Search My Trademark

Quality of Evidence Necessary for Preliminary Injunctions

2007-02-05T20:32:00.000-08:00

When a plaintiff sues a defendant for misuse of its trademarks, there is often a request for a temporary protection order (immediately stopping the defendant from its use, such order is often issued ex parte, meaning that the defendant does get to be present to argue the matter, so long as the other side gets a hearing within the next few days) and a request for a preliminary injunction (banning the defendant from its use of the mark during the pendency of the litigation).

The evidence at these hearings does not have to strictly comport with the rules of evidence generally, and so hearsay evidence is sometimes admissible to show that the plaintiff should get its sought-after preliminary injunction. Hearsay (with some exceptions) is testimony about what you heard another person say and is inadmissible under the rules of evidence.

Often in preliminary injunction hearings, the plaintiff will produce evidence from its own employees. These employees will give testimony which closely serves the interest of the corporation. Judges and Magistrates who hear such cases often view such evidence with a jaundiced eye, knowing that the employee is going to be doing everything he or she can to get the preliminary injunction. Judges and Magistrates know the bias inherent in such testimony, especially since the boss is likely to be sitting there watching them testify.

The best evidence comes from persons unrelated to the plaintiff, and who could not care less about the outcome of the preliminary injunction hearing. So if you are thinking about trying to get a preliminary injunction against someone you feel is misusing your trademark, and all you have is testimony from your own employees, you might want to get a bit more juice behind you before you go into court.

Policing Trademarks

2007-02-05T20:22:00.000-08:00

There are times when you may hear of a trademark owner going after a very sympathetic group of people who are using the mark without authorization to raise money for a good cause. Many will shake their heads at what they conceive as the temerity of the owner of the mark to hassle such good people. Let's look at a hypothetical example.

The NFL owns the trademark to the name "Super Bowl" and learns of a few church groups advertising "Super Bowl" parties for $20.00 per person, with the proceeds going to aid the homeless. The NFL sends these church groups cease and desist letters regarding the parties, and takes action in court to prevent the parties when the church groups ignore the letters.

While some might argue that this is an example of a big corporation being heartless, it is really a legitimate attempt by the NFL to police its marks. It could be argued by future infringers upon the NFL's trademark that since the NFL did not enforce its rights against the church groups, that the future infringers thought that it was okay to misuse the NFL's marks. By policing its marks, the NFL would protect its marks from this sort of attack.

So just because you see a big corporation going after someone misappropriating the mark, this does not mean that the big corporation is being greedy or unsympathetic to the possibly worthy aims of the infringer. It could just mean that the big corporation is doing everything it can to protect its marks from future attack.

Nike and Apple sued for recent combo of iPod and Nike shoes

2007-02-05T14:03:00.000-08:00

Nike and Apple have teamed up by coupling their products together to make a more satisfying running experience. With an iPod Nano, some Nike+ shoes, and a Nike + iPod sport kit, you can do much more than listen to music on your run. Nike and Apple claim that the little device becomes your coach, your personal trainer and your workout companion. The combination of products allows you to see your elapsed time, current pace and distance covered. When you have finished your workout and our back home in front of a computer, you can upload your training data to nike.com, view your stats online, challenge other runners to virtual races, map out your running routes, and soon you will be able to download music specifically designed to accompany workouts.

This all sounds great until a company called PhatRat Technologies heard about it and filed suit against both Apple and Nike claiming patent infringement. PhatRat's patent is entitled, ""shoes employing monitoring devices, and associated methods."

It will be interesting to see the outcome of this suit. Stay tuned.

Royal Tiger Publishing loses bid for preliminary injunction

2007-01-30T09:20:00.000-08:00

In a case defended by Alvin Borromeo and Eric Willison (authors of this website), Plaintiff Royal Tiger Publishing dba C - The Columbus Magazine sought to enjoin Defendant, C-BUS, from developing, marketing, selling or using "C-BUS" and other trade dress, trade marks, or trade names that are allegedly confusingly similar to Plaintiff's ("C - The Columbus Magazine") in connection with the Defendant's arts and entertainment magazine.

