Wednesday, December 20, 2006


San Francisco, Calif. A federal lawsuit was filed earlier this week on Dec. 18, 2006 on behalf of such legendary Rock 'n Roll musicians and bands as The Grateful Dead, Carlos Santana, Led Zeppelin, and The Doors. The named defendant is a commercial website called "Wolfgang's Vault" which sells rock 'n roll memorabilia. (Grateful Dead Productions v. Sagan).

The lawsuit alleges in part that the defendant is violating the musicians proprietary rights including the right of publicity, trademarks and copyrights. One of the issues is whether the defendant should be allowed to profit from sales of memorabilia (concert posters, vintage t-shirts, etc.) purchased from the Estate of Bill Graham, the legendary concert promoter who died in 1991. The plaintiff musicians allege that the memorabilia at issue was promotional in nature and never intended for sale and that Graham never had the right to sell, reproduce or otherwise exploit this memorabilia. With each side taking positions that are diametrically opposed, this legal tussle will likely focus on the memorabilia at issue and each items status as either official merchandise or promotional material. The role of trademark protection again rears its head in this case and reinforces the value of maximizing the legal protection measures available. For more on the subtleties of maximizing trademark protection, our article on "Rock 'n Roll Trademarks: Selection, Clearance & Registration", is available online at our website at:

In any event, it is hoped that this case will result in a decision which will clarify the treatment of such pop culture memorabilia, which the Baby Boomer generation covets so dearly, and which in some cases may indeed be subject to continuing rights as claimed by the musician's herein when the items were promotional in nature, rather than official merchandise, and/or never the prior subject matter of a proper transfer of title.

To be distinguished, of course, is previously sold official memorabilia, which can be sold and resold pursuant to the Copyright Act's "First Sale" doctrine. Thus, your previously purchased lp's, cd's, and t-shirts can be sold on ebay to your hearts delight, if you can dare part with them. Just don't be scanning those album covers and trying to make a profit by selling such reproductions.

Wednesday, December 13, 2006


Happy Holidays to you and yours from !

During this holiday season some very popular brands and/or trademarks seem to raise their profile and draw the interest of consumers. This blog entry today will mention just a few of these brands in terms of their commercial impression, including their internet presence, as well as their trademark significance. No doubt these comments may also conjure up fond memories for the reader-consumer.

For example:


Be sure to check out the following Wikipedia entries which are interesting:


Comment: Certainly a staple in California and craved all over the U.S. and beyond. Nuts & Chews are my favorite. Even seems to agree:

Trademark Highlight: Among numerous other registrations is the registration for
SEE'S CANDIES, Intl. Class #30 for 'candy'; Reg. No. 1518181.


Comment: This year's slogan at Mrs. Fields is "Taste the Joy of Giving !" I had the opportunity, interestingly, of tasting the joy of receiving, after having found myself the recipient of a big box of Mrs. Fields cookies ! WOW !!!!!

Trademark Highlight: Among many other U.S. Trademark Registrations is the registration for: MRS. FIELDS, Intl. Class #30 for 'bakery goods, namely cookies and brownies'; Reg. No. 1983184.



Comment: One of America's grandest winter resorts is Vail in Colorado with Beaver Creek also nearby.

On the Web:

Trademark Highlight: One U.S. Registration worthy of mention is the service mark for VAIL RESORTS, Class #35 for 'Management and operation of recreational facilities for others'; and Class #41 for 'Ski resort services; arranging competitions in the filed of ski racing, providing instruction in the field of skiing, etc.'; Reg. No. 2695373.


Comment: Or if you prefer, and with the early heavy snowfall they received, some people are making plans to travel to British Columbia in Canada to visit the Whistler Blackcomb ski resort.

On the Web:

Trademark Highlight: In addition to other registrations, the sample chosen here is for a trademark for apparel owned by the Resort entity, namely, Blackcomb Skiing Enterprises, a Limited Partnership composed of Intrawest Resort Corporation / Corporation de Villegiature Intrawest, a Canada corporation, collectively a LIMITED PARTNERSHIP of CANADA , for the mark, WHISTLER CANADA HIGHER GROUND, in Class #25 for 'Men's, women's and children's clothing, namely, shorts, blouses, tee-shirts, sweatshirts, ski jackets, snowboard jackets, track suits, jackets, golf shirts, vests and hats'; Reg. No. 2568781.

3. K2

Comment: K2 seems to have it all: skis, snowboards, helmets, goggles, apparel, etc. A friend of mine swears by his K2 Apache Recon shaped all mountain skis ! I'm partial to my Salomon XScreams, also a shaped all mountain pair of skis.

