Trademarks Start Here!...

520 Broadway, Santa Monica, Calif.

We've updated our website and we've posted our new business address in Santa Monica, Calif. (aka, "Silicon Beach").  This nickname is no misnomer.  The changes in the demographics of Santa Monica are unmistakable.  All sorts of business interests are flocking to Santa Monica and are following the lead of tech and web companies that are based here now.  Construction continues with an onslaught of apartments and mixed use buildings already built and under construction.  The downtown streets are filled with these types of buildings now with more on the way.  The shared office space villages are sprouting up all over the place as well.  There is a vibrancy and youth to the downtown scene that is unlike anything seen before in Santa Monica.  Restaurants, hotels, professional service businesses (accountants, architects, lawyers), fitness companies... you name it.

If you are building a business or expanding your brand, don't forget to protect your brand with trademark protection and registration.  Have a look here:

www.tmesq.com

In the meantime, here are some recent photos from the downtown scene in Santa Monica, as well as from the bluffs overlooking the Pacific Ocean and the World Famous Santa Monica Pier.

Enjoy!

5th St. Apartments

Fog Bank Creeping In...

"Silicon Beach"

BLUE PLATE TACO at the new Shore Hotel on Ocean Ave.

And if that weren't enough, the American Film Market's Annual Fest is in town now through Nov. 7th, hosted again by the Loew's Santa Monica Beach Hotel on Ocean Ave., just south of the pier...

http://www.smmirror.com/articles/News/Santa-Monica-Welcomes-Back-American-Film-Market-Through-November-7/35943 

Respectfully submitted,


William E. Maguire
www.TrademarkEsq.com

(All photos by & Copyright Will Maguire 2012.  All Rights Reserved.)

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Happy Halloween!

520 Broadway, Santa Monica, Calif. Halloween 2012

It's looking kinda scary outside our new office... 

 Happy Halloween!

William E. Maguire

LAW OFFICES OF WILLIAM E. MAGUIRE
520 Broadway, Suite 350
Santa Monica, CA  90401

*** Please note our new address above! ***

 
Phone 310.470.2929 and 496.4246
Fax  310.474.4710 and 496.4247
Email:  maguire@artnet.net
Web:  http://www.TrademarkEsq.com
Blog:  http://TrademarkEsq.blogspot.com
Twitter: http://twitter.com/TMESQ

Trademark • Copyright • Licensing

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We're Moving... eff., Nov. 1st, 2012

Broadway Plaza, 520 Broadway, Santa Monica, CA  90401. Photo by Will Maguire.

Attn: Clients, Colleagues and Friends

Please be advised that effective Nov. 1, 2012,  we will be moving into another full service executive suite.  I am very excited about this move to Santa Monica (aka, Silicon Beach) to Broadway Plaza at the corner of 6th St. and Broadway (as pictured above), which will enhance our ability to provide legal services to our clientele.

The new address, contact info, etc., are as follows:

William E. Maguire
LAW OFFICES OF WILLIAM E. MAGUIRE
520 Broadway, Suite 350
Santa Monica, CA  90401

Phone 310.470.2929     Fax  310.474.4710

email:  maguire@artnet.net
web:  http://www.TrademarkEsq.com
Blog:  http://TrademarkEsq.blogspot.com
Twitter: http://twitter.com/TMESQ

Trademark * Copyright * Licensing

Note: Phone and Fax will be the same.

Thanks very much!

Kind regards,

Will Maguire

520 Broadway. Photo by Will Maguire

Carabiner: The word and the trademark...

Image source: Wikipedia

This all started when I was talking to a colleague on the phone earlier today and suggested that he get a carabiner.  He said, what's that.  I told him it was one of those metal clips that you see attached to back packs and day packs to hang stuff from. He then said I should discuss the carabiner in my next blog post. So here goes...

Carabiner: The word and the trademark.

First of all, the use of a word arbitrarily is basically open season, as it were, subject to conflicts, etc. et al.   Thus, "Carabiner" can be used and registered as a trademark so long as it is not being used merely descriptively (generally speaking).

With that said, here is what Wikipedia has to say:

A carabiner (/kærəˈbiːnər/) or karabiner is a metal loop with a sprung gate[1] used to quickly and reversibly connect components in safety-critical systems. The word is a shortened form of "Karabinerhaken", German for "spring hook for a carbine".[2]"

           http://en.wikipedia.org/wiki/Carabiner
 
In terms of trademarks that are either pending or registered in the U.S., here are two case studies:

1.  Pending

Word Mark:  KING CARABINER
Goods and Services
IC 006. Metal fasteners, namely, metal clips and metal hooks for hanging or carrying items
Standard Characters Claimed
Mark Drawing Code
(4) STANDARD CHARACTER MARK
Serial Number  85579307
Filing Date  March 25, 2012
Current Basis  1B
Original Filing Basis  1B
Published for Opposition   August 28, 2012
Owner (APPLICANT) Carolina Publishing & Advertising Corp. CORPORATION NORTH CAROLINA 279 Serenity Hill Circle Chapel Hill NORTH CAROLINA 275160390

Disclaimer  NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "CARABINER" APART FROM THE MARK AS SHOWN
Type of Mark   TRADEMARK
Register   PRINCIPAL
Live/Dead Indicator   LIVE

comment:  I think I would have refused this application as being merely descriptive of the goods since Carabiner is generic for metal fasteners.  Interestingly, however, the USPTO recently approved this application for publication...  I don't think the disclaimer helps. What do you think ?  KING seems like a superlative term without much strength and the mark is filed in standard character format.