The court ruled against Royal Tiger in its bid for a preliminary injunction. Some of the court's reasoning - "Plaintiff does not have a protectable trademark for the name C- BUS. One acquires the right to a trademark by appropriation and actual use. The use must be "deliberate and continuous, not sporadic, casual or transitory." Circuit City Stores, Inc. v. CarMax, Inc. (C.A.6 1999), 165 F.3d 1047, 1055. Plaintiff presented no evidence that it actually used the name C-BUS in the publication of its magazine. The mere fact that Plaintiff owned the URLs for INCBUS.COM, CBUSMAG.COM, and CBUSONLINE.COM does not grant it protection of those names of variations of them. There was no evidence that any of Plaintiff's readers or advertisers associated the C-BUS name with Plaintiffs magazine."

continue reading Magistrate's decision

read the entire court transcript of the preliminary injunction hearing

Marketing to Kids

2006-12-26T20:17:00.001-08:00

If you don't know the value of a powerful brand, then you don't have kids. My daughter is just now learning to read, but way before knowing what words an arrangement of letters spells out, she recognized brands and their trademarks. My wife sells occasionally for Discovery Toys. My daughter knows what their logo looks like. She also knows that the brown truck that delivers the toys is the UPS truck. She also knows the UPS logo. We'll be driving past a UPS Store and immediately she'll yell out "UPS!"

My daughter also knows the Pizza Hut logo and Taco Bell logo by name. Of course she knows the McDonald's golden arches.

And marketers recognize the power of the brand and the influence kids have on a family's purchases. The Economist recently wrote about the trillion-dollar kids. The second headline says that "children exert a surprising influence over the purchase of grown-up goods." From a parents perspective, I agree.

Parting quote:

Companies have discovered that it is often more effective to recruit a child as an in-home marketer than to try to convince a parent to buy their products. That may explain why Nickelodeon is Viacom's most profitable division—advertisers are lining up to pay a premium for access to their most valuable targets. Furthermore, every child represents a new chance to build cradle-to-grave brand loyalty.

Tags: brands, branding, marketing to kids, the economist

Secretary of State Links

2006-12-18T13:24:00.000-08:00

If you're looking to search for state trademarks, check out the below secretary of state websites. Unfortunately, there's not a free single source search site that aggregates this data.

Tags: trademark, trademark search, secretary of state, common law trademarks

Life Cycle of a Trademark

2006-12-18T11:21:00.000-08:00

It's been a while since my last post. Sorry about that.

Thomson & Thomson has a nice page listing the Life Cycle of a Trademark:

Stage 1 - Creation

Stage 2 - Screening

Stage 3 - Clearance

Stage 4 - Investigation

Stage 5 - Opinion

Stage 6 - Filing and Registration

Stage 7 - Protection

Stage 8 - Maintenance

Stage 9 - Commercial Exploitation

Tags: trademark, trademark search, trademark clearance, life cycle, trademark registration, trademark protection, trademark law

Trademarks and Native Americans

2006-10-13T08:36:00.000-07:00

Law.com has an interesting article (by Jeremy T. Elman of McDermott Will & Emery) on a group of Native American activists using trademark law to try and cancel the trademark registrations of the Washington Redskins. The activists argue that the Redskins trademark was disparaging to Native Americans under 15 U.S.C. §1052(a). Under § 1052(a), a trademark can be cancelled if it "may be disparaging" because it brings a group into "contempt or disrepute."

Tags: trademark, disparagement, Native Americans, Washington Redskins

SMT Blog listed as one of the "Best Blogs and Forums" by work.com

2006-10-10T13:52:00.000-07:00

Work.com has named the Search-My-Trademark blog as one of the "Best Blogs and Forums" in its "Guide to Protecting a Business Name."

Given the amount of quality blogs out there on trademark law, we are truly honored to be listed on the work.com site. Please checkout the site. It appears to be an excellent source for information.

