Tuesday, November 16, 2010

Best Inventions of 2010

The end of the year is still a few months off, but Time magazine has decided to call it early… Last week, Time issued its annual “50 Best Inventions” article. It’s an interesting and fun look at (arguably) the cream of this year’s crop of ingenuity and creativity. Some of these inventions, like the iPad and the first synthetic cell, have raised eyebrows across the globe, while others, like a green-energy underwater kite and spray-on fabric, have gone under the radar. Whether you’re an inventor or not, the inventions are sure to make you rethink current ways of doing things, and realize just how much can be accomplished in one year. Hopefully this will inform and inspire the hard working inventors out there with an idea that’s time has come. I wonder what 2011 will hold…

Thursday, November 11, 2010

Attention Inventors: Everyday Edisons – Casting Call

Think you have a good idea? The Emmy and Telly-Award-winning PBS television show “Everyday Edisons” announced recently that it is currently casting for its fourth season, set to air summer of 2011. The program is looking for 10 small-time inventors with big ideas. According to their Web site, www.edisonnation.com:

They will pick 10 outstanding innovations. All it takes is a great idea. As they say, give yours a shot at success and find out if you have what it takes to become an "Everyday Edison!"

The winning invention featured on the show will have the option to enter a contract to receive money for sales of their invention, after it is commercially manufactured. Everyday Edisons premiered in 2007, and has become one of PBS’s most critically-acclaimed programs.

Thursday, October 7, 2010

Hard Rock Cafe Trademark Issues: Not Too Happy About Free Publicity

Among the already-raunchy assortment of reality TV shows, the new “Rehab: Party at the Hard Rock Hotel” is pushing the envelope. And the Hard Rock Cafe International, Inc. chain (a different company than Las Vegas Hard Rock Hotel & Casino) doesn’t find the debauchery very entertaining. The Hard Rock Café recently filed a law suit for trademark infringement, trademark dilution, and a variety of other charges regarding the tarnishing of Hard Rock’s image. Hard Rock Hotel is a licensee of the Hard Rock brand. But Hard Rock Café now wants to revoke that license agreement.

The case is No. 1:10cv07244-UA, filed in the United States District Court for the Southern District of New York.

According to the suit, Hard Rock Café was founded as a celebration of Rock and Roll, good times, and fun. But sexual harassment, violence and crime are not part of its credo. Apparently, TruTV has no plans for canceling, or altering the show, which it hails as a main revenue source. If Hard Rock Café wins, Hard Rock Hotel may have to change its name.

Tuesday, September 28, 2010

Trademark Infringement Pancakes v. Prayer

The International House of Prayer in Pasadena, along with another house of prayer in Kansas City, MO are attracting some attention – unwanted attention. International House of Pancakes, Inc. (IHOP) filed suit last week for trademark infringement. The case is No. 2:10-cv-06622-SJO, filed in the U.S. District Court for the Central District of California.

This might be a tough case for the pancake people, for a couple of reasons. First is the issue of likelihood of confusion. One organization is a light n’ fluffy breakfast food chain. The other is a small, aesthetically different house of worship. Additionally, the house of prayer in Pasadena actually uses the acronym PIHOP.

The Kansas City organization may have a tougher time, however. According to the complaint, the International House of Prayer “intended to misappropriate the fame and notoriety of the household name IHOP to help promote and make recognizable their religious organization.”

Friday, September 24, 2010

Facebook Trademark Infringement with Teachbook

You can bet social media megalith Facebook is actively scanning the horizon for would be intellectual property infringers. And a few weeks ago it found one. A new online community for teachers, called “Teachbook,” is using a similar networking platform to Facebook. Facebook fears that adding the “–book” suffix to words could create a whole plethora of networking Websites for different societal groups. This, in turn, would dilute the trademark brand.

Facebook sued for cybersquatting, trademark infringement, unfair competition, and trademark dilution in the US District Court for the Northern District of California (Case No. 5:2010cv03654). According to the complaint:

"The 'book' component of the Facebook mark has no descriptive meaning and is arbitrary and highly distinctive in the context of online communities and networking Web sites," the complaint explains. "If others could freely use 'generic plus BOOK' marks for online networking services targeted to that particular generic category of individuals, the suffix 'book' could become a generic term for 'online community/networking services' or 'social networking services.' That would dilute the distinctiveness of the Facebook marks, impairing their ability to function as unique and distinctive identifiers of Facebook's goods and services."

If the past is any indication of how this suit will go, Teachbook will may change its name. A startup online travel company called Placebook recently changed its name to TripTrace after a run-in with Facebook.

Friday, September 10, 2010

Jedi Mind Trademark Dispute with George Lucas

Really good trademarks often become so ingrained in the public mind that they start to take on a life of their own, distinct from the original source. Take the mega-lucrative Star Wars universe, for example. Ever since George Lucas created Star Wars, he’s had his full protecting trademarks like “Jedi,” “Lightsaber,” and even “Droid.”

A new software company calling themselves Jedi Mind, Inc. recently felt the sithlike wrath of George Lucas. They had a new set of headphones which (according to them) could sense brain waves and operate a type of remote control software. The product is called “Master Mind.” Lucas, after sending a few cease and desist letters, filed a trademark infringement suit against Jedi Mind in late August. The case is in the United States District Court for the Northern District of California, Case No. 10-cv-3632.

Probably due to the unfavorable results of past Lucasfilm trademark infringement suits, Jedi Mind promptly changed their name to Mind Technologies, Inc.

Friday, July 30, 2010

Black Sabbath Trademark Dispute: Ozzy vs. Iommi

Last year, Anthony “Tommy” Iommi, long-time guitarist for Black Sabbath, and Ozzy Osbourne got in contact with each other about the band. However, this new Black Sabbath collaboration didn’t involve any music. John “Ozzy” Osbourne sued Iommi for trademark infringement in the U.S. District Court (case no. 1:09-cv-04947)

Apparently, in 2000, Iommi filed a trademark application with the USPTO, to register the Black Sabbath trademark in his name only. Ozzy’s attorneys caught wind of this trademark hijacking, and filed suit in May of last year. According to the suit Ozzy was “the driving force behind the Black Sabbath band.” But Iommi referenced a 1980 agreement (when Ozzy originally left the band) in which Ozzy had surrendered his right to the band name. But in 1997, as part of the “Ozzfest” tour, Black Sabbath had reunited, and played for a couple years. Ozzy claimed this new arrangement superseded the 1980 agreement.

Fortunately, last week Ozzy and Iommi were able to settle the case on good terms. In the new agreement, all four original members of the band (including Geezer Butler and Bill Ward) are to share the trademark equally.