2.  Registered

Word Mark   CARABINER TORCH
Goods and Services
IC 034. CIGARETTE LIGHTERS NOT OF PRECIOUS METAL. FIRST USE: 20030710. FIRST USE IN COMMERCE: 20030710
Mark Drawing Code  (1) TYPED DRAWING
Serial Number  78272873
Filing Date  July 10, 2003
Current Basis  1A
Original Filing Basis  1A;1B
Published for Opposition  October 5, 2004
Registration Number  2914511
Registration Date   December 28, 2004
Owner  (REGISTRANT) Liu, Lily INDIVIDUAL UNITED STATES 17 Preston Lane Hicksville NEW YORK 11801
Disclaimer  NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "CARABINER" APART FROM THE MARK AS SHOWN
Type of Mark  TRADEMARK
Register  PRINCIPAL
Live/Dead Indicator  LIVE

comment:  The Examining Attorney required a 'disclaimer' and this appears to be because the lighter at issue is shaped like a carabiner (see specimen below).  The Office Action of record required the included a dictionary definition, as follows:

 car·a·bi·ner also kar·a·bi·ner (kàr´e-bê¹ner)  noun
An oblong metal ring with a spring clip, used in mountaineering to attach a running rope to a piton or similar device.[1]

fn:  [1]The American Heritage® Dictionary of the English Language, Third Edition copyright © 1992 by Houghton Mifflin Company. Electronic version licensed from INSO Corporation; further reproduction and distribution restricted in accordance with the Copyright Law of the United States. All rights reserved.

---

Except for its shape, which most likely accounts for the disclaimer requirement, this use of Carabiner seems arbitrary.  On the other hand, it seems like "Torch" should have been disclaimed as well.  In any case, I like this mark and I want one of these lighters (see specimen below) !
 

 --------

So there you have it!  Carry one of these torches and you can have your carabiner and light it too...


Respectfully submitted,


William E. Maguire
www.TrademarkEsq.com

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Jeah!... It's a mess all right!...

U.S. Olympic Swimming Star and Gold Medalist, Ryan Lochte, has popularized the expression, "JEAH!"  And apparently, his people have convinced him to file a trademark application for various and sundry items, including apparel.  A good idea certainly.  But not surprisingly, there are some other hands in the same cookie jar.  Jeah, indeed!   We will look at these conflicting claims briefly and dish on the prospects.

1.  Ryan Lochte Trademark

Word Mark    JEAH
Goods and Services (G&S), International Class (IC) 9 for:
Sunglasses; Swim goggles; DVDs featuring workout routines; Magnetic coded gift cards
IC 014. G & S: Jewelry; Key chains as jewelry

IC 016. G & S: Trading cards; Calendars; Posters; Photographs

IC 021. G & S: Mugs; Drinking glasses; Reusable water bottles sold empty

IC 025. G & S: T-shirts; Sweatshirts; Blouses; Sweaters; Shorts; Pants; Skirts; Socks; Swimsuits; Hats; Baseball caps; Sports hats; Jackets; Swim caps; Tank tops; Hooded sweatshirts

Standard Characters Claimed   
Mark Drawing Code    (4) STANDARD CHARACTER MARK
Serial Number    85692888
Filing Date    August 1, 2012
Current Basis    1B
Original Filing Basis    1B
Owner    (APPLICANT) Ryan Lochte INDIVIDUAL UNITED STATES c/oTheresa Simpson Garvey Schubert Barer 1191 Second Avenue, Ste 1800 Seattle WASHINGTON 98101
Attorney of Record    Theresa Simpson
Type of Mark    TRADEMARK
Register    PRINCIPAL
Live/Dead Indicator    LIVE

2.  VERSED Article re Rapper, MC Eiht 

http://theversed.com/2012/08/20/ryan-lochte-files-trademark-application-for-jeah-catchphrase-mc-eight-plans-cease-and-desist-letter/

excerpt:  "Locthe has been publicly saying “Jeah” for several years now, and credits Young Jeezy’s “Chea” for the inspiration to the catchphrase. Trademarks can be a long, and sometimes grueling process, so it will be interesting to see how this one turns out in the long run."

3.  JEAH Communications Trademark

Word Mark    JEAH
Goods and Services    IC 025. G & S: Baseball caps; Boxer briefs; Boxer shorts; Button down shirts; Caps with visors; Children's and infants' cloth bibs; Golf shirts; Hats; Hooded sweat shirts; Infant and toddler one piece clothing; Jackets; Jerseys; Maternity clothing, namely, t-shirts; Open-necked shirts; Panties, shorts and briefs; Pants; Polo shirts; Shirts for infants, babies, toddlers and children; Shorts; Sweaters; Sweatshirts; T-shirts; Tank tops.
FIRST USE: 19990406. FIRST USE IN COMMERCE: 19990406
Standard Characters Claimed   
Mark Drawing Code    (4) STANDARD CHARACTER MARK
Serial Number    85709491
Filing Date    August 21, 2012
Current Basis    1A
Original Filing Basis    1A
Owner    (APPLICANT) JEAH Communications, LLC LIMITED LIABILITY COMPANY WISCONSIN PO Box 231 Menomonee Falls WISCONSIN 53052
Type of Mark    TRADEMARK
Register    PRINCIPAL
Live/Dead Indicator    LIVE

