Trademark blog: Trademark Guy, a blog and information from attorney Owen Smigelski

New job

2007-06-10T10:31:00.000-07:00

It's been a little while since I've posted- I've been busy with work, and interviewed for a new job. I will be moving from my current law firm job to an in-house position with Sunrider International. I will be the senior counsel for intellectual property, and be responsible for the company's worldwide I.P. portfolio. Although I will miss litigation, I will be at my dream job- focusing solely on worldwide I.P. I look forward to the new position, which I will be starting on June 25. My updates will be sporadic until then, but once I'm settled in my new position, I will start updating the blog again.

Church symbol trademarks

2007-03-26T20:58:00.000-07:00

I read an interesting article today regarding a trademark dispute brewing (sorry for the pun) in Utah involving coffee, clothing, the angel Moroni, and the Church of Jesus Christ of Latter Day Saints (aka the Mormons). The article is entitled Church Trademark Used to Sell Coffee Shop T-shirts.

The dispute involves a coffee shop in Taylosville, Utah called Just Add Coffee. The individuals decided to sell a t-shirt and greeting cards that utilize images of an angel. They drew unwanted attention by using a specific angel- namely the angel Moroni. For those of you not familiar with the Mormon faith, Moroni was the angel who told Joseph Smith (the founder of Mormonism) the material that would become the Book of Mormon. Moroni had some golden plates upon which were inscribed these words of god. A picture of Moroni is to the right, and it is Moroni from which the term "Mormon" is derived. Moroni is thus one of the fundamental pillars of the Mormon faith. Each Mormon temple that is constructed has a gilded statute of Moroni, facing Salt Lake City, Utah, and blowing a trumpet. I am not an expert in Mormons, but I imagine that each statute of Moroni looks different-- and an example is provided to the left.

The Mormons have decided to take issue to the use of the angel Moroni in conjunction with apparel and stationary relating to coffee. They claim trademark rights to the image of Moroni, and have requested that Just Add Coffee cease all use of the angel image (to which Just Add Coffee has stopped using the image).

I think the Mormons have a very weak case, and that Just Add Coffee should continue using their design. Can one have a trademark in a symbol that represents a religion? Where does this end- will the Mormons police all use of the name? Will they stop all use of the beehive (another symbol associated with Utah and Mormons) image? This is the same as the Pope asking people to stop using images of the cross or Christ in their names or logos. Similar arguments can be made for the Star of David or the Crescent Moon. Furthermore, there does not appear to be one image of Moroni that is always used, thus it appears they're claiming rights to any guy blowing into a long horn. I've seen similar representations in artwork, architecture, and products elsewhere- so the Mormons have perhaps not been diligent in enforcing their alleged trademark. This enforcement of trademark rights can also extend to all individuals that use images of the Moroni statutes, which I suspect includes a significant number of tourist related information (guides, postcards, books, movies, etc) and other "unauthorized" uses of the angel Moroni.

I suspect one main issue the Mormons had was the use in conjunction with coffee, which the Mormons forbid. Additionally, this is a store located in Utah, where individuals are more likely to be familiar with the representation of the angel Moroni. The Mormon church may not want individuals assuming that Just Add Coffee is associated with, or approved by, the Mormons. While certainly valid reasons, I do not believe that Just Add Coffee should stop their use.

No immoral or scandalous trademarks

2007-02-24T21:43:00.000-08:00

A client of mine recently asked to register a trademark that included what one would consider a "bad word." The word in question rhymes with "duck."* I advised my client that there is no way to register such a word through the United States Patent and Trademark Office. U.S. law forbids the registration of marks that consist of "immoral or scandalous matter." Trademark Act Section 2(a), 15 U.S.C. §1052(a); TMEP §1203.01.

To be considered “scandalous,” a mark must comprise something that is “shocking to the sense of truth, decency or propriety; disgraceful; offensive; disreputable; … giving offense to the conscience or moral feelings; … [or] calling out for condemnation,” in the context of the marketplace as applied to goods or services described in the application. In re Mavety Media Group Ltd., 33 F.3d 1367, 1371, 31 USPQ2d 1923, 1925 (Fed. Cir. 1994). Scandalousness is determined from the standpoint of “not necessarily a majority, but a substantial composite of the general public, … and in the context of contemporary attitudes.” Id.

One might consider that today, when "bad words" are more prevalent in common parlance, that such standards would be lower- and thus more words no longer qualify as "immoral or scandalous." That is not the case. Basically any bad word, such as "f*ck," "sh!t," and "a$$hole," cannot be registered in the U.S.

That does not stop a lot of people from trying to register such marks. This is one reason for consulting a trademark attorney before filing a trademark application, as they can assist you from essentially donating your filing fees to the USPTO. There's no way you'll be able to argue around this rejection. A quick search of the USPTO records indicate 39 rejected applications comprising the f-word, 60 rejected applications comprising the s-word, and 8 rejected applications with the the a-hole word. The results of these searches are below.

F_ck Trademark Applications
Sh_t Trademark Applications
A_shole Trademark Applications

I have also seen marks such as sh!t being rejected, because the USPTO states that everyone knows that it actually means the word for poop. The only way this will change, and we'll be able to see registered trademarks that comprise "dirty words" will be to change the laws. For now you'll need to use the "TM" symbol, other common law rights, and perhaps state trademark systems to protect your more racy trademarks.

* I myself am no stranger to dirty words, and occasionally use them in my more colloquial speech. I see no need to censor these words on TV or elsewhere. However, to ensure this site is not blocked by filters at work and school, I am using the abbreviations of these words.

Internet Trademark Domain Name Disputes

2007-02-08T10:34:00.000-08:00

The National Arbitration Forum just released three decisions regarding trademark domain name disputes, which is commonly referred to as "cybersquatting." The three cases illustrate different how to win an internet domain name trademark dispute, and how not to.

Magic Johnson

The first domain name is MagicJohnsonTravelGroup.com. June Bug Enterprises, on behalf of basketball legend Magic Johnson and his latest venture Magic Johnson Travel Group, filed to recover the domain name MagicJohnsonTravelGroup.com. A few days after the announcement of the formation of the Magic Johnson Travel Group, myspecialprice.com registered the domain name in question. myspecialprice.com had no rights to utilize the terms "Magic Johnson," and provided pay-per-click ads on the website. The Forum found for Magic Johnson, and ordered the domain name transferred from myspecialprice.com to Magic Johnson. This case illustrates the importance of registering domain names for your trademarks- especially before announcing your new trademarks to the public. The cost of registering the domain name is a lot lower (and quicker) than having to arbitrate over the domain name. The full decision is June Bug Enterprises, Inc. v. myspecialprice.com

War Games

In 1983, Metro-Goldwyn-Mayer Studios ("MGM") produced the hit movie "War Games." In 1998, World Readable registered the domain name wargames.com. For 8 years, pay-per-click ads appeared on the website, and in 2006 the website began selling military simulation war games.

