Trademarkology: The Law of the Brand

Trademarkology: The Law of the Brand

Audits: They’re Not Just for the IRS Any More

Posted in Patents, Trademarks

uspto

Recently, the United States Patent and Trademark Office (the “PTO”) issued its 5,000,000th registration. (Congratulations to the owner of COASTAL TACO BAR + CHILL!). It took until 1974 for the PTO to issue the 1,000,000th registration, but only about five years lapsed between the 4,000,000th and 5,000,000th registrations. Not only is the number of trademark registrations growing, the rate of growth is increasing too.

The ease of electronic filing and other factors likely contribute to the rapidly growing number of federal trademark registrations. The register is getting crowded, raising questions about whether all those registered marks are really in use with all those recited goods and services.

In an effort to preserve the integrity of the register, the PTO has proposed a new rule to make permanent a pilot program it ran four years ago. Through the pilot program, the PTO audited declarations of use associated with 500 registrations for marks that included more than one good or service in a particular class. As you know, to maintain a registration, it is necessary to file a declaration of use between the fifth and sixth anniversaries  and every tenth anniversary of the registration date. This requires submitting a specimen showing the mark in use and declaring under oath that the mark is in use with all the goods and services set forth in the registration. During the program, for the PTO required registrants for randomly-selected registrations to submit proof of use of two more goods or services in the registration (besides those shown in the specimen originally submitted). If the proof was inadequate or if the registrant requested deletion of the additional goods or services, the PTO selected an additional two for proof of use. In the end, 422 of the 500 registrations received notices of acceptance of their declaration of use. But just over half of the audited registrations were left with at least one good or service deleted as a result of the audit.

If the audit program is made permanent, the PTO could ask up to 10% of the registrants filing a declaration of use to submit additional proof (information, exhibits, declarations, or specimens)  to support use of the mark on specified goods and services beyond that shown in the specimen originally submitted.  If registrants cannot satisfy the PTO’s request, they will have to narrow the identification of goods and services in the registration or allow it to be canceled.

This measure will probably have the intended effect of confining audited registrations only to the goods and services with which the mark is in use (though there will surely be some unfortunate casualties as well). While the proposed program may impose some additional time and expense on the audited registrants, overall, it may save others the time and expense associated with avoiding or removing an unnecessary obstacle to registration.

This is just one more reminder to be conscientious about what goods or services are set forth in the application, statement of use, and declaration of use and to be prepared to prove use for all goods and services in the registration.

The PTO has published the proposed rule for comment. Comments must be received by August 22, 2016 and may be submitted in a number of ways, including email at TMFRNotices@uspto.gov and should include the number PTO-T-2016-0002.

What is the difference between a business name and a trademark?

Posted in Trademarks

For that matter, what about fictitious names, dbas and trade names?

Recently, I’ve talked to a number of small business owners who have interesting and profitable businesses.  These businesses range from mechanics, to pastry stores, to musical bands.  Recently, I’ve begun asking for more detail as to what these businesses actually were.  This discussion always leads to confusion because many people do not know.

The easiest way to explain the differences between trademarks, business names, fictitious names, dbas, and trade names is to divide them into two groups:

  1. Business names, fictitious names, dbas, and trade names.

Whenever someone does business as something other than as his/her own name, states require registration of that business name as well as identification of the owner before they can conduct business in that state.  This requirement makes sense because it creates a record of who really runs a business in each state and where how can be located.  Jenny Silver may bake cakes at her house and sell them with a website and business cards that identify her business as Homemade Cakes.  Without a registration requirement, if Jenny’s website and cards didn’t identify her, there would be no way for a customer or vendor to know that Homemade Cakes was really just Jenny.  Once Jenny registers her business name in a state (typically at the Secretary of State’s Office), anyone can search that business name and find Jenny’s contact information.  Some states call these registrations business name registrations, fictitious name registrations, dbas, or trade names.  They are simply formal public notice registrations of the person who is doing business as the registered name.

A company must also register to do business in each state where it operates, typically under its legal name.  If its legal name has already been taken in a particular state, then it will need to register a fictitious name or dba in that state.  This is true regardless of the company’s trademark rights in the name.

These business name registrations, fictitious name registrations, dbas, or trade names aren’t intended to provide the business owner any protection against competitors but simply to notify the public of the true owner and provide the owner authority to do business in a state.

  1. Trademarks

Trademarks, including trademark registrations, are different.  Trademark registrations do not grant any approval to do business in a state, but instead grant the trademark owner the right to prevent competitors from selling the same goods and services under the same or a similar trademark.  U.S. Federal trademarks are effective throughout the country while state trademarks are of limited effect.  Additionally trademark rights begin forming when the owners begins using the trademark, regardless of whether it is registered.