--- and

Word Mark    JEAH
Goods and Services    IC 042. G & S: Hosting the web sites of others on a computer server for a global computer network. FIRST USE: 19990406. FIRST USE IN COMMERCE: 19990406
Mark Drawing Code    (1) TYPED DRAWING
Serial Number    76168934
Filing Date    November 21, 2000
Current Basis    1A
Original Filing Basis    1A
Published for Opposition     September 24, 2002
Registration Number    2661650
Registration Date    December 17, 2002
Owner    (REGISTRANT) JEAH COMMUNICATIONS, LLC LIMITED LIABILITY COMPANY WISCONSIN N82W13414 Fond du Lac Avenue Menomonee Falls WISCONSIN 53051
Assignment Recorded    ASSIGNMENT RECORDED
Type of Mark    SERVICE MARK
Register    PRINCIPAL
Affidavit Text    SECT 8 (6-YR). SECTION 8(10-YR) 20120222.
Renewal    1ST RENEWAL 20120222
Live/Dead Indicator    LIVE

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





Comments:  Ryan Lochte's multiple class trademark application was filed based on "intent to use" on August 1, 2012.  He must still file a Statement of use before obtaining a registration.  In the meantime, Jeah Communications has filed on August 21, 2012, a prior use based trademark application for JEAH for apparel.  This latter application will likely be suspended pending the outcome of the Lochte trademark application, which is likely going to be published for opposition in spite of the earlier service mark registration owned by Jeah Communications for web site hosting services.  The earlier use alleged by Jeah Communications could, however, be used as grounds for the filing of an Opposition against the Lochte application by Jeah Communications.


The claims of the rapper, MC Eiht,  highlighted in Paragraph 2 above, represent a different level of concern, however, and could lead to a fight in court over the respective claims to JEAH.  Additionally, it is uncertain what additional conflict may exist because of Lochte's own admission that the inspiration for JEAH was another rapper, namely, Young Jeezy, and his use of CHEA.



Time will tell...


Respectfully submitted,



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


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U.S. Army™ "Infantry" v. Persol®

This past June 28, 2012, in a previous blog post we discussed the trademarks of the famous sunglasses brand, PERSOL®, owned by Luxxotica, as follows:

When It's This Hot Outside, You Gotta Wear Shades!

http://trademarkesq.blogspot.com/2012/06/when-its-this-bright-outside-you-gotta.html

In addition, on June 27th we posted a separate article featuring a PERSOL® design trademark on our blog, as follows:

June 27th Is National Sunglasses Day!

http://trademarkesq.blogspot.com/2012/06/june-27th-is-national-sunglasses-day.html

Today, the undersigned was looking at eyeglass frames in a retail shop in Los Angeles and picked out what I thought were a pair of Persol® glasses.  I liked the design and shape and noted what I thought was the famous Persol design on the edge of the frame.  I tried them on and liked the fit. It was then that the storekeeper told me that they were U.S. Army.  I was unfamiliar with this as a brand, even though there was a small sticker of a Star on one of the lenses.  I was familiar with that branch of our Armed Services, of course, but was unaware of this name, e.g., U.S. ARMY, as being licensed out for eyeglasses, sunglasses, etc.  Once back at the office a few Google® web searches revealed this very same set of glasses and confirmed that U.S. ARMY™ is now a licensed brand for sunglasses, eyeglasses, etc.

Source:  http://usarmyeyewear.com/   *** Used here for "fair use" purposes only.

 x-ref:   http://usarmyeyewear.com

I then told the shopkeeper that I thought they were PERSOL® glasses.  He then pointed me to the case where they kept the PERSOL® glasses locked up.  Next I took this photo below of the U.S. ARMY glasses and then another photo of the PERSOL® and U.S. ARMY™ glasses side by side.

U.S. Army™ INFANTRY eyeglass frames. Note the silver colored design on the edge of the frames that is very similar to the trademarked design of PERSOL®.

PERSOL® glasses, at left;  U.S. Army™ glasses, at right. Both frames feature a silver colored design component on the edge of the frames.

I debated whether or not to purchase the U.S. ARMY glasses after learning that they were not the PERSOL® glasses I thought they were.  So I looked at a pair of so called designer frames by GUCCI® but I agreed with the shopkeeper that the U.S. ARMY pair looked better on me.  The U.S. Army™ frames were also some $70 less than the GUCCI® frames, though that was not a factor in my decision.

Since we know that PERSOL® has a trademark for its design component on its eyeglass frames, one must wonder if Luxottica is aware of this new U.S. ARMY™ licensed eyeglass frame that is similar to the famous PERSOL® design.  It seems too close to the PERSOL® design mark, in my opinion.  It also does not seem to be merely a coincidence given the fame of this PERSOL® design feature.  I also do not think that there is not a functionality argument either that would be persuasive since this design feature is not required for the glasses to function properly.

U.S. Army™ INFANTRY eyeglasses

Luxxotica (Persol) owned U.S. design Trademark Registration (Reg. No. 1455030; since 1987)

PERSOL® sunglasses

Respectfully submitted,


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

***    ***    ***

Lessons In Trademarks: Consent Agreements

Parties at odds over the use of the same or similar trademarks sometimes enter into Settlement or Consent Agreements with each other, rather than litigate in court or the like.  One recognized case that focused on the validity and enforceability of such agreements was T&T Manufacturing Co. v. A.T. Cross Co., U.S.C.A., 1st Cir., 587 F.2d 533 (1978).

In reaching its decision, the Court "evaluated the competing interests of contract enforcement with any harm the public might experience due to confusion arising between the products..."  As a result of this analysis, the Court ruled that any harm to the public was not significant, and, therefore, the "policy of holding a party to its contractual obligations become dominant.

