Category Archives: Trademarks

Trademark Advice for a Rainy Day

It’s the time of year again when the weather turns cold and thoughts turn to the Holidays — except that it’s raining outside and a balmy 58 degrees in New York. No, we’re not offering a holiday sale on trademark registrations, although they do make great gifts. Today we are thinking about our favorite subject — trademark mills — and what a disservice they do for unwitting clients. If you were fortunate to catch our latest video, then you caught my reference to trademark searches I ran on Trademarkia and another site for “MY GOOGLE” and “YAHOOO.” Both sites told me that these marks were available for registration and encouraged me to file an application right away. A video on You Tube shows users how to file a trademark application on Trademarkia in under five minutes — and to think that I’ve been wasting seven or eight hours on conducting clearance searches, ordering and reviewing search reports, and drafting clearance letters…

Lest my griping sound like sour grapes, I actually care what happens to clients when they are given the misleading impression that they can strip a complex, thought intensive process on which important business decisions are being made into a five minute exercise in filling out a form. Although my examples of YAHOOO and MY GOOGLE are extreme, because most people wouldn’t think that they could use those marks, they are intended to show exactly how useless and harmful at the same time the “do-it-yourself” search window on the trademark mill sites can be. The lack of transparency and any semblance of legal advice makes these services dangerous. Clients are effectively blindly guessing, but leave with the impression that they’ve done a search and can rely on the results. That’s not to say that there isn’t a place in the world for an automated trademark filing service, but the risks and the tradeoffs should be disclosed up-front, so that clients know what the potential consequences of not using an actual trademark attorney are.

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New TrademarkAttorneys.com Video

The latest from TMA Studios. (click here for our new video). No, Bob Parsons doesn’t shoot an elephant.

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NAF Panel Confused By MichelinTiresSuck.com

In a recently decided NAF dispute over the domain name, MichelinTiresSuck.com, the panelist found that the word “sucks” was so synonymous with the Michelin trademark, that consumers couldn’t tell the two apart. Meyerson knows a really crappy tire when he sees one, and the Michelin tires are so bad that the Michelin car company, itself, will often refer in press releases to its, “sucky tires.” Who can forget the eponymous slogan from the 1950′s TV ads, “We’re Michelin, and we suck.”

The single member panelist also took issue with the fact that the Respondent failed to make use of the domain name in question. Writing for the unanimous panel, Mr. Meyerson proclaimed, “Michelin tires suck, and they suck hard. The Respondent’s failure to say so on an active website was evidence of Respondent’s bad faith.”

Shortly after the decision, Michelin announced its plans to launch a whole new line of “tires that suck.”

This decision marks something utterly non-remarkable in UDRP Land — a mind numbingly bad decision by a Panelist on an issue implicating the constitutional right of free speech. If Rob Terry had a bad experience with Michelin tires and wanted to tell the world that they suck, he had every right to register a domain name — his 21st century soap box, and tell the world. The fact that he didn’t put up a site quickly enough to satisfy the panelist, or spend money on attorneys, does not make him a cybersquatter. Awarding “sucks” names to corporations because they are too thin-skinned to take the heat is not only wrong, it goes against one of the greatest traditions of our country. So Michelin, to you I say, “you suck,” but perhaps no one understands sucking better than the NAF panelist responsible for this slice of injustice.

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TrademarkAttorneys.com Featured in World Trademark Review

We have been troubled by the rise of low-cost, high volume trademark mills. We have received complaints of poor service and improperly-filed applications users who have used these services.  Trademarks is a complex area of the law, and a trademark attorney is a counselor and advisor, first and foremost.  We believe in providing our clients with the information that they need to make informed decisions.  World Trademark Review, a respected trademark industry publication, has been covering the rise of the trademark mills and recently ran an article on TrademarkAttorneys.com.  You can find the article here. (Click here)

http://www.worldtrademarkreview.com/daily/detail.aspx?g=28cb0d56-4465-49fa-a9b8-b2ca30184a06&q=brett+lewis#search=%22brett+lewis%22

Who’s the Boss?

There are those times.  There’s a business dispute.  There’s a domain name or fifty.  And there’s the UDRP.  It’s far lest costly, as a general rule, to file a UDRP than it is to litigate in court.  What to do?  When is a dispute actionable under the UDRP and when is it a business dispute?  The answer is not always clear.

