Trademark Basics Part 4: After Trademark Registration

In Part 4 of Trademark Basis we explore what happens after you secure a trademark registration.  Feel free to review Part 1 “Selecting a Trademark,” Part 2 From Selection to Application,” and Part 3,  “Intent to Use.”

Q:   When should I use the ™ symbol or the ® symbol?

A:         After federal registration the mark should be identified with the _® symbol.  Do not use the _® prior to issuance of the Federal Registration.

While the federal application is pending ( from one to two years), the trademark should be identified with the ^TM symbol. Use the mark with the ^TM on the actual product to which the mark applies, if possible, and on product labeling and packaging, and also in brochures, catalogs, advertisements, letterhead, business cards, and signage, as appropriate.

When using a word mark, or the word portion of a combination mark (word plus design), in a sentence, distinguish it from surrounding text by using all capitals and quotes.

Q:        When does my trademark registration expire?

A:         A trademark registration is valid for 10 years after the date of registration, provided that a section 8 (and possibly section 15) affidavit is filed with the USPTO in between the 5^th and 6^th years after registration, further validating that the mark is in use at this time.  Failure to file the section 8 affidavit between the 5^th and 6^th years of registration will result in cancellation of the trademark application before the 10 year expiration period.  Between the 9th and 10th year after registration, a renewal application is required to maintain the mark.  Thereafter, the renewal must be filed every 10 years.

Q:        I forgot to file my section 8 & 15 affidavit or section 8 & 9 renewal within the 1 year window before expiration.  Can I still reinstate my trademark?

A:         There is a six month grace period after the 6^th year of registration or after the 10^th year of registration to file these documents with the USPTO, for an additional fee.  Once outside the grace period, a new trademark application is required.

Q:        My trademark is still in use, but I have sold it to another company or changed my company name.  Do I need to do anything with the trademark office?

A:         Yes, you may need to file an assignment or change of ownership name document with the USPTO. Visit the assignments section of the USPTO website for additional information.

If you are ready to learn more about trademark attorney Tamera Bennett’s 5 Steps to Filing a Trademark Application, click here.

Trademark Basics Part 3: Intent to Use

In part three of Trademark Basics we explore “intent to use” trademark applications, interstate commerce, and common law rights in trademarks.  You may be interested in Part 1 on “Selecting A Trademark,”  Part 2 “From Selection to Application,” and Part 4 “Post Registration.”

Q:        What is “intent to use”?

A:         If you have not yet used the trademark, but plan to do so in the future, you may file an application with the United States Patent and Trademark Office (USPTO) based on a good faith or bona fide intention to use the trademark in interstate commerce.  You do not have to use the trademark before you file your federal trademark application.   Later on in the application process, you will need to file proof of using your trademark in interstate commerce.  A total of five extensions, each lasting six months in duration, may be granted by the USPTO before proof of use in interstate commerce is required. Each extension incurs additional filing fees.

Q:        What is “use in interstate commerce” for services?

A:         In general, the trademark must be used or displayed in the sale or advertising of the services and the services must be rendered in interstate commerce.

Q:        What is “use in interstate commerce” for goods?

A:         In general, the trademark must appear on the goods, the container for the goods, or displays associated with the goods, and the goods must be sold or transported in interstate commerce.

Q:        I understand there are five possible extensions, each lasting six months, before I must submit a Statement of Use to the USPTO, demonstrating use of my trademark in interstate commerce.   I have used all five extensions, and my business will not be open before the final extension expires.  What can I do?

A:         You may wish to consider filing a new trademark application as soon as your last extension expires.  This starts the process over, including a new filing fee to the USPTO.  We encourage clients to think over their business plan carefully before filing a trademark application.

Q:        Does filing a federal or state application guarantee a registration?

A:         No. Filing a trademark application does not guarantee that either the USPTO or the applicable state will grant you a registration.

Q:        Do I have to secure a state or federal trademark registration to own a trademark?

A:         No.  A person/entity acquires rights in a trademark by being the first to use the trademark in the marketplace for specific goods or services. Rights in a trademark are obtained only through commercial use of the trademark.  Coining a phrase or designing a logo is not enough to secure trademark rights. You must use the phrase or logo on or in connection with your product or service.

If you are ready to learn more about trademark attorney Tamera Bennett’s 5 Steps to Filing a Trademark Application, click here.