Tags: trademark, blog, work.com, search, trademark search

Hard Rock Cafe forces the Hard Lox Cafe festival to change name to Shalom Y'all

2006-09-21T07:11:00.000-07:00

According to this article, "for 17 years thousands have gathered every fall in Forsyth Park to be served corned beef and plenty of other Jewish delicacies at the Hard Lox Cafe." But no longer. The festival is changing its name to Shalom Y'all because the Hard Rock Cafe sent it a cease and desist letter that the festival's attorney says "Basically what they are saying is by us using Hard Lox Cafe, even though it's innocent and not for profit, was still infringing on their trademark rights."

Tags: trademark, infringement, Cease & Desist

Trademark row from across the pond

2006-07-17T11:41:00.000-07:00

BBC News reports about the uproar caused by Glastonbury Festivals Limited application to register GLASTONBURY with the Office of Harmonization.

Tags: trademark, harmonization, europe, glastonbury

Brainstorming for trademarks or company names?

2006-07-14T12:36:00.000-07:00

Stuck trying to come up with a trademark or service mark to identify your product or service? Or in a bind naming your company? Rivkin & Associates has a nice little booklet titled "33 Tips & Tactics for Generating Nmaes," a 28 page booklet packed with creative prods, techniques and tools.

Best of all, it's free.

To get your FREE Copy,
Send a #10 envelope with two ounces of postage to:

"33 Tips"
Rivkin & Associates Inc.
PO Box 188
Glen Rock, NJ 07452-0188

And of course, before you commit to the name you choose for your brand or company, please make sure to conduct a trademark search. As stated in Tip No. 5, "Go for quantity:"

Don't fall in love with a short list of three or four possible names.

Develop lots of names.

In a typical trademark search, you'll lose at least 8 of every 10 names you generate.

(Sometimes more.)

And then, once you finally settle on a mark, consider applying for registration of your trademark. For more information, please feel free to contact us for help.

Books by Steve Rivkin

The Making of a Name: The Inside Story of the Brands We Buy

IdeaWise: How to Transform Your Ideas

Differentiate or Die: Survival in Our Era of Killer Competition

The New Positioning: The Latest on the World's #1 Business Strategy

The Power Of Simplicity: A Management Guide to Cutting Through the Nonsense and Doing Things Right

Tags: naming, branding, brands, trademark, search, registration

Benefits of Federal Trademark Registration

2006-07-12T06:52:00.000-07:00

In the United States, trademark rights arise through use as a trademark. There is no legal requirement to register a trademark. With that said, there are multiple benefits to having a trademark registered with the United States Patent and Trademark Office (“PTO”).

Trademark registration is perhaps the most important piece of a company’s trademark protection program. Without federal trademark registration, a company relies solely upon common law rights in the geographic area in which it uses the trademark. Most significantly, without federal registration, a latecomer (also known as a “junior user”) may register a mark exactly the same or similar to the company’s trademark. This registration by a junior user may block the expansion of the company’s use of its trademark in other areas or may block the company’s later attempt to register its trademark.

That’s definitely a hard pill to swallow for the company which could have averted these problems with early registration. If the company had registered it prior to the junior user, the PTO would have denied the junior user’s same or confusingly similar trademark. In addition, the company would always have rights superior to the junior user, and would not be blocked in its expansion plans.

In addition to the above, trademark registration benefits include:

Trademark registration provides constructive notice of the registration, and defeats a claim that an infringer did not know that the company’s trademark was registered;

Federal trademark registration establishes federal jurisdiction to file a trademark infringement action in federal court;

Federal trademark registration may be the basis to be awarded treble (triple) damages;

Federal trademark registration establishes the presumptive right of the trademark owner to use the trademark throughout the country;
The presumptive right can become incontestable with five years of continuous use and the filing of and acceptance of a declaration of incontestability;
Other companies that conduct a trademark search prior to adopting a trademark would most likely not adopt a mark exactly the same or similar to the company’s trademark;
A registration on the Principal Register (but not Supplemental Register) may be deposited at the U.S. Custom Service to bar importation of goods bearing an infringing trademark;
A registration on the Principal Register can be the basis for the seizure of counterfeit or infringing merchandise;
A federal trademark registration may be used as collateral to secure a loan because a trademark registration is viewed as the embodiment of the goodwill symbolized by the trademark; and
For those companies that wish to expand internationally, the date of registration may be used as the priority date in other countries, if they are a member of an international treaty, such as the Paris Convention.

