TrademarkEsq and the Law Offices of William E. Maguire wish you and yours a very Happy New Year !
May the new year bring you peace and prosperity and a bright future and outlook for us all.
Tuesday, December 30, 2008
Happy New Year !
TrademarkEsq and the Law Offices of William E. Maguire wish you and yours a very Happy New Year !
May the new year bring you peace and prosperity and a bright future and outlook for us all.
Thursday, December 25, 2008
*** Happy Holidays from TrademarkEsq ***
"Merry Merry Red Coffee Cherries" Merry Christmas and Happy Holidays to one and all.
Ripe Red 100 Percent Kona Coffee Cherries just picked from the tree.
November, 2008 Honaunau, Hawaii
Photo by Will Maguire. Copyright 2008 Will Maguire. All Rights Reserved.
Tuesday, December 09, 2008
The Greatest Thing Since the Stanford Marching Band...
Dateline: Dec. 8, 2008
As per the Los Angeles Daily Journal,
By Craig Anderson
Daily Journal Staff Writer
SAN JOSE - "Stanford Law School will unveil a first-of-its-kind online database today that tracks every patent lawsuit filed in the United States since 2000 and gives academic researchers and attorneys unprecedented access to information about litigation.
Mark Lemley, who spearheaded the creation of the Stanford Intellectual Property Litigation Clearinghouse, said he hopes the database provides "systematic information" that can assist attorneys in handling pending cases and policymakers in deciding how to change patent laws..... There are more than 50,000 other cases -- including trademark, copyright, antitrust and trade secrets theft claims -- in the database..."
The website and link to this Clearinghouse is as follows:
http://lexmachina.stanford.edu
----- ------ ------ ----- -----
As per the Los Angeles Daily Journal,
By Craig Anderson
Daily Journal Staff Writer
SAN JOSE - "Stanford Law School will unveil a first-of-its-kind online database today that tracks every patent lawsuit filed in the United States since 2000 and gives academic researchers and attorneys unprecedented access to information about litigation.
Mark Lemley, who spearheaded the creation of the Stanford Intellectual Property Litigation Clearinghouse, said he hopes the database provides "systematic information" that can assist attorneys in handling pending cases and policymakers in deciding how to change patent laws..... There are more than 50,000 other cases -- including trademark, copyright, antitrust and trade secrets theft claims -- in the database..."
The website and link to this Clearinghouse is as follows:
http://lexmachina.stanford.edu
----- ------ ------ ----- -----
Thursday, December 04, 2008
KONA COFFEE TRADEMARKS 101
"KONA COFFEE TRADEMARKS 101:
Selection, Clearance & Registration"
*by William E. Maguire, Esq.
LAW OFFICES OF WILLIAM E. MAGUIRE
Los Angeles, California
INTRODUCTION
Anyone visiting Kailua-Kona on the Big Island of Hawaii would be pleasantly surprised by the number of coffee industry trademarks on display, e.g., KONA JOE®, HAWAIIAN KONA CAFFE®, ROYAL KONA®, MAUNA LOA®, HULA DADDY KONA COFFEE®, just to name a few. This is especially true during the annual Kona Coffee Cultural Festival. With respect to such Java trademarks and service marks, this article will briefly introduce the readers to the fundamental aspects of trademark law.
TRADEMARKS DEFINED
A trademark (or mark) is defined as any word, symbol, slogan, or device (such as a design), or a combination of them, used by a manufacturer or merchant to identify his goods or services and to distinguish them from those manufactured, sold or serviced by others. HAWAIIAN KONA CAFFE® and KONA JOE® are excellent examples of 'word' marks. An example of a slogan mark is FROM FARM TO CUP® for coffee. In the village of Kailua-Kona, an example of a coffee-related service mark is ISLAND LAVA JAVA™ for retail store and restaurant services featuring coffee. Other coffee related service marks include KONA JOE® for both food vending services and restaurant services. Thus, the example of KONA JOE® illustrates that the same mark can function as both a trademark and service mark. Service marks are used typically through advertising and promotion, whereas trademarks are used on labels typically in connection with goods.
In the U.S., trademark rights are acquired through use (e.g., by selling or transporting your product in commerce with the mark attached or on a label). In addition, under certain circumstances "color" can be a trademark. Examples outside the coffee industry are the color "pink" for fiberglass insulation and "green" for dry cleaning pads. With respect to the coffee industry, this writer is unaware of any company taking advantage of this opportunity to use color as a trademark.
SELECTION AND CLEARANCE
The selection of a trademark is the first step that a merchant undertakes to create an identity for his/her brand of coffee and related merchandise, e.g., apparel, ceramic mugs, etc. The clearance of a trademark is the process of determining whether or not the trademark is available and is not being used by someone else as a trademark. This clearance process cannot be overemphasized in its importance. Ignoring this vital step can lead to a multitude of problems and expense. In the clearance of a trademark, a two-step process is suggested. The first step is to conduct an on-line internet trademark search of the mark. This on-line search is further clarified by identifying the goods sought to be used or sold as trademarks are categorized by classification. In the United States, the federal government has adopted the International Classification system. Coffee and tea are in Class #30. Toys, sporting goods, swim fins and surfboards are in Class #28. T-shirts and related apparel and clothing are in Class #25. Ceramic mugs and beverage ware are in Class #21. Gear bags, backpacks, fanny packs, etc. are in Class #18. Posters, magazines, books, trading cards, and other printed matter and publications are in Class #16, e.g., Coffee Times™. Videotapes, audiotapes, dvd's, cd's and business software are in Class #9. Therefore, if you are planning to sell coffee, t-shirts and ceramic mugs, then you will want to conduct an on-line search of Classes # 30, 25 and 21. The registered trademark, KONA JOE®, is a good example of a trademark registered for coffee mugs, shirts, t-shirts, as well as coffee and coffee beans. And MAUNA LOA® is a registered trademark in Class #30 for such goods as "brownies, coffee, cookies, cake, candy, chocolate covered macadamia nuts, etc".
The on-line search is often called a "knock-out" search. This is because the on-line search is a quick and relatively inexpensive way to determine if the mark is already being used. These on-line searches are often available at public libraries, commercial search firms, via the internet, and law firms. If your mark appears free of conflicts after conducting an on-line search, the next level of search is the Full Search, which is obtained from commercial search firms. The Full Search will search the Federal database of trademarks at the U.S. Patent and Trademark Office (USPTO), State trademark registrations, and common law sources such as phone directories, domain name registrations, and Dun & Bradstreet listings. If your mark still appears clear of conflicts after a full search, then you can be fairly certain that you can adopt and start using your mark. CAVEAT: These searches are not guarantees of the absence of conflicting marks, but they do allow a merchant to make a more informed decision in the clearance of a trademark. Also, if you are planning on having an internet domain name registered incorporating your trademark, then you will be well advised to do so just as soon as possible. In addition, it is also advised that you first check to make sure that the domain name that you want to use is available. Checking on the availability of a domain name is today certainly a common and simple task that can be performed on the world wide web.
FEDERAL TRADEMARK REGISTRATION
To obtain maximum protection, it is best to register your trademark or service mark. In the U.S., your greatest rights can be obtained with a federal trademark registration. If you are only conducting business within one state, e.g., Hawaii, it is possible to register your mark with the Dept. of Commerce and Consumer Affairs, Business Registration Division, in Honolulu (x-ref: http://hawaii.gov/dcca/areas/breg/ ). California, as well as other states, have similar opportunities for the registration of trademarks on a state level. However, if it is your intent to do business across state lines or in foreign commerce (or if you are already doing business across state lines or in foreign commerce), then the prudent thing to do is to file for a federal trademark application with the USPTO located in Alexandria, Virginia. Applications can now be submitted on-line via the internet at http://www.uspto.gov/main/trademarks.htm. This task is not necessarily a simple one in spite of the USPTO's preference for on-line filing and one must concentrate and exercise prudence, patience and skill in completing this process. An experienced trademark lawyer will likely benefit the Applicant's opportunity for successful registration.
An application for registration of a trademark must be filed in the name of the owner of the mark. The applicant must submit: (a) an application; (b) a drawing of the mark; (c) the required filing fee (which is approximately $325 per mark per class at this time). The applicant will also incur attorneys fees, typically a fixed fee, should an attorney be hired to file the application(s). As previously discussed, trademarks registered with the Federal Government are categorized by a classification system which correspond to the type of goods sought to be registered.
After the mark is registered in the U.S., it is important to give notice of this fact by placing the registered trademark symbol, "®", adjacent to the mark. Prior to registration, it is also advisable to use the symbols, "TM" (for trademarks) and "SM" (for service marks).
The chief advantages of a federal registration include:
1. "Constructive Notice" nationwide of the registrant's claim to ownership of the mark. This basically eliminates the good faith defense of an infringer who claims to have lacked actual knowledge of the registered mark.
2. Registration is also evidence of (a) the validity of the registration; (b) the registrant's ownership of the mark; and (c) the registrant's exclusive right to use the mark in commerce in connection with the goods or services.
3. Registration also entitles the registrant to (a) file a lawsuit for infringement of the mark in Federal Court; (b) prevent importation of goods bearing an infringing mark; and (c) use the registration as a basis for registering the same mark in certain foreign countries.
Trademark registrations are valid for 10 years subject to certain use and filing requirements, and are renewable every 10 years, also subject to continued use and renewal filing requirements.
FOREIGN TRADEMARK REGISTRATION
If your product is distributed internationally, then you must, by and large, register your mark(s) in each country where you plan to do business or are doing business. Is this expensive? Yes! On the other hand, the alternative is the potential loss of the ability to sell your product in those countries where a third party has filed a prior application for your mark(s). Therefore, foreign trademark protection is typically obtained on a country-by-country basis. Unlike the U.S., however, trademark rights in many foreign countries are obtained by registration rather than use. This further necessitates the importance of filing for marks in foreign countries as soon as possible.
One notable alternative to the typical practice of registering trademarks on a country-by-country basis is the European Community Trade Mark Application (x-ref: www.oami.europa.eu ) which has been available since January 1, 1996 for the filing of applications. By obtaining a Community wide trademark registration, an owner of a U.S. registered trademark, for example, can potentially save both time and money otherwise invested in registering a mark in each separate European country and can thus hopefully attain maximum protection for its trademarks in overseas markets at a minimum of cost. An additional and separate registration option is that offered by the Madrid Protocol, an international treaty that the United States belongs to and enforces. The details of this treaty, however, are beyond the scope of this article (x-ref: http://www.wipo.int/treaties/en/registration/madrid_protocol/ ).
CONCLUSION
Whether you are selling products or services, it is very important to be aware of your trademark and/or service mark and their value. In a competitive business environment, the potential for economic loss is tremendous if trademark rights are not acquired, evaluated, protected and maximized. While this article does not portend to cover all the intricacies of trademark law, hopefully it has helped to shed some light on this area of the law which is of paramount importance to the business owner.
*William E. Maguire has been a member of the California bar since 1981, has an LL.M degree in Intellectual Property, and was previously Senior Counsel for Malibu Comics Entertainment, Inc., a subsidiary of Marvel Entertainment Group, Inc. He has also served as outside trademark, copyright and licensing counsel for The Baywatch Production Company. He is currently in private practice in West Los Angeles where he concentrates on trademark, copyright and licensing matters, and represents clients in the entertainment, publishing, interactive, toy, sporting goods, restaurant, coffee, cigar and apparel industries.
--
William E. Maguire, Esq.