The arbitrator found that although the marks were identical, MGM failed to show the 3 requirements to transfer a domain name:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

The arbitrator found that World Readable had legitimate rights in the domain name, in light of the sale of products. This case highlights the importance of policing your trademarks, and for acting immediately to address infringers. If MGM had gone after World Readable 5 years ago, when they were only showing ads, then they would have likely been successful in obtaining the domain name. The full decision is Metro-Goldwyn-Mayer Studios Inc. v. World Readable c/o R.L. Cadenhead.

Pig

The third case involves the trademark "pig." Canadian Adam Dicker registered the domain name pig.com. New Pig Corporation has been using the trademark "pig" since 1987 for industrial absorbents, containment products, waste handling equipment, distribution, sales and service related to such products. Mr. Dickler has been using the pig.com domain name to show pay-per-click ads. The arbitrators found that since Mr. Dicker had not registered the domain name in bad faith (e.g. he did not intend to usurp New Pig's trademark rights, and obtained the domain name because of it's desirable 1 word format), then New Pig had not proven the necessary elements to force transfer of the domain name.

Mr. Dicker purchased the domain name in an auction in 2006. New Pig should have been policing the mark and the domain name, and could have won it through the auction. They gambled through the arbitration process, and in the end, do not have a domain name with their trademark. Mr. Dickler is earning over $2 for the top click on his website, so this also demonstrates the value of domain names. The full decision is New Pig Corporation v. Adam Dicker.

Read the full press release.

Asics and Skechers trademark dispute

2007-02-07T21:17:00.000-08:00

Two dueling press releases caught my attention today-- because they involve trademark infringement allegations, and are from my two favorite shoe companies. ASICS, maker of athletic shoes, has sued SKECHERS, maker of "lifestyle footwear." I run marathons wearing ASICS, and prefer SKECHERS for my casual shoes. According to ASICS, they are suing

for trademark infringement, unfair competition, trademark dilution and false advertising. ASICS is seeking a permanent injunction against Skechers [sic] to prevent any future sales and distribution of shoes that bear a stripe design similar to ASICS famous stripe design. In addition, ASICS is also seeking damages, including profits and attorney fees.

The press release includes a quote from the vice president and general counsel of ASICS, Michael Zall:

"These shoes are an attempt to free-ride on the ASICS brand image and goodwill associated with our stripe mark that we have developed over the years. ASICS has spent over 40 years building a world-renowned premium brand and nurturing the goodwill represented by this mark. We will do what we must to protect the ASICS brand and to maintain its integrity."

ASICS states that their stripe mark is a registered trademark in most countries in the world. Read the full press release (Feb 5, 2007).

SKECHERS has replied with press release dated Feb 7, 2007, in which they deny all the allegations. A good legal analysis is put forth by executive vice president and general counsel of SKECHERS Philip G. Paccione:

"We believe that this lawsuit is completely without merit and will vigorously defend ourselves and our customers against such baseless allegations," says , General Counsel and Executive Vice President of SKECHERS. "Our stripe design does not look like the ASICS trademark; in fact, on the shoes in issue, our differences are patently obvious. Our designs use one horizontal stripe while ASICS uses two horizontal lines — a prominent feature of the ASICS trademark. In addition, our designs do not mimic the curves and contours of ASICS' design. There are many differences. "

Read the full SKECHERS press release.

Here are pictures of the two shoes in question:

The shoe on the left is from ASICS, and the one on the right is SKECHERS. Looking at the two side-by-side, I tend to agree with Mr. Paccione, in that the stripe patters are indeed different- there are different numbers of stripes, one is wavy and the other straight, the orientation is different... and a number of other differences.

I think it might be tough for ASICS to win this one, however this can only be determined by significant analysis- and the use of consumer surveys. This is gearing up to likely be a very long and expensive court battle.

Keith Urban v. Keith Urban- trademark infringement

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

The Smoking Gun has an interesting article today, regarding litigation by Keith Urban. The two litigants are both named Keith Urban. The plaintiff, Keith Lionel Urban, is a country musician from Nashville, Tennessee. He is the husband of Nicole Kidman who spent three well publicized months in rehab. The defendant is Keith D. Urban, of Wayne, New Jersey. He is a painter.

Keith L. Urban is unhappy that Keith D. Urban runs the website keithurban.com. He wants Keith D. Urban to stop selling his paintings on the website. Keith L. Urban was slow in registering domain names, and he uses the website keithurban.net. I did a quick search through Google for "Keith Urban," and the all of the first few pages of search results all point to the country singer, and identify his .net website.

When I first read about this website, I figured that Keith L. Urban must be back on the bottle- the other guy is actually named Keith Urban, registered the domain name first, so one could logically conclude that the painting Urban has the right to use the domain name comprising his actual name.

Then I took a look at the keithurban.com website, and I immediately knew that Keith L. Urban had a very strong case, and will likely win against Keith D. Urban. The country singer alleges that the painter is using the website of keithurban.com in bad faith, and confusing people into believing that he is the painter in addition to being the singer.

Of particular note, keithurban.com leads you to believe that it is actually the singer who does the paintings. The website prominently proclaims:

You have reached the site of Keith Urban
To Those Who Don't Know, Oil Painting
Is One Of My Hobbies.

The website later continues with:

For production reasons the print will not be the exact size as the painting, however it will be as close to the original size of the painting as possible.
The print will be autographed and numbered on the back and also comes with
a certificate of authenticity that is also autographed and numbered.

At no point does the website indicate that the individual is someone other than Keith Urban, country music star. Indeed, it leads one to believe that this may even be the Keith Urban, musician. By not clarifying this important fact, the painter Keith Urban is likely attempting to profit from the well known musician. Many people (myself included) will often go directly to a name and add ".com" when attempting to visit a website. I imagine the painter is receiving a good bump in website traffic by these accidental visits. As I noted earlier, the .com website does not show up within the first few pages of Google search results.

I have saved copies of the main page of keithurban.com, in the likely event that the website is shut down or ordered to change (and likely enter a disclaimer). Click the thumbnail image above to view the main page.

