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23
May

Trademarks for two TV program reboots: 24 and Arrested Development

Posted by ipelton on: May 23rd, 2013

“Arrested Development” re-launches on Netflix soon after a hiatus of several years. And it was also recently announced that there would be a new mini-season of “24″ with Jack Bauer.

Arrested Development: the TV show name is unprotected at the USPTO. Perhaps because there is a band that also uses the name Arrested Development that owns several trademark registrations. Music and television are arguable quite related as forms of entertainment. But the show producers appear to never even have tried to register the name, which is not worth quite a lot. And they haven’t registered Bluth’s Original Banana Stand, which is now a real service that is being used to promote the show.

It sure appears the show could have done better to protect its trademarks. But how can any attorney not love a show with a character named “Bob Loblaw?”

 24: the 24 show is better protected with three USPTO registrations, including this one for ‘Entertainment services in the nature of a television series featuring drama; providing on-line information in the field of television, motion picture film and video entertainment via a global communications network’. The name is suggestive of the format – a show that takes place in 1 day, a 24 hour period, and is a race against the clock.

Trademark image

Arrested Development

Successful television programs generate strong brands. Some of them generate multiple brands, or brands that expand well beyond the television medium. For example:

- Star Trek

- Martha Stewart

- Oprah

- Saturday Night Live

22
May

Magic Hat and West Sixth brewery dispute highlights social media’s growing role in trademark disputes

Posted by ipelton on: May 22nd, 2013

A trademark dispute can take years to resolve before the courts and/or the USPTO. But public opinion can move much quicker. And rapidly moving pressure from public opinion can wreak havoc on the normally slow moving trademark dispute process.

Such was the case just yesterday as news online exploded about a dispute between West Sixth Brewing and Magic Hat Brewing over logos that Magic Hat believes are likely to be confused. [The news reports, of course, misreported many aspects of the matter - but that is another issue for another day.]

West Sixth generated and received some favorable news and social media coverage early in the day on Tuesday (see for example: http://www.aceweekly.com/2013/05/lexingtons-west-sixth-brewing-responds-to-magic-hat-lawsuit/) including a petition with more than 6,000 signatures already, Facebook posts, and a domain name www.nomoremagichat.com that forwards to its webpage on the topic. Many comments were posted on both company’s Facebook pages about the trademark trademark issue.

Last night, Magic Hat responded online. They released their side of the story. including letters from counsel for West Sixth that purport to show that West Sixth had already agreed to change the logo at issue. See documents below.

While I don’t know how this dispute will be resolved, I do know that this type of social media and public reaction is more and more likely to be a part of future trademark disputes. Brands are, at their core, about customers. And customers, directly or indirectly, help the businesses at issue come to the decisions they must make about their brands. And social media fuels these types of reactions and makes the potential for a loud and large public reaction easier and faster than ever.*

* I first noted this trend more than 2 years ago in January 2011. See slide 14 here.

Magic Hat Brewing and West Sixth Brewing by Mary Beth Popp

21
May

Academic study shows that using a trademark lawyer improves odds of registration at the USPTO

Posted by ipelton on: May 21st, 2013

This recent academic study speaks for itself, so I don’t have a whole lot to add!

The study, to be published in the summer edition of Stanford Technology Law Review, researched actual filing and registration data from the USPTO. The authors’ conclusion is that having an attorney means an increased chance of having an application approved for registration. And having an experienced trademark attorney increases the odds even more.

Of course, I’ve known this all along, as have hundreds of clients who have received more than 1,800 U.S. trademark registrations. There are many nuanced reasons why having an attorney matters, perhaps I will go into my thoughts about that later. But many of those reasons are self evidence – because you are hiring someone with a great deal of knowledge, experience, and resources in the relevant arena.

Stanford Technology Law Review

Here is the full cite for the study:

Gerhardt, Deborah R. and McClanahan, Jon P., Do Trademark Lawyers Matter? (April 8, 2013). Stanford Technology Law Review, 2013; UNC Legal Studies Research Paper No. 2246750. Available at SSRN: http://ssrn.com/abstract=2246750 or http://dx.doi.org/10.2139/ssrn.2246750

17
May

The Office finale: poorly protected trademarks #theoffice @theofficenbc

Posted by ipelton on: May 17th, 2013

The following is an update of a 2011 post, in honor of last night’s finale of The Office:

A report in this 2011Wall Street Journal article discusses how Staples – a real office supply company selling real printer paper – is now selling “Dunder Mifflin” brand paper via its online division Quill.com. Dunder Mifflin is (was?) a fictional paper company on the television show “The Office.” Even better, according the article, “the Dunder Mifflin packages will be emblazoned with slogans such as “Our motto is, ‘Quabity First’ ” and “Get Your Scrant on,” well-known phrases from the comedy series.”

This is part of a trend called “Reverse Product Placement” wherein brands that began as fiction become reality.

The concept is fascinating… and if Staples sells more of its paper because of it – even if they are paying a commission to NBC Universal – it will be a win-win I presume. However, the trademarks in the arrangement have not been well executed.

Here are the specifics of why this constitutes poor trademark management:

- No trademark notice with use of “Dunder Mifflin” name or logo on the paper packaging (see image below)

- No trademark notice in the online product listing for the paper (see below):

Dunder Mifflin Copy Paper; 8-1/2×11″, Letter Size

- No USPTO trademark filing from NBC or Staples for “Dunder Mifflin” name for paper

- No USPTO trademark filing from NBC or Staples for “Dunder Mifflin” name for paper

- No USPTO trademark filing from NBC for “Dunder Mifflin” name for television programming

- No USPTO trademark filing from NBC for “THE OFFICE” for television programming

- No filing from NBC or Staples for any of the great slogans mentioned in the article (“Get Your Scrant On!”)

For example, see the advertisement below – it features at least four trademarks (The Office, Dunder Mifflin, Quill.com, NBC) and zero trademark symbols next to any of them. It has a generic trademark notice in the lower left corner, but this is not very useful and does little if anything to help identify the “Dunder Mifflin” as a protected trademark. (Also, the * next to Oscar’s head noting that the ad does not constitute celebrity endorsement is quite interesting. Does this mean that the actors are not standing to gain in any way from the sales of the paper? I wonder!)

In short, NBC Universal Staples have invested money and risked their brand in part to launch this product. They stand to potentially make a lot of money. And they have completely overlooked protecting the names properly! If I was hoping to make millions of dollars off of a product name, I would certainly spend a few thousand to enhance the protection of that same! Why wouldn’t NBC Universal?

DUNDER MIFFLIN, INC

from Quill.com

16
May

Interesting CICADA trademarks #swarmaggedon

Posted by ipelton on: May 16th, 2013

Here on the East Coast in the Mid-Atlantic, we have been anticipating the arrival of 2013 cicadas for weeks. For example, see this Huffington Post article: Cicadas Northern Virginia: 2013 ‘Swarmageddon’ Insects Spotted In D.C. Area. Trillions (!!) of the insects will emerge from the ground and make noise.

[side note = check out this cool map of the cicada situation from WNYC http://project.wnyc.org/cicadas/map.html#7.00/39.802/-74.782]

So, are there any “CICADA” trademarks? Of course! There are 11 registrations and one application pending that feature the terms. Here are some of the more interesting ones (click for USPTO records):

  • CICADA  - registered for fishing lures
  • CICADA - registered for jewelry (see http://cicadajewelry.com/)
  • CICADA – registered for veterinary services and other services and goods for animals
  • BURNING CICADA – registered for Entertainment services, namely live music concerts; audio recording and production; music production services; record, compact disc, cassette tape, and digital music production; videotape and digital video disk production; and multimedia entertainment software production services
  • CICADA – registered for ‘Entertainment in the nature of horseraces’
  • CICADA – application for ‘beer’ filed on April 30, 3013
  • CICADA – registered for “Folding knives and multi-functional hand tool comprised of a knife, scissors, a bottle opener and an LED light”

 

 

 

Nymphs regularly emerge from the ground in large numbers, with some species of periodical cicadas appearing regionally only once every 17 years. Credit: Michael Raupp, www.bugoftheweek.umd.edu

Credit: Michael Raupp, www.bugoftheweek.umd.edu

 

 

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