Trademark Basics Part 2: From Selection to Application

This post is Part 2 of Trademark Basics. Take a look at Part 1 here on selecting a trademark.  You may also be interested in Part 3 on “Intent To Use” and Part 4 on “Post Registration.”

Q:  How does the trademark application process work?

A:  Develop a list of possible names and discuss this list with your trademark lawyer.

Your trademark attorney will conduct a trademark search or “knockout” to exclude any existing marks that are identical or confusingly similar and to assist in determination if the proposed mark may be generic or descriptive.

Determine the scope of your goods and services.

Prepare and submit an application. It may take seven to nine months before the USPTO will respond to your application.

If there are any procedural or substantive changes requested/a refusal issued by the trademark examiner (an Office Action), you will then have six months to respond.

If the refusal is overcome, or if no refusal issued, the mark will move to publication.

If the mark is published and no oppositions are filed, the mark will be registered if it was filed as a “Use” application.  If it is an “Intent To Use” application, a Notice of Allowance will issue and the mark must be used in interstate commerce within a certain allotted window of time.

Q:  What is required to file a federal trademark application?  A:  You must be using your trademark or service mark in interstate commerce (that is outside the borders of a single state) or have an intention to use the mark in interstate commerce before you can apply for a federal trademark with the United States Patent and Trademark Office.

Q:  How do I file a state trademark application?A:  You must be using your trademark or service mark within the state in order to file an application.  The Secretary of State or Corporations Section of most state governments handle their state’s trademark registry.

Q:  Does filing a federal or state application guarantee a registration?A:  No.  Filing an application does not guarantee that either the United States Patent and Trademark Office (USPTO) or the applicable state will grant you a registration.

Q:  Do I have to secure a state or federal trademark registration to own a trademark? A:  No.  Rights in a trademark are obtained only through commercial use of the mark. Coining a phrase or designing a logo is not enough to secure trademark rights. You must use the phrase or logo on or in connection with your product or service.

Q:  Do I need a lawyer to file a trademark application?  A:  There is no requirement that you use an attorney to file your trademark application.

Q:  Why should I use a lawyer to file a trademark application? A:  A trademark lawyer can advise you on legal issues regarding existing trademark applications, registrations and/or common law trademark rights that may help you save money in the long run.

If you are ready to learn more about trademark attorney Tamera Bennett’s 5 Steps to Filing a Trademark Application, click here.

Johnny Football vs Johnny Football and NCAA Amateur Status Part 1

Texas A&M University football star and Heisman Trophy winner Johnny Manziel is a couple of quarters into legal battles over the trademark “Johnny Football.”  The battles are happening at the court-house against defendant Eric Vaughan for selling unauthorized “Johnny Football” t-shirts and at the US Patent and Trademark Office to secure a trademark registration.

The phrase “Johnny Football”  has not only become synonymous with Manziel, arguable Texas A&M University used Manziel’s name and likeness as a brand identifier/trademark for clothing.   Manziel, an amateur athlete, cannot profit from his own name and likeness.  That’s where Texas A&M comes into the picture as Manziel’s licensee.

Interestingly enough, the plaintiff in the lawsuit against Eric Vaughan, is an entity owned be Manziel. Texas A&M is not a party to the lawsuit.  The plaintiff alleges Vaughan sold t-shirts infringing the trademark “Johnny Football” and did not stop selling the shirts even after receiving cease and desist letters.

The suit raises some interesting NCAA Student Athlete Name and Likeness questions that I will ponder, but which I am unable to answer:

• If Manziel is successful in his lawsuit, could his recovery of damages violate his NCAA amateur status? Maybe not according to NCAA Bylaws the recovery is not tied to Manziel’s athletic performance. (See NCAA Bylaw 12).

• But, it might be an issue with NCAA Bylaw 12.4.4 which prohibits a student athlete from using his name and likeness from promoting the student athletes’ own personal business.

• And, should the recovery actually go to Texas A&M in accordance with NCAA Bylaw 12.5.5.1.e which requires all money from the use of the student athletes’ name and likeness go directly to the member institution, member conference or the charitable, educational or nonprofit agency?  While news reports say the NCAA has approved Manziel retaining any recovery, I have been unable to confirm this statement with the NCAA.