Mary Carey trademark update

2007-01-31T13:36:00.000-08:00

I earlier wrote about the trademark issues between Mary Carey and Mariah Carey. Mary Carey (the porn star, not to be confused with Mariah the singer) appeared on the Howard Stern Show on Sirius (yes, I am a subscriber). The issue of the trademark dispute came up, and everyone wondered how the dispute could actually exist- in that they sound different, do different types of entertainment, etc. All of which agrees with my earlier article. A "patent attorney from Pittsburgh" called in and said that under a likelihood of confusing test, where the marks are compared, they are confusingly similar.

It appears that our esteemed patent attorney missed the doctrine of laches. That basically states if you wait too long to bring a claim, you lose the right to do so. IMHO, Mariah Carey has waited too long to lodge any complaints. Mary Carey has been really big in the news for at least 3-4 years, in porn as well as the gubernatorial elections here in California. I even recall seeing a picture of Mary Carey promoting the re-election of President Bush in 2004, using her porn name.

Mary, who may have been drinking a little for the show, also claimed that she got the name "Carey" because of her crazy antics- like that of Jim Carey. I'm not sure if that argument will fly, but they point out many porn star names that are similar to those of other famous people- such as Arnold Schwartzenpecker- so Mariah may be a little late getting to the "stop Mary Carey" party.

More details as this case develops....

Police to reunite? Check the USPTO

2007-01-30T21:33:00.000-08:00

I'm a big fan the the band The Police, and have been reading a bunch of stories recently about how they may perform at the Grammys, which is just a prelude to them reuniting for a tour. Today it was confirmed by the Grammys that yes, the Police will perform at the Grammys.

My guess is that they will also go on tour afterwards. My reason? They filed a nice trademark application on January 4, 2007, covering a wide range of goods and services. Tellingly, part of the goods/services are for "use in commerce," since the early 80s, such records and clothing-- whereas other goods/services are "intent to use," such as tour programs and live musical performances. The full listing is:

Class 9:
Records, audio tapes, video tapes, compact discs, and DVDs, all containing music.
FIRST USE: 19770600. FIRST USE IN COMMERCE: 19790000

Class 25:
Clothing, namely, t-shirts;; Clothing and footwear, namely, bandanas, caps, hats, belts, headbands, jackets, jerseys, sweatshirts, shirts, pants, shorts, shoes.
FIRST USE: 19791200. FIRST USE IN COMMERCE: 19810200

Class 14:
Decorative pins, jewelry, watches
Intent to use

Class 16:
Tour programs, posters, stickers, pens, stationery
Intent to use

Class 21:
Coffee mugs, glasses, beverageware
Intent to use

Class 41:
Entertainment services, namely, live musical performances
Intent to use

The full trademark application is online at:

THE POLICE

Now it is entirely possible that the Police filed this to protect their existing marks, but at $325 per class filing fee, that's a bunch of money to spend on covering tours and promotion if you're not planning on using it. While this is not proof positive that they're going to tour, I'm certainly optimistic. Hopefully they do tour, and I get to see them here in LA.

Trademark use in commerce- make sure it's legal

2007-01-18T21:36:00.001-08:00

A common, and well known, rule in trademark law is "first use." I advise all clients, even if they cannot afford to file a trademark application, to start using their trademark in commerce as soon as possible. In the United States, trademark rights accrue upon use in commerce (for those that really want to know, 'use in commerce' refers to the U.S. Constitution, Article I, Section 8, Clause 3 , which allows the U.S. Congress "To regulate Commerce with foreign Nations, and among the several States, and with the Indian Tribes.") More on "use in commerce" in a later article.

This first use rule holds that the first person or company to start actually using the mark with their good or service, in commerce, is the superior trademark holder. This can become an issue when two entities are using similar marks for similar services around the same time. The eventual winner is the one that used the mark first, and then continually, in commerce.

The Ninth Circuit Court of Appeals (the federal courts that covers much of the Western States) has just issued a ruling in the case of CreAgri, Inc. v. USANA Health Sciences, Inc. This case states:

In a contest involving competing products claiming trademark priority, the district court determined, in order to acquire priority, a "use in commerce" means a lawful use- here, a use compliant with federal labeling requirements. [District court ruling upheld]

In this case, the parties were concerned regarding first use in commerce over a trademark. It turns out (to make a long story short) that one party had been using a trademark with a nutritional supplement product that was not fully compliant with Food and Drug Administration labeling requirements. The court held, and this court of appeals upheld the decision, that the prior use in commerce, not complaint with the law, was invalid. The court only will consider lawful use in commerce when determining trademark use priority.

This is somewhat significant, in that nutritional supplements are really widespread. In the Nineties, regulations regarding nutritional supplements were relaxed, hence those lovely small print warnings we see for many "supplement" products to "treat" conditions (e.g. "the accuracy of claims have not been verified by the FDA"). Turns out that in addition to being potentially dangerous to individuals, these products cannot claim rights to a mark- unless they comply with the law.

Some might think this is common sense, but there is such a volume of nutritional supplements out there (some of which I have tried) that the noise of the claims can sometimes overwhelm the actual efficacy of the product itself. I think this is certainly a step in the right direction, in recognizing that a product not compliant with the law should not be allowed to claim stronger trademark rights. If a product does what it claims, then it should certainly be stated, verified, and then the product will sell on its own right.

The full text of this decision is available here: CreAgri, Inc. v. USANA Health Sciences, Inc., citation TBD (9th Cir. 2007)

Mariah Carey v. Mary Carey

2006-12-11T20:41:00.000-08:00

Trademark disputes can arise in a number of ways, and can often be amusing. Case in point- recently Mariah Carey has decided that Mary Carey should not be allowed to obtain a registered United States Trademark (see Can Mariah Carey win her porn trademark battle?).

Mariah Carey, is the singer with a purported 5 octave vocal range, and is the owner of several registered trademarks, including (among others) MARIAH CAREY and MARIAH. Mariah Carey is well known for her music, sex appeal, and leaving rambling messages on her website, and her "breakdown." Mariah's first album was in 1990.

Mary Carey, nee Mary E. Cook, filed a U.S. Trademark Application for MARY CAREY on October 31, 2005. Mary Carey is best known for two things, having sexual intercourse on film (e.g a porn star) and running for governor of California. Of note, Mary has been been in porn since around 2000. She took her screen name in part due to her slightly similar appearance to Mariah Carey.