LAW OFFICES OF WILLIAM E. MAGUIRE
11500 W. Olympic Blvd., Suite 400
Los Angeles, CA 90064-1525
Phone 310.470.2929 and 312.4525
Fax 310.474.4710 and 312.4560
Email: maguire@artnet.net
Web: http://www.TrademarkEsq.com
Blog: http://TrademarkEsq.blogspot.com
Trademark * Copyright * Licensing
Monday, December 01, 2008
WICKED Is !
The World Famous Hollywood Sign
Wicked
http://www.pantagestheatertickets.com/wicked-pantages-theater.htm
Wicked Merchandise
Dateline: Sunday, Nov. 30, 2008, Pantage's Theater, Hollywood, Calif.
If you have not yet seen WICKED on stage at the Pantage's, then stop everything and get your tickets now because the show will be closing very, very soon !
In case you have been in a cave or only read spy novels and watch westerns on saturday mornings on broadcast television, then you have not heard about the Broadway Musical, WICKED, now in it final run at the Pantage's. (x-ref: http://en.wikipedia.org/wiki/Wicked_(musical)
Wicked
http://www.pantagestheatertickets.com/wicked-pantages-theater.htm.
And for those of you looking for a bit of continuing legal education regarding this property, here are a few tidbits:
WICKED, the musical stage production, is based on the novel by Gregory Maguire (no relation to the undersigned, at least I think not; x-ref: http://www.gregorymaguire.com/books/wicked.html), which itself is based on the public domain novel, The Wonderful Wizard of Oz, by L. Frank Baum (x-ref: http://en.wikipedia.org/wiki/The_Wonderful_Wizard_of_Oz).
*** And don't forget the I.P. ! Intellectual Property. Cross-Reference: WICKED Merchandise (see photo above). There are a handful of WICKED trademarks and service marks which are owned by a Universal Pictures related entity, namely, Wicked LLC, a Delaware Limited Liability Company, 100 Universal City Plaza, Universal City CALIFORNIA 91608. Among the U.S. Federal Trademark and Service mark Registrations for WICKED are the following:
- Entertainment services in the nature of an on-going theatrical production, in International Class #41.
- Fanny packs and all purpose bags, in Class #18.
- Plush toys and sporting goods, namely, golf balls, in Class #28.
- Cups and mugs, in Class #21.
- Downloadable ringtones, graphics and music via a global computer network, mobile phones, or wireless devices; pre-recorded compact discs featuring music, in Class #9.
Note: Each of these registrations are in composite format, e.g., inclusive of a design element, which is often identified as follows: "WICKED (and design)". In this particular case, the design is represented by a stylized font and a caricature of a witch in the place of the dot in the letter "i" (see below).
It is, of course, these trademarks and service mark registrations which protect the licensees for their investment in acquiring the licenses for all the WICKED swag, e.g., merchandise (note: the t-shirts, hoodies, cups, mugs, jewelry, cd's, etc.) as shown in the photo above entitled, "WICKED Merchandise".
Wicked
http://www.pantagestheatertickets.com/wicked-pantages-theater.htm
Wicked Merchandise
Dateline: Sunday, Nov. 30, 2008, Pantage's Theater, Hollywood, Calif.
If you have not yet seen WICKED on stage at the Pantage's, then stop everything and get your tickets now because the show will be closing very, very soon !
In case you have been in a cave or only read spy novels and watch westerns on saturday mornings on broadcast television, then you have not heard about the Broadway Musical, WICKED, now in it final run at the Pantage's. (x-ref: http://en.wikipedia.org/wiki/Wicked_(musical)
Wicked
http://www.pantagestheatertickets.com/wicked-pantages-theater.htm.
And for those of you looking for a bit of continuing legal education regarding this property, here are a few tidbits:
WICKED, the musical stage production, is based on the novel by Gregory Maguire (no relation to the undersigned, at least I think not; x-ref: http://www.gregorymaguire.com/books/wicked.html), which itself is based on the public domain novel, The Wonderful Wizard of Oz, by L. Frank Baum (x-ref: http://en.wikipedia.org/wiki/The_Wonderful_Wizard_of_Oz).
*** And don't forget the I.P. ! Intellectual Property. Cross-Reference: WICKED Merchandise (see photo above). There are a handful of WICKED trademarks and service marks which are owned by a Universal Pictures related entity, namely, Wicked LLC, a Delaware Limited Liability Company, 100 Universal City Plaza, Universal City CALIFORNIA 91608. Among the U.S. Federal Trademark and Service mark Registrations for WICKED are the following:
- Entertainment services in the nature of an on-going theatrical production, in International Class #41.
- Fanny packs and all purpose bags, in Class #18.
- Plush toys and sporting goods, namely, golf balls, in Class #28.
- Cups and mugs, in Class #21.
- Downloadable ringtones, graphics and music via a global computer network, mobile phones, or wireless devices; pre-recorded compact discs featuring music, in Class #9.
Note: Each of these registrations are in composite format, e.g., inclusive of a design element, which is often identified as follows: "WICKED (and design)". In this particular case, the design is represented by a stylized font and a caricature of a witch in the place of the dot in the letter "i" (see below).
It is, of course, these trademarks and service mark registrations which protect the licensees for their investment in acquiring the licenses for all the WICKED swag, e.g., merchandise (note: the t-shirts, hoodies, cups, mugs, jewelry, cd's, etc.) as shown in the photo above entitled, "WICKED Merchandise".
Tuesday, November 25, 2008
KONA COFFEE 101: From Tree To Bean
Have you ever wondered how they make 100% Pure Kona Coffee ? Well, wonder no more because here is our very own primer from the Tree to the Bean ready to be roasted. (x-ref: Kona Coffee Council website for more information regarding it's "Seal Program":
http://www.kona-coffee-council.com )
Photo #1 below: The Coffee Tree. Notice the Red Coffee Cherries. The red ones are ready and ripe for the picking !
Photo #2 below: A bag full of cherries that have been placed in the holding tray of the mechanical pulping machine, aka pulper.
Photo #3 below: A beautiful close-up shot of coffee cherries just waiting to be pulped.
Photo #4 below: The Kona Coffee Farmer himself busy at work preparing the pulper with his trusty garden hose in preparation for the pulping of the cherries. Shown here is Honaunau, Hawaii Organic 100% Pure Kona Coffee Farm, "Old Hawaiian Coffee Farm", Owner-Proprietor-Farmer-Sailor-Diver, Misha Sperka. http://www.OldHawaiianCoffee.com
Photo #5 below: The cherries have begun their journey to transformation to coffee bean as they are fed through the receiver.
Photo #6 below: Conscription Pulper hard at work and shown here tendering the pulper flow bar and making sure the pulper does not overload.
Photo #7 below: Aah, our first look at the coffee beans just after they have been de-shelled and begin their next journey to roast ready beanhood.
Photo #8 below: A good look at the beans as they travel up the conveyer belt from the pulping machine.
Photo #9 below: And the beans now take their plunge from the conveyer belt into the bucket where they will soak in water to further cleanse the bean.
Photo #10: After soaking in the bucket, the beans at this particular Organic Pure 100% Kona Coffee Farm, are laid out on a sun shaded deck to dry.
Photo #11 below: In order to accelerate and balance the drying of the beans it is necessary to rake the beans. Note that the beans at this stage have 2 to 3 more layers of skin which will fluff off during the final stage of roasting which can be done, of course, on site or at the destination of the purchaser. Thus, it is quite safe and normal to tread on the beans while raking.
The beans once dried are ready to be roasted on site or bagged and shipped to its purchaser's destination for roasting. At this particular farm, the beans shown in the above first 9 photos belonged to a neighboring farm which hired this farm to mill its cherries and to prepare same for later roasting by said neighboring farmer.
In addition to the sun shaded drying method, large quantities of other farms coffee cherries/beans are dried in a commercial sized electric drum-drier until they reach the proper moisture range. As with the beans that are dried in the sun-shaded deck, the commercially dried beans, once they reach the proper reduced moisture percentage ratio, they are then ready to be roasted.
And that's it ! You are now ready for a Big Island Breakfast of Fresh Berries and Creme Filled French Toast, Eggs and Bacon at Splasher's Grill in Kailua-Kona (x-ref: http://www.splashersgrillkona.com and http://www.yelp.com/biz/splashers-grill-kailua-kona ) and, of course, a cup of Kona Coffee.....(as seen below).
http://www.kona-coffee-council.com )
Photo #1 below: The Coffee Tree. Notice the Red Coffee Cherries. The red ones are ready and ripe for the picking !
Photo #2 below: A bag full of cherries that have been placed in the holding tray of the mechanical pulping machine, aka pulper.
Photo #3 below: A beautiful close-up shot of coffee cherries just waiting to be pulped.
Photo #4 below: The Kona Coffee Farmer himself busy at work preparing the pulper with his trusty garden hose in preparation for the pulping of the cherries. Shown here is Honaunau, Hawaii Organic 100% Pure Kona Coffee Farm, "Old Hawaiian Coffee Farm", Owner-Proprietor-Farmer-Sailor-Diver, Misha Sperka. http://www.OldHawaiianCoffee.com
Photo #5 below: The cherries have begun their journey to transformation to coffee bean as they are fed through the receiver.
Photo #6 below: Conscription Pulper hard at work and shown here tendering the pulper flow bar and making sure the pulper does not overload.
Photo #7 below: Aah, our first look at the coffee beans just after they have been de-shelled and begin their next journey to roast ready beanhood.
Photo #8 below: A good look at the beans as they travel up the conveyer belt from the pulping machine.
Photo #9 below: And the beans now take their plunge from the conveyer belt into the bucket where they will soak in water to further cleanse the bean.
Photo #10: After soaking in the bucket, the beans at this particular Organic Pure 100% Kona Coffee Farm, are laid out on a sun shaded deck to dry.
Photo #11 below: In order to accelerate and balance the drying of the beans it is necessary to rake the beans. Note that the beans at this stage have 2 to 3 more layers of skin which will fluff off during the final stage of roasting which can be done, of course, on site or at the destination of the purchaser. Thus, it is quite safe and normal to tread on the beans while raking.
The beans once dried are ready to be roasted on site or bagged and shipped to its purchaser's destination for roasting. At this particular farm, the beans shown in the above first 9 photos belonged to a neighboring farm which hired this farm to mill its cherries and to prepare same for later roasting by said neighboring farmer.
In addition to the sun shaded drying method, large quantities of other farms coffee cherries/beans are dried in a commercial sized electric drum-drier until they reach the proper moisture range. As with the beans that are dried in the sun-shaded deck, the commercially dried beans, once they reach the proper reduced moisture percentage ratio, they are then ready to be roasted.
And that's it ! You are now ready for a Big Island Breakfast of Fresh Berries and Creme Filled French Toast, Eggs and Bacon at Splasher's Grill in Kailua-Kona (x-ref: http://www.splashersgrillkona.com and http://www.yelp.com/biz/splashers-grill-kailua-kona ) and, of course, a cup of Kona Coffee.....(as seen below).
Monday, November 24, 2008
Aloha For Sale !
Dateline: Honolulu, Hawaii, Nov. 19, 2008
ALOHA For Sale !
Aloha Airlines' trademarks and other intellectual property are to be sold.
( Source: http://www.honoluluadvertiser.com/apps/pbcs.dll/article?AID=2008811190380 )
According to Bloomberg News Service, the U.S. Bankruptcy Court has set a Dec. 2nd, 2008 auction date for the auctioning off of Aloha Airlines' intellectual property said to include dozens of trademarks, domain names, and artwork or designs...
Thus, it seems ALOHA is for sale.
Hawaiian residents know, however, that the spirit of ALOHA is something altogether different. The "Aloha Spirit" is certainly to be distinguished from the intellectual property of the Airline company now in liquidation.
