Tag Archives: trademark registration

Sherlock Holmes – Some Copyright, Some Not

In a 10-month-long dispute between the Conan Doyle Estate and writer/editor Leslie Klinger, the trial court ruled 50 of the Sherlock Holmes stories, all published prior to 1923, are in the public domain.  Ten stories published after 1923 are protected by copyright in the US.

The court held elements introduced in the Sherlock Holmes stories published after 1923, such as Watson having a second wife, remain under copyright in the United States.

The UK copyright for all the Sherlock Holmes stories expired in 1980.  According to UK law, the term of copyright protection is the life of the author plus 50 years.  Mr. Doyle died in 1930.

Even though the works were originally published in England, they still receive copyright protection in other countries. The protection in the US, is based solely on US law.  So why is 1923 the magic year in the US, the short answer is with implementation of the Copyright Term Extension Act it was determined that works published prior to 1923 are in the public domain. “Because of legislation passed in 1998, no new works will fall into the public domain until 2019, when works published in 1923 will expire. In 2020, works published in 1924 will expire, and so on.”

Read more about the history of the  dispute and ongoing trademark issues here.

Hear film lawyer Gordon Firemark and copyright lawyer Tamera Bennett discuss the case on the Entertainment Law Update Podcast Episode 47 and Episode 43.


Do I Need A Trademark Lawyer?

trademark Having a trademark attorney on your product or service branding team is key to success.  A trademark lawyer can spot potential pitfalls and help you navigate the complex application and follow-up process with the US Patent and Trademark Office (USPTO).  While anyone can file a trademark application with the USPTO, there are intricacies to 1) determining the strength of your trademark; 2) reviewing how other people might be using the same or similar trademark; and 3) appropriately answering the questions on the trademark application.

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.

The job of a trademark attorney is to guide you in selecting  a strong trademark; navigate the application process; counsel you in your options if your trademark application is refused (office action issued); and prepare you for what happens after you secure a registration.

If you are ready to learn more about the trademark application process click here.


Hells Angels Sue Dillard’s and Rapper Clothing Line for Trademark Infringement

Hells Angel Trademark8732 Trademark

The Hells Angels Motorcycle Club’s distinctive brand identifier of the winged skull logo called the “Death Head,” in use by the club since 1948, is the driving force behind a trademark lawsuit against 8732 Apparel, LLC and Dillards, Inc.  8732 is owned by rapper Young Jeezy.

The test for trademark infringement is likelihood of consumer confusion regarding the source of the product.  The first part of the test determines the similarity of the marks.  Removing my trademark lawyer cap and simply looking at these jackets as a consumer: I’m confused.  Even without going through all the steps of the likelihood of confusion test, it looks like HAMC should have a winner.

What do you think?

Link to complaint at www.jdsupra.com.


Copyright and Trademark Filings Still Accepted – Government Shut Down

UPDATED 10/7/2013 – The USPTO is currently unable to process credit cards.  If your filing deadline is today, you must use an alternative payment/filing method.

ORIGINAL POST – The U.S. Copyright Office shut down at 12:01 am October 1, 2013.  According to their website, new Copyright Applications may be filed via the online eCo system.  We will assume that applications will not be processed until the government reopens.  Registration dates should not be impacted as the effective date of registration is the date the Copyright office receives the application, filing fee and deposit material.  If at all possible, use the eCo system to upload your deposit to insure the date of receipt of the deposit.

The US Patent and Trademark Office has reserve funds to operate for approximately 4 weeks. At this time processing of documents should continue uninterrupted.  As always, we recommend filings be made online via the TEAS or TEAS Plus systems.


Honest Tea Trademark vs Honest Tea Trademark

The Coca-Cola Company dropped a trademark opposition proceeding in Australia against an Australian company selling and marketing tea beverages under the brand HONEST TEA.

According to the Australian Trademark Office records, Teavolution Pty, Ltd filed the trademark HONEST TEA in Australia in 2005 and received registration(s) in 2007.  Honest Tea, Inc., a division of The Coca-Cola Company, pursued a cancellation of the mark with the Australian trademark office claiming Teavolution was not using the mark.  Honest Tea, Inc. has a pending trademark application in Australia.


Diet Coke Summer Cans – Trademarks from 2010 to 2013

Do we realize how often brands adapt, modify, update their brand?  With each tweak, a new trademark application has to be considered as a tweak may suddenly develop into a “material modification” of a registered trademark.

