Friday, September 30, 2011

30 ROCK Rocks!



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

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

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

Serial Number 85014515 Filing Date April 15, 2010

Registration Number 3882956 Registration Date November 30, 2010

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

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

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

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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.

*** *** ***

Sunday, September 11, 2011

September 11th: We Will Never Forget

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


(Photo by Will Maguire.)

Additional photos posted at:

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

---

Respectfully,


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

Tuesday, August 02, 2011

"Breaking Benjamin" or breaking up badly...

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.

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Until next time,


William E. Maguire,
http://TrademarkEsq.blogspot.com
Web: www.TrademarkEsq.com

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Tuesday, July 26, 2011

COWBOYS & ALIENS®: From Comic Book to Feature Film



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

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


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


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


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




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


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

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

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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

*** *** ***

Thursday, June 23, 2011

Who owns "LIFEGUARD" in Australia?


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

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

Here is one headline:

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

http://bit.ly/kefc0L

X-Ref: Original URL to story:

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

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

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

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

*** *** ***

Friday, June 03, 2011

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


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

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

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

*** *** ***

Wednesday, June 01, 2011

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

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

In terms of protecting this budding brand, kudos as well to its principals for hiring an attorney to file a U.S. Federal Trademark Application for the travel related services they have already begun to use. Additionally, they registered the corresponding domain name, 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

*** *** ***

Monday, May 30, 2011

Disney Surrenders It's Trademark Applications for Seal Team 6

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

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

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

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

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

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

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

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


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Respectfully submitted,

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

*** *** ***

Sunday, May 29, 2011

Hollywood vs. Wellywood


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

I. Hollywood vs. Wellywood


This article first appeared online at 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]"

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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

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

*** *** ***

Thursday, May 26, 2011

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


(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.








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Until next time.....

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

Friday, May 13, 2011

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

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

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

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

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

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

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

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

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

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

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

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

*** *** ***

Respectfully submitted,

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

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

Friday, April 22, 2011

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

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



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

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

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

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

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

Be careful out there.

Respectfully,

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

*** *** ***

Sunday, March 20, 2011

Twitter loses effort to trademark "Tweet!"

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

Friday, February 04, 2011

PALIN Trademark Applications Are Painful...

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

Sarah Palin files paperwork to trademark her name

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

*** *** ***

Thursday, January 13, 2011

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

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

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




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

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

2. V'E VERSACE (and design)

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

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

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

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

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

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

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

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

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

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

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

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

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

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

IC 020. G & S: Furniture

IC 022. G & S: Tents, bivouac bags

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

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

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

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

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1. Word Mark TIFFANY
Goods and Services IC 014. G & S: Watches and Clocks. FIRST USE: 18680000. FIRST USE IN COMMERCE: 18680000 Mark Drawing Code (5) WORDS, LETTERS, AND/OR NUMBERS IN STYLIZED FORM Serial Number 71126976 Filing Date January 9, 1920 Current Filing Basis 1A Original Filing Basis 1A Registration Number 0132262 Registration Date June 15, 1920 Owner (REGISTRANT) Tiffany & Company CORPORATION NEW YORK New York NEW YORK
(LAST LISTED OWNER) TIFFANY (NJ) INC. CORPORATION BY ASSIGNMENT NEW JERSEY 15 SYLVAN WAY PARSIPPANY NEW JERSEY 07054

2. Word Mark TIFFANY
Goods and Services IC 009 016 028. G & S: Printed Books, Visiting-Cards, Announcements, Invitations, Menus, Greeting-Cards, Certificates, Completely Printed or Engraved [ Dance-Orders and ] Diplomas, Labels Upon which Book-Plates Have Been Printed or Engraved, Programs, and Calendars. FIRST USE: 18920000. FIRST USE IN COMMERCE: 18920000 Mark Drawing Code (5) WORDS, LETTERS, AND/OR NUMBERS IN STYLIZED FORM Serial Number 71128252 Filing Date February 10, 1920 Current Filing Basis 1A Original Filing Basis 1A Registration Number 0140996 Registration Date March 29, 1921 Owner (REGISTRANT) Tiffany & Company CORPORATION NEW YORK FIFTH AVENUE AND 37TH STREET MANHATTAN NEW YORK
(LAST LISTED OWNER) TIFFANY (NJ) LLC CORPORATION DELAWARE 15 SYLVAN WAY PARSIPPANY NEW JERSEY 07054

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

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

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

Best wishes,

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

Wednesday, January 05, 2011

Signs Of The Times: Trademarks and Servicemarks

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

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



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

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

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

3. Word Mark BUD LIGHT

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

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


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

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

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

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

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

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

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

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

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

Friday, December 24, 2010

Merry Christmas and Happy Holidays!

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

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Monday, December 06, 2010

Licensing In The Buff

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.

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Thursday, September 23, 2010

"Intellectual Property" According to DILBERT® - The Sequel

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

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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.

Friday, September 17, 2010

A Primer on the Selection And Clearance of Trademarks

*** 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.