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:

1. Word Mark GIANNI VERSACE
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)

Goods and Services International Class (IC) 003. G & S: [ COSMETICS; NAMELY, NIGHT AND DAY CREAM; CLEANING PREPARATIONS FOR FACE AND BODY ]; BATH FOAM; [ SHAVING FOAM; AFTERSHAVE; FOUNDATION MAKEUP; NAIL POLISH ]; DEODORANTS FOR MEN AND WOMEN; [ PERFUMED, UNPERFUMED AND HYPOALLERGENIC TOILET ]; HAND AND [ BABY SOAP; HAIR SHAMPOO AND RINSES; HAIR SPRAY; TOOTHPASTE ]; AND FRAGRANCES; NAMELY, PERFUME, TOILET WATER, AND ESSENCES FOR MEN AND WOMEN Mark Drawing Code (5) WORDS, LETTERS, AND/OR NUMBERS IN STYLIZED FORM Serial Number 73830655 Filing Date October 11, 1989 Current Filing Basis 44E Original Filing Basis 44D Published for Opposition April 7, 1992 Registration Number 1697282 Registration Date

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

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1. Word Mark PORSCHE DESIGN
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

2. Word Mark PORSCHE DESIGN
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

3. Word Mark PORSCHE DESIGN
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

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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
(LAST LISTED OWNER) TIFFANY (NJ) INC. CORPORATION BY ASSIGNMENT NEW JERSEY 15 SYLVAN WAY PARSIPPANY NEW JERSEY 07054

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
(LAST LISTED OWNER) TIFFANY (NJ) LLC CORPORATION DELAWARE 15 SYLVAN WAY PARSIPPANY NEW JERSEY 07054

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

4. Word Mark TIFFANY TESORO
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
www.TrademarkEsq.com
Trademark • Copyright • Licensing

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 www.uspto.gov 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 uspto.gov 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

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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.