Spring Skiing and On-Snow Trademarks: Nordica, Rossignol, ARMADA, Grenade, Oakley, Persol, Burton, Coppertone........ Don't cha just feel like blowing out of town Right Now and getting on the highway or a plane or a train and hitting the slopes...?
Before you go, have a peek at these Great On Snow Brands and Trademarks:
Nordica, Rossignol, ARMADA, Grenade, Oakley, Persol, Burton........ Did you know:
TRADEMARKS DEFINED
A trademark (or mark) is defined as any word, symbol, slogan, or device (such as a design), or a combination of them, used by a manufacturer or merchant to identify his goods or services and to distinguish them from those manufactured, sold or serviced by others. ROSSIGNOL® and BURTON® are excellent examples of 'word' marks for skis and snowboards. "TAN DON'T BURN" is an example of a 'slogan' mark and if you are a spring skier you definitely want to rachet up the SPF to protect your skin, esp. on your face. A logo or design such as the famous COPPERTONE girl and the dog is an example of a 'design' mark. OAKLEY® and PERSOL® for goggles and sunglasses are popular on the slopes too. And don't forget to protect your head from injury with a suitable protective helmet. A few examples of trademarks for helmets include BELL®, BURTON® and LEEDOM®. An example of a service mark is ESPN® for the "entertainment services, reporting and sports programming services rendered through the medium of television." Such a service mark as ESPN® can also be exploited and serve as a trademark (i.e., for clothes (shirts, hats, sweaters, vests); prerecorded videotapes; 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.
So the next time you are on the slopes be sure to check out all the Brands and Trademarks on display and in use. Each of the aforementioned well known brands are backed up and protected by a Trademark Registration. If you too have a brand, consider whether or not you have adequately protected it with a trademark or service mark registration. If you are doing business in other countries and haven't done any registration work, it is strongly suggested you do so as soon as possible, esp. if you want to avoid the proverbial snowball in the face in the form of a trademark infringement. For more information on this topic, check out our website at:
http://www.TrademarkEsq.com
and click on ARTICLES.
Friday, March 21, 2008
Friday, March 07, 2008
Interactive Trademarks 2.0
Interactive Trademarks 2.0:
Selection, Clearance & Registration
By William E. Maguire
Interactive Trademarks and the corresponding jargon have evolved significantly since the 1990s. Consider such terms as "edutainment" or "superhighway" which were once in vogue. Today's buzz words now include "Web 2.0," "shopcasting," "wiki," and "mobile tv," among many others.
The purpose of this article is to introduce the reader to the fundamental aspects of trademark law, particularly with respect to such well known interactive trademarks as SONY, NINTENDO, EA SPORTS, and EIDOS. Each of these marks readily identify the products that have made them well known. Yet, these types of interactive trademarks are also merchandised for ancillary products such as t-shirts, hats, gear bags, comic books, posters, among other products. In addition, these marks can be spun off as feature films or animated cartoon series which may in turn be registrable as service marks.
Click here to read more....
http://trademarkesq.com/pages/article.html
Selection, Clearance & Registration
By William E. Maguire
Interactive Trademarks and the corresponding jargon have evolved significantly since the 1990s. Consider such terms as "edutainment" or "superhighway" which were once in vogue. Today's buzz words now include "Web 2.0," "shopcasting," "wiki," and "mobile tv," among many others.
The purpose of this article is to introduce the reader to the fundamental aspects of trademark law, particularly with respect to such well known interactive trademarks as SONY, NINTENDO, EA SPORTS, and EIDOS. Each of these marks readily identify the products that have made them well known. Yet, these types of interactive trademarks are also merchandised for ancillary products such as t-shirts, hats, gear bags, comic books, posters, among other products. In addition, these marks can be spun off as feature films or animated cartoon series which may in turn be registrable as service marks.
Click here to read more....
http://trademarkesq.com/pages/article.html
Thursday, August 09, 2007
"What's in a Name Anyways ?!"
The Wall Street Journal (WSJ) recently reported on Aug. 5, 2007, that Joseph Abboud, the famous men's clothing designer, is starting a new label called JAZ. It was only a few years ago that he sold his JOSEPH ABBOUD trademark and label for approx. $65 million dollars.
The question, therefore, is whether Mr. Abboud can still use his own name to sell his new line of men's clothing. The answer is "That Depends", of course. Can Mr. Abboud now use JOSEPH ABBOUD as a trademark ? Definitely not ! Is there any other type of use that he can undertake ? As a matter of fact, according to the WSJ and Mr. Abboud's trademark counsel, he intends to do just that. In this regard, Mr. Abboud intends to use the tagline, "A new composition by designer Joseph Abboud."
You may now be asking how can Mr. Abboud use his name like this if he sold the rights to his trademark, JOSEPH ABBOUD. This is where U.S. Trademark Law comes into play.
It just so happens that the Federal Trademark Act provides for the so-called "descriptive use" of someone else's trademark, which is sometimes referred to as "Trademark Fair Use." In the Federal Trademark Act at 15 U.S.C. §1115(b)(4), it states the following to be a defense to trademark infringement: "That the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party's individual name in his business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin."
In this case, of course, Mr. Abboud and his trademark counsel have selected a fine example of trademark fair use which is reasonably understood as merely a descriptive use of Mr. Abboud's name in connection with his new venture. In connection with this descriptive tagline, however, they must still be careful to avoid common earmarks of trademark use such as the use of quotation marks, stylized fonts, large type size, different color type, etc. Additionally, Mr. Abboud and his attorney have indicated that Mr. Abboud intends to use the trademark, JAZ, as his new label for men's apparel, so there is clear intent as to the trademark that Mr. Abboud is going to use.
What will happen, however, in terms of Mr. Abboud's marketing and promotional efforts is a potential point of contention. To what extent can Mr. Abboud use his likeness and his name in association with what is certainly going to be a large scale multimedia advertising and promotional campaign. Time will tell, of course, whether or not Mr. Abboud will cross the line and cause likelihood of confusion between his new label and the label he sold. The conundrum for Mr. Abboud, therefore, as stated in the WSJ, "Mr. Abboud faces an unusual challenge in the design world: how to remind consumers and retailers of his past success while distancing his new line from the brand that currently bears his name."