Wednesday, July 14, 2010

Lady Gaga Protects Her Trademark and Sues Knockoff Merchandisers

Lady Gaga started her 2010 “Monster Ball” tour with a pre-emptive trademark infringement lawsuit. In the past, non-licensed merchandise vendors were tolerated outside large concerts, so long as they didn’t interfere too much with legitimate merchandise sales. But lately, the music industry is taking greater measures to remain profitable. These cases, known as “John Doe” cases (because of the hundreds of “John Doe’s” named as defendants), are becoming more and more frequent.
Lady Gaga’s merchandise company is Bravado International, a division of Universal Music Group. The case was filed under trademark infringement, citing the Lanham Act, unfair competition, and right to publicity (Bravado International Group Merchandising Services Inc., v. John Does 1-100, 1:10-cv-04942-RJH, U.S. District Court, Southern District of New York).

The Monster Ball tour is running from July 1 until sometime next April. Bravado International is asking the court to grant permission for law enforcement to confiscate any unauthorized merchandise at any show during the tour.

Thursday, July 8, 2010

Mike Tyson Trademark Fight with Michael Landrum for the Title

Most people recognize “Iron Mike” as a long-standing nickname for Mike Tyson. Apparently, there may have been a previous “Iron Mike.” Michael Wayne Landrum, a small-time L.A. boxer is suing Mike Tyson for trademark infringement to the tune of $115,000,000. The complaint was filed June 28, 2010 in the U.S. District Court, Central District of California (case no. 2:2010-cv-04795).

Michael Landrum last boxed in 1985, and included with the complaint is a document from 1996, a letter from the California State Athletic Commission, stating that his “professional ring name was Iron Mike Landrum.” Landrum is suing for Trademark Infringement, and claims to have a registered trademark with the USPTO. It’s number 66404, which doesn’t appear to be a valid trademark number.

Is Mike Tyson still using the phrase "Iron Mike"? Are there any abandonment issues. How will priority be be duked out? All questions that will likely be issues in the litigation.

Tuesday, July 6, 2010

CNBC's Crime Inc: Counterfeit Goods

An excellent episode discussing the world of counterfeit goods will show on CNBC's Crime Inc., on Wednesday, July 14 at 9p ET/PT. I will definitely watch. Here is the description below:

Sneak Peek: http://bit.ly/9iR23d

Fake handbags, watches, and perfumes are a way of the past. The largest underground industry in the world, Counterfeit Goods bring in hundreds of billions, while sapping the economy, putting lives in jeopardy, and funding organized crime in the process.

CNBC presents "Crime Inc.: Counterfeit Goods," a CNBC Original reported by CNBC's Carl Quintanilla takes viewers inside where the goods are produced and confiscated in a world of high-risk and high-reward.

The one-hour special brings you on raids with the LAPD anti-counterfeiting unit, inspections at ports, and back-room factories where counterfeits are produced. Meet a couple who was paralyzed by counterfeit Botox, a company whose whole brand was copied, and the story of a defense contractor who counterfeit defense parts that found their way into weapons depots in Iraq.

At around 7% of all global trade, Counterfeit Goods are a big business with low overhead. It makes too much money to go away any time soon.

Thursday, July 1, 2010

Playboy Sues Drake for Copyright Infringement

Hip hop artist Aubrey Drake Graham, aka “Drake” had a hit last year with the song “Best I Ever Had.” But, like many other commercially-successful songs these days, “Best I Ever Had” sampled a previous song. The original song, called “Fallin in Love,” is by 1970’s soft rockers Hamilton, Joe Frank & Reynolds. And interestingly, it’s Playboy Enterprises, Inc. that owns the copyright to “Fallin In Love.” Apparently Drake didn’t get permission to use the song, which for samplers isn’t always necessary. But Playboy just filed a copyright infringement lawsuit against Drake.

The case is 2:2010-cv-04750

A major question is going to be whether the song is a copy for commercial gain, or an artistic interpretation with a different and new meaning.

Wednesday, June 23, 2010

Rick Ross Trademark Infringement Suit Against Def Jam and Jay-Z

Ricky Donnell Ross (or ‘Freeway’ Ricky Ross) was an L.A. drug kingpin who was arrested in 1996, and released from federal prison in May 2009. But most people know Rick Ross (sometimes Rick Ro$$) as a rapper from Miami who’s sold millions of records over the past five years or so. Both men have made fortunes, but ‘Freeway’ Ricky’s fortune was short lived – and now he wants it back. He is suing Rick Ro$$ for trademark infringement in the U.S. District Court, Central District of California (case no. 2:10-cv-04528).

Rapper Rick Ro$$’s real name is William Leonard Roberts II. He adopted his stage name after learning about Freeway Ricky’s drug empire in the eighties. According to some reports, Freeway Ricky was making as much as $3 million a day, selling cocaine in L.A. and across the country. He got his nickname after purchasing several properties along the Harbor Freeway. Freeway Ricky was arrested after he was turned in by his cocaine source, Danilo Blandon. Blandon, incidentally, was also the CIA’s contact to the contras in the Iran-Contra scandal. This connection is referenced in several contemporary rap lyrics.

Freeway Ricky is going after the whole Def Jam records group, not just William Roberts (Ro$$). The complaint names Sean Carter (Jay-Z) as former president of Def Jam, Maybach Music Group (Ro$$’s label), UMG Recordings, Inc., and Slip-n-Slide Records, among others. Adding to the spectacle, a reality TV production company, Sacred Cow Productions, Inc. (Deadliest Catch, Ice Road Truckers, etc…) announced a new 2010 show “A Year with Freeway Ricky Ross.” The show will chronicle Ricky’s attempts to regain some of his former fortune through legal means.

Freeway Ricky doesn’t actually have any registered trademarks on his name, but he claims that William Roberts’ moniker capitalized on his fame, and now he has a hard time distinguishing himself as the “real” Ricky Ross.

Tuesday, June 22, 2010

Foo Fighters Copyright Infringement In Australia

The Foo Fighters recently sued an Australian advertising company for Copyright Infringement for using a re-recorded version of “Learn To Fly” in one of their TV commercials. The lawsuit was filed in Australian federal court last week, and alleges that the RE/MAX company made commercials that "incorporate a musical composition... that reproduces a substantial part" of the Foo Fighters' hit.

Nicholas Thiele, regional director of RE/MAX, told TheAge.com.au, ''It's certainly not the position of this company to intentionally infringe on anyone's copyright. We've got very strong trademark and copyright issues regarding our own brand that we feel are very important.''