So in a way, trademarks are the opposite of business names, fictitious names, dbas, and trade names.  Trademarks keep others away from your products and services while name registrations allow you to operate in a state.

Genericide

Posted in Uncategorized

rip

Genericide:  a word that strikes terror in the hearts of any trademark owner or brand manager.

What exactly is genericide?  It’s the trademark equivalent of homicide.  It is when a mark becomes so successful and  well known for a given product or service in that it no longer is source identifying.  Rather, the mark identifies the class of product or service and has become generic – thus killing the trademark.  One can just cry over all that good will and brand equity vanishing once a mark becomes generic.

Although rare, a recent decision by the Trademark Trial and Appeal Board reminds us that genericide remains a real threat to those brand owners lucky enough to have highly successful marks.

Some well-known examples of words that once were valuable trademarks but are now generic and not protectable (and least in the United States) include:

 

Escalator             Otis Elevator Company

Thermos              King-Seeley Thermos Company

Yo-Yo                   Duncan Toy Company

Aspirin                 Bayer AG

Cellophane          DuPont

Trampoline          George Nissen and Larry Griswold

Dry Ice                 DryIce Corporation

Zipper                  B.F. Goodrich

 

Vigilant trademark owners take steps to protect their marks to prevent genericide.   Careful owners use the generic name of the goods to describe their product in connection with their brand name.  Think Band Aid® brand bandages.  Or Q-Tips® cotton swabs.  If you are fortunate enough to be the first entrant into a product category, create a generic term for the product.  Otis Elevator could have advertised ESCALATOR brand moving stairs.

If your mark is federally registered, be sure to use the ® to let the public know.  If not, you can still use ™ or use all caps or a distinctive font to show the world your mark is just that – a mark.  For example, APPLE computers or XEROX copiers.

Use care when referring to your mark.  Do not use it as a noun, but rather as an adjective.  For example, it’s not a Kleenex, but it’s a KLEENEX facial tissue.  Do not use your mark as a verb.  Example, do not Google a particular presidential candidate to learn of her qualifications.  Instead, conduct a Google® internet search.  Check out the Google® rules for proper trademark usage.

Police your mark and object (politely of course) to others’ misuse of your mark.

Lastly, if need be, educate the public on how to properly use your mark.  Xerox Corporation actively battles genericide by educating the public.  Remember its famous ad:  “You can’t Xerox a Xerox on a Xerox. But we don’t mind at all if you copy a copy on a Xerox® copier.” Or a trademark lawyer’s favorite, “When you use ‘xerox’ the way you use ‘aspirin,’ we get a headache.”

 

 

Brexit, Brouhaha, and… Beer?

Posted in Trademarks

brexit

 

 

 

 

You are probably sick of hearing the word BREXIT by now.  If you don’t yet know what it is, Brexit refers to Britain’s recent vote to exit the European Union.  Since numerous international agreements must now be reversed, there is a lot of uncertainty about how the United Kingdom will unravel its membership in the EU.

Brexit has great significance to trademark owners who have registered their trademarks in the European Union.  One of the benefits of the European Union was the ability to register intellectual property, including trademarks, in the entire EU through a single registration filing that avoided having to separately register a mark in each individual country.  The Brexit vote leaves many open questions as to whether trademarks that are registered in the EU will continue to be treated as registered in the UK or whether that protection will be lost in the United Kingdom.  The international treaty that establishes the EU trademark registration system contains no provisions that address what should happen if a country were to leave the EU.

It will probably take several years for these questions to be answered.  New legislation would be required by the UK Parliament and perhaps the EU Parliament as well to ensure that EU trademark registrations continue to be protected in the UK after Brexit takes effect.  Given the possibility that trademark owners will lose registration rights, many commentators believe that legislation will be enacted to continue protecting EU trademark registrations in the UK after Brexit, but there are differing theories as to the mechanics and whether additional conversion or re-application filings would be required in the UK.  For now, trademark owners have to decide whether to wait and see or whether to take a more proactive (and more expensive) approach by filing separate trademark registrations in the UK as a back-up plan.  Unlike the United States, the UK (and most other countries) grants trademark protection to the first person to register a mark regardless of who used the mark first.  Timing is important.

