Friday, December 23, 2011

Obama Derivative Work or Unlawful Copy?

(Photo by Will Maguire. Dec. 23, 2011.)
A new Obama themed political statement poster appeared today on a street corner in West Los Angeles near my office. This is what it looks like (see above). It is entirely black and white.

Funny thing is... this appears to be a b/w copy or derivative work of an underlying and separate work of art entitled, "Socialism" (aka, the Obama Joker Street Art Poster) that is at least four colors from 2009 which can be viewed below and on the following link.

We do not know if the same ***artist/creator is involved in both of these posters, but if not, then this could well be a case of unlawful copying in violation of the U.S. Copyright Act. Merry Christmas to the creator if he/she registered the underlying work with the U.S. Copyright Office and whereby statutory damages may be available. The Jury is out..... for the holiday... so we will just have to wait and see.

Happy Holidays!

William E. Maguire
Los Angeles, Calif.

*** artist/creator. The artist, Firas Alkhateeb, who created the original (circa 2009) poster art featuring the Obama Joker character was previously identified by the L.A. Times at:

"...Bored during his winter school break, Firas Alkhateeb, a senior history major at the University of Illinois, crafted the picture of Obama with the recognizable clown makeup using Adobe's Photoshop software."

Monday, November 28, 2011

YAO MING wine?!...

(Image source: Yao Family Wines via "". Used here for "Fair Use" purposes only.)

You may be thinking, "That sounds like a tall tale!?"... and you would be right. Turns out Yao Ming is turning the water of the Yangtze into wine. Well, not really. In fact, he has lent his name to a Napa Valley vintage, is the truth of the matter. Yao is now into wine apparently. At $289 for a bottle of his 2009 Cabernet Sauvignon it better be good too!

Here is the link to one article on this story:

Additionally, per the above-referenced article, "Yao Family Reserve, a 500-case production available later this year, will be even more expensive." Cha Ching, Ming!... Turns out, however, that Yao Family Wines is going to focus on the Chinese market rather than the U.S., but heck basketball fans may want to sing with Ming over a bottle... you never know.

In any event, Yao must have registered his name for wine, right? Well, let's see...
According to the USPTO's trademark database, there is a pending trademark application for wine for the mark, YAO MING, as follows:

Word Mark YAO MING
Goods and Services Intl. Class #33 for Wine
Standard Characters Claimed
Serial Number 85405999
Filing Date August 24, 2011
Current Filing Basis 1B
Original Filing Basis 1B
Owner (APPLICANT) 9 Dragon Cellars, LLC - Napa Wine Series LIMITED LIABILITY COMPANY DELAWARE 824A Healdsburg Avenue Healdsburg CALIFORNIA 95448
Attorney of Record Jay Behmke
Type of Mark TRADEMARK
Other Data The name(s), portrait(s), and/or signature(s) shown in the mark identifies Yao Ming, whose consent(s) to register is made of record.
Live/Dead Indicator LIVE

This TESS trademark record reveals that this application was filed this past August 24, 2011 based on "intent to use", which means that the Applicant must still file a Statement of Use before it can gain a registration for wine. Additionally, the Applicant is a Limited Liability Company, as opposed to Yao Ming as an individual. One can only assume that Yao Ming, the man, is a participant or member of this LLC.

So there you have it:

Yao Ming, the basketball player
Yao Ming, the businessman
Yao Ming, the wine.

Good luck, Yao.

*** *** ***

Until next time.....

William E. Maguire, Esq.
Los Angeles, CA

Friday, September 30, 2011

30 ROCK Rocks!

.... or so the advertisement said on the back of an RTD bus this morning on the freeway. After 5 years or so on the air, this tv show has been in second run syndication for a couple of years, with reruns being broadcast on the Fox network in Los Angeles.

And just in case you were wondering... yes, the owners of this show, Rockefeller Group, Inc., have a registered service mark in the U.S., as follows:

Word Mark: 30 ROCK
Goods and Services IC 041, for "Entertainment services, namely, an on-going comedy television series; entertainment services, namely, a website featuring information regarding a comedy television series; providing online, non-downloadable television programs and entertainment programming related to a comedy television series; and providing podcasts in the field of comedy television programming."
FIRST USE: 20061011. FIRST USE IN COMMERCE: 20061011 Standard Characters Claimed

Serial Number 85014515 Filing Date April 15, 2010

Registration Number 3882956 Registration Date November 30, 2010

Owner (REGISTRANT) Rockefeller Group, Inc. CORPORATION NEW YORK 1221 Avenue of the Americas New York NEW YORK 10020
Register PRINCIPAL Live/Dead Indicator LIVE

Since this application was filed based on prior use, the Registrant had to submit a specimen of use of the mark with its application. In this particular case, the Registrant submitted a webpage (see below) featuring the service mark and describing or otherwise indicating that the mark was being used in connection with a television show and podcasts.

(partial reproduction of specimen submitted by Registrant; shown here for illustrative purposes only)


With this tv series in second run syndication, this registration no doubt supports the licensing of this series since it is customary that a Licensor make certain representations and warranties with respect to the licensed property. This registration set forth above would support such a covenant. Additionally, with a hugely successful television series there is the potential for ancillary revenues from merchandising. Thus, other classes are likely being contemplated.

For more information about the selection, clearance and registration of trademarks and service marks with respect to tv shows and movies, we invite you take a look at the ARTICLES posted on our website at:

Respectfully submitted,

William E. Maguire,
Los Angeles, Calif.

*** *** ***

Sunday, September 11, 2011

September 11th: We Will Never Forget

Sunday, Sept. 11, 2011: Pepperdine Flag Memorial In Honor of Victims of 9-11. Stunning Tribute.

(Photo by Will Maguire.)

Additional photos posted at:



William E. Maguire, Esq.

Tuesday, August 02, 2011

"Breaking Benjamin" or breaking up badly...

August 2, 2011

Excerpted from:

Lead singer of Breaking Benjamin says he fired bandmates after unauthorized remix of hit song

By Michael Rubinkam, The Associated Press | The Canadian Press
ALLENTOWN, Pa. - Breaking Benjamin is evidently broken, at least for now.
The platinum-selling rock band from northeastern Pennsylvania is mired in a legal dispute over what its founder and lead singer, Benjamin Burnley, called an unauthorized remix of one of the band's hit songs, "Blow Me Away."