Thus it all comes down to the fact that this is all abboud time, its all abboud place, and its obviously abboud time I leave this space.
The question, therefore, is whether Mr. Abboud can still use his own name to sell his new line of men's clothing. The answer is "That Depends", of course. Can Mr. Abboud now use JOSEPH ABBOUD as a trademark ? Definitely not ! Is there any other type of use that he can undertake ? As a matter of fact, according to the WSJ and Mr. Abboud's trademark counsel, he intends to do just that. In this regard, Mr. Abboud intends to use the tagline, "A new composition by designer Joseph Abboud."
You may now be asking how can Mr. Abboud use his name like this if he sold the rights to his trademark, JOSEPH ABBOUD. This is where U.S. Trademark Law comes into play.
It just so happens that the Federal Trademark Act provides for the so-called "descriptive use" of someone else's trademark, which is sometimes referred to as "Trademark Fair Use." In the Federal Trademark Act at 15 U.S.C. §1115(b)(4), it states the following to be a defense to trademark infringement: "That the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party's individual name in his business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin."
In this case, of course, Mr. Abboud and his trademark counsel have selected a fine example of trademark fair use which is reasonably understood as merely a descriptive use of Mr. Abboud's name in connection with his new venture. In connection with this descriptive tagline, however, they must still be careful to avoid common earmarks of trademark use such as the use of quotation marks, stylized fonts, large type size, different color type, etc. Additionally, Mr. Abboud and his attorney have indicated that Mr. Abboud intends to use the trademark, JAZ, as his new label for men's apparel, so there is clear intent as to the trademark that Mr. Abboud is going to use.
What will happen, however, in terms of Mr. Abboud's marketing and promotional efforts is a potential point of contention. To what extent can Mr. Abboud use his likeness and his name in association with what is certainly going to be a large scale multimedia advertising and promotional campaign. Time will tell, of course, whether or not Mr. Abboud will cross the line and cause likelihood of confusion between his new label and the label he sold. The conundrum for Mr. Abboud, therefore, as stated in the WSJ, "Mr. Abboud faces an unusual challenge in the design world: how to remind consumers and retailers of his past success while distancing his new line from the brand that currently bears his name."
Thus it all comes down to the fact that this is all abboud time, its all abboud place, and its obviously abboud time I leave this space.
Thursday, February 08, 2007
Surrounded by Trademarks !
We are surrounded ! Everywhere you look and/or listen. Branding is a given in today's world.
In just the past week, here are just a few of brands and/or trademarks that the national and local media have drawn attention to:
1. The Super Bowl, which featured numerous famous brands and/or trademarks, including but not limited to, Budweiser, GoDaddy.com, Lexus, Coca-Cola, and Pepsi.
2. The Los Angeles Times, Feb. 5, 2007, featured articles such as the following:
a. Sports section: (1) The Super Bowl XLI, on page 1; and (2) Robert August surfboards, on page 3;
b. Business section: (1) NBC; (2) Barbie by Mattel; and (3) BRP motorcycles;
c. Health section: Snowboarding, featuring protective apparel by AEGIX.
It is not a coincidence that each of the aforementioned brands and/or trademarks have taken the step of seeking and/or securing trademark registrations to maximize the protection of these business assets.
If you are uncertain how to go about protecting your proprietary rights, we welcome you to visit our homepage at:
http://trademarkesq.com/homepage.html
and request a copy of our "Seven Secrets To Protecting What's Yours".
Best wishes,
William Maguire
http://www.TrademarkEsq.com
Los Angeles, CA
In just the past week, here are just a few of brands and/or trademarks that the national and local media have drawn attention to:
1. The Super Bowl, which featured numerous famous brands and/or trademarks, including but not limited to, Budweiser, GoDaddy.com, Lexus, Coca-Cola, and Pepsi.
2. The Los Angeles Times, Feb. 5, 2007, featured articles such as the following:
a. Sports section: (1) The Super Bowl XLI, on page 1; and (2) Robert August surfboards, on page 3;
b. Business section: (1) NBC; (2) Barbie by Mattel; and (3) BRP motorcycles;
c. Health section: Snowboarding, featuring protective apparel by AEGIX.
It is not a coincidence that each of the aforementioned brands and/or trademarks have taken the step of seeking and/or securing trademark registrations to maximize the protection of these business assets.
If you are uncertain how to go about protecting your proprietary rights, we welcome you to visit our homepage at:
http://trademarkesq.com/homepage.html
and request a copy of our "Seven Secrets To Protecting What's Yours".
Best wishes,
William Maguire
http://www.TrademarkEsq.com
Los Angeles, CA
Thursday, January 18, 2007
SNOW IN MALIBU !
Yes, you heard that right ! The arctic jet stream has resulted in snow falling in Malibu ! Malibu Snow: get it while its hot, er, cold ! Enough for a good old fashioned snowball fight. If you are interested in snowboarding or skiing, however, it will still be necessary to travel to points farther north in the Sierras or locally in the San Bernardino Mountains.
The irony, of course, is that when one thinks of Malibu the first word one thinks of is not 'snow'. Sun or bikini or waves or surf would come to mind to be sure. MALIBU thus has suggestive significance. In terms of trademark law, this can be advantageous. On the other hand, MALIBU, also has geographic significance which can be disadvantageous to a trademark owner and is an issue worth analyzing before adoption and attempts to register a trademark.
Some examples of MALIBU trademarks that have been registered with the U.S. Patent and Trademark Office (USPTO) http://www.uspto.gov :
Malibu Comics, for a series of comic books;
Malibu Glitz, for cosmetics;
Malibu, for boats;
True Malibu, for perfume;
Malibu, for clothing;
Malibu, for insect repellant.