• Because Manziel had to sign NCAA Form 08-3a which assigns his name and likeness rights to the NCAA, I’m wondering if Manziel, or his entity, are the proper party for this lawsuit?  This also ties into NCAA Bylaw 12.5.5.1.e.

You can download the NCAA bylaws for free from this link.

Here’s a link to the complaint/lawsuit against Eric Vaughan.

Part 2 of this post will focus on the hurdles facing the JOHNNY FOOTBALL trademark application at the USPTO.  Juanito Futbal and Johnny Basketball might raise a likelihood of consumer confusion.

Frito Lay Lost Chip Design Trademark and Patent Infringement Case

Plano, Texas based Frito Lay, Inc. was unsuccessful in their claim that Ralcorp Holdings’ snack chip infringed the “Scoops” design trademark or patent for the process of making a formed snack chip.  The jury’s decision of  non-infringement may give the go-ahead to other snack food manufactures to begin offering similarly shaped chips.

In addition to losing the lawsuit, Frito Lay may be on the hook for costs and attorneys’ fees.  Ralcorp Holdings filed sealed documents related to costs and fees on April 18, 2013.

Frito Lay sued in the Texas Eastern District Court in 2012 for trademark infringement, trade dress infringement, unfair competition and dilution under the United States Trademark (Lanham) Act; patent infringement under the patent laws of the United States; for trademark dilution under Texas Business and Commerce Code § 16.29; and for trademark infringement, unfair competition, and unjust enrichment under Texas common law.

A mediator was appointed in this case, but according to court records it does not look as if mediation occurred in this trademark lawsuit.

Frito-Lay North America, Inc. v. Medallion Foods, Inc., 4:12-cv-00074-ALM (E.D.  TEX. – Sherman), April 4, 2013 final judgment entered.

Sherlock Holmes, Elementary, Copyright Protection and Trademarks

“It’s elementary my dear Watson, Sherlock Holmes might still have copyright protection.”  Not precisely the definitive answer one expects from Sherlock’s reasoning of all things – even the intricacies of copyright law.

The recent  lawsuit filed against the estate of Sir Author Conan Doyle might bring out  heirs of other great works created in the late 1800′s and early 20th century to see just how long copyright protection can be stretched.

The character of Sherlock Holmes  first appeared in publication in 1887 and was featured in four novels and 56 short stories spanning until 1927.  According to US Copyright Law, the works written and published prior to 1923 are in the public domain. That means the characters, story lines and plots are free for use.  The Estate asserts the works between 1923 and 1927 are infringed by the book In the Company of Sherlock Holmes scheduled for publication by Random House.  In order to head-off an infringement suit, author/editor Leslie Klinger filed a declaratory judgment action asking the Judge to find the copyright on certain works featuring Sherlock Holmes and certain elements of the stories has expired.

The Complaint filed does a great job laying out the facts regarding when certain elements were first used in the Sherlock Holmes stories and why those elements are in the public domain.

Read more from the The Hollywood Reporter ESQ blog and TechDirt.

Also visit the Conan Doyle Estate website to see which Sherlock Holmes projects have been “licensed” or “authorized.”

On another interesting note, the Conan Doyle Estate Limited has been busy filing  trademark applications for the brand SHERLOCK HOLMES.  In 2010 the estate filed six intent to use trademark application featuring the name SHERLOCK HOLMES.  Based on US Patent and Trademark office filings, none of these trademarks are currently in use by the Estate.  The image above of Holmes with the Pipe is a registered trademark of the The Sherlock Holmes Memorabilia Company.  According to the Conan Doyle Estate Website, the Estate is pursuing cancellation of this trademark registration.

Super Bowl, Harbowl and Kaepernicking – Trademark Update

The NFL is more than diligent in protecting its SUPER BOWL brand, along with the  SUPER SUNDAY brand.  With the amount of money spent on the brand, I often say more power to the NFL in protecting their rights and protecting consumers from inferior infringing products.

The NFL has stepped up their protection efforts to block trademark registrations filed a year ago by football fan Roy Fox for “Harbowl” and “Harbaugh Bowl.”   Roy was planning on a head-to-head match of brothers and coaches  Jim Harbaugh and  John Harbaugh.  Roy’s goal was pure and simple:  profit off someone’s name. This is where the trademark laws do work.  While I’m not sure the NFL was the correct party to oppose Ray’s trademark filings, either Harbaugh brother had grounds to stop a registration from being issued.  In my mind consumers would believe that either or both brothers had consented to the use of their names and/or endorsed the products that would be sold.    Both trademark applications have been abandoned.