---

Comment:  Litigation is not the only tool or remedy when there is an allegation of confusion or deception.  Trademark owners should also evaluate whether there is a contractual resolution available.

x-ref: 

The TTABlog® by John L. Welch

Precedential No. 50: TTAB Says Consent and License from Registrant Require Reversal of 2(d) Refusal of WACKER NEUSON over NEUSON for Machinery

http://thettablog.blogspot.com/2011/01/precedential-no-50-ttab-says-consent.html

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Respectfully submitted,


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

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"Lessons In Trademarks: Loss of Rights"

Shredded Wheat:  Protectable Trademark or Generic Term?   

Source: Kellogg v. National Biscuit Co.;  and  http://museumofintellectualproperty.org/g/all.html

This question was resolved by the U.S. Supreme Court... in 1938 !  (Kellogg Co. v. National Biscuit Co., U.S. Supreme Court, 305 U.S. 111 (1938)) (hereinafter, Kellogg).  In Kellogg, the plaintiff National Biscuit Co. (NBC) claimed the exclusive right to the trade name "Shredded Wheat" for pillow shaped shredded wheat biscuits. 

The Supremes renounced this claim very clearly, however, when they stated:  "The plaintiff has no exclusive right to the use of the term "Shredded Wheat" as a trade name.  For that is the generic term of the article, which describes it with a fair degree of accuracy; and is the term by which the biscuit in pillow-shaped form is generally known by the public.  Since the term is generic, the original maker of the product acquired no exclusive right to use it.  As Kellogg Company had the right to make the article, it had, also, the right to use the term by which the public knows it."

In their notes on generic mark, the authors of the legal treatise, Trademarks, by Pattishall and Hilliard (Copyr. 1987), on page 115 state:  "(1) A term is generic when its principal significance to the public is to indicate the product or service itself, rather than its source."


Comment:  A brand name and trademark, while achieving name recognition and commercial success, must work diligently not to become the generic term for its product or service. For this reason, organizations such as the International Trademark Association (INTA), as well as many brand owners, are careful to use their marks as adjectives, rather than as nouns or verbs.  There are additional measures that a trademark owner can take to avoid the generic death sentence, including not limited to, using the ® registration symbol and distinctively highlighting the trademark using CAPITAL LETTERS or in Bold, etc.

Contemporary examples of competitive "Shredded Wheat" breakfast cereals:

(Source: Google image search)

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For more information and articles about trademarks, the reader is invited to visit our website at:

http://www.TrademarkEsq.com

Respectfully submitted,


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

Lessons In Trademarks: The Sunkist Case

Prelude:  In the Fall of 1990, while a student in the LL.M, Intellectual Property program at The John Marshall Law School in Chicago, Illinois, I was enrolled in Trademark 101 taught by Adjunct Professors (and Attorneys) Ray Geraldson and Mark Partridge.  Our class text book was "Trademarks", by Beverly W. Pattishall and David C. Hilliard (Copyr. 1987).  One of my favorite cases and the subject of this blog post was:

California Fruit Growers Exchange v. Sunkist Baking Co., (U.S.C.A., 7th Cir. 166 F. 2d 971 (1947)).

Principles/Findings:  The Plaintiff Calif. Fruit Growers Exchange ("Exchange") marketed and sold citrus fruits throughout the U.S. and overseas under the trademark, SUNKIST.  Joining in as a co-plaintiff was a N.Y. corporation that sold canned and dried fruits, vegetables, butter and other goods under the trademark, SUN-KIST.  A co-existence agreement was executed before these proceedings by these two plaintiff's.

The Defendant, Sunkist Baking Co., "engaged in baking and selling bread and buns."  The District Court found there to be a likelihood of confusion and found for the plaintiff's.  On appeal, however, the 7th Circuit reversed and found there to be no likelihood of confusion between the plaintiffs' fruits and vegetables and the defendant's bread.

Comments:  The result would likely be very different today given the current state of dilution law and the recent enactment of the Trademark Dilution Revision Act of 2006.  At the time of this case, however, the Appellate Court was not enamored with the contractual "hocus-pocus" of the plaintiff's and what the court understood to be an inconsistent stance, e.g., how can the plaintiff's claim there is no confusion between themselves when they sell the same goods and still claim confusion with the defendant who does not sell the same goods.  Another topic for another day will cover co-existence agreements which are still employed today by parties seeking resolution vs. litigation.

---

x-ref:


•  Trademark Dilution Revision Act; Official Summary

http://www.govtrack.us/congress/bills/109/hr683

•  Trademark Dilution Revision Act of 2006 Goes to President for Signature

http://thettablog.blogspot.com/2006/09/trademark-dilution-revision-act-of.html

-----

Respectfully submitted,

William E. Maguire

www.TrademarkEsq.com


***   ***   ***

Summer Season 2012 Greetings !...

Summer Season 2012 Greetings to all our friends and colleagues! We hope you are all having a Great Summer! 

 If you have not yet noticed, we also note that this is the Summer of "Cheap Beach Toys"!   In So. Calif., our beaches are littered with cheap beach toys (small shovels, rakes, sand castle molds, etc.) that break easily and are sold by (illegal/unlicensed) vendors on the beach, at drug stores and the 99 Cent Stores, along with super cheap styrofoam body boards that break very easily. 

Examples of cheap beach toys...

 

 *** Just another reason to trust in authentic brand named goods and to be aware of what you are buying. For more on trademarks, see the attached link.

www.BeachEsq.com

 Cowabunga!... and don't forget to wear sunscreen and protective clothing to avoid overexposure to the sun... and wear a helmet if you are going to ride your bike!

 William E. Maguire, Esq.