Are you asking the question, "How can one band member fire the other band members? And who has rights to the name of the band?

Well, these are traditional and typical questions that seem to get asked only when there is trouble amongst the band members.

In this particular case, however, a quick review of the USPTO trademark database does reveal two interesting facts:

1. There is a U.S. Federal service mark registration for the name of the band, Breaking Benjamin.

and more importantly,

2. There is a recorded assignment on file at that shows that earlier this year that the now fired band mates assigned all of their interest in the service mark with Benjamin Burnley as the sole Assignee or current owner of the mark.

Of course, there could also be a partnership agreement that determines whether the fired bandmates have the ability to market and sell a remixed song but the ownership of the mark seems clear, unless there was a fraudulent conveyance involved with the assignment but those are circumstances that are as yet unknown to us.

So listen up all you rock 'n rollers! Who owns the rights to the name of your band? Is there a written agreement amongst the members of the band? Figure it out now before there is a problem later.


Until next time,

William E. Maguire,

*** *** ***

Tuesday, July 26, 2011

COWBOYS & ALIENS®: From Comic Book to Feature Film

What began as a comic book over ten years ago is now suddenly the "IT" or certainly one of the "MUST SEE" feature films of the summer! With perhaps the BIGGEST presence at the recent 2011 San Diego Comic-Con, COWBOYS & ALIENS® is being advertised and promoted across multiple platforms and venues.

In San Diego during Comic-Con (July 21 - 24, 2011), a huge wrap advertisement and promotional display graced the skyline along the Bayfront at the recently built Hilton:

On 5th Avenue, in the Gaslamp District, which leads directly down to the Convention Center, there was even a local restaurant that was all decked out as the "Cowboys & Aliens Hotel and Saloon, and was open for business to the public for lunch and dinner:

At the Civic Center, the world premiere for the feature film was held on Saturday nite, July 23, 2011, that was attended by both the stars and the producers:

Meanwhile, inside at Comic-Con itself, Platinum Studios Comics which published the underlying comic book property was host to several of the comic books writers for autographs and the sale of related merchandise and prizes:

*** And yet all of this pomp and circumstance began with merely an idea followed by the expression of a storyline and art becoming a comic book and years of development and eventually leading to a finished feature film starring two of Hollywood's most bankable movie stars, namely, Harrison Ford and Daniel Craig.

In terms of the proprietary rights and the foundation of trademarks for COWBOYS & ALIENS®, two key trademark registrations were obtained early on by the undersigned on behalf of the property owner, as follows:

Class #16 for "Comic books, pictorial prints and cartoon prints" (Feb. 24, 1998); and
Class #25 for "Clothing, namely, caps and shirts" (Reg. Date, Sept. 22, 1998).


Dreams do come true. There is more to it than wishful thinking, however. Ideas must be expressed. Proprietary rights must be protected. Deals must be made and contracts signed. Cowboys & Aliens, like The Men In Black are both good examples of properties that have been sheparded well from inception to feature film. Time will tell if Cowboys & Aliens will likewise reap rewards from merchandising but this property is in an excellent position to do so given its attention to protecting the proprietary rights in this title and trademark.

For more information on protecting trademarks, please see the ARTICLES posted on our website at:

Until next time.....

William Maguire
Law Offices of William E. Maguire
Los Angeles, CA

*** *** ***

Thursday, June 23, 2011

Who owns "LIFEGUARD" in Australia?

(Image/Photo Source:; Picture/Photo by: Tim Marsden)

The volunteer lifesaver populace is raging in Australia where it seems that the national governing body of Surf Lifesaving has recently registered the trademark "LIFEGUARD" for merchandise, including apparel, which has quite a number of local surf lifesaving organizations and clubs up in arms.

Here is one headline:

Beach warfare as Surf Life Saving Australia trademarks the term 'lifeguard'

X-Ref: Original URL to story:

In the U.S., there is a commercial entity out of New York that claims registered trademark rights to LIFEGUARD for apparel, etc. and that is active and aggressive in their defense of this term as a trademark as well. The undersigned has encountered this third party in the past when an L.A. based client received a cease and desist letter from said NY entity claiming rights to the mark, LIFEGUARD. In my opinion, they seem to concentrate on the small fish and are not as aggressive against big money companies that incorporate the term, LIFEGUARD, on apparel.

Stay tuned for more on this developing story from down under.

William Maguire, Esq.,
Los Angeles, Calif.

*** *** ***

Friday, June 03, 2011

What's In A Name: FOREVER 21 vs. WTFOREVER 21

(Image source: Google image of the retail giant/registered trademark owner)

What's In A Name: FOREVER 21 vs. WTFOREVER 21

KNBC LA promoted its 11 pm News earlier this evening with a repeated story alert with respect to the third party retail satirical blog entitled, WTFOREVER 21 with the corresponding domain name,

Here are the basic elements of this matter:

1. The Registered Trademark and Service mark and corresponding domain name registration

a. The Mark: FOREVER 21

Current USPTO TESS record at

Goods and Services IC 042. US 100 101. G & S: retail store services featuring clothing and accessories, jewelry, handbags, and wallets. FIRST USE: 19890301. FIRST USE IN COMMERCE: 19951011
Mark Drawing Code (1) TYPED DRAWING
Serial Number 74646617
Filing Date March 14, 1995
Current Filing Basis 1A
Original Filing Basis 1B
Published for Opposition November 28, 1995
Registration Number 2067637
Registration Date June 3, 1997
Owner (REGISTRANT) Fashion 21, Inc. CORPORATION CALIFORNIA 750 East 14th Street Los Angeles CALIFORNIA 90021

Attorney of Record BRUCE B BRUNDA
Affidavit Text SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20070316.
Renewal 1ST RENEWAL 20070316
Live/Dead Indicator LIVE

and others registrations for apparel, cosmetics and jewelry...

b. The Domain Name and website of the Registered Owner/Retail Giant:

2. The third party user of WTFOREVER 21 and the corresponding domain name registration

a. The blog title or common law trademark use:

(Image source:

b. The domain name registration of the third party user:


3. Media blog article of the third party user of WTFOREVER 21

Hilarious Blog Alert: WTForever21

Jessica Wakeman
11:00AM, 12/18/2010

4. Comments/Considerations: Trademark Infringement and/or Dilution

a. Trademark Infringement

Is there a likelihood of confusion between these two marks?