Tags: trademark, registration, benefits

Got Junk trademark dispute

2006-06-28T21:18:00.000-07:00

The Columbus Dispatch reports about the lawsuit filed by Phil Wood against 1-800-Got-Junk? According to the trade name registration Mr. Wood filed with the Ohio Secretary of State's office, Mr. Wood began using the Got Junk? trade name on March 21, 1997 for the "pickup of junk and unwanted items on site from customer, haul away and disposal of same."

Meanwhile, 1-800-GOT-JUNK? first used its trademark on August 12, 1998 and has federally registered its trademark here and here.

What I don't understand is what 1-800-GOT-JUNK?'s attorney was thinking when she purportedly argued in a court filing that "GOT JUNK? is a common description and name for a waste-hauling business, so it can't be trademarked." Huh? If GOT JUNK? is not capable of being a trademark, then why in the heck did the PTO register two of her client's 1-800-GOT-JUNK? trademarks?

Too bad Mr. Wood didn't register his trademark with the Patent and Trademark Office before 1-800-GOT-JUNK? The lesson here is that don't delay to much to apply for registration, because someone may beat you to the PTO.

Tags: trademark, registration, litigation, infringement, trade name, got junk

Jon Hein and the sale of Jump the Shark

2006-06-26T19:32:00.000-07:00

Last week Gemstar's TV Guide bought the Jump the Shark website and brand from its founder and sole proprietor Jon Hein. The sale was purportedly for over $1 million. Not bad for a hobby website conceived to help Jon learn html. Jon will still contribute to the website, yet maintain his day job as host to the wrap up show and the Friday show on The Howard Stern Show.

So why did Jon get over $1 million for a website that lacks all the neat bells and whistles of today's Web 2.0 websites? Might it be the one million unique visitor's per month? Maybe. Trust me, I would kill for a million visitors per month. But, I don't think that was necessarily it.

The value of the "Jump the Shark" site was the brand ... the JUMP THE SHARK trademark. When someone mention's the phrase, they immediately know what it means. It's the mythical point of a television show's life when it starts to go downhill. For example, Happy Days began it's decline when Fonzie jumped a shark on water skis. Hence the name.

On today's Stern show, Jon mentioned that the smartest thing he did early on was register the JUMP THE SHARK trademark with the USPTO. Indeed.

By the way, the phrase came about when Jon was a student at the University of Michigan (Go Blue!). He and fellow UM alums Rich Eisen, Neal Gabler and Bruce Weber, recently commented on pop culture for LSA Magazine.

Tags: naming, branding, trademark, stern, Jump the Shark, positioning,

Naming Don'ts from Lippincott Mercer

2006-06-06T11:38:00.000-07:00

As far as I can tell, the firm Lippincott and Margolis that helped create the Enron name is now Lippincott Mercer. Their website lists some Naming Don'ts:

Don't use cliched words such as "innovation" or "solution" in a name

Don't insist on a name that can be found in an English dictonary

Don't take the easy way out and settle on initials

Don't use terms like "Extra," "Plus," or "New" to communicate next generation products or improved line extensions

Don't adopt license-plate short hand

Don't do this: SeeinghowManyNamesCanBeCombinedToMakeAConfusingBrand

Don't ask for suggestions from friends and other uninformed sources

All good suggestions, but doesn't it seem that Number 7 is geared to direct you to a naming and branding specialist? Not that there is anything wrong with that, after all, the authors of this blog hope that you remember us the next time you need trademark work done ; )

Related, if you're interested in a good read on branding and positioning, we recommend you read Positionion: The Battle for Your Mind.