Also of note, the United States Patent and Trademark Office did not find that Mary's trademark application was similar to that of Mariah Carey. As stated by the Examining Attorney in an office action dated May 16, 2006:

Serial Number 78/743591
The assigned trademark examining attorney has reviewed the referenced application filed on October 31, 2005 and has determined the following:

SEARCH OF OFFICE RECORDS

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

Mary's application covers the obvious- porn. Mariah's trademarks cover assorted goods and services common for multi-platinum international music stars- music CDs, music performances, clothes, etc. Of note, Mariah does not claim any trademark rights to porn videos- however one of her marks covers streaming video.

The USPTO approved Mary's application for publication, and on September 12, 2006, Mariah Carey filed a request for extension to oppose. An opposition is where one party demonstrates before the USPTO how they will be harmed in the subsequent trademark is allowed to proceed to registration. For more information about trademark oppositions, please visit Inventionpatent.net.

Mariah Carey will now have to show how she will be harmed by the USPTO allowing Mary Carey's trademark to proceed to registration. It is likely that Mariah will try this by showing that the marks are "confusingly similar." This is generally done through a "sight, sound, connotation" analysis. This shows how the marks look the same, sound the same, and mean the same thing. One also considers the respective consumers of the goods and services, and the goods and services of the trademark. It certainly seems like a strong argument can be made that the marks do indeed sound the same, look the same, etc- and Mary admittedly took the name because she looks like Mariah.

There is one REALLY BIG problem for Mariah- she has to show how she will be harmed by the registration of this mark. In most of the trademark oppositions that move forward, the senior mark (e.g. the first one doing the opposition) has been around significantly longer than the junior mark (e.g. the one being opposed). Often, the trademark being opposed is one that is not yet being used in commerce. Mariah Carey is opposing a trademark application that has been in use in commerce since around 2000. Mary Carey states first use in 2003, but I recall hearing her on the Howard Stern show before that. My research indicates that to date, the only action Mariah Carey has taken against Mary Carey is this extension for time to oppose. Absent a showing that Mariah has taken earlier action- such as prior litigation, a cease and desist letter, etc., it will be REALLY difficult for Mariah Carey to show how she will be harmed by the registration of Mary Carey's mark. Mary Carey has received a significant amount of publicity as a porn star, as a gubernatorial candidate, and vocal Republican that the public is well aware of the difference between the porn star and the music singer. I suspect this trademark opposition will go away, and Mary Carey will get her registered trademark.

Don't google it...

2006-08-23T23:30:00.000-07:00

Google is policing their trademarks, according to this article entitled Google Cracking Down On Trademark. This is something that they must do if they expect to maintain their trademark. Even though their name is made up (or "fanciful") or even arbitrary, one must always guard against a mark becoming "generic." As a reminder, the levels of trademark protection, from strongest to weakest, are:

Fanciful- the strongest type of trademark, which is an invented word- such as "kodak"
Arbitrary- the next strongest- this is a real word, but used for something different, such as "apple" for computers or "mustang" for cars
Suggestive- this is where a term describes something in the underlying product or service, but still requires some imagination to connect the mark with the product or service, such as "gateway computers"
Descriptive- this mark completely describes the product or service, however can obtain trademark protection through use and/or fame. An example is "Joe's 15 minute oil change."
Generic- this is when a term is so connected with a product or service, that everyone associates it with all products or services- such as using "kleenex" instead of "facial tissue."

Becoming so ubiquitous and well know is actually a problem in trademark law. Everyone starts to associate your mark with all types of those products or services. Other examples of marks that are not generic, but used by many as generic, include "xerox" for "photocopier" and "coke" for "soda" (primarily in the South).

The problem faced by Google is that because so many people use their services, and so many people are aware of their services (and in my opinion, because Google continues to be the best search engine out there), people are starting to use the term "google" in place of "internet search." This may be flattering, but can actually destroy the trademark rights held by Google. If they do not police their mark, and make sure people associate "google" with Google/google.com (and not any other search engine), they could actually lose their trademark. As it is tough to tell people to use a mark properly (one example is through newspaper ads), another proxy for policing is to crack down on similar marks.

So, to finish up the title of this posting.... Don't google it- perform an internet search instead.

Morgan Stanley v. Meow

2006-06-06T08:33:00.000-07:00

Most people have the impression that the legal system is very dry, oppressive and boring. Much of this derives from the at times tedious details and procedure that must be followed. Sometimes there are some very funny moments in court (I'd rather not talk about the first time I appeared in court- everyone was laughing), and other times judges and arbiters have a lot of fun with their written opinions. The opinion by the judge in the recent Da Vinci Code lawsuit contained a code of its own. I recall reading a case in law school about a house that was haunted, and it contained an absurd number of references to ghosts.

Why am I writing about this? Well, I just came across this gem, Morgan Stanley v. Meow. Honestly, that is the name of that decision. It involves cybersquatting of a domain name. Morgan Stanley petitioned for transfer of the domain mymorganstanleyplatinum.com, which had been registered by a Mr. Woods (actually, through his cat). Mr. Woods had registered some other domains comprising Morgan Stanley marks, and it appears he was able to keep the first domain name. In this case, because the domain was registered in the name of a cat, who couldn't actually register the domain name or properly instruct someone to do so, the domain name registration was held invalid.

The individual who wrote the decision, Richard Hill, certainly enjoyed himself while writing this. I applaud such efforts, because we should all amuse ourselves with our work. It makes it more exciting for ourselves, which then spreads to others. Quoting Mr. Hill:

Respondent maintains that it is a cat, that is, a well-known carnivorous quadruped which has long been domesticated. However, it is equally well-known that the common cat, whose scientific name is Felis domesticus, cannot speak or read or write. Thus, a common cat could not have submitted the Response (or even have registered the disputed domain name). Therefore, either Respondent is a different species of cat, such as the one that stars in the motion picture “Cat From Outer Space,” or Respondent’s assertion regarding its being a cat is incorrect.

If Respondent is in fact a cat from outer space, then it should have so indicated in its reply, in order to avoid unnecessary perplexity by the Panel. Further, it should have explained why a cat from outer space would allow Mr. Woods to use the disputed domain name. In the absence of such an explanation, the Panel must conclude that, if Respondent is a cat from outer space, then it may have something to hide, and this is indicative of bad faith behavior.