The band became aware of the commercials from a message posted on their internet fan bulletin board last week.

Thursday, June 17, 2010

Copyright Litigation May Commence Without First Obtaining Registration

In order to commence a copyright infringement action in federal court, under 17 U.S.C. § 411(a), makes registration of a copyright a prerequisite prior to bringing an infringement suit. But in a May 2010, Court of Appeals for the Ninth Circuit case, Cosmetic Ideas, Inc. v. IAC/Interactive Corp., has held otherwise. The case was an appeal from a U.S. District Court, California Central District case in which Cosmetic Ideas, Inc. sued the Home Shopping Network for copyright infringement involving a necklace. Cosmetic Ideas submitted a copyright application for a necklace, and then sued HSN before getting an official registration from the U.S. Copyright Office.

Initially the case was dismissed for lack of subject matter jurisdiction because of the lack of a registered copyright. The Ninth Circuit court then later overturned that decision. The 9th Circuit court found that a copyright is actually considered registered once the application has been submitted and stated "that receipt by the Copyright Office of a complete application satisfies the registration requirement of § 411(a)."

Their reasoning was that Congress’s purpose for copyrights was to protect intellectual property in exactly this scenario. Cosmetic Ideas may have had to wait several months before their copyright was officially registered. And theoretically, during that time, nothing could be done to stop copyright infringers. The issue of speed of information in the post-internet world is likely to affect similar statutes. And this is probably not the last time we’ll hear about this specific case.

Monday, June 14, 2010

Dr. Dre's Trademark Cause of Action Gets Dismissed

When hip-hop label Death Row was acquired by WIDEawake in 2009, they promptly decided to re-issue some Death Row greats, most notably Dr. Dre’s 1992 album ‘The Chronic’ in the 'Re-Lit' album/DVD set. Dr. Dre was not part of the re-issue process, and quickly sued WIDEawake Entertainment Group, Inc.

In the United States District Court for the Central District of California (case no. 10cv01019), Dr. Dre sued for royalties owed, but also for trademark infringement, trademark dilution and false advertising, citing the Lanham Act, among other statutes.

But a federal judge threw out the trademark-related portions of the claim last week (with leave to amend). Judge Christina A. Snyder decided that since the original picture of Dr. Dre from the 1992 album was also used on the re-issue, no affiliation was implied. More specifically, the Order states the following:

"As to plaintiff’s allegation that defendants have used his name and likeness, including the original photograph from the jacket cover of “The Chronic,” the Court finds that these allegations fail to state a claim that defendants have over-represented plaintiff’s contribution to “Re-Lit,” given that defendants accurately identify plaintiff as the author of the original masters and that defendant used a substantially same photograph from the original album jacket cover, and did not use a current picture so to imply that plaintiff recently contributed to the re-issued album."

Dr. Dre will continue pursuing the claim for royalties owed.

Wednesday, May 26, 2010

Top Trademark Attorney 2010: Cohen IP Law Group, PC

Once again, the Cohen IP Law Group, PC has ranked among the top trademark firms in the nation in the recent May 2010 issue of IP Today Magazine.

Intellectual Property Today Magazine is a promenient monthly publication focused on legal issues in patent, trademark and copyright law.

Wednesday, May 12, 2010

Tommy Burger Trademark Infringement Family Affair

Trademarks are valuable property. Business partners, friends, and even family members can be split over trademark rights. Take the case of Original Tommy’s World Famous Hamburgers here in L.A. When the original Tommy Koulax died in 1992, he left the franchise in the hands of some of his children and relatives. According to an article in today’s Los Angeles Business Journal, one of his children is trying to start up a Tommy’s-inspired company, and apparently breaking some family ties doing it.

What made Tommy’s world famous was arguably its chili, not hamburgers. In fact, Tommy’s chili recipe is protected by a trade secret. In 2008, Tommy’s son, Tommy Koulax Jr., started an online business selling chili. “Tommy’s Original Chili Factory” received a cease and desist letter from Original Tommy’s (jointly owned by other siblings and relatives). Since then, the name has been changed to “Tommy Jr’s Chili Factory,” but the Tommy Jr. crew is still under attack. They have been sued in California Central District Court for trademark infringement and unfair competition, Tomdan Enterprises, Inc. v. Tommy’s Original Chili Factory, Inc. et al., CV 09-3960 JSL (C.D. Cal. 2009).

It may be a tough case for Tommy Jr. to win. His logo is very similar in style and color to the Original Tommy’s logo, and on his products he claims to be the “son of the originator and founder of Tommy’s World Famous Hamburgers.”

Wednesday, May 5, 2010

Jessica Seinfeld Copyright Infringement Battle Over Cookbook

Last week, a federal appeals court upheld the previous decision of a lower court in the Jessica Seinfeld cookbook case. Jessica (Jerry Seinfeld’s wife) was sued for both trademark and copyright infringement by Missy Chase Lapine, author of “The Sneaky Chef: Simple Strategies for Hiding Healthy Foods in Kids’ Favorite Meals.” Jessica’s book is titled “Deceptively Delicious: Simple Secrets to Get Your Kids Eating Good Food.” See the original lower district's complaint here. It does seem a bit close for comfort, but two judges have now ruled that Jessica’s book is not a copycat.

According to Judges Reena Raggi and Peter W. Hall of the Second U.S. Circuit Court of Appeals in Manhattan, “stockpiling vegetable purees for covert use in children’s food is an idea that cannot be copyrighted.” Conceptual ideas like that cannot be protected by copyright law. Seinfeld's intellectual property attorney's stated "countless prior works utilized this very same unprotectable idea," including a 1971 book."

Lapine’s book was published four months previous to Seinfeld’s, and apparently, some publishers were looking at the books around the same time. It seems pretty unlikely that Jessica Seinfeld would have had enough time to plagiarize, since both books were published around the same time.

On a side note – a slander case is still pending for Jerry Seinfeld’s jokes (when he said his wife is accused of "vegetable plagiarism") about the suit and Missy Lapine on The Tonight Show.

Thursday, April 29, 2010

Craigslist awarded $1.3 million judgment in copyright infringement case

Last week, Craigslist sent a clear message to sites offering third-party posting software. Powerpostings.com, owned by one Igor Gasov, had been offering customers the ability to post (including multiple postings) and manage ads on Craigslist. Craigslist sued them for copyright infringement, referencing the Digital Millennium Copyright Act, the Computer Fraud and Abuse Act, and trademark law. The defendants didn’t contest, and Craigslist was awarded a $1.3 million judgment.