Several times a year I give a trademark presentation where I distribute cans of DIET COKE and ask the audience members to count how many trademarks are on the cans.  Updating the presentation this week, I was surprised by how much the DIET COKE branding has changed, as well the brands for SIX FLAGS OVER TEXAS.

Here’s a look at the trademarks on a DIET COKE can in 2010:

tm 2010

 

 

 

 

 

 

 

 

And, here’s how much the branding has changed by 2013:

tm 2013

 

 

 

 

 

 

 

FYI, BALL is a registered trademark of the Ball Corporation for metal cans sold empty.  HURRICANE HARBOR, SIX FLAGS OVER TEXAS, SIX FLAGS, and the SIX FLAG design are registered trademarks of  Six Flags Theme Parks Inc.


CRONUT – a donut? a croissant? a trademark?

A CRONUT is part donut and part croissant and  Dominique Ansel, a baker in New York, claims trademark rights in the brand CRONUT for a variety of baked goods as well as prepared baking flours and mixes.  A trademark application was filed with the US Patent and Trademark Office on May 19, 2013.

Other bakeries say it’s getting a little hot in the kitchen as the idea of a pastry that is half donut and half croissant is not new.  A trademark, which serves as a brand identifier, does not protect the idea of combining a donut and croissant.

It looks like Ansel does have a trademark battle in front of him already.  Trademark applications have also been filed by third parties for CRONUT HOLE and CRONUTS.

Ansel has fame on his side.  Take a look at Jerry Seinfeld’s addiction to CRONUT brand pastries.

Ansel might consider updating his website to refer to  a CRONUT pastry rather than saying things such as “how to buy your CRONUTs.”  While I don’t think the term CRONUT  is generic, Ansel still needs to take steps to protect the strength of his brand by using the name as a brand and not a descriptive term.

And, yum – I’m hungry – somebody send me a CRONUT pastry.


Entertainment Law Update Podcast 42 – For IP Lawyers

Film lawyer Gordon Firemark and music lawyer Tamera Bennett bring you a mid-Summer podcast covering film, tv, trademark, copyright and employment law issues.

Click here for the July 2013 Entertainment Law Update Podcast.  Be sure to subscribe to the podcast in the iTunes store and share a review.


Sister Sledge Band Dispute – Trademark

The Sister Sledge hit “We Are Family” is beginning to sound more like “We Are Dysfunctional Family.”

Ex-member Kathy Sledge has been touring Australia under the name “Sister Sledge featuring Kathy Sledge.”  Three of the original Sister Sledge members are also performing together and toured in Europe.

Are consumers confused? The lawsuit, filed by Sister Sledge, LLC against Kathy Sledge and numerous other defendants, includes fan generated online comments  with fans wondering why the whole group isn’t touring together and why Kathy Sledge is touring with back up singers and not her “sisters.”

Kathy Sledge left the group twenty-five years ago.  The lawsuit alleges she has repeatedly booked tour dates claiming she is the only remaining member of the group.

The US trademark registration for Sister Sledge is owned by Sister Sledge, LLC.


The Go-Go’s Band Partnership Dispute

After 30 years as the bass player for the all girls band The Go-Go’s, Kathy Valentine is suing her former band mates for cutting her out of her twenty percent share of earnings.

The Go-Go’s jumped to fame in the early 80′s and continue to make money from merchandise, touring and record sales.  The five band members – Belinda Carlisle, Jane Wiedlin, Charlotte Caffey, Gina Schock and Kathy Valentine – are equal owners in Ladyhead, LLC (receives all revenues for the The Go-Go’s excluding touring and owns The Go-Go’s trademark) and Smith-Pocket Industries, LLC (the touring arm of The Go-Go’s).

The four remaining band members notified Valentine earlier this year that she was out of the group.  The lawsuit alleges the four remaining members formed a new entity, GoGoCo Corp.,  to license all of the rights associated with the name and good will of The Go-Go’s as well as touring.  If that is the case, Valentine’s twenty percent share of revenues would be substantially diluted as GoGoCo Corp. would be calling the shots on when and how much money would flow to LadyHead, LLC and Smith-Pocket Industries, LLC.