On the other hand, if Respondent’s assertion regarding its being a cat is incorrect, then Respondent has undoubtedly attempted to mislead this Panel and has provided incorrect WHOIS information. Such behavior is indicative of bad faith. See Video Direct Distribs. Inc. v. Video Direct, Inc., FA 94724 (Nat. Arb. Forum June 5, 2000) (finding that the respondent acted in bad faith by providing incorrect information to the registrar regarding the owner of the registered name); see also Quixtar Invs., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that use of false registration information constitutes bad faith).

Respondent cites Morgan Stanley v. Michael Woods, FA 604103 (Nat. Arb. Forum Jan. 16, 2005), in which the Panel found that Complainant had failed to prove bad faith registration and use. But that case must be distinguished from the present case, because in that case the Respondent was Mr. Woods, and not a cat or someone who has misled the Panel by pretending to be a cat.

The Panel finds that Respondent’s assertions that it is a cat provide sufficient evidence to conclude that the Respondent registered and is using the disputed domain name in bad faith. And this despite the fact that the Panel, unlike Queen Victoria, is amused.

Thank you, Mr. Hill, for making me laugh out loud hysterically at work!

Nuevo Juan Valdez

2006-05-31T13:31:00.000-07:00

Here's an amusing story that puts a human face on trademarks: 'Juan Valdez' Is Hanging Up His Poncho.

I didn't realize it, but Carlos Sanchez has been playing Mr. Valdez since 1969. I just figured they kept finding similar actors to play the guy. The role itself originated with another gentleman in 1959.

Although I doubt that the Colombian coffee cartel has a registered trademark for Mr. Sanchez's visage, I certainly suspect they have established worldwide common law rights to the man.

There's another example of this in the Columbia Pictures logo, which has a woman holding a torch. Over the years the general layout has remained similar, however the actual representation of the woman holding the torch has changed- including the look of the woman. Currently it is modeled after Jenny Joseph (and not Annette Benning as commonly thought). More info at Wikipedia.

Goodbye Mr. Sanchez, and we certainly look forward to your mustached replacement. Hopefully there's no big change like the Brawny Man recently endured.

Trademark for pizza smells?

2006-05-23T08:37:00.000-07:00

Well, I'm not too sure about Lithuanian trademark law, but there's an interesting story regarding one outfits attempt to trademark the smell of their pizza. I've written previously about tastes and smells in trademarks. It is possible to get marks for scents and smells, but it generally needs to be something that everyone can readily identify, and there there is no doubt as to the particular scent. An example is grass. One can have fresh cut grass smell, the smell of hay, the smell of clover, rotting grass, burning grass, etc. One does not immediately know the proper scent.

That is where our Lithuanian pizza people may have problems: what type of pizza do we smell? White pizza? Hawaiian style (with ham and pineapple)? Wood oven pizza from NY? Chicago style pizza? Obviously there are many different scents and flavors of pizza, so one cannot immediately describe the pizza smell in a general manner to the public at large.

Another problem our pizza guys may have is that the smell of pizza is descriptive. You cannot have a trademark that is merely descriptive of the underlying goods or services, and I think that the smell of pizza immediately describes the goods. Now if for some reason their pizza smelled like eggs, and everyone identified that only with that particular pizzeria, then they may have an argument. Secondary meaning is a showing that your particular mark, even if descriptive, is attached and associated with your goods or services. An example could be "Jiffy Lube." It's quite clear what that means, but because of their advertising, everyone knows the mark and the services.

I have a sore spot for pizza myself, hence my distaste for this trademark attempt. I'm from NY, and spent 2.5 years working in a pizzeria in college...

Ivana Trump trademark update

2006-05-08T12:08:00.000-07:00

I've been a reader of the website The Smoking Gun for a long time, and I told them about the Ivana Trump trademark dispute. They published a story on this, and were nice enough to credit this blog.

TSG also included an update to the trademark opposition. Ivana has now filed an answer to Donald's notice of opposition. In it, Ivana rejects or denies much of the allegations made by Donald in his trademark opposition filing. Ivana also states that Donald is barred for bringing the opposition for several reasons:

1- Fails to state a claim that can be adressed by the USPTO
2- The filing is barred by laches (which means Donald waited too long to tell Ivana to not use the mark, presumably because Ivana's been using it for awhile and Donald should know about that)
3- Waiver, estoppel, and unclean hands.

The waiver and estoppel defenses mean that Donald has not enforced this before against Ivana, so he cannot raise the issue now. Unclean hands implies that Donlad has done something unethical relating to the case.

I'm interested to see where this all goes, and will keep checking the USPTO for updated status.

Ivana Trump trademark problems

2006-04-25T11:44:00.000-07:00

Exclusive breaking news from the Trademark Guy (if you're into celebrity gossip):

Ivana Trump is having some problems, and these are not related to issues with her reality TV show. The now ex-wife (and subsequently remarried) of Donald Trump has decided that she is going to enter the real estate business. To this end, she filed for a U.S. Trademark, application no. 78486404. The mark passed approval by the USPTO, however once published for opposition, Ivana's ex husband decided to block her application by filing a trademark opposition. Mr. Trump is blocking the use by Ms. Trump because he claims she is building upon his well known reputation as a real estate mogul. I happen to agree with the filings by The Donald, and feel Ivana might have a tough time responding and moving forward. A copy of the opposition filed by Donald Trump against Ivana Trump's trademark is here (and includes some nice juicy info on the relationship between the former power couple). Ivana Trump has until April 30 to file an answer, so we'll see if this moves forward.

Ivana has a bunch of trademarks either pending or abandoned (however the Donald has well over 90 pending). Ivana Trump's trademark applications include:

78445372 - IVANA TRUMP (Abandoned), for use with bottled water
78486404 - IVANA TRUMP (Opposition pending), real estate services
78397961 - IVANA TRUMP (Abandoned) for use with entertainment and advertising services
78732975 - IVANA LAS VEGAS BY IVANA TRUMP (Filed in October 2005, currently under USPTO review) for use with advertising and business services
78486387 - SUMMIT BY IVANA TRUMP (Awaiting further review of other pending trademark applications) for use with business, entertainment and real estate services
76308614 - IVANA TRUMP (Abandoned) for use with eyewear
2879912 - IVANATRUMP.COM (Registered Trademark) for use with online services
75486221 - IVANA TRUMP (Abandoned) for use with eyewear

She keeps filing for eyewear, getting approved, and then not filing a paper showing that she is using the mark. I guess the products are still under development.

The filing by Donald Trump indicates that the two still amicably share business ventures after their marriage- however I cannot imagine this will help things along.