Colin Kaepernick, the San Francisco 49ers quarterback filed trademark applications for KAEPERNICKING, KAEPERNICK7,  KAP, KAP7, KAEPERNICK CK7, COLIN KAEPERNICK all in Class 025 for clothing items.  None of the marks have actually been used by Kaepernick on any clothing items.   It will be interesting to see if Colin uses the marks, or has filed the applications as a blocking mechanism so that he doesn’t have to defend his name in the event a third-party were to seek a registration.

Trademark practice pointers:

1) Before the USPTO approves an application that references a living individual, consent to registration must be on file.  If an entity or individual other the  Colin Kaepernick had signed the trademark application, an additional document confirming he is a living individual and he consents to his name being used as part of a trademark must be filed.  To save your client money – file that form with your application so you don’t have to respond to an office action down the road.

2) Every item in which Colin’s applications listed were found in the TEAS Plus application at the USPTO.  The filing fee for a TEAS Plus application is $275 per class as compared to the $325 filing fee for using a TEAS application.  Not only does using the TEAS Plus form save money; it also expedites the review process by the examiner.

Protecting The Brand- Trademark 101

A brand or trademark is the way one business distinguishes its products or services from other businesses’ products or services.  It might be a word, a phrase, a logo, or even a combination of any or all those things. Developing a strong trademark is key to protecting the value of the brand.

Examples of well-known trademarks include NIKE, CHANEL and COKE.  The name of your product or service doesn’t have to be famous to be protected by trademark law. But, not every name is protected as a trademark.

In selecting a trademark, resist the temptation to pick a mark that is generic or describes the goods or services. Generic names cannot be protected and it is difficult, if not impossible, to protect a mark that is descriptive.  Trademarks are subject to varying degrees of protection. The stronger the mark, the greater protection it will receive.

While we may all have a box of facial tissues in our office, some of us will have Kleenex(r) brand and others may have Puffs(r) brand.  Facial tissue is an example of a generic term.

Guiding clients through the process of selecting a strong product name can be challenging.  Here’s an example we often discuss with clients to highlight the difference in a generic/weak trademark and a fanciful/strong trademark.  If you open a men’s clothing store and name it “Men’s Clothing,” you cannot secure trademark protection for the name. If you open a place to cut men’s hair and call it the “Barber Shop” you cannot have a trademark.  In both examples the name of the store is generic for the product or service sold inside. But, consider a men’s clothing store where you have barber chairs as props and a barber pole at the front door.  In that case, “Barber Shop” for a men’s clothing store is not generic or descriptive.  It might just be a very strong brand name because it does not describe the product sold in the store.

After identifying a strong brand name, the next step is a trademark search to determine if anyone else is using a similar name for the same products/services or for related items. These searches are performed at the United State Patent and Trademark Office, the Internet and other third-party search services.  Trademark law is designed as a consumer protection act, not a business owner protection act.  The key of the search is determining if this new mark might be so similar to an existing brand in the marketplace that there is a likelihood of consumer confusion as to the source of the product or service.  Likelihood of consumer confusion is the standard used to determine trademark infringement.

A trademark is protected by common law from the moment the mark is attached to a product that is sold or to a service that is provided.  While no registration is required to be protected, there are benefits to registration including presumptions of ownership and dates of first use.  A state law application can be filed as soon as the brand name is used within the state.  A newly revised Texas Trademark law grants statutory trademark protection for 5 years from the time the application is approved and may be renewed for consecutive 5 year periods.

If you believe you will use your mark in interstate commerce, that means in more than one state, you may file a federal application based upon intent to use the mark.  If you are already using your mark on a product or service in more than one state, you can file a federal application based upon use.  Once the mark is in use and proper filings are made with the USPTO, a federal registration lasts for ten years from the date of registration and may be renewed for consecutive ten year periods.  But, it’s very important to know certain maintenance filings are due between the fifth and sixth year after registration in order to keep the registration active.

Ask any business owner and they will tell you the importance of their brand name.  Helping those business owners navigate the trademark selection, search and registration process is key to protecting this asset.

