"What's in a Name Anyways ?!"

The Wall Street Journal (WSJ) recently reported on Aug. 5, 2007, that Joseph Abboud, the famous men's clothing designer, is starting a new label called JAZ. It was only a few years ago that he sold his JOSEPH ABBOUD trademark and label for approx. $65 million dollars.

The question, therefore, is whether Mr. Abboud can still use his own name to sell his new line of men's clothing. The answer is "That Depends", of course. Can Mr. Abboud now use JOSEPH ABBOUD as a trademark ? Definitely not ! Is there any other type of use that he can undertake ? As a matter of fact, according to the WSJ and Mr. Abboud's trademark counsel, he intends to do just that. In this regard, Mr. Abboud intends to use the tagline, "A new composition by designer Joseph Abboud."

You may now be asking how can Mr. Abboud use his name like this if he sold the rights to his trademark, JOSEPH ABBOUD. This is where U.S. Trademark Law comes into play.
It just so happens that the Federal Trademark Act provides for the so-called "descriptive use" of someone else's trademark, which is sometimes referred to as "Trademark Fair Use." In the Federal Trademark Act at 15 U.S.C. §1115(b)(4), it states the following to be a defense to trademark infringement: "That the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party's individual name in his business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin."

In this case, of course, Mr. Abboud and his trademark counsel have selected a fine example of trademark fair use which is reasonably understood as merely a descriptive use of Mr. Abboud's name in connection with his new venture. In connection with this descriptive tagline, however, they must still be careful to avoid common earmarks of trademark use such as the use of quotation marks, stylized fonts, large type size, different color type, etc. Additionally, Mr. Abboud and his attorney have indicated that Mr. Abboud intends to use the trademark, JAZ, as his new label for men's apparel, so there is clear intent as to the trademark that Mr. Abboud is going to use.

What will happen, however, in terms of Mr. Abboud's marketing and promotional efforts is a potential point of contention. To what extent can Mr. Abboud use his likeness and his name in association with what is certainly going to be a large scale multimedia advertising and promotional campaign. Time will tell, of course, whether or not Mr. Abboud will cross the line and cause likelihood of confusion between his new label and the label he sold. The conundrum for Mr. Abboud, therefore, as stated in the WSJ, "Mr. Abboud faces an unusual challenge in the design world: how to remind consumers and retailers of his past success while distancing his new line from the brand that currently bears his name."

Thus it all comes down to the fact that this is all abboud time, its all abboud place, and its obviously abboud time I leave this space.

Surrounded by Trademarks !

We are surrounded ! Everywhere you look and/or listen. Branding is a given in today's world.

In just the past week, here are just a few of brands and/or trademarks that the national and local media have drawn attention to:

1. The Super Bowl, which featured numerous famous brands and/or trademarks, including but not limited to, Budweiser, GoDaddy.com, Lexus, Coca-Cola, and Pepsi.

2. The Los Angeles Times, Feb. 5, 2007, featured articles such as the following:

a. Sports section: (1) The Super Bowl XLI, on page 1; and (2) Robert August surfboards, on page 3;

b. Business section: (1) NBC; (2) Barbie by Mattel; and (3) BRP motorcycles;

c. Health section: Snowboarding, featuring protective apparel by AEGIX.

It is not a coincidence that each of the aforementioned brands and/or trademarks have taken the step of seeking and/or securing trademark registrations to maximize the protection of these business assets.

If you are uncertain how to go about protecting your proprietary rights, we welcome you to visit our homepage at:

http://trademarkesq.com/homepage.html

and request a copy of our "Seven Secrets To Protecting What's Yours".

Best wishes,

William Maguire
http://www.TrademarkEsq.com
Los Angeles, CA

SNOW IN MALIBU !

Yes, you heard that right ! The arctic jet stream has resulted in snow falling in Malibu ! Malibu Snow: get it while its hot, er, cold ! Enough for a good old fashioned snowball fight. If you are interested in snowboarding or skiing, however, it will still be necessary to travel to points farther north in the Sierras or locally in the San Bernardino Mountains.