In each of the above-enumerated uses and registrations of MALIBU, the marks and their goods and/or services are not geographically descriptive. That is, Malibu is used 'fancifully' in connection with both distilled spirits and comic books.
Since Malibu is not geographically identifiable with comic books or distilled spirits, these marks are registrable. On the other hand, were someone to try to register MALIBU SUNTAN for a retail sun tanning salon located in Malibu, they would likely face several objections from the USPTO, namely, (a) refusal as geographically descriptive; and (b) merely descriptive of the services to be provided.
And so the nagging question you may be asking yourself now is: Is MALIBU SNOW registrable as a trademark or service mark? The answer, of course, depends on the goods and/or services being provided. How about for 'retail ice cream store services' ? In my opinion, MALIBU SNOW, is registrable for an ice cream store. Whether it can be registered, in fact, will also depend on its similarity to any other pending or registered marks. Theoretically speaking, however, MALIBU SNOW should not be refused registration as being geographically descriptive.
With all of this talk about trademarks and registrability, it is clear that this is no time for the timid or is such an undertaking merely a day at the beach.
When considering the adoption and use and registration of a trademark it is well advised to contact and hire a trademark attorney to help you wade through the inshore holes and surf, not to mention, snow that you may encounter in Malibu or Mammoth for that matter.
The irony, of course, is that when one thinks of Malibu the first word one thinks of is not 'snow'. Sun or bikini or waves or surf would come to mind to be sure. MALIBU thus has suggestive significance. In terms of trademark law, this can be advantageous. On the other hand, MALIBU, also has geographic significance which can be disadvantageous to a trademark owner and is an issue worth analyzing before adoption and attempts to register a trademark.
Some examples of MALIBU trademarks that have been registered with the U.S. Patent and Trademark Office (USPTO) http://www.uspto.gov :
Malibu Comics, for a series of comic books;
Malibu Glitz, for cosmetics;
Malibu, for boats;
True Malibu, for perfume;
Malibu, for clothing;
Malibu, for insect repellant.
In each of the above-enumerated uses and registrations of MALIBU, the marks and their goods and/or services are not geographically descriptive. That is, Malibu is used 'fancifully' in connection with both distilled spirits and comic books.
Since Malibu is not geographically identifiable with comic books or distilled spirits, these marks are registrable. On the other hand, were someone to try to register MALIBU SUNTAN for a retail sun tanning salon located in Malibu, they would likely face several objections from the USPTO, namely, (a) refusal as geographically descriptive; and (b) merely descriptive of the services to be provided.
And so the nagging question you may be asking yourself now is: Is MALIBU SNOW registrable as a trademark or service mark? The answer, of course, depends on the goods and/or services being provided. How about for 'retail ice cream store services' ? In my opinion, MALIBU SNOW, is registrable for an ice cream store. Whether it can be registered, in fact, will also depend on its similarity to any other pending or registered marks. Theoretically speaking, however, MALIBU SNOW should not be refused registration as being geographically descriptive.
With all of this talk about trademarks and registrability, it is clear that this is no time for the timid or is such an undertaking merely a day at the beach.
When considering the adoption and use and registration of a trademark it is well advised to contact and hire a trademark attorney to help you wade through the inshore holes and surf, not to mention, snow that you may encounter in Malibu or Mammoth for that matter.
Tuesday, January 02, 2007
2007: Happy New Year ! The Seven Secrets To "Protecting What's Yours !"
1. Identify your proprietary rights, e.g., trademarks, logos, artwork, copyrights, etc.
2. Prioritizing proprietary rights registration.
a. your business model and budget must be analyzed to help you determine what rights will be prioritized. What is most important to your business success in terms of your product and/or services ? For example, if you have a logo or artwork that is very important to your business, then you need to address both trademark and copyright issues.
3. Finding and Selecting a Lawyer to assist you in protecting your proprietary rights.
a. obtain referrals from colleagues, friends, bar associations.
b. web searching and analysis of lawyer websites. Use keywords such as 'trademarks' and geographic regions if location is important.
c. is the attorney qualified or credible, e.g., has the attorney written and published articles of relevance.
d. contact and conduct interviews in person, on the phone or via email.
4. Search and clearance.
a. adopting and using a trademark, for example, without conducting a search to see if the same or similar mark is already being used for the same or similar goods or services is a risk that can be minimized by conducting trademark and web searches.
5. Registration.
a. Analysis and identification of your proprietary rights will clarify what should be registered and with what government entities and where. There are substantial benefits to obtaining registrations of both trademarks and copyrights in the U.S.
6. Defense.
a. You cannot bury your head in the sand as the good ostrich can. The proprietary rights owner has an obligation to defend its proprietary rights. For example, if you find out that a third party has reproduced your artwork or logo, then you need to put them on notice of your rights.
7. Renewal.
a. Trademarks can exist in perpetuity as long as they are in use in the U.S.
If you obtain a registration in the U.S. as well as elsewhere you will be subject to renewal and/or continued use filing obligations in order to maintain your registrations. These registration terms must be calendared.
Best wishes for your every success in this new year of opportunity.
In this year of 2007 you, indeed, have the opportunity and license to succeed.
2. Prioritizing proprietary rights registration.
a. your business model and budget must be analyzed to help you determine what rights will be prioritized. What is most important to your business success in terms of your product and/or services ? For example, if you have a logo or artwork that is very important to your business, then you need to address both trademark and copyright issues.
3. Finding and Selecting a Lawyer to assist you in protecting your proprietary rights.
a. obtain referrals from colleagues, friends, bar associations.
b. web searching and analysis of lawyer websites. Use keywords such as 'trademarks' and geographic regions if location is important.
c. is the attorney qualified or credible, e.g., has the attorney written and published articles of relevance.
d. contact and conduct interviews in person, on the phone or via email.
4. Search and clearance.
a. adopting and using a trademark, for example, without conducting a search to see if the same or similar mark is already being used for the same or similar goods or services is a risk that can be minimized by conducting trademark and web searches.