In the past, other companies have offered Craigslist posting software, but Powerpostings took it too far. They also offered listing agents, who would post ads for customers, and they used false email addresses on Craigslist. No doubt there were several violations of Craigslist’s terms of use, in addition to the alleged trademark and copyright violations. Because Powerpostings didn’t appear in court, Craigslist didn’t have to prove anything. Craislist would have had to prove they registered parts of their Web site, and that Powerpostings copied those parts, for copyright infringement to have taken place. But considering all the allegations against them, it was probably a smart move for Powerpostings to accept a lesson learned the hard way.

Friday, April 16, 2010

Dental Design Patent and Trademark Infringement: Discus v. Biolase

Discus Dental and Zap Lasers, makers of surgical laser instruments, and cofounded by Dr. Dorfman, notable from his ABC's Extreme Makeover show, filed a complaint in the U.S. District Court for the Central District of California against a company called Biolase, which makes an “iLase” cordless medical laser. The claims were made against Biolase after it began to market its iLase product for sale in the U.S. in March.

According to the Complaint, the issue involves Discus' product the Styla, which is a hand-held cordless soft-tissue laser device, U.S. Patent No. D587,803. Discus claims patent infringement of the design of the Styla in view of a hand-held laser device that Biolase has. The claim for trademark infringement is a bit unclear because we believe that Biolase's product is simply called "iLase".

Biolase CEO David M. Mulder recently stated that "we are very confident in the breadth of our intellectual property portfolio, and in the strength of our laser technology, and we intend to vigorously defend the Company against these allegations levied by Discus and Zap."

Biolase asserts that the suit is being made merely for the design of the unit, and not its functionality or technology.

Wednesday, April 14, 2010

True Blood Wine Stirring Trademark Trouble

In 2008, HBO created the hit show True Blood, which has since become the most watched show on HBO since the Sopranos. Years before the show, in 2002, TI Beverage Group created True Blood wine, and registered the trademark. TI beverage group must have found it interesting that the HBO program featured a fictional drink called Tru Blood. They weren’t amused, however, when HBO and Hot Topic paired up in 2009 to produce a drink called Tru Blood, based on the show and made from blood oranges. TI’s trademark infringement lawsuit against HBO and Hot Topic was dropped though, after the product was removed from the shelves. The suit was filed again last week, when True Blood began appearing once more at Hot Topic.

The case is reminiscent of recurring trademark litigation involving Duff beer, Homer’s beer of choice on The Simpsons. Over the years, a few different breweries, both in the states and abroad have tried to produce Duff beer, with varying degrees of success. 20th Century Fox and Matt Groening (creator of The Simpsons) have never agreed to license Duff beer, mainly because of concerns that it would encourage underage drinking. All companies that have tried to market Duff have been promptly sued for trademark infringement. The most notable case involves a brewery from Australia that produced about 10,000 cans of Duff before being shut down by 20th Century Fox. From time to time, unopened cans of Australian Duff beer sell for thousands of dollars on Ebay.

Monday, April 12, 2010

Ebay Trademark Infringment of Tiffany

New York based jeweler Tiffany & Co. have been hard hit by a ruling from last week, in a case against Ebay for trademark infringement. A district appellate court ruled that Ebay “did not engage in trademark infringement, false advertising or trademark dilution.” Apparently, Tiffany conducted research that indicated around 70% of Tiffany’s merchandise on Ebay was fake. This led to the current legal dispute, and Tiffany & Co. wants Ebay to assume responsibility for selling counterfeit merchandise.

But Ebay says they’re doing all they reasonably can to deter the sale of counterfeit goods. Selling counterfeit merchandise on Ebay is officially against the rules, but enforcing the rules is mainly up to Ebay buyers who can report suspected counterfeits. And, according to last week’s decision, it’s the individual sellers who are guilty of trademark infringement, not Ebay itself. For the last few years, rulings have been back and forth on the issue. For example, France ruled against Ebay in a similar suit last year.

Tiffany & Co chairman and chief executive officer Michael Kowalski commented:
“As an e-commerce leader, eBay has a responsibility to protect consumers and promote trust in its marketplace. eBay knew that counterfeit merchandise was being sold on its site – and eBay took no effective steps to stop it. eBay deliberately misled consumers for profit, and unfortunately, the court has justified its actions. The consumer is the real loser today."

However, Lake Forest, California-based National Trademark Investigations (NTI), offers a practical solution for consumers affected by trademark infringement. NTI recently launched the Web site “isitfake.org” as a collaborative tool for buyers to combat counterfeits. Visitors to the site can report suspected counterfeit goods anonymously on the “fake finder” and view a gallery of reported fakes.

According to Mike Santoni, president of NTI,
Isitfake.org has been created to help combat the problem of counterfeiting in three ways. First, consumers can reach out for help determining whether an item they have purchased is legitimate branded merchandise, or a knock-off. Secondly, each time isitfake.org is able to conclusively identify and report on a counterfeit, it adds to the searchable gallery on the site as a resource for the public. And finally, it provides brand owners with a new source of information about knock-offs that they can use in their anti-counterfeiting efforts.”

Tuesday, April 6, 2010

M&M Trademark Infringement with Zorro

From time to time, the Mars candy company teams up with entertainment execs to market M&M’s dressed as iconic Hollywood characters. Apparently, they didn’t team up with Zorro Productions, Inc ("Zorro"). Zorro is suing Mars (and ad agency BBDO Worldwide) in the U.S. District Court of Northern California for trademark infringement, unfair business practices, and dilution under the Lanham Act.

Last fall, Mars used the famous masked character in its Halloween advertising, with a “Zorro M&M.” But Zorro, Inc., alleges that the Zorro character is protected under trademark and trade dress law, and that Zorro is famous, whether for movies, costumes, or M&M’s. It’s another reminder that when involved in the creative process, if you’re using someone else’s intellectual property, you still need their permission. Even if you’re using said property in a new and creative way.

Although, it seems that BBDO doesn’t care too much about the threat of litigation. They’ve been sued before (and lost) for the exact same thing – and M&M representation of the Times Square “Naked Cowboy.”

Monday, March 29, 2010

Green Day Copyright Infringement of Scream Art

Immediately following a Green Day concert in LA last August, local artist Dereck Seltzer began receiving calls and emails, alerting him that his ‘Scream Icon’ art was being used as the backdrop to the show. Seltzer was surprised, since he had no previous contact with the band. Scream Icon was copyrighted by Seltzer in 2003. When he approached the band, complaining that they had used the art without regard for the registered copyright, they offered him concert tickets in settlement. Green Day continues to use artwork in promotional materials and backdrops.