The irony, of course, is that when one thinks of Malibu the first word one thinks of is not 'snow'. Sun or bikini or waves or surf would come to mind to be sure. MALIBU thus has suggestive significance. In terms of trademark law, this can be advantageous. On the other hand, MALIBU, also has geographic significance which can be disadvantageous to a trademark owner and is an issue worth analyzing before adoption and attempts to register a trademark.

Some examples of MALIBU trademarks that have been registered with the U.S. Patent and Trademark Office (USPTO) http://www.uspto.gov :

Malibu Comics, for a series of comic books;

Malibu Glitz, for cosmetics;

Malibu, for boats;

True Malibu, for perfume;

Malibu, for clothing;

Malibu, for insect repellant.

In each of the above-enumerated uses and registrations of MALIBU, the marks and their goods and/or services are not geographically descriptive. That is, Malibu is used 'fancifully' in connection with both distilled spirits and comic books.
Since Malibu is not geographically identifiable with comic books or distilled spirits, these marks are registrable. On the other hand, were someone to try to register MALIBU SUNTAN for a retail sun tanning salon located in Malibu, they would likely face several objections from the USPTO, namely, (a) refusal as geographically descriptive; and (b) merely descriptive of the services to be provided.

And so the nagging question you may be asking yourself now is: Is MALIBU SNOW registrable as a trademark or service mark? The answer, of course, depends on the goods and/or services being provided. How about for 'retail ice cream store services' ? In my opinion, MALIBU SNOW, is registrable for an ice cream store. Whether it can be registered, in fact, will also depend on its similarity to any other pending or registered marks. Theoretically speaking, however, MALIBU SNOW should not be refused registration as being geographically descriptive.

With all of this talk about trademarks and registrability, it is clear that this is no time for the timid or is such an undertaking merely a day at the beach.
When considering the adoption and use and registration of a trademark it is well advised to contact and hire a trademark attorney to help you wade through the inshore holes and surf, not to mention, snow that you may encounter in Malibu or Mammoth for that matter.

2007: Happy New Year ! The Seven Secrets To "Protecting What's Yours !"

1. Identify your proprietary rights, e.g., trademarks, logos, artwork, copyrights, etc.

2. Prioritizing proprietary rights registration.

a. your business model and budget must be analyzed to help you determine what rights will be prioritized. What is most important to your business success in terms of your product and/or services ? For example, if you have a logo or artwork that is very important to your business, then you need to address both trademark and copyright issues.

3. Finding and Selecting a Lawyer to assist you in protecting your proprietary rights.

a. obtain referrals from colleagues, friends, bar associations.
b. web searching and analysis of lawyer websites. Use keywords such as 'trademarks' and geographic regions if location is important.
c. is the attorney qualified or credible, e.g., has the attorney written and published articles of relevance.
d. contact and conduct interviews in person, on the phone or via email.

4. Search and clearance.

a. adopting and using a trademark, for example, without conducting a search to see if the same or similar mark is already being used for the same or similar goods or services is a risk that can be minimized by conducting trademark and web searches.

5. Registration.

a. Analysis and identification of your proprietary rights will clarify what should be registered and with what government entities and where. There are substantial benefits to obtaining registrations of both trademarks and copyrights in the U.S.

6. Defense.

a. You cannot bury your head in the sand as the good ostrich can. The proprietary rights owner has an obligation to defend its proprietary rights. For example, if you find out that a third party has reproduced your artwork or logo, then you need to put them on notice of your rights.

7. Renewal.

a. Trademarks can exist in perpetuity as long as they are in use in the U.S.
If you obtain a registration in the U.S. as well as elsewhere you will be subject to renewal and/or continued use filing obligations in order to maintain your registrations. These registration terms must be calendared.

Best wishes for your every success in this new year of opportunity.
In this year of 2007 you, indeed, have the opportunity and license to succeed.