LAW OFFICES OF WILLIAM E. MAGUIRE

Los Angeles, California

www.TrademarkEsq.com

Chocolate Wars: Hershey v. Trader Joe's

Configure this !?...

Hershey recently won a reversal of a USPTO refusal of its product configuration trademark application for it chocolate bar configuration (see below).

 x-ref:  In re Hershey Chocolate and Confectionary Corporation, Serial No. 77809223 (June 28, 2012) [not precedential].

This reversal was comprehensively discussed by our colleague, John L. Welch, on his TTABlog today, at the following link:

http://thettablog.blogspot.com/2012/07/ttab-reverses-refusal-to-register.html

Have a look at the Trader Joe's Chocolate bar configuration, however, and you will see it has the same rectangular configuration, including the same 3 x 4 design (see below).

 

You gotta wonder if the USPTO did any research in the marketplace since there was no evidence offered as to third party use of this same configuration.   Don't they shop at Trader Joe's?!...   :-)    

On this point, the TTAB stated, in part: "Furthermore, while the record shows an extensive variety of shapes and decorative designs for candy bars, there is no evidence that this particular combination of recessed rectangles with a raised border is used by other candy makers or that the overall design is in any way functional." (emphasis added).  We do not imagine that Hershey is unaware of the Trader Joe's configuration since it is their business to know their competition. Yet, there is no evidence of this knowledge.

Time will tell if these two companies duke it out or let sleeping dogs lie...

William E. Maguire

LAW OFFICES OF WILLIAM E. MAGUIRE

Los Angeles, Calif.

www.TrademarkEsq.com

When It's This Bright Outside, You Gotta Wear Shades!

Protect your eyes. Protect your trademark.  I wear this pair of PERSOL® sunglasses below to avoid the glare of the sun and to protect my eyes from sun damage.

This pair of PERSOL® sunglasses above sports the famous design trademark on the frame and attaches to the lenses, in addition to its word mark (Persol).  Both the design mark and the word mark are registered with the U.S. Patent and Trademark Office.  Owned by the Luxottica Group, this is what the drawing of this design mark looks like (below) as set forth at uspto.gov in the "TESS" database:

Goods and Services	IC 009. EYEGLASSES, SUNGLASSES [, EYEGLASS LENSES, EYEGLASS FRAMES, EYE SHADES AND PROTECTIVE GOGGLES ]. FIRST USE: 19770900. FIRST USE IN COMMERCE: 19841200
Mark Drawing Code	(2) DESIGN ONLY
Design Search Code	26.11.28 - Miscellaneous designs with overall rectangular shape; Rectangular shapes (miscellaneous overall shape)
Serial Number	73771094
Filing Date	December 21, 1988
Current Basis	1A;44E
Original Filing Basis	1A;44E
Published for Opposition	September 26, 1989
Registration Number	1571656
Registration Date	December 19, 1989
Owner	(REGISTRANT) GIUSEPPE RATTI INDUSTRIA OTTICA S.P.A. JOINT STOCK COMPANY ITALY LUNGODORA FIRENZE 119 TORINO ITALY(LAST LISTED OWNER) LUXOTTICA GROUP S.P.A. CORPORATION VIA CESARE CANTU, 2 20123 MILAN (MI) ITALY
Assignment Recorded	ASSIGNMENT RECORDED
Prior Registrations	1455030
Type of Mark	TRADEMARK
Register	PRINCIPAL
Affidavit Text	SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20100130.
Renewal	2ND RENEWAL 20100130

June 27th is "National Sunglasses Day!"

Prada, Hobie, Electric, SPY, Ray-Ban, Persol... All Famous Brand names protected by trademark registrations.  What we see here in the stylized photo above, however, is a design mark that is a trademark of the Persol eyewear and which is placed on the eyeglass frames adjacent to the lenses and typically offset the dominant color of the frames with the design mark typically in the metallic shade of silver.

In addition to other design marks, the owner of the Persol line of sunglasses, eyewear, and eyeglass frames, etc., is the following U.S. trademark registration (as shown in the edited TESS record below available at www.uspto.gov):

Goods and Services	IC 009.  EYEGLASS FRAMES. FIRST USE: 19660203. FIRST USE IN COMMERCE: 19750000
Mark Drawing Code	(2) DESIGN ONLY
Design Search Code	16.03.07 - Eyeglasses; Frames, eyeglass; Glasses, eye; Glasses, safety; Goggles; Safety goggles; Spectacles; Sunglasses 26.15.02 - Plain single or multiple line polygons; Polygons (plain, single line)
Serial Number	73635200
Filing Date	December 12, 1986
Published for Opposition	June 9, 1987
Registration Number	1455030
Registration Date	September 1, 1987
Owner	(REGISTRANT) GIUSEPPE RATTI INDUSTRIA OTTICA S.P.A. DBA RATTI INDUSTRIA OTTICA JOINT STOCK COMPANY ITALY LUNGODORA FIRENZE, 119 TORINO ITALY(LAST LISTED OWNER) LUXOTTICA GROUP S.P.A. CORPORATION VIA CESARE CANTU, 2 20123 MILAN (MI) ITALY
Assignment Recorded	ASSIGNMENT RECORDED
Type of Mark	TRADEMARK
Register	PRINCIPAL
Affidavit Text	SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20070823.
Renewal	1ST RENEWAL 20070823
Live/Dead Indicator	LIVE

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And considering the gigantic list of registrations in the name of this Registrant, its future looks bright and their customers will surely continue to wear shades.

For more information about trademarks, please visit our website at:

http://www.TrademarkEsq.com

Respectfully submitted,


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

www.tmesq.com

High Brow Trademarks...