5. Registration.
a. Analysis and identification of your proprietary rights will clarify what should be registered and with what government entities and where. There are substantial benefits to obtaining registrations of both trademarks and copyrights in the U.S.
6. Defense.
a. You cannot bury your head in the sand as the good ostrich can. The proprietary rights owner has an obligation to defend its proprietary rights. For example, if you find out that a third party has reproduced your artwork or logo, then you need to put them on notice of your rights.
7. Renewal.
a. Trademarks can exist in perpetuity as long as they are in use in the U.S.
If you obtain a registration in the U.S. as well as elsewhere you will be subject to renewal and/or continued use filing obligations in order to maintain your registrations. These registration terms must be calendared.
Best wishes for your every success in this new year of opportunity.
In this year of 2007 you, indeed, have the opportunity and license to succeed.
Wednesday, December 20, 2006
ROCK 'N ROLL SWAG TUSSLE
San Francisco, Calif. A federal lawsuit was filed earlier this week on Dec. 18, 2006 on behalf of such legendary Rock 'n Roll musicians and bands as The Grateful Dead, Carlos Santana, Led Zeppelin, and The Doors. The named defendant is a commercial website called "Wolfgang's Vault" which sells rock 'n roll memorabilia. (Grateful Dead Productions v. Sagan).
The lawsuit alleges in part that the defendant is violating the musicians proprietary rights including the right of publicity, trademarks and copyrights. One of the issues is whether the defendant should be allowed to profit from sales of memorabilia (concert posters, vintage t-shirts, etc.) purchased from the Estate of Bill Graham, the legendary concert promoter who died in 1991. The plaintiff musicians allege that the memorabilia at issue was promotional in nature and never intended for sale and that Graham never had the right to sell, reproduce or otherwise exploit this memorabilia. With each side taking positions that are diametrically opposed, this legal tussle will likely focus on the memorabilia at issue and each items status as either official merchandise or promotional material. The role of trademark protection again rears its head in this case and reinforces the value of maximizing the legal protection measures available. For more on the subtleties of maximizing trademark protection, our article on "Rock 'n Roll Trademarks: Selection, Clearance & Registration", is available online at our website at:
http://www.TrademarkEsq.com/pages/article11.html
In any event, it is hoped that this case will result in a decision which will clarify the treatment of such pop culture memorabilia, which the Baby Boomer generation covets so dearly, and which in some cases may indeed be subject to continuing rights as claimed by the musician's herein when the items were promotional in nature, rather than official merchandise, and/or never the prior subject matter of a proper transfer of title.
To be distinguished, of course, is previously sold official memorabilia, which can be sold and resold pursuant to the Copyright Act's "First Sale" doctrine. Thus, your previously purchased lp's, cd's, and t-shirts can be sold on ebay to your hearts delight, if you can dare part with them. Just don't be scanning those album covers and trying to make a profit by selling such reproductions.
The lawsuit alleges in part that the defendant is violating the musicians proprietary rights including the right of publicity, trademarks and copyrights. One of the issues is whether the defendant should be allowed to profit from sales of memorabilia (concert posters, vintage t-shirts, etc.) purchased from the Estate of Bill Graham, the legendary concert promoter who died in 1991. The plaintiff musicians allege that the memorabilia at issue was promotional in nature and never intended for sale and that Graham never had the right to sell, reproduce or otherwise exploit this memorabilia. With each side taking positions that are diametrically opposed, this legal tussle will likely focus on the memorabilia at issue and each items status as either official merchandise or promotional material. The role of trademark protection again rears its head in this case and reinforces the value of maximizing the legal protection measures available. For more on the subtleties of maximizing trademark protection, our article on "Rock 'n Roll Trademarks: Selection, Clearance & Registration", is available online at our website at:
http://www.TrademarkEsq.com/pages/article11.html
In any event, it is hoped that this case will result in a decision which will clarify the treatment of such pop culture memorabilia, which the Baby Boomer generation covets so dearly, and which in some cases may indeed be subject to continuing rights as claimed by the musician's herein when the items were promotional in nature, rather than official merchandise, and/or never the prior subject matter of a proper transfer of title.
To be distinguished, of course, is previously sold official memorabilia, which can be sold and resold pursuant to the Copyright Act's "First Sale" doctrine. Thus, your previously purchased lp's, cd's, and t-shirts can be sold on ebay to your hearts delight, if you can dare part with them. Just don't be scanning those album covers and trying to make a profit by selling such reproductions.
Wednesday, December 13, 2006
'TIS THE SEASON...
Happy Holidays to you and yours from TrademarkEsq.com !
http://www.TrademarkEsq.com
During this holiday season some very popular brands and/or trademarks seem to raise their profile and draw the interest of consumers. This blog entry today will mention just a few of these brands in terms of their commercial impression, including their internet presence, as well as their trademark significance. No doubt these comments may also conjure up fond memories for the reader-consumer.
For example:
A. CHOCOLATE AND COOKIES:
Be sure to check out the following Wikipedia entries which are interesting:
http://en.wikipedia.org/wiki/Dark_Chocolate
http://en.wikipedia.org/wiki/Cookie_monster
1. SEE'S CANDIE'S http://www.Sees.com
Comment: Certainly a staple in California and craved all over the U.S. and beyond. Nuts & Chews are my favorite. Even Amazon.com seems to agree:
http://www.amazon.com/Sees-Candies-lb-Nuts-Chews/dp/B0000CH39W
Trademark Highlight: Among numerous other registrations is the registration for
SEE'S CANDIES, Intl. Class #30 for 'candy'; Reg. No. 1518181.
2. MRS. FIELDS http://www.MrsFields.com
Comment: This year's slogan at Mrs. Fields is "Taste the Joy of Giving !" I had the opportunity, interestingly, of tasting the joy of receiving, after having found myself the recipient of a big box of Mrs. Fields cookies ! WOW !!!!!
Trademark Highlight: Among many other U.S. Trademark Registrations is the registration for: MRS. FIELDS, Intl. Class #30 for 'bakery goods, namely cookies and brownies'; Reg. No. 1983184.