In Autoboss Tech., Inc. v. Cardiag cardiag / Cardiag Inc., FA 1405219 (Sept. 23, 2011), a manufacturer filed a claim against its former distributor over the registration and use of the <AutoBoss.us> domain name.  Confronted with an unclear factual record and conflicting claims, the Panel found that “the Domain Name is only one element of a much broader commercial dispute between the parties that involves Complainant’s termination of Respondent’s distributorship allegedly without notice, the recovery of costs advanced by Respondent to promote the business of Respondent as a distributor of Complainant’s products, and possible improper interruption of business relationships between Respondent and its customers by Complainant.”  Quoting a prior decision, the Panel denied the claim:

[The Policy’s purpose is to] combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes . . . . The issues between the parties are not limited to the law of trade marks.  There are other intellectual property issues.  There are serious contractual issues.  There are questions of governing law and proper forum if the matter were litigated.  Were all the issues fully ventilated before a Court of competent jurisdiction, there may be findings of implied contractual terms, minimum termination period, breach of contract, estoppels or other equitable defenses.  So far as the facts fit within trade mark law, there may be arguments of infringement, validity of the registrations, ownership of goodwill, local reputation, consent, acquiescence, and so on.

In hindsight, this appears to be a clear case for the courts, however, the facts are not always so clear, and parties sometimes will feign the nature or extent of a commercial or business relationship in order to thwart the UDRP.

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Can I Trademark the Title of a Single Work?

The title of a single creative work is not a registrable trademark with the U.S. Trademark Office (USPTO).  Single creative works typically include, but are not limited to, books, sound recordings, downloadable songs, downloadable ring tones, videocassettes, DVDs, audio CDs and films.  The basis for the USPTO refusal is that the title of a single work (for example, the album Sgt. Pepper’s Lonely Hearts Club Band) fails to function as a source identifier because consumers will identify the title as a sole creative work rather than the source of the work (in our example, The Beatles).

However, a title may be registered when it has been used on a series of creative works or is a type of work in which the content changes with every issue or performance. Therefore, in order to register a title with the USPTO an applicant must demonstrate that the title is used on at least two different creative works.  This issue is particularly important to authors, musicians and filmmakers seeking trademark protection for titles to their creative endeavors.

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Olympic Trademark Dispute

Munich is competing with Pyeongchang, South Korea and Annecy, France to host the 2018 Winter Olympic Games.  The Bavarian capital is also in competition with a Berlin based real estate firm over its Winter Games trademark.  The stylized M logo seen below (top) was chosen and adopted by Munich in October 2009 after a nationwide logo competition featuring designs submitted by German citizens.  Real estate firm AM Immobilien Consulting, owners of the trademark appearing below (bottom), have used what they claim is a confusingly similar stylization since 2006.  AM Immobilien Consulting opposed Munich’s Olympic bid logo by filing an opposition with the German Patent & Trademark Office after receiving complaints from potential clients who viewed their use as an attempt to cash-in on the city’s bid to host the Olympics.

This is a classic case of “reverse trademark confusion” — where the later user (here Munich 2018) becomes better known than the first user (AM Immobilien Consulting).  Under such scenarios, typically the first user is a small business and the later/second user is a large multi-national company or organization with resources for extensive marketing campaigns.  It is unclear how this matter will play out under German trademark law … but how many consumers would actually be confused into thinking that Munich’s Winter Olympic campaign has a connection to a real estate practice?  Especially given the additional elements in each of these mark.  Nevertheless, this type of scenario demonstrates the difficult challenges small business owners face even when they have trademark law on their side.

The winner of the 2018 Winter Games will be announced on July 6.  The winner of this trademark dispute will be announced to much less fanfare some time thereafter.

Let the games begin …

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New Trademark Attorney

TrademarkAttorneys.com is pleased to announce that we have added to our staff a former Examining Attorney from the United States Patent and Trademark Office.  Examining Attorneys are trademark attorneys who work for the PTO and make the decisions on whether a trademark application should be granted registration.

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When to Use the TM and ® Symbols

If you are using a word, design, or other symbol as a trademark, that is, to identify the source of the goods or services that you are selling, it’s good practice to follow it up with a TM or SM symbol.  The TM stands for “trademark” and is used in connection with the sale of goods.  Use SM for marks used in connection with services.  The TM and SM place people on notice that you are claiming trademark rights.

Unless you have a federal trademark registration, you should not be using the ®.  The ® symbol is reserved for registered U.S. trademarks, and signifies that the owner of the trademark owns a whole host of rights.

-Trademark Attorneys

Trademarks Gone Wild

I get asked all the time to file UDRPs over highly descriptive and generic dictionary words and phrases.  This week, I got a call from an insistent gentleman who wanted help with a UDRP he’d already filed.  He wasn’t happy with his lawyer and was looking to replace him.  The trademark?  Something so generic that I nearly fell off of my chair. Suffice it to say, I turned him down.

On the other side of the coin, one of my clients got sued over . . . wait for it . . . wait for it  . . . a totally descriptive geo domain.  This marks the second time that this client has been sued by the SAME individual over the SAME domain name.  It’s really trademark abuse at this point, but the remedies for a domain owner are limited.  Courts don’t award fees to the winning party in this country, and it takes a LOT for a court to award sanctions against an abusive party.  Sadly, systemic unfairness does exist in our system.  Until something is changed legislatively, there will continue to be no disincentive for larger, better financed entities to file abusive claims.