University of Kentucky Basketball Star and perhaps Pick #1 in the upcoming 2012 NBA Draft, Anthony Davis, Trademarks His Brow.

Anthony Davis Trademarks His Brow

By: Darren Rovell
CNBC Sports Business Reporter

http://www.cnbc.com/id/47951613

"excerpt": 

Davis, known for his connected eyebrows, trademarked the phrases “Fear The Brow” and “Raise The Brow” earlier this month.

-----

But get this, a savvy sports enterprise, BlueZone, LLC, in Kentucky filed for this same application before Anthony Davis.  Check this out:

Word Mark:  FEAR THE BROW
Goods and Services International Class (IC) 025. Clothing, namely, footwear, headwear, tops, bottoms, shirts, pants, t-shirts, hooded sweat shirts, sweat pants, sweat shirts, and sweats. FIRST USE: 20111104. FIRST USE IN COMMERCE: 20111104 Standard Characters Claimed Mark Drawing Code (4) STANDARD CHARACTER MARK Serial Number 85477805 Filing Date November 21, 2011 Current Basis 1A Original Filing Basis 1A Owner (APPLICANT) BlueZone, LLC LIMITED LIABILITY COMPANY KENTUCKY 2573 Richmond Road, Suite 320 Lexington KENTUCKY 40509 Attorney of Record John Salcido Type of Mark TRADEMARK Register PRINCIPAL Live/Dead Indicator LIVE

Anthony Davis only just filed for this same trademark on June 5, 2012, as follows:

Word Mark:  FEAR THE BROW
Goods and Services IC 003. After-shave; Cosmetics; Deodorants and antiperspirants; Fragrances; Hair care preparations; Non-medicated skin care preparations; Perfumes, aftershaves and colognes; Shaving preparations; Skin cleansers; Skin lotions; Soaps for body care

IC 016. Book covers; Books in the field of sports; Bumper stickers; Calendars; Decals; Document covers; Events albums; Facial tissue; Ink pens; Lunch bags; Memo pads; Napkin paper; Newsletters in the field of sports; Note cards; Note pads; Paper pennants; Pencils; Posters; Publications, namely, brochures, booklets and teaching materials in the fields of sports; Sports trading cards; Stationery; Stickers; Unmounted and mounted photographs; Wrapping paper

IC 021. Aluminum water bottles sold empty; Bottle openers; Bottles, sold empty; Bowls; Combs; Containers for household or kitchen use; Cups; Insulating sleeve holder for bottles; Insulating sleeve holders for beverage cans; Lunch boxes; Mugs; Plastic water bottles sold empty; Portable coolers; Waste baskets

IC 025.  Belts; Cloth bibs; Coats; Footwear; Hats; Headbands; Hosiery; Jackets; Jerseys; Night shirts; Pajamas; Pants; Parkas; Rugby shirts; Shorts; Sport shirts; Sweat pants; Sweat shirts; Sweaters; T-shirts; Tank tops; Warm-up suits; Wrist bands

IC 035.  Charitable services, namely, organizing and conducting volunteer programs and community service projects; Endorsement services, namely, promoting the goods and services of others; On-line retail gift shops; Producing promotional videotapes, video discs, and audio visual recordings

IC 041.  Entertainment services, namely, participation in basketball; Entertainment services, namely, personal appearances by a sports celebrity; Providing a web site featuring sporting information; Providing a website featuring information relating to the sport of basketball; Providing news and information in the field of sports; Sport camps; Sports training services

Standard Characters Claimed Mark Drawing Code (4) STANDARD CHARACTER MARK Serial Number 85643417 Filing Date June 5, 2012 Current Basis 1B Original Filing Basis 1B Owner (APPLICANT) Anthony Marshon Davis, Jr. INDIVIDUAL UNITED STATES 6559 S. Sangamon Chicago ILLINOIS 60621 Attorney of Record C. Brandon Browning Type of Mark TRADEMARK. SERVICE MARK Register PRINCIPAL Live/Dead Indicator LIVE

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Separately, the additional trademark application filed by Anthony Davis for RAISE THE BROW below, does not appear to have been filed by anyone else to date. 

Word Mark RAISE THE BROW Goods and Services IC 003. US 001 004 006 050 051 052. G & S: Aftershave; Cosmetics; Deodorants and antiperspirants; Fragrances; Hair care preparations; Non-medicated skin care preparations; Perfumes, aftershaves and colognes; Shaving preparations; Skin cleansers; Skin lotion; Soaps for body care

IC 016. Book covers; Books in the field of sports; Bumper stickers; Calendars; Decals; Document covers; Event albums; Facial tissue; Ink pens; Lunch bags; Memo pads; Mounted and unmounted photographs; Newsletters in the field of sports; Note cards; Note pads; Paper pennants; Pencils; Posters; Publications, namely, brochures, booklets, and teaching materials in the field of sports; Sports trading cards; Stationery; Stickers; Wrapping paper

IC 021.  Aluminum water bottles sold empty; Bottle openers; Bottles, sold empty; Bowls; Combs; Containers for household or kitchen use; Cups; Insulating sleeve holder for bottles; Insulating sleeve holders for beverage cans; Lunch boxes; Mugs; Plastic water bottles sold empty; Portable coolers; Waste baskets

IC 025.  Belts; Cloth bibs; Coats; Footwear; Hats; Headbands; Jackets; Jerseys; Night shirts; Pajamas; Pants; Parkas; Rugby shirts; Shorts; Sports shirts; Sweat pants; Sweaters; Sweatshirts; T-shirts; Tank tops; Warm-up suits; Wristbands