The KNBC LA news story indicated that the third party user received a letter from the Registered Owner claiming trademark infringement and disparagement of their mark and has demanded that the user stop use by June 10th...

b. Dilution.

Is the user of WTFOREVER 21 a dilution, e.g., tarnishment, of the registered mark, FOREVER 21?

What do you think?


William E. Maguire, Esq.
Los Angeles, CA

*** *** ***

Wednesday, June 01, 2011

"Dwellable"! What's In A Name?...

What's In A Name? "Dwellable" is certainly a catchy name. Indeed, it will likely succeed in part because it is a catchy name.

In terms of protecting this budding brand, kudos as well to its principals for hiring an attorney to file a U.S. Federal Trademark Application for the travel related services they have already begun to use. Additionally, they registered the corresponding domain name,, with and their beta website is up and running at this URL:

as featured in a May 31, 2011 posting on (see below) in an article entitled,

"Hawaiian beach vacation from hell sparks Urbanspoon co-founder to start Dwellable"

The current TESS record at indicates the following with respect to the recently filed U.S. Federal service mark application for this mark, as follows:


Goods and Services Intl. Class #35: Advertising of vacation rentals, namely vacation homes, condominiums, cabins, apartments, villas, and ski chalets; providing an interactive website which promotes the rental of vacation properties through offering prospective renters property descriptions, price, location, maps, owner contact information and other information that would be influential to a prospective renter making a rental decision.

Standard Characters Claimed

Serial Number 85317513
Filing Date May 10, 2011

Current Filing Basis 1B (note: 1B = Intent to use)
Original Filing Basis 1B

Attorney of Record Jessica Fajfar
Live/Dead Indicator LIVE


In conclusion, have you got a catchy name for your business concept or idea?
The take away lesson from the example of Dwellable is to capture early both a trademark or service mark by filing an application based on "intent to use" and register the corresponding .com domain name. Before doing this, however, searching and clearing your potential mark is recommended to avoid potential conflicts. For more about selection and clearance, check out the posted ARTICLES on our website at:

Until next time.....

William E. Maguire, Esq.,
Los Angeles, CA

*** *** ***

Monday, May 30, 2011

Disney Surrenders It's Trademark Applications for Seal Team 6

This past week, the heat got too hot... even for DISNEY, which is usually lock, stock and barrel loaded for litigation.

This time it was Seal Team Six (and the U.S. Navy) that threatened Disney to back off and Disney smartly did so. It seems that Disney filed several trademark applications with the U.S. Patent and Trademark Office recently to try to claim a stake in the Seal Team Six name. The U.S. Navy disagreed. On May 25, 2011, Disney Enterprises filed an Express Abandonment with the USPTO for its three trademark and service mark applications in Class #25 (apparel, footwear, headgear); Class #28 (toys and games); and Class #41 (entertainment and education services).

With their radar evading commando helicopters, Seal Team Six could have forced the point home, if necessary. Now there's an idea for a movie we would all like to see. :-)

The U.S. Navy is not finished, however, since there are a handful of other recently filed trademark applications filed by third parties for SEAL TEAM 6 for such goods as watches, wristwatches, clocks, commemorative coins, jewelry, toy action figures, etc. Class #14 seems to be the most popular class of attack as there are at least 3 separate applicants that have filed recently in this class for SEAL TEAM 6.

Curiously, these other applications that are still pending were filed in the middle of May 2011 after a certain notorious event in early May 2011 that made headlines around the world about a real life real NAVY SEAL TEAM 6 takedown of an international terrorist.

To read more about this recent trademark tiff with Disney, check out these linked stories:

1. Navy Fights Disney for 'Seal Team 6' Trademark

2. Walt Disney Surrenders to Navy's SEAL Team 6


Respectfully submitted,

William Maguire, Esq.,
Los Angeles, CA

*** *** ***

Sunday, May 29, 2011

Hollywood vs. Wellywood

(Image source above: Sunday, May 29, 2011; L.A. Times, Travel section, page L3)

I. Hollywood vs. Wellywood

This article first appeared online at on May 25, 2011, as follows:

Plan to build a Wellywood sign in New Zealand draws sharp reaction from Hollywood chamber

May 25, 2011 / By Mary Forgione / Los Angeles Times Travel & Deal blogger

A computer-designed photo, below, shows what a Hollywood-type sign would look… (EPA / Wellington Airport)

(Image source: L.A. Times)

II. Wikipedia reference to "Wellywood":

Per wikipedia, "Wellywood is an informal name for the city of Wellington, New Zealand. The name - a conflation of Wellington and Hollywood - is a reference to the film production business established in the city by The Lord of the Rings film director Sir Peter Jackson, and Wellington-based special effects companies Weta Workshop and Weta Digital. The businesses operate a number of film-related facilities in the Wellington suburb of Miramar.

In March 2010, the Wellington Airport company announced plans to erect a Hollywood-style sign Wellywood on a hillside next to the Miramar cutting.[1] The plans were controversial, and the airport considered a range of alternatives.[2][3][4][5] However in May 2011 it was announced that the Wellywood sign would be going ahead.[6] This was met with considerable local opposition. [7]"


III. Commentary

Who thinks that the Hollywood Chamber of Commerce (HCC) has a leg to stand on with respect to their objection to the use of Wellywood in New Zealand?

What would the claim(s) be? Trademark infringement? If so, is there a likelihood of confusion. However, even before you get to that issue, there is the jurisdictional issue. What rights does the HCC have in New Zealand to prevent the construction of the Wellywood sign? The Hollywood sign is certainly a famous trademark known worldwide. What additional remedies are available internationally for famous trademarks? In the U.S., the Federal Dilution Revision Act of 2006 protects famous marks and the Hollywood sign is certainly such a mark.

x-ref: Wikipedia summary of dilution in the U.S. is available at this link:

As an aside, perhaps the Producers of the film, "National Lampoon's Vacation" might be concerned with the likelihood of confusion between their fictional amusement park, Walley World, in view of the forthcoming Wallywood sign...

Stay tuned...