Tags: naming, branding, trademark, positioning

Trademark registration - a cause for celebration and a news release

2006-06-06T08:01:00.000-07:00

Once a company gets their trademark registered with the United States Patent and Trademark Office, they sometimes celebrate that fact by putting out a press release. So from time to time, Search My Trademark will point to such press releases, starting with this post (which includes some old releases for reference).

Goodmortgage.com secures trademark for WHERE LOANS CLICK

"Obtaining federal registration of trademarks and logos provides the owners with a way to protect their brand investment," says David Whelpley, a partner with law firm Kilpatrick Stockton, which assisted goodmortgage.com in obtaining registration of the trademark. "Having secured a trademark registration enhances an owner's ability to prevent improper use of their mark and to recover damages."

Kool Deck™ Mark is a Trademark of Mortex Manufacturing Company, Inc.

Unique Pizza and Subs Strengthens Brand Potential With Trademark Application of Positioning Line

Unique Pizza and Subs Corporation (Pink Sheets:UPZS) a Delaware Corporation, has taken a significant step to establish its brand nationally. Trademark applications have been filed for Unique Pizza and Subs' signature line "Anything But Ordinary." The line appears in marketing and promotional materials being used nationwide. The line was developed as part of the Delaware Corporation's bold effort to position itself as one of the industry's most successful concepts.

***

Unique Pizza and Subs Corporation is taking the steps stated by Mr. Vowler to differentiate themselves from any competitor. They intend to trademark many of their unique products and services to enhance the awareness of consumers and potential franchisees. By demonstrating that their company far exceeds the quality and value of competitors, it will allow them to acquire market share at a rapid rate and continue strong growth already underway.

Unique Pizza and Subs Files For Trademark on 'The Neighborhood' 24-inch Pizza

PITTSBURGH, May 2, 2006 (PRIMEZONE) -- Unique Pizza and Subs Corporation (Pink Sheets:UPZS), a Delaware Corporation, is moving quickly to brand one of its signature menu items, The Neighborhood Pizza. The 24-inch pie sets it apart from other major chains' largest offerings. With 2-toppings, The Neighborhood weighs in at over ten pounds. Marketing for The Neighborhood has included the tagline, 'The Pizza So Big It Has Its Own Zip Code.'

Creativyst's Trademark is Registered by the USPTO

``Obtaining a registered trademark and service mark is much more than just winning the ability to put a little 'R' in a circle next to our name.'' says Dominic Repici, owner and CEO of Creativyst, Inc.

``Because we are a new company, our prospective customers must look for added assurance and certification regarding our record of success. The added credibility we achieve by proving we are committed to, and actively engaged in providing these offerings is especially helpful.'' Adding with a smile ``Of course, being able to put a little 'R' next our name is fun too. Our mark distinguishes our products and services from our competition and allows customers to recognize the quality associated with our company.''

Tags: trademark, registration, Press Release

Torco sues Torco

2006-05-24T21:05:00.000-07:00

California based Torco International Corporation (www.torcoracingoils.com) sued Michigan based General Sales and Service, Inc. d/b/a Torco Racing Fuels (www.torcoracefuels.com).

Torco International has been in business since 1950 and either applied for or registered the mark TORCO here, here, here and here.

It looks like General Sales has expended a good amount of money to promote their Torco brand. I wonder if they did a search before adopting the mark. If not, they should have. Maybe they would have taken a different name and avoid the lawsuit.

Tags: trademark, trademark search, litigation, registration

Fast track to a cease and desist letter

2006-05-24T20:37:00.000-07:00

You cannot be serious! What in the world was this guy thinking? Did he really think he could register the trademarks OHIO STATE BUCKEYES and OHIO STATE LADY BUCKEYES for water, soda and energy drinks.

Just the act of filing the application for registration will no doubt come to the attention of Ohio State's counsel, who should send this guy a cease and desist letter. No doubt he already got one, as his site appears to be down.