( Source: http://en.wikipedia.org/wiki/Aloha )
ALOHA For Sale !
Aloha Airlines' trademarks and other intellectual property are to be sold.
( Source: http://www.honoluluadvertiser.com/apps/pbcs.dll/article?AID=2008811190380 )
According to Bloomberg News Service, the U.S. Bankruptcy Court has set a Dec. 2nd, 2008 auction date for the auctioning off of Aloha Airlines' intellectual property said to include dozens of trademarks, domain names, and artwork or designs...
Thus, it seems ALOHA is for sale.
Hawaiian residents know, however, that the spirit of ALOHA is something altogether different. The "Aloha Spirit" is certainly to be distinguished from the intellectual property of the Airline company now in liquidation.
( Source: http://en.wikipedia.org/wiki/Aloha )
Wednesday, November 12, 2008
Trademarks Want To Be Used !
Trademarks want to be used. In fact, in the U.S., trademarks darn well expect to be used. Indeed, such use is life affirming for a trademark. In the very recently published and released 9th Circuit Federal Court ruling in Halicki Films, LLC v. Sanderson Sales and Marketing, the court reversed the lower court's (District Court) ruling granting a summary judgment motion for the defendant. In Halicki, copyright and trademark rights were being contested. The 9th Circuit, in part, reversed the lower court when it cited prior relevant law on the use of a trademark as opposed to the registration of a trademark. In citing an earlier 9th Circuit case on point, the Court stated as follows: "It is axiomatic in trademark law that the standard test of ownership is priority of use... [I]t is not enough to have invented the mark or even to have registered it first; the party claiming ownership must have been the first to actually use the mark in the sale of goods or services. Sengoku Works Ltd. v. RMC Int'l Ltd., 96 F.3d 1217, 1219 (9th Cir. 1996). Accordingly, ownership of an unregistered trademark, like ownership of a registered mark, is sufficient to establish standing under the Lanham Act." See 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §32:3 (4th ed. 2008).
Halicki Films, LLC v. Sanderson Sales and Marketing - filed November 12, 2008;
Cite as 06-55806; Full text http://www.metnews.com/sos.cgi?1108%2F0655806
Halicki Films, LLC v. Sanderson Sales and Marketing - filed November 12, 2008;
Cite as 06-55806; Full text http://www.metnews.com/sos.cgi?1108%2F0655806
Friday, October 10, 2008
Hollywood Eateries: Past and Present
I. HOLLYWOOD EATERIES: PAST AND PRESENT
"Back in the day", Hollywood insiders dined at Chasen's, Dan Tana's and Orsini's and several other well known restaurants.
Of course, today the choices are legion. DRAGO, SPAGO, CUT, MICHAEL'S, KATE MANTILINI. These are just a few of the contemporary celebrity and Hollywood Exec. haunts that have been inspired by the famed eateries of the past.
If you GO WAY BACK, think "Brown Derby" and "Musso & Frank Grill". Open still today since 1925, the famed EL CHOLO, which early on served the likes of Gary Cooper, Harold Lloyd, Bing Crosby and Loretta Young.
(Photo source: Wikipedia.org)
(Photo source: Wikipedia.org)
In this blog post, however, we are going to say a bit about one of the quintessential and fabled Hollywood eateries of the recent past, namely, Osteria Romana Orsini (aka, Orsini's), which was located on W. Pico Blvd., just east of Century City for many years, but which unfortunately shuttered in late 2003.
(Photo source: www.LoopNet.com)
As reported by Variety in its feature column, THE L.A. EATERY SCENE: "Osteria Orsini, a fixture on Pico Boulevard near 20th (Century Fox Studios) since 1976, is closing by summer's end, announces Igor Nicolas. It's to reopen as Sparks in the fall ... ." (Variety, June 25, 2003).
Research data also available online on the web includes some brief history of this famed Italian hot spot, as follows:
a. from a June 2005 L.A. Times Restaurant Review:
"... The three-story pink building opened as Osteria Romana Orsini in the late '60s. Through the years the owner brought in wave after wave of chefs and cooks and waiters from Italy. Celestino Drago started out here as a waiter. So Mauro Vincenti at Rex, remembers that they used to grow basil in big pots up on the roof, because you couldn't buy it anywhere then. Terribili later opened Alto Palato (now closed) in West Hollywood. Now, by a twist of fate, he's back at the place where he had his first job in L.A. - as owner (with Bill Chait, who founded the Louise's Trattorias)........."
b. Also from the L.A. Times, July 19, 1987:
AS THE TABLES TURN [Home Edition]
Los Angeles Times
Author: RUTH REICHL
Date: Jul 19, 1987
Section: Calendar
"We already have a great number of fine Italian restaurants, but Osteria Romana Orsini is something a little different. The food here is hearty and homey without being corny. If only the service were warmer; the owner and the waiters were so busy dancing attendance on the celebrity at the next table that they had little attention to spare for us. Osteria Romana Orsini, 9575 W. Pico Blvd., West Los Angeles, (213) 277-6050. Open for lunch Monday-Friday, for dinner Monday-Saturday. Full bar. Valet parking. All major cards accepted. Dinner for two, food only, $30-$65."
Dixon Q. Dern, Esq., the well known Los Angeles based Entertainment Attorney and Showbiz Arbitrator-Mediator, recalls Orsini's as the consummate entertainment business lunch and dinner haunt, as follows:
"The building, when I first knew it, was a restaurant called "Brownstone" or something like that. Then in the late '60s it became "Orlando-Orsini" owned by two gentlemen of the same names. Orlando split off and started Caffé Roma in Beverly Hills. Orsini stayed on at the Pico address. Through the years the owner brought in wave after wave of chefs and cooks and waiters from Italy.
Celestino Drago started out here as a waiter as did Mauro Vincenti at Rex. The main floor (below street level) was the hub for entertainment industry insiders at lunch; you would see all types of execs from Fox, MGM (later Columbia/Sony) and the agencies. Many of us had, informally, "our own table." Mine was two from the door against the south wall. At both lunch and dinner you would see célèbre types. Ironically, the second floor was a "night club" which Orsini rented out; so, one night it would be swing dancing, then Persian dancing, then whatever. Several years ago Orsini packed up and went back to his home in Italy. The most famous of the waiters, Igor (who was actually not Italian but German) tried to keep the restaurant going, but finally it sold out to a different owner. Igor, himself, ended up managing a restaurant that just opened on Sunset called Isla which, ironically, is Mexican food prepared by the last chef at Orsini.
DIXON Q. DERN, P.C.
1262 Devon Ave.
Los Angeles, CA 90024
Telephone 310-557-2244
Facsimile 310-275-7655
ddern@dixlaw.com"
As it turns out, Igor started at Orsini's when it opened in 1976 and worked there until it closed in 2003. In a conversation with the undersigned, Igor recalled many stars that he served including William Holden, Natalie Wood, David Cassidy and many others. Hollywood insiders included David Begelman, power brokers, attorneys, bankers, agents, gangsters. The clientele were principally, according to Igor, the "cognizenti", the few, the connected. The owner, Mr. Orsini, liked keeping his restaurant off the radar and avoided publicity which other establishments sought.
It is also discernible that Orsini's itself spawned yet other restaurants which now carry forth the epicurean torch, including but not limited to DRAGO and VINCENTI which are still in business, as well as others that are now gone (S. Irene Virbila, L.A. Times, "(Mauro, Rex il Ristorante, Fennel, Alto Palato – all gone now)."
Celestino Drago worked as a waiter at Orsini's until 1982 and later opened his now very well known and popular westside restaurant, DRAGO, in 1991. DRAGO in turn has led to several other restaurants including Celestino's brother, Tanino Drago, who originally worked with Celestino after following his brother to California from Italy, and has opened his own restaurant in Westwood Village, Tanino Ristorante Bar.
VINCENTI, which opened in Brentwood in 1997 was dedicated and named after the late Mauro Vincenti by his wife, Maureen, who owns and runs the restaurant along with co-owner and noted Master Chef Nicola Mastronardi.
Postscript to Orsini's: Since approximately 2004, the former Orsini's space (since extensively remodeled inside) has been occupied by a restaurant called Spark Woodfire Grill. OpenTable.com describes this new restaurant as follows: "Spark Woodfire Grill is a unique tri-level contemporary American restaurant located on Pico just West of Beverly Drive and Beverly Hills adjacent. Spark specializes in the woodfire grilling of prime steaks, fresh seafood, baby-back ribs, and Kobe beef hamburgers. The restaurant offers a full bar with over 50 signature martinis..."
II. HOW FAR WE HAVE COME SINCE THE BROWN DERBY
How far this historical progression of restaurants has come, indeed, when you consider the worldwide epicurean-merchandising empire as exemplified by Wolfgang Puck. The service mark registrations for his restaurants are just the tip of the iceberg (lettuce) when it comes to the intellectual property and licensing and merchandising machine that is everything Puck! For example, a cursory audit of the USPTO Trademark Database reveals the Wolfgang Puck trademarks and service marks as including:
WOLFGANG PUCK, Reg. No. 1901065; Reg. Date, June 20, 1995, for "restaurant services";
WOLFGANG PUCK, Reg. No. 1593275; Reg. Date, April 24, 1990, for "PACKAGED AND FROZEN PREPARED FOOD, NAMELY, PIZZA AND [ APPLE, PUMPKIN AND PECAN TARTES ]";
WOLFGANG PUCK GRILLE, Reg. No. 3498670, in International Class #43 for "restaurant and bar services";
WOLFGANG PUCK, Reg. No. 3489098, in Intl. Class #30 for "croutons; coffee beans in whole and ground form; espresso, namely, espresso beans in whole and ground form; fresh, frozen and packaged pizza; prepared, frozen and packaged entrees consisting primarily of pasta; sauces; fresh and refrigerated prepared sandwiches, namely, chicken, tuna, ham, turkey, cheese and roast beef sandwiches";
WOLFGANG PUCK, Reg. No. 3010443, Intl. Class #29 for "SOUPS; GARDEN SALADS; CHICKEN SALADS; AND VEGETABLE SALADS"; and
WOLFGANG PUCK, Reg. No. 2601677, Intl. Class #7 for " (( Electric cooking utensils, namely, [electric knives, electric food blenders for domestic use,] electric can openers))"; Intl Class #8 for "Knives, namely, chef knives, kitchen knives, butcher knives, paring knives, bread knives, slicing knives, boning knives, knife sharpeners, carving knives, non-electric can openers, (( forks, spoons, mandolines )); Intl. Class #11 for "((Domestic electric appliances, namely, fry pans, [ electric grill pans ], electric rotisseries, [ deep fryers,] ice cream machines, toaster ovens )); and Intl Class #21 for "Household kitchen utensils, namely, kitchen serving tongs, spatulas, turners, whisks, potato mashers, (( garlic presses)), ladles, graters, splatter screens, strainers; ((containers for household or kitchen use, not of precious metal,)) mixing bowls,[ canisters, ](( storage containers for food and beverages with lids )); cookware, namely, pots, metal, glass and frying pans, skillets, roasters, metal grill pans, stock pots, ((strainers, colanders; beverage glassware, stemware; dinnerware, plates, saucers, serving dishes )), [ coffee cups, charger plates;] bakeware, not toys, namely, cookie sheets, pie pans, ((baking pans,)) loaf pans, muffin pans, tube pan with fluted sides, cake pans, knife blocks";
just to name a few. There are many other registrations in multiple classes of goods and services.
III. THE VALUE OF OBTAINING A U.S. FEDERAL SERVICE MARK REGISTRATION FOR "RESTAURANT SERVICES" FOR THE NAME OF YOUR RESTAURANT
Over the years in my practice, I have been fortunate to work with several restaurant and hotel clients and have been able to help them secure the names of their restaurants as registered U.S. Federal service marks for "restaurant services". Such a registration enables them to have presumptively valid and exclusive rights throughout the United States to their service mark, which is a Huge Weapon in keeping the competition from trading on the goodwill of the client's business.
In closing, one of the most important things you can do as a restaurant owner is to seek a Federal service mark registration so that you will have exclusivity over the name of your restaurant. Thus, it is vital to carefully select the name and to conduct some due diligence and clearance efforts, followed by a U.S. Federal service mark registration, if possible. In doing so, you will do much to ensure your success down the line with your ability to enforce your right to exclusivity, which is just one of several good reasons and benefits of a U.S. Federal Service mark registration.
"TrademarkEsq is here for you !"
Will Maguire, Esq.,
Los Angeles, CA
maguire@artnet.net
"Back in the day", Hollywood insiders dined at Chasen's, Dan Tana's and Orsini's and several other well known restaurants.
Of course, today the choices are legion. DRAGO, SPAGO, CUT, MICHAEL'S, KATE MANTILINI. These are just a few of the contemporary celebrity and Hollywood Exec. haunts that have been inspired by the famed eateries of the past.
If you GO WAY BACK, think "Brown Derby" and "Musso & Frank Grill". Open still today since 1925, the famed EL CHOLO, which early on served the likes of Gary Cooper, Harold Lloyd, Bing Crosby and Loretta Young.
(Photo source: Wikipedia.org)
(Photo source: Wikipedia.org)
In this blog post, however, we are going to say a bit about one of the quintessential and fabled Hollywood eateries of the recent past, namely, Osteria Romana Orsini (aka, Orsini's), which was located on W. Pico Blvd., just east of Century City for many years, but which unfortunately shuttered in late 2003.
(Photo source: www.LoopNet.com)
As reported by Variety in its feature column, THE L.A. EATERY SCENE: "Osteria Orsini, a fixture on Pico Boulevard near 20th (Century Fox Studios) since 1976, is closing by summer's end, announces Igor Nicolas. It's to reopen as Sparks in the fall ... ." (Variety, June 25, 2003).
Research data also available online on the web includes some brief history of this famed Italian hot spot, as follows:
a. from a June 2005 L.A. Times Restaurant Review:
"... The three-story pink building opened as Osteria Romana Orsini in the late '60s. Through the years the owner brought in wave after wave of chefs and cooks and waiters from Italy. Celestino Drago started out here as a waiter. So Mauro Vincenti at Rex, remembers that they used to grow basil in big pots up on the roof, because you couldn't buy it anywhere then. Terribili later opened Alto Palato (now closed) in West Hollywood. Now, by a twist of fate, he's back at the place where he had his first job in L.A. - as owner (with Bill Chait, who founded the Louise's Trattorias)........."
b. Also from the L.A. Times, July 19, 1987:
AS THE TABLES TURN [Home Edition]
Los Angeles Times
Author: RUTH REICHL
Date: Jul 19, 1987
Section: Calendar
"We already have a great number of fine Italian restaurants, but Osteria Romana Orsini is something a little different. The food here is hearty and homey without being corny. If only the service were warmer; the owner and the waiters were so busy dancing attendance on the celebrity at the next table that they had little attention to spare for us. Osteria Romana Orsini, 9575 W. Pico Blvd., West Los Angeles, (213) 277-6050. Open for lunch Monday-Friday, for dinner Monday-Saturday. Full bar. Valet parking. All major cards accepted. Dinner for two, food only, $30-$65."
Dixon Q. Dern, Esq., the well known Los Angeles based Entertainment Attorney and Showbiz Arbitrator-Mediator, recalls Orsini's as the consummate entertainment business lunch and dinner haunt, as follows:
"The building, when I first knew it, was a restaurant called "Brownstone" or something like that. Then in the late '60s it became "Orlando-Orsini" owned by two gentlemen of the same names. Orlando split off and started Caffé Roma in Beverly Hills. Orsini stayed on at the Pico address. Through the years the owner brought in wave after wave of chefs and cooks and waiters from Italy.
Celestino Drago started out here as a waiter as did Mauro Vincenti at Rex. The main floor (below street level) was the hub for entertainment industry insiders at lunch; you would see all types of execs from Fox, MGM (later Columbia/Sony) and the agencies. Many of us had, informally, "our own table." Mine was two from the door against the south wall. At both lunch and dinner you would see célèbre types. Ironically, the second floor was a "night club" which Orsini rented out; so, one night it would be swing dancing, then Persian dancing, then whatever. Several years ago Orsini packed up and went back to his home in Italy. The most famous of the waiters, Igor (who was actually not Italian but German) tried to keep the restaurant going, but finally it sold out to a different owner. Igor, himself, ended up managing a restaurant that just opened on Sunset called Isla which, ironically, is Mexican food prepared by the last chef at Orsini.
DIXON Q. DERN, P.C.
1262 Devon Ave.
Los Angeles, CA 90024
Telephone 310-557-2244
Facsimile 310-275-7655
ddern@dixlaw.com"
As it turns out, Igor started at Orsini's when it opened in 1976 and worked there until it closed in 2003. In a conversation with the undersigned, Igor recalled many stars that he served including William Holden, Natalie Wood, David Cassidy and many others. Hollywood insiders included David Begelman, power brokers, attorneys, bankers, agents, gangsters. The clientele were principally, according to Igor, the "cognizenti", the few, the connected. The owner, Mr. Orsini, liked keeping his restaurant off the radar and avoided publicity which other establishments sought.
It is also discernible that Orsini's itself spawned yet other restaurants which now carry forth the epicurean torch, including but not limited to DRAGO and VINCENTI which are still in business, as well as others that are now gone (S. Irene Virbila, L.A. Times, "(Mauro, Rex il Ristorante, Fennel, Alto Palato – all gone now)."
Celestino Drago worked as a waiter at Orsini's until 1982 and later opened his now very well known and popular westside restaurant, DRAGO, in 1991. DRAGO in turn has led to several other restaurants including Celestino's brother, Tanino Drago, who originally worked with Celestino after following his brother to California from Italy, and has opened his own restaurant in Westwood Village, Tanino Ristorante Bar.
VINCENTI, which opened in Brentwood in 1997 was dedicated and named after the late Mauro Vincenti by his wife, Maureen, who owns and runs the restaurant along with co-owner and noted Master Chef Nicola Mastronardi.
Postscript to Orsini's: Since approximately 2004, the former Orsini's space (since extensively remodeled inside) has been occupied by a restaurant called Spark Woodfire Grill. OpenTable.com describes this new restaurant as follows: "Spark Woodfire Grill is a unique tri-level contemporary American restaurant located on Pico just West of Beverly Drive and Beverly Hills adjacent. Spark specializes in the woodfire grilling of prime steaks, fresh seafood, baby-back ribs, and Kobe beef hamburgers. The restaurant offers a full bar with over 50 signature martinis..."
II. HOW FAR WE HAVE COME SINCE THE BROWN DERBY
How far this historical progression of restaurants has come, indeed, when you consider the worldwide epicurean-merchandising empire as exemplified by Wolfgang Puck. The service mark registrations for his restaurants are just the tip of the iceberg (lettuce) when it comes to the intellectual property and licensing and merchandising machine that is everything Puck! For example, a cursory audit of the USPTO Trademark Database reveals the Wolfgang Puck trademarks and service marks as including:
WOLFGANG PUCK, Reg. No. 1901065; Reg. Date, June 20, 1995, for "restaurant services";
WOLFGANG PUCK, Reg. No. 1593275; Reg. Date, April 24, 1990, for "PACKAGED AND FROZEN PREPARED FOOD, NAMELY, PIZZA AND [ APPLE, PUMPKIN AND PECAN TARTES ]";
WOLFGANG PUCK GRILLE, Reg. No. 3498670, in International Class #43 for "restaurant and bar services";
WOLFGANG PUCK, Reg. No. 3489098, in Intl. Class #30 for "croutons; coffee beans in whole and ground form; espresso, namely, espresso beans in whole and ground form; fresh, frozen and packaged pizza; prepared, frozen and packaged entrees consisting primarily of pasta; sauces; fresh and refrigerated prepared sandwiches, namely, chicken, tuna, ham, turkey, cheese and roast beef sandwiches";
WOLFGANG PUCK, Reg. No. 3010443, Intl. Class #29 for "SOUPS; GARDEN SALADS; CHICKEN SALADS; AND VEGETABLE SALADS"; and
WOLFGANG PUCK, Reg. No. 2601677, Intl. Class #7 for " (( Electric cooking utensils, namely, [electric knives, electric food blenders for domestic use,] electric can openers))"; Intl Class #8 for "Knives, namely, chef knives, kitchen knives, butcher knives, paring knives, bread knives, slicing knives, boning knives, knife sharpeners, carving knives, non-electric can openers, (( forks, spoons, mandolines )); Intl. Class #11 for "((Domestic electric appliances, namely, fry pans, [ electric grill pans ], electric rotisseries, [ deep fryers,] ice cream machines, toaster ovens )); and Intl Class #21 for "Household kitchen utensils, namely, kitchen serving tongs, spatulas, turners, whisks, potato mashers, (( garlic presses)), ladles, graters, splatter screens, strainers; ((containers for household or kitchen use, not of precious metal,)) mixing bowls,[ canisters, ](( storage containers for food and beverages with lids )); cookware, namely, pots, metal, glass and frying pans, skillets, roasters, metal grill pans, stock pots, ((strainers, colanders; beverage glassware, stemware; dinnerware, plates, saucers, serving dishes )), [ coffee cups, charger plates;] bakeware, not toys, namely, cookie sheets, pie pans, ((baking pans,)) loaf pans, muffin pans, tube pan with fluted sides, cake pans, knife blocks";
just to name a few. There are many other registrations in multiple classes of goods and services.
III. THE VALUE OF OBTAINING A U.S. FEDERAL SERVICE MARK REGISTRATION FOR "RESTAURANT SERVICES" FOR THE NAME OF YOUR RESTAURANT
Over the years in my practice, I have been fortunate to work with several restaurant and hotel clients and have been able to help them secure the names of their restaurants as registered U.S. Federal service marks for "restaurant services". Such a registration enables them to have presumptively valid and exclusive rights throughout the United States to their service mark, which is a Huge Weapon in keeping the competition from trading on the goodwill of the client's business.
In closing, one of the most important things you can do as a restaurant owner is to seek a Federal service mark registration so that you will have exclusivity over the name of your restaurant. Thus, it is vital to carefully select the name and to conduct some due diligence and clearance efforts, followed by a U.S. Federal service mark registration, if possible. In doing so, you will do much to ensure your success down the line with your ability to enforce your right to exclusivity, which is just one of several good reasons and benefits of a U.S. Federal Service mark registration.
"TrademarkEsq is here for you !"
Will Maguire, Esq.,
Los Angeles, CA
maguire@artnet.net
Wednesday, October 08, 2008
USPTO Trademark Practice: The USPTO Brush-back
Subject: USPTO Trademark Practice: The USPTO Brush-back
Definition: "The USPTO Brush-back": Commonplace or typical USPTO grounds for the refusal of an application based on statutory and case law. Origin: The brushback pitch in baseball is an aggressive pitch on the inside of the plate facing the batter intended as a means for the pitcher to regain control of the inside corners of the plate. This term has been adopted and hyphenated to refer to the USPTO office practice of refusing trademarks that stretch beyond the parameters of the USPTO Rules of Practice, including but not limited to, the Lanham Act, the TMEP, TTAB rulings, etc.
Example: This term was first used in our last post on this blog in discussing the USPTO response to the filing of an otherwise merely "laudatory" trademark in an application for "THE BEST BURGER IN L.A.". For instance, in paragraph 1 of this earlier referenced blog post, this term of art was incorporated as follows: "1. THE BEST BURGER IN L.A. Is it registrable for restaurant services ? Might want to slap on a logo and some other distinctive elements as this mark may otherwise get brushed back by the USPTO as merely 'laudatory'." Additionally, in paragraph 2, "... And for those of you interested in the USPTO Template brush-back language with respect to the technical "Disclaimer" that will most certainly be required for a restaurant service mark application that includes a merely descriptive term..."
Thus, the term "brush-back" applies to grounds for refusal as well as technical requirements such as 'disclaimers' or recommendations for transfers to the supplemental register, etc. Such brush-backs are a common part of USPTO Trademark Practice. Some are well reasoned and some are not. On some occasions antiquated refusals are issued based on case law that is ambiguous and not compulsory. For instance, in the apparel field the refusal basis as to a specimen being merely 'ornamental' continues to be played out by the USPTO and Applicants. To avoid this costly and often unreasonable expense to an Applicant having to pay their attorney to traverse or overcome such a refusal, it is always recommended that an Applicant provide a sample clothing label or hang-tag that features the trademark in view of the USPTO's near-sighted position on, for example, silk-screened reproductions of the trademark directly on the garment.
In this regard, a USPTO brush-back refusal based on an apparel specimen being rejected as merely "ornamental" and thus not legitimate trademark use seems to even be supported by the TMEP at:
"Sec. 1202.03(f)(i) Slogans or Words Used on the Goods
Slogans or phrases used on items such as t-shirts and sweatshirts, jewelry, and ceramic plates have been refused registration as ornamentation that purchasers will perceive as conveying a message rather than indicating the source of the goods. See Damn I’m Good Inc. v. Sakowitz, Inc., 514 F. Supp. 1357, 212 USPQ 684 (S.D.N.Y. 1981) (“DAMN I’M GOOD,” inscribed in large letters on bracelets and used on hang tags affixed to the goods, found to be without any source-indicating significance); In re Pro-Line Corp., 28 USPQ2d 1141 (TTAB 1993) (BLACKER THE COLLEGE SWEETER THE KNOWLEDGE primarily ornamental slogan that is not likely to be perceived as source indicator); In re Dimitri’s Inc., 9 USPQ2d 1666 (TTAB 1988) (“SUMO,” as used in connection with stylized representations of sumo wrestlers on applicant’s T-shirts and baseball-style caps); In re Astro-Gods Inc., 223 USPQ 621, 624 (TTAB 1984) (“[T]he designation ‘ASTRO GODS’ and design is not likely to be perceived as anything other than part of the thematic whole of the ornamentation of applicant’s shirts.”); In re Original Red Plate Co., 223 USPQ 836 (TTAB 1984) (“YOU ARE SPECIAL TODAY” for ceramic plates found to be without any source-indicating significance)."
Such a brush-back, however, may be overcome citing other principles and case law, including both Federal Court decisions, as well as those of the TTAB.
Definition: "The USPTO Brush-back": Commonplace or typical USPTO grounds for the refusal of an application based on statutory and case law. Origin: The brushback pitch in baseball is an aggressive pitch on the inside of the plate facing the batter intended as a means for the pitcher to regain control of the inside corners of the plate. This term has been adopted and hyphenated to refer to the USPTO office practice of refusing trademarks that stretch beyond the parameters of the USPTO Rules of Practice, including but not limited to, the Lanham Act, the TMEP, TTAB rulings, etc.
Example: This term was first used in our last post on this blog in discussing the USPTO response to the filing of an otherwise merely "laudatory" trademark in an application for "THE BEST BURGER IN L.A.". For instance, in paragraph 1 of this earlier referenced blog post, this term of art was incorporated as follows: "1. THE BEST BURGER IN L.A. Is it registrable for restaurant services ? Might want to slap on a logo and some other distinctive elements as this mark may otherwise get brushed back by the USPTO as merely 'laudatory'." Additionally, in paragraph 2, "... And for those of you interested in the USPTO Template brush-back language with respect to the technical "Disclaimer" that will most certainly be required for a restaurant service mark application that includes a merely descriptive term..."
Thus, the term "brush-back" applies to grounds for refusal as well as technical requirements such as 'disclaimers' or recommendations for transfers to the supplemental register, etc. Such brush-backs are a common part of USPTO Trademark Practice. Some are well reasoned and some are not. On some occasions antiquated refusals are issued based on case law that is ambiguous and not compulsory. For instance, in the apparel field the refusal basis as to a specimen being merely 'ornamental' continues to be played out by the USPTO and Applicants. To avoid this costly and often unreasonable expense to an Applicant having to pay their attorney to traverse or overcome such a refusal, it is always recommended that an Applicant provide a sample clothing label or hang-tag that features the trademark in view of the USPTO's near-sighted position on, for example, silk-screened reproductions of the trademark directly on the garment.
In this regard, a USPTO brush-back refusal based on an apparel specimen being rejected as merely "ornamental" and thus not legitimate trademark use seems to even be supported by the TMEP at:
"Sec. 1202.03(f)(i) Slogans or Words Used on the Goods
Slogans or phrases used on items such as t-shirts and sweatshirts, jewelry, and ceramic plates have been refused registration as ornamentation that purchasers will perceive as conveying a message rather than indicating the source of the goods. See Damn I’m Good Inc. v. Sakowitz, Inc., 514 F. Supp. 1357, 212 USPQ 684 (S.D.N.Y. 1981) (“DAMN I’M GOOD,” inscribed in large letters on bracelets and used on hang tags affixed to the goods, found to be without any source-indicating significance); In re Pro-Line Corp., 28 USPQ2d 1141 (TTAB 1993) (BLACKER THE COLLEGE SWEETER THE KNOWLEDGE primarily ornamental slogan that is not likely to be perceived as source indicator); In re Dimitri’s Inc., 9 USPQ2d 1666 (TTAB 1988) (“SUMO,” as used in connection with stylized representations of sumo wrestlers on applicant’s T-shirts and baseball-style caps); In re Astro-Gods Inc., 223 USPQ 621, 624 (TTAB 1984) (“[T]he designation ‘ASTRO GODS’ and design is not likely to be perceived as anything other than part of the thematic whole of the ornamentation of applicant’s shirts.”); In re Original Red Plate Co., 223 USPQ 836 (TTAB 1984) (“YOU ARE SPECIAL TODAY” for ceramic plates found to be without any source-indicating significance)."
Such a brush-back, however, may be overcome citing other principles and case law, including both Federal Court decisions, as well as those of the TTAB.
Friday, October 03, 2008
THE BEST BURGER IN L.A.
Can you trademark that line ? Or would you rather have one for lunch ? As to the latter, I had what may be the latest and newest additional upstart contender for THE BEST BURGER IN L.A. Go no further than R + D KITCHEN in Santa Monica, across from the Aero Theater, in the same space previously occupied for many years by the Wolfgang Puck restaurant group.
One Chedder Cheeseburger with fries and cole slaw, the latter two items ala carte. The presentation, first of all, was sensational ! Where was my camera ! Then you would certainly agree. This burger must have been prepared by a cosmetic surgeon. The service was impeccable. The server friendly and helpful. Missing was the 'attitude' that is all too prevalent in L.A. And hey, the restrooms are interesting with a common set of sinks adjacent to HIS and HERS private toilets. Very hip and stunning with its mirrors, tile, and fixtures. The open kitchen behind large windows is a nice touch to the R + D concept as well. There is an extensive wine list on a very large chalkboard behind the full bar which is accented with a couple of medium size flat screen tv's in case you wanted to keep track of the V.P. debate or the Dodgers.
And so if you are wondering what THE BEST BURGER IN L.A. has to do with trademarks, well here ya go... but just a primer cuz I know you're thinkin' about that burger:
1. THE BEST BURGER IN L.A. Is it registrable for restaurant services ? Might want to slap on a logo and some other distinctive elements as this mark may otherwise get brushed back by the USPTO as merely "laudatory". And if you want to know what the USPTO thinks of laudatory marks, well here ya go straight from the horses' mouth:
"Section 2(e)(1) Refusal (e.g.., laudatory marks):
Registration is refused because the applied-for mark _________________ merely is a laudatory claim about the goods/services - 'burgers'-'restaurants'. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
Laudatory words or terms that attribute quality or excellence to goods and/or services are considered merely descriptive. TMEP §1209.03(k). Thus, laudatory terms, phrases and slogans are nondistinctive and unregistrable on the Principal Register without proof of acquired distinctiveness. See In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001) (holding THE ULTIMATE BIKE RACK a laudatory, descriptive phrase that touts the superiority of applicant’s bicycle racks); In re Boston Beer Co., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (holding THE BEST BEER IN AMERICA a laudatory, descriptive phrase for applicant’s beer and ale); In re The Place, Inc., 76 USPQ2d 1467 (TTAB 2006) (holding THE GREATEST BAR a laudatory, descriptive term for applicant’s restaurant and bar since term “greatest” immediately informs prospective purchaser that applicant’s establishment is superior in character or quality when compared to other restaurants and bars); In re Dos Padres, Inc., 49 USPQ2d 1860 (TTAB 1998) (holding QUESO QUESADILLA SUPREME a laudatory, descriptive term for applicant’s cheese).
Accordingly, the proposed mark is refused registration because it is descriptive under Section 2(e)(1) of the Trademark Act. Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration." (USPTO template remarks vis-a-vis Laudatory marks).
2. R + D KITCHEN. Definitely registrable for restaurant services if not confusingly similar to an earlier mark. "R + D" is neither descriptive or generic for restaurants and should be registrable. The term "Kitchen", however, has been held to be merely descriptive for restaurants and you would have to disclaim 'exclusivity' to the term 'kitchen'. And for those of you interested in the USPTO Template brush-back language with respect to the technical "Disclaimer" that will most certainly be required for a restaurant service mark application that includes a merely descriptive term such as "Kitchen", her ya go:
"Disclaimers
Applicant must insert a disclaimer of KITCHEN in the application because the term merely describes the goods offered by the applicant, particularly kitchen utensils and kitchen cookware. Please see the attached dictionary evidence of the term kitchen as meaning “a room or part of a room or building in which food is prepared and cooked.” Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.08(a)(i).
The following is the accepted standard format for a disclaimer:
No claim is made to the exclusive right to use “KITCHEN” apart from the mark as shown.
The Office can require an applicant to disclaim exclusive rights to an unregistrable part of a mark, rather than refuse registration of the entire mark. Trademark Act Section 6(a), 15 U.S.C. §1056(a). Under Trademark Act Section 2(e), 15 U.S.C. §1052(e), the Office can refuse registration of the entire mark where it is determined that the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods. Thus, the Office may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic). TMEP §1213.03(a). If an applicant does not comply with a disclaimer requirement, the Office may refuse registration of the entire mark. TMEP §1213.01(b).
A 'disclaimer' is thus a written statement that an applicant adds to the application record that states that applicant does not have exclusive rights, separate and apart from the entire mark, to particular wording and/or to a design aspect. The appearance of the applied-for mark does not change."
3. All is not lost, however, because the USPTO may throw you a lifeline and extend an invitation to you to transfer your application to the "Supplemental Register", which is kind of like the USPTO's version of the NBA's Developmental League. For instance, here is the USPTO brush-back language and supplemental register invitation to an application for "THE BEST BURGERS ON EARTH", serial no. 76663664:
"The proposed mark, THE BEST BURGERS ON EARTH, merely describes a quality of the services. The services are restaurants. The proposed mark is laudatory, because it tells the potential consumer that applicant’s burgers are the best. Laudatory terms, those which attribute quality or excellence to goods or services, are equivalent to other descriptive terms under Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1). That is, laudatory terms are nondistinctive and unregistrable without proof of acquired distinctiveness. Exquisite Form Industries, Inc. v. Exquisite Fabrics of London, 378 F. Supp. 403, 183 USPQ 666 (S.D.N.Y. 1974) (EXQUISITE); In re Ervin, 1 USPQ2d 1665 (TTAB 1986) (THE ORIGINAL); In re Inter‑State Oil Co., 219 USPQ 1229 (TTAB 1983) (PREFERRED); In re Royal Viking Line A/S, 216 USPQ 795 (TTAB 1982) (WORLD CLASS); In re Wileswood, Inc., 201 USPQ 400 (TTAB 1978) (AMERICA'S BEST POPCORN! and AMERICA'S FAVORITE POPCORN!). As a result, the proposed mark must be held to be merely descriptive of the services.
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
Although the trademark-examining attorney has refused registration on the Principal Register, applicant may respond to the stated refusal under Section 2e1 by amending the application to seek registration on the Supplemental Register. Trademark Act Section 23, 15 U.S.C. §1091; 37 C.F.R. §§2.47 and 2.75(a); TMEP §§801.02(b), 815 and 816 et seq.
If you still have questions, check out our website at: http://www.tmesq.com where we have several articles posted which may answer your questions.
Don't forget the Carrot Cake.
"TrademarkEsq is here for you".
One Chedder Cheeseburger with fries and cole slaw, the latter two items ala carte. The presentation, first of all, was sensational ! Where was my camera ! Then you would certainly agree. This burger must have been prepared by a cosmetic surgeon. The service was impeccable. The server friendly and helpful. Missing was the 'attitude' that is all too prevalent in L.A. And hey, the restrooms are interesting with a common set of sinks adjacent to HIS and HERS private toilets. Very hip and stunning with its mirrors, tile, and fixtures. The open kitchen behind large windows is a nice touch to the R + D concept as well. There is an extensive wine list on a very large chalkboard behind the full bar which is accented with a couple of medium size flat screen tv's in case you wanted to keep track of the V.P. debate or the Dodgers.
And so if you are wondering what THE BEST BURGER IN L.A. has to do with trademarks, well here ya go... but just a primer cuz I know you're thinkin' about that burger:
1. THE BEST BURGER IN L.A. Is it registrable for restaurant services ? Might want to slap on a logo and some other distinctive elements as this mark may otherwise get brushed back by the USPTO as merely "laudatory". And if you want to know what the USPTO thinks of laudatory marks, well here ya go straight from the horses' mouth:
"Section 2(e)(1) Refusal (e.g.., laudatory marks):
Registration is refused because the applied-for mark _________________ merely is a laudatory claim about the goods/services - 'burgers'-'restaurants'. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
Laudatory words or terms that attribute quality or excellence to goods and/or services are considered merely descriptive. TMEP §1209.03(k). Thus, laudatory terms, phrases and slogans are nondistinctive and unregistrable on the Principal Register without proof of acquired distinctiveness. See In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001) (holding THE ULTIMATE BIKE RACK a laudatory, descriptive phrase that touts the superiority of applicant’s bicycle racks); In re Boston Beer Co., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (holding THE BEST BEER IN AMERICA a laudatory, descriptive phrase for applicant’s beer and ale); In re The Place, Inc., 76 USPQ2d 1467 (TTAB 2006) (holding THE GREATEST BAR a laudatory, descriptive term for applicant’s restaurant and bar since term “greatest” immediately informs prospective purchaser that applicant’s establishment is superior in character or quality when compared to other restaurants and bars); In re Dos Padres, Inc., 49 USPQ2d 1860 (TTAB 1998) (holding QUESO QUESADILLA SUPREME a laudatory, descriptive term for applicant’s cheese).
Accordingly, the proposed mark is refused registration because it is descriptive under Section 2(e)(1) of the Trademark Act. Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration." (USPTO template remarks vis-a-vis Laudatory marks).
2. R + D KITCHEN. Definitely registrable for restaurant services if not confusingly similar to an earlier mark. "R + D" is neither descriptive or generic for restaurants and should be registrable. The term "Kitchen", however, has been held to be merely descriptive for restaurants and you would have to disclaim 'exclusivity' to the term 'kitchen'. And for those of you interested in the USPTO Template brush-back language with respect to the technical "Disclaimer" that will most certainly be required for a restaurant service mark application that includes a merely descriptive term such as "Kitchen", her ya go:
"Disclaimers
Applicant must insert a disclaimer of KITCHEN in the application because the term merely describes the goods offered by the applicant, particularly kitchen utensils and kitchen cookware. Please see the attached dictionary evidence of the term kitchen as meaning “a room or part of a room or building in which food is prepared and cooked.” Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.08(a)(i).
The following is the accepted standard format for a disclaimer:
No claim is made to the exclusive right to use “KITCHEN” apart from the mark as shown.
The Office can require an applicant to disclaim exclusive rights to an unregistrable part of a mark, rather than refuse registration of the entire mark. Trademark Act Section 6(a), 15 U.S.C. §1056(a). Under Trademark Act Section 2(e), 15 U.S.C. §1052(e), the Office can refuse registration of the entire mark where it is determined that the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods. Thus, the Office may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic). TMEP §1213.03(a). If an applicant does not comply with a disclaimer requirement, the Office may refuse registration of the entire mark. TMEP §1213.01(b).
A 'disclaimer' is thus a written statement that an applicant adds to the application record that states that applicant does not have exclusive rights, separate and apart from the entire mark, to particular wording and/or to a design aspect. The appearance of the applied-for mark does not change."
3. All is not lost, however, because the USPTO may throw you a lifeline and extend an invitation to you to transfer your application to the "Supplemental Register", which is kind of like the USPTO's version of the NBA's Developmental League. For instance, here is the USPTO brush-back language and supplemental register invitation to an application for "THE BEST BURGERS ON EARTH", serial no. 76663664:
"The proposed mark, THE BEST BURGERS ON EARTH, merely describes a quality of the services. The services are restaurants. The proposed mark is laudatory, because it tells the potential consumer that applicant’s burgers are the best. Laudatory terms, those which attribute quality or excellence to goods or services, are equivalent to other descriptive terms under Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1). That is, laudatory terms are nondistinctive and unregistrable without proof of acquired distinctiveness. Exquisite Form Industries, Inc. v. Exquisite Fabrics of London, 378 F. Supp. 403, 183 USPQ 666 (S.D.N.Y. 1974) (EXQUISITE); In re Ervin, 1 USPQ2d 1665 (TTAB 1986) (THE ORIGINAL); In re Inter‑State Oil Co., 219 USPQ 1229 (TTAB 1983) (PREFERRED); In re Royal Viking Line A/S, 216 USPQ 795 (TTAB 1982) (WORLD CLASS); In re Wileswood, Inc., 201 USPQ 400 (TTAB 1978) (AMERICA'S BEST POPCORN! and AMERICA'S FAVORITE POPCORN!). As a result, the proposed mark must be held to be merely descriptive of the services.
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
Although the trademark-examining attorney has refused registration on the Principal Register, applicant may respond to the stated refusal under Section 2e1 by amending the application to seek registration on the Supplemental Register. Trademark Act Section 23, 15 U.S.C. §1091; 37 C.F.R. §§2.47 and 2.75(a); TMEP §§801.02(b), 815 and 816 et seq.
If you still have questions, check out our website at: http://www.tmesq.com where we have several articles posted which may answer your questions.
Don't forget the Carrot Cake.
"TrademarkEsq is here for you".
Friday, September 05, 2008
HYDROX or OREO
The quintessential Battle Royale. Hydrox, the Original and First Creme Filled Cookie vs. the Big Bad Numero Uno, Alpha Male Creme Filled Cookie, OREO. Did you know that HYDROX was first out of the gate, not to mention the box, when it was first created in 1908 ! In fact, HYDROX is currently celebrating its 100th Anniversary this year. The makers of Oreo, on the other hand, so admired the Hydrox creme filled cookie that they copied it and named it OREO thereafter. This 100th Anniversary of HYDROX is being promoted online at:
http://www.hydroxcookies.com
The lesson of Hydrox and Oreo in terms of marketing strength, however, is a clear victory for OREO. Only the faithful loyalists of Hydrox principally are aware that Oreo was second or even care, for that matter.
In terms of trademark law, there is clearly no likelihood of confusion between the brand names and trademarks associated with each of these creme filled cookies, e.g., HYDROX and OREO, even though they may look identical. One wonders what, if any, design trademark and/or patent protection may have been obtainable initially by the makers of Hydrox, even if only to slow down the competition from catching up and as we all know now, surpassing and very much burying Hydrox in the hearts and minds of the American Public.
You can be certain that both cookie companies have registered their brand names as trademarks with the USPTO, however. In the case of HYDROX, there is currently a U.S. Federal Trademark Registration in place for cookies that has been renewed since it first became registered on Jan. 20, 1959, Reg. No. 0672920, in Class #30 for cookies. An earlier registration for Hydrox also appears in the USPTO TESS database as 'expired' but had been originally filed for and registered at the time of the first sale of Hydrox. This earlier registration is interesting because it corroborates the claim of Hydrox as the first creme filled cookie. In this regard, the first HYDROX trademark was Registered on April 15, 1913, Reg. No. 0091099. The underlying application was filed on May 6, 1912, with claimed first use in commerce as of Jan. 1, 1910. This earlier registration in Class #30 included "[ BISCUITS, CAKES, AND ] COOKIES".
Research on the commercial success and fate of HYDROX is also interesting because there is reference to a discontinuation of the HYDROX cookies in 1999. Thus, from a trademark perspective, one has to wonder if there was an abandonment of this mark by its owner. This is an open question and has yet to be litigated with respect to this particular trademark. Nevertheless, the Trademark Act states that three years of non-use is presumptive abandonment. On the other hand, as of as recently as Sept. 3, 2008, the owner of the 1959 HYDROX registration above renewed said trademark once again.
Here is just a sample of the research material available online:
http://spacefem.com/hydrox/
http://en.wikipedia.org/wiki/Hydrox
The maker of OREO have likewise registered OREO multiple times, principally in connection with the chocolate portion of their archetype cookie and derivations thereof. Among the registrations for OREO are the following: Reg. No. 0093009, Reg. Date: Aug. 12, 1913, in Class #30 for a "biscuit", with First Use claimed since March 6, 1912; and others for brownies, pie crusts, ice cream cones, chocolate cookie crumbs, etc.
On the 100th Anniversary of HYDROX, cookie enthusiasts are applauding the relaunch of HYDROX. As a cookie aficionado myself, I welcome this cookie back to the store shelves, but as a trademark lawyer I wonder if the 1959 registration is at risk because of the potential lapse of use issue between 1999 and 2008. Something to think about over a glass of milk and Hydrox cookies perhaps for the trademark lawyer, but I expect otherwise a non-issue for the vast majority of the American Cookie Public.
http://www.hydroxcookies.com
The lesson of Hydrox and Oreo in terms of marketing strength, however, is a clear victory for OREO. Only the faithful loyalists of Hydrox principally are aware that Oreo was second or even care, for that matter.
In terms of trademark law, there is clearly no likelihood of confusion between the brand names and trademarks associated with each of these creme filled cookies, e.g., HYDROX and OREO, even though they may look identical. One wonders what, if any, design trademark and/or patent protection may have been obtainable initially by the makers of Hydrox, even if only to slow down the competition from catching up and as we all know now, surpassing and very much burying Hydrox in the hearts and minds of the American Public.
You can be certain that both cookie companies have registered their brand names as trademarks with the USPTO, however. In the case of HYDROX, there is currently a U.S. Federal Trademark Registration in place for cookies that has been renewed since it first became registered on Jan. 20, 1959, Reg. No. 0672920, in Class #30 for cookies. An earlier registration for Hydrox also appears in the USPTO TESS database as 'expired' but had been originally filed for and registered at the time of the first sale of Hydrox. This earlier registration is interesting because it corroborates the claim of Hydrox as the first creme filled cookie. In this regard, the first HYDROX trademark was Registered on April 15, 1913, Reg. No. 0091099. The underlying application was filed on May 6, 1912, with claimed first use in commerce as of Jan. 1, 1910. This earlier registration in Class #30 included "[ BISCUITS, CAKES, AND ] COOKIES".
Research on the commercial success and fate of HYDROX is also interesting because there is reference to a discontinuation of the HYDROX cookies in 1999. Thus, from a trademark perspective, one has to wonder if there was an abandonment of this mark by its owner. This is an open question and has yet to be litigated with respect to this particular trademark. Nevertheless, the Trademark Act states that three years of non-use is presumptive abandonment. On the other hand, as of as recently as Sept. 3, 2008, the owner of the 1959 HYDROX registration above renewed said trademark once again.
Here is just a sample of the research material available online:
http://spacefem.com/hydrox/
http://en.wikipedia.org/wiki/Hydrox
The maker of OREO have likewise registered OREO multiple times, principally in connection with the chocolate portion of their archetype cookie and derivations thereof. Among the registrations for OREO are the following: Reg. No. 0093009, Reg. Date: Aug. 12, 1913, in Class #30 for a "biscuit", with First Use claimed since March 6, 1912; and others for brownies, pie crusts, ice cream cones, chocolate cookie crumbs, etc.
On the 100th Anniversary of HYDROX, cookie enthusiasts are applauding the relaunch of HYDROX. As a cookie aficionado myself, I welcome this cookie back to the store shelves, but as a trademark lawyer I wonder if the 1959 registration is at risk because of the potential lapse of use issue between 1999 and 2008. Something to think about over a glass of milk and Hydrox cookies perhaps for the trademark lawyer, but I expect otherwise a non-issue for the vast majority of the American Cookie Public.
Wednesday, August 27, 2008
BARBIE vs. BRATZ: One Hundred MILLION !
The Jury in the lawsuit above awarded Mattel $100 Million in damages yesterday in U.S. Federal District Court in Riverside, Calif. These damages were awarded against MGA, the maker of the Bratz line of dolls, for copyright infringement and contract interference.
Readers of this Blog will recall our earlier posted article dated July 18, 2008 wherein we discussed the liability phase of this lawsuit under the heading, "A BLACK SPIRAL NOTEBOOK".
The $100M verdict is significantly less than the $1.8 Billion that Mattel had been seeking, but Mattel's counsel has reportedly indicated that its client will be seeking an injunction against MGA prohibiting MGA from producing the Bratz line of dolls. Such an injunction certainly would portend doom for MGA since Bratz is their bread and butter.
Time will tell how this will all play out with an Appeal almost certain to follow. This case is cited as Bryant v. Mattel, CV04-9049 (C.D. Cal., filed 2004)
Readers of this Blog will recall our earlier posted article dated July 18, 2008 wherein we discussed the liability phase of this lawsuit under the heading, "A BLACK SPIRAL NOTEBOOK".
The $100M verdict is significantly less than the $1.8 Billion that Mattel had been seeking, but Mattel's counsel has reportedly indicated that its client will be seeking an injunction against MGA prohibiting MGA from producing the Bratz line of dolls. Such an injunction certainly would portend doom for MGA since Bratz is their bread and butter.
Time will tell how this will all play out with an Appeal almost certain to follow. This case is cited as Bryant v. Mattel, CV04-9049 (C.D. Cal., filed 2004)
Friday, August 22, 2008
The Cupcake War
I guess it was predetermined years ago after Famous Amos and Mrs. Fields faced each other down in a no holds barred UFC-like battle of the taste buds on your local store shelf. And so, today it is ALL ABOUT THE CUPCAKE ! Hostess never made it into the Big Leagues of this Designer Dessert Pastry Clique but then it has massive distribution, so who cares !
In the Designer Cupcake Community, however, a trademark battle is now unfolding and it is not just the cupcake wrappers. As reported on August 21, 2008 by L.A. Times Staff Writer, Kimi Yoshino, the famed Beverly Hills cupcake bakery, SPRINKLES, has filed a lawsuit in Federal Court, in the Central District of California (Case 2:08-cv-05349-MRP-PJW) claiming that its competitor, FAMOUS CUPCAKES, has copied Sprinkles so-called "modern dot" design trademark. This design has been described as a "circle-on-circle, color-coded piece of candy that tops every Sprinkles cupcake and helps distinguish a 'Red Velvet', say, from a 'Chai Latte'". Readers of the L.A. Times have even been invited to weigh in, metaphorically speaking, on the battle of the cupcake bakeries at:
http://www.latimes.com/cupcakes
A trademark includes, pursuant to Sec. 1127 of the Lanham Act, "any word, name, symbol, or device, or any combination thereof." The Sprinkles "modern dot" trademark would qualify as either a symbol or device. Indeed, the Sprinkles "modern dot" trademark is registered with the USPTO as Reg. No. 3224075 (Reg. Date: April 3, 2007) and the mark is described in said registration, as follows: "The mark consists of a nested-circle design placed prominently on the top center of a cupcake. The dotted lined cupcake in the drawing shows placement of the mark."
Perhaps most interesting, however, from a filing point of view, is that this mark was registered under Sec. 2(f), rather than Sec. 1(a). Section 2(f) provides for "the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce." In a review of the file wrapper or file history found online at uspto.gov, the mark was originally filed under Sec. 1(a) but was initially refused as lacking in inherent distinctiveness. Thus, the applicant was faced with either abandonment of the application or changing its filing basis to that allowed by Sec. 2(f) and providing evidence of "acquired distinctiveness". The applicant was apparently able to provide such evidence in view of the following statement made by the Examining Attorney, namely: "The provided Section 2(f) evidence is acceptable and made of record. Therefore, the non-distinct configuration refusal and ornamental refusal are hereby withdrawn."
In delving even further into the Applicant's response to the initial refusal and the evidence provided to prove distinctiveness, said evidence even included the Declaration of the Fonz, aka, the actor Henry Winkler:
http://tmportal.uspto.gov/external/PA_1_0_LT/OpenServletWindow
The Fonz' household consumption of Sprinkles cupcakes apparently numbers approximately thirty (30) per month, so I hope he also has a personal trainer or a large family. We don't have to worry about the Winkler Household Monthly Cupcake Consumption Rate (hereinafter, WHMCCR), however, because the applicant also bagged the Declaration of Henry Winkler's wife, Stacy, who also corroborated the aforesaid WHMCCR and declared that the so-called modern dot design is unique to Sprinkles.
If I were Famous Cupcakes, Inc., I would capitulate now or surely be prepared to face down the Fonz in court ! Heeeeeeey !
In the Designer Cupcake Community, however, a trademark battle is now unfolding and it is not just the cupcake wrappers. As reported on August 21, 2008 by L.A. Times Staff Writer, Kimi Yoshino, the famed Beverly Hills cupcake bakery, SPRINKLES, has filed a lawsuit in Federal Court, in the Central District of California (Case 2:08-cv-05349-MRP-PJW) claiming that its competitor, FAMOUS CUPCAKES, has copied Sprinkles so-called "modern dot" design trademark. This design has been described as a "circle-on-circle, color-coded piece of candy that tops every Sprinkles cupcake and helps distinguish a 'Red Velvet', say, from a 'Chai Latte'". Readers of the L.A. Times have even been invited to weigh in, metaphorically speaking, on the battle of the cupcake bakeries at:
http://www.latimes.com/cupcakes
A trademark includes, pursuant to Sec. 1127 of the Lanham Act, "any word, name, symbol, or device, or any combination thereof." The Sprinkles "modern dot" trademark would qualify as either a symbol or device. Indeed, the Sprinkles "modern dot" trademark is registered with the USPTO as Reg. No. 3224075 (Reg. Date: April 3, 2007) and the mark is described in said registration, as follows: "The mark consists of a nested-circle design placed prominently on the top center of a cupcake. The dotted lined cupcake in the drawing shows placement of the mark."
Perhaps most interesting, however, from a filing point of view, is that this mark was registered under Sec. 2(f), rather than Sec. 1(a). Section 2(f) provides for "the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce." In a review of the file wrapper or file history found online at uspto.gov, the mark was originally filed under Sec. 1(a) but was initially refused as lacking in inherent distinctiveness. Thus, the applicant was faced with either abandonment of the application or changing its filing basis to that allowed by Sec. 2(f) and providing evidence of "acquired distinctiveness". The applicant was apparently able to provide such evidence in view of the following statement made by the Examining Attorney, namely: "The provided Section 2(f) evidence is acceptable and made of record. Therefore, the non-distinct configuration refusal and ornamental refusal are hereby withdrawn."
In delving even further into the Applicant's response to the initial refusal and the evidence provided to prove distinctiveness, said evidence even included the Declaration of the Fonz, aka, the actor Henry Winkler:
http://tmportal.uspto.gov/external/PA_1_0_LT/OpenServletWindow
The Fonz' household consumption of Sprinkles cupcakes apparently numbers approximately thirty (30) per month, so I hope he also has a personal trainer or a large family. We don't have to worry about the Winkler Household Monthly Cupcake Consumption Rate (hereinafter, WHMCCR), however, because the applicant also bagged the Declaration of Henry Winkler's wife, Stacy, who also corroborated the aforesaid WHMCCR and declared that the so-called modern dot design is unique to Sprinkles.
If I were Famous Cupcakes, Inc., I would capitulate now or surely be prepared to face down the Fonz in court ! Heeeeeeey !
Friday, August 15, 2008
Who's Who ?... or Who's On First ?
So you can imagine my delight when I received the following email this afternoon, just a couple of days shy of my birthday:
"From: MJohnson@mwwpu......com
Subject: Your Selection Into Who's Who - Response needed
Date: August 13, 2008 11:27:33 AM PDT
To: maguir......
Dear Candidate,
Your response is kindly requested. You were recently appointed as a biographical candidate to represent your industry in the Who's Who Among Executives and Professionals, and for inclusion into the upcoming 2008-2009 "Honors Edition" of the registry.
We are pleased to inform you that on July 9th, your candidacy was approved. Your
confirmation for inclusion will be effective within five business days, pending our receipt of the enclosed application.
The Office of the Managing Director appoints individuals based on a candidate's current position, and usually with information obtained from researched executive and professional listings. The director thinks you may make an interesting biographical subject, as individual achievement is what Who's Who is all about. Upon final confirmation you will be listed among thousands of accomplished individuals in the Who's Who Registry. There is no cost to be included.
We do require additional information to complete the selection process and kindly ask that you access this form on our website by Clicking Here
Sincerely,
Matthew J..........