With the impact if Brexit looming large, several trademark applications have been filed to seek registration of the mark BREXIT for various goods and services.  It seems this is the new “it” word, but we will see how long that lasts before the novelty wears off.  For now, Bost Obeer Corporation, which owns the SAMUEL ADAMS® beer brand, has applied to register BREXIT for hard cider.  Another application has been filed to use BREXIT for vitamins and supplements.  And, yet a third application has, of course, been filed to put BREXIT on t-shirts.  I was struck by the application for vitamins and supplements because the description speaks to “detoxification” which made me think of laxatives. I must say, it would be pretty clever to name a laxative BREXIT.

If you want a Brit’s view of Brexit, check out John Oliver’s commentary.

Pat Summitt: A Brand That Lives On

Posted in Brands, Trademarks

 

I had nearly completed a blog post that I intended to publish today—a post actually about trademarks, branding, and intellectual property—but, when the news of Pat Summitt’s death broke early this morning, I decided to put it aside and take some time to honor her memory.

pat

Pat Summitt and son Tyler after the 1997 NCAA Women’s Championship Game

 

Like many athletic girls who grew up in the 80’s and 90’s, Pat Summitt was my hero.  She was legendary in my family.  We would gather around the television to watch the Lady Vols school their opponents, led by players like Michelle Marciniak and Nikki McCray, and I remember going out to the old hoop in my driveway during halftime so that I could work on my own game.  And, frequently, my mother would join me for some one-on-one.  You see, Pat Summitt did not just motivate those with whom she interacted, and she did not just motivate aspiring young ball players.  Rather, her influence was virtually omnipresent, extending across the globe and reaching both the young and the young at heart.   Pat Summitt made you want to be better, stronger, more adept.  And not just in basketball, but in any area where one hopes to excel… including, say, parenthood.  In hindsight, I can see that my mom did not shoot hoops with me during halftime of those televised Lady Vols games to become a better player but instead to become a better mother.  Pat Summitt’s influence spanned generations and was felt far beyond the confines of the basketball court.

Coach Summitt demanded that her players give a full effort, both on and off the court.  It did not matter if they were playing a top ranked team in the NCAA Tournament or a tiny school in an exhibition game; her intensity level was the same, and she expected her players to match that intensity.  For example, consider the 1997-1998 team that many (myself included) believe to be the greatest team in the history of women’s college basketball.  It was the year of the “Meeks,”  featuring Chamique Holdsclaw, Tamika Catchings, and Semeka Randall, along with notable players such as Kellie Jollie and “Ace” Clement.  That team went 39-0, beating all but two of their opponents by double digits.  Even though most did not even come close to upsetting the Lady Vols, Coach Summitt would not hesitate to scold a player who was giving anything less than a full effort.  Her icy glare would send a chill down my spine from hundreds of miles away.  More importantly to Pat Summitt, however, was that her players give a full effort in the classroom.  Every single player who stayed on her team for 4 years left Knoxville with a degree.  She commanded greatness.

Here at Trademarkology, we talk a lot about brands—how to protect them, how to add value to them, etc. As I sit here today, reflecting on Pat Summitt and her many accomplishments and the countless lives she influenced, I cannot think of a more powerful brand than hers.  I would argue that there is not a single name in sports that is as ubiquitous.  Sure, NBA fans love LeBron, hockey fans idolize Gretzky, and the tennis world may agree that Federer is the best to wield a racket.  But Pat Summitt transcended the sport of women’s basketball.  In fact, she transcended sports altogether.

Though she departed the world early this morning, Pat Summitt’s legacy will continue to live on.  Shortly after she went public with her diagnosis, she filed an application for the mark THE PAT SUMMITT FOUNDATION for charitable services, and the mark registered in 2014.

summit

The Pat Summitt Foundation was launched to support medical research and raise awareness regarding Alzheimer’s disease, with the ultimate goal of finding a cure.  And, if the Foundation enjoys even a fraction of the success enjoyed by its namesake, who had a staggering 1098 wins in 1306 games, it will indeed reach its goal.

Pat Summitt changed the lives of those with whom she interacted, she influenced countless individuals across the globe, and you better believe that Pat Summitt’s brand, and her legacy, will continue to live on long past today.

For more on Pat Summitt’s achievements, and her fight with Alzheimer’s, check out this video that played at the 2012 ESPYs when she was awarded the Arthur Ashe Award for Courage.

 

Curry Scores on Trademark Applications

Posted in Uncategorized

Perhaps Steph Curry should have been paying more attention to basketball rather than capitalizing on his trademark during the NBA finals. While Curry won’t get a payout from winning an NBA title, it looks like he has other business plans up his sleeve. On June 16, the day that the Warriors lost Game 6 to the Cavs (and the same game where Curry was ejected for throwing his mouthguard), Curry filed trademark applications for STEPH CURRY, STEPHEN CURRY, CHEF CURRY and CURRY.