IC 035.  Charitable services, namely, organizing and conducting volunteer programs and community service projects; Endorsement services, namely, promoting the goods and services of others; On-line retail gift shops; Producing promotional videotapes, video discs, and audio visual recordings

IC 041.  Entertainment services, namely, participation in basketball; Entertainment services, namely, personal appearances by a sports celebrity; Providing a web site featuring sporting information; Providing a website featuring information relating to the sport of basketball; Providing news and information in the field of sports; Sport camps; Sports training services

Standard Characters Claimed Mark Drawing Code (4) STANDARD CHARACTER MARK Serial Number 85642988 Filing Date June 4, 2012 Current Basis 1B Original Filing Basis 1B Owner (APPLICANT) Anthony Marshon Davis, Jr. INDIVIDUAL UNITED STATES 6559 S. Sangamon Chicago ILLINOIS 60621 Attorney of Record C. Brandon Browning Type of Mark TRADEMARK. SERVICE MARK Register PRINCIPAL Live/Dead Indicator LIVE

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Comments:  It seems likely that the interloper/enterprising third party, BlueZone, LLC, will eventually abandon its registration efforts.  The mark filed by BlueZone would appear to raise issues of both trademark infringement and rights of publicity owing to its design element of the Anthony Davis 'unibrow' that he is already well known to have on his head.

Both parties may call time out to discuss an amicable resolution and it would not surprise us if BlueZone seeks a license in exchange for its agreement to abandon its registration efforts.

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For more information about trademarks, please visit our website at:

http://www.TrademarkEsq.com

Until next time.....


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

Summer 2012: Trademarks in the Sun, Sand & Surf!

Summer is here!  Are your trademarks registered?  Check out our article on the basics of trademark selection, clearance and registration:

http://trademarkesq.com/pages/article9.php

For more information about trademarks, please visit our website at:

http://www.TrademarkEsq.com

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Until next time.....

William E. Maguire
TMESQ.com

WWII Era Goodyear Logo and Trademark Solves Mystery...

Here's a Great Story !... and it mentions a world famous trademark to boot!

World War II hobbyist solves a family's decades-old mystery

    http://www.latimes.com/news/local/la-me-plane-search-20120529,0,3053696.story?track=rss

excerpt:

Soon, villager Veline Wesley shouted out that she had found a piece of metal — a 4-foot section of wing strut — with the Goodyear symbol stamped on it.

http://www.stripes.com/news/pacific/wwii-hobbyist-solves-us-pilot-mystery-in-s-pacific-1.178852#

x-ref:

(a)  what the missing aircraft looked like

    http://www.rcgroups.com/forums/showthread.php?t=1560168

(b)  A screen grab of the Pacific Wrecks website that led three women to find what happened to their uncle in WWII.

(note:  screen grab photo of downed aircraft below is not the Corsair at issue).

( Source: PacificWrecks.org )

(c)   Additional story posted by NBCLosAngeles.com

Nieces' Search for Their Uncle's WWII Plane Wreckage Takes Them Around the World

    http://www.nbclosangeles.com/news/local/Nieces-Visit-Unlces-WWII-Wreckage--155126945.html

excerpt:

Most corsairs were built by Vought, but Lt. Mike Zanger flew a plane built by Goodyear. They needed to find the Goodyear stamp. Hanigan said it was grueling and precise work.

“We were looking for a very small stamp that was smaller than a dime,” she said.

One of the local women came over and asked Hanigan’s sister to draw the logo – it was a capital “G” with a smaller capital “A” inside of it. (emphasis added)

(d)   Wikipedia article on the F4U Corsair:

    http://en.wikipedia.org/wiki/Vought_F4U_Corsair

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Stay tuned as we are continuing to research this issue in the hopes that we can locate a drawing or a photograph of the specific "G" logo or trademark that was found on the downed aircraft mentioned above.

Respectfully submitted,


William E. Maguire
Los Angeles, Calif.

www.TrademarkEsq.com




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THE MEN IN BLACK: From Comic Book To Feature Film

A trademark program that began in 1992 is described in the linked story below and is especially relevant with the third film in the MIB series being released across the nation yesterday, May 25, 2012, as shown in the photo below featuring a large billboard advertisement in West Los Angeles.

(Photo by & Copyr. Will Maguire 2012.  All Rights Reserved.)

THE MEN IN BLACK: From Comic Book To Feature Film:

http://trademarkesq.com/pages/article4.php

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Respectfully submitted,


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


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"Five Guys"... The Trademark...

"Five Guys"... The Trademark...

or more properly said, the service mark.  Just before leaving for this year's Annual Meeting of the Intl. Trademark Assn. (INTA), we posted about the In-n-Out Burger trademark.  Then we arrived in Wash. D.C. and spied a "Five Guys" burger location in Dupont Circle. Having heard the hype, we were duty bound to check it out.  The Five Guys Cheeseburger does not disappoint. It is Exceptional!  They don't make shakes, though...  just sayin'...

In any event, for the trademark - service mark curious, here is the (abbreviated) USPTO "TESS" record for the FIVE GUYS service mark:

Word Mark	FIVE GUYS
Goods and Services	IC 042: Restaurant Services. FIRST USE: 19860226. FIRST USE IN COMMERCE: 19860226
Mark Drawing Code	(1) TYPED DRAWING
Serial Number	76316757
Filing Date	September 24, 2001
Current Basis	1A
Original Filing Basis	1A
Published for Opposition	March 12, 2002
Registration Number	2576160
Registration Date	June 4, 2002
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Respectfully submitted, William E. Maguire,  www.TrademarkEsq.com
***   ***   ***

Double-Double® ... The Trademark

"Full Disclosure":  This article is written for the fair use purpose of briefly discussing the trademark significance of the "Double-Double" trademark registration owned by IN-N-OUT Burgers Corp., the beloved independent burger chain that started in Southern California.