Seltzer filed a complaint in the Central District of Los Angeles and is suing Green Day for Copyright Infringement, and unfair competition and false designation under Section 43(a) of the Lanham Act. However, Green Day’s attorney, Don Passman claims that "Green Day received Mr. Seltzer's image from a responsible company and was unaware that there could be any copyright or other issues."

It’s hard to be too careful about usage of graphics and artwork, and it’s important to know the actual source. Although it may seem harmless, much of it is legitimately copyrighted material. Even more important to be careful when dozens of sold out stadiums will be viewing the art in question.

Thursday, March 25, 2010

T.I.'s Clothingline Sued by Akoo for Trademark Infringement

Recently, Akoo Clothing, launched by rapper T.I. (real name Clifford Harris, Jr.), received considerable media attention for a sexually explicit billboard in New Jersey that was protested and subsequently taken down. The publicity stunt may have backfired though, as the billboard also got some unwanted attention from Akoo International, a social music television network.

Akoo International filed suit for trademark infringement against the clothing label Akoo, stating that they own the registered trademark and have used the name for years. Both parties operate in the music industry, and Akoo International was concerned that consumers could easily confuse the brands.

“Our primary obligation and goal is to prevent confusion among our consumers,” said Akoo International CEO Niko Drakoulis, “which is among the most basic objectives of trademark law.”

Interestingly, this is T.I.’s second suit of 2010 for intellectual property offenses. He was sued for copyright infringement in January for allegedly stealing parts of his hit song “Why You Wanna” from the 2004 song “Reverance” by Motoe Blizzid.

Tuesday, March 23, 2010

GM Trademark Infringement

For years, private manufacturers that made replicas of classic sports cars have been tolerated by the auto industry. They create interest and foster goodwill towards automobile brands by idolizing certain models of cars.

But according to an article in the Detroit News, GM is cracking down on one small time replica manufacturer, alleging trademark infringement. GM filed suit against Mongoose Motorsports LLC, an Ohio-based auto parts retailer and part-time manufacturer of the 1963 Corvette Grand Sport. The Grand Sport is one of the rarest and most valuable sports cars ever; only five were built. Mongoose Motorsports sells a replica Grand Sport for $90,000, while the authentic car goes for several millions at auction. But Mongoose is in no way licensed to sell the cars, and apparently enough of them are being produced to dilute the market. “This is not an homage,” said GM spokesman Tom Wilkinson.

The problem is that Mongoose is marketing exact replicas of the 1963 car, complete with trademarked Corvette logos.

Wednesday, March 17, 2010

Trademark Rejection of Khoran Wine

Last week, a panel of five TTAB judges shot down an application for wines bearing the trademark name Khoran. The decision was made based on the trademark’s similarity with the holy text of Islam, the Koran. The panel rejected the application on the basis of disparagement. In re Lebanese Arak Corporation. In previous cases, the board has rejected marks that are belittling to a specific group of people.

When filing trademark applications with the United States Patent and Trademark Office, applications can be rejected for a number of reasons, such as likelihood of confusion in view of an earlier filed application, or for other legal grounds regarding the mark itself, such as disparagement in this case.

To determine disparagement, there is a two prong test:
1) what is the likely meaning of the
matter in question, taking into account
not only dictionary definitions, but
also the relationship of the matter to
the other elements in the mark, the
nature of the goods or services, and
the manner in which the mark is used in
the marketplace in connection with the
goods or services; and

2) if that meaning is found to refer to
identifiable persons, institutions,
beliefs or national symbols, whether
that meaning may be disparaging to a
substantial composite of the referenced

The TTAB found that the second prong was easily met. The majority and dissent was split however, on the first prong. The dissent felt that this mark, in its context on the label of a wine bottle, would not be disparaging to Muslims. Moreover, they felt that the mark should be examined from the viewpoint of the average American wine consumer:

“We believe the Board must look to the general population of the United States and how they will understand applicant’s mark when it is being used in connection with the identified goods or services, in this case wine.”

And yet, it’s hard to believe that the average American would see the word Khoran (which is actually another spelling of the Islamic text), and not think of the Koran.

The wine in question is Armenian, where Khoran means “altar.” Apparently, it’s been sold under that name for several years there (and has been locally available through importers). But it looks like it’s not going to make it as a federally registered trademark in the U.S anytime soon.

Tuesday, March 16, 2010

Cybersquatting of New Domain Names

Here’s some interesting news: The likelihood of cybersquatting remains high for .com's but is much less ICANN’s new domains. According to a recent study by a top-level domain (TLD) consulting firm called Minds+Machines, internet domains other than .com (such as .net, .biz and .info) aren’t currently pursued by cybersquatters. Furthermore, the study suggests that the new assortment of generic top-level domains (gTLD’s), recently created by ICANN will not attract cybersquatters either. These domains include .mobi, .cat, .name, .asia, .pro, .tel and .travel.

The study was conducted thusly: Minds+Machines examined domain name registration of more than 1,000 Fortune 100 brands. They reason that if a trademark name is available at a domain, neither the company nor cybersquatters are concerned with the open real estate. The danger of trademark infringement is assumed to be low, given the apparent lack of interest in the site. According to the study, 100 percent of the companies were registered in .com sites. The already-established gTLD’s outside of .com (.org, .net, .biz and .info) had between 65 and 87 percent name registration. The new categories mentioned above had less than 30 percent registration.

These numbers do show that cybersquatting is an issue in the .com category. However, they fail to prove anything about the future of internet domain value. Will these new domains continue to be ignored in the long term? It’s hard to say. Current internet patterns may not be indicative of the future. Fifteen years ago, could anyone have predicted the current power of social media?

Thursday, March 11, 2010

AMEX Black Card Trademark Infringement

American Express’s Centurion Card, also known as the “black card” has become an iconic status symbol in American pop culture. The card has no limit and a whopping 2,500 annual fee. Introduced in 1999, the card quickly gained attention in books, rap songs, and TV shows. American Express really had a hit on their hands. But they didn’t trademark it. Visa actually owns www.blackcard.com, more recently in mid 2009, granted issuance of a registered trademark for Black Card.

Last month, Amex filed a complaint with the New York district court, alleging that Visa has:
“perpetrated a scheme to confuse the public and misappropriate for itself the enormous goodwill of the Centurion Card by launching its own, imitation “Black Card” that not only rips off the Centurion Card’s “Black Card” alias, but also, as shown below, copies the trade dress of the unique, distinctive Centurion Card. Even more brazenly, defendant (which audaciously incorporated under the name Black Card LLC and promotes its card at the website www.blackcard.com), is seeking to register a family of BLACK CARD trademarks so that it can claim the exclusive right to use that mark, which the public long has associated exclusively with the Centurion Card and American Express.”