Trademarks run amok

2006-04-20T13:41:00.000-07:00

Mother Jones has a very amusing piece that details some IP abuses- entitled Intellectual Property Run Amok. I agree with many of them, however a few (such as gene patents) are ones that are not too "egregious." Here are the ones that involve trademarks, along with my commentary on each one.

NINETY-ONE pending trademarks bear Donald Trump’s name, including “Donald J. Trump the Fragrance” and “Trump’s Golden Lager.” He failed to trademark the phrase “You're fired.”

Anyone even remotely familiar with Mr. Trump will know that he is quite proud of his name and image. He names everything he owns something "Trump"- "Trump Tower," "Trump Taj Majal," etc. By filing all of these trademarks, he is blocking others from using similar marks. Many large entities with famous marks do so. Often these applications go abandoned, but they still keep trademark options open as business develops. For example, Microsoft has 4 applications (3 now abandoned) for use with food:

78146798
75893897
75488071
75893292

Basically I don't think Trump is abusing anything here. I did learn about an amusing Trump trademark issue during my research for this piece- I'll write about it shortly.

HUEY NEWTON’S widow is trademarking the phrase “Burn, Baby, Burn” for use as a BBQ sauce slogan.

Why is this an abuse? Perhaps because the phrase was used historically, but it is still open for use by others. And why not someone associated with the civil rights movement?

IN THE LATEST ROUND of a 13-year battle over the title “Surf City USA,” Huntington Beach, Calif., filed for a trademark last year. A state senator from Santa Cruz retorted, “You can’t trademark a state of mind” and proposed a Senate resolution declaring his city to be the real Surf City.

Not sure if this abuse, it's just comical to watch surf towns have a public pissing contest.

“SENSORY TRADEMARKS” include a duck quacking (AFLAC), a lion roaring (MGM), yodelling (Yahoo!), giggling (Pillsbury), and a “pre-programmed rotating sequence of a plurality of high intensity columns of light projected into the sky to locate a source at the base thereof” (Ballantyne of Omaha).

This is not really abuse of trademarks. How many people associate Gilbert Godfried's quacking duck with Aflac? (Yes, Gilbert does the quacking for those ads). I myself do, so the sound does act as a trademark- it identifies a source of goods or services. The same thing with the roaring lion. I imagine if you went to see a movie by Dreamworks, and hear a lion roar when viewing the name Dreamworks, you would immediately think of MGM- thus it functions as a trademark. NBC also has a trademark for the chime sound they play. Not all sound trademarks are approved, in fact Harley Davidson recently lost a trademark battle to protect the sound of the Harley. They argued that the sound was so tied to Harleys that it was a trademark, and the Trademark Office said it was just a sound the engine made- all motorcycles make loud noises. While I see Harley's point of view, they shouldn't have won the battle.

Moving to LA...

2006-03-24T15:14:00.000-08:00

There's going to be a little downtime and some changes to this blog. I will be joining the law firm of Skousen & Skousen. I will be joining their existing IP department and full service law practice. I start April 12. Check back for more frequent updates towards the end of April.

Jigga not allowed as trademark by USPTO

2006-03-16T13:54:00.000-08:00

The U.S. Patent and Trademark Office (USPTO) has rejected a trademark application for "jigga," which was filed by Damon Wayans. Turns out that the USPTO thinks the word "jigga" is scandalous or disparages a particular group. Mr. Wayans had planned on his new hiphop clothing line. You can read more here, but be forewarned that this site uses patent and trademark interchangeably. Readers of this block know that is one of my pet peeves (e.g. there is a difference between patents and trademarks)

According to the USPTO, there are certain words that cannot be used in a trademark. Quoting the Trademark Manual of Examination Procedure (TMEP) Section 1203:

Extract from 15 U.S.C. §1052. No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it-- (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 2(9) of the Uruguay Round Agreements Act) enters into force with respect to the United States.

The TMEP governs how the attorneys at the USPTO examine trademarks.

Let's break down the various automatic rejections comprised in this section, which cannot be overcome (e.g. you will not be able to register the mark).

Immoral or Scandalous Matter

This includes many words, such as fuck and shit, which will offend people. This also includes other less clear-cut terms, such as "jack off" and "dyke." Recently the motorcycle group "Dykes on Bikes" was able to get a registered trademark because they were able to show that lesbians are not insulted by being called dykes (more info). This is where Mr. Wayans ran into trouble (more below).

Deceptive Matter

Instead of explaining this one myself, I quote TMEP Section 1203.02:

The Court of Appeals for the Federal Circuit has articulated the following test for whether a mark consists of or comprises deceptive matter:

(1) Is the term misdescriptive of the character, quality, function, composition or use of the goods?

(2) If so, are prospective purchasers likely to believe that the misdescription actually describes the goods?

(3) If so, is the misdescription likely to affect the decision to purchase?

Matter which May Disparage, Falsely Suggest a Connection, or Bring into Contempt or Disrepute

This one applies to people and national symbols, so you cannot register "France Sucks." I know it's popular to hate France, but without them, we wouldn't be a country (massive financial aid during the Revolutionary War and a blockade of British troops by French ships allowed Washington to defeat Cornwallis- but I digress). You also claim a false connection (such as registering Paula Abdul for perfume if you do not have her permission) or do something that might bring contempt to a name (some once tried to register "Here's Johnny Toilet Seats," and Mr. Carson did not like that).

This brings us back to Mr. Wayans and his "Jigga" mark. Clearly he's playing on the term "nigga" which is another form of "nigger." Lest anyone think I'm tossing around slurs, I myself am a Mc Pollack nerd. Mr. Wayans's mark appears to be a play on the term "jiggy," which was made popular by Wil Smith. I'm kind of surprised that this mark has not been allowed to go forward, or that Mr. Wayans's attorneys have been able to overcome this rejection. While clearly "nigger" is a term that is scandalous and/or disparages someone, "nigga" is so widely used in popular culture (rap, hiphop, movies, normal people, etc). I think some strong arguments can be made to the USPTO to convince them to allow this mark through, and hopefully Mr. Wayans will eventually "Jigga" registered with the USPTO.

Trademark squatters: Big trouble in little China

2006-03-08T20:54:00.000-08:00

An article on CNNMoney.com really caught my attention today. The article, entitled China: Your company name may not be yours, is interesting for several reasons. First and foremost, yours truly was interviewed for this article, and I am quoted in the article. Second of all, it points out how important it is to protect your brand in markets you may not have considered.

