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.

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

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.

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:
http://www.apple.com/pr/library/2007/02/21iphone.html

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.

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.

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.