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Posts Tagged ‘trademark registration’

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

 

 

In just a few days, thousands of trademark professionals from around the world will descend upon Dallas, Texas for the 2013 INTA annual meeting, I have created a guide to some of the landmarks, sports teams, and dining in Dallas seen through the eyes of a trademark attorney. Let me know what you think!

  Trademark Lawyer’s Guide to Dallas – INTA 2013 by Erik Pelton

Anatomy of a great trademark portfolio: BUILD-A-BEAR

Posted by ipelton on: April 19th, 2013

Kids teddy bears may seem cute and cuddly (and of course, they are) but they are also big business. For example, the BUILD-A-BEAR® empire is a major presence in malls and at birthday parties. And their trademark portfolio is extensive!

The Build-A-Bear company owns more than 200 U.S. trademark registrations. They have protected all elements of their brand including product names, service names, slogan, logos, storefront trade dress designs, packaging, and other non-traditional trademarks (see below for interesting details). They have creative names for everything, and they have protected them. That makes their brand more valuable and more unique. Someone else could sell teddy bears that kids help make in the store, but kids are very familiar with brands, and no one else can easily copy the names or replicate the trade dress used by Build-A-Bear since they are so well protected.

BUILD-A-BEAR is a great example of a rich trademark portfolio for these reasons, namely that it has many coined names and phrases, a plethora of registrations covering all types of marks in a variety of classes of goods and services, as well as creative  non-traditional trademarks and trade tress. And the BUILD-A-BEAR name itself is suggestive of the services, which is my preferred type of name.

Here are some of the elements of that rich and extensive portfolio (click mark or image for USPTO records):

  • BEAR BOOTIQUE - Accessories for stuffed and plush toy animals and dolls, namely footwear and hosiery; storage case and carrying case for accessories for stuffed and plush toy animals and dolls
  • Trademark image- Retail store services featuring electronic musical devices, CD roms, stickers, publications, stuffed and plush toys and accessories therefor, backpacks, and carrying cases
  • Trademark image- [Description of mark: The mark consists of a three dimensional heart shaped object. The outline of a teddy bear is used to signify the placement of a hear shaped object inside a stuffed or plush toy animal; the teddy bear design itself is not claimed as part of the mark, as the heart shaped object may be placed in any stuffed or plush toy animal] plush animals and stuffed toy animals; retail store services featuring plush toy animals, stuffed toy animals, and accessories
  • SAY IT WITH SOUND - Retail store services featuring both prerecorded sound discs and sound discs in which messages can be recorded and placed in stuffed and plush toy animals and accessories
  • BEAR BUCK$ - Prepaid gift cards with magnetic coding
  • HAPPY BEARTHDAY - Stuffed and plush toy animals
  • Trademark image- Toy accessories, namely toy clothing
  • Trademark image- [Description of mark: The mark comprises a three-dimensional fanciful representation of an old-fashioned footed bathtub, with depiction of bath water, bubbles faucets with knobs, and a grated surface area] retail store services featuring stuffed and plush toy animals, and accessories and other goods relating to stuffed and plush toy animals, namely, section of the store which provide assistance to customers in grooming and finishing of stuffed and plush toy animals
  • STITCHED WITH LOVE - toy clothing for plush toy animals and stuffed toy animals
  • BEHIND THE SEAMS - On-line journals, namely, blogs featuring product reviews, historical data, community involvement, entertainment, family activities, instructional guides, children’s education, and topics of discussion of general interest to children and families
  • Trademark image- [Mark description: The mark consists of a three dimensional handled box shaped like a building] toy playhouses and carrying cases for stuffed toy animals and plush toy animals and accessories therefor

Last night, Adam Scott won the Masters golf tournament and millions watched as he put on the green jacket which is awarded to the champion. The green jacket is one of the most famous symbols in sports.  And it is not a registered trademark!

The green jacket is a tremendously valuable asset of the Masters. It is unique. It is legendary. It is rare – only one is awarded each year. And it is symbolic of the tournament, which is itself symbolic of the start of spring. But it is not a registered trademark!

Adam Scott after winning the Masters. Scott shot a three-under 69 on Sunday, with another Australian, Jason Day, finishing third, two strokes back.

photo of Adam Scott in the green jacket by Mark Blinch/Reuters

I believe that Augusta National, Inc. has missed a huge opportunity. Non-traditional trademarks include sounds, colors, shapes, and the like. And a uniform design or the configuration of a championship trophy can be registered as a trademark with the USPTO. For example, the uniforms of the Dallas Cowboy cheerleaders are registered trademarks. The blue turf of the Boise State football field is registered. The configuration of the Heisman trophy is registered. As is the Stanley Cup and many other awards.

And the absence of a registration for the trade dress configuration of presenting a green jacket to the champion of a golf tournament is shocking. Such as registration would not prevent others from making green jackets for consumer use, but it would provide more protection for use in connection with golf tournaments. And it would add to the lore of the jacket and to its value as a symbol and an asset.

Below is a list of the trademarks owned by Augusta National. Note that they include protection for the phrase “GREEN JACKET” but not for the jacket itself. Perhaps next year the winner will be awarded a green jacket that is a registered trademark?

Masters Trademarks owned by Augusta National, Inc.

 

Trademark applicants in the US can file a petition to expedite their application under certain special circumstances. The petition filing costs $100.

As for the requirements for such a petition, TMEP Section 1710.01 provides the details:

Invoking supervisory authority under 37 C.F.R. §2.146 to make an application “special” is an extraordinary remedy that is granted only when very special circumstances exist, such as a demonstrable possibility of the loss of substantial rights.  A petition to make “special” is denied when the circumstances would apply equally to a large number of other applicants.

The fact that the applicant is about to embark on an advertising campaign is not considered a circumstance that justifies advancement of an application out of the normal order of examination, because this situation applies to a substantial number of applicants.

The most common reasons for granting petitions to make “special” are the existence of actual or threatened infringement, pending litigation, or the need for a registration as a basis for securing a foreign registration.

Here are two recent examples, from the public records of the USPTO, of filings of petitions to make special:

Serial No. 85870582 – Petition to Make Special

The filing here includes a declaration from the general counsel for the applicant and attaches screenshots featuring the allegedly infringing product. [Interesting note: this matter concerns the configuration of hot air popcorn popper]

 Serial No. 85862083 – Petition to Make Special