William Maguire
Los Angeles, CA

*** *** ***

No Way!... Elway

Did you see the article online recently about Famous (and Former NFL) Quarterback, John Elway, objecting to a Denver, CO based punk rock band calling itself ELWAY?

(Image source, above,

(Image source, above,

Likelihood of Confusion? Probably not.

Dilution. Now there's a thought...

note: John Elway is likely a name with fame and may be able to use the Federal Dilution Act to his advantage. Additionally, he has several U.S. Federal trademark and service mark registrations.

To read more, check out the following linked articles:




What do you think? Please COMMENT below if you like. Thanks!

Additional links of interest:



Will Maguire, Esq.,
Los Angeles, CA

*** *** ***

Thursday, May 26, 2011

Kogi BBQ vs. Bull Kogi: I'm Confused!

(Image source:; Kogi trademark registration)

I'm confused! Are you?

Kogi BBQ has been around in Los Angeles for several years now as one of the phenom food trucks that cater to foodies in Southern California. The graphics, logo, color scheme (black, yellow, red) is very conspicuous. See the photo, above, for example, of the Kogi BBQ logo (from their U.S. Federal trademark registration), as well as three photos below of one of the Kogi BBQ trucks on location in early May 2011 in W.L.A., taken by the undersigned admitted fan of Kogi BBQ.

And then this morning as I was hopping about Twitter, I noticed a Bull Kogi twitter page which featured a food truck with the name Bull Kogi in upper and lower case lettering and featuring a color scheme of black, yellow and red.

(Image source: Bull Kogi twitter page)

(Image source:, Bull Kogi page)

Coincidence? What do you think?

We will be updating this blog post with further remarks, so please stay tuned.

*** Update #!; the w.l.a. Kogi BBQ truck set up as usual this afternoon on w. olympic & butler and had a steady stream of customers even as late as 2 pm. The "Voice of America" had a camerawomen even interviewing customers... including the undersigned who raved of Kogi BBQ's chicken tacos, sliders and quesadillas, esp. the sauces and spices... gonna have to look out for that interview when it breaks thru on public television..... Here are some additional photos from this afternoon's Kogi truck venue and set up in w.l.a.


Until next time.....

Will Maguire
Los Angeles, CA

Friday, May 13, 2011

Big Time 9th Circuit En Banc Ruling in Copyright Case!

The Daily Appellate Report from Thursday, May 5, 2011, included a new decision by the 9th Circuit Court of Appeals, as follows:

Montz v. Pilgrim Films & Television Inc., US Court of Appeals - Ninth Circuit, No. 08 56954, May 4, 2011 (hereinafter, Montz).

In Montz, the en banc panel ruled that Copyright law does not preempt an implied-in-fact contract claim where the plaintiff alleged a bilateral expectation that he would be compensated for use of his idea.

Screenwriters can sigh a breath of relief that the 9th Circuit recognizes and endorses that California case law recognizes such contracts. Indeed, the 9th Circuit in this opinion stated, "The California Courts of Appeal have uniformly concluded that Desny claims are not preempted because they flow from agreements and understandings different from the monopoly protection of copyright law."

The Desny opinion refers to the first case in California where in the California Supreme Court "recognized that a writer and producer form an implied contract under circumstances where both understand that the writer is disclosing his idea on the condition that he will be compensated if it is used." Desny v. Wilder, 299 P.2d 257 (Cal. 1956). The 9th Circuit also recognized that the Desny claim has "remained viable under California law for over fifty years."

The court in Muntz also stated, "Plaintiffs' complaint specifically alleged that defendants breached an implied-in-fact contract. The complaint described the terms of the agreement: Plaintiffs communicated their ideas and creative concepts for the "Ghost Hunters" Concept to the Defendants, pursuant to the standard custom and practice in the industry with respect to the exchange of creative ideas, under the following terms:

a. that Plaintiffs' disclosure of their ideas and concepts was strictly confidential;

b. that the Defendants would not disclose, divulge or exploit the Plaintiffs' ideas and concepts without compensation and without obtaining the Plaintiffs' consent; and

c. that, by accepting the Plaintiffs' disclosure of its concept, the Defendants accepted and agreed to abide by the foregoing terms.

In terms of preemption, the court stated that "To survive preemption, a state cause of action must assert rights that are qualitatively different from the rights protected by copyright." Because Copyright Law does not protect "ideas", an implied-in-fact contract that protects the communication of an idea is qualitatively different from the rights protected by Copyright. A person's rights to his ideas are thus beyond those protected by the Copyright Act.

Good News for writers. Not so good news for idea thieves.

*** *** ***

Respectfully submitted,

William E. Maguire, Esq.
Los Angeles, California

*** *** *** *** ***

Friday, April 22, 2011

Beware of the so-called "Worldwide Database of Trademarks and Patents"

Recently, I received an invoice in the mail from the Czech Republic (see below) that states that it is for the "Registration of the International Trademark". Even more remarkably, the invoice is in the amount of (U.S.) $2,392.46.

And just how was I so lucky as to receive this invoice from a private trademark database which is creating the impression of being an Official International Trademark Registrar? In this particular case, my business address is the correspondence address for one of my client's U.S. trademark registrations. This particular client does not have anything other than a U.S. trademark registration for this specific trademark which is referenced in this solicitation.

You have to wonder if this Czech Republic company gets even a one percent return on these ridiculous invoices and solicitations from unsuspecting U.S. trademark registrants. Again, the only reason I got this one was because my office address is listed as the U.S. Registrant's correspondence address. Two Thousand Three Hundred Ninety-Two Dollars and Forty-Six Cents. The forty-six cents is probably to cover the bulk postage, eh?!...

This is neither the first or the last suspect solicitation to target trademark owners. The audacity of the dollar amount is especially brazen, however.

Our obvious suggestion is to carefully scrutinize any invoices with respect to trademark renewals or registrations, and if you are represented by counsel be sure to ask them about it. I have spoken to numerous clients over the years when they receive invoices such as these with one client exclaiming, "How can they do something like that?!" All I could say is, "Yes, there are people who lie, cheat and steal." It's an unfortunate fact of life.

On the bright side, a U.S. trademark registration certificate is worth the paper it is printed on and does provide the registrant with real world advantages. For more information on the advantages of a U.S. trademark registration, please have a look at our website and its articles at:

Be careful out there.