B. SKI RESORTS AND SKI/SNOWBOARD EQUIPMENT:
1. VAIL
Comment: One of America's grandest winter resorts is Vail in Colorado with Beaver Creek also nearby.
On the Web:
http://www.vailresorts.com/index_nf.cfm
Trademark Highlight: One U.S. Registration worthy of mention is the service mark for VAIL RESORTS, Class #35 for 'Management and operation of recreational facilities for others'; and Class #41 for 'Ski resort services; arranging competitions in the filed of ski racing, providing instruction in the field of skiing, etc.'; Reg. No. 2695373.
2. WHISTLER
Comment: Or if you prefer, and with the early heavy snowfall they received, some people are making plans to travel to British Columbia in Canada to visit the Whistler Blackcomb ski resort.
On the Web:
http://www.whistlerblackcomb.com/index.htm
Trademark Highlight: In addition to other registrations, the sample chosen here is for a trademark for apparel owned by the Resort entity, namely, Blackcomb Skiing Enterprises, a Limited Partnership composed of Intrawest Resort Corporation / Corporation de Villegiature Intrawest, a Canada corporation, collectively a LIMITED PARTNERSHIP of CANADA , for the mark, WHISTLER CANADA HIGHER GROUND, in Class #25 for 'Men's, women's and children's clothing, namely, shorts, blouses, tee-shirts, sweatshirts, ski jackets, snowboard jackets, track suits, jackets, golf shirts, vests and hats'; Reg. No. 2568781.
3. K2
Comment: K2 seems to have it all: skis, snowboards, helmets, goggles, apparel, etc. A friend of mine swears by his K2 Apache Recon shaped all mountain skis ! I'm partial to my Salomon XScreams, also a shaped all mountain pair of skis.
On the Web:
http://www.k2sports.com/
http://www.k2snowboards.com/default.asp?Lang=English
Trademark Highlight: Among many others, registered in the U.S. is the trademark, K2, in Intl. Class 28 for 'sports equipment namely, snow skis, ski poles, snowboards, snowboard bindings, in-line skates, knee pads, wrist pads and elbow pads, all for athletic use and protective gloves for skating'; Reg. No. 3096393.
4. BURTON
Comment: One of the very first snowboards ever, if not the very first. There are competing claims on this topic. Whatever the case, Burton's apparel is top quality and its snowboards and boots are cutting edge and definitely favored by a huge fan/rider base. A friend of mine recently tried out next season's ('07/'08) gear at a private demo for dealers in Vail, Colorado. Mum's the word, however, on these next season offerings...
On the Web:
http://www.burton.com/default.aspx
Trademark Highlight: Among numerous registrations is the trademark, BURTON SNOWBOARDS, in Intl. Class #28 for 'SNOWBOARDS - NAMELY, SINGLE SKIS IN THE NATURE OF SURFBOARDS TO BE USED IN SNOW'; Reg. No. 1362128.
C. CONCLUSION:
The holidays are most importantly a time to enjoy the company of family and friends. In our society it is also nevertheless nearly impossible to not notice or purchase or enjoy the products and services exemplified by the above brands and/or trademarks.
These brands and the comments above also make it clear that brands and their corresponding trademark or service mark registrations are part and parcel to the success of the owners of said marks. This lesson of proprietary rights acquisition, maintenance and defense is certainly worth remembering and implementing by anyone doing business within our society's commercial landscape.
While I neglected to discuss Starbucks Eggnog Latte,
http://www.egg-nog.info/Egg_Nog_Latte_Recipe.html
which belongs on any Top Ten List of Holiday Favorites, I will leave that to each of you to enjoy on your own time.
http://www.TrademarkEsq.com
During this holiday season some very popular brands and/or trademarks seem to raise their profile and draw the interest of consumers. This blog entry today will mention just a few of these brands in terms of their commercial impression, including their internet presence, as well as their trademark significance. No doubt these comments may also conjure up fond memories for the reader-consumer.
For example:
A. CHOCOLATE AND COOKIES:
Be sure to check out the following Wikipedia entries which are interesting:
http://en.wikipedia.org/wiki/Dark_Chocolate
http://en.wikipedia.org/wiki/Cookie_monster
1. SEE'S CANDIE'S http://www.Sees.com
Comment: Certainly a staple in California and craved all over the U.S. and beyond. Nuts & Chews are my favorite. Even Amazon.com seems to agree:
http://www.amazon.com/Sees-Candies-lb-Nuts-Chews/dp/B0000CH39W
Trademark Highlight: Among numerous other registrations is the registration for
SEE'S CANDIES, Intl. Class #30 for 'candy'; Reg. No. 1518181.
2. MRS. FIELDS http://www.MrsFields.com
Comment: This year's slogan at Mrs. Fields is "Taste the Joy of Giving !" I had the opportunity, interestingly, of tasting the joy of receiving, after having found myself the recipient of a big box of Mrs. Fields cookies ! WOW !!!!!
Trademark Highlight: Among many other U.S. Trademark Registrations is the registration for: MRS. FIELDS, Intl. Class #30 for 'bakery goods, namely cookies and brownies'; Reg. No. 1983184.
B. SKI RESORTS AND SKI/SNOWBOARD EQUIPMENT:
1. VAIL
Comment: One of America's grandest winter resorts is Vail in Colorado with Beaver Creek also nearby.
On the Web:
http://www.vailresorts.com/index_nf.cfm
Trademark Highlight: One U.S. Registration worthy of mention is the service mark for VAIL RESORTS, Class #35 for 'Management and operation of recreational facilities for others'; and Class #41 for 'Ski resort services; arranging competitions in the filed of ski racing, providing instruction in the field of skiing, etc.'; Reg. No. 2695373.
2. WHISTLER
Comment: Or if you prefer, and with the early heavy snowfall they received, some people are making plans to travel to British Columbia in Canada to visit the Whistler Blackcomb ski resort.
