Dilution by Blurring is Paved with Good Intentions

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

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

Talking Points or Take Aways:

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

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

Conclusion: Dilution by Blurring is paved with Good Intentions.

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

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











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Respectfully submitted,


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

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"Trademarks In The Sun, Sand and Surf"

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

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



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

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

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

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

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



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


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

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"It's DUNKIN' DONUTS in the USA"

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






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

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

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

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

A. Dunkin' Donuts, The Trademark, USA:

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



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

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

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

B. Dunkin' Donuts, Worldwide; Comments:

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

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

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

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

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

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

Time for a cup of joe,


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

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It's DUNKIN COFFEE in Spain!

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

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

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






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

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

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

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

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

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

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

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

4. PANRICO donuts

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

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

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

comment: This article above by Bill Ladas is excellent!

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

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

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

Date of Registration: May 28, 2008

Registration No.: 006179808

Trade mark name: Krispy Kreme DOUGHNUTS (figurative)


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

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

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

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

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

Cancellation No: 000002683

Type of cancellation request: Cancellation based on invalidity

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

Name of applicant for cancellation: PANRICO S.L.

ID Nº of applicant for cancellation: 278854

Nationality of applicant for cancellation:

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

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








That's all folks... for now.

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

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

Apple Files For “iTunes Live” Trademark

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

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

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

"Excerpt":

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

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

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

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

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

Until next time.....

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

Trademark • Copyright • Licensing

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

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

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

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

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

I. Trademark Manual of Examining Procedure (TMEP):

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

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

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

1209.01(c)(i) Test

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


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

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

III. List of generic and genericized trademarks:

From Wikipedia, the free encyclopedia

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

Winter Trademarks: Lesson 1 Redux

Top of Mammoth Mountain, at 11,053 feet


SCOTT® Series 4 Lightweight Aluminum Ski Poles


Skis, Boots and Poles


Skis and Poles


Winter Trademarks: Lesson 1

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

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

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

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

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

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

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

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

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

Remember: "TrademarkEsq is here for you !"

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

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

Happy New Year!

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

Enthusiasm • Service • Integrity

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

Happy Holidays !

We wish you and yours a wonderful Holiday Season !

Merry Christmas and Happy Holidays !

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

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

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

















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









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



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




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

Best wishes in the New Year,


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