TrademarkEsq

Obama Derivative Work or Unlawful Copy?

2011-12-23T15:48:00.000-08:00

(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.

http://animalnewyork.com/2009/08/obama-joker-posters-upset-natural-street-art-order/

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
LAW OFFICES OF WILLIAM E. MAGUIRE
Los Angeles, Calif.
www.TrademarkEsq.com

*** 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:

http://latimesblogs.latimes.com/washington/2009/08/obama-joker-artist.html

"...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."

YAO MING wine?!...

2011-11-28T20:35:00.000-08:00

(Image source: Yao Family Wines via "ThePostGame.com". 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:

http://www.thepostgame.com/blog/chompions/201111/better-age-yao-ming-enters-world-wine

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
Mark Drawing Code (4) STANDARD CHARACTER MARK
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
Register PRINCIPAL
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.
www.TrademarkEsq.com
Los Angeles, CA

30 ROCK Rocks!

2011-09-30T12:09:00.000-07:00

.... 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:

http://TrademarkEsq.com

Respectfully submitted,

William E. Maguire,
LAW OFFICES OF WILLIAM E. MAGUIRE
Los Angeles, Calif.

*** *** ***

September 11th: We Will Never Forget

2011-09-11T19:35:00.001-07:00

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

(Photo by Will Maguire.)

Additional photos posted at:

http://countyrecurrent.blogspot.com/2011/09/photo-by-copyright-steve-hotchkiss-2011.html

---

Respectfully,

William E. Maguire, Esq.
www.TrademarkEsq.com

"Breaking Benjamin" or breaking up badly...

2011-08-02T14:20:00.000-07:00

August 2, 2011

http://ca.news.yahoo.com/lead-singer-breaking-benjamin-says-fired-bandmates-unauthorized-163929618.html

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 uspto.gov 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,
http://TrademarkEsq.blogspot.com
Web: www.TrademarkEsq.com

*** *** ***

COWBOYS & ALIENS®: From Comic Book to Feature Film

2011-07-26T14:47:00.000-07:00

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: www.TrademarkEsq.com

Until next time.....

William Maguire
Law Offices of William E. Maguire
Los Angeles, CA
www.TrademarkEsq.com

*** *** ***

Who owns "LIFEGUARD" in Australia?

2011-06-23T10:17:00.000-07:00

(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

*** *** ***

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

2011-06-03T23:14:00.000-07:00

(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/

------

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

*** *** ***

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

2011-06-01T08:02:00.000-07:00

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

---

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

*** *** ***

Disney Surrenders It's Trademark Applications for Seal Team 6

2011-05-30T10:02:00.000-07:00

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

http://www.hollywoodreporter.com/news/navy-fights-disney-seal-team-192310

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

http://on.wsj.com/mRGiv7

---

Respectfully submitted,

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

*** *** ***

Hollywood vs. Wellywood

2011-05-29T20:30:00.000-07:00

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

I. Hollywood vs. Wellywood

This article first appeared online at LATimes.com 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

http://articles.latimes.com/2011/may/25/news/la-trb-wellywood-hollywood-20110525

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":

http://en.wikipedia.org/wiki/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:

http://en.wikipedia.org/wiki/Trademark_dilution

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
LAW OFFICES OF WILLIAM E. MAGUIRE
Los Angeles, CA
Web: http://www.TrademarkEsq.com

*** *** ***

No Way!... Elway

2011-05-29T09:27:00.000-07:00

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, www.ThePostGame.com)

(Image source, above, www.myspace.com/elway)

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:

1. http://www.thepostgame.com/lifestyle/201105/john-elway-sounds-sour-note-about-band-same-name

and

2. http://profootballtalk.nbcsports.com/2011/05/27/punk-band-elway-says-its-being-squeezed-by-its-namesake/related/

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

Additional links of interest:

http://www.myspace.com/elway

http://www.Facebook/ElwayTheBand

http://www.Twitter/ElwayBand

Will Maguire, Esq.,
Los Angeles, CA
Blog: http://www.TrademarkEsq.blogspot.com
Web: http://www.TrademarkEsq.com

*** *** ***

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

2011-05-26T13:07:00.000-07:00

(Image source: uspto.gov; 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: Yelp.com, 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
LAW OFFICES OF WILLIAM E. MAGUIRE
Los Angeles, CA
www.TrademarkEsq.com

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

2011-05-13T10:09:00.000-07:00

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
www.TrademarkEsq.com

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

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

2011-04-22T12:41:00.000-07:00

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: http://www.TrademarkEsq.com

Be careful out there.

Respectfully,

William E. Maguire, Esq.
LAW OFFICES OF WILLIAM E. MAGUIRE
Los Angeles, California

*** *** ***

Twitter loses effort to trademark "Tweet!"

2011-03-20T22:44:00.000-07:00

Register your trademarks early! RT@benmaller Ben Maller Twitter fails to trademark “Tweet” DETAILS: http://bit.ly/eZsiuT

Cross-reference; N.Y. Daily News:

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

Gatecrasher

Sunday, March 20th 2011, 4:00 AM

http://nydn.us/gPt5Lb

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

http://www.TrademarkEsq.com/pages/article9.html

Kind regards,

William E. Maguire, Esq.,
Los Angeles, Calif.
http://www.TrademarkEsq.com

PALIN Trademark Applications Are Painful...

2011-02-04T14:26:00.000-08:00

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

Sarah Palin files paperwork to trademark her name

http://linkd.in/fpgja9

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 uspto.gov. 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:

http://tess2.uspto.gov/bin/gate.exe?f=searchss&state=4005:pv1052.1.1

(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
http://TrademarkEsq.blogspot.com
Los Angeles, Calif.

www.TrademarkEsq.com

*** *** ***

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

2011-01-13T12:51:00.000-08:00

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

--

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

---

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

*** *** ***

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

2011-01-05T11:07:00.000-08:00

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

---

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.

*** *** ***

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.

Merry Christmas and Happy Holidays!

2010-12-24T16:04:00.000-08:00

From all of us to all of you, we wish you a Merry Christmas and Happy Holidays!

(Photo show Wilshire Blvd. during a light rain shower in Beverly Hills, Calif.
on Friday evening, Dec. 17, 2010. Photo by & Copyright Will Maguire 2010. Used here with permission).

We also welcome you to revisit our Dec. 2006 blog post entitled,

'TIS THE SEASON

which features some brief remarks about winter and holiday related trademarks.

http://trademarkesq.blogspot.com/2006/12/tis-season.html

Happy New Year !

William E. Maguire
LAW OFFICES OF WILLIAM E. MAGUIRE
http://www.TrademarkEsq.com
Los Angeles, California

*** *** ***

Licensing In The Buff

2010-12-06T19:47:00.000-08:00

Licensing In The Buff, aka, "Naked Licensing"as an affirmative defense was just clarified by the 9th U.S. Circuit Court of Appeal in FreecycleSunnyvale v. The Freecycle Network (9th Cir., Nov. 24, 2010, No. 08-16382).

As stated by the 9th Circuit: “FreecycleSunnyvale is a member group of The Freecycle Network, an organization devoted to facilitating the recycling of goods. FreecycleSunnyvale filed a declaratory action against The Freecycle Network arising from a trademark licensing dispute, alleging non-infringement of The Freecycle Network’s trademarks and tortious interference with FreecycleSunnyvale’s business relations. FreecycleSunnyvale moved for partial summary judgment on the issue of whether its naked licensing defense to trademark infringement allowed it to avoid a finding of infringement as a matter of law. The Freecycle Network argued that it had established adequate quality control standards over its licensees’ services and use of the trademarks to avoid a finding of naked licensing and abandonment of its trademarks. The district court granted summary judgment to FreecycleSunnyvale.” On appeal, The Freecycle Network (hereinafter, TFN) asserted that it did exercise adequate and reasonable control over its licensee.

"Naked Licensing" defined:

“Naked Licensing” occurs when the licensor “fails to exercise adequate quality control over the licensee.” Barcamerica at 596. Citing J. Thomas McCarthy, the court also stated, “Naked licensing may result in the trademark’s ceasing to function as a symbol of quality and a controlled source (3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §17:12n.2 (4th ed. 2010)).

The First Rule:

Generally speaking, the trademark owner who licenses the right to use its trademarks to another must exercise control with respect to the quality of their trademark’s on the licensed goods or services. “It is well-established ‘[a] trademark owner may grant a license and remain protected provided quality control of the goods and services sold under the trademark by the licensee is maintained.’” Barcamerica Int’l USA Trust v. Tyfield Importers, Inc., 289 F. 3d 589 (9th Cir. 2002).

The Analysis:

The 9th Circuit’s analysis in deciding summary judgment on a claim of naked licensing includes:

1. Does the license contain an “express contractual right to inspect and supervise the licensee’s operations? In this case, TRN did not have an express license agreement and without such TRN did not have the express right to inspect and supervise FS.

2. In the absence of an express contractual right to quality control, did the licensor nevertheless demonstrate actual control through inspection or supervision?

3. Even if licensor did not itself exercise actual control, was there, in fact, “a close working relationship” between licensor and licensee “to establish adequate quality control in the absence of a formal agreement.”? Barcamerica, 289 F. ed at 597.)

The 9th Circuit, in the end, ruled “that TFN (1) did not retain express contractual control over FreecycleSunnyvale’s quality control measures, (2) did not have actual control over FreecycleSunnyvale’s quality control measures, and (3) was unreasonable in relying on FreecycleSunnyvale’s quality control measures. Therefore, we conclude that TFN engaged in naked licensing and consequently abandoned the trademarks. The district court’s grant of summary judgment in favor of FreecycleSunnyvale and against TFN is AFFIRMED.”

The Take-Aways:

1. “Put It In Writing.” After all, as the saying goes (reputedly by the legendary Studio mogul, Jack Warner), “an oral contract is not worth the paper it is written on. Include express rights of the licensor to inspect or supervise the license. There should be quality control standards that are enforced by the licensor.

2. “Stay Busy”, e.g., paper the file. Confirm phone calls or conversations in writing or via email. Keep a “Quality Control” file and maintain it.

3. “Stay Involved”, e.g., do not rely solely on your licensee’s own quality control measures.

Conclusion:

A finding and ruling of the existence of a “naked license” is just the kind of double whammy the licensor definitely wants to avoid. Not only is your license unenforceable, but your trademarks are declared “abandoned”. Pay attention to your license and licensee and you too may live to enjoy the sweet smell of success. It sure beats getting caught with your pants down running naked and without a license... and no mark to show for it.

*** *** ***

"Intellectual Property" According to DILBERT® - The Sequel

2010-09-23T06:17:00.000-07:00

This past week the L.A. Times featured a particularly funny episode in the 'corporate work world' based DILBERT® syndicated cartoon strip. *** See for yourself.

(Please Note: This comic strip has been reproduced for fair use purposes in connection with a corresponding blog post on the topic of Intellectual Property. The DILBERT® comic strip is not being used here as a trademark.)

The 'double entendre' in the second panel aside, this amusing storyline raises several intellectual property related issues, including but not limited to:

1. What is "intellectual property"?

2. Can someone really repeat/reproduce the verbal expression of another without their permission?

3. Can the name and likeness of the boss, who said the 'dumb things', be used by his employee who plans on publishing a book based entirely on the dumb things his boss has said?

We plan on answering these questions in our next posting so please stay tuned. Thank you for your interest.

*** This cartoon has been reproduced pursuant to the Fair Use principles of the U.S. Copyright Act for the purpose of this educational and scholarly article. DILBERT is the property of and Copyright Scott Adams, Inc. 2010. www.Dilbert.com. DILBERT® is the trademark of Scott Adams, Inc.

For more information on the DILBERT cartoon strip and series, check out the Wikipedia article online at: http://en.wikipedia.org/wiki/Dilbert

---

Until next time...

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

DISCLAIMER: William E. Maguire and TrademarkEsq.com are not affiliated with DILBERT® or Scott Adams, Inc.

A Primer on the Selection And Clearance of Trademarks

2010-09-17T15:50:00.000-07:00

*** As Published in the L.A. Daily Journal ***

AUGUST 5, 2010 | PERSPECTIVE

A Primer on the Selection And Clearance of Trademarks

By William E. Maguire

Surfboards, swim fins, wetsuits, t-shirts, swimsuits, sunglasses, sunscreen, bottled water, sandals, umbrellas, towels, volleyballs, ice chests - sounds like another summer day at the beach! To the savvy, business entrepreneur, however, these beach accessories are the breeding ground for commercial exploitation. Not far behind in this consumer petrie dish of sand and capitalism is the need to select a trademark by which the item exploited will be known, e.g., Hobie® surfboards, O'Neill® wetsuits, Oakley® sunglasses, Tommy Bahama® beach towels, hats, shirts and shorts, and Coppertone® sunscreen and tanning lotions. A trademark 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. Coppertone® and Speedo® are excellent examples of 'word' marks. "Tan Don't Burn" is an example of a 'slogan' mark. A logo or design such as the famous Coppertone girl and the dog is an example of a 'design' mark. 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 can also be exploited and serve as a trademark (i.e., for clothes (shirts, hats, sweaters; prerecorded dvd's and cd's; 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.

The selection of a trademark is the first step that a merchant undertakes to create an identity. The clearance of a trademark is the process of determining whether or not the trademark is available for use. Ignoring this vital step can lead to a multitude of problems and expense. A two-step process is suggested: First, conduct an online computer trademark search of the mark. This online search identifies the goods sought to be used or sold as trademarks and categorizes by classification. In the United States, the federal government has adopted the international classification system. Toys, sporting goods, volleyballs swim fins, bodyboards, and surfboards are in Class #28. Swimsuits and beach apparel and clothing are in Class #25. Backpacks, beach bags and gear bags are in Class #18. Posters, magazines, books, trading cards, and other printed matter and publications are in Class #16. DVD's, compact discs, video game software (including downloadable software over a global computer network), surfing and skateboard helmets are in Class #9. Therefore, if you are planning to sell surfboards, apparel and gear bags, then you will want to conduct an online search of Classes # 28, 25 and 18. The online search is often called a "knock-out" search because it is a quick and relatively inexpensive way to determine if the mark is taken. These searches are available at www.uspto.gov, or can be performed by commercial search firms and law firms.

If your mark appears free of conflicts after conducting an online search, the next step is the full search, which is obtained from commercial search firms. The full search will scour the federal database of trademarks at the Patent and Trademark Office, state trademark registrations, common law sources such as phone directories, the Internet and Dun & Bradstreet listings, plus Internet domain name registrations. 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. These searches are not guarantees of the absence of conflicting marks, but they do allow a merchant to make an informed decision in the clearance of a trademark.

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, it is possible to register your mark with the appropriate Secretary of State. However, if you intend to do business across state lines or in foreign commerce, then the prudent thing to do is to file for a federal trademark application with the U.S. Patent and Trademark Office located in Alexandria, Va.

An application for registration of a trademark must be filed in the name of the owner of the mark. The on-line application is both recommended and preferred by the U.S. Patent and Trademark Office at www.uspto.gov. In fact, an application filed via mail is more costly than filing on-line. The applicant must submit: an application; a drawing of the mark; and the required filing fee (which is $325 per mark per class at this time for an application filed on-line, or $375 if filed the old fashioned way). The applicant will also incur attorney fees, typically a fixed fee, should an attorney be hired to file the application. 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: Constructive notice nationwide of the registrant's claim to ownership of the mark. This eliminates the good faith defense of an infringer who claims to have lacked actual knowledge of the registered mark. Registration is also evidence of the validity of the registration; the registrant's ownership of the mark; and the registrant's exclusive right to use the mark in commerce in connection with the goods or services. In addition, registration entitles the registrant to file a lawsuit for infringement of the mark in Federal Court; prevent importation of goods bearing an infringing mark; and 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.

If your product is distributed internationally, then you must, by and large, register your mark 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. 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, which has been available since Jan. 1, 1996. 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.

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.

William E. Maguire is a sole practitioner in Los Angeles and concentrates on trademarks, copyrights and licensing. He can be reached at maguire@artnet.net, or through www.tmesq.com.

SUMMER 2010: AT THE BEACH

2010-07-30T15:39:00.000-07:00

SUMMER 2010: AT THE BEACH

A Primer on the Selection and Clearance of Trademarks

© Copyright 2010, William E. Maguire. All Rights Reserved.