On the Web:
http://www.whistlerblackcomb.com/index.htm
Trademark Highlight: In addition to other registrations, the sample chosen here is for a trademark for apparel owned by the Resort entity, namely, Blackcomb Skiing Enterprises, a Limited Partnership composed of Intrawest Resort Corporation / Corporation de Villegiature Intrawest, a Canada corporation, collectively a LIMITED PARTNERSHIP of CANADA , for the mark, WHISTLER CANADA HIGHER GROUND, in Class #25 for 'Men's, women's and children's clothing, namely, shorts, blouses, tee-shirts, sweatshirts, ski jackets, snowboard jackets, track suits, jackets, golf shirts, vests and hats'; Reg. No. 2568781.
3. K2
Comment: K2 seems to have it all: skis, snowboards, helmets, goggles, apparel, etc. A friend of mine swears by his K2 Apache Recon shaped all mountain skis ! I'm partial to my Salomon XScreams, also a shaped all mountain pair of skis.
On the Web:
http://www.k2sports.com/
http://www.k2snowboards.com/default.asp?Lang=English
Trademark Highlight: Among many others, registered in the U.S. is the trademark, K2, in Intl. Class 28 for 'sports equipment namely, snow skis, ski poles, snowboards, snowboard bindings, in-line skates, knee pads, wrist pads and elbow pads, all for athletic use and protective gloves for skating'; Reg. No. 3096393.
4. BURTON
Comment: One of the very first snowboards ever, if not the very first. There are competing claims on this topic. Whatever the case, Burton's apparel is top quality and its snowboards and boots are cutting edge and definitely favored by a huge fan/rider base. A friend of mine recently tried out next season's ('07/'08) gear at a private demo for dealers in Vail, Colorado. Mum's the word, however, on these next season offerings...
On the Web:
http://www.burton.com/default.aspx
Trademark Highlight: Among numerous registrations is the trademark, BURTON SNOWBOARDS, in Intl. Class #28 for 'SNOWBOARDS - NAMELY, SINGLE SKIS IN THE NATURE OF SURFBOARDS TO BE USED IN SNOW'; Reg. No. 1362128.
C. CONCLUSION:
The holidays are most importantly a time to enjoy the company of family and friends. In our society it is also nevertheless nearly impossible to not notice or purchase or enjoy the products and services exemplified by the above brands and/or trademarks.
These brands and the comments above also make it clear that brands and their corresponding trademark or service mark registrations are part and parcel to the success of the owners of said marks. This lesson of proprietary rights acquisition, maintenance and defense is certainly worth remembering and implementing by anyone doing business within our society's commercial landscape.
While I neglected to discuss Starbucks Eggnog Latte,
http://www.egg-nog.info/Egg_Nog_Latte_Recipe.html
which belongs on any Top Ten List of Holiday Favorites, I will leave that to each of you to enjoy on your own time.
Wednesday, December 06, 2006
COOKIE THIEF KARMA ?!
And so the box of cookies I received the other day via UPS Ground turned out to be an empty box with no MRS. FIELDS cookies inside. Amidst my disappointment, I then noticed that the box had been vandalized through the bottom of the box and then sloppily retaped during transit from Mrs. Fields to my office.
I was not really thinking of the registered trademark for MRS. FIELDS for bakery goods, namely cookies and brownies (U.S. Reg. No. 1983184; Reg. Date, July 2, 1996), nor its recipe, which is no doubt a closely guarded trade secret. I was thinking, rather, of the strength of this famous brand name and the fact that it is imprinted in large letters on the outside of the box, which was no doubt too tempting for the cookie thief. Or perhaps the thief is a sugar addict or chocoholic... This I do not know. I do know that this theft may, in fact, be a left-handed compliment or confirmation of the good will associated with the MRS. FIELDS brand and trademark. For instance, I do receive all the books, etc. that I order from Amazon.com, so what makes MRS. FIELDS different ? I guess the thief is not much of a reader. Or maybe I should have Amazon ship my Mrs. Fields cookies in an Amazon.com cardboard box.
As yet there is no happy ending but I did call customer service at Mrs. Fields and explained my dilemma of having received their box but no cookies thanks to a cookie thief. I did not mention that this might just be karma for the freshly baked cookies I used to sneak off the stove top many years ago when my little sister wasn't looking...... yet I had already paid the price for that since my sister, after learning of my clandestine operations, later started adding Tabasco sauce to certain 'bait cookies', having finally caught me in the act and using a spatula to swat my hand as I reached from the floor from what I thought was a good hiding spot.... Unfortunately, Mrs. Fields was not able to reship the cookies in a generic box that was not imprinted in large letters with their famous brand name. This was certainly not the first time a Mrs. Fields box of cookies had been felched and another shipping alternative was advised. The jury is as yet still out on this remedial effort.
***** Dec. 7, 2006 Update: Mrs. Fields Rocks ! Replacement Package arrived this afternoon via USPS Priority Mail...... which is either a tribute to the honesty of USPS employees or the threat of tampering with U.S. Mail and its penalties is simply too big a risk. In any case, Mrs. Fields has earned even more good will as far as I'm concerned. *****
Nevertheless, I have come to the conclusion that there was a silver, or chocolate chip, lining in this travesty, namely:
That there are powerful brands in our lives. In the case of MRS. FIELDS cookies, the good will and fame associated with this trademark and brand is not just due to advertising. The product itself is obviously popular because the cookies taste so good. In any event, these powerful brands need to be protected, and in the case of MRS. FIELDS, there are indeed numerous registrations which protect this brand as a trademark and which assist the trademark owner in defending its exclusivity to this mark. This in turn is a confirmation of the value of having a solid trademark registration program and a good trademark attorney. For any trademark owner who relies on its marks to generate business and to protect it's business investment, these are obvious conclusions which ought not be ignored.