William E. Maguire, Esq.
Los Angeles, California

*** *** ***

Sunday, March 20, 2011

Twitter loses effort to trademark "Tweet!"

Register your trademarks early! RT@benmaller Ben Maller Twitter fails to trademark “Tweet” DETAILS:

Cross-reference; N.Y. Daily News:

"Twitter gets shut out once more, U.S. trademark office won't grant Jack Dorsey trademark for 'tweet'.


Sunday, March 20th 2011, 4:00 AM

Check out our article on the selection, clearance and registration of trademarks at:

Kind regards,

William E. Maguire, Esq.,
Los Angeles, Calif.

Friday, February 04, 2011

PALIN Trademark Applications Are Painful...

The Yahoo Headline this afternoon, Fri Feb 4, 12:26 pm ET, shouted:

Sarah Palin files paperwork to trademark her name

Wow! A cursory look at both applications (Sarah Palin; Bristol Palin) reveal a mess in terms of issues that have been cited the USPTO and which bar registration unless overcome by the applicant's. These applications were sloppily prepared... and filed based on the documents available online at The issues range from failure to indicate that the person whose name is being identified as the trademark has consented to its use; and more problematically, specimens of use that do not conform to the Trademark Rules or Trademark Manual of Procedure. In the end, Sarah and Bristol, in the undersigned's opinion, should punt and re-file new applications. This is not rocket science, folks.

For services, it is customary to use a screen shot of your homepage from your website that identifies your services and which features your service mark. Submitting third party promotional material that does not set forth or identify the claimed services will not suffice.

The TEAS Plus ($275) filing fee is also unavailable if you do not submit to prosecuting the application via email and if you set forth a customized identification of services, then you also cannot file via the discounted TEAS Plus application.

While it is not unusual for the USPTO to tweak the identification of goods and/or services in an application, the issues with the specimens in both the applications filed for SARAH PALIN and BRISTOL PALIN reveal what appears to be inexperience. Additionally, why not file based on "intent to use" and get your ducks in a row, as it were, before filing based on prior use with problematical specimens, etc.

Check out the TDR record online at USPTO for these applications which can be accessed through the USPTO's TESS database at:

(note: copy and paste the URL above into your browser, if you so desire).

Looks like Sarah and Bristol have gone rogue together in the filing of their respective trademark applications. Good luck fixing the specimens issues. It won't be cheap and it won't be pretty.

William Maguire
Los Angeles, Calif.

*** *** ***

Thursday, January 13, 2011

Versace, Porsche Design, and Tiffany... Oh My!

On my way to an evening MCLE/Dinner Meeting to hear about the recent U.S. Supreme Court tie in the matter of Omega v. Costco and their failure to clarify what to do about the copyright first sale doctrine, I did some window shopping in Beverly Hills, Calif. early last nite.

And lo and behold, of course, I walked pass a gamut of Designer retail stores, including Famous Brand Names and Trademarks, namely: Versace, Porsche Design, and Tiffany. With my trusty Nikon Coolpix, I snapped a photo of the front door of each of these established storefronts. Have a look:

And just to keep this trademark relevant, let's take a quick look at the kinds of registrations each of these famous brand names include:

Goods and Services IC 003. US 051. G & S: Cologne. FIRST USE: 19790710. FIRST USE IN COMMERCE: 19790710 Mark Drawing Code (1) TYPED DRAWING Serial Number 73276397 Filing Date September 2, 1980 Current Filing Basis 1A Original Filing Basis 1A Published for Opposition July 26, 1983 Registration Number 1254212 Registration Date October 18, 1983 Owner (REGISTRANT) Gianni Versace S.r.l. LTD LIAB CO ITALY Via Senato 29 Milano ITALY

2. V'E VERSACE (and design)


3. Word Mark VERSACE
Goods and Services IC 003. G & S: cosmetics, namely night and day cream, cleaning preparations for the face and body, bathfoam, shaving foam, after-shave, foundation makeup, nail polish, deodorants for men and women, perfumed, unperfumed (natural) and hypoallergenic perfumes, cologne, toilet water, bath oils, hand and baby soap, hair shampoo and rinses, hair spray, toothpaste, and fragrances, namely perfume, toilet water and essence oils for personal use for men and women. FIRST USE: 19940900. FIRST USE IN COMMERCE: 19940900
IC 018. G & S: leather or imitations of leather, namely animal skins and hides, handbags, wallets, luggage, attache cases, tote bags, briefcases, all purpose sport bags, travelling trunks and carry-on bags, shoulder bags, garment bags for travelling, keycases, umbrellas, parasols and walking sticks, whips, harnesses and saddlery. FIRST USE: 19940900. FIRST USE IN COMMERCE: 19940900

IC 025. G & S: clothing for men, women and children, namely belts, coats, raincoats, waistcoats, blouses and pullovers, jackets, trousers, skirts, dresses, suits, shirts and chemises, T-shirts, sweaters, underwear, socks and stockings, gloves, ties, scarves, hats and caps, boots, shoes and slippers. FIRST USE: 19940900. FIRST USE IN COMMERCE: 19940900

Mark Drawing Code (1) TYPED DRAWING Serial Number 74582355 Filing Date October 5, 1994 Current Filing Basis 1A Original Filing Basis 1B Published for Opposition July 16, 1996 Registration Number 2121984 Registration Date December 16, 1997


Goods and Services IC 009. G & S: [ Protective Helmets and ] Sunglasses. FIRST USE: 19770000. FIRST USE IN COMMERCE: 19780000
IC 014. US 002 027 028 050. G & S: [ Model Cars Made of Precious Metals and Their Alloys, or Coated Therewith, and ] Watches. FIRST USE: 19740000. FIRST USE IN COMMERCE: 19760000

IC 018. G & S: Attache Cases. FIRST USE: 19790000. FIRST USE IN COMMERCE: 19790000

Mark Drawing Code (1) TYPED DRAWING Serial Number 73277585 Filing Date September 12, 1980 Current Filing Basis 1A Original Filing Basis 1A Published for Opposition June 12, 1984 Registration Number 1292660 Registration Date September 4, 1984 Owner (REGISTRANT) Dr. Ing, h.c.F. Porsche A.G. COMPANY FED REP GERMANY PORSCHEPLATZ 1 0435 STUTTGART=-ZUFFENHAUSEN FED REP GERMANY