He just got office actions here and here. Excerpt from the Lady Buckeyes office action:

Registration is refused because the proposed mark consists of or comprises matter which may falsely suggest a connection with Ohio State University. Although not connected with the goods or services applicant provides under the proposed mark, Ohio State is so famous that consumers would presume a connection. Trademark Act Section 2(a), 15 U.S.C. §1052(a); TMEP §§1203.03, 1203.03(e) and 1203.03(f); See generally University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); In re Nuclear Research Corp., 16 USPQ2d 1316 (TTAB 1990); University of Alabama v. BAMA-Werke Curt Baumann, 231 USPQ 408 (TTAB 1986); In re Cotter & Co., 228 USPQ 202 (TTAB 1985); Buffett v. Chi-Chi’s, Inc., 226 USPQ 428 (TTAB 1985).

The following is required for a showing of false connection under Section 2(a):

·        the mark sought to be registered is the same as or a close approximation of the name or identity of a person or institution;

·        the mark would be recognized as such;

·        the person or institution identified in the mark is not connected with the goods sold or services performed by applicant under the mark; and

·        the fame or reputation of the named person or institution is of such a nature that a connection with such person or institution would be presumed when applicant’s mark is used on its goods or services.

In re Nuclear Research Corp., 16 USPQ2d 1316 (TTAB 1990); In re Cotter & Co., 228 USPQ 202, 204 (TTAB 1985); Buffett v. Chi‑Chi’s, Inc., 226 USPQ 428, 429 (TTAB 1985).

Applicant’s mark OHIO STATE LADY BUCKEYES refers to Ohio State University and would be recognized as such. Ohio State University is among the largest and best known Universities in the country. See, e.g., the attached Wikipedia entry.   Applicant does not appear to have any commercial connection to Ohio State University. Ohio State is so well known and licenses its name in various forms for so many collateral goods that consumers are likely to presume a connection between Ohio State University and applicant’s goods. Accordingly the mark creates a false connection between applicant and Ohio State University.

If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s).

I'm still scratching my head on this one.

Oh well. Go Blue.

Tags: Go Blue, trademark, registration, cease & desist, wtf, office action, 2(a), false connection, refusal

Fair Use lesson from Mr. Skin

2006-05-23T21:19:00.000-07:00

Okay, this is copyright related, but here at Search-My-Trademark.com, we're interested in more than just trademarks. Film Threat has an interesting article on Mr. Skin, of Internet and Howard Stern fame (and fortune). It talks about how Mr. Skin got started. But most important, at least from a legal perspective, the article asks Mr. Skin how it got the rights to show all of the film clips of naked celebrities. And this is what he said:

MrSkin.com is a compilation of reviews, references and other critical commentary on actresses and the films in which they have appeared, just like any televised review program. The website is also a resource for viewers who want to purchase movies in which the more than 11,000 actresses they feature have appeared.

Accordingly, they fall squarely under fair use provisions of the law (and equivalent foreign exemptions for review and criticism) and have successfully operated under this premise since launch in 1999.

Also, about 75-percent of movie companies and movie distributors send us screeners of their films for us to review at MrSkin.com. They realize a site that gets over six million visitors a month, and has a spokesman who is heard weekly on Howard Stern and many other shows has a pretty good platform to promote their movies.

Ah, don't you just love capitalism.

JibJab Media, Inc. v. Ludlow Music, Inc.

Rocketboom interviews Mark Hosler of negativland

Article on Trademark Fair Use.

Tags: copyright, trademark, fair use, Mr. Skin, Howard Stern, celebrity

Why you want to file a Section 15 declaration

2006-05-18T09:34:00.000-07:00

The TTABlog has an excellent post, as usual, on why you want to file a Section 15 declaration to make your registration incontestable.

Tags: trademark, TTAB, Section 15, incontestable, incontestability, registration

Surf City USA service marks

2006-05-13T19:14:00.000-07:00

The Huntington Beach Conference and Visitors Bureau are taking steps to claim exclusive trademark use of the service mark SURF CITY USA. They have filed ten applications for the mark and has recently received registrations for three of the ten applications.