STEPHEN CURRY

The applications were all filed on an intent to use basis for a variety of goods including everything from knee pads to bath sandals to conducting fitness classes. Not surprisingly, “mouth guards for sports” were included in all four filings. I have no doubt that my son will be first in line for a Steph Curry branded mouth guard, if and when it hits the market.

image

 

 

A party with a bona fide intent to use a mark iqn commerce in connection with specific goods or services may file an application on the basis of intent to use. However, before the mark can be registered, the applicant must actually use the mark in commerce in connection with all the goods and services listed in the application. A declaration attesting to this use must be filed, as well as specimens showing use of the mark in connection with each class of goods and services. Any good or service not actually used by the applicant must be deleted from the application before the application proceeds to registration.

To be fair, Curry likely had very little involvement in timing of the actual filing of the trademark applications. Though Curry is listed as the applicant, Octagon, his agency, is also listed on the application. It comes as somewhat of a surprise that Curry is seeking registration of his own marks. Under Armour is the owner of a number of Curry-related registration and continues to seek registration of other marks related to Curry. However, it did abandon efforts to register the marks THE LEAGUE’S MOST UNGUARDABLE PLAYER, THE GAME’S NEW CREATIVE GENIUS, and FALL BACK. Perhaps it abandoned THE LEAGUE’S MOST UNGAUARDABLE PLAYER since Curry proved to be quite guardable during the NBA Finals.

More likely, Curry realized the value of owning his own intellectual property and licensing it rather than allowing third parties such as Under Armour to own his marks. This is becoming a trend among professional athletes, including one of Curry’s own teammates, Draymond Green. Draymond Green has filed an application to register of MONEY GREEN for sweaters, sweatshirts, and t-shirts.

MONEY GREEN

For more on Steph Curry’s mouth guard chewing habit, click here:

ZIP, ZILCH, NADA

Posted in Uncategorized

It is summer festival season in Middle Tennessee. Last week, we experienced the CMA Music Festival, followed by Bonnaroo. This coming weekend, the RC Cola and Moon Pie Festival takes place in Bell Buckle, Tennessee. The festival begins with a run in the early morning (to try and avoid the blistering heat). If you’re lucky, it ends with a drink of the celebrated beverage.

But what if you want to save your calories for the Moon Pies?

Then you might try a diet drink originally distributed by RC in the late 1950s: DIET RITE. Since approximately 2005,  DIET RITE PURE ZERO has been available in a number of flavors:

Soda

Since June, 2008, applications to register DIET RITE PURE ZERO and PURE ZERO have been suspended pending disposition of a consolidated opposition proceeding before the Trademark Trial and Appeal Board (“TTAB”). Royal Crown Company, Inc. and Dr Pepper/Seven Up, Inc. (collectively, “RC”) opposed registration of 17 applications for marks that include the term “zero” for use with soft drinks, sports drinks, and energy drinks filed by The Coca-Cola Company (“TCCC”), alleging that the term “zero” is generic or descriptive and thus requires a disclaimer. TCCC opposed the two applications filed by RC on the ground of likelihood of confusion.

An example of one of TCCC’s products is shown to the right:  sprite zero

 

Last month, the TTAB rendered its decision, finding the term “zero” not generic, but inherently descriptive. However, it also found that TCCC had satisfactorily shown acquired distinctiveness in the term “zero” when used as part of a mark for soft drinks and sports drinks. But not for energy drinks. So the TTAB gave TCCC two months to disclaim “zero” in its subject applications insofar as they pertain to energy drinks. Further, the TTAB dismissed TCCC’s likelihood of confusion claims against RC’s applications because TCCC failed to establish priority in its asserted family of ZERO marks. The appeal period is pending.

If you want to celebrate RC’s partial victory at the RC Cola and Moon Pie Festival this weekend, in
100 degree weather, you can run a

10K race, and drink a can of

0 calorie DIET RITE PURE ZERO soft drink

 side soda

“Professionally Known As” – Branding your Professional Name

Posted in Brands, Trademarks, Uncategorized

Here in Nashville, we are in the midst of the Country Music Association’s CMA Music Festival, where fans flock into our city to meet and hear their favorite artists.  Our city is inundated with music branding.  While some artists use their actual names, in the world of arts and entertainment, it is very common for an artist to adopt a stage name or to otherwise be known professionally as something other than his or her given name. The journey toward becoming “Professionally Known As”, already a complex path, is made even more complicated by the realities of today’s digital world. As I’ve traveled this road with several of my musical artists lately, I’ve seen several similarities in the process across the board.