It sounds like the group did things the right way years ago be forming the two initial entities where each band member was an equal owner.  I suspect the operating agreements for those entities address what happens when a band member quits on their own or is forced out.  But, maybe they don’t or the language is not beneficial to Valentine, as the lawsuit never specifically discusses those sections of the LLC operating agreement. Instead, the plaintiff’s complaint focuses on breach of fiduciary duty and breach of contract in not continuing to pay Valentine her one-fifth.

Sounds like the perfect case for mediation. The parties have all aired their laundry over the years and need a neutral party to help them work through a potential mine-field of separation issues.


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 5th and 6th years after registration, further validating that the mark is in use at this time.  Failure to file the section 8 affidavit between the 5th and 6th 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 6th year of registration or after the 10th 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

Update 11/6/2013

JMAN2 Enterprises, LLC, the entity owned by Johnny Manziel settled the trademark lawsuit with defendant Eric Vaughan.

Original post:

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.


Michael “Qiaodan” Jordan Sues Chinese Company for Trademark Infringement

This week starts Michael Jordan’s trademark trial against Chinese sportswear company Qiaodan Sports Co. Qiaodan translates in Mandarin to mean Jordan.

Qiaodan Sports sells basketball shoes and jerseys with Qiaodan and  #23.  If Jordon wins this case, he will use his proceeds to promote basketball in China.


Drybar vs Blow Dry Bar – Trademark for Blow Drying Hair

Blow Dry Bar – Houston

While in LA  I marveled at all the hair salons for blow drying hair.  Who knew these salons were all over Texas.  And, as much as we Texas gals like our hair fixed, it does seem like a natural fit.

Houston, Texas-based Blow Dry Bar, LLC seeks a declaratory judgment of  non-infringement against  Dallas, Texas-based DryBar Holdings, LLC’s trademark and trade dress.  DryBar sent several cease and desist letters to Blow Dry Bar after Blow Dry Bar launched their first location and announced the opening of their second store. DryBar’s founder Alli Webb has been credited by many as creating the “blow dry salon” trend.

The term “blow dry bar”  is descriptive at best and is quickly becoming generic for a hair salon that provides “blow drying.”  A consumer sees blow dry bar and immediately knows the service available.  Perhaps salons should start thinking less descriptive in order to develop a strong and defendable brand.  The case, filed in 2012, is still active with a hearing on a Motion for Summary Judgment scheduled on April 25, 2013.

Blow Dry Bar, LLC v. Drybar Holdings LLC, 4:12-cv-02425 (S.D. Tex – Houston, filed Aug. 8, 2012).


JCP Seeks Dec Action of Trademark Non-Infringement

Plano, Texas-based retailer, JC Penney Corporation, Inc., asked a judge in Texas federal court to find JCP’s use of the name Aspen to describe a pair of winter boots is not infringing of Aspen Licensing International, Inc’s “Aspen” trademark for footwear.

By filing a declaratory judgment action, JCP kept the case in the Eastern District of Texas requiring Aspen Licensing, a Florida entity, to come to JCP’s home court.  According to court documents, Aspen sent several demand letters to JCP and made phone calls threatening litigation if JCP did not make a monetary settlement.

J. C. Penney Corporation, Inc. v. Aspen Licensing International Inc., 4:13-cv-00066-RAS-DDB (E.D. Tex. filed Feb. 8, 2013).


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.

Levi’s “Red Tab” Protected Trademark in EU

Levi Strauss sued and succeeded in a claim of trademark infringement against a  German competitor that attached a “red tab” to its jean pocket.

In the US, Levi Strauss has been using the “red tab” since 1936  on pants/overall pockets.  In the US the “red tab” federal trademark registrations from 1936 do not mention the word “LEVI’S” on the tab.  The concern raised in the recent dispute with German company Colloseum Holdings was that Levi Strauss does not offer jeans in the EU with only a “Red Tab.”  The tab always includes the word “LEVI’S.”


RG3 vs RGIII Trademark Dispute

Research Group 3, Inc., known by its brand and common law trademark RG3, may oppose the trademark application filed by football star Robert Griffin III for the mark RGIII for clothing items.

Research Group 3, a motorcycle parts company, claims in its trademark application use of the mark RG3 for clothing items since 1999.  But, Research Group 3 only filed a trademark application in January 2013, months after Robert Griffin III filed his application.

We should know next week if the parties worked something out or if an opposition will proceed with the Trademark Trial and Appeals Board.


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