Tag Archives: trademark

Cracking Down on IP Scammers.

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Trademark and patent holders are frequently targeted by scams, often in the form of official-looking correspondence. Some companies promise to protect your patent in foreign countries, while others claims that you have an unpaid invoice for trademark registration services.  I have made many blog posts warning of these “notifications.”

While the services offered may sometimes be legitimate, the mailings are misleading because they use language, formatting and other identifying features that suggest the sender is an official government agency.  I frequently field calls from concerned clients who have received unsolicited offers for patent, copyright and trademark services.

The U.S. Patent and Trademark Office and other industry groups frequently issue warnings about these fraudulent solicitations; however, new scams seem to pop up every few months. To put these companies out of business for good, a New York intellectual property law firm is pursuing legal action in federal court.

The suit against Patent & Trademark Agency LLC and its principal owner, Armens Organesjans, alleges that the company seeks to confuse trademark owners into purchasing services under the false color of authority. The claims include unfair competition, false advertising and tortious interference with prospective economic relations.

As highlighted in the complaint, Patent & Trademark Agency LLC’s website includes a statement that they are not lawyers and do not provide legal advice; however, its Terms, Conditions and Use Agreement state the opposite: “By accepting these terms you specifically and irrevocably authorize [Patent & Trademark Agency] to conduct negotiations and act on your behalf with any party needed in order to renew or register your trademark.”

The complaint further alleges that the company falsely states that “the Patent & Trademark Agency is the nation’s premier trademark registration and renewal service.” In reality, the USPTO lists the company among entities that have been the subject of complaints regarding fraudulent solicitations.

Last year, the same New York IP firm sued USA Trademark Enterprises Inc. on similar grounds. As a result of the lawsuit, the company was permanently barred from engaging in intellectual property-related activities in the United States.

The Attorney General of Vermont also sued Patent & Trademark Agency LLC to protect its citizens from these scams.

If you believe that you have been a target of this type of scam, please report it to the AG of your state and to your IP attorney.  You can also file a complaint against the scammer on the USPTO web site here.

How Can I Help?

If you, or someone you know, need any help with Intellectual Property issues, from filing a patent, trademark or copyright, or just need advice regarding how best to protect your inventions, ideas or your brand, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

Reminder: Be On Alert For Fraudulent Solicitations.

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Our readers should be aware that fraudsters continue to target trademark and patent applicants with solicitations that purport to be from the U.S. Patent and Trademark Office or other official regulatory bodies. As new scams continue to surface, it is important to remain vigilant.

The most recent fraudulent trademark solicitation brought to our attention targets international trademarks. The company, Worldwide Database of Trademarks and Patents (WDTP), requests payment of a filing fee for the registration of an international trademark in its Internet database. The official looking communication references the registrant’s trademark, registration number, and registration date. An example of the fraudulent solicitation can be found here.

Unfortunately, theses scams can take many different forms. They often include offers: (1) for legal services; (2) for trademark monitoring services; (3) to record trademarks with U.S. Customs and Border Protection; and (4) to “register” trademarks in the company’s own private registry.

As highlighted by the USPTO, these solicitations increasingly mimic the look of official government documents. For instance, they may include official government data like the USPTO application serial number, the registration number, the International Class(es), filing dates, and other information that is publicly available from USPTO records. They may also cite to other government agencies and sections of the U.S. Code.

How Can I Help?

If you receive any document that references your intellectual property and requests the payment of a fee, it is imperative to conduct due diligence before sending any money. The bottom-line is that if the communication did not come from the USPTO or your attorney, it is most likely fraudulent. Please feel free to check with me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

Apple Registers Trademark for Its Distinctive Store Design

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Apple fiercely guards its intellectually property, like all trademark owners should.  So it isn’t surprising that the company recently obtained a trademark registration for the design of its retail stores.

According to the trademark description, Apple seeks to protects its minimalist design and layout, which includes “a clear glass storefront surrounded by a paneled facade” and, within the store, an “oblong table with stools…set below video screens flush mounted on the back wall.”

While the Apple trademark made headlines, this type of trademark right—known as trade dress—is not unusual. It generally covers the design and shape of the materials in which a product is packaged.  Examples include the layout of a magazine cover and the distinctive shape of a bottle. In 1992, the U.S. Supreme Court allowed a fast-food chain to protect the appearance and décor in its Mexican restaurants.

