose.” TMEP 1306.05(a).

A mark registered as a certification mark cannot be registered as a standard trademark for the same goods or services certified, and vice-versa.

How is a Certification Mark registered?

When registering a certification mark with the U.S. Patent and Trademark Office, many of the requirements are the same as standard trademarks and service marks. For example, certification marks can still be refused as being merely descriptive or as likely to be confused with one or more registered trademarks.

The biggest issue in many certification mark applications is proper evidence of use – the evidence must show how a person or company other than the owner uses the mark to indicate certification. And the mark bust be used by that person or company to promote the type goods or services which are certified.

Certification marks are classified differently by the USPTO when it comes to the category of goods or services. Certification of goods is in International Class A. Certification of Services is in International Class B.

Other features of certification mark registrations:

  • The application must contain a statement about the characteristics or features of the goods or services that are certified.
  • A copy of the certification standards used to determine who qualifies for certification must be submitted.
  • A statement that the certification mark exercises legitimate control over use of the mark in commerce is required.
  • The application must contain a statement that the applicant is not engaged in the production or marketing of the goods or services to which the mark is applied.

What are some examples?

Here are a few examples of certification marks registered with the USPTO:

SERVICES:

  • (Serving of food and beverages in restaurants and providing lodging in hotels and motel)
  • (Internet access services in public venues utilizing wireless LAN products)
  • (Moving services, Eye care, Automotive repair and maintenance services)

 

GOODS:

  •   (kosher foods, beverages and food products)
  • (foods, prepared food products, beverages and printed materials complying or consistent with applicant’s applicable guidelines or criteria relating to cardiovascular health and fitness, and/or applicant’s medical or science positions relating thereto)
  • (Fresh Florida-grown citrus fruit)
  • (musical sound recordings)
  • (PRODUCTS MADE WHOLLY OR PREDOMINANTLY OF WOOL, INTENDED FOR ULTIMATE CONSUMERS.)

Additional reading:

 

Atlanta post article

Posted by admin on: June 14th, 2011

Lorem ipsum dolor sit amet, consectetur adipiscing elit. Phasellus quis turpis ante. Fusce commodo hendrerit tortor, quis dignissim ante scelerisque vel. Aliquam tincidunt faucibus ipsum ac tincidunt. Nulla non nisi eget eros accumsan dapibus tincidunt quis nisl. Quisque est lacus, tempor sit amet feugiat sed, venenatis sed leo. Fusce lacus mi, euismod eu aliquet pharetra, posuere nec urna. Aliquam sit amet semper nulla. Morbi aliquet hendrerit porta. Curabitur sed odio arcu, et interdum mi. Phasellus est sem, suscipit quis aliquet nec, vehicula a lacus. Praesent ultricies sollicitudin fermentum. Morbi eu ligula dolor. Proin bibendum ultrices pretium. Etiam in est eros. Fusce a iaculis felis. Aenean mauris ante, scelerisque hendrerit viverra a, adipiscing id felis. Nullam rutrum congue sapien sit amet lobortis. Pellentesque diam augue, convallis et consectetur eu, sagittis in sapien.

Download PDF

Download PDF