The three marks, registered on the Supplemental Register, are for the following classifications:

Reg. No. 3091711 (May 9, 2006) - IC 035. US 100 101 102. G & S: Advertising and marketing; and promoting the economic development in the city of Huntington Beach. FIRST USE: 20041119. FIRST USE IN COMMERCE: 20041119

Reg. No. 3088922 (May 2, 2006) - IC 025. US 022 039. G & S: Clothing and sportswear, namely hats, t-shirts, shirts, jackets, sweaters, footwear, shorts, pants, and belts; tennis clothing, namely, shirts, skirts, shorts and pants. FIRST USE: 20051103. FIRST USE IN COMMERCE: 20051103

Reg. No. 3088921 (May 2, 2006) - IC 018. US 001 002 003 022 041. G & S: Handbags and sports bags. FIRST USE: 20051102. FIRST USE IN COMMERCE: 20051102

The other seven applications are for the following classifications:

App. No. 78705827 - IC 003. US 001 004 006 050 051 052. G & S: Sun care preparations, namely sunscreens, sun blocks, tanning products and wind screens

App. No. 78545796 - IC 041. US 100 101 107. G & S: Entertainment services, namely, concert bookings, live music concerts, live musical performances, and conducting surfing contests; amusement arcade services and amusement centers and parks; conducting seminars in the field of history and development of historical areas; organizing community festivals featuring a variety of activities, namely sporting events, art exhibitions, flea markets, ethnic dances and the like; and conducting guided tours of a historical site and area.

App. No. 78545776 - IC 035. US 100 101 102. G & S: Retail store services featuring sporting and recreational goods and equipment, surfboards, videos, music, clothing, carry bags and totes, toys, sunglasses and cosmetics.

App. No. 78545752 - IC 028. US 022 023 038 050. G & S: Toys, namely, toy surf boards, surf board leashes, wetsuits, volleyballs, kites, rollerblades, inline skates, skateboards, scooters, kayaks, boogie boards, snorkels, masks, fins, floatation devices, inflatable pools, floats, tubes, pool lounges, goggles, swim caps, fishing rods, fishing reels, tackle boxes, discs (frisbee), volleyball nets, kite surfing rigs, kick balls, horse shoes, ring toss sets, bike boards, electric mini bikes, card tables, sneakers, running shoes, coolers, arm chairs, tents, and tanning beds (specify each toy); games, namely, box games, handhelds; sporting goods, namely, surf boards, surf board leashes, wetsuits, volleyballs, kites, rollerblades, inline skates, skateboards, scooters, kayaks, boogie boards, snorkels, masks, fins, floatation devices, inflatable pools, floats, tubes, pool lounges, goggles, swim caps, fishing rods, fishing reels, tackle boxes, discs (frisbees), volleyball nets, kite surfing rigs, kick balls, horse shoes, ring toss sets, bike boards, electric mini bikes, card tables, sneakers, running shoes, coolers, arm chairs, tents, and tanning beds stuffed toy animals; toy bicycles and toy cars.

App. No. 78545730 - IC 012. US 019 021 023 031 035 044. G & S: Bicycles, tricycles, motorcycles, cars, trucks, motorized golf carts, brake systems for vehicles, tires, vehicle seats, bicycle parts, namely chains and handle bars.

App. No. 78545717 - IC 009. US 021 023 026 036 038. G & S: Eyewear, namely, sunglasses, optical frames, reading glasses and cases for sunglasses and spectacles, pre-recorded audio and video tapes and CDs featuring surfing, city scenes; beach activities and computer software relating to action games and safety equipment, namely, bicycle, motorcycle and safety helmets. FIRST USE: 20060221. FIRST USE IN COMMERCE: 20060221

App. No. 78518984 - IC 016. US 002 005 022 023 029 037 038 050. G & S: Printed materials, namely, newsletters and pamphlets in the field of travel and tourism; and informational flyers featuring travel and tourism; and brochures about travel and tourism. FIRST USE: 20041203. FIRST USE IN COMMERCE: 20041203

Press release is here.

By registering the trademark, the Bureau has taken the first crucial step in its plans to make Huntington Beach a household name synonymous with the Southern California beach lifestyle. From here, the Bureau plans to implement a global branding strategy that includes an official logo, advertising campaign and licensing deals with merchandisers of everything from beach cruiser bicycles to furniture. The goal is to promote the city as a destination resort and build Surf City USA as a lifestyle brand which will generate revenue for tourism promotion and provide funding for city improvements.