Up until recently, China was not a popular country for trademark protection. China was outside of the WTO (World Trade Organization), and infringement of patents, trademarks and copyrights was rampant. There were weak and ineffective laws to enforce IP rights. China had to revamp it laws, and promise more protection to IP holders, as a condition of joining the WTO. While IP violations are rampant still, more avenues are available to holders of legitimate IP rights.

Savvy individuals in China (and elsewhere) have been snapping up the big names, and obtaining registered marks in their country. This effectively blocks the legitimate trademark holder from using their own mark in that country. A notable recent example is the troubles encountered by Starbucks in Russia. These individuals will identify popular brands outside of China, often brands that are just getting started and gaining traction in other markets. They may still belong to small entities without a large budget for trademarks. The individual registers the mark in their country, and then can basically sell it for a nice profit when and if the business wants to expand into China (or the respective country).

I've noticed a trend over the past few years: more people are interested in filing trademarks in China. In some cases the business is already in China, and often the business plans on going into China. I tell people that if they are considering to enter the Chinese market, the cost to file now is much cheaper than going after a trademark squatter later. For around $1000 a trademark application that has the same filing date as your U.S. application can be prepared and filed. I have good contacts with multiple law firms in China and Hong Kong, so we can find the right match for you. We can also help you setup distribution and other agreements for your business interests in China.

Here is what I said in the article:

Owen Smigelski, an intellectual property attorney with San Diego-based Achtel Law firm, recommends U.S. brandholders immediately file their trademark particularly in those countries where trademark squatting is springing up more frequently.

"Over the past couple of years we've certainly have had more clients pursuing trademark issues in southeast Asia versus earlier," Smigelski said. "I think with the Olympics coming up, China is also looking very attractive for lots of international brands and they should be aware of trademark issues."

It's relatively inexpensive to register the trademark, typically under $1,000, he said, while trademark litigation can run into thousands of dollars.

Very true indeed, if I do say so myself. I guess I already did...

Trademark process

2006-02-07T20:26:00.000-08:00

There are many steps to the trademark process. Here is an overview of the most common steps.

Identifying a trademark
Conducting a trademark search
Reviewing trademark search results
Completing and filing a trademark application
Trademark prosecution (review by the USPTO & responding to office actions)
Publication of your trademark application
Trademark opposition
Trademark registration
Foreign trademark applications

Identifying a trademark
It is likely that you have chosen a name or logo that you or your company would like to use. Before filing a trademark application, it is recommended to research the mark. There may be potential marks that could block the use or registration of your mark. Before spending the time and effort of filing a trademark application, it is best to identify potential problems.

Conducting a trademark search
There are many resources for conducting trademark searches. A simple Internet search will give you a good idea of marks out there. The next step is to search the U.S. Patent and Trademark Office (USPTO) website. The online database is called TESS, and a direct link is here. There are additional low cost and free trademark searches online, however the motto "you get what you pay for" is true. These searches may be quite basic, and not conducted or reviewed by a trademark professional such as an attorney. A basic trademark search at my law firm is $300, which includes USPTO and state trademark databases, plus review, opinion and discussion with a trademark attorney.

Reviewing trademark search results
Once you have your trademark search results, they should be reviewed by a trademark professional. At my law firm, we'll review the results and also give you a brief opinion regarding any potential problems you may encounter with your application. We will also give you advice on your mark. We can identify problems that may arise with your trademark application. Along with your trademark search results, we can identify possible common blocks to your application, such as similar marks, and whether your mark is merely descriptive (such as "Frank's Rapid Oil Change and Lube"). We can help you identify these possible problems and recommend changes. Filing a trademark application provides you with a filing priority date, which will help determine the date your trademark was in use (an important factor in trademark rights). If you conduct your trademark search with our law firm, this review and consultation with a trademark attorney is included in the cost of our trademark search.

Completing and filing a trademark application
After finalizing your trademark, we can assist you with completing a federal trademark application. This includes identifying the goods and/or services you would like your trademark to cover, identifying the applicant (yourself or a corporation), and identifying your filing basis. Once your trademark application is filed, we will keep track of all reminder dates for keeping your trademark application current. Our firm charges $400 (plus USPTO filing fee of $325) to prepare and file a basic trademark application. This includes a consultation with a trademark attorney.

International trademark application
There are several options for filing international trademark applications. Our firm recommends filing within 6 months of your filing date in the U.S. Any foreign trademark applications will thus have the same filing date as your U.S. application. You can file international applications at a later date, however your protection will relate to a later filing date.

Trademark prosecution (review by the USPTO & responding to office actions)

Once a trademark application is filed, trademark prosecution by the USPTO begins. They will initially review your application to make sure it is complete. Within seven to nine months of filing your trademark application, your application will be reviewed by the USPTO. In many cases, you will receive some sort of Office Action. An Office Action is a request to address concerns that the USPTO has with a trademark application. Many of these concerns take the form of "rejections." These rejections must be addressed and overcome with legal arguments to allow a trademark application to be approved. Many of the rejections revolve around similar marks, or the strength of the trademark. While many trademark applications receive Office Actions, that does not mean that the mark cannot ultimately be registered. Our firm has practice prosecuting numerous trademark applications, and drafting responses to office actions from the USPTO. We can provide many arguments that are not immediately obvious, and can work with you to address the issues raised by the USPTO. To prepare and file a basic trademark response to an office action from the USPTO, our firm charges $400. More complicated office actions require additional work, and the cost of such a response can be determined after a free consultation with a trademark attorney.

Publication of your trademark application
Once you have addressed the concerns raised by the USPTO regarding your trademark application, it is then approved for publication. The USPTO then publishes your trademark application in the Official Gazette. This allows the general public to view your trademark application prior to approval. If any other trademark owners have concerns, they can initiate a trademark opposition proceeding, which must be filed within 30 days of publication (however extensions to file an opposition can be filed for up to 120 days.)

Trademark opposition
A trademark opposition occurs when a trademark holder believes that a published trademark application infringes upon their registered trademark. A trademark opposition proceeding is operated much like a trial, and rules of evidence and levels of proof are important. We have experience with trademark oppositions, and can reach an amicable resolution through mutual consent agreements, or defend your trademark application to the fullest.

Trademark registration
Once the opposition period has ended, your trademark application is approved for registration. With the payment of requisite government fees, you are granted a registered trademark. Maintenance fees and statements of use are required on a periodic basis. Our firm will keep track of these dates, and ensure that you keep your registered trademark. We will also provide you with reports about your trademark rights. Our firm can additionally monitor your trademark, and protect your trademark from potential infringers.