As with other trademark registrations, trade dress applicants must be able to show not only that the design is distinctive, but also that the average consumer would likely confuse its products with others of similar appearance.

Apple has good reason to want to protect the design of its retail outlets. Locations in the U.S. generated an average of $43.3 million in FY2011. In addition, while the most recent registration only applies in the U.S., counterfeit stores have popped up overseas. As Reuters reports, a counterfeit store that opened in China looked so authentic that employees thought that they were working for Apple.

How Can I Help?

Consistently using a distinctive “look” for your company can be extremely valuable and certainly worthy of protection. For more information about trade dress rights, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

Businesses Reminded That NFL Fiercely Protects Trademarks

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With the new season around the corner and training camps underway, I want to remind businesses that the National Football League and the teams in the league fiercely protect their trademarks and especially the “Super Bowl” trademark.  Additionally, each team owns their respective trademarks and aggressively protect them as well.

File:National Football League 2008.svg

Licensing trademarks is big business for the NFL and the league teams. Sponsors like Pepsi, Verizon, Motorola, and Castrol pay more than $100 million annually to be affiliated with the league. However, those who are not officially licensed by the NFL may receive one of the 80 to 100 cease-and-desist letters the league sends each year to businesses using the brand without permission.

Prior to last year’s (2012-2013 season) game, the NFL took legal action against an Indiana man who had the foresight to predict that Jim Harbaugh, coach of the San Francisco 49ers, and John Harbaugh, coach of the Baltimore Ravens, would one day face off in the Super Bowl. Ron Fox filed trademark applications for the terms “Harbowl” or “The Harbaugh Bowl.”

However, the NFL quickly put the brakes on the trademark registration. League attorneys contacted Fox and warned him that they believed that the trademarks could easily be confused with the NFL’s Super Bowl mark.

The argument is tenuous at best; however, we will never know how a court might have ruled on the case. Unsure of his legal rights and unable to afford a costly legal battle with the NFL, Fox ultimately abandoned the application.

Because neither the NFL nor Fox registered the trademark, some may see it as fair game. However, businesses should still expect a letter from the NFL.

How Can I Help?

Strongly enforcing your trademark has its advantages. For more information about how to best protect your rights, contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

Louboutin Trademark Fight Continues

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Last fall, Christian Louboutin made legal headlines when the Second Circuit Court of Appeals ruled that its distinctive red soles of shoes are entitled to trademark protection.

The lawsuit was filed to prevent rival French designer Yves Saint Laurent (YSL) from selling shoes that featured a monochrome red shoe with a red sole. While the court  agreed that the red soles were a distinctive symbol that identifies the Louboutin brand, it instructed the U.S. Patent and Trademark Office (USPTO) to limit the trademark to uses in which the red outsole contrasts with the color of the rest of the shoe. Accordingly, it found that the YSL shoes did not infringe.

So while the luxury company was not victorious in its dispute with YSL, its battle with the USPTO over amending the registration appears to just be getting started.  The USPTO proposed the following description in accordance with the ruling from the Second Circuit (the underlined text indicates the changes): The color(s) red is/are claimed as a feature of the mark.  The mark consists of a lacquered red outsole on footwear that contrasts with the color of the adjoining remaining portion of the shoe (known as the “upper.”)  The dotted lines are not part of the mark but are intended only to show the placement of the mark.

Louboutin disagreed with the restrictiveness of the definition and proposed its own: The color(s) red is/are claimed as a feature of the mark.  The mark consists of a lacquered red outsole on footwear that contrasts with the color of any visible portions of the shoe.  The dotted lines are not part of the mark but are intended only to show the placement of the mark.

After the USPTO concluded that the definition failed to comply with the court’s mandate, Louboutin sought clarification from the Second Circuit. So,  it appears that the court may again get the final word on the red soled shoes.

How Can I Help?

If you, or someone you know, need help with any Intellectual Property issue, from filing a patent, trademark or copyright, or just advice regarding how best to protect your ideas and your brand, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

Supreme Court Sides With Nike

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The U.S. Supreme Court sided with Nike in a closely watched trademark dispute involving a covenant not to sue.  The Court concluded that such an agreement moots a competitor’s counterclaims of invalidity.  However, it was also quick to point out that a party claiming that its voluntary cessation of unlawful conduct renders case moot bears “formidable burden” of showing that it is absolutely clear that alleged unlawful behavior “could not reasonably be expected” to recur.

