Tuesday, May 5, 2009

Octomom in Trademark Dispute!

"Octomom" Nadya Suleman has filed a trademark application with the USPTO for the term "Octomom" in connection the goods and service of a reality television show and also disposable diapers. (See U.S. Serial Nos 77/711852 and 77/711827). But not everyone is happy about it. It turns out a Texas company not affiliated with Suleman has already filed a federal application for Octomom in connection with an iPhone game. "You press on her belly and she has babies," says CEO Mark Pierce of Super Happy Fun Fun, Inc. SHFF was able to file its "intent to use" trademark application on March 12, 2009, Suleman filed her intent to use application after on April 10, 2009, so Suleman may have been beaten to the punch. However, Suleman's attorney will most likely have to argue that the goods and services are different enough to avoid a rejection. As of today, the USPTO has not issued an office action (rejection) yet of Suleman's trademark application. Stay tuned!

Trademarks and Clothing Lines

Having your attorney file a trademark application with the United States Patent and Trademark Office (“USPTO”), is the way to gain protection of the brand, as it can protect the name, logo, or slogan of the apparel brand. To better understand what is protectable, let’s look at the classic example of Nike. Nike, Inc. has several trademark registrations for the word “Nike” under different classes of goods and services. One registration is filed in connection with their goods of shoes, while a different application is for sporting equipment, and another for backpacks. Further, Nike has several design registrations as well, most notably the swoosh symbol. Additionally, Nike has separate trademark registrations for its slogan “Just do it.” So as you see, one company may have several trademark applications for the same word or logo, but just under different goods and services. The more trademark registrations a company has, the greater the strength of its intellectual property portfolio. To a startup clothingline, having multiple trademark registrations can attract more investors, and create greater confidence and valuation to your company.

Clothing has unique trademark issues compared to other goods and services. Most importantly in regards to the filing process, a proper specimen of use must be submitted that shows the name you have used, on the clothing itself, and must appear in the right location and be used in a trademark manner. Inexperienced attorneys typically receive ornamental rejections based on their specimen of use submitted during the trademark application process. That is why it is critical to have an experience trademark attorney file the application the first time.

Once the application is filed and ultimately approved and registered, the owner of the registration will received nationwide rights to enforce the trademark against other subsequent users. Further, the owner will be able to license, either exclusively or nonexclusively, the right for others to use the trademark name or logo. Licensing can be important to newer clothing companies that have established and created goodwill and a strong following of the brand, but have yet to develop the expertise or resources to manufacturer, distribute, or efficiently sell the clothing. The clothing company can provide a trademark license to a separate company that is more experienced in manufacture, distribution and sales, while the newer company reaps the benefits of the license royalties.