Foreign trademark applications
Once you have filed a trademark application with the USPTO, you can file trademark applications worldwide. If you wish to file trademark applications abroad, this must be done within six months of your trademark application in the United States. You can claim the filing date of your United States trademark application as a priority date for foreign trademark applications, including foreign trademark applications made through the Paris Convention or the Madrid Protocol (both which protect your trademark rights)

Picasso ≠ Picaro

2006-01-15T18:46:00.000-08:00

After a number of years, numerous court cases, and denied appeals, Europe has determined that "Picasso" is not similar to "Picaro." According to the People's Daily Online, the Picasso family has been vigorously defending their rights to the Picasso name. They had even licensed the name to Citroën to be used with cars. DaimlerChrysler came along and decided to use the name "Picaro." While I certainly understand the desire to protect brand names, I do not think that "Picaro" and "Picasso" are similar to the point of confusion. It appears that European courts agree with me. According to the article:

The judges conceded that both words contained three syllables and that both words did, indeed, have the same vowels, in the same order.
They also accepted that the consonants were pretty similar too, and they acknowledged that the first two syllables and the final letters of both words were identical. But the pronunciation of the two words was markedly different, they said there was a double "s" sounding utterly dissimilar to an "r" sound.
And the two words, the court heard, conjured up different images. "Picasso" brought to mind the beret-wearing painter, the lover of minotaurs, nude women and the colour blue, whereas "Picaro" was understood by native Spanish speakers to refer to a character from Spanish literature.
The two words "are not thus similar from the conceptual point of view" the judgement read. "Such conceptual differences can in certain circumstances counteract the visual and phonetic similarities between the signs (words) concerned."

I couldn't have said it better myself. This is the type of analysis that is used to determine trademark infringement. Much of the determination of trademark infringement hinges upon showing different meanings. This can be quite exciting, as there is a lot of research into origins of words, opinions of people on the street, foreign language equivalents, etc. Then again, I'm a trademark attorney so I do find this quite exciting.

International trademarks

2006-01-13T08:16:00.000-08:00

International trademarks

Before filing for an international trademark application, you will need to have a pending U.S. trademark application. Once you have your pending U.S. trademark application, you have several options for filing for international trademark protection. There are different reasons for choosing each option, and you should consult with a trademark attorney before proceeding.

Within 6 months of filing date
After 6 months from filing date, but before registration
Filing after registration

Filing within 6 months of the filing date- If you file either an international trademark application using either the Paris Convention or Madrid Protocol within 6 months of your U.S. filing date, your international trademarks will have the same filing date as your U.S. application (this is often called a priority date.) This priority date will ensure that you have the earliest possible filing date abroad.

After 6 months from filing date, but before registration- You can still file trademark applications abroad after the 6 month filing deadline. This 6 month filing deadline is so that your foreign trademark application has the same filing date as your application in the United States. You can still file a Madrid Protocol application, which will reference your underlying U.S. trademark application. Your international trademark applications will have the filing date of your Madrid Protocol application. It is always good to file a trademark application in another country when your business expands to that country- either by providing services or selling products. The Madrid Protocol application will allow you add more countries later.

Filing after registration- Once you have received a U.S. trademark registration, you can file an application which relates back to your U.S. registered trademark. You will have to provide a copy of your U.S. registration. Review of this type of trademark application may proceed quicker than other applications, in light of the registration in the U.S.

For all international trademark applications, you will first need a valid pending U.S. trademark application. We advise using the services of a trademark attorney to prepare this application. If you have any errors in your U.S. application, you can encounter further problems when filing international trademark applications.

Kiwi trademark battle

2005-12-08T13:03:00.000-08:00

In an interesting twist of irony, an international trademark battle over the term "kiwi" for use with wine is raging. The New Zealand Herald reports in Winemakers get the Gallic brush-off over Kiwi trademark that a French outfit has registered the mark "Kiwi Cuvee" in Europe, for use with wine. As many may know, the term "kiwi" refers to a bird found in New Zealand. It is also a yummy fruit, and shoe polish (which is made in Australia). People and things from New Zealand are often called "kiwis."

A guy from New Zealand started making a chardonnay called "Kiwi White." He sold a bunch in Sweden, and was ready to move forward with more orders in Europe when the Kiwi Cuvee mark registered. This effectively blocked his use throughout Europe. He was technically using the mark in Europe before the French group, but the French got the mark registered first. He now faces a long and expensive battle to use his mark in Europe. The New Zealander gripes that "kiwi" can have a source-origination connotation such as "champagne," and laments the fact that the French go after non-champagnes, but then steal the term "kiwi."

This is a lesson that trademark searches and clearance must be done well in advance of adoption of a mark. If you plan on using the mark only in your country, then it can be acceptable to proceed with a limited search in your country. If you plan on expanding to international use, then you should not only perform an international trademark search, but you should also keep your international trademark rights current through either the Paris Convention or Madrid Protocol.

Google and genericization of trademarks

2005-11-14T12:50:00.000-08:00

Today I read an article with great interest entitled Google ready to fight genericization. It tells how Google is considering placing advertisements to prevent losing the strength of their trademark. I applaud Google for taking this move.

Trademark holders must enforce their marks, otherwise the marks can lose strength. Additionally, if you do not tell a potential infringer to stop, you may not later be able to halt their use of the mark. Furthermore, and perhaps the worst, is that your mark can become "generic" (more about the various strength of trademarks.)

Becoming ubiquitous and well known can be good for a company. It means that the public is well aware of their mark and brand, and identifies the name with the service or good. It can be a problem to be associated with all uses for the good. Companies often use advertisements to police their brands. They basically put the world on notice that their mark is strong, and cannot be used for the generic use. Some common marks which are often incorrectly used to describe something generic include:

Kleenex (for facial tissues)
Xerox (for copiers)
Coke (for soda)

I've noticed for awhile that many people are now using Google as a verb, as in "I Googled my name to see who's talking about me." This is marginally OK, as long as you intend that you used only Google as your internet search engine. If you used Yahoo, then you were using Google to mean "internet search," and that indicates a weakening of Google's mark.

This ad campaign will start to show that Google is concerned about their brand value, and also to show that they are actively protecting their mark. They have such a good and unique name, that it would indeed sad to see it weaken.

Note: I have been using Google as my preferred search engine since 2000. I try the others on occasion, but Google remains the best for good results.