“Blue Ivy” blues?

I reported earlier that Beyoncé and Jay-Z applied for a trademark on their new babies name Blue Ivy.

The media coverage of a trademark dispute involving Beyoncé and Jay-Z demonstrates how it is possible to oversimplify intellectual property law.

Several media outlets reported that that the famous parents “lost” their bid to trademark their daughter’s name, Blue Ivy, to a Boston-based wedding planner.

However, that is not what really happened.  Beyoncé and Jay-Z  filed a trademark application with the U.S. Patent and Trademark Office to register their daughter’s name for use on a line of baby carriages, baby cosmetics, and diaper bags.

Naturally, after the babies name was revealed other people tried to cash in on the Blue Ivy express.  Before her parent’s application was filed, several others also applied to register the child’s name as a trademark, including a fashion designer who sought to register “Blue Ivy Carter NYC” just four days after the baby was born. The USPTO denied many of the prior filings, stating that the name belonged to a “very famous infant” and consumers would mistakenly assume that her parents endorsed the products.

However, Boston event planner Veronica Alexandra also filed to register her existing business name Blue Ivy Events as a servicemark. The Trademark Office approved her application to register “Blue Ivy” in the limited field of event planning.

So long as Beyoncé and Jay-Z  do not start a party planning business using their daughter’s name, they have not lost anything.  In fact, the mark has already issued in connection with the children’s products identified in the application.

How Can I Help?

Trademarks are generally limited to specific classes of goods and services. Therefore, it is possible for businesses to use the same marks, if they operate in unrelated fields. So if you have a brand or mark that needs protection, 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

Cooperation to avoid litigation.

Rosetta Stone Inc. