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Trademark registration is a very valuable tool, especially considering the cost. Trademark registration provides both preventive and contingent insurance* — it reduces the likelihood of a trademark dispute while at the same time providing the owner with a stronger position in the event of a trademark dispute. Now that is value.  It protects the owner on the front end and the back end.

There is nothing you can do for your brand that provides more protection – and insurance – as obtaining a trademark registration from the USPTO.

* For more on preventive and contingent insurance, see the writings of Million Dollar Consulting®’s Alan Weiss here and here.

Thankfully, the application was also abandoned by the Association. There was quite a firestorm at the end of August as it became known that the ALS Association filed to register ICE BUCKET CHALLENGE and ALS ICE BUCKET CHALLENGE as trademarks with the USPTO. I was certainly quite critical of the association (See blog, Washington Post, LA Times.)

It has now come to my attention that the Association also applied, on the same day in August, to register #IceBucketChallenge (Serial No. 86375299) and #ALSIceBucketChallenge (Serial No. 86375307) trademarks for use in commerce with “charitable fundraising.” These applicatoins are even more shocking as they were an even more bold attempt to control what was a publicly created grass-roots movement, phrase and phenomenon. These application were also abandoned after the public backlash on September 1st.

I hope that the ALS Association will fully investigate whose decision it was to file the four trademark applications. Did the ALS Association believe that it could stop others from using the hashtag?

 

FireShot Screen Capture #172 - 'Homepage - ALS Association' - www_alsa_orgfor more about ALS and the ALS Association, see www.alsa.org

The many benefits of USPTO trademark registration

Posted by ipelton on: September 17th, 2014

The appeal of the Washington Redskins trademark case will be interesting to watch for many reasons. It is high-profile and receives a lot of media attention, and for good reason. It involves a claim of disparagement and a well known brand. The Appeal involves several other claims too, including the takings and due process clauses of the U.S. Constitution as well as violation of the First Amendment.

The Notice of Appeal, filed in the Eastern District of Virginia last month, has an excellent summary of the benefits of US trademark registration in summarizing what is at stake for the Redskins trademarks. Yes, without registration from the USPTO a trademark can still have common law rights. But the benefits of Federal registration are numerous and significant. But applying for registration is an excellent value for the cost (well, depending on how much and who you pay!).

Regardless of the merits of the appeal, the summary provided for “The Valuable Benefits of Federal Registration of the Redskins Marks” is excellent and applies to any registered marks. USPTO Registration on the principal register provides the registrant with:

  • evidence of the trademark owner’s constructive use of its mark;
  • nationwide priority from the filing date of the registration;
  • prima facie evidence of the validity of the registered mark, registrant’s ownership of the mark, and registrant’s exclusive right to use the mark with the goods or services in the registration;
  • the potential to  recouping treble profits and damages and attorney’s if successful against a defendant infringer in a federal case;
  • the right to use the ® symbol with provides notice to the public that the designation is being used as a trademark;
  • listing in the USPTO’s publicly available TESS database of registered trademarks;
  • US Customs Services assistance stopping the importation of any merchandise the copies the registered trademark without authorization;
  • assistance in invoking domain name disputes;
  • assistance in invoking social media username disputes; and more.

In short, a registration is a very valuable tool. It also creates a more tangible asset out of the trademark  that can be licensed, used a security interest, or sold.

For the full appeal brief and the full list of benefits included therein, see post on the Trademark Blog.

Apple files six new U.S. trademark applications for watches

Posted by ipelton on: September 16th, 2014

Fresh off the news that Apple unveiled the “Apple Watch” last week, the company files six new US trademark applications for watches [click marks for USPTO records]:

  • APPLE WATCH – for ‘Computers; computer peripheral devices; computer hardware; personal digital assistants; electronic organizers; electronic notepads; sound recording and reproducing apparatus; MP3 and other digital format audio players; digital audio recorders; radios, radio transmitters, and receivers; earphones, headphones; audio speakers; microphones; audio components and accessories; network communication apparatus; electronic communication equipment and instruments; telecommunications apparatus and instruments; global positioning system (GPS) devices; telephones; wireless communication devices for voice, data or image transmission; cables; apparatus for data storage; chips; cameras; batteries; computer software; computer and electronic games; electrical and electronic connectors, couplers, wires, cables, chargers, docks, docking stations, interfaces, and adapters for use with all of the aforesaid goods; computer equipment for use with all of the aforesaid goods; electronic apparatus with multimedia functions for use with all of the aforesaid goods; electronic apparatus with interactive functions for use with all of the aforesaid goods; accessories, parts, fittings, and testing apparatus for all of the aforesaid goods; covers, bags and cases adapted or shaped to contain all of the aforesaid goods’
  • APPLE WATCH – for ‘Horological and chronometric instruments; watches; timepieces; chronographs for use as timepieces; chronometers; watchstraps; watch bands; cases for watches, and horological and chronometric instruments; parts for watches, and horological and chronometric instruments’
  • APPLE WATCH – for ‘Health, fitness, exercise, and wellness sensors, monitors and displays; medical apparatus and devices’
  • Mark Image-  for ‘Computers; computer peripheral devices; computer hardware; personal digital assistants; electronic organizers; electronic notepads; sound recording and reproducing apparatus; MP3 and other digital format audio players; digital audio recorders; radios, radio transmitters, and receivers; earphones, headphones; audio speakers; microphones; audio components and accessories; network communication apparatus; electronic communication equipment and instruments; telecommunications apparatus and instruments; global positioning system (GPS) devices; telephones; wireless communication devices for voice, data or image transmission; cables; apparatus for data storage; chips; cameras; batteries; computer software; computer and electronic games; electrical and electronic connectors, couplers, wires, cables, chargers, docks, docking stations, interfaces, and adapters for use with all of the aforesaid goods; computer equipment for use with all of the aforesaid goods; electronic apparatus with multimedia functions for use with all of the aforesaid goods; electronic apparatus with interactive functions for use with all of the aforesaid goods; accessories, parts, fittings, and testing apparatus for all of the aforesaid goods; covers, bags and cases adapted or shaped to contain all of the aforesaid goods’
  • Trademark image- for ‘Health, fitness, exercise, and wellness sensors, monitors and displays; medical apparatus and devices’
  • Trademark image- for ‘Horological and chronometric instruments; watches; timepieces; chronographs for use as timepieces; chronometers; watchstraps; watch bands; cases for watches, and horological and chronometric instruments; parts for watches, and horological and chronometric instruments’

These applications are based on foreign filings, so they are eligible to receive an earlier priority date.

Hat tip to Patently Apple for breaking some of this story.

 

Many interesting football trademarks filed in 2014

Posted by ipelton on: September 12th, 2014

Football season – both college and professional – is upon us. In 2014, many interesting football related trademarks have been filed. Click the marks to open the USPTO records in a new window.

LOTS of filings related to the Washington DC professional team — apparently lots of people think they can predict a future name change?

Also, many filings related to Johny Football aka Johny Manziel:

College championship trademark applications:

A few players, current and former, with recent trademark filings:

  •  Trademark image
  • Mark Image

And some interesting team/league filings:

  • Mark Image

Even some planning for a game scheduled for 2016!