The dispute began when Nike alleged that two of Already, LLC’s athletic shoes—“Sugars” and “Soulja Boys”—violated Nike’s trademark for its Air Force 1 sneakers. Already denied the allegations and filed a counterclaim challenging the validity of Nike’s trademark. While the suit was pending, Nike issued a “Covenant Not to Sue,” promising not to raise any trademark or unfair competition claims against Already or any affiliated entity based on Already’s existing footwear designs, or any future Already designs that constituted a “colorable imitation” of Already’s current products.

Thereafter, Nike sought to dismiss Already’s invalidity counterclaim based on the argument that the covenant had extinguished the case or controversy. The district court dismissed the claim after finding that “there was no longer a substantial controversy…of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.” The Second Circuit affirmed.

However, the Supreme Court held that a defendant cannot automatically moot a case simply by ending its unlawful conduct once sued.  Rather, “a defendant claiming that its voluntary compliance moots a case bears the formidable burden of showing that it is absolutely clear the allegedly wrongful behavior could not reasonably be expected to recur.”

Overall, the decision is good news for trademark registrants because it signals that covenants not to sue can still be used to dismiss an invalidity claim. However, the Supreme Court has arguably raised the bar by articulating a high burden of proof for mooting these actions.

How Can I Help?

If you, or someone you know, need help with any Intellectual Property issue, from filing a patent, trademark or copyright, or just advice regarding how best to protect your ideas and your brand, contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

China Cracks Down on Trademark Infringers

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In the wake of several highly publicized cases, China has begun to crackdown on trademark infringers. China has long been criticized by other countries for not taking a tougher stand on intellectual property issues.

In response, China recently announced that its will amend its trademark laws to provide greater protection to international companies seeking to protect their brands. Under the proposed changes, trademark owners will have the right to prohibit others from registering their trademarks or from using similar ones, even if such trademarks are not yet registered. Under current law, the first to register often owns the mark even against other legitimate trademark owners who are first to use the mark in that country.

“The draft is intended to curb the malicious registration of trademarks,” the official Xinhua news agency reported.

The proposed changes are good news for U.S. and other foreign companies who often have difficulty protecting their brands in China.  Apple endured a protracted legal battle over the use of its iPad trademark, and ultimately settled the lawsuit for $60 million. Basketball star Michael Jordan also filed a lawsuit against Chinese sportswear company for using his Chinese name without authorization.

How Can I Help?

It can be difficult to protect your trademarks and other valuable IP rights overseas. I encourage you to consult with an attorney experienced in foreign intellectual property matters.  I have developed long-standing, close relationships with firms and experts worldwide so that I can offer you in-depth experience in foreign law.

If you, or someone you know, need help with any Intellectual Property issue, domestic or foreign, including filing a patent, trademark or copyright, or just advice regarding how best to protect your ideas and your brand, contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

Once again David wins over Goliath.

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The “David” in this case scored a victory in a California trademark infringement lawsuit over beauty products.

Sally Beauty Supply recently agreed to pay Mixed Chicks, a small hair care company catering to mixed-race individuals, over $8 million.

Mixed Chicks is a $5 million company with less than 15 employees.  Sally operates more than 3,000 stores and generates revenue of $3 billion. Despite its small size, Mixed Chicks was able to carve out a successful niche in the hair care market and even secure the endorsement of Halle Berry.  The company approached by Sally to sell Mixed Chicks products on Sally’s website and in retail locations. However, the two sides never reached an agreement.

Sometime later, Mixed Chick’s discovered that Sally was selling its own line of hair products marketed to mixed-race individuals, called Mixed Silk.  Mixed Chicks filed a trademark infringement lawsuit alleging that the “imitation” line infringed Mixed Chicks trademark as well as the overall appearance of the hair care products.

According to the complaint, Sally used marks that were confusingly similar to Mixed Chick’s registered marks and mimicked the color, scent, and general appearance of its product. The complaint also alleged that Sally programed the search feature on its website so that when a consumer searched for “mixed chicks,” it only returned results for Sally’s competing “mixed silk” product line. Mixed Chicks alleged that this was intended to “cause confusion or mistake, or to deceive as to the origin of the Mixed Silk hair care products with the intent to benefit from Mixed Chicks’ reputation and goodwill.”