Introduction: 

Below is a photo taken by the undersigned this past February at the very first In 'n Out Burger in Buena Park, Calif, just off the I-10 Freeway on the way back from Big Bear from a day of skiing (on a Thursday after some fresh snow fell...)

The packaging for the famous "Double-Double®" trademark:

note: the above packaging is identical to the specimen on file at the TTAB which was submitted by IN-N-OUT's counsel.  

Below, a photo of the official training facility for IN-N-OUT Burger employees, loftily and cheerfully called "IN-N-OUT UNIVERSITY", and which is right next door to their original store in Buena Park, which one customer calls the "mother ship".

Trademark Registration (USPTO "TESS" Record):

Word Mark    DOUBLE-DOUBLE
Goods and Services    IC 030. US 046. G & S: A sandwich, namely, a burger the principal ingredients of which are two meat patties and two slices of cheese. FIRST USE: 19631231. FIRST USE IN COMMERCE: 19631231
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    77515377
Filing Date    July 6, 2008
Current Basis    1A
Original Filing Basis    1A
Published for Opposition     November 25, 2008
Registration Number    3572485
Registration Date    February 10, 2009
Owner    (REGISTRANT) In-N-Out Burgers CORPORATION CALIFORNIA 10th Floor 4199 Campus Dr. Irvine CALIFORNIA 92612
Attorney of Record    Edward O. Ansell
Prior Registrations    1002370;1165723;2109126;AND OTHERS
Type of Mark    TRADEMARK
Register    PRINCIPAL
Live/Dead Indicator    LIVE

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We hope you have enjoyed this article and for those of you near an In-N-Out Burger we anticipate you will be heading there directly!

Respectfully and Cheerfully submitted,

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

***   ***   ***

Trademarks Defined & Illustrated

What the heck is a trademark anyways? Here is one definition from the International Trademark Assn (INTA), which the undersigned has been a member of for many years.

I. Trademarks Defined

"A trademark is any word, name, symbol or device (or any combination thereof) that identifies and distinguishes the source of the goods of one party from those of others. Similarly, a service mark is any word, name, symbol or device (or any combination thereof) that identifies and distinguishes the services of one party from those of others. Service marks are often referred to as trademarks for convenience or because certain jurisdictions may not recognize the term service mark.

A trademark or service mark can be a word, logo, slogan, package design or other source indicator (or a combination thereof), or any other cognizable thing that serves to indicate a particular source, good or service."

An example of a well known "word" mark is NIKE® or ADIDAS® or BODY GLOVE®. And speaking of BODY GLOVE®, this trademark owner also has a very famous design mark or logo that features a drawing of a hand. Another example of a famous design or logo would be that belonging to the owner of the Ferrari trademark for cars.

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II. Illustrations: Every picture tells a story... don't it?!..

A. Ferrari. Below, is a new Ferrari vehicle which my nephew informs me is the "Ferrari 360 Modena!"


This car above features the design of a horse as a logo and represents a registered trademark, as follows, from the TESS database at the U.S. Patent and Trademark Office (USPTO; www.uspto.gov):

Mark Image


Word Mark SF
Goods and Services IC 012. US 019 021 023 031 035 044. G & S: Land motor vehicles, namely, motor cars, automobiles and sport cars, and structural parts and accessories thereof sold as a unit, suspension systems for automobiles, engines, transmissions and brakes for land vehicles, motor car bodies, motorbikes and, bicycles

IC 024. US 042 050. G & S: Flags made from fabrics, textile table cloths and napkins, beach towels, bed linen, bed covers, blankets
Mark Drawing Code (3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS
Design Search Code 03.05.01 - Horses
03.05.24 - Stylized horses, donkeys, zebras
24.01.02 - Shields or crests with figurative elements contained therein or superimposed thereon
Serial Number 78459915
Filing Date July 30, 2004
Filing Basis 44E
Original Filing Basis 1B;44E
Published for Opposition May 9, 2006
Registration Number 3122681
Registration Date August 1, 2006
Owner (REGISTRANT) Ferrari S.p.A. SOCIETA PER AZIONI ITALY Via Emilia Est 1163 41100 Modena ITALY
Attorney of Record Albert Robin
Description of Mark The mark consists of a shield with a representation of a prancing horse, a letter "S" at the lower left-hand side of the prancing horse and a letter "F" at the lower right-hand side of the prancing horse.
Type of Mark TRADEMARK
Register PRINCIPAL
Live/Dead Indicator LIVE

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B. Below, is a photo of a popular food truck in So. California, esp. in L.A. County. Shown here is the KOGI Korean BBQ food truck which has a large rabid and loyal customer base.



KOGI is considered a service mark because it provides "Mobile cafe services for providing food and drink." This particular mark is registered as a composite or design mark because it is composed of both a word, namely, "KOGI" plus a design element, as shown below.


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C. Below, is a photo of the West Los Angeles retail store, GIANT ROBOT, which features toys and collectibles and has a huge customer fan base. GIANT ROBOT is also a service mark, in this case for retail services.



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Please stay tuned and check back in with us for more brief remarks about trademarks.

Kind regards,

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

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Obama Derivative Work or Unlawful Copy?

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

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


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?!...

(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.

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Until next time.....


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