Thursday, January 18, 2007


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) :

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.

Tuesday, January 02, 2007

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.