INTRODUCTION:

Surfboards, swim fins, wetsuits, t-shirts, swimsuits, sunglasses, sunscreen, bottled water, sandals, umbrellas, towels, volleyballs, ice chests........ sounds like another summer day at the beach! To the savvy, business entrepreneur, however, these beach accessories/necessities are the breeding ground for commercial exploitation. Not far behind in this consumer petrie dish of sand and capitalism is the need to select a trademark by which the item exploited will be known, e.g., HOBIE® surfboards, O'NEILL® wetsuits, OAKLEY® sunglasses, TOMMY BAHAMA® beach towels, hats, shirts and shorts, VESTAL® wristwatches, MIKASA® volleyballs, and COPPERTONE® sunscreen and tanning lotions. This article will highlight some famous trademarks in the sun, sand & surf and will briefly address the legal and business issues with respect to the selection, clearance and registration of such trademarks.

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. COPPERTONE® and SPEEDO® are excellent examples of 'word' marks. "TAN DON'T BURN" is an example of a 'slogan' mark. A logo or design such as the famous COPPERTONE girl and the dog is an example of a 'design' mark. 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; prerecorded dvd's and cd's; 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.

SELECTION AND CLEARANCE

The selection of a trademark is the first step that a merchant undertakes to create an identity for his/her surfboard or swimsuit, 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 computer 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. Toys, sporting goods, volleyballs swim fins, bodyboards, and surfboards are in Class #28. Swimsuits and beach apparel and clothing are in Class #25. Backpacks, beach bags and gear bags are in Class #18. Posters, magazines, books, trading cards, and other printed matter and publications are in Class #16. DVD's, compact discs, video game software (including downloadable software over a global computer network), surfing and skateboard helmets are in Class #9. Therefore, if you are planning to sell surfboards, apparel and gear bags, then you will want to conduct an on-line search of Classes # 28, 25 and 18. 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 available on the internet, e.g., at www.uspto.gov, or can be performed by commercial search firms 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 like THOMSON COMPUMARK and CT CORSEARCH. The full search will search the federal database of trademarks at the Patent and Trademark Office, State trademark registrations, common law sources such as phone directories, the internet and Dun & Bradstreet listings, plus internet domain name registrations. 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.

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., California, it is possible to register your mark with the California Secretary of State. 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 U.S. Patent and Trademark Office located in Alexandria, Virginia.

An application for registration of a trademark must be filed in the name of the owner of the mark. The on-line application is both recommended and preferred by the USPTO at www.uspto.gov. In fact, a written application filed via U.S. First Class Mail or the like, e.g., the old fashioned way, is more costly than filing on-line. The applicant must submit: (a) an application; (b) a drawing of the mark; (c) the required filing fee (which is $325 per mark per class at this time for an application filed on-line, or $375 if filed the old fashioned way). The applicant will also incur attorneys fees, typically a fixed fee, should an attorney be hired to file the application(s). 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:

"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.

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.

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 which has been available since January 1, 1996. 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.

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 is a sole practitioner in Los Angeles and concentrates on trademarks, copyrights and licensing. He can be reached at:
email: maguire@artnet.net
web: www.TrademarkEsq.com

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

Fair Use: No Harm No Foul!

2010-07-15T11:58:00.000-07:00

With apologies to Chick Hearn, when it comes to the fair use of someone else's trademark, the courts upon finding same, are in effect, stating, "No Harm No Foul!"

Additionally, there is (Statutory) Fair Use and then there's (Nominative) Fair Use. Confused? No worries, because...

Recently, the 9th Circuit U.S. Court of Appeals discussed "nominative fair use" in the matter of:

Toyota Motor Sales U.S. A. Inc. v. Tabari, No. 07-55344, July 8, 2010.

In an opinion written by Chief Judge Kozinski, the court reversed and remanded the District Court's finding of trademark infringement. In a stern and specific ruling, Judge Kozinski stated that on remand the District Court shall use "New Kids" likelihood of confusion test to ascertain a finding of fair use and that the Sleekcraft test for likelihood of confusion was not applicable where a defendant has made a showing of nominative fair use, as in this case. To quote the Court on this point, "When considering the scope and timing of any infringement on remand, the district court must eschew application of Sleekcraft and analyze the case solely under th rubric of nominative fair use.

note: "Sleekcraft" refers to the ordinary test for likelihood of confusion in the 9th Circuit, as set forth in the case, AMF v. Sleekcraft Boats, 599 F.2d, 341, 348-49 (9th Cir. 1979).

To the facts of this case: The Defendant Tabari registered and was using the internet domain names: buyalexus.com and buyorleaselexus.com

The Tabaris were using the term Lexus to describe their business of brokering Lexus automobiles and this the Court held to be a fair use and therefore not infringing.

The "New Kids" test re nominative fair use is named after an earlier and precedential 9th Circuit case, namely, New Kids on the Block v. News Am. Publishing, Inc., 971 F.2d 302, 308 (1992). This New Kids case was later relied upon by the 9th Circuit in the 2002 case, Playboy Enterprises, Inc. v. Welles, 279 F.3d 796, 801. This test is described by the Court as follows:

"In cases where a nominative fair use defense is raised, we ask whether (1) the product was "readily identifiable" without use of the mark; (2) defendant used more of the mark than necessary; or (3) defendant falsely suggested he was sponsored or endorsed by the trademark holder... This test "evaluates the likelihood of confusion in nominative use cases."

Additionally, the court clearly indicated that as to the burden of proof with respect to this defense:

"A defendant seeking to assert nominative fair use as a defense need only show that it used the mark to refer to the trademarked good, as the Tabaris undoubtedly have here. The burden then reverts to the plaintiff to show a likelihood of confusion."

Conclusion: In this case, the 9th Circuit has made clear that the nominative fair use defense can apply to domain names that incorporate third party trademarks, just as the Playboy v. Welles case indicated that use of a mark in a website's metatags constituted nominative fair use.

*** *** ***

Respectfully submitted,

William E. Maguire, Esq.
LAW OFFICES OF WILLIAM E. MAGUIRE
Los Angeles, California

www.TrademarkEsq.com

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

Dilution by Blurring is Paved with Good Intentions

2010-06-29T14:25:00.000-07:00

Shell espresso. Tide calculators. Camel cupcakes. These are just a few of the musings of Chief Judge Kozinski in the latest 9th Circuit ruling affirming the lower District Court's summary judgment finding of dilution by blurring (Visa vs. JSL, June 28, 2010; No. 08-15206; D.C. No. CV-01-00294-LRH/LRL).

For the reader's convenience, this Opinion is incorporated herein.

Talking Points or Take Aways:

1. Dilution isn't confusion.
2. Dilution occurs when consumers form new and different associations with the plaintiff's mark.
3. Use of an identical mark provides circumstantial evidence of dilution.
4. Establishing likelihood of dilution does not require expert testimony or market surveys.
5. Good intentions alone do not negate a showing of likelihood of dilution.

Comment: With apologies to John Milton, this case does indeed point out that the defendant's "good intentions", e.g., his claim that he had no intent to dilute the plaintiff's VISA mark, "alone do not negate a showing of likelihood of dilution."

Conclusion: Dilution by Blurring is paved with Good Intentions.

6. Non-trademark use of a common English word by third parties does not undermine the uniqueness of said common English word as a trademark by the trademark holder.

7. "But dilution always involves use of a mark by a defendant that is "different" from the plaintiff's use; the injury addressed by anti-dilution law in fact occurs when marks are placed in new and different contexts, thereby weakening the mark's ability to bring to mind the plaintiff's goods or services."

*** *** ***

Respectfully submitted,

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

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

"Trademarks In The Sun, Sand and Surf"

2010-06-17T13:15:00.001-07:00

Summer 2010 is rapidly approaching with some schools already finished and others finishing up this friday. With the warm weather already here, the first official day of summer on Monday, June 21, 2010 will start out strong.

Plenty of trademarks will be out in force too from sunscreen, to hats, to bathing suits, to umbrellas, to surfboards, bodyboards, swim fins, goggles, beach towels, flip flops, t-shirts, sunglasses, etc. et al.

Can you think of some of the brands that come to mind. Coppertone, Oakley, Persol, Nike, Billabong, Quiksilver, Morey, Speedo, etc.

Each of these brands are protected by registered trademarks. If you are doing business and selling product, then you too need to think carefully about obtaining trademark registrations in the countries where you sell your goods.

If you would like to learn a bit more about the basics of registering your trademark, have a look at the following linked article:

AT THE BEACH: A Primer on the Selection and Clearance of Trademarks

http://www.trademarkesq.com/pages/article9.html

In the words of Coppertone, remember: "Tan, Don't Burn!"

William E. Maguire,
LAW OFFICES OF WILLIAM E. MAGUIRE
www.TrademarkEsq.com

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

"It's DUNKIN' DONUTS in the USA"

2010-06-01T13:27:00.000-07:00

Last month we wrote about DUNKIN' COFFEE in Spain. This month, having just returned from Boston, Mass. last week, we can accurately report that it is still, indeed, DUNKIN' DONUTS, here in the good old U.S. of A. Whew!......

The undersigned attended the Annual Meeting of the International Trademark Association (INTA) which was held last week in Boston, Mass. (May 22 - 26, 2010), and it seemed that there were DUNKIN' DONUTS locations everywhere. For a professed donut lover this was welcome news. And all the chit chat I've heard over the years about "how good the coffee is at Dunkin' Donuts!".... well, it's true. It's darned decent coffee.

So what does all this have to do with trademarks, you might ask? Plenty! Canton, Mass, as it turns out, is the headquarters of Dunkin' Donuts, a subsidiary of Dunkin' Brands, Inc. Also, Dunkin' Donuts owns a bunch of trademarks and service marks worldwide. Plus, the Trademark Manager, Terry Ursino, at Dunkin' Brands, Inc. was interviewed in the INTA Daily News last week during the INTA Annual Meeting and an excerpt of same is included below.

Dunkin' Trivia: Did you know that Dunkin Brands, Inc. also owns the Basin-Robbins ice cream brand and its trademarks? True story!

Therefore, the balance of this blog post will be a short summary of trademark related facts and figures about Dunkin' Donuts, as TrademarkEsq continues its quest to do mash ups of cool brands and trademarks.

A. Dunkin' Donuts, The Trademark, USA:

The earliest U.S. trademark registration we could locate online at uspto.gov for Dunkin' Donuts, is as follows:

Word Mark DUNKIN' DONUTS
Goods and Services IC 030. US 046. G & S: Doughnuts [and Doughnut Flour, Pastry Fillings and Toppings, Flavoring Extracts, Shortenings, ] and Coffee. FIRST USE: 19540700. USED IN ANOTHER FORM as to "Dunkin' Donuts" on doughnuts May 1952. FIRST USE IN COMMERCE: 19560700
Mark Drawing Code (3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS

Serial Number 72054025 Filing Date June 23, 1958
Current Filing Basis 1A Original Filing Basis 1A
Registration Number 0715860
Registration Date May 23, 1961

note: According to the records online at uspto.gov, Dunkin' Donuts owns at least 18 registered trademarks and service marks in the USA, plus several pending trademark applications. Thus, one can see that Trademark Registrations play an important role in protecting this famous brand name.

B. Dunkin' Donuts, Worldwide; Comments:

According to Terry Ursino at Dunkin' Brands, Inc., there are Dunkin' Donuts and Baskin-Robbins restaurants in 45 countries and that they have registered their marks more broadly than that, e.g., in more than 45 countries. This suggests that Dunkin' adheres to the strategy of both offensive and defensive trademark registrations. Offensive marks are those that apply to countries where one offers goods and/or services. Defensive registrations are for those countries where pirating and counterfeiting is anticipated and where use may not yet occur or anticipated.

C. Dunkin Donuts, The INTA Daily News interview (excerpt only):

Question: What is the single biggest challenge you face in protecting your particular brand?

Answer: "Staying one step ahead of trademark priates and cybersquatters. Our brands are world famous, and with fame comes imitation and unauthorized use of our IP."

(Source: "Defending a Delicious Brand", INTA Daily News, Wed., May 26, 2010.)

---

Just a few comments overall about things we think are fun and interesting in the area of brand names and trademarks for you to consider.

Time for a cup of joe,

William Maguire
Blog: wwwTrademarkEsq.blogspot.com
Web: www.TrademarkEsq.com

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

It's DUNKIN COFFEE in Spain!

2010-05-17T12:56:00.000-07:00

(Photo and Copyright Jim Chadwick 2010. All Rights Reserved. Used here with permission. Thanks Jim!)

A friend of mine recently returned from Barcelona, Spain and took the photo above of a DUNKIN COFFEE sign, as opposed to what we see here in the U.S., namely, DUNKIN DONUTS. Turns out it's a trademark issue. Here is some research I've done on this issue. Long story short, there is a 40 plus year old trademark registration in Spain for DONUT and similar marks owned by a Big Spanish Bakery named Panrico. Apparently, Donut is not as yet recognized as generic in Spain since this is an English term in a Spanish speaking country. But the DONUT trademark registration in Spain may be on its way out with inroads being made by KRISPY KREME DOUGHNUTS. Scintilling, eh...?!... Fortunately, here in the United States the term DONUT is generic and open to use by all for donuts... and thankfully so for all of us who love donuts.

In Spain, though, Panrico has had a stranglehold over DONUT as a trademark for some 40 years. No such issue exists in Germany, however. Note the three photos below which I took in Berlin in May 2008.

In any event, here is what my research turned up:

Date: May 17, 2010
Re: DUNKIN COFFEE Trademark Issue in Spain; Research Results

1. Spain: Dunkin' Donuts Changes Name to Dunkin' Coffee

http://www.flex-news-food.com/console/PageViewer.aspx?page=11016&str=DUNKIN%20and%20COFFEE

2. SPAIN: Panrico defends ‘Donuts’ trademark, June 11, 2007

http://www.just-food.com/news/panrico-defends-donuts-trademark_id98754.aspx

3. Article 1: No Holes in Donut Monopoly. July 2008

http://www.dyoung.com/trademarknewsletter-jul08

4. PANRICO donuts

http://www.brandsoftheworld.com/logo/panrico-donuts

5. "Mmmmmmmmm, Donuts... the difficulties of successful brand translation in a global market." By Bill Ladas, October 2007.

http://www.davenportlyons.com/legal-services/articles/531/#foot

comment: This article above by Bill Ladas is excellent!

6. Current Status of Krispy Kreme Doughnuts trademarks before the European Community Trademark Office (OHIM):

a. Class #21 trademarks for glassware (Housewares and glass, namely, mugs and coffee cups) is now Registered!

See: http://oami.europa.eu/CTMOnline/RequestManager/en_DetailCTM_NoReg

Date of Registration: May 28, 2008

Registration No.: 006179808

Trade mark name: Krispy Kreme DOUGHNUTS (figurative)

note: Krispy Kreme does own an additional Registration in 3 classes in the European Community (CTM) for its mark/logo above for:

Class #25: Clothing, t-shirts, hats, sweatshirts, scarves.

Class #30: Doughnuts, pies, cakes, buns, bagels, coffee.

Class #42: Restaurant services, specialized in the provision of doughnuts, pies, cakes, buns, bagels.

This Registration above, however, is subject to an ongoing Cancellation Action before OHIM by Panrico of Spain! FYI re said Cancellation:

Cancellation No: 000002683

Type of cancellation request: Cancellation based on invalidity

Date of filing of cancellation application: 30/01/2008

Name of applicant for cancellation: PANRICO S.L.

ID Nº of applicant for cancellation: 278854

Nationality of applicant for cancellation:

ES Representative's name: CURELL SUÑOL Representative's ID No: 10682

-----

Fortunately, as we said before, no such issue exists regarding the term DONUT in the U.S. and thankfully so or we might not be able to show these photos below...

That's all folks... for now.

William E. Maguire
Law Offices of William E. Maguire
Los Angeles, CA
www.TrademarkEsq.com

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

Apple Files For “iTunes Live” Trademark

2010-05-09T11:21:00.000-07:00

(Source: TechCrunch.com; "iTunes Live" image is the property of Apple and is used here for scholarly and academic purposes only.)

Apple Files For “iTunes Live” Trademark,
by Robin Wauters on May 9, 2010

http://techcrunch.com/2010/05/09/apple-files-for-itunes-live-trademark/

"Excerpt":

The mark consists of the stylized words “iTunes Live” (see image up top) and was filed under two separate classes:

- Online retail store services in the field of entertainment featuring prerecorded musical, audio and audiovisual content

- Entertainment services, namely, arranging and conducting of concerts and live musical performances

Read more: http://techcrunch.com/2010/05/09/apple-files-for-itunes-live-trademark/#ixzz0nSQbVNq8

---

Apple is extremely trademark savvy and most definitely, very aggressive in its approach to registration of its trademarks and service marks.

Until next time.....

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

Trademark • Copyright • Licensing

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

Genericism: To Be or Not To Be !...

2010-03-26T13:20:00.000-07:00

It is said that a trademark dies when it is determined to be generic as the common name for the goods or services it represents. Such is the case with aspirin and escalator in the U.S.. This would apply only with respect to the goods commonly associated with this term. Thus, if a bar calls itself "aspirin" such use would not be generic. Likewise, if a career based website calls itself "Escalator" it is not going to be found to be generic.

Nevertheless, it is very important to be careful not to fall into the trap of adopting a merely descriptive term lest you find yourself in generic quicksand. An arbitrary mark, e.g., one that does not describe your goods and/or services, is preferable from both a use and registration perspective.

In the meantime, here are a few resources to help you better understand what it means to be generic.

I. Trademark Manual of Examining Procedure (TMEP):

1209.01(c) Generic Terms
Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1811 (Fed. Cir. 2001); In re American Fertility Society, 188 F.3d 1341, 1346, 51 USPQ2d 1832, 1836 (Fed. Cir. 1999). These terms are incapable of functioning as registrable trademarks denoting source, and are not registrable on the Principal Register under §2(f) or on the Supplemental Register.

When a mark is comprised entirely of generic wording and some or all of the wording in the mark is the phonetic equivalent of the generic wording, the entire mark may not be disclaimed, even in the proper spelling, and approved for registration on the Supplemental Register. The disclaimer does not render an otherwise unregistrable generic mark registrable. See TMEP §§1213.06 and 1213.08(c).

http://tess2.uspto.gov/bin80/gate.exe?state=hrpm0f.2.9&f=doc#tt_T120901c.1209..0

1209.01(c)(i) Test

There is a two-part test used to determine whether a designation is generic: (1) What is the class of goods or services at issue? and (2) Does the relevant public understand the designation primarily to refer to that class of goods or services? H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 990, 228 USPQ 528, 530 (Fed. Cir. 1986). The test turns upon the primary significance that the term would have to the relevant public..........

II. U.S. Patent and Trademark Office (USPTO):

The Glossary at uspto.gov defines "generic term" as:
"terms that the relevant purchasing public understands primarily as the common or class name for the goods or services. These terms are incapable of functioning as trademarks denoting source, and are not registrable on the Principal Register under §2(f) or on the Supplemental Register. Examples include: CLASSES ONLINE for classes provided via the Internet, PIZZA.COM for pizza ordering and delivery services, and LIVE PLANTS for plant nurseries."

III. List of generic and genericized trademarks:

From Wikipedia, the free encyclopedia

http://en.wikipedia.org/wiki/List_of_generic_and_genericized_trademarks

Winter Trademarks: Lesson 1 Redux

2010-02-02T13:01:00.000-08:00

Top of Mammoth Mountain, at 11,053 feet

SCOTT® Series 4 Lightweight Aluminum Ski Poles

Skis, Boots and Poles

Skis and Poles

Winter Trademarks: Lesson 1

Ski poles, as with skis, snowboards, etc. are registrable in International Class #28 as trademarks with the U.S. Patent and Trademark Office (USPTO). Below is an extract of the current online USPTO record for SCOTT® that includes goods in three separate classes, including Class #28. This registration assures the Registrant presumptively valid trademark rights in the U.S. Other benefits also exist for the Registrant. This particular registration has also taken advantage of the optional filing opportunity provided by Section 15 of the Trademark Act which affords "incontestible" status to the Registrant. This is very much recommended and further strengthens the Registrant's exclusive position with respect to its trademark.

Word Mark SCOTT
Goods and Services IC 009. US 026. G & S: safety goggles and face shields, sunglasses and parts therefor. FIRST USE: 19710000. FIRST USE IN COMMERCE: 19710000

IC 012. US 019. G & S: bicycles, bicycle parts, motorcycle handgrips. FIRST USE: 19860500. FIRST USE IN COMMERCE: 19860500

IC 025. US 022 039. G & S: ski hats and ski gloves. FIRST USE: 19720000. FIRST USE IN COMMERCE: 19720000

IC 028. US 022. G & S: ski poles and ski pole parts, motorcycle and bicycle gloves, goggles for use in skiing and bicycling. FIRST USE: 19650000. FIRST USE IN COMMERCE: 19650000
Mark Drawing Code (1) TYPED DRAWING
Serial Number 74174900
Filing Date June 10, 1991

Registration Number 1837348
Registration Date May 24, 1994
Owner (REGISTRANT) SCOTT USA INC. CORPORATION DELAWARE 110 LEWIS STREET KETCHUM IDAHO 88340

Prior Registrations 0960780
Type of Mark TRADEMARK
Register PRINCIPAL-2(F)
Affidavit Text SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20040419.
Renewal 1ST RENEWAL 20040419
Live/Dead Indicator LIVE

The Registrant, SCOTT USA INC. also is the owner of multiple other U.S. Federal Trademark Registrations. It is no coincidence that this registration policy is adopted by such companies as Scott USA Inc. The last thing they need is a cheap competitor boosting their product off the fame of the SCOTT® trademark.

-----------------------------------------

Lesson 2 is to get out there and try some of this equipment out.

Remember: "TrademarkEsq is here for you !"

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

SIA: The Newest, Coolest Gear for Winter '10-'11 | The Outside Blog

2010-02-02T12:32:00.000-08:00

SIA: The Newest, Coolest Gear for Winter '10-'11 | The Outside Blog

Happy New Year!

2010-01-02T07:30:00.001-08:00

Opportunities await close by and beyond the horizon. TrademarkEsq wishes you much success in 2010.

Enthusiasm • Service • Integrity

Blog: TrademarkEsq.blogspot.com
web: www.TrademarkEsq.com
email: maguire@artnet.net

Happy Holidays !

2009-12-20T13:01:00.000-08:00

We wish you and yours a wonderful Holiday Season !

Merry Christmas and Happy Holidays !

May the holidays allow us all to reflect on this year, our blessings and to be
surrounded by family and friends and loved ones.

We hope you will enjoy this photo collage which we have put together for you featuring the spectacular photographic skills of highly acclaimed east coast photographer and California native, Tom Thorson.

The following set of photos is from the eastern seaboard, on Long Island, NY, from yesterday morning, Sat., Dec. 19, 2009:

And from this morning, Sunday, Dec. 20, 2009, in Long Island, N.Y., the day after the East Coast Blizzard of Sat., Dec. 19, 2009:

A local surf shop on Long Island.... snowed in !

..... and according to Tom Thorson, no kayaking today.....

All photos by Tom Thorson. Copyright Tom Thorson 2009. All Rights Reserved. Used here with permission.
( Email: tthorson1@optonline.net )

Best wishes in the New Year,

William E. Maguire,
LAW OFFICES OF WILLIAM E. MAGUIRE
Los Angeles • Pacific Palisades
www.TrademarkEsq.com
email: maguire@artnet.net

eBay Announces Changes to its VeRO Program, eff. Jan. 18, 2010

2009-12-17T14:04:00.000-08:00

(Source: eBay.com)

Dateline: Dec. 15, 2009

eBay Customer Support recently sent out an email to VeRo participants notifiying them of some changes to the VeRO process for Verified Rights Owners (VeRO). For your convenience, we are including it below verbatim:

"Dear VeRO Particpant,

We wanted to let you know that starting January 18, 2010 we are changing the process for requesting seller contact information through the VeRO Program Personal Information Agreement. Along with the seller ID and item number, we ask that you include the type of intellectual property infringement you are investigating. You may either provide a written explanation for each seller ID or use a reason code from the list below.

Please let us know if you have any questions.

Trademark – Item infringement
1.1. Item(s) is a counterfeit product which infringes the trademark
owners rights

Trademark – listing content infringement
2.1. Listing(s) contains unlawful comparison to trademark owner’s brand
name
2.2. Listing(s) contains unlawful use of trademark (e.g., unlawful use
of stylized logo in written text) ___________________ (please specify)

Copyright – item infringement
3.1. Software offered for sale in violation of an enforceable license
agreement which constitutes a copyright infringement
3.2. Item(s) infringe copyrights (e.g., a bootleg recording of live
performance, pirated copy of media such as software or movies, or
unlawful copy of copyrighted works such as text, paintings, or
sculptures).

Copyright – listing content infringement
4.1. Listing(s) uses unlawful copy of copyrighted text
4.2. Listing(s) uses unlawful copy of copyrighted image
4.3. Listing(s) uses unlawful copy of copyrighted image and text

Other infringement
5.1. Item(s) has been adjudged to infringe a valid and enforceable
patent (requires patent registration number, and identification of
claims adjudged to be infringed)
5.3. Item(s) violates a celebrity’s right of publicity
5.4. Listing(s) content violates a celebrity’s rights of publicity
5.5. Other _____________________________________________
(please specify)

Regards,
eBay VeRO Team"
--------------------------------------------

VeRO, as you may know, allows I.P. Owners and/or their counsel an effective way to take down offending auction sites on eBay that offer counterfeit goods. The undersigned has used VeRo numerous times on behalf of client's who have sought to stop third parties from selling counterfeit product that reproduces the client's trademarks and/or copyrighted artwork.

For those unfamiliar with VeRO, here is a link to the eBay webpage re same:

http://pages.ebay.com/help/tp/programs-vero-ov.html

Until next time.....

William E. Maguire
www.TrademarkEsq.com

Speaking of Trademarks: "Hats Are Back!"

2009-12-12T17:00:00.000-08:00

(Hat Image Source: pacsun.com)

Just check out the Fedoras, etc. that are catalogued under "Guys Hats & Beanies" and which are available for sale at trendy surf&skate apparel retailer, PACSUN® ! A client just forwarded this link below this morning and it is a beauty and definitely confirms that "Hats Are Back!"

http://shop.pacsun.com/guys/guys-hats/page/6/index.cat

In the next photo, the undersigned author purchased this rattan fedora recently while on vacation in Waikiki. Not a rainy day weather hat, but a beauty in the sun and for reaffirming the holiday aura.

Like we said before, Hats are Back and in a Big Way ! Check out this Hat worn by Woody Harrelson in the recent zombie cult classic, ZOMBIELAND:

(Source: Entertainment Weekly, 10.30.09, pg. 22)

And fans of the hit cable tv series, MAD MEN, know that the character of Don Draper is often attired with a Fedora (see below). As a matter of fact, the DOBBS® hat which Don Draper wears and carries in the show is known as "the Don Draper signature fedora" with a two-inch brim that's slightly wider than was in fashion at the time, according to Mad Men Costume Head, Janie Bryant, as interviewed in Entertainment Weekly, on page 65 of EW's "On the Set Special '09 issue.

(Source: Entertainment Weekly, "On the Set Special '09", page 65)

(Photo above shows Actor-Comedian, Steve Harvey, in a DOBBS® hat advertisement on the wall inside Seattle, WA Hat Merchant, BYRNIE UTZ HATS).

(Photo above shows Seattle, WA, Hat Retailer, BYRNIE UTZ HATS.)

Have you noticed the hat craze that has stealthily crept up in the fashion landscape. Rock 'n Roll artists (Pete Doherty, singer/songwriter in the band Babyshambles).

(Source: Wikipedia.org)

entertainers (Justin Timberlake), plus professional athletes (the Lakers, Lamar Odom), as well as on the street. Classic brimmed hat styles like the Trilby and Fedora are the apparent popular choices these days. Fashion labels like Armani and Prada included models wearing brimmed hats in their Spring/Summer 2005 shows (source: WSJ).

(Photo shows Lamar Odom wearing a Kangol® hat; Photo source: http://www.bestweekever.tv)

Fashion retailers such as Marc Jacob and J. Crew now carry brimmed hats. Surf/Skate Fashion Icon, Quiksilver, also has its own line of custom made brimmed hats for active youth.

For the benefit of the audience, we will now summarize some of the basic trademark issues one should consider when going into business to sell products and how one goes about protecting their brand name so that third parties are not only discouraged from using the same name, but also providing the owner with defensible rights to go after counterfeiters and copiers.

One trademark registration in the U.S. for "CASUAL HATS, CAPS EXCLUDING BASEBALL CAPS, AND BERETS", in International Class #25, is for the trademark, "KANGOL (and design)", which indicates that the mark includes both words and graphic elements, aka, "composite mark". As part of the public record on USPTO, below is the image of this composite mark.

QUIKSILVER® also has a trademark registration that includes "hats" in Intl. Class #25, as well as other apparel related goods, as follows: "Footwear; headwear; wetsuits; swimwear; t-shirts; shirts and casual tops with long and short sleeves; sleeveless shirts; sleeveless tops; sweat tops; jackets; coats; shorts; board shorts; walk shorts; long pants; trousers; jeans; dresses; skirts; ski wear and snowboard wear, namely, ski pants, ski jackets, snowboard pants, and snowboard jackets; underwear; socks; belts; gloves; beanies; hats; visors; caps; surf hoods; boots; shoes; thonged and strapped sandals.

(Image above shows the "Quiksilver Maestro Fedora"; Source: Swell.com)

The obvious benefit of a U.S. Federal trademark registration on the Principal Register is that it provides the owner with presumptively valid rights throughout the United States. This is a huge benefit entitling the owner to exclusivity of use. While "use" remains the basis of trademark rights in the U.S., your rights at common law are limited to the area of your geographic exploitation of the mark. Thus, why would you risk selling goods under a brand across several states when you could gain exclusive rights throughout the U.S. ?

There are other benefits to a trademark registration and we invite the reader to visit our website and read some of the "ARTICLES" posted therein at: http://tmesq.com

***** ***** *****
The author's own personal favorite hat, a MALLORY® Fedora, which he has owned since 1974 when he bought it secondhand at the Salvation Army Thrift Shop in Santa Monica, Calif. Shown here after just very recently having been cleaned, blocked and repaired at Baron Hats, in Burbank, Calif.

(Photo below shows the author wearing the very same hat in college at UCSB in June 1976.)

(Photo below shows Burbank, Calif. based hat retailer, "BARON HATS". "Hollywood's Hat Maker".)

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

SPF Trademarks: "Another L.A. Heat Wave"

2009-10-22T15:06:00.000-07:00

Dateline: Thursday, October 22, 2009; Los Angeles, Calif.

RE: "Another L.A. Heat Wave !"

It's like 80 plus degrees Fahrenheit 'again' outside this afternoon ! Whew ! In a long sleeve button down oxford dress shirt with a t-shirt on underneath, it is WARM out there !

Thus, sunscreen protection is once again in order. Recently, a colleague of mine who has braved the sun on the east and west coasts, and has since burned himself on the beaches of Brazil, has indicated his sunscreen choice as any 50 plus spf factored product by BANANA BOAT®. An excellent choice, this product is available in both lotion and spray.

http://www.bananaboat.com/

Another option is the perennial favorite, COPPERTONE®, also available in both lotion and spray.

http://www.Coppertone.com

Why SPRAY ?.... it's alot easier to nail down the spf on your feet with spray, as well as your back.

A new entrant favored by many surfers and beach lifeguards is WATERMAN'S® sunscreen which is touted for its water repellency and for its resiliency in staying put on the job instead of washing off in the ocean.

http://www.WatermansAppliedScience.com

Additionally, WATERMAN'S is social media savvy and has its own Facebook page for its adoring fans ! http://www.facebook.com/reqs.php#/watermans

Finally, SEA & SKI®, which basically ruled the 60's and which has been trying to climb back up in the ratings ever since, is the "old school" choice for baby boomers. With its very own unique aroma, this product is clearly distinguishable from its competitors. One must, therefore, wonder if this trademark owner has ever considered obtaining a trademark registration for the "smell" of SEA & SKI® sunscreen lotion. To my knowledge, this has never been undertaken.

For some interesting background and history on the SEA & SKI brand, check out this article online at:
http://bit.ly/grTo3

or

http://www.brandlandusa.com/2009/08/09/whatever-happened-to-sea-once-the-nations-most-popular-suntan-brand/

B. The Registration Basics

Sunscreen is generally registrable in International Class #3. Each of the trademarks mentioned above enjoy the benefits of a U.S. Federal Trademark Registration on the Principal Register in Intl. Class #3.

One Registration for sunscreen that is public information and available online at www.uspto.gov is the earliest trademark registration for COPPERTONE, as follows:

Word Mark COPPERTONE
Goods and Services IC 003. US 051. G & S: [ TANNING BUTTER, ] SUNTAN OIL, SUNTAN LOTION, [ SUNTAN CREAM, SKI CREAM, ] AND EXTRA PROTECTION SUNTAN LOTION. FIRST USE: 19441100. FIRST USE IN COMMERCE: 19450300 Mark Drawing Code (1) TYPED DRAWING
Serial Number 72375781 Filing Date November 12, 1970 Current Filing Basis 1A Original Filing Basis 1A Registration Number 0917825 Registration Date August 3, 1971
Owner (REGISTRANT) PLOUGH, INC. CORPORATION DELAWARE 3022 JACKSON AVE. MEMPHIS TENNESSEE 38101
(LAST LISTED OWNER) SCHERING-PLOUGH HEALTHCARE PRODUCTS, INC. CORPORATION BY CHANGE OF NAME FROM DELAWARE 3030 JACKSON AVENUE MEMPHIS TENNESSEE 38151

Assignment Recorded ASSIGNMENT RECORDED Type of Mark TRADEMARK Register PRINCIPAL Affidavit Text SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20010731. Renewal 2ND RENEWAL 20010731

And check out the USPTO record for the earliest SEA & SKI® suntan lotion trademark registration !

Word Mark SEA & SKI
Goods and Services IC 003. US 051. G & S: SUNTAN LOTIONS. FIRST USE: 19531204. FIRST USE IN COMMERCE: 19531204
Mark Drawing Code (1) TYPED DRAWING
Serial Number 72262354
Filing Date January 11, 1967
Current Filing Basis 1A
Original Filing Basis 1A
Published for Opposition October 17, 1967
Registration Number 0841768
Registration Date January 2, 1968
Owner (REGISTRANT) SEA & SKI CORPORATION CORPORATION DELAWARE 975 TIMBER WAY, P.O. BOX 2837 RENO NEVADA 89505
(LAST LISTED OWNER) FAULDING HEALTHCARE (IP) HOLDINGS, INC. CORPORATION DELAWARE Underdale, 115 Sheriff Street South Australia 5041 AUSTRALIA

Assignment Recorded ASSIGNMENT RECORDED
Prior Registrations 0636263;0807614;AND OTHERS
Type of Mark TRADEMARK
Register PRINCIPAL
Affidavit Text SECT 15. SECTION 8(10-YR) 20080108.
Renewal 1ST RENEWAL 20080108
Live/Dead Indicator LIVE

C. Get Your Registration

If you would like more information about the registration of trademarks, esp. with respect to trademarks in the sun, sand and surf, we invite you to check out our Beach Trademarks Webpage at: www.BeachEsq.com

So get out there if you can. The water is still warm and beach weather is back at us. Grab your spf, beach towel, hat, bathing suit and some water to stay hydrated and get out there.

Until next time.....

William E. Maguire,
www.TrademarkEsq.com
Los Angeles, Calif.

Mammoth Mountain: Opening Day, Oct. 16, 2009 !

2009-10-14T12:24:00.000-07:00

Dateline: Friday, October 16, 2009

The promise of "Free Skiing and Snowboarding" at Mammoth drew a crowd all right...

(Photo by Tim Gallagher. Chair #1 at MM at 9 a.m.)

(Photo by Will Maguire. Chair #1 at 1 p.m.)

Wow ! It was MADNESS ! It was OUT OF CONTROL ! It was the ROAD TRIP of the year for tweens and twentysomething snowboarders who drove to Mammoth, well, in droves. Arriving as early as 7 a.m. for the free day of skiing and snowboarding. And by sundown they were all gone and back on the road home. This we know because on Saturday, Oct. 17th, the crowd was down by 90 plus percent ! Just check out the following photo of Chair #1 at 10 a.m. on Sat., Oct. 17, 2009.

(Photo by Will Maguire.)
-------------------------

(And as previously posted on Oct. 14, 2009)

Wow ! As per the MM Facebook Fan Page today, 10.14.09: "Mammoth Mountain It's official - Mammoth Mountain will be opening this Friday, October 16th! 2nd earliest opening EVER!"

(Photo source: Mammoth Mountain.)

Trademark Significance: One of several U.S. Federal Trademark and Service marks owned by this Mountain Resort is the following multi-class composite (words and graphic elements) trademark and service mark.

Mark: "MAMMOTH MOUNTAIN CALIFORNIA (and design)"

(Source: www.uspto.gov)

Goods and Services: IC 025. US 022 039. G & S: Clothing, namely, t-shirts, [sweaters,] sweatshirts, hats, jackets, ski gloves, and turtleneck shirts. FIRST USE: 19530831. FIRST USE IN COMMERCE: 19530831

IC 028. US 022 023 038 050. G & S: Toys and sporting goods, namely, ski poles, goggles, stuff animals, board games, yo-yos, and Christmas tree decorations. FIRST USE: 19530831. FIRST USE IN COMMERCE: 19530831

IC 035. US 100 101 102. G & S: Retail store services in connection with ski equipment and ski apparel. FIRST USE: 19650000. FIRST USE IN COMMERCE: 19650000

IC 041. US 100 101 107. G & S: Recreational services, namely, downhill ski facilities, cross-country ski facilities and trails, snowmobiling facilities and trails, snow-shoeing trails, [equestrian facilities,] and golf course services. FIRST USE: 19781231. FIRST USE IN COMMERCE: 19781231

IC 042. US 100 101. G & S: Resort hotel and restaurant services.
FIRST USE: 19781231. FIRST USE IN COMMERCE: 19781231
Mark Drawing Code: (3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS

Serial Number: 76140275 Filing Date: October 2, 2000
Current Filing Basis: 1A Original Filing Basis: 1A
Published for Opposition: March 11, 2003
Registration Number: 2720400 Registration Date: June 3, 2003
Owner (REGISTRANT) Mammoth Mountain Ski Area CORPORATION CALIFORNIA P.O. Box 24 Mammoth Lakes CALIFORNIA 93546

(LAST LISTED OWNER) MAMMOTH MOUNTAIN SKI AREA, LLC LIMITED LIABILITY COMPANY DELAWARE 1 MINARET ROAD MAMMOTH LAKES CALIFORNIA 93546
Assignment Recorded ASSIGNMENT RECORDED

Prior Registrations 1939530
Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "MAMMOTH MOUNTAIN CALIFORNIA" APART FROM THE MARK AS SHOWN
Type of Mark TRADEMARK. SERVICE MARK
Register PRINCIPAL
Affidavit Text SECT 15. SECT 8 (6-YR).
Live/Dead Indicator LIVE

So get your boards, skis, boots and gear ready !

The following photos are a few of this season's offerings in alpine all mountain shaped skis from the likes of famous Ski Companies like ROSSIGNOL® and NORDICA® observed by the undersigned recently at the grand opening last weekend in Santa Monica of the new location of Doc's Ski Haus.

Trademark Significance. In the case of ROSSIGNOL®, here is just one active U.S. Federal Trademark Registration for skis from the TESS database online at the U.S. Patent and Trademark Office, which reinforces the industry recognition of the value of having a presumptively valid and now incontestable trademark registration to protect this famous brand:

Word Mark: ROSSIGNOL
Translations: "ROSSIGNOL" IS A FRENCH WORD FOR "NIGHTINGALE."
Goods and Services: IC 028. US 022. G & S: SNOW SKIS AND DETACHABLE PARTS AND ACCESSORIES THEREFOR-NAMELY, BINDINGS, METAL EDGES, ANTI-SLIP SEALSKINS AND PLUSHBANDS, SKI POLES, AND DISCS FOR SKI POLES.
FIRST USE: 19370700. FIRST USE IN COMMERCE: 19671000
Mark Drawing Code (1) TYPED DRAWING
Serial Number 72400164 Filing Date: August 13, 1971
Current Filing Basis 1A Original Filing Basis 1A
Registration Number: 0954365 Registration Date: March 6, 1973
Owner (REGISTRANT) SKIS ROSSIGNOL S.A. CLUB ROSSIGNOL S.A. CORPORATION FRANCE VOIRON (ISERE) FRANCE

(LAST LISTED OWNER) ROSSIGNOL SKI COMPANY, INC. CORPORATION BY ASSIGNMENT DELAWARE 426 INDUSTRIAL AVE. WILLISTON VERMONT 05495. ASSIGNMENT RECORDED

Prior Registrations 0887443
Type of Mark TRADEMARK
Register PRINCIPAL
Affidavit Text SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20030331.
Renewal 2ND RENEWAL 20030331

And below, two shots of the new PROPHET™ 100 "Freeride" skis for this season. Yours for only $649!

The Prophet 100 is described by its maker as follows: "The 100 has power, stability and even the float of a big mountain ski yet maintains the precision, agility and responsiveness of a carving ski. The result is versatility like no other ski in it’s class which has earned it top awards from magazine product tests around the world." http://lineskis.com/skis/prophet-100

For more information about winter trademarks, we invite you to visit our webpage,
www.SnowEsq.com

Have fun this winter and don't forget to always wear a helmet (aka, brain bucket)!

Will Maguire,
www.TrademarkEsq.com
***** ***** ***** ***** *****

DILBERT® on Patents vs. Trademarks

2009-09-10T11:01:00.000-07:00

Who Knew ?!.... that DILBERT® even had an opinion about patents and trademarks !.... but apparently it is true ! This featured topic will no doubt have patent and trademark lawyers wagging their tongues over who is numero uno!......

DISCLAIMER: TrademarkEsq is neither affiliated or sponsored by DILBERT®, or its creator Scott Adams. The posting of this particular cartoon strip is for scholarly and academic fair use purposes only.

DILBERT® is a copyright and trademark of Scott Adams.

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

The Trademark Perspective: LEVEL 26, the "Digi-Novel"

2009-09-02T08:13:00.000-07:00

In this blog post, we will be introducing a new multimedia publishing and entertainment property called LEVEL 26, authored by CSI Crime Scene Investigation creator, Anthony Zuiker. This property combines traditional print media along with film and internet tie in's to create a truly 21st century multimedia project. For the trademark practitioner and the producer of entertainment, this property represents a unique opportunity to view a real life example of how one might go about protecting such a property so that it is armored up to withstand assaults by infringers, counterfeiters and the like.

I. LEVEL 26

An article this morning on Yahoo, in part, introduces this property as follows:

"Digi-novel" combines book, movie and website

By Michelle Nichols - Wed Sep 2, 2009 8:04AM EDT
NEW YORK (Reuters) -

"Is it a book? Is it a movie? Is it a website?

Actually it's all three.

Anthony Zuiker, creator of the "CSI: Crime Scene Investigation" U.S. television series, is releasing what he calls a "digi-novel" combining all three media -- and giving a jolt to traditional book publishing...."

http://tech.yahoo.com/news/nm/20090902/tc_nm/us_books_digital_1

The Official trailer introducing LEVEL 26 can also be viewed at:

http://www.youtube.com/user/insidelevel26

II. Trademark Protection Strategy

Upon examining the U.S. Patent and Trademark Office (USPTO) database, we discovered two separate multiple class applications for LEVEL 26 for both goods and services. The first application is in standard character format (previously known as, block letter format), which allows the applicant to use the mark in any font upon registration. The second application is in composite format, which means that it is composed of both words and graphic elements. This latter application is limited to its stylized format and thus does not provide as broad of protection as the first application. These two applications together do, however, provide a broad spectrum of potential protection for the applicant.

(1) Standard Character Format Application

Word Mark: LEVEL 26

Goods and Services IC 006. US 002 012 013 014 023 025 050. G & S: Metal key chains; figurines, statues, statuettes, sculptures and trophies made of common metals and their alloys; fixed metallic towel dispensers; metal printed collectors' bottle caps not made of precious metal
IC 009. US 021 023 026 036 038. G & S: Calculators; cameras; sunglasses; eyeglass cases; radios; radios incorporating clocks; decorative magnets; telephones; computer game cartridges; prerecorded audio and video cassettes featuring drama, comedy, mystery, and romance; prerecorded CD-ROMs featuring drama, comedy, mystery, and romance; interactive video game software; interactive video game programs; prerecorded audio and video tapes and computer discs featuring drama, comedy, mystery, and romance; video game cartridges; headphones; computer game programs; electric switch plates; computer mouse; mouse pads; pre-recorded audio and video cassettes and discs and tapes featuring music, musical performances, dramatic performances, stories, live action television series and animated television series; screensaver computer programs; computer game joysticks; pre-recorded interactive video game computer software; pre-recorded musical, comedy, and drama audio and video recordings; screen saver programs; audio mixing boards; and sound mixing boards, motion picture films featuring comedy, drama, action, adventure and animation, and motion picture films for broadcast on television featuring comedy, drama, action, adventure and animation; stereo headphones; batteries; cordless telephones; hand-held calculators; audio cassette and cd players; cd rom computer game discs; hand-held karaoke players, telephone and radio pagers; short motion picture film cassettes featuring comedy, drama, action, adventure and animation to be used with hand-held viewers or projectors; video cassette recorders and players, compact disc players, digital audio tape recorders and players, electronic diaries; radios; mouse pads; eyeglasses, sunglasses and cases therefore; audio tapes and booklets sold as a unit featuring comedy, drama, action, adventure, animation and music information. computer programs, namely, software linking digitized video and audio media to a global computer information network; Computer game consoles for use with an external display screen or monitor; video, computer and interactive game programs; video, computer and interactive game programs; video game cartridges and cassettes; cellular telephone accessories, namely, hands-free devices, cellular telephone covers and cellular telephone face covers; encoded magnetic cards, namely, phone cards, credit cards, cash cards, debit cards and magnetically encoded key cards; and decorative magnets; downloadable ring tones, ring backs, animated ringers, video ringers and animated screensavers via the Internet and wireless devices; Electronic publications, namely, books featuring fiction recorded on computer media; Downloadable electronic publications in the nature of books in the field of fiction

IC 014. US 002 027 028 050. G & S: jewelry, namely bracelets, ankle bracelets, brooches, ear clips, earrings, rings, necklaces, charms, lockets, clocks, watches, and clocks incorporating radios

IC 016. US 002 005 022 023 029 037 038 050. G & S: Book Series in Fiction; stickers; bumper stickers; rubber stamps; notebooks; coloring books; gift wrapping paper; greeting cards; comic books; books in the fields of drama, comedy, mystery, and romance; notepads; paper party decorations; pencils; pens; postcards; calendars; trading cards; photographs; stationery; animation cells; and posters; metal money clips

IC 018. US 001 002 003 022 041. G & S: Trunks, suitcases and traveling bags; goods made from leather and imitations of leather, namely, athletic bags, baby backpacks, backpacks, beach bags, book bags, diaper bags, duffel bags, gym bags, tote bags, fanny packs, knapsacks, waist packs, shopping bags, pocketbooks, handbags, shoulder bags, cosmetic bags sold empty, attaché cases, brief-cases, brief-case type portfolios, wallets, billfolds, key cases, coin cases, namely, coin purses, sport bags; umbrellas, sun umbrellas, parasols, small leather and plastic goods, namely, credit card cases, vanity cases sold empty and walking sticks; pet bags, pet leashes, and pet collars

IC 020. US 002 013 022 025 032 050. G & S: Furniture, mirrors, picture frames, and plastic key chains; statues, statuettes and figurines all made of cold cast resin, plaster and plastic

IC 021. US 002 013 023 029 030 033 040 050. G & S: glass, ceramic and earthenware goods, namely, beverage glassware, coffee mugs, mugs, jugs, bowls, plates, coasters, coffee cups and cups; demitasee sets consisting of cups and saucers; sugar and creamer sets; infant cups; cookie jars; ceramic, glass and china figurines; non-electric coffee pots not of precious metal; wastepaper baskets; ice buckets; plastic buckets; shower caddies; tea caddies; cake molds; scrapers for household purposes, and cake servers; canteens; champagne buckets; plastic coasters, cocktail shakers; thermal insulated containers for food or beverages; cookie cutters, cork screws; corn cob holders; plastic water bottles sold empty; vacuum bottles; decanters; drinking flasks; gardening gloves; rubber household gloves; dinnerware, namely, paper plates and paper cups; brushes, namely, hair brushes, tooth brushes, clothes brushes; kitchen utensils, namely, rolling pins, spatulas, turners, whisks, and kitchen containers, soap containers, household food containers and lunch boxes; plastic cups and plates; plastic water bottles, sold empty; and pet bowls for eating and drinking

IC 024. US 042 050. G & S: home furnishings, namely, household linens; bed blankets; kitchen towels; beach towels; bath towels; bedding, namely, sheets, comforters, bed skirts, and shams; bed spreads; bed sheets; fitted bed sheets; comforter covers; and pillow cases

IC 025. US 022 039. G & S: Clothing, namely, shirts, skirts, dresses, jackets, coats, pajamas, sleep shirts, robes; Children's clothing and baby clothing, namely, shirts, shorts, pants, and rompers; T-shirts, tank tops, hosiery, bathing suits and jeans; Sportswear, namely, sports tops, sports bottoms, shorts, sweatpants, sweatshirts, sweatsuits, unitards, running shorts, running pants, and shirts; Footwear, namely, shoes, slippers, boots, and sandals; Hats, baseball caps, mittens, gloves, socks, scarves, and bandannas

IC 028. US 022 023 038 050. G & S: Toys and sporting goods, including games and playthings, namely, action figures and accessories therefor; plush toys; balloons; bathtub toys; ride-on toys; equipment sold as a unit for playing card games; toy vehicles; dolls; flying discs; electronic hand-held game unit; game equipment sold as a unit for playing a board game, a card game, a manipulative game, a parlor game and an action type target game; stand alone video output game machines; jigsaw and manipulative puzzles; paper face masks; skateboards; ice skates; water squirting toys; balls, namely, playground balls, soccer balls, baseballs, basketballs; baseball gloves; swimming floats for recreational use; kickboard flotation devices for recreational use; surfboards; swim boards for recreational use; swim fins; toy bakeware and toy cookware; toy banks; toy snow globes; and Christmas tree ornaments

IC 038. US 100 101 104. G & S: Communications and telecommunications services, namely, wireless broadband communication services; Wireless communication services, namely, transmission of text, audio, video and graphics to mobile phones and other wireless devices; Wireless electronic transmission of voice signals, data, images and information; Audio broadcasting; Mobile radio communication; Radio broadcasting; Television broadcasting; Text and numeric wireless digital messaging services; Transmission of information by electronic communications networks; Video broadcasting

IC 041. US 100 101 107. G & S: Entertainment services, namely, the production of motion pictures and online electronic publishing of electronic books for distribution via the internet; Providing on-line publications in the nature of an e-book in the field of fiction

Standard Characters Claimed Mark Drawing Code (4) STANDARD CHARACTER MARK Serial Number 77711668 Filing Date April 10, 2009 Current Filing Basis 1B Original Filing Basis 1B Published for Opposition September 29, 2009 Owner (APPLICANT) Uberzuiker, Inc. CORPORATION CALIFORNIA c/o Morris Yorn barnes and Levine 2000 Ave of the Stars Los Angeles CALIFORNIA 90067 Attorney of Record Jonathan Pollack Type of Mark TRADEMARK. SERVICE MARK Register PRINCIPAL Live/Dead Indicator LIVE

II. Composite Format

Word Mark: LEVEL 26

Goods and Services IC 006. US 002 012 013 014 023 025 050. G & S: Metal key chains; figurines, statues, statuettes, sculptures and trophies made of common metals and their alloys; fixed metallic towel dispensers; metal printed collectors' bottle caps not made of precious metal

IC 009. US 021 023 026 036 038. G & S: Calculators; cameras; sunglasses; eyeglass cases; radios; radios incorporating clocks; decorative magnets; telephones; computer game cartridges; prerecorded audio and video cassettes featuring drama, comedy, mystery, and romance; prerecorded CD-ROMs featuring drama, comedy, mystery, and romance; interactive video game software; interactive video game programs; prerecorded audio and video tapes and computer discs featuring drama, comedy, mystery, and romance; video game cartridges; headphones; computer game programs; electric switch plates; computer mouse; mouse pads; pre-recorded audio and video cassettes and discs and tapes featuring music, musical performances, dramatic performances, stories, live action television series and animated television series; screensaver computer programs; computer game joysticks; pre-recorded interactive video game computer software; pre-recorded musical, comedy, and drama audio and video recordings; screen saver programs; audio mixing boards; and sound mixing boards, motion picture films featuring comedy, drama, action, adventure and animation, and motion picture films for broadcast on television featuring comedy, drama, action, adventure and animation; stereo headphones; batteries; cordless telephones; hand-held calculators; audio cassette and cd players; cd rom computer game discs; hand-held karaoke players, telephone and radio pagers; short motion picture film cassettes featuring comedy, drama, action, adventure and animation to be used with hand-held viewers or projectors; video cassette recorders and players, compact disc players, digital audio tape recorders and players, electronic diaries; radios; mouse pads; eyeglasses, sunglasses and cases therefore; audio tapes and booklets sold as a unit featuring comedy, drama, action, adventure, animation and music information. computer programs, namely, software linking digitized video and audio media to a global computer information network; Computer game consoles for use with an external display screen or monitor; video, computer and interactive game programs; video, computer and interactive game programs; video game cartridges and cassettes; cellular telephone accessories, namely, hands-free devices, cellular telephone covers and cellular telephone face covers; encoded magnetic cards, namely, phone cards, credit cards, cash cards, debit cards and magnetically encoded key cards; and decorative magnets; downloadable ring tones, ring backs, animated ringers, video ringers and animated screensavers via the Internet and wireless devices; Electronic publications, namely, books featuring fiction recorded on computer media; Downloadable electronic publications in the nature of books in the field of fiction

IC 014. US 002 027 028 050. G & S: jewelry, namely, bracelets, ankle bracelets, brooches, ear clips, earrings, rings, necklaces, charms, lockets, clocks, watches, and clocks incorporating radios

IC 016. US 002 005 022 023 029 037 038 050. G & S: Book Series in Fiction; stickers; bumper stickers; rubber stamps; notebooks; coloring books; gift wrapping paper; greeting cards; comic books; books in the fields of drama, comedy, mystery, and romance; notepads; paper party decorations; pencils; pens; postcards; calendars; trading cards; photographs; stationery; animation cells; and posters; metal money clips

IC 018. US 001 002 003 022 041. G & S: Trunks, suitcases and traveling bags; goods made from leather and imitations of leather, namely, athletic bags, baby backpacks, backpacks, beach bags, book bags, diaper bags, duffel bags, gym bags, tote bags, fanny packs, knapsacks, waist packs, shopping bags, pocketbooks, handbags, shoulder bags, cosmetic bags sold empty, attaché cases, brief-cases, brief-case type portfolios, wallets, billfolds, key cases, coin cases, namely, coin purses, sport bags; umbrellas, sun umbrellas, parasols, small leather and plastic goods, namely, credit card cases, vanity cases sold empty and walking sticks; pet bags, pet leashes, and pet collars

IC 020. US 002 013 022 025 032 050. G & S: Furniture, mirrors, picture frames, and plastic key chains; statues, statuettes and figurines all made of cold cast resin, plaster and plastic

IC 021. US 002 013 023 029 030 033 040 050. G & S: glass, ceramic and earthenware goods, namely, beverage glassware, coffee mugs, mugs, jugs, bowls, plates, coasters, coffee cups and cups; demitasee sets consisting of cups and saucers; sugar and creamer sets; infant cups; cookie jars; ceramic, glass and china figurines; non-electric coffee pots not of precious metal; wastepaper baskets; ice buckets; plastic buckets; shower caddies; tea caddies; cake molds; scrapers for household purposes, and cake servers; canteens; champagne buckets; plastic coasters, cocktail shakers; thermal insulated containers for food or beverages; cookie cutters, cork screws; corn cob holders; plastic water bottles sold empty; vacuum bottles; decanters; drinking flasks; gardening gloves; rubber household gloves; dinnerware; namely, paper plates and paper cups; brushes, namely, hair brushes, tooth brushes, clothes brushes; kitchen utensils, namely, rolling pins, spatulas, turners, whisks, and kitchen containers, soap containers, household food containers and lunch boxes; plastic cups and plates; plastic water bottles, sold empty; and pet bowls for eating and drinking

IC 024. US 042 050. G & S: home furnishings, namely, household linens; bed blankets; kitchen towels; beach towels; bath towels; bedding, namely, sheets, comforters, bed skirts, and shams; bed spreads; bed sheets; fitted bed sheets; comforter covers; and pillow cases

IC 025. US 022 039. G & S: Clothing, namely, shirts, skirts, dresses, jackets, coats, pajamas, sleep shirts, robes; Children's clothing and baby clothing, namely, shirts, shorts, pants, and rompers; T-shirts, tank tops, hosiery, bathing suits and jeans; Sportswear, namely, sports tops, sports bottoms, shorts, sweatpants, sweatshirts, sweatsuits, unitards, running shorts, running pants, and shirts; Footwear, namely, shoes, slippers, boots, and sandals; Hats, baseball caps, mittens, gloves, socks, scarves, and bandannas

IC 028. US 022 023 038 050. G & S: Toys and sporting goods, including games and playthings, namely, action figures and accessories therefor; plush toys; balloons; bathtub toys; ride-on toys; equipment sold as a unit for playing card games; toy vehicles; dolls; flying discs; electronic hand-held game unit; game equipment sold as a unit for playing a board game, a card game, a manipulative game, a parlor game and an action type target game; stand alone video output game machines; jigsaw and manipulative puzzles; paper face masks; skateboards; ice skates; water squirting toys; balls, namely, playground balls, soccer balls, baseballs, basketballs; baseball gloves; swimming floats for recreational use; kickboard flotation devices for recreational use; surfboards; swim boards for recreational use; swim fins; toy bakeware and toy cookware; toy banks; toy snow globes; and Christmas tree ornaments

IC 038. US 100 101 104. G & S: Communications and telecommunications services, namely, wireless broadband communication services; Wireless communication services, namely, transmission of text, audio, video and graphics to mobile phones and other wireless devices; Wireless electronic transmission of voice signals, data, images and information; Audio broadcasting; Mobile radio communication; Radio broadcasting; Television broadcasting; Text and numeric wireless digital messaging services; Transmission of information by electronic communications networks; Video broadcasting

IC 041. US 100 101 107. G & S: Entertainment services, namely, the production of motion pictures and online electronic publishing of electronic books for distribution via the internet; Providing on-line publications in the nature of an e-book in the field of fiction
Mark Drawing Code (3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS
Design Search Code 26.11.21 - Rectangles that are completely or partially shaded
Serial Number 77744860
Filing Date May 26, 2009
Current Filing Basis 1B
Original Filing Basis 1B
Published for Opposition September 29, 2009
Owner (APPLICANT) Uberzuiker, Inc. CORPORATION CALIFORNIA c/o Morris Yorn barnes and Levine 2000 Ave of the Stars Los Angeles CALIFORNIA 90067
Attorney of Record Jonathan Pollack
Description of Mark Color is not claimed as a feature of the mark. The mark consists of a stylized version of the words "LEVEL 26" in which the second "E" is backwards.
Type of Mark TRADEMARK. SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator LIVE

III. Conclusion

It is, therefore, obvious that savvy creators of entertainment properties are counseled to protect their endeavors by employing legal strategies such as trademarks. Something to think about is the fact that both of these applications were filed in April 2009, based on 'intent to use'(because the marks are not yet in actual use in commerce), and only very recently were both of these applications approved for publication by the USPTO.

As for the strategy of filing in both standard character format and composite format, this is an accepted practice in the entertainment industry, as well as in other industries.

There are other strategies that are employed that are not covered in this blog post, some of which are addressed in articles posted on our website at:

http://www.TrademarkEsq.com

which we invite you to take a look at.

Until next time.....

William E. Maguire,
Los Angeles, Calif.

http://TrademarkEsq.blogspot.com

p.s. Bonus Content:

*** Check out the Official LEVEL 26 website identified below ***

http://www.Level26.com

L26 Guest Blogger: Duane Swierczynski

Publishing by Anthony E. Zuiker on September 2nd

"As you know, we’re less than a week away from the publication of Level 26: Dark Origins. What better time to introduce you to my co-writer on the project, the extremely talented Duane Swierczynski? Duane has written both thrilling whodunits and exciting graphic novels, so I knew the story of Steve Dark and Sqweegel would be in good hands with him. Check out Duane’s blog below to read about how Sqweegel crept inside of his head…

Anthony E. Zuiker"

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

Bud Light Goes To College.....

2009-08-26T15:08:00.000-07:00

How do you make Budweiser ? Send him to school. Can you blame him if his son, Bud Light, wants to wear the school colors.....

But seriously, unless you've been out cold for the past week because you've been overindulging on 'blue and gold' Bud Light beer, then you have heard the latest ruckus between Anheuser-Busch (aka, A-B) and this time, college administrators across the country who are all stirred up, shaken and bothered by the latest Budweiser Marketing campaign which will be serving up cans of beer in your favorite college team's colors... just in time for this Fall's tailgate parties at Football games. Woo Hoo ! Who wouldn't want to crush the can of your opponent !

In any event, the following are just a few of the news publications, on and off line, blogs and other pundits who have chimed in on this controversial topic. Will this lead to greater underage drinking ? Is this simply an aggressive marketing campaign ? Or is it an act of unfair competition as proscribed by the Federal Lanham Act's Sec. 43(a) with respect to Anheuser-Busch creating a false impression of sponsorship or affiliation with the college's by using their school colors. Isn't this something that A-B should be paying a license for instead of riding on the coattails of each college's good will and fame. At press time for this blog, it should be noted that each College has been invited or instructed by Anheuser-Busch that they can object and stop the use of their school's colors just by sending in a formal letter to the brewer. This writer is unsure that this relieves the brewer of liability but it is certainly evidence of mitigation.

So, without further adieu, let's hop to the pundits:

1. http://www.slashfood.com/2009/08/21/bud-light-team-color-fan-cans-cause-a-stir/

2. Twitter:
RT @jsciar1 New team-color bud light cans place a gun to the heads of college students and force them to consume flavorless beer http://tiny.cc/E9bhm

http://online.wsj.com/article_email/SB125081310939148053-lMyQjAxMDI5NTIwMTgyMTEzWj.html

3. FTC Criticizes College-Themed Cans in Anheuser-Busch Marketing Efforts

http://online.wsj.com/article/SB125116535930755741.html?mod=googlenews_wsj

4. Anheuser-Busch pulls promotions at some colleges

http://www.miamiherald.com/news/nation/AP/story/1201750.html

5. UW unhappy with college-themed beer cans

By Don Walker of the Journal Sentinel
Aug. 25, 2009

A controversial Anheuser-Busch InBev NV marketing campaign that appears squarely aimed at young drinkers has the University of Wisconsin and others seeing red.

http://www.jsonline.com/blogs/sports/54799942.html

6. Show your true colors with Bud Light? Is it green?

11:30 pm August 25, 2009, by mdowney

http://blogs.ajc.com/get-schooled-blog/2009/08/25/show-your-true-colors-with-bud-light-is-it-green/?cxntfid=blogs_get_schooled_blog

7. [STFU] Universities not so proud of Bud Light cans sporting school colors

August 21st, 2009 by Dave Studinski

http://www.bewilderedsociety.com/blog/2009/08/universities-not-so-proud-of-bud-light-cans-sporting-school-colors/

8. Drink Like A Champion Today: College Themed Bud Light Cans

August 21st, 2009
From the Wall Street Journal comes news that there are now Bud Light cans in your favorite team’s colors. Kick. Ass.

http://drunkentailgate.com/

--------------

That concludes this compilation of comments on the Bud Light College Colors Marketing Campaign currently in progress for the Fall College Football season for which it was intended. As one pundit has observed, is this really just another example of aggressive, albeit corporate, "Ambusch" marketing ?!....

Time will tell, of course. In any event, the publicity associated with this campaign will likely endear college students to Bud Light and increase sales. This writer predicts an uptick in Bud Light sales this fall as a result thereof.

Until next time,

William E. Maguire
http://TrademarkEsq.blogspot.com

*** Be sure to check out website as well at: www.TrademarkEsq.com.

Thanks !

Brands, Logos and Trademarks !

2009-08-13T13:11:00.000-07:00

Introduction:

A. Brands and Logos

Check out this article posted online courtesy of Yahoo ! Finance and CNN Money:

http://finance.yahoo.com/career-work/article/107520/whats-in-a-new-logo.html

The above article is a good place to start when thinking about adopting a logo or changing the logo you're already using. It cites examples of very well known corporate brands or logos such as Starbucks, Apple, UPS and others.

B. Trademarks

1. What Is a Trademark or Servicemark ?

A trademark is a word, name, symbol or device which is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms "trademark" and "mark" are commonly used to refer to both trademarks and servicemarks.

Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark. Trademarks which are used in interstate or foreign commerce may be registered with the Patent and Trademark Office...
(Source: http://www.uspto.gov/web/offices/pac/doc/general/whatis.htm )

2. The Relationship between Brands/Logos and Trademarks

It is the legal device, as defined above, and known as a trademark that protects the brand. The brand is the commercially intangible yet recognizable source for the goods and/or services that are of interest to the consumer making the purchasing decision. The trademark, on the other hand, is like the shrink wrapping or the umbrella or deflector shield that protects the brand from being used by third parties for the purpose of unfairly competing with the owner of the brand and trademark.

In other words, in a competitive commercial business environment that is a staple of a capitalist society, it is imperative that brands be protected by trademarks.

If you are interested in protecting your brand, logos with a trademark, please contact the undersigned. We also welcome you to visit our website where we have several articles posted that may be of interest to you concerning the selection, clearance and registration of trademarks.

Until next time.....

William E. Maguire,
Los Angeles, Calif.
http://www.TrademarkEsq.com

Note: The logos or brands highlighted in this blog post are the property of their respective owners and have only been used here as examples of brands or logos. The undersigned does not claim any rights of ownership to said brands or logos.

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

2009-07-31T11:20:00.001-07:00

"The Presidential Beer Summit, July 30, 2009: The Trademark Perspective"

President Barack Obama, Professor Henry Louis Gates Jr. and Sergeant James Crowley toast at the start of their meeting in the Rose Garden of the White House, July 30, 2009. Official White House Photo by Pete Souza.

By now everyone not holed up in a cave in Afghanistan has heard about the Obama Beer Fest. What you have not read, however, is the Trademark Perspective of this Lager Drenched Event ! This blog post shall then devote itself, after a few preliminary remarks and introductory photo and links, to the specific beer brands and their trademarks that were featured at this Summit of Beers. After all, here at TrademarkEsq, it is the Trademarks which protect these now even more famous brands from being hijacked by pirates, counterfeiters and infringers.

A. Preliminary Remarks About The Summit Itself

"For the record, Bud Light: Obama; Sam Adams Light: Gates; Blue Moon: Crowley; and nonalcoholic beer, Buckler: Biden."
(source: http://news.yahoo.com/s/ap/us_obama_harvard_scholar)

One Popular Media Blogger has even characterized Obama's role in this mediation as more "Bartender-in-Chief". "OBAMA MORE BARTENDER THAN MEDIATOR AT BEER SUMMIT: President Barack Obama played bartender-in-chief on Thursday at a “beer summit” of the main players in a racially charged case that he hoped would be a “positive lesson” in a national dialogue on race. Obama, the first black U.S. president, said it was a “friendly, thoughtful” conversation over beer at the White House with prominent Harvard scholar Henry Louis Gates, who is black, and police Sergeant James Crowley, who is white." (Source: http://www.lbnelert.com)

Perhaps the most salient and important comment to emerge from this dialogue is as follows:

"We agreed to move forward," Crowley said later when asked whether anything had been solved. "I think what you had today was two gentlemen agreeing to disagree on a particular issue. I don't think that we spent too much time dwelling on the past. We spent a lot of time discussing the future." (By PHILIP ELLIOTT, Associated Press Writer Philip Elliott, Associated Press Writer – Fri Jul 31, 8:10 am ET).

B. The Trademark Perspective in the USA

1. BUD LIGHT: President Barack Obama's choice

(a) BUD LIGHT ® (in standard character format)
in International Class #32 for "Beer"
Registration Number 1261873
Registration Date December 20, 1983
Owner (REGISTRANT) Anheuser-Busch, Incorporated CORPORATION
SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20040109.
Renewal 1ST RENEWAL 20040109

(b) "BUD LIGHT (and design)"®
in Intl. Class #32 for "Beer"

Registration Number 3165341
Registration Date October 31, 2006
Owner (REGISTRANT) ANHEUSER-BUSCH, INCORPORATED

2. BUCKLER®: V.P. Joe Biden

(a). BUCKLER® (in standard character format)
in Intl. Class #32 for "BEERS; MINERAL AND AERATED WATERS; NON-ALCOHOLIC BEERS AND MALT BEVERAGES; FRUIT JUICES AND FRUIT JUICE DRINKS; SYRUPS USED IN THE PREPARATION OF SOFT DRINKS"
Registration Number 1553153
Registration Date August 22, 1989
Owner (REGISTRANT) HEINEKEN BROUWERIJEN B.V. PRIVATE LIMITED COMPANY NETHERLANDS 2E WETERINGPLANTSOEN 21 AMSTERDAM NETHERLANDS
SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20090408.

(b) BUCKLER (and design)"®

in Intl. Class #32 for "BEERS; MINERAL AND AERATED WATERS; NON-ALCOHOLIC BEERS AND MALT BEVERAGES; FRUIT JUICES AND FRUIT JUICE DRINKS; SYRUPS USED IN THE PREPARATION OF SOFT DRINKS"
Registration Number 1562471
Registration Date October 24, 1989
Description of Mark: THE DRAWING IS LINED FOR THE COLORS GOLD, BLUE, RED AND SILVER WHICH ARE CLAIMED AS TRADE MARK FEATURES.
Owner (REGISTRANT) HEINEKEN BROUWERIJEN B.V. PRIVATE LIMITED COMPANY NETHERLANDS
SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20090601.

3. BLUE MOON®: Police Officer Crowley
in Intl. Class #32 for "Beer"
Registration Number 3119888
Registration Date July 25, 2006
Owner (REGISTRANT) Coors Global Properties, Inc. CORPORATION COLORADO Suite 170 165 South Union Boulevard Lakewood COLORADO 80228 (LAST LISTED OWNER) MILLERCOORS LLC LTD LIAB CO DELAWARE
(LAST LISTED OWNER) MILLERCOORS LLC LTD LIAB CO DELAWARE

(b) "BLUE MOON (and design)"®

in Intl. Class #16 for "Paper banners, posters, printed paper signs, namely, table tents, paper display cards, paper pennants, pens, stickers, coasters made of paper, paper napkins, cardboard floor display units for merchandising products and note paper." FIRST USE: 19950000. FIRST USE IN COMMERCE: 19950000

in Intl. Class #21 for "Beverage glassware, bottle openers, pitchers, plastic buckets, plastic cups, serving trays not of precious metal, bottle stands, mugs, cups." FIRST USE: 19970100. FIRST USE IN COMMERCE: 19970100

in Intl. Class #25 for "Clothing, namely, shirts, t-shirts, golf shirts, sweatshirts, denim shirts, aprons, tops, shorts, sweatpants, tank tops, jackets, wind resistant jackets, hats and caps, excluding clothing for children." FIRST USE: 19970100. FIRST USE IN COMMERCE: 19970100

in Intl. Class #32 for "Beer." FIRST USE: 19950000. FIRST USE IN COMMERCE: 19950000

Registration Number 3439303
Registration Date June 3, 2008
(LAST LISTED OWNER) MILLERCOORS LLC LTD LIAB CO DELAWARE

Note: In addition, there are at least two other design marks that are registered by this same Owner in connection with the BLUE MOON brand, as follows:

4. SAM ADAMS LIGHT®: Prof. Gates

SAM ADAMS LIGHT®
in Intl. Class #32 for "beverages, namely beer and ale."
Registration Number 2597646
Registration Date July 23, 2002
Other Data: The name "SAM ADAMS" in the mark does not identify a living individual.
Owner (REGISTRANT) BOSTON BEER CORPORATION CORPORATION MASSACHUSETTS 75 Arlington Street Boston MASSACHUSETTS 02130
(LAST LISTED OWNER) BBC BRANDS, LLC LIMITED LIABILITY COMPANY, COMMONWEALTH OF MASSACHUSETTS

note: as most everyone know, the preceding and additional brand name, SAM ADAMS, is also registered separately, as are numerous otherSAM ADAMS formative marks, including the following stylized label:

C. Comments on the Trademark Perspective of these Beer Companies and their Brands

The first noticeable and common trait that each of these brands share is that they are protected both in standard character format (or as previously known, in block letter format) and in composite format, e.g., with a design or logo. This has obvious ramifications in purely trademark enforcement parlance, not to mention for the purposes of marketing.

Additionally, it is not a coincidence that each of these brands are protected by trademark registrations on the Principal Register with the U.S. Patent and Trademark Office. The Registrations provide a number of advantages in the U.S., including but not limited to, exclusiveness to the trademark within the U.S., presumptive validity, and after 5 years of use, the opportunity to seek "Incontestable" status via the Sec. 15 Affidavit.

Finally, we will leave it to conspiracy theorists to discuss the import, if any, with respect to the beer brand selections of the parties to this first ever Presidential Beer Summit, aka "Beer Mediation".

Postscript: Rumor has it a Beer Pong Summit is to be held in Helsinki, Finland.

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

Until next time,....please remember:

TrademarkEsq is here for you !

Respectfully submitted,

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

THE CON IS ON !

2009-07-23T11:42:00.000-07:00

2009: Friday, July 24, 2009

The San Diego Comic-Con in ON ! July 23, - 26, 2009.

Already word is out that Preview Nite, last nite, Wed., July 22, was waaay toooo crowded ! As many people as the Con hosts on fridays. It's business as usual, though, with reports of the G4 film crew setting up at the DC booth last nite.

2009 Comments, ongoing.....

a. One friend reports that he saw an interview on the news with some people camped out all night for Comic Con, basically to get in and get some free toys.

b. And Jim Chadwick reports, "today's forecast for the San Diego Convention Center area: more of the same; hot and muggy. Humidity at 6:30 AM stands at 89%. Depending on what site you check, it's either going to be partly cloudy or sunny, High of about 78, low of 69."

In any case, in this blog post we are going to share some photos of COMIC-CON past and present because only photographs and comment can even partially capture this event. Please consider this blog post a work in progress as we will be updating it as this year's CON unfolds
in all its glory and revelry and surprises.

Dateline: Saturday, July 25, 2009 (Day Three):

Da Jammies (check out this new kids cartoon show at: http://www.4kids.tv/da-jammies

The Cast and Crew of Da Jammies at conclusion of their panel at Comic-Con '09:

Dateline: Friday, July 24, 2009 (Day Two):

Dateline: July 23, 2009 and just in courtesy of Asako Suzuki. Nice kicks, Asako ! Asako's footwear of choice by Converse.

2008:

2007:

2005:

"Girard College" Rescues Creative Steps Kids Group !

2009-07-13T09:21:00.000-07:00

Good News about the Philadelphia Pool story:

Valley Swim Club-Huntingdon Valley: Are Racism Allegations Fair?

by Tina Kells | July 9, 2009 at 03:46 pm

An investigation is underway, "US senator Arlen Specter announced plans to launch a discrimination investigation against The Valley Swim Club, in suburban Philadelphia, PA."

*** x-reference: http://www.thevalleyclub.com

and "Girard College boarding school offered their pool to the Creative Steps kids, and local ice cream parlor Gumdrops & Sprinkles gave the day camp a party of candy and ice cream making for free."

http://www.nowpublic.com/world/valley-swim-club-huntingdon-valley-are-racism-allegations-fair

http://www.girardcollege.com

In addition, since the incident was first reported, there has been an outpouring of support for the Creative Kids Day Camp. In this regard, please see:

http://www.nowpublic.com/world/day-camp-director-overwhelmed-offers-support-her-kids

*** Full Disclosure/Statement from The Valley Club on their website:

"The Valley Club is deeply troubled by the recent allegations of racism which are completely untrue.

We had originally agreed to invite the camps to use our facility, knowing full well that the children from the camps were from multi-ethnic backgrounds. Unfortunately, we quickly learned that we underestimated the capacity of our facilities and realized that we could not accommodate the number of children from these camps. All funds were returned to the camps and we will re-evaluate the issue at a later date to determine whether it can be feasible in the future.

Our Valley Club deplores discrimination in any form, as is evidenced by our multi-ethnic and diverse membership. Whatever comments may or may not have been made by an individual member is an opinion not shared by The Valley Club Board."

Comment: The Valley Club's position has continued to change from (1) an initial return of the money paid by the Creative Steps" group without explanation; followed by (2) that their group was deemed unacceptable to the Valley Club because, and I quote, it would change the "complexion" of the club; and finally (3) that the Creative Steps group was denied access to the club pool facilities for reasons of "safety".

*** In any case, God Bless "Girard College" for stepping up immediately upon hearing of this incident and offering its pool to the "Creative Steps" kids group.

"If This Is True, It's An Outrage !

2009-07-09T15:15:00.000-07:00

If This Is True, It's An Outrage ! Philadelphia kids denied access to pool seemingly based on 'race'.

July 9, 2009, per Yahoo! News:

http://cosmos.bcst.yahoo.com/up/player/popup/index.php?cl=14414863

If you agree, please forward or contact your congressman or senator or others in a position to help these kids out.

Thank you for your consideration.

Sincerely,

William E. Maguire,
TrademarkEsq

INTA - Seattle, May 16 - 20, 2009

2009-05-29T12:02:00.000-07:00

(The photo above shows the front of the Washington Convention Center, the venue of this year's Annual Meeting of the INTA) and the adjacent atrium roof which it shares with the Cheesecake Factory directly across the street)

The Annual Meeting of the International Trademark Association (INTA) was held this year in Seattle, Washington. This is the third time the INTA has been held in this Amazing City in the Pacific Northwest, all three of which I've been fortunate to attend.

Below are several photographs which predominantly display the sights and scenes of this truly American city. Rather than focus on the topics of the conference seminars... yeah... which we can cover on another occasion, this blog post is intended simply to entertain and enlighten the reader on some of the highlights of our recent trip. So sit back and relax and make room for some coffee, donuts and pizza... and baseball and boating and festivals.

(Photo above shows signage above the famed Pike St. Market)

(Photo above shows a typical bouquet of fresh flowers available at the Pike St. Mkt.)

(Photo below shows what the Pike St. Market is truly famous for: fresh fish. At this time of year, especially, you can see for yourself the catch of the day, Copper River Salmon, which is very expensive, as you can tell from the posted prices)

(Photo below is the signage for TOP POT DONUTS, which has a great backstory, and which this writer serendipitously just happened along while walking toward the Space Needle when he spied this shop on 5th St., http://www.TopPotDonuts.com)

(This next photo shows the TOP POT DONUTS Classic, Old School "Glazed Ring" Donut, sans one delicious bite)

(Batter up ! This next photo was taken above home plate, well above home plate, at Seattle's Safeco Field, home of the Mariners. Photo taken 05.18.09, during Mariner's home game vs. Angels. Two highlights: Ken Griffey, Jr. got his 2,700th MLB hit; and the Angels blasted the Mariners, 10 - 6.

(Later that same evening, downtown, in the rain, I captured this photo of a downtown street scene lit up with neon and lights with the PUBLIC MARKET of Pike St. in the distance)

(On Tuesday, May 19th, I visited Starbucks HQ and got a private tour by a colleague who works there and was fortunate to be there when they were introducing the new ice cream supplier for the STARBUCKS ice cream line, namely, Unilever... and the results were delicious with caramel and creme, as well as their famed "Java Chip" being served up for all the employees and guests. Additionally, I got to try a cup of coffee brewed from Starbucks recent individual trademark and patent protected coffee machine, namely, CLOVER®. Consensus: Smooth and Strong)

(On Friday, May 22nd, I visited the site of the Seattle Center and Space Needle, where the first day of the annual 3 day Northwest Folklore Festival was in progress and lo and behold, another Seattle based Donut shop had a booth there. "Mighty-O donuts" captured my attention with their banner and their philosophy of: Vegan - Organic - No Trans Fats. Kind of the Kurt Kobain take on donut making, as opposed to TOP POT which is really a combination of Starbucks and Dunkin Donuts.

(Sat., May 23rd, below, shows the Seattle skyline on our return from a brief boat trip out to Bainbridge Island and back)

(Around the corner from TOP POT DONUTS on 5th St., I spied this restaurant sign that said "Serious pie." What was I to think ? Naturally, I was hoping for fresh peach pie. I was wrong as you will see in the next photo showing the pizza pie I enjoyed there on 05.23.09)

(So I told the manager-owner, that I had tried Pizzeria Mozza in L.A. and he said that theirs was better... so I put them to the test and you know what, "This pizza below was Better !" Thin crust baked in a wood fired oven, this seriously spectacular pizza pie included: Buffalo Mozzarella, San Marzano Tomato, plus I added Coppa (a thinly sliced and cured ham.
Wow !)

And so this story comes to an end with a Saturday evening flight back to LAX, on 05.23, and then I noticed off the port wing.... Mt. Rainier:

Until the next post.....

William E. Maguire,
Los Angeles, Calif.
http://www.TrademarkEsq.com

The Famous DOBBS Trademark Case

2009-05-04T16:02:00.001-07:00

(Photo shows a classic DOBBS® Grey Fedora hat; Photo source: eBay)

Our Hat is off to the Court on this one. DOBBS® hats, of course, are right up there with Stetson® and Mallory® in the annals of Hatdom.

In this brief blog post, we will comment on a seminal trademark case from 1933 that is a virtual classic trademark case discussing surnames as trademarks and the efficacy of disclaimers. For illustrative and fair use purposes only, several photos of a classic Dobbs® fedora hat and DOBBS® hat box are also included herein for your academic and scholarly attention.

This writer first became familiar with the famed Dobbs hat case in the Fall of 1990 while studying trademark law under the guidance of Adj. Professors Ray Geraldson and Mark V.B. Partridge at the John Marshall Law School in Chicago, Illinois, in the school's LL.M, Intellectual Property program. The DOBBS® Hat case was a case that was briefed and discussed early on that fall in the substantive course of Trademark Law. The case citation for this Dobbs matter is Hat Corp. of America v. D.L. Davis Corp., 4 F. Supp. 613 (D.Conn.1933) (hereinafter, DOBBS Case). In the Dobbs case, the court granted an absolute injunction forbidding the use of the name "Dobbs" on hats by the junior user. This extended even to a disclaimer proposed by the defendant. The disclaimer used by the defendant had been: "Not connected with the original Dobbs". But the Court reasoned that: "Confusion is created by the very explanation to avert confusion."

As for the particular facts of the case with respect to the plaintiff's prior rights to the DOBBS® trademark and the defendant's use of "Wm H. Dobbs" on the sweatbands of hats and on the hat boxes, the court stated: "The facts of the case at bar are such that Wm. H. Dobbs himself could not use the name "Dobbs" in the marking of hats publicly offered for sale or in advertising hats for sale, without deceiving and confusing the public to the plaintiff's damage."

The court then directed its attention to the disclaimer, referred to in this case as an "explanatory suffix", and whether its use would suffice to avoid the confusion. DOBBS was understood by all parties to be the surname of the founder of the Dobbs hat company (Dobbs & Co.), the predecessor in interest to the current plaintiff. With respect to the Dobbs surname, the court ruled: "The surname alone remains in the public mind as an identification mark about which cluster associated ideas such as quality and style in headgear. The name has become a purely impersonal symbol." The court further reasoned, with respect to the defendant's use of "Wm. H. Dobbs", that: Precisely the same images are evoked by the sight or sound of "Wm. H. Dobbs," and the effect is no different if followed by such a phrase as "not connected with the original Dobbs. For the eye of the purchaser, long taught to identify the product by the name Dobbs alone, promptly registers the identity as complete upon catching the surname without noticing and pondering the significance of initials or suffix." For this and like reasons, the court then reasoned: "Confusion is created by the very explanation intended to avert confusion."

(Photo of DOBBS® hat and hat box; Photo source: eBay)

The photo above shows the classic evidence of use of a trademark in connection with the sale of hats, e.g., on the hat box, and as seen in the photo below, in the lining on the inside of the hat.

(Photo of underside of DOBBS® hat which shows the use of the trademark, DOBBS®, on the inner lining; Photo source: eBay).

Finally and notably, the court was so convinced of the likelihood of confusion that it issued a very expansive and exacting injunction, as follows: "...that an injunction may issue against this defendant, without the limitations to which Wm. H. Dobbs would be entitled, wholly restraining it from all use whatsoever of the name "Dobbs," whether refixed by initials or given names, or suffixed by explanations, either imprinted on any hats which it manufactures or sells or offers for sale, or on the containers thereof, or in advertising the same or otherwise in connection with its operations in the manufacture, distribution, and sale of hats."

---
Postscript: Attached hereto is one of the long standing and renewed DOBBS® registration records from uspto.gov. Interestingly, a few of the original registrations have been cancelled for failure to renew. Nevertheless, use seems to date back to as early as 1908 for this famous DOBBS® hat trademark.

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

Until next time,....please remember:

TrademarkEsq is here for you !

Respectfully submitted,

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

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

WATCHMEN: The Verdict

2009-03-09T22:09:00.000-07:00

Sunday, March 8, 2009
Westwood Village,
The Village Theater
First screening of the day

WATCHMEN: The Verdict

"It is EPIC in length. It is Spectacular. It is Long. It is Violent. It is Magnificent. It is Grandiose. It is worth seeing. But set aside at least 4 to 5 hours and do not drink any liquids for at least an hour before the movie starts...There are scenes where you just want to scream, "This Movie Rocks" ! or "Cool!" or "Wow!" Other times you want to yawn and speed up the reel. In short, I liked it ! And I am glad it is over too. The moral of the story: The ends justify the means."

*** *** ***

(Photo source: Billboard at Barrington and Olympic Blvd, in West Los Angeles. Photo by Will Maguire. WATCHMEN™ is a trademark of it's proprietary rights owner).

You've seen nothing yet ! The bombardment of Advertising and Promotion for this Superhero Feature Film is just getting started. Just check out the Watchmen movie website from Warner Bros. (http://watchmenmovie.warnerbros.com/) with its Blade Runner-esque soundtrack. Wow !

(Graphic Film Credit Billing Block.gif above is: Copyright 2008 Warner Bros. Entertainment Inc. All Rights Reserved)

Also, see:

The Official Watchmen movie blog at:
http://rss.warnerbros.com/watchmen

and

the Facebook "Watchmen" Group at:
http://www.facebook.com/watchmen

The Watchmen Movie Trailer at:
http://www.apple.com/trailers/wb/watchmen

and

The Official Magazine of the San Diego Comic-Con at:
http://www.comic-con.org/common/cc_magazine.shtml

and

Entertainment Weekly Magazine, Feb. 27, 2009 Issue
http://www.ew.com/ew/article/0,,20213273,00.html

and

Comics Buyer's Guide, #1652, April 2009
http://www.cbgxtra.com/Default.aspx?tabid=42&qs=1&view=topic&forumid=24&postid=49421

The film, based on the graphic novel by Alan Moore, first published as a limited twelve issue comic book series in 1986 and 1987 by DC Comics (see: http://en.wikipedia.org/wiki/Watchmen), is being directed by the same director as the film "300", namely, Zack Snyder.

The plot brings to mind a theme I've stressed for many years:

"Super Heroes Need Protection Too !"
http://www.trademarkesq.com/pages/article2.html

Therein lies the coincidence but also the extent of any substantive similarity. The super hero as intellectual property does indeed require the thought and care of a competent intellectual property attorney. As for the film and its fictional super hero team, the Watchmen, we will all just have to wait and watch...

If you are a creator of super heroes or the like, we invite you to take a look at our website which features ARTICLES of interest, including, of course, our flagpole article, "Super Heroes Need Protection Too !"

Remember: "Protect What's Yours !"

TrademarkEsq is here for you !
http://www.TrademarkEsq.com

"ZAP! POW! BAM!" at the Skirball Center: The Verdict !

2009-03-07T15:20:00.000-08:00

The photo below shows the artwork at the entrance to the ZAP! POW! BAM! Comic Book Exhibit:

This next photo shows some newspaper headlines from the same Exhibit:

Some Explanatory Text re the Heralded "Golden Age" of Comics:

A close-up of some very creative display dividers at said Exhibit:

The undersigned shadowed by the Dick Tracy Exhibit at the Skirball's companion exhibit featuring Superheroes in Film:

The Verdict: "WOW!... ZAP! BAM! POW! Go See This Show NOW!"

Updated, Sat., March 7, 2009

So there I was listening to Jerry Robinson, the creator of THE JOKER (as in the Batman comic book series) chat with Mark Evanier the other nite, Thursday, March 6th, at the Skirball Cultural Center in Los Angeles.... and in response to a question from the audience, Jerry says that in deciding on the Joker as the protagonist-villain as counterpoint to Batman, that "Names are so Important in Comics"! Well, that is Divine Reassurance for any trademark attorney, to be sure. Comic book character names are so important in comics. And the guy who created THE JOKER said it ! Helloooooo ! Thank you !

And that is EXACTLY why registering your character names as trademarks is so important, if possible ! I rest my case.

(Source: Skirball.org)

(Source: Skirball.org)

Dateline: Feb. 19, 2009 through August 9, 2009.

Venue: Skirball Cultural Center, Los Angeles, Calif.

What: "ZAP! POW! BAM! The Superhero: The Golden Age of Comic Books, 1938 - 1950"

(Source: Skirball.org)

Web Link: http://www.skirball.org/index.php?option=com_ccevents&scope=exbt&task=detail&oid=34&ccmenu=v2hhdcdzie9u

Among the Super Heroes featured are Superman, Batman and Wonder Woman in this exhibit which "showcases work by the Jewish artists and writers who created heroic comic book characters during the late 1930s and '40s." (Westways Magazine, March/April 2009, page 52).

(Source: Skirball.org)

Additionally, there is a companion exhibit produced by the Skirball Center itself called, "It's A Bird, It's A Plane, It's Superheroes of Film and Television!, curated by Ms. Erin Clancey (Palisadian-Post, Feb. 26, 2009, page 11).
http://www.palisadespost.com/content/index.cfm?Story_ID=4679

Per the Skirball Center's website, "Lights, Camera, Action examines the close relationship and parallel development of the comic book and motion picture industries. Objects on view include the original 1966 Batcycle from the Batman television series on loan from the Petersen Automotive Museum, along with vintage movie posters on loan from the Academy of Motion Pictures Arts and Sciences, original comic books on loan from the University of California, Riverside, and movie and television memorabilia."

(Pictured above: Batcycle • Collection of Margie and Robert E. Petersen)

This exhibit is said to include vintage posters and movie costumes from such films as the 1978 Superman movie starring Christopher Reeve, as well as Michael Keaton's Batman costume. No additional admission fee is charged for this exhibit. More bang for your buck! Tickets are $10 for adults, $7 for seniors and students, and $5 for children 2 - 12. For more information, call 310.440.4564 or on check it out on the web at www.skirball.org

Finally, for the comic book afficionado, you may want to calendar attending the chat session at the Skirball on Thursday, March 5th at 8 pm when Golden Age Artist Jerry Robinson will discuss "The Golden Age of Comic Books". This should be a real treat because Robinson is credited with creating Batman's most famous adversary, The Joker, as well as naming Batman's protege, Robin the Boy Wonder.

If you are not yet enticed to see this exhibit, check out the following copy of Jerry Robinson's original sketch from 1940 of The Joker. Note the red shading of the Joker's lips to illustrate the character's makeup.

(Source: Palisadespost.com; From the Collection of Jerry Robinson).

Zap! Bam! Pow!... and get yourself to this show !

And don't forget that "Superheroes Need Protection Too!" http://www.trademarkesq.com/pages/article2.html

For that, TrademarkEsq is here for you !

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

WHY I LOVE CHICAGO !

2009-03-02T15:19:00.000-08:00

(Painting & Source: "A Sunday on La Grande Jatte" by Georges Seurat;
http://www.artic.edu/artaccess/AA_Impressionist/pages/IMP_7.shtml)
*** The original painting is on display as part of the permanent collection at the Art Institute of Chicago ***

Let me name the reasons:

•The Fugitive
http://en.wikipedia.org/wiki/The_Fugitive_(1993_film)
•The Blue Brothers
http://en.wikipedia.org/wiki/The_Blues_Brothers_(film)

•Second City
http://www.secondcity.com
•Navy Pier
http://www.navypier.com/visit_us/directions.html
•Chicago Blues
http://en.wikipedia.org/wiki/Chicago_blues
•Muddy Waters
http://en.wikipedia.org/wiki/Muddy_Waters
•Buddy Guy's Legends
http://buddyguys.com

•Billy Goat Tavern
http://www.billygoattavern.com

•Lake Michigan
http://en.wikipedia.org/wiki/Lake_Michigan
•The University of Chicago
http://www.uchicago.edu
•Museum of Science and Industry
http://www.msichicago.org

•Deep Dish Pizza
http://chicago.citysearch.com/bestof/winners/pizza
•Ed Debevic's (the original)
http://www.eddebevics.com
•Carson's Ribs
http://www.ribs.com
•Scoozi !
http://www.leye.com/restaurants/directory/scoozi
•Taylor Street
http://www.ristorante.net/taylor.htm
•Tufano's Vernon Park Tap
http://www.yelp.com/biz/tufanos-vernon-park-tap-chicago
*** note: Call in advance to see if they will be serving the "Eggplant Parmesan"... it is to die for ! Trust me !
•Spinach Pizza at Bacino's http://www.bacinos.com/

•Rush Street
http://en.wikipedia.org/wiki/Rush_Street_(Chicago)
•Oak St. Beach
http://en.wikipedia.org/wiki/Oak_Street_Beach
•Grant Park
http://en.wikipedia.org/wiki/Grant_Park_(Chicago)

... and besides my nephew's name is Grant !

Soldier Field, e.g., "Da Bears !"...

•Stunning Architecture
http://architecture.about.com/od/usa/p/chicago.htm

•The Art Institute of Chicago
http://www.artic.edu

*** including the World Famous and Utterly Remarkable Postimpressionist Painting by Georges Seurat, namely, "A Sunday on La Grande Jatte" http://www.artic.edu/artaccess/AA_Impressionist/pages/IMP_7.shtml

•Sculpture

(An Untitled Sculpture by Pablo Picasso)
http://en.wikipedia.org/wiki/Chicago_Picasso

•The Chagall Wall
http://www.worldofstock.com/closeups/AAB1217.php

•The Shedd Aquarium

•Will Maguire with "Man With Fish"

(Photo by Gary Borquez, Esq., CEO, Wheelhouse Legal Search,
Photo taken in May, 2007 during Annual Meeting of Intl. Trademark Assn.)

•The Standard Club
http://www.stclub.org
•Printer's Row
http://en.wikipedia.org/wiki/Printer%27s_Row,_Chicago

•The Cubs and Wrigley Field
http://chicago.cubs.mlb.com
•The Bulls Run of 1990-91 to the NBA Championship
•The Last Season at Comiskey Park, Summer 1990:
http://en.wikipedia.org/wiki/Comiskey_Park

•Michigan Avenue
http://en.wikipedia.org/wiki/Michigan_Avenue_(Chicago)
•Marshall Field's
http://en.wikipedia.org/wiki/Marshall_Field's
•The Sears Tower
http://www.searstower.com

and, of course, my alma mater, The John Marshall Law School, where I earned my LL.M (Masters of Law) degree in Intellectual Property in June of 1991. http://www.jmls.edu

If you've never been to Chicago, GO !

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

Hollywood in Winter !

2009-02-10T11:24:00.000-08:00

(Photo by and Copyright Nick Steers 2009. All Rights Reserved. Used here with permission. Reproduction without consent is strictly prohibited).

Wow ! Not much you can say about this photo ! After four days of winter storms, with snow levels approaching 2,000 feet, this was the view from the westside yesterday afternoon, 02.09.09.

Photo details:
Camera: Olympus E-500 with a telephoto lens.
Time of day: Taken about 3pm, Monday, Feb. 9, 2009.
Location: At the corner of Centinela and Ocean Park Blvd,
in Santa Monica, Calif.
View: Northeast of Santa Monica, Century City in middle, Hollywood Sign
in background followed by San Gabriel Mountains.

Many thanks to Photographer, Nick Steers, for sharing this amazing photograph with us !

Enjoy !

JURY SERVICE 101

2009-02-05T16:46:00.000-08:00

(Photo of the new LAX Adjacent Superior Court of California, in El Segundo, Calif. Photo by Will Maguire. Used here with permission.)

The undersigned was recently called for jury service and so we thought we would write up a little bit about this civic service experience.

JURY SERVICE 101: From Selection to Peremptory Challenge

Dec. 25, 2008. Merry Christmas morning. I collect my mail and there it is, that envelope I've seen several times before in years past from the Superior Court of Calif, Office of the Jury Commissioner. Inside, the invitation to appear for Jury Service beginning Monday, February 2, 2009 through Thursday, Feb. 5, 2009.

January 31st and Feb. 1, 2009. The first two days I call in the nite before as instructed and am told not to appear.

Feb. 3, 2009. I call the 800 number after 6 pm as I have done the previous two evenings and lo and behold I hear a different message that tells me to be at the Courthouse the following morning at 8 a.m. !

Feb. 4, 2009. I spend the entire day at the courthouse. Attendance is confirmed. A video is screened. A lecture and introduction is given. The first of two groups are called for for jury service and sent off to courtrooms. Around 11:15 a.m, I am called to a courtroom for what we learn to be an anticipated 10 day trial minimum. Fortunately, there are enough potential jurors who stand up as being able to participate for several weeks, so that the two dozen of us who stayed seated because of problems with serving for that long of a period are as a group summarily released by the judge and told to return to 4th floor jury room for possible further selection. Then comes lunch from 12 noon to 1:30 pm. Upon my return from lunch, my number is called and I am instructed to proceed to a trial on the 7th floor where I am selected for a 2 - 3 day trial. The rest of the afternoon the Judge and counsel attempt to select a jury. We are dismissed around 4:30 pm for the day and told to return to the courtroom at 10:30 am the next day.

(View from the 7th Floor of the Courthouse, looking east toward Downtown L.A. Note: The American Airlines jet on approach to LAX. Photo by Will Maguire. Used here with permission).

Feb. 5, 2009, 10:30 a.m. Back on the Seventh Floor, Courtroom A. Our jury is again seated and voir dire (questions by the Judge and Counsel) continues. The final jury has not yet been selected but just shy of 12 noon we do finally get there and then come the "peremptory challenges" allowed for both the prosecution and the defense (see below). As luck or fate would have it, the defense selected me for peremptory challenge and I was free to depart after checking in with the 4th Floor Jury Room staff and was thus finished with my jury service.

Peremptory Challenge, defined:

"From Wikipedia, the free encyclopedia

http://en.wikipedia.org/wiki/Peremptory_challenge

Peremptory challenge usually refers to a right in jury selection for the defense and prosecution to reject a certain number of potential jurors who appear to have an unfavorable bias without having to give any reason. Other potential jurors may be challenged for cause, i.e. by giving a reason why they might be unable to reach a fair verdict.

The idea behind peremptory challenges is that if both parties have contributed in the configuration of the jury, they will find its verdict more acceptable. The existence of peremptory challenges are an important safeguard in the judicial process as it allows both the defendant and the prosecution to get rid of potentially biased jurors. Their use allows attorneys to use their training and experience to dismiss jurors who might say the correct thing, but might otherwise harbor prejudices that could infringe the rights of the defendant to a fair trial.

The use of peremptory challenges is controversial as some feel it has been used to undermine the balanced representation on a jury which would occur using random selection. Despite this, it still remains in use in several jurisdictions and in some cases leads to extensive and expensive jury research, aimed at producing a favorable jury."

Comment: I do not know for sure why I was challenged and removed from the jury being impaneled but I was relieved since I anticipate that this trial will run into tuesday including deliberations, which would be an imposition upon my clients and potentially harm my zealous representation of my client matters.

It was nevertheless an interesting experience. There were definitely a few people who were doing everything they could to get out of it, in my opinion. There were 4 lawyers on the jury panel before the challenges and three of us were removed via peremptory challenges. So call it a hunch that neither side wanted any lawyers on the jury.

Civic duty concluded, I turned in my juror badge and was given a juror receipt for having completed my jury service...... and away I drove into the rain just starting to beat down on the mean streets of Los Angeles...

Is Chocolate Recession-Proof !?

2009-01-29T11:17:00.000-08:00

(Source: Google Images and marketplace.issi.net. HERSHEY'S is a registered trademark of the Trademark Holder and is used here strictly as a fair use for academic and scholarship purposes).

According to the WSJ, 01.28.09, "Hershey Co's fourth-quarter profit and sales growth suggests that demand for chocolate remains strong despite the dismal economy." I could have told them that from my own personal experience, granted.....but this is Great News for Trademark Owners of Chocolate Brands and Trademarks. The undersigned's preference for Dark Chocolate, notwithstanding, consider: HERSHEYS, M&M's, SEE's, FANNIE MAY and even grocery store chain, Trader Joe's, has got its own private lable chocolate. CAVEAT: this short blog post will kindly and respectfully not torture the reader by discussing such European Chocolates like Nestle, Lindt and Cadbury.

On the other hand, premium chocolate brands, e.g., the so-called designer chocolates, may be taking a hit, with consumers apparently trading down according to the WSJ in its article dated Jan. 28, 2009 at which can be seen at the following link:

http://online.wsj.com/article/SB123306391902119401.html

Everyday CHOCOLATE, however, is apparently the Elvis of of sweets. So HERSHEYS and the like are reaping the rewards of cost-conscious chocolate consumers (hereinafter, CCCC).

In any event, this being a trademark blog, for those of you interested in all things chocolate should know that Chocolate is registrable in International Class #30. An example of a U.S. Federal Trademark Registration for chocolate includes:

Word Mark: HERSHEY'S

Goods and Services, IC 030. US 046. G & S: CHOCOLATE, COCOA, SWEET CHOCOLATE, MILK CHOCOLATE, CHOCOLATE COATINGS, CHOCOLATE LIQUORS, AND CHOCOLATE POWDER. FIRST USE: 18940101. FIRST USE IN COMMERCE: 18940101

Serial Number 71016827
Filing Date February 8, 1906
Current Filing Basis 1A
Original Filing Basis 1A
Published for Opposition April 24, 1906
Registration Number 0054041
Registration Date June 19, 1906

This is a remarkable registration. Registered in 1906 with first use since 1894! Hallelujah! Hershey's is clearly the Holy Grail of American Chocolate. That's for sure ! http://www.hersheys.com/chocolateworld/

And with that, it's time to "Exit, Stage Left" to Trader Joe's...

editor's note: After 4 oz of Trader Joe's Dark Chocolate you will be saying to yourself, "Recession, What Recession ?!"

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

TrademarkEsq Is Here For You !

2009-01-26T14:01:00.000-08:00

If you live on the westside of Los Angeles, chances are our office is close by. Our W.L.A. office is located at 11500 W. Olympic Blvd., Suite 400, Los Angeles, CA 90064-1525. We are located in the City National Bank building at the corner of Olympic and Colby, approx. 4 blocks west of the 405 Fwy.

During our lunch break today, I captured the following two shots with my digital camera three blocks west of our office at Barrington, as well as at the corner of Colby and Olympic.

"Olympic and Barrington"

"Olympic and Colby"

Please remember:

TrademarkEsq is here for you !

Trademark • Copyright • Licensing

Will Maguire
LAW OFFICES OF WILLIAM E. MAGUIRE
http://www.TrademarkEsq.com
email: maguire@artnet.net

"Gran Torino" Script is a Classic !

2009-01-25T13:19:00.000-08:00

While it was not easy to track down the script for this most recent Clint Eastwood starring film, here is the link for your convenience.

http://www.joblo.com/Gran%20Torino.htm

I recommend Pages 82 - 89 for the banter at the Barbershop with Walt (Eastwood), the Barber and Tao (the kid).

The link to said script is provided as a courtesy only. Rights to reproduce said script must be obtained from the proprietary rights holders. "Gran Torino" Copyright 2008 Warner Bros. Ent. All Rights Reserved. Screenplay by Nick Schenk.

Enjoy !

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

The USPTO Brush-back

2009-01-21T14:46:00.000-08:00

Happy New Year to our subscribers and to our visitors !

TrademarkEsq received some good news today via email from the folks at the online dictionary, Urban Dictionary, www.UrbanDictionary.com, as follows:

From: info@urbandictionary.com
Subject: Urban Dictionary - Brush-back was published
Date: January 21, 2009 2:22:47 PM PST
To: tmesq@yahoo.com

"Thanks for your definition of Brush-back!

Editors reviewed your entry and have decided to publish it on urbandictionary.com.

It should appear on this page in the next few days:
http://www.urbandictionary.com/define/php?term=Brush-back

Urban Dictionary

-----

Brush-back

To refute, reject, deny or disagree with a position or argument made by another to advance their agenda. Cross-reference, brushback, e.g., the brushback pitch in baseball to reclaim the corners of the strike zone from an encroaching batter.

The position advanced by the Applicant was refuted and rejected by the Examiner citing typical brush-back "Laudatory" denial language as set forth in the statute and case law."

Readers may recall our earlier blog post dated Oct. 8, 2008 entitled:

USPTO Trademark Practice: The USPTO Brush-back

http://trademarkesq.blogspot.com/2008/10/uspto-trademark-practice-uspto-brush.html

We invite you to visit or revisit this article from this past October, 2008, esp. now that the referenced term of art, "Brush-back", has received web cred !

TrademarkEsq is here for you !

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

L.A. Burger Wars 2009: R+D vs. LITERATI II

2009-01-08T19:26:00.000-08:00

The Kobe Chedder Cheeseburger at R+D KITCHEN, Santa Monica, Calif., January 8, 2009 (photo by Will Maguire. Low light/no flash).

The R+D KITCHEN Carrot Cake (low light/no flash)

The Kobe Chedder Cheeseburger at LITERATII II, in West L.A. (photo by Will Maguire. Natural light).

The LITERATI II Carrot Cake, aka The Big Kahuna of Carrot Cakes. Hands down the clear winner. Trust me.

January 2009

Although the clandestine photos of the cheeseburger and carrot cake at R+D KITCHEN in Santa Monica were taken in low light with no flash, the undersigned can assure the reader that the burger was quite tasty and the carrot cake quite moist and delicious.

The photo comparisons above of said R+D specimens vs. the infamous Kobe Chedder Cheeseburger at West L.A.'s LITERATI II, as well as its Carrot Cake, leave no doubt that the battle of the burgers continues into the year 2009.

The burger at R+D is worthy of a center spread in Bon Appetit'. The presentation is simply gorgeous. The burger at LITERATI II, is larger but does not share the same presentation skills. The LITERATI II burger, however, is a monster and very tasty.

One thing is certain, however, the service at R+D KITCHEN is "Exceptional"! It is Outstanding ! From the hosts to the waiters, the staff is friendly, professional and polite. And it's not a put on either. After three plus visits to this establishment, the exceptional service has not wavered. This, of course, is the reason I keep going to this restaurant. The people there are just nice. Check out their website at: http://www.hillstone.com/#/restaurants/cafeRandD/

LITERATI II does not have the same level of service. It is good service. The staff is professional and meals are served properly and timely, but the people skills that are so exceptional at R+D do not shine as bright at LITERATI II.

The Carrot Cake is BETTER at LITERATI II, however. No Question ! LITERATI II takes the cake on this count ! Check out their website at: http://www.literati2.com/

You will just have to try these two restaurants to choose which you like better. And just to really shake things up, you may want to try the Kobe Cheeseburger at nearby Santa Monica based "Rustic Canyon" on Wilshire just east of 11th St (http://www.rusticcanyonwinebar.com/). This burger is a bit smaller than at LITERATI II but it does come with fries which are very fresh and tasty. The fries are extra at R+D and they cost $5 bucks for not a lot of fries. So R+D gets demerits for short changing its customers on its shoestrings. If you are into wine, then Rustic Canyon and R+D have extensive and exclusive offerings. If your thing is coffee, check out the very elegant coffee service at Rustic Canyon where you get your very own several cup big stainless steel carafe of freshly brewed coffee with all the accoutrements. Very civilized. Trust me on this ! You will be delighted.

What does all this have to do with Trademarks ? Each of these three referenced restaurants have established common law trademark rights in the names of their establishments in the form of service marks. The undersigned has helped several Los Angeles area restaurants maximize their rights by obtaining Federal Service mark registrations for 'restaurant services'. This entitles the owner to exclusivity under most circumstances. The last thing a restaurant needs is a competitor stealing customers by advertising and promoting itself with the same or similar name.

For more information on this topic of restaurant trademark protection, please see our earlier blog post of Nov. 10, 2008, which can be observed by clicking on this link and scrolling down to Section II therein http://trademarkesq.blogspot.com/2008/10/hollywood-eateries-past-and-present.html

Bon Appetit',

TrademarkEsq is here for you !

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

Happy New Year !

2008-12-30T17:52:00.001-08:00

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.

* Happy Holidays from TrademarkEsq *

2008-12-25T08:34:00.000-08:00

"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.

The Greatest Thing Since the Stanford Marching Band...

2008-12-09T15:04:00.001-08:00

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

----- ------ ------ ----- -----

KONA COFFEE TRADEMARKS 101

2008-12-04T13:10:00.000-08:00

"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

TrademarkEsq

Obama Derivative Work or Unlawful Copy?

YAO MING wine?!...

30 ROCK Rocks!

September 11th: We Will Never Forget

"Breaking Benjamin" or breaking up badly...

COWBOYS & ALIENS®: From Comic Book to Feature Film

Who owns "LIFEGUARD" in Australia?

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

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

Disney Surrenders It's Trademark Applications for Seal Team 6

Hollywood vs. Wellywood

No Way!... Elway

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

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

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

Twitter loses effort to trademark "Tweet!"

PALIN Trademark Applications Are Painful...

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

Signs Of The Times: Trademarks and Servicemarks

Merry Christmas and Happy Holidays!

Licensing In The Buff

"Intellectual Property" According to DILBERT® - The Sequel

A Primer on the Selection And Clearance of Trademarks

SUMMER 2010: AT THE BEACH

Fair Use: No Harm No Foul!

Dilution by Blurring is Paved with Good Intentions

"Trademarks In The Sun, Sand and Surf"

"It's DUNKIN' DONUTS in the USA"

It's DUNKIN COFFEE in Spain!

Apple Files For “iTunes Live” Trademark

Genericism: To Be or Not To Be !...

Winter Trademarks: Lesson 1 Redux

SIA: The Newest, Coolest Gear for Winter '10-'11 | The Outside Blog

Happy New Year!

Happy Holidays !

eBay Announces Changes to its VeRO Program, eff. Jan. 18, 2010

Speaking of Trademarks: "Hats Are Back!"

SPF Trademarks: "Another L.A. Heat Wave"

Mammoth Mountain: Opening Day, Oct. 16, 2009 !

DILBERT® on Patents vs. Trademarks

The Trademark Perspective: LEVEL 26, the "Digi-Novel"

Bud Light Goes To College.....

Brands, Logos and Trademarks !

THE CON IS ON !

"Girard College" Rescues Creative Steps Kids Group !

"If This Is True, It's An Outrage !

INTA - Seattle, May 16 - 20, 2009

The Famous DOBBS Trademark Case

WATCHMEN: The Verdict

"ZAP! POW! BAM!" at the Skirball Center: The Verdict !

WHY I LOVE CHICAGO !

Hollywood in Winter !

JURY SERVICE 101

Is Chocolate Recession-Proof !?

TrademarkEsq Is Here For You !

"Gran Torino" Script is a Classic !

The USPTO Brush-back

L.A. Burger Wars 2009: R+D vs. LITERATI II

Happy New Year !

*** Happy Holidays from TrademarkEsq ***

The Greatest Thing Since the Stanford Marching Band...

KONA COFFEE TRADEMARKS 101

* Happy Holidays from TrademarkEsq *