Goods and Services IC 003. G & S: Perfumery, essential oils, cosmetics and hair lotions Standard Characters Claimed Mark Drawing Code (4) STANDARD CHARACTER MARK Serial Number 78868834 Filing Date April 25, 2006 Current Filing Basis 44E Original Filing Basis 44E Published for Opposition October 17, 2006 Registration Number 3194184 Registration Date January 2, 2007

Goods and Services IC 008. G & S: Cutlery
IC 009. G & S: Photographic, cinematographic, optical, measuring and checking apparatus, namely, anti-glare glasses, spectacles, spectacle cases, spectacle frames, spectacle glasses, eye-glass cases, contact lenses, containers for contact lenses, cases especially made for photographic apparatus and instruments, mileage recorders for vehicles, speed-checking apparatus for vehicles, namely, speedometers, navigation apparatus for vehicles, binoculars, telescopes, cinematographic cameras, photographic cameras, optical lanterns, optical lenses, editing appliances for cinematographic films, navigational instruments, optical glass, DVD-players, sunglasses, optical mirrors, goggles for sports, stands for photographic apparatus, tripods for cameras, video screens, camcorders, video recorders, conductivity meters, instruments for measuring distances, photographic exposure meters, optical readers, instruments for measuring length; equipment for underwater diving, namely, oxygen breathing units comprised of oxygen cylinders and frames; protective helmets

IC 011. G & S: Flashlights; lighting apparatus, namely, light bulbs, Lighting tubes, lamps, arc lamps, electric lamps, light bulbs for directional signals for vehicles, lamps for directional signals of automobiles, safety lamps, diving lights, ultraviolet ray lamps, lamp chimneys, lamp shades, lamp shade holders, lanterns for lighting, bicycle lights, lights for vehicles, lights for automobiles, cycle lights, luminous tubes for lighting, electric discharge tubes for lighting

IC 012. G & S: Hydroplanes; motor launches and inflatable boats; go-karts; children's vehicles, namely, tricycles, push chairs, tilting-carts; two-wheeled vehicles, namely, bicycles, mopeds, motor cycles; safety seats for children for use in motor cars; steering wheels for sports cars; sailboards

IC 014. G & S: Watches and other instruments indicating time, namely, chronometrical instruments, chronographs, chronometers, clocks, control clocks, sundials; objects made of precious metals and their alloys, namely, miniature cars in the nature of brooches in the shape of a miniature car; jewelry; ornaments or handicraft objects made of precious metals and their alloys, also plated therewith, namely, ornamental pins, badges, amulets, bracelets, watch bands, threads, figurines, necklaces, boxes, chains, watch chains, cufflinks, tie clips, tie pins, cloisonne jewelry, pins, earrings, rings, key rings, jewelry cases, pasty jewelry, clock cases, watch cases; desk accessories, namely, a clock combined with a calendar

IC 016. G & S: Stationery articles, namely, stationery paper, paper weights, paper sheets, pencil holders, pencil leads, pencil sharpeners, pencil sharpening machines, pads, booklets in the field of automobiles, letter trays, office clips, namely, binder clips, paperclips, pen holders, pen clips, pen cases, pens, ball pens, pencils, pen nibs, pen nibs of gold, steel pens, pen wipers, fountain pens, stapling presses, calendars, index cards, announcement cards, correcting fluids, correcting ink, office perforators, pencil lead holders, erasers, pen cases, ink stands, writing instruments, wristbands for the retention of writing instruments, writing books, drawing books, writing cases, namely, pen and pencil cases, writing materials, namely, mechanical pencils, pencils, ink pens, drawing pads, stamps; printing type in the nature of numerals and letters; drawing apparatus, namely, pencils, crayons, pens, fountain pens, pastels, ink sticks; desk accessories, namely, a calendar combined with a clock

IC 018. G & S: Goods made of leather or of imitation leather, namely, wallets, purses, briefcases, bags, trimmings of leather for furniture, attache cases, key cases, bands of leather, valises, suitcase handles, handbags, card cases, sling bags for carrying infants, garment bags for travel, vanity cases sold empty, straps of leather, carrying cases for sheet music, furniture coverings of leather, traveling bags, bags for climbers, beach bags, bags for campers, school bags, shoulder belts, parasols, haversacks, packaging bags, tool bags, shopping bags, game bags, wheeled shopping bags, bags for sports; suitcases and trunks; suitcases and trunks of synthetic material or of metal; umbrellas, saddlery articles, namely, saddlery, pads for horse saddles, whips, harness; backpacks

IC 020. G & S: Furniture

IC 022. G & S: Tents, bivouac bags

IC 025. G & S: Clothing, namely, suits, belts, gloves, scarves, ties, jackets, shirts, tops, Bermuda shorts, bike leather jackets, blousons, coats, down jackets, polos, blazers, long sleeve shirts, pullovers, pants, trousers, t-shirts, sweaters, sweat-shirts, rain jackets, rain pants, wind pants, wind shirts, wind sweaters, socks, caps, hats, hat covers, golf bucket hats, golf caps, golf sweaters, golf rain jackets, golf rain pants, golf wind sweaters, running tights, training shorts, tennis pants, layettes, bathing suits, bathing trunks, bath robes, bathing caps, bandanas, berets, motorists' clothing, namely, jackets, pants, gloves; paper clothing, namely, paper hats for use as clothing items; boas, teddies, brassieres, bodices, chasubles, frocks, mittens, money belts, clothing for gymnastics, namely, leotards; jumpers, slips, detachable collars, shirt fronts, suspenders, paper hats, jerseys, stuff jackets, skullcaps, hoods, neckties, ascots, cloth bibs, clothing of leather, namely, jackets, pants, coats, gloves; clothing of imitations of leather, namely, jackets, pants, coats, gloves; underwear, sweat-absorbent underclothing, cuffs, pelisses, dressing gowns, muffs, outer clothing, namely, jackets, coats, capes; ear muffs, jump suits, furs, namely, fur coats, fur muffs; petticoats, parkers, pajamas, cyclists' clothing, namely, shorts, windbreakers, tights, jerseys; waterproof clothing, namely, jackets, rain boots; skirts, saris, collar protectors, sashes for wear, breeches for wear, headbands, shawls, beach clothes, namely, bathing suits, sandals, bikinis; garters, stockings, sweat-absorbent stockings, stocking suspenders, tights, knitwear, namely, sweaters, scarves; singlets, uniforms, wet suits, waistcoats; boots; shoes; slippers

IC 028. G & S: Games, namely, building games, board games, arcade games, parlor games, card games; toys, namely, building blocks, dolls, slides, scooters, rocking horses, teddy bears, push toys, stuffed toys, toy balloons; gymnastic and sporting equipment and articles, namely, gymnastic parallel bars, lines for fishing, fishing rods, balls for games, baseball gloves, bob-sleighs, body boards, body building apparatus, boxing gloves, stationary exercise bicycles, golf gloves, golf clubs, golf bags, fencing gauntlets, batting gloves, inline roller skates, roller skates, rackets, sleighs for recreational purposes, skateboards, bags especially designed for skis and surfboards, sole coverings for skis, ski-bindings, skis, edges of skis, snowboards, surf skis, surfboards, tennis ball throwing apparatus, table for table-tennis, tables for indoor football, springboards, wax for skis; toy miniature cars made of common metals and of synthetic material; sailboards

IC 034. G & S: Smokers' articles, namely, ashtrays, cigarette holders and cigarette cases not of precious metal or plated therewith; cigar and cigarette lighters; smoking pipes; snuff boxes

Mark Drawing Code (5) WORDS, LETTERS, AND/OR NUMBERS IN STYLIZED FORM Serial Number 79041669 Filing Date April 4, 2007 Current Filing Basis 66A Original Filing Basis 66A Published for Opposition March 24, 2009 Registration Number 3635423 International Registration Number 0456717 Registration Date June 9, 2009


1. Word Mark TIFFANY
Goods and Services IC 014. G & S: Watches and Clocks. FIRST USE: 18680000. FIRST USE IN COMMERCE: 18680000 Mark Drawing Code (5) WORDS, LETTERS, AND/OR NUMBERS IN STYLIZED FORM Serial Number 71126976 Filing Date January 9, 1920 Current Filing Basis 1A Original Filing Basis 1A Registration Number 0132262 Registration Date June 15, 1920 Owner (REGISTRANT) Tiffany & Company CORPORATION NEW YORK New York NEW YORK

2. Word Mark TIFFANY
Goods and Services IC 009 016 028. G & S: Printed Books, Visiting-Cards, Announcements, Invitations, Menus, Greeting-Cards, Certificates, Completely Printed or Engraved [ Dance-Orders and ] Diplomas, Labels Upon which Book-Plates Have Been Printed or Engraved, Programs, and Calendars. FIRST USE: 18920000. FIRST USE IN COMMERCE: 18920000 Mark Drawing Code (5) WORDS, LETTERS, AND/OR NUMBERS IN STYLIZED FORM Serial Number 71128252 Filing Date February 10, 1920 Current Filing Basis 1A Original Filing Basis 1A Registration Number 0140996 Registration Date March 29, 1921 Owner (REGISTRANT) Tiffany & Company CORPORATION NEW YORK FIFTH AVENUE AND 37TH STREET MANHATTAN NEW YORK

3. Word Mark TIFFANY & CO.
Goods and Services IC 018. G & S: wallets, tote bags, handbags and business card cases. FIRST USE: 20080800. FIRST USE IN COMMERCE: 20080800 Standard Characters Claimed Mark Drawing Code (4) STANDARD CHARACTER MARK Trademark Search Facility Classification Code NOTATION-SYMBOLS Notation Symbols such as Non-Latin characters,punctuation and mathematical signs,zodiac signs,prescription marks Serial Number 77557869 Filing Date August 28, 2008 Current Filing Basis 1A Original Filing Basis 1A Published for Opposition May 26, 2009 Registration Number 3665959 Registration Date August 11, 2009 Owner (REGISTRANT) Tiffany (NJ) LLC LIMITED LIABILITY COMPANY DELAWARE 15 Sylvan Way Parsippany NEW JERSEY 07054

Translations The English translation of the word "TESORO" in the mark is "TREASURE". Goods and Services IC 014. G & S: Watches. FIRST USE: 20090916. FIRST USE IN COMMERCE: 20090916 Standard Characters Claimed Mark Drawing Code (4) STANDARD CHARACTER MARK Serial Number 77907378 Filing Date January 7, 2010 Current Filing Basis 1A Original Filing Basis 1A Published for Opposition June 8, 2010 Registration Number 3837308 Registration Date August 24, 2010 Owner (REGISTRANT) Tiffany (NJ) LLC LIMITED LIABILITY COMPANY DELAWARE 15 Sylvan Way Parsippany NEW JERSEY 07054

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That concludes this particular blog post. We hope you have found these photos and list of registrations to be useful and informative.

Best wishes,

William E. Maguire, Esq.
Los Angeles, Calif. USA
Trademark • Copyright • Licensing

Wednesday, January 05, 2011

Signs Of The Times: Trademarks and Servicemarks

Just this morning on the way to work I crossed paths with two marks, or maybe it was just one. You decide.

In the photo below, a BUD LIGHT truck was just pulling up to a retail account while in the background is the large billboard sign advertising the current hit film in theatres nationwide, TRUE GRIT.

BUD LIGHT is certainly a famous trademark
owned by Anheuser Busch that is heavily advertised in the media, including but not limited to, the web, tv, print, etc. A peek at the TESS trademark database at reveals a bunch of BUD LIGHT trademark registrations, including but not limited to:

1. Word Mark BUD LIGHT Goods and Services IC 032. US 048. G & S: Beer. FIRST USE: 19820401. USED IN ANOTHER FORM as to "Bud" Apr. 1, 1939. FIRST USE IN COMMERCE: 19820401 Mark Drawing Code (1) TYPED DRAWING Serial Number 73386660 Filing Date September 20, 1982 Current Filing Basis 1A Original Filing Basis 1A Published for Opposition September 27, 1983 Registration Number 1261873 Registration Date December 20, 1983 Owner (REGISTRANT) Anheuser-Busch, Incorporated CORPORATION MISSOURI One Busch Pl. St. Louis MISSOURI 63118

2. Word Mark BUD LIGHT Goods and Services IC 025. US 039. G & S: CLOTHING, NAMELY CAPS, HATS, VISORS, T-SHIRTS, SHIRTS, SHORTS, JACKETS, [ VESTS, BELTS, ] SOCKS, SWEATSHIRTS, SUSPENDERS, SCARVES, WIND-RESISTANT JACKETS, SWEATERS, [ APRONS ] AND WARM-UP SUITS. FIRST USE: 19820000. FIRST USE IN COMMERCE: 19820000 Mark Drawing Code (1) TYPED DRAWING Serial Number 73678356 Filing Date August 14, 1987 Current Filing Basis 1A Original Filing Basis 1A Published for Opposition January 26, 1988 Registration Number 1485363 Registration Date April 19, 1988 Owner (REGISTRANT) ANHEUSER-BUSCH, INCORPORATED CORPORATION MISSOURI ONE BUSCH PLACE ST. LOUIS MISSOURI 63118

3. Word Mark BUD LIGHT

Goods and Services IC 025. US 022 039. G & S: CLOTHING - NAMELY,
[ HATS, JACKETS, SCARVES, SHORTS, ] SHIRTS [ , SWEATERS, VISORS ]. FIRST USE: 19820000. FIRST USE IN COMMERCE: 19820000 Mark Drawing Code (3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS Design Search Code 26.11.01 - Rectangles as carriers or rectangles as single or multiple line borders Serial Number 73694950 Filing Date November 13, 1987 Current Filing Basis 1A Original Filing Basis 1A Published for Opposition April 19, 1988 Registration Number 1495924 Registration Date July 12, 1988 Owner (REGISTRANT) ANHEUSER-BUSCH, INCORPORATED CORPORATION MISSOURI ONE BUSCH PLACE ST. LOUIS MISSOURI 63118

4. Word Mark BUD LIGHT Goods and Services IC 021. US 002. G & S: serving trays not of precious metal, portable coolers, bottle openers, drinking vessels and thermal insulated containers for beverages. FIRST USE: 19840000. FIRST USE IN COMMERCE: 19840000 Mark Drawing Code (1) TYPED DRAWING Serial Number 74174273 Filing Date June 10, 1991 Current Filing Basis 1A Original Filing Basis 1A Published for Opposition August 25, 1992 Registration Number 1733107 Registration Date November 17, 1992 Owner (REGISTRANT) Anheuser-Busch, Incorporated CORPORATION MISSOURI One Busch Place St. Louis MISSOURI 63118

TRUE GRIT is a feature film based on a book.
It is also a so called re-make of a film of the same name that starred John Wayne for which he was awarded an Oscar for Best Actor. Is TRUE GRIT a trademark, however? Or service mark?

The trademark database reveals no registrations for the film title, which is consistent with the USPTO practice of not permitting registrations for single film titles. A series of films, however, are capable of being registered as a U.S. Federal Service mark in Intl. Class #41 for a series of films. Examples of films that are capable of being registered as entertainment service marks for a series of films include: LETHAL WEAPON, DIE HARD, and SCARY MOVIE.

As an aside, there are several third party trademarks that are registered for TRUE GRIT that have nothing to do with the film. For example:

1. Word Mark TRUE GRIT Goods and Services IC 025. US 039. G & S: clothing, headwear and footwear; namely, blouses, coveralls, T-shirts, shirts (knit), sportshirts, sweaters, sweatshirts, dresses, jeans, pants, shorts, skirts, coats, jackets, swimwear, hats, shoes, and sandals. FIRST USE: 19910730. FIRST USE IN COMMERCE: 19910904 Mark Drawing Code (1) TYPED DRAWING Serial Number 74321438 Filing Date October 9, 1992 Current Filing Basis 1A Original Filing Basis 1B Published for Opposition December 21, 1993 Change In Registration CHANGE IN REGISTRATION HAS OCCURRED Registration Number 1890573 Registration Date April 18, 1995 Owner (REGISTRANT) Calor Apparel Group International Corp. CORPORATION CALIFORNIA 1008-A BRIOSO DRIVE COSTA MESA CALIFORNIA 92627 (LAST LISTED OWNER) DRAGON NINE APPAREL, INC. CORPORATION DELAWARE 431 NORTH OAK STREET INGLEWOOD CALIFORNIA 90302

2. Word Mark TRUE GRIT CAFE Goods and Services IC 043. US 100 101. G & S: Restaurant. FIRST USE: 19851201. FIRST USE IN COMMERCE: 19851201 Standard Characters Claimed Mark Drawing Code (4) STANDARD CHARACTER MARK Serial Number 77470667 Filing Date May 9, 2008 Current Filing Basis 1A Original Filing Basis 1A Published for Opposition October 14, 2008 Registration Number 3553610 Registration Date December 30, 2008 Owner (REGISTRANT) Tuttle, Tammee INDIVIDUAL UNITED STATES PO BOX 2003 Ridgway COLORADO 81432

note: The "TRUE GRIT CAFE" needs to be careful not to try to create the impression that it is associated or sponsored by the Estate of John Wayne and not to use John Wayne's likeness. The same caution should extend to the current film. Otherwise, this cafe owner runs the risk of running afoul of the Federal Lanham Act Sec. 43 which proscribes unfair competition. State laws with respect to Right of Publicity could also come into play.

Word Mark TRUE GRIT Goods and Services IC 033. US 047 049. G & S: Wine. FIRST USE: 20060828. FIRST USE IN COMMERCE: 20060828 Standard Characters Claimed Mark Drawing Code (4) STANDARD CHARACTER MARK Serial Number 78597056 Filing Date March 29, 2005 Current Filing Basis 1A Original Filing Basis 1B Published for Opposition December 27, 2005 Registration Number 3178341 Registration Date November 28, 2006 Owner (REGISTRANT) Mendocino Wine Group LTD LIAB CO CALIFORNIA 501 Parducci Rd. Ukiah CALIFORNIA 95482


While it may be debatable whether or not it takes true grit to drink BUD LIGHT®, one thing is certain: Trademarks should be registered and defended. The Anheuser-Busch strategy is obviously one of strong and aggressive registration.

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Disclaimer: No claim of ownership is made herein with respect to the trademarks discussed herein. The purpose of this article is to highlight the importance of registering one's trademarks in order to take advantage of the procedural and substantive benefits of doing so.