A California jury awarded Mixed Chicks $839,535 in actual damages and $7.27 million in punitive damages, after finding that Sally acted willfully and with malice, oppression, or fraud. Sally subsequently agreed to settle the case for $8.5 million in anticipation of a request for attorney’s fees and disgorgement enhancements. Sally has also agreed to stop selling the infringing product.

As this case highlights, David can defeat Goliath in the intellectual property world.  So it can be worthwhile for small businesses to pursue trademark litigation all the way to trial.

How Can I Help?

If you, or someone you know, need help with any Intellectual Property issue, from filing a patent, to trademark litigation, or just advice on  how to protect your ideas and your brand, contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

A tackle eligable trademark?

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Texas A&M’s Heisman winning quarterback, Johnny Manziel, continues to build his legend on the field.  It isn’t surprising that people are trying to capitalize on his success.  In fact, an unrelated entity has already filed a trademark application for his nickname, “Johnny Football.”

The university and Manziel’s family have also pursued a register trademark. “Everyone felt that if anybody should have ownership of this, it’s Johnny or his family,” said a university spokesperson.

The “Johnny Football” trademark will allow Manziel to prevent the unauthorized use of his name. However, in order maintain his eligibility under NCAA rules, Manziel cannot profit from the trademark. Division I rules state that student-athletes may not “accept any remuneration for or permit the use of his or her name or picture to advertise, recommend or promote directly the sale or use of a commercial product or service of any kind.” Under the rules, Texas A&M and Manziel’s family also cannot sell products featuring the name “Johnny Football.”

The rub is that in order to complete the federal trademark registration, Manziel must eventually use the mark in commerce. Under federal trademark law, an applicant must either file a Statement of Use (SOU), attesting that the mark is being used in commerce, or seek an extension within six months of the USPTO’s issuance of the Notice of Allowance (NOA). Otherwise, the application is deemed abandoned.

Applicant’s can file extension requests every six months for up to a total of five extensions of time. However, the applicant must use the mark in commerce and file an SOU within three years of the NOA issuance date.

In this case, it is unclear if Manziel will still be a college athlete when the three-year time period expires. This may be one case where the applicant hopes that the USPTO drags its feet.

How Can I Help?

If you’re not as famous as Johnny Football, but have a brand that you want to protect with a trademark, or know someone that can use my help, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California. As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

 

Classy trademarks.

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What exactly is a trademark class?  Trademark classes allow for the identification of goods and services.  Additionally, they allow multiple business to apply for a trademark to identify their goods and services (as long as they are not in the same class).  For instance.  a construction company could apply for a trademark for “Mud” to cover construction related goods/services.  A cosmetic company could also apply for the “Mud” trademark to cover cosmetic goods.

Why is that you may ask?  Trademarks are actually designed to protect the consuming public, not the brand owners.  One of the main tests for trademark infringement is “likelihood of consumer confusion.”  So, the different classes help promote commerce while protecting the consuming public from knock-offs.

In the example above, it is highly unlikely that someone shopping for Mud cosmetics would be confused by the same Mud mark used at Home Depot.  So using classes helps sort all of this confusion out.

Prior to the adoption of the International Classification in 1973, the United States used its own classification system.  Since that time, the United States Classification became a secondary classification system.  United States classes are still assigned to all applications by a computerized system.  Each international class is coordinated with the United States classes that are most frequently associated with it.  Neither examining attorneys nor any other USPTO personnel have the authority or capability of altering these automatically assigned secondary United States Classification designations.

So the U.S. system is still used, but rarely does it apply in legal matters.

The Nice Classification (NCL) is the international classification (IC) of goods and services that is currently used for the registration of trademarks and service marks.  Under this system, used by all signatory countries, goods classifications run from classes IC 1-34, and Services are in IC 35-45.

How Can I Help?

The USPTO has a list of all the goods and service that are available for brand owners to use in protecting themselves.  Although it seems simple enough, there are many complications that can arise while applying for a trademark registration.  If you, or someone you know needs help to file a trademark, or help to defend against an infringer, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California. As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman