Who owns "LIFEGUARD" in Australia?

(Image/Photo Source: PerthNow.com; 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'

http://bit.ly/kefc0L

X-Ref: Original URL to story:

http://www.perthnow.com.au/business/caught-off-guard-by-a-name/story-e6frg2qc-1226078930385

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.
www.TrademarkEsq.com

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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, www.wtforever21.com

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 www.uspto.gov:

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

(LAST LISTED OWNER) FOREVER 21, INC CORPORATION DELAWARE 2001 SOUTH ALAMEDA STREET LOS ANGELES CALIFORNIA 90058
Assignment Recorded ASSIGNMENT RECORDED
Attorney of Record BRUCE B BRUNDA
Type of Mark SERVICE MARK
Register PRINCIPAL
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:
www.forever21.com

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: www.wtforever21.com)

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

http://wtforever21.com/

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

Hilarious Blog Alert: WTForever21

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

http://www.thefrisky.com/post/246-hilarious-blog-alert-wtforever21/

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

a. Trademark Infringement

Is there a likelihood of confusion between these two marks?

note: 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?

Respectfully,

William E. Maguire, Esq.
LAW OFFICES OF WILLIAM E. MAGUIRE
Los Angeles, CA
www.TrademarkEsq.com

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"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, dwellable.com, with GoDaddy.com and their beta website is up and running at this URL:

http://www.dwellable.com/

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

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

http://www.geekwire.com/2011/hawaiian-beach-vacation-hell-sparks-urbanspoon-cofounder-start-dwellable

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

Word Mark DWELLABLE

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
Mark Drawing Code (4) STANDARD CHARACTER MARK

Serial Number 85317513
Filing Date May 10, 2011

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

Owner (APPLICANT) A&R Technology LIMITED LIABILITY COMPANY WASHINGTON ...... Santa Cruz CALIFORNIA 95061
Attorney of Record Jessica Fajfar
Type of Mark SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator LIVE

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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:

http://www.TrademarkEsq.com

Until next time.....

William E. Maguire, Esq.,
Los Angeles, CA
www.TrademarkEsq.com

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