On the Web:

Trademark Highlight: Among many others, registered in the U.S. is the trademark, K2, in Intl. Class 28 for 'sports equipment namely, snow skis, ski poles, snowboards, snowboard bindings, in-line skates, knee pads, wrist pads and elbow pads, all for athletic use and protective gloves for skating'; Reg. No. 3096393.


Comment: One of the very first snowboards ever, if not the very first. There are competing claims on this topic. Whatever the case, Burton's apparel is top quality and its snowboards and boots are cutting edge and definitely favored by a huge fan/rider base. A friend of mine recently tried out next season's ('07/'08) gear at a private demo for dealers in Vail, Colorado. Mum's the word, however, on these next season offerings...

On the Web:

Trademark Highlight: Among numerous registrations is the trademark, BURTON SNOWBOARDS, in Intl. Class #28 for 'SNOWBOARDS - NAMELY, SINGLE SKIS IN THE NATURE OF SURFBOARDS TO BE USED IN SNOW'; Reg. No. 1362128.


The holidays are most importantly a time to enjoy the company of family and friends. In our society it is also nevertheless nearly impossible to not notice or purchase or enjoy the products and services exemplified by the above brands and/or trademarks.

These brands and the comments above also make it clear that brands and their corresponding trademark or service mark registrations are part and parcel to the success of the owners of said marks. This lesson of proprietary rights acquisition, maintenance and defense is certainly worth remembering and implementing by anyone doing business within our society's commercial landscape.

While I neglected to discuss Starbucks Eggnog Latte,

which belongs on any Top Ten List of Holiday Favorites, I will leave that to each of you to enjoy on your own time.

Wednesday, December 06, 2006


And so the box of cookies I received the other day via UPS Ground turned out to be an empty box with no MRS. FIELDS cookies inside. Amidst my disappointment, I then noticed that the box had been vandalized through the bottom of the box and then sloppily retaped during transit from Mrs. Fields to my office.

I was not really thinking of the registered trademark for MRS. FIELDS for bakery goods, namely cookies and brownies (U.S. Reg. No. 1983184; Reg. Date, July 2, 1996), nor its recipe, which is no doubt a closely guarded trade secret. I was thinking, rather, of the strength of this famous brand name and the fact that it is imprinted in large letters on the outside of the box, which was no doubt too tempting for the cookie thief. Or perhaps the thief is a sugar addict or chocoholic... This I do not know. I do know that this theft may, in fact, be a left-handed compliment or confirmation of the good will associated with the MRS. FIELDS brand and trademark. For instance, I do receive all the books, etc. that I order from, so what makes MRS. FIELDS different ? I guess the thief is not much of a reader. Or maybe I should have Amazon ship my Mrs. Fields cookies in an cardboard box.

As yet there is no happy ending but I did call customer service at Mrs. Fields and explained my dilemma of having received their box but no cookies thanks to a cookie thief. I did not mention that this might just be karma for the freshly baked cookies I used to sneak off the stove top many years ago when my little sister wasn't looking...... yet I had already paid the price for that since my sister, after learning of my clandestine operations, later started adding Tabasco sauce to certain 'bait cookies', having finally caught me in the act and using a spatula to swat my hand as I reached from the floor from what I thought was a good hiding spot.... Unfortunately, Mrs. Fields was not able to reship the cookies in a generic box that was not imprinted in large letters with their famous brand name. This was certainly not the first time a Mrs. Fields box of cookies had been felched and another shipping alternative was advised. The jury is as yet still out on this remedial effort.

***** Dec. 7, 2006 Update: Mrs. Fields Rocks ! Replacement Package arrived this afternoon via USPS Priority Mail...... which is either a tribute to the honesty of USPS employees or the threat of tampering with U.S. Mail and its penalties is simply too big a risk. In any case, Mrs. Fields has earned even more good will as far as I'm concerned. *****

Nevertheless, I have come to the conclusion that there was a silver, or chocolate chip, lining in this travesty, namely:

That there are powerful brands in our lives. In the case of MRS. FIELDS cookies, the good will and fame associated with this trademark and brand is not just due to advertising. The product itself is obviously popular because the cookies taste so good. In any event, these powerful brands need to be protected, and in the case of MRS. FIELDS, there are indeed numerous registrations which protect this brand as a trademark and which assist the trademark owner in defending its exclusivity to this mark. This in turn is a confirmation of the value of having a solid trademark registration program and a good trademark attorney. For any trademark owner who relies on its marks to generate business and to protect it's business investment, these are obvious conclusions which ought not be ignored.