American Express is going to be fighting an uphill battle. The term “black card” was widely used to refer to the card almost from its inception. It’s unthinkable that Amex didn’t immediately slap a trademark on it. Through the power of 1B intent to use applications, Visa was able to lock in an application in 2005 even though they didn't start using "Black Card" until 2009. AMEX will have to prove its priority of use and association of the term "black card” in the mind of consumers.

Monday, March 8, 2010

Baseball Trademark Infringement Slugout with Major League and Upper Deck Trading Cards

Last week, Major League Baseball settled a trademark infringement case against the Carlsbad, CA based trading card company, Upper Deck. Upper Deck failed to completely eliminate the MLB logo from some lines of their 2010 baseball cards.

Although Upper Deck’s 2010 baseball cards did not display MLB’s logo on any of its packaging or cards, the logo was visible in certain photos, on several of the players’ uniforms and hats. Upper Deck failed to airbrush off the logos. And yes, even a minuscule MLB logo on a player’s hat is still a trademark. Exclusive rights to a trademark mean exclusive rights.

In October of last year, rights to the MLB name and logo were given to Topps Company, Inc., Upper Deck’s main competitor.

The settlement wasn’t for small change, either. Just one specific part of the settlement, for certain 2009 misuses of the logo, was for $2.4 million dollars. In addition to that, Upper Deck must pay MLB an amount for the unlicensed cards it sold in 2010. Further, Upper Deck must get MLB's approval for any future use of baseball jerseys, pants, jackets, caps, helmets or catcher’s equipment in products featuring players.

Should’a double checked, before they hit the print button…

Wednesday, March 3, 2010

Trek Trademark Infringement...Dismissed!

In true David vs. Goliath style, an obscure California winery held its ground in court yesterday against Trek, the largest U.S. manufacturer of bicycles and related products. Novato-based Trek Wines was sued by Trek Bicycle Corporation in October 2009 for trademark infringement, in the matter of Trek Bicycle Corporation v. Trek Winery, LLC, in the Western district court in Wisconsin. Trek Bicycle Co. accused the winery of federal and state trademark infringement when three cases of their wine made it to Wisconsin (Trek bikes’ home state) last year.

U.S. District judge Barbara Crabb granted Trek Wine’s motion to dismiss, stating that “Plaintiff cannot argue seriously that three isolated sales show that defendants have made such purposeful availment of the benefits of Wisconsin’s laws that they could reasonably anticipate being hauled into court in this state.” According to the North Bay Business Journal, two of the cases sold in Wisconsin went to relatives of Trek Wine owners. The other was sold to a Trek Bicycles employee, according to Judge Crabb, “to confirm that defendants were able and willing to sell wine into the state.” (Come on Trek, a setup?)

American small business owners can rest assured; their registered trademarks are every bit as valid as those registered by the big boys.

Monday, March 1, 2010

Facebook Patent Unleashed!

Facebook obtains potentially powerful patent on Newsfeed technology

In 2006, Facebook filed a patent application on its much-imitated Newsfeed technology. Last week the patent was granted. Facebook has yet to announce any plans for legal action, but Web sites all over must be feeling more than a little apprehensive. After all, Twitter is essentially one big news feed. Google, Myspace and Flickr all use a similar technology.

The USPTO granted coverage to “the generation of activity elements associated with a user through a social network, tethering an information link associated with at least one these activities, limiting access to material in question to a predetermined list of users and assigning an order of publication for these different elements.”

Before Facebook sues anyone for patent infringement, it must consider the potential fallout from such a drastic move. In 2007, when Facebook tried out its first News Feed technology, called Beacon, users felt violated and many deleted their accounts. Mark Zuckerberg, Facebook CEO, issued a public apology and rescinded the service (although it slowly crept back in without any large-scale reactions). Facebook better use its new weapon of mass destruction tactfully. But it probably will use it. Stay tuned…

Saturday, February 27, 2010

Software Patents and Business Methods Patents, Are They Patentable?

Are software and business methods patentable? If you have been Googling the topic recently, you may have heard that the US Supreme Court and the Federal Circuit have heard a series of different cases during the past few years regarding it. Before I get into the history below, the short answer is still generally yes for software patents, with exceptions, but probably not for pure business methods, with exceptions of course!

Some of the earliest cases in the 70’s held that abstract ideas are not patentable, thus computer software which is composed of algorithms/mathematical concepts were held not to be patentable. This was an initial strike against software patents! Later in the 80’s the Supreme Court ruled on Diamond v. Diehr. The patent in question related to an invention for a method to determine how rubber is heated so it can be best “cured.” The invention was tied to a computer that calculated heating times of the rubber. The claims included a computer program claim and method claims. The Supreme Court held that the invention was not simply a mathematical algorithm, but was a valid process and
therefore patentable.

Throughout the years however, other cases came out that conflicted with Diehr. It wasn’t until the 90’s, in the seminal Supreme Court case of State Street Bank v. Signature Financial Group, which seemed to clarify the patentability of software patents. This patent related to a method of running mutual funds. Again, the issue revolved around the patentability of a mere mathematical algorithm or business method. The Supreme Court held the patent as valid and thus allowing a business method to be patentable subject matter. A key point was that the software must yield a “useful, concrete and tangible result”. So for many the feeling was that the patent claims needed to be drafted such that the software or processes were tied to a computer or processor to achieve a useful, concrete and tangible result to be patentable.

Fast forward to 2008, the Federal Circuit ruled on the In re Bilski matter which garnered a lot of media attention as to the patentability of business methods and computer software. The main claim at issue in the Bilski patent was for a method of hedging risk in the field of commodities trading. The claim was considered to be a pure business method because it dealt with simply a mental process (information that is analyzed and acted upon). The Court walked away with a new test requiring that a process is patentable if "(1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing." This new machine-or-transformation test really called into question pure method claims, and software method claims as well.

Then in late 2009 the Bilski matter was pushed to the Supreme Court to decide if the machine-or-transformation test is a proper test to determine patentability of business methods. The Supreme Court will rule on the case sometime in mid 2010. Upholding of Bilski will likely require all business method patent claims to be tied to a machine and require processes to either transform an article or be timed to a machine. More will follow after the Bilski decision later this year!