I was not really thinking of the registered trademark for MRS. FIELDS for bakery goods, namely cookies and brownies (U.S. Reg. No. 1983184; Reg. Date, July 2, 1996), nor its recipe, which is no doubt a closely guarded trade secret. I was thinking, rather, of the strength of this famous brand name and the fact that it is imprinted in large letters on the outside of the box, which was no doubt too tempting for the cookie thief. Or perhaps the thief is a sugar addict or chocoholic... This I do not know. I do know that this theft may, in fact, be a left-handed compliment or confirmation of the good will associated with the MRS. FIELDS brand and trademark. For instance, I do receive all the books, etc. that I order from Amazon.com, so what makes MRS. FIELDS different ? I guess the thief is not much of a reader. Or maybe I should have Amazon ship my Mrs. Fields cookies in an Amazon.com cardboard box.
As yet there is no happy ending but I did call customer service at Mrs. Fields and explained my dilemma of having received their box but no cookies thanks to a cookie thief. I did not mention that this might just be karma for the freshly baked cookies I used to sneak off the stove top many years ago when my little sister wasn't looking...... yet I had already paid the price for that since my sister, after learning of my clandestine operations, later started adding Tabasco sauce to certain 'bait cookies', having finally caught me in the act and using a spatula to swat my hand as I reached from the floor from what I thought was a good hiding spot.... Unfortunately, Mrs. Fields was not able to reship the cookies in a generic box that was not imprinted in large letters with their famous brand name. This was certainly not the first time a Mrs. Fields box of cookies had been felched and another shipping alternative was advised. The jury is as yet still out on this remedial effort.
***** Dec. 7, 2006 Update: Mrs. Fields Rocks ! Replacement Package arrived this afternoon via USPS Priority Mail...... which is either a tribute to the honesty of USPS employees or the threat of tampering with U.S. Mail and its penalties is simply too big a risk. In any case, Mrs. Fields has earned even more good will as far as I'm concerned. *****
Nevertheless, I have come to the conclusion that there was a silver, or chocolate chip, lining in this travesty, namely:
That there are powerful brands in our lives. In the case of MRS. FIELDS cookies, the good will and fame associated with this trademark and brand is not just due to advertising. The product itself is obviously popular because the cookies taste so good. In any event, these powerful brands need to be protected, and in the case of MRS. FIELDS, there are indeed numerous registrations which protect this brand as a trademark and which assist the trademark owner in defending its exclusivity to this mark. This in turn is a confirmation of the value of having a solid trademark registration program and a good trademark attorney. For any trademark owner who relies on its marks to generate business and to protect it's business investment, these are obvious conclusions which ought not be ignored.
Tuesday, November 28, 2006
DON'T BOGART THAT JOINTLY OWNED TRADEMARK!
Recently, in an opinion published on 11.21.06, the Calif. Court of Appeal, Second App. District ruled on a case concerning the propriety of joint ownership of a trademark (Iskenderian v. Iskenderian, Case No. B183419; 2006 DJDAR 15202). The mark at issue was a Calif. restaurant service mark, ZANKOU CHICKEN. The Appellate Court affirmatively ruled that the law does not prohibit joint ownership of a trademark. In so ruling, this state court referred to federal law on point, e.g., 15 U.S.C. Sec. 1052(d), which permits concurrent registrations of marks under certain circumstances. Additionally, the court cited Prof. Thomas McCarthy, for the proposition that joint ownership of trademarks is possible. In this regard, the court referred to McCarthy's approach as to the propriety of the joint ownership of a trademark as requiring a balancing of two policies, namely:
1) "the protection of customers, which 'requires that fragmented, multiple ownership of marks be avoided and prohibited where likelihood of confusion exists,' and
2) the contractual expectation policy, which requires that when parties create a contractual framework of joint ownership, 'their legitimate expectations should be honored." (2 McCarthy on Trademarks and Unfair Competition (4th ed., 1992), Sec. 16:40, p. 16-64.3).
In this case, the court ruled that "the policy of honoring the legitimate expectations of multiple family members owning the trademark would clearly outweigh any risk of customer confusion, as all members of the family 'have a strong interest in protecting the validity and integrity' of the Zankou Chicken mark, and 'presumably would not engage in activity detrimental to' their rights in the mark."
A contrary finding is cited in a footnote in this same opinion, namely, Durango Herald, Inc. v. Riddle (D. Colo. 1988) 719 F. Supp. 941, wherein "the district court enjoined both parties to a joint venture from further use of the joint venture's trademark after expiration of the joint venture. The parties could not agree on the expansion or extension of their joint venture agreement, and both rejected cross-offers to buy out their partnership interests in the venture." In the end, the district court in Durango ruled that the particular circumstances in that case required the 'extinguishment' of the mark.
In conclusion, the findings of the Zankou and Durango opinions seems to make clear that the joint ownership of a trademark and its enforceability will depend upon whether or not the joint owners can get along and share in the benefits and burdens of trademark ownership. Therefore, joint trademark owners should avoid selfish and self serving use of the mark to the exclusion of the other owners which can lead to the type of prohibited fragmented ownership of marks which can cause likelihood of confusion. In other words, "Don't Bogart that Trademark !"
1) "the protection of customers, which 'requires that fragmented, multiple ownership of marks be avoided and prohibited where likelihood of confusion exists,' and
2) the contractual expectation policy, which requires that when parties create a contractual framework of joint ownership, 'their legitimate expectations should be honored." (2 McCarthy on Trademarks and Unfair Competition (4th ed., 1992), Sec. 16:40, p. 16-64.3).
In this case, the court ruled that "the policy of honoring the legitimate expectations of multiple family members owning the trademark would clearly outweigh any risk of customer confusion, as all members of the family 'have a strong interest in protecting the validity and integrity' of the Zankou Chicken mark, and 'presumably would not engage in activity detrimental to' their rights in the mark."
A contrary finding is cited in a footnote in this same opinion, namely, Durango Herald, Inc. v. Riddle (D. Colo. 1988) 719 F. Supp. 941, wherein "the district court enjoined both parties to a joint venture from further use of the joint venture's trademark after expiration of the joint venture. The parties could not agree on the expansion or extension of their joint venture agreement, and both rejected cross-offers to buy out their partnership interests in the venture." In the end, the district court in Durango ruled that the particular circumstances in that case required the 'extinguishment' of the mark.