Tags: trademark, brand, registration, Surf City USA, Huntington Beach, licensing, strategy, press release

Some trademark statistics

2006-05-11T21:07:00.000-07:00

According to the United States Patent and Trademark Office's Trademark Electronic Search System ("TESS"), there are a total (as of May 11, 2006 at 4:16 PM) of 2,385,842 registered trademarks, of which 1,290,000 are active.

That's a lot of trademarks. And those are just the ones registered with the USPTO. There are many more trademarks registered with the states, and many many more unregistered.

So you still think you have a unique name that no one else is using. Look at the numbers and think again. Without performing a trademark search, you run the risk of adopting a trademark that is confusingly similar with one or more pre-existing trademark.

Consider these numbers also:

During the work week, the USPTO receives approximately 900 to 1,000 trademark applications per day. On weekends, they get about 100 applications per day

The USPTO has received the following number of applications in the following years:
- 2005 - 263,126
- 2004 - 250,252
- 2003 - 224,754
- 2002 - 214,143
- 2001 - 218,134
- 2000 - 285,775
- 1999 - 263,838
- 1998 - 198,650

The USPTO has received the following number of applications in the following months of 2006:
- January - 20,823
- February - 21,771
- March - 26,130
- April - 21,532

Tags: trademark, trademark search, search, USPTO, statistics, filings, registered trademarks

Bold Vision Consulting now has a decision to make after getting trademark cease & desist

2006-05-11T20:47:00.000-07:00

Lynnelle Bianco is a business consultant with over 25 years of experience in sales, marketing, and strategic planning. According to her website, she began her consulting business, Bold Vision Consulting, last year. Unfortunately, it appears she did not conduct a trademark search before she started up her business. If she had, she no doubt would have found out about Dublin, Ohio based Bold Vision, LLC which had registered the trademark BOLD VISION for Business Management Consultation.

The Ohio firm first used the mark on October 15, 2001, filed for registration on March 22, 2002, and was registered on August 12, 2003.

According to Ms. Bianco's blog, she got a cease and desist letter from an Ohio attorney demanding that she cease using the Bold Vision name. She lays out her two choices as follows:

A) Change the name of my business which means:
• Find another name that represents my work, my values, my views and …yes, the VISION of my business as well as Bold Vision.
• Redesign and re print every piece of marketing collateral I’ve created in the last year (and PAY for all this redesign and reprinting) Oh, this includes the website AND finding a new domain name - which means the new company name has to be an unregistered as a domain name also.
• How about every article I’ve ever written and published? Every article out there has Bold Vision noted in the by line. This BLOG is just one place where you can find my articles. I’ve also submitted articles for publication on various business sites and in newsletters here and there, so technically, I’ll have to remove the “Bold Vision” from these publications also… after I track them all down.
• And, get this – I’ll have to remove any reference to Bold Vision in any meta tag or search term from any website, newsletter or e-copy associated with my business.

Or

B) Respond to the attorney’s letter with an alternative view / plan / suggestion, which means:
Find a lawyer who is experienced in IP law, hire them to review the situation and write the response.
Wait for the Ohio attorney’s response to the response.
Decide whether to respond to the response to the response and…. well you get it. $$$$

Either choice will no doubt be painful.

I commend Ms. Bianco with admitting her error for the world to see in order to educate her readers of the real and potentially expensive dangers of adopting a name or trademark without first conducting a trademark search. I wish her well with whatever decision she makes. From the tenor of her blog post, I have no doubt that her vision will remain bold.

Tags: trademark, trademark search, search, naming, risk, name change, cease and desist

Puppies versus Cat

2006-05-10T12:41:00.000-07:00

We couldn't resist posting this cute video of puppies checking out a cat found on YouTube.

UPDATE 5/12/06

Here's an expanded version found on Google Video:

Tags: puppies, cat, YouTube, video, cute