Managing Director"
(redacted but not redundant)
My delight disappeared upon seeing the words, "Who's Who", however. I wondered which "Who's Who" this is. I asked a colleague and he said, "Who?". I explained that this was the "Honors Edition" of the Who's Who. He said, well that is quite an honor !
In any case, it got me to thinking WHO owns the trademark WHO'S WHO ? Who do you think ? It's not Simon & Garfunkel, I can tell you that much. Perhaps Simon & Schuster...
Turn's out Who owns Who's Who is a whodunit. For instance, there is one publisher
who owns multiple U.S. trademark registrations for "Who's Who" but who disclaims exclusivity to "Who's Who", e.g., NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "WHO'S WHO" APART FROM THE MARK AS SHOWN. Another publisher claims Sec. 2(f) distinctiveness to "Who's Who". Yet another Registrant owns a Class #16 registration for "Who's Who In Congress" without disclaimer or distinction.
All of which begs the question, "Who's on First ?!" Abbott & Costello notwithstanding, the answer to who owns "Who's Who" may actually be "Who Doesn't!".
Who do you think ? Is it Doctor Who, Moms Who Marathon, Chicks Who Click, The Boy Who, or The Who ? In the end, who cares ! My personal opinion is stated quite succinctly by the Applicant of Ser. No. 78710399.
"From: MJohnson@mwwpu......com
Subject: Your Selection Into Who's Who - Response needed
Date: August 13, 2008 11:27:33 AM PDT
To: maguir......
Dear Candidate,
Your response is kindly requested. You were recently appointed as a biographical candidate to represent your industry in the Who's Who Among Executives and Professionals, and for inclusion into the upcoming 2008-2009 "Honors Edition" of the registry.
We are pleased to inform you that on July 9th, your candidacy was approved. Your
confirmation for inclusion will be effective within five business days, pending our receipt of the enclosed application.
The Office of the Managing Director appoints individuals based on a candidate's current position, and usually with information obtained from researched executive and professional listings. The director thinks you may make an interesting biographical subject, as individual achievement is what Who's Who is all about. Upon final confirmation you will be listed among thousands of accomplished individuals in the Who's Who Registry. There is no cost to be included.
We do require additional information to complete the selection process and kindly ask that you access this form on our website by Clicking Here
Sincerely,
Matthew J..........
Managing Director"
(redacted but not redundant)
My delight disappeared upon seeing the words, "Who's Who", however. I wondered which "Who's Who" this is. I asked a colleague and he said, "Who?". I explained that this was the "Honors Edition" of the Who's Who. He said, well that is quite an honor !
In any case, it got me to thinking WHO owns the trademark WHO'S WHO ? Who do you think ? It's not Simon & Garfunkel, I can tell you that much. Perhaps Simon & Schuster...
Turn's out Who owns Who's Who is a whodunit. For instance, there is one publisher
who owns multiple U.S. trademark registrations for "Who's Who" but who disclaims exclusivity to "Who's Who", e.g., NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "WHO'S WHO" APART FROM THE MARK AS SHOWN. Another publisher claims Sec. 2(f) distinctiveness to "Who's Who". Yet another Registrant owns a Class #16 registration for "Who's Who In Congress" without disclaimer or distinction.
All of which begs the question, "Who's on First ?!" Abbott & Costello notwithstanding, the answer to who owns "Who's Who" may actually be "Who Doesn't!".
Who do you think ? Is it Doctor Who, Moms Who Marathon, Chicks Who Click, The Boy Who, or The Who ? In the end, who cares ! My personal opinion is stated quite succinctly by the Applicant of Ser. No. 78710399.
Friday, July 18, 2008
"A BLACK SPIRAL NOTEBOOK"
The jury is in. The JURY IS DEFINITELY IN on the much anticipated decision in the Federal Lawsuit/Battle between Mattel and MGA. The Battle of the Dolls. A proverbial cage fight it was too pitting the blond bombshell, Barbie vs. the young hotties, Bratz.
In a decision handed down Thursday, July 17th in U.S. District Court, Central District, in Riverside, Calif., the jury agreed with Mattel that the original designs for the Bratz dolls were created by a former Mattel doll designer while still employed by Mattel.
Nevertheless, as there often is, there may be grounds for appeal by MGA with respect to the jury deadlock on the issue of whether or not Mattel owned four of its former employee's drawings from A BLACK SPIRAL NOTEBOOK.
Certainly not helpful to MGA's case was crucial documentary evidence uncovered by Mattel's counsel, namely, an email from 2002 sent by MGA's chief executive, Isaac Larian, to certain employees that there must be no mention of Mattel, any of their properties, the designer or Bratz.
The separate damages phase is set to start next week.
Bryant v. Mattel, CV04-9049 SGL (C.D. Cal, filed 2004)
In a decision handed down Thursday, July 17th in U.S. District Court, Central District, in Riverside, Calif., the jury agreed with Mattel that the original designs for the Bratz dolls were created by a former Mattel doll designer while still employed by Mattel.
Nevertheless, as there often is, there may be grounds for appeal by MGA with respect to the jury deadlock on the issue of whether or not Mattel owned four of its former employee's drawings from A BLACK SPIRAL NOTEBOOK.
Certainly not helpful to MGA's case was crucial documentary evidence uncovered by Mattel's counsel, namely, an email from 2002 sent by MGA's chief executive, Isaac Larian, to certain employees that there must be no mention of Mattel, any of their properties, the designer or Bratz.
The separate damages phase is set to start next week.
Bryant v. Mattel, CV04-9049 SGL (C.D. Cal, filed 2004)
Friday, March 21, 2008
Spring Skiing and On-Snow Trademarks
Spring Skiing and On-Snow Trademarks: Nordica, Rossignol, ARMADA, Grenade, Oakley, Persol, Burton, Coppertone........ Don't cha just feel like blowing out of town Right Now and getting on the highway or a plane or a train and hitting the slopes...?
Before you go, have a peek at these Great On Snow Brands and Trademarks:
Nordica, Rossignol, ARMADA, Grenade, Oakley, Persol, Burton........ Did you know:
TRADEMARKS DEFINED
A trademark (or mark) is defined as any word, symbol, slogan, or device (such as a design), or a combination of them, used by a manufacturer or merchant to identify his goods or services and to distinguish them from those manufactured, sold or serviced by others. ROSSIGNOL® and BURTON® are excellent examples of 'word' marks for skis and snowboards. "TAN DON'T BURN" is an example of a 'slogan' mark and if you are a spring skier you definitely want to rachet up the SPF to protect your skin, esp. on your face. A logo or design such as the famous COPPERTONE girl and the dog is an example of a 'design' mark. OAKLEY® and PERSOL® for goggles and sunglasses are popular on the slopes too. And don't forget to protect your head from injury with a suitable protective helmet. A few examples of trademarks for helmets include BELL®, BURTON® and LEEDOM®. An example of a service mark is ESPN® for the "entertainment services, reporting and sports programming services rendered through the medium of television." Such a service mark as ESPN® can also be exploited and serve as a trademark (i.e., for clothes (shirts, hats, sweaters, vests); prerecorded videotapes; beach bags, beach towels, etc.). In the U.S., trademark rights are acquired through use (e.g., by selling or transporting your product in commerce with the mark attached or on a label). In addition, under certain circumstances "color" can be a trademark. Examples outside the surf/beach industry are the color "pink" for fiberglass insulation and "green" for dry cleaning pads.
So the next time you are on the slopes be sure to check out all the Brands and Trademarks on display and in use. Each of the aforementioned well known brands are backed up and protected by a Trademark Registration. If you too have a brand, consider whether or not you have adequately protected it with a trademark or service mark registration. If you are doing business in other countries and haven't done any registration work, it is strongly suggested you do so as soon as possible, esp. if you want to avoid the proverbial snowball in the face in the form of a trademark infringement. For more information on this topic, check out our website at:
http://www.TrademarkEsq.com
and click on ARTICLES.
Before you go, have a peek at these Great On Snow Brands and Trademarks:
Nordica, Rossignol, ARMADA, Grenade, Oakley, Persol, Burton........ Did you know:
TRADEMARKS DEFINED
A trademark (or mark) is defined as any word, symbol, slogan, or device (such as a design), or a combination of them, used by a manufacturer or merchant to identify his goods or services and to distinguish them from those manufactured, sold or serviced by others. ROSSIGNOL® and BURTON® are excellent examples of 'word' marks for skis and snowboards. "TAN DON'T BURN" is an example of a 'slogan' mark and if you are a spring skier you definitely want to rachet up the SPF to protect your skin, esp. on your face. A logo or design such as the famous COPPERTONE girl and the dog is an example of a 'design' mark. OAKLEY® and PERSOL® for goggles and sunglasses are popular on the slopes too. And don't forget to protect your head from injury with a suitable protective helmet. A few examples of trademarks for helmets include BELL®, BURTON® and LEEDOM®. An example of a service mark is ESPN® for the "entertainment services, reporting and sports programming services rendered through the medium of television." Such a service mark as ESPN® can also be exploited and serve as a trademark (i.e., for clothes (shirts, hats, sweaters, vests); prerecorded videotapes; beach bags, beach towels, etc.). In the U.S., trademark rights are acquired through use (e.g., by selling or transporting your product in commerce with the mark attached or on a label). In addition, under certain circumstances "color" can be a trademark. Examples outside the surf/beach industry are the color "pink" for fiberglass insulation and "green" for dry cleaning pads.
So the next time you are on the slopes be sure to check out all the Brands and Trademarks on display and in use. Each of the aforementioned well known brands are backed up and protected by a Trademark Registration. If you too have a brand, consider whether or not you have adequately protected it with a trademark or service mark registration. If you are doing business in other countries and haven't done any registration work, it is strongly suggested you do so as soon as possible, esp. if you want to avoid the proverbial snowball in the face in the form of a trademark infringement. For more information on this topic, check out our website at:
http://www.TrademarkEsq.com
and click on ARTICLES.
Friday, March 07, 2008
Interactive Trademarks 2.0
Interactive Trademarks 2.0:
Selection, Clearance & Registration
By William E. Maguire
Interactive Trademarks and the corresponding jargon have evolved significantly since the 1990s. Consider such terms as "edutainment" or "superhighway" which were once in vogue. Today's buzz words now include "Web 2.0," "shopcasting," "wiki," and "mobile tv," among many others.
The purpose of this article is to introduce the reader to the fundamental aspects of trademark law, particularly with respect to such well known interactive trademarks as SONY, NINTENDO, EA SPORTS, and EIDOS. Each of these marks readily identify the products that have made them well known. Yet, these types of interactive trademarks are also merchandised for ancillary products such as t-shirts, hats, gear bags, comic books, posters, among other products. In addition, these marks can be spun off as feature films or animated cartoon series which may in turn be registrable as service marks.
Click here to read more....
http://trademarkesq.com/pages/article.html
Selection, Clearance & Registration
By William E. Maguire
Interactive Trademarks and the corresponding jargon have evolved significantly since the 1990s. Consider such terms as "edutainment" or "superhighway" which were once in vogue. Today's buzz words now include "Web 2.0," "shopcasting," "wiki," and "mobile tv," among many others.
The purpose of this article is to introduce the reader to the fundamental aspects of trademark law, particularly with respect to such well known interactive trademarks as SONY, NINTENDO, EA SPORTS, and EIDOS. Each of these marks readily identify the products that have made them well known. Yet, these types of interactive trademarks are also merchandised for ancillary products such as t-shirts, hats, gear bags, comic books, posters, among other products. In addition, these marks can be spun off as feature films or animated cartoon series which may in turn be registrable as service marks.
Click here to read more....
http://trademarkesq.com/pages/article.html
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