In conclusion, the findings of the Zankou and Durango opinions seems to make clear that the joint ownership of a trademark and its enforceability will depend upon whether or not the joint owners can get along and share in the benefits and burdens of trademark ownership. Therefore, joint trademark owners should avoid selfish and self serving use of the mark to the exclusion of the other owners which can lead to the type of prohibited fragmented ownership of marks which can cause likelihood of confusion. In other words, "Don't Bogart that Trademark !"
Monday, November 06, 2006
HEROES EVERYWHERE ! PROTECT WHAT’S YOURS !
As discussed last week, perhaps the Biggest breakout tv drama this season is HEROES. Thus, it is no surprise that on the cover of this week’s (Nov. 10, 2006) issue of Entertainment Weekly are three of the characters/actors from the tv series HEROES. So now that it is a true blue success story, what are the tv executives and company attorneys doing about protecting this property and what have they most likely done already.
Two of the obvious intellectual property doctrines that are applicable to protecting this property are copyright and trademark. For starters, copyright protects the content of the show, including the content of the Heroes website, the artwork, and the interactive graphic novel.
Trademark law would protect the title of the tv series, as well as any ancillary merchandising. For instance, any apparel, hats, costumes, toys, games, action figures, comic books, posters, trading cards, video games, etc. can be protected under U.S. trademark law as set forth in the Lanham Act. A primer of this very topic is available online at our office website at:
http://www.trademarkesq.com/pages/article2.html
This above-referenced article suggests an approach to “Protecting What’s Yours!”. We also hope that you will be as successful as Heroes with respect to your creative endeavors and that you will engage the full benefits provided by copyright and trademark principles so that you too can Protect What’s Yours !
Thanks for visiting TrademarkEsq !
Best wishes,
William E. Maguire
http://www.TrademarkEsq.com
*** Postscript; Dec. 14, 2006: Even Wikipedia and its legions of contributors have gotten into the act and created an entry for HEROES as follows:
http://en.wikipedia.org/wiki/Heroes_(TV_series)
Two of the obvious intellectual property doctrines that are applicable to protecting this property are copyright and trademark. For starters, copyright protects the content of the show, including the content of the Heroes website, the artwork, and the interactive graphic novel.
Trademark law would protect the title of the tv series, as well as any ancillary merchandising. For instance, any apparel, hats, costumes, toys, games, action figures, comic books, posters, trading cards, video games, etc. can be protected under U.S. trademark law as set forth in the Lanham Act. A primer of this very topic is available online at our office website at:
http://www.trademarkesq.com/pages/article2.html
This above-referenced article suggests an approach to “Protecting What’s Yours!”. We also hope that you will be as successful as Heroes with respect to your creative endeavors and that you will engage the full benefits provided by copyright and trademark principles so that you too can Protect What’s Yours !
Thanks for visiting TrademarkEsq !
Best wishes,
William E. Maguire
http://www.TrademarkEsq.com
*** Postscript; Dec. 14, 2006: Even Wikipedia and its legions of contributors have gotten into the act and created an entry for HEROES as follows:
http://en.wikipedia.org/wiki/Heroes_(TV_series)
Monday, October 30, 2006
TrademarkEsq: Trademarks • Copyrights • Licensing
SUPERHEROES NEED PROTECTION TOO !
“Save the Cheerleader. Save the World” is the current byline or slogan of the new hit NBC tv series about a group of interconnected superheroes from different parts of the world. This byline refers to a certain young high school cheerleader/superhero who is in particular peril at this stage of the series.
So why would a superhero need protection? Because there is hardly anything more intriguing than a damsel in distress. From an audience point of view this is captivating. And when a tv series becomes popular it too becomes the target of third party exploitation by counterfeiters and thieves.
So what is a tv network or tv series owner to do ? This, of course, is the domain of the intellectual property legal dept. or law firm i.p. attorney to discern and take measures to protect.
In our article first written and published in 1994, this scenario was addressed. Since updated, you can read the full text online at:
http://www.trademarkesq.com/pages/article2.html
“PROTECT WHAT’S YOURS! ”That is the call to action that this premiere web log statement is recommending. Trademark law and copyright law are the principal legal doctrines applicable in this effort to protect what is yours. In the case of HEROES, you can bet that the title of the series, the content, the characters, the artwork, the blog and comic book series are being protected.
For more information on how you can protect what is yours, we invite you to check out our website and read our complimentary articles at no cost to you.
Welcome to TrademarkEsq ! We hope you leave with a plan of action to protect your creative works.
Best wishes,
William E. Maguire
http://www.TrademarkEsq.com
“Save the Cheerleader. Save the World” is the current byline or slogan of the new hit NBC tv series about a group of interconnected superheroes from different parts of the world. This byline refers to a certain young high school cheerleader/superhero who is in particular peril at this stage of the series.
So why would a superhero need protection? Because there is hardly anything more intriguing than a damsel in distress. From an audience point of view this is captivating. And when a tv series becomes popular it too becomes the target of third party exploitation by counterfeiters and thieves.
So what is a tv network or tv series owner to do ? This, of course, is the domain of the intellectual property legal dept. or law firm i.p. attorney to discern and take measures to protect.
In our article first written and published in 1994, this scenario was addressed. Since updated, you can read the full text online at:
http://www.trademarkesq.com/pages/article2.html
“PROTECT WHAT’S YOURS! ”That is the call to action that this premiere web log statement is recommending. Trademark law and copyright law are the principal legal doctrines applicable in this effort to protect what is yours. In the case of HEROES, you can bet that the title of the series, the content, the characters, the artwork, the blog and comic book series are being protected.
For more information on how you can protect what is yours, we invite you to check out our website and read our complimentary articles at no cost to you.
Welcome to TrademarkEsq ! We hope you leave with a plan of action to protect your creative works.
Best wishes,
William E. Maguire
http://www.TrademarkEsq.com
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