Super Bowl “Clean Zones” to Protect Sponsors/Trademarks in New Orleans

The City of New Orleans will enforce “clean zones” from January 28 to February 5 to comply with NFL policies to thwart ambush marketing.

Read more about the City of New Orleans efforts.

Read more about how ambush marketing can de-value a costly sponsorship.

Bikram Yoga Protected by Trademark NOT Copyright – It’s Hot!

Get Hot — The US Copyright Office issued a ruling in June 2012 that yoga sequences are not protected by copyright.  Studios offering “hot yoga” should now be in the clear from lawsuits brought by Yogi  Bikram Choudhury so long as the name BIKRAM is not used.

Yogi Bikram Choudhury developed the “Bikram” style of hot yoga and according to records at the US Patent and Trademark Office has been using the brand name “Bikram” since 1971 in offering his yoga classes and instructional materials.  The craze of “hot yoga” (which even as a yoga student, I do not understand), has taken the US by storm.

Choudhury, diligent about licensing his rights to the BIKRAM trademark and instructional method, sues yoga studios offering “traditional hot yoga”  even if the name BIKRAM  is not used to describe the course.  Choudhury has multiple copyright registrations for his yoga instructional videos and materials.  He is claiming a copyright in the sequence which is a  compilation of 26 poses and two breathing techniques.

Two very different results were reached in recent court cases filed by Choudhury.  In the Central District of California (Western District), Choudhury sued the  studio Yoga To The People claiming copyright infringement of the sequence.  The suit, after discovery and mediation, settled in November 2012 with the defendant agreeing not to offer “hot yoga” at his studio.  Perhaps the defendant should have stuck it out with the case a bit longer as a different result was reached in a very similar case.

Choudhury sued Evolation Yoga, LLC also alleging copyright infringement of the Bikram sequence.  In a motion for summary judgment ruling, The Central District of California held:

There are two reasons why the Sequence is not copyrighted: 1) Choudhury’s copyrights cover his literary and audiovisual works—but only his expression of the facts and ideas contained within, and not the facts and ideas themselves; and 2) even though Choudhury’s works describe the Sequence (and teach one how to do it), a compilation of exercises or yoga poses itself does not fall into any of the copyrightable categories under 17 U.S.C. § 102(a) and is not copyrightable under § 102(b) because it is a system or procedure.

The Evolation Yoga case (Bikram’s Yoga Coll. of India, L.P. v. Evolation Yoga, LLC, 2012 WL 6548505 (C.D. Cal. Dec. 14, 2012))  continues with other issues not resolved by the Motion for Summary Judgment ruling.

Read more here and here.

 

Be Thankful: Trademarks on the Table Thanksgiving Day

Sometimes it’s so hard to separate work from home — even Thanksgiving Day is filed with trademarks and brand management.

Here are a few brands you might see:

OCEAN SPRAY w design. Date of first use 1964. Registration No. 1960131.

MACY’S THANKSGIVING DAY PARADE  Date of first use 1924. Registration No. 2206890.

PEPPERIDGE FARM Date of first use 1937.  Registration No. 0360512.

BUTTERBALL w design. Date of first use 1962.  Registration No. 1151836.

 

FOOD NETWORK Date of first use 1996. Registration No. 2771532.

Texas Trademark Laws Change: Five Years of Protection

The following changes impact trademark applications filed or pending as of September 1, 2012.

• Term of registration reduced from 10 years to 5 years.
• Change to time-frame for filing renewals.
• Likelihood of confusion review expanded to include federally registered marks.
• Multiple class applications permissible, but additional fee for each additional class.
• Licenses, security interests, & mortgages may be recorded.

1. Changes made to application requirements:
   • Applicant must sign and verify application. (notarization)
   • Must provide 3 specimens of use.
   • Applicant may register two or more classes for additional fee.
   • SOS may require an applicant to provide any additional pertinent information, such as any prior or pending registrations with United States Patent & Trademark Office (USPTO).
2. Changes made to renewal application requirements:
   • Renewals must be signed and verified.
   • Renewals must include a specimen showing that the mark is still in use.
   • The time-frame for renewing a registered mark has changed.

Please review additional information on the new Trademark Act.
Please review additional information on new Trademark Administrative Rules (PDF).