In the music industry, the first consideration is music, but the very next consideration is image and branding. When considering a name, everyone on the artist’s team works together to identify a name that is strong for purposes of marketing the artist. We ask ourselves a list of questions:

  • Does the name create the image and branding that we want for this artist?
  • Is the name consistent with the artist’s sound?
  • Is it a name that can stand the test of time so that the artist can tour with that mark in his or her more senior years?
  • Will people want to wear that name on their t-shirt?
  • Can a graphic designer create a logo with the name that will grab fans’ attention and reflect who the artist is?
  • Could consumers be confused by the spelling of the name?
  • Will we lose fans/followers by making a name change?
  • When is the best time to make the name change?
  • Will the name be easily searchable online?
  • Will corporate sponsors want to co-brand with that name?
  • Will the name help create ancillary marketing opportunities outside the music industry?
  • If the artist plans to cross genres, will the name allow for that transition?

 

The most famous artist rebranding was Prince Roger Nelson.  Prince went by more than a dozen names over the course of his career, including simply “The Artist” and his infamous Love Symbol.  For more on Prince’s trademark journey, check out our prior blog post.  Prince—always unique and unmatchable—seemed to be rebranding because he felt his moniker had too much recognition (or the wrong kind of power) and wanted his music to be elevated above his name.  For most others, finding a name that will allow you to stand out in a crowd and gain more recognition drives branding.

Even if we can answer all of our branding questions to our satisfaction, we may still face several hurdles. For example, the name is only as strong as its marketability in social media. If the artist cannot acquire the domain name and all social media handles, then marketing can be very difficult. I always recommend that an artist acquire domains and handles the first time they search for them, and also acquire all misspellings and derivatives so that they can redirect fans to easily find the artist.  This is equally applicable to anyone choosing a new trademark.

Of course, even if all of the above considerations are satisfied, the most significant legal hurdle can be trademark registration. I advise my clients to contact me as soon as they think they have found a name that they like so that we can do a trademark clearance search for the key services and products you will want to sell.  This search is a valuable tool to identify major barriers early in the process and save the artist from having to later rebrand and lose momentum or fans. When we hit a barrier, it’s back to the drawing board to find a new name, which is why it is better to do the search early in the process. As an added layer of complication, even if the trademark appears to be available in the United States, it may not be available internationally. Since most artists plan international careers (and since all businesses are becoming increasingly global), it is therefore critical to consider availability of the trademark in key countries as well – touring countries as well as any other countries where you anticipate you will have fans/customers, distributors, or manufacturers for your merchandise.

The journey to becoming “Professionally Known As” is not an easy one, but if it is handled correctly, it can create a powerful and valuable brand for a successful artist.

prince

By:  Guest Blogger and Entertainment Lawyer Extraordinaire Stephanie Taylor

 

 

COURAGE, HONOR, AND MILITARY TRADEMARKS

Posted in Trademarks

As I reflected on Memorial Day, many images came to mind of family and friends who courageously gave their own lives to help protect ours.  They all shared a tremendous sense of pride for their military unit – an extension of their own identity giving rise to a lifetime bond with fellow soldiers.  Military trademarks are an extension of this pride, whether worn as a tattoo, a bumper sticker, or a Facebook profile picture.   We salute all of these brave men and women whom we are fortunate to call our protectors.

Here are a few of the military trademarks that signify courage and honor.  Just like commercial trademarks, these military trademarks each have their own brand, and several are federally registered.

BRANCH SAYING EMBLEM
Air Force AIM HIGH … FLY-FIGHT-WIN usaf
Army THIS WE’LL DEFEND usam
Marine Corps SEMPER FIDELIS or

SEMPER FI  (Always Faithful)

 

 

THE FEW. THE PROUD.

marine
Navy HONOR, COURAGE, COMMITMENT

 

NOT FOR SELF BUT FOR COUNTRY

 

WE’VE GOT THE WATCH

 

PROTECTING AMERICA THE WORLD OVER

navy
Coast Guard SEMPER PARATUS

(Always Ready)

coast
National Guard ALWAYS READY.  ALWAYS THERE. national

 

My family and I visited the Kennedy Space Center over the holiday and were fortunate enough to be there on the day a SpaceX rocket launched.  The NASA emblem was emblazoned everywhere.  While NASA is not military, many astronauts were military first and many bravely gave their lives for the betterment of humanity.

We salute you all.

family