Tuesday, February 23, 2010

Copyright Infringement Harry Potter Style

A 36 page children’s book from a now-deceased and totally obscure British author may have lead to Harry Potter. Last week, the Associated Press reported that J.K. Rowling and her publisher are being sued for copyright infringement.

The estate of Adrian Jacobs, who died penniless in 1997, alleges that Rowling’s fourth book, “Harry Potter and the Goblet of Fire,” was lifted from “The Adventures of Willy the Wizard,” written by Jacobs in 1987. The trustee of Jacobs’ estate, Paul Allen, is suing for over $500 million pounds.

According to Rowling: “The claims that are made are not only unfounded but absurd, and I am disappointed that I, and my UK publisher Bloomsbury, are put in a position to have to defend ourselves.” Unfortunately for Jacobs’ estate, it will be hard to prove that Rowling did in fact plagiarize. Mere ideas are hard to copyright, and from the sound of it, that’s all Jacobs had. Wizard and magic lore is hardly unique intellectual property. Copyrights are given for the execution of a work.
Apparently, Allen’s attorney, Max Markson, has a different view. He was quoted saying he thinks it’s a billion-dollar case

Thursday, February 18, 2010

Trademark Oppositions Cancellations Get Accelerated Case Resolution

If you know about trademark oppositions and cancellations before the Trademark Trial and Appeal Board (TTAB), then here is a new procedure that may be right for you. The TTAB has recently introducted Accelerated Case Resolution (ACR).

ACR is streamed line procedure used during an existing opposition and cancellation. It works like this: In the preliminary stages of a TTAB proceeding, the parties agree that only a small amount of evidence or testimony will be used, and that the overall record is not extensive. ACR is then requested from the TTAB. Generally, notice should be given to the TTAB during the required settlement and discovery conference of a proceeding which is held within 30 days of the close of pleadings. Disclosure and discovery schedules are tailored to fit ACR, and evidence and briefs are provided to the TTAB for review. A decision from the TTAB will be made within 50days of submittal. This is an incredibly short amount of time considering that some of may oppositions/cancellations have lasted more than 3 years.

The pro of ACR is that it can shorten a TTAB proceeding, and therefore the cost as well. So what type of case would be good for ACR? One example would be oppositions/cancellations where priority is not at issue and the parties are not relying on extensive testimony and documentary evidence. Many people are aware of summary judgment, and often want to go that route to expedite a case, and avoid a costly and lengthy trial. But summary judgment only works if there are no material facts in dispute (ie: no disagreements on evidence). With ACR, the TTAB will review any material facts in dispute, and issue a decision.

Probably the biggest issue with ACR is that the parties must stipulate that the Board can resolve any issues of material fact in lieu of trial.

Tuesday, February 16, 2010

Legalzoom Complaint, Again

In its nine years or so of business, Los Angeles-based Legalzoom.com has earned praise, awards, quite a bit of money, and most recently…a 5-million dollar class-action petition.

In 2008, a Missouri man, Todd Janson, used Legalzoom to prepare a Last Will and Testament. Perhaps dissatisfied with the service, Janson filed a petition against Legalzoom in the District court of Cole County, Missouri titled Todd Janson on Behalf of Himself and all other Missourians similarly Situated v. Legalzoom, Inc. In January 2009, a class-action petition was filed, which included Todd Janson and C&J Remodeling (and any other Missourians who had used Legalzoom since 2004). C& J had used Legalzoom to create Articles of Organization for their business. Todd Janson, et al. are seeking $5 million in damages from Legalzoom.

The plaintiffs argue that Legalzoom is not authorized to practice law in the state of Missouri. Legalzoom has responded with a pleading to take the case to the federal level, on the grounds that: (1) there are more than 100 people involved, (2) defendants and plaintiffs are from different states, and (3) according to Legalzoom’s calculations, the amount of money sought by the plaintiffs would be well over $5 million, when all Missouri Legalzoom users since 2004 are accounted for.

The outcome of this dispute may not be realized for some time, but the case has interesting implications for service-based online businesses. Poor service may be the real complaint Janson and his associates have, not the unauthorized practice of law. Certain statutes may need to be re-examined as technology continues to change the way business operates.

Legalzoom.com has an A+ rating with the BBB.

Monday, February 15, 2010

Orange County Trademark Lawyers New Office in Irvine

We our proud to announce the opening of our second location in Orange County in Irvine California. Our attorneys will extend the same trademark, patent, copyright, business and other Intellectual Property services at this location.

Tuesday, February 9, 2010

Chinese Trademarks Are More Important Than You Think

As a Los Angeles patent and trademark attorney, many of my clients ask about the possibility of getting their invention stolen when manufacturering in China. Sorry to scare you, but now you have something else to worry about. Recently, companies manufacturing in China have come across some costly and time-consuming trademark predicaments. It seems that certain players in the Chinese market are using the Chinese trademark system to swindle unsuspecting American companies.

These hucksters sell trademarks back to companies, manipulating the Chinese legal and trademark system. It works something like this: An American company decides to manufacture their product in China, and instructs the manufacturer to affix the American trademark. This company however fails to file a Chinese trademark application. A Chinese trademark trafficker then quickly registers a trademark (a duplicate version of the American trademark) with the Chinese trademark office. Then, with production already going on, this trademark trafficker appears on the scene. In order to either manufacture the product or export it after manufacture, the swindler must be paid off. Additionally, if the American company wants to switch manufacturers in China, someone must be paid.

Lately, Chinese trademark and patent laws have become a hot topic in the international business arena. It is important to know what you are getting yourself into if you are thinking of outsourcing or contracting there. Registering a Chinese trademark is crucial before any steps are taken towards manufacturing or production.

Monday, February 8, 2010

Aerosmith Trademark Battle Near

A trademark battle for the ownership of the Aerosmith name could be on the horizon. For nearly a year now, rumors have been circulating about Steven Tyler splitting from Aerosmith. Now, it appears that he might be kicked out. However, Skip Miller, Tyler’s attorney, is threatening to sue the remaining members of the band for trademark infringement if Tyler gets the boot. According to the USPTO, Aerosmith is a registered trademark of Rag Doll Merchandising, Inc.

According to Joe Perry, guitarist for Aerosmith, a combination Tyler’s lack of communication, injuries, and addiction to painkillers have plagued the band for some time now. Under the direction of their current manager, Aerosmith began approaching other possible singers, such as Billy Idol and Chris Cornell. But, according to Billboard magazine, when Miller found out about these actions, he sent a letter to the band, asking them to “immediately cease and desist from engaging in acts and conduct to the harm and detriment of your own client, Aerosmith, and our client who is one of its members." Miller then threatened legal action should the band decide to officially replace Tyler. If this happens, a heated and lengthy battle could erupt over this valuable trademark.