I Can’t Remember The Alamo Trademark Dispute

Qwerky, Ltd., the owner of Swig Martini Bar in San Antonio, Texas is facing the big guns of Texas in a dispute over the trademark “I Can’t Remember The Alamo” for drinking glasses, t-shirts and restaurant/bar services.

The State of Texas, by the General Land Office, owns several registrations for “The Alamo” for museum services and gift shop services.   The Great State of Texas also claims common law trademark rights in the phrase “Remember The Alamo.”  The State of Texas filed an opposition with the Trademark Trial and Appeals Board to block the federal registration of “I Can’t Remember The Alamo” claiming  the restaurant’s use of the mark conveys a false suggestion or connection with The Alamo and is likely to confuse consumers.

Qwerky’s response to the Opposition is due September 25, 2012.

This isn’t the first trademark battle fought by “The Almo” — read more here.

Qwerky/Swig has had a little experience with trademark battles, too — read more here.

 

 

How Shoe Princesses Lost Their Brand: Sigerson Morrison

Imagine that one day shoes you designed are gobbled up by Reese Witherspoon, Sarah Jessica Parker and Naomi Campbell.  The next day you are fired from your namesake business with no control over a brand that is your name.

Shoe designers and fashion industry darlings Kari Sigerson and Miranda Morrison learned a lesson similar to Steve Jobs when he was fired by APPLE — if you take the investors’ money, you might be giving up a lot of control.

Sigerson and Morrison went into business together in 1991 and had a wonderful run.  In 2006, looking for an infusion of cash, they made a deal with Marc Fisher Footwear for$2.6 million to acquire Sigerson Morrison and the intellectual-property rights to the name.  Sigerson and Morrison each retained a 10% interest and a salary.

About a year ago Sigerson and Morrison were fired and litigation has been ongoing.

Clearly the trademark of Sigerson Morrison has a huge value.  But, will the company be able to fill the shoes of the two namesake designers?

J. Geils sues J. Geils Band for Trademark Infringement

No “freeze frame” for John Geils, Jr “J. Geils” or members of the J. Geils band that announced a tour this year without their name sake.  J. Geils and the band are battling it out at the trademark office and the court-house for who owns the name.

John Geils, Jr. through a company I am assuming he has partial ownership in, filed and received a trademark registration of J. GEILS BAND in 2009 for clothing and live performances.  The application shows use dating back to 1967.  The trademark examiner seemed to fully vet the application and required the consent of J. Geils as he is a living individual.

Fast forward to April 2012 when a company named T & A Research & Development Corp. filed a trademark application for “The J. Geils Band” claiming a date of first use in 1969.  Again, the trademark examiner fully vetted the application and issued an initial refusal requiring the applicant to submit a consent from J. Geils and further requiring the applicant to explain its association to the band.  The response is not yet due.

In May 2012, Geils Unlimited, LLC  filed a trademark  cancellation proceeding seeking to cancel the “J GEILS BAND” registration.  The petition for cancellation alleges Geils and other band members entered into a written shareholders’ agreement that restricted Geils use of the name J. GEILS BAND.

One more litigious twist – J. Geil’s company filed a trademark infringement suit on August 1 in district court.

Be watching for updates on the blog and a discussion on Entertainment Law Update Podcast.

Newsboys v. New Boyz Band Name Trademark Dispute

Christian rockers Newsboys have 28 No. 1 singles and have been together for 26 years.  They are just a little upset over possible consumer confusion with the rapper duo New Boyz.

New Boyz, around since 2009, just released a direct to DVD movie and is currently on a European tour.

With the continued consolidation of the record business, the overlap of genres on terrestrial radio and especially on services such as Pandora and Last.FM,  Newsboys may have more than a blush of a claim that a music consumer could be confused between the two band names.  The test in trademark infringement is whether or not a consumer is likely to be confused that a song or records released by one band was actually released by the other band.  If you saw a New Boyz CD you might think it was the Newsboys.

There is a trademark registration with the US Patent & Trademark Office for NEWSBOYS for entertainment services; namely, live musical performances of a religious nature rendered by a group.  The registration is incontestable and issued on March 29, 1994.  Interesting side note — the owner of the mark is Wes Campbell, the manager of the Newsboys (that tidbit is a topic of discussion for another day on what a band should never do).

I did not find any trademark filings for New Boys.

Ambush Marketing London 2012 & McDonald’s Exclusive Right to French Fries

Here’s a look at more press on Ambush Marketing surrounding the 2012 Olympic Games:

Australia’s Olympic Committee, enforcing a 30 day ban on none approved ads, required the industry lobby group, Australian Mining – This Is Our Story, to pull a television and online ad featuring the 10-time world champion and Olympic gold and silver medalist Ann Meares.  Meares, unaware of the launch of the campaign, appears in the video in cycling gear branded with her sponsor BHP Billiton’s logo as she talks about her campaign to win gold in London.

Meares has also been required to remove a TOSHIBA logo from her racing clothes.  And the Australian Olympic Committee is actively monitoring consumer electronic companies for any engagements in ambush marketing.

While not ambush marketing, McDonald’s has the exclusive right to serve French Fries at the Games, unless of course its “fish and chips.”   Maybe a cleaver ambush marketing team could show up dressed in french fry or “chips” costumes to an event?  Or, what if folks decided to not order any fries at McDonald’s?  Could McDonald’s exclusive rights back-fire?

Read more from Part 1 on Ambush Marketing.

Ambush Marketing & Social Networking at London Olympics 2012 Part 1

Every great sporting event brings out ambush marketers.  From the Super Bowl to the World Series to the Olympics, brands jockey for news coverage and exposure.  Ambush marketing is the act of a product or service trying to attach itself to a big event without being an official sponsor of the event — and without paying the big bucks of sponsorship.

While VISA® “Is Everywhere,” some brands only shine during their moments of ambush.  As consumers we expect a certain quality of product from the official sponsors.  The official sponsors invest a lot of money, energy and time in hopefully delivering a quality product or service.

Here’s a round-up of articles on ambush marketing popping up a few weeks prior to the 2012 Games:

• The London Organising Committee of the Olympic Games and Paralympic Games Limited (LOCOG) says it will be “vigilant in protecting our rights.”  But, some creative fringe marketing by Red Bull® might be okay.

• Bloggers at the London games have been warned that “Participants and other accredited persons are not permitted to promote any brand, product or service within a posting, blog or tweet or otherwise on any social media platforms or on any websites,” the IOC said.

• Twitter is working directly with the LOCOG to control ambush marketing.

• 11 Ambush Marketing Stunts That Worked in the Past.

Arlington,Texas Company in Trademark Dispute with Nike at Supreme Court

Updated 1/15/2013

On January 9, 2013 the US Supreme Court agreed with NIKE, Inc.  holding  a covenant not to sue rendered the ongoing litigation moot.

____________________________

Updated 11/8/2012

The US Supreme Court is hearing oral arguments today.

____________________________

Arlington, Texas based Already LLC dba YUM is in a trademark legal tangle with NIKE  over the similarity of the YUM brand “Soulja Boy” and “Sugar” shoes  and the NIKE brand “Air Force 1.”

NIKE filed suit against YUM in 2009 arguing a likelihood of consumer confusion between NIKE brand registered trademark for the Air Force 1 shoe and the YUM brand shoes.   YUM responded with a trademark cancellation proceeding against NIKE.  Risking cancellation of the “Air Force 1″ mark, after a year in the court system, NIKE agreed to withdraw the suit and provided a “covenant not to sue” to YUM.  YUM appealed the case to the Supreme Court.  The Supreme Court is not that interested in sneakers, but more interested in a split of the circuits regarding the use and implication of “covenants not to sue.”

Already, LLC phrased its “Question Presented” to the Supreme Court as:

“Whether a federal district court is divested of Article III jurisdiction over a party’s challenge to the validity of a federally registered trademark if the registrant promises not to assert its mark against the party’s then-existing commercial activities.”

Nike Inc. styled its question a bit differently:

“Whether respondent’s covenant not to sue petitioner was worded in a fashion that resolved the ‘actual controversy’ in this declaratory judgment suit.”

Read more here and here.

Dallas USPTO Office Does Not Impact Trademark Practice

Dallas was selected as one of three expansion locations by the U.S. Patent and Trademark Office.  The expansion offices are being implemented to assist with work-load in processing patent applications.  While new jobs will be available for patent examiners, patent attorneys, and supporting staff, there will be no direct benefit to the  trademark application process.

I welcome the expansion to the Dallas area and I know my patent attorney colleagues are excited.