Aerosmith’s shareholders will meet on February 9, to discuss plans for the future of Aerosmith and Steven Tyler

Friday, February 5, 2010

Jersey Shore Trademark for "The Situation" May Turn Into a Priority Dispute

The Situation,” a phrase made popular by the MTV reality show “Jersey Shore,” is under review for a trademark. “The Situation” is a nickname that Michael Sorrentino, the show’s ripped leading man, has given to his abdominal muscles. Contrary to rumors going around that he is attempting to trademark his abs, we have not found any such trademark application with USPTO. Rather, there are two pending applications for the mark, both in Class 25 for clothing and related accessories.

However, the story gets a little more interesting. The two applications are owned by different companies. One by Vadio Limited Liability Corporation from New Jersey, and the other by Naughty Limited, a Las Vegas firm that we have heard is operated by Michael’s older brother. We also believe that Vadio may be owned by a New Jersey man named Matthew Hunter.

The priority of right to the name should be interesting because Vadio did file the trademark application prior to Naughty Limited. However, the applications were filed differently intent to use (1B) vs. use based (1A), so it may be an interesting fight.

Another of the show’s stars, Jenni Farley, has already launched her own “JWoww” clothing line.

Tuesday, February 2, 2010

Apple's Ipad Runs Into Fujitsu's Trademark Application

With all the buzz last week over Apple’s new iPad, a significant detail may have been overlooked. Apparently, Fujitsu has been manufacturing and selling their own Fujitsu “iPad” for more than 8 years. The Fujitsu device isn’t an Apple knockoff, but rather a different kind of pad, a Windows point-of-sale tool for retailers. But it’s also called the iPad, and Fujitsu actually applied for a trademark in 2003. Initially Fujitsu's application was abandoned in view of an existing application for "ipad" from a company called Mag-Tek! The original iPad, it seems, was a kind of pin-entry pad made by a company called Mag-Tek. Ok, Mag-Tek’s pinpad is the original hand-held electronic screen device with a registered trademark of iPad. However, due to the nature of trademark law, there are also iPad trademarks for electric motors and bra pads.

Eventually, however, Fujitsu just last year, was able to revive the "ipad" application and received what is called a Notice of Publication. During this time, an opposer can file what is called an opposition proceeding with the Trademark Trial and Appeals Board ("TTAB"). And guess who did? Yes, Apple has filed extensions of time to oppose the Fujitsu pending trademark application for "ipad" (the last extension request was filed on 12/23/2009). Interestingly, as of the date of this blog entry, and as far as we have researched, Apple has not applied for any trademark application with the United States Patent and Trademark Office ("USPTO")for "ipad."

As a general rule, senior user's of a trademark have priority over all subsequent users. Apple will likely have to establish who was the first to use the "ipad" mark. If the past is any indication of how this dispute will go, Apple's prior trademark battles have been successful. According to a press release from February, 2007, Apple and Cisco (which both had legitimate claims to the iPhone trademark) agreed to dual trademark ownership rights.

Link to embed for the Apple February 2007 press release:

Monday, February 1, 2010

Trademark Dispute USC vs. USC

The University of Southern California recently emerged victorious in an off-the-field battle with the University of South Carolina. The trademark dispute was over the use of the interlocking “SC” logo, used by both schools. A federal appeals court ruled that Southern California still has the legal ownership of the trademark logo. The two schools have locked horns over the logo since 2002, when South Carolina attempted to federally register their logo. Southern California already had a registered trademark on the interlocking letters, and asserted that the logos were too similar. The Trademark Trial and Appeal Board (TTAB) agreed, and South Carolina made a counterclaim, which it also lost.

Since that time, South Carolina has been trying to appeal the ruling. On January 19 it lost yet another round. Although the school can take legal action against certain unauthorized reproduction of the logo, trademark registration would grant them indisputable protection. The fact that they have been actively seeking a trademark for over 8 years demonstrates the importance of this legal safeguard.

Tuesday, January 26, 2010

University Trademarks Versus Small Business Trademark: Dakota Micro's AgCam

Dakota Micro, Inc. is a Geneseo, North Dakota manufacturer of a product called the “AgCam,” a camera that allows farmers to easily monitor farm equipment. By coincidence, students at the University of North Dakota (UND) built a camera to monitor rangeland and crops from space, and also called it the AgCam. As it turns out, UND’s camera didn’t work after it was fired into space with the shuttle Endeavor. Farmers began to doubt the quality of Dakota Micro’s cameras, thinking UND’s “Agcam” was also made by Dakota Micro.

When Dakota Micro confronted UND, and asked them to change the name of their satellite cameras, they responded by having their trademark attorneys file for their own Agcam trademark with the USPTO. But they didn’t stop there. UND is also seeking to cancel Dakota Micro’s trademark. Fortunately for Dakota Micro, they had their trademark lawyer file and obtain their trademark early on. Although Dakota Micro will have to defend itself in court, they had the foresight to register Agcam way back in 2003. Now, seven years later, as Dakota micro is hitting its stride, UND wants to put an end to them over a trademark. Many a successful business has been trounced by a trademark dispute with a bigger fish. This is another story that illustrates why it's so important for small business to regsiter their trademarks as soon as possible.

Tuesday, January 19, 2010

Trademarks for 2010: Clear your Trademark with a Trademark Search First

Why is it so important for you to have your trademark attorney apply for a trademark application? There are many reasons, but before I answer that question, it is even more important to conduct a trademark search first, prior to the adoption of the name you wish to use for your brand or business. Why?

Imagine you did not have your trademark lawyer conduct a search, and you just decided to use a name for your new product. Let’s say you have commenced manufacturing the product and packaging for it, so the name you picked is all over the packaging and on the product itself. Months may go by and sales may be good until one day you receive a cease and desist letter from another company that sells a similar product with the same or similar name. They are threatening you with a trademark infringement lawsuit seeking an injunction and $500,000.00 in damages. Now what? Conducting a simple inexpensive trademark search first can avoid that scenario.

Further, it should be YOU who obtains a federal trademark registrations so if necessary, YOUR attorney can send out similar cease and desist letter to enforce you brand if necessary.

Our firm conducts comprehensive and common law trademark searches all interpreted by Mr. Cohen at the standard of likelihood of confusion. He will provide you with a search report and a follow-up consultation to thoroughly explain the search results and any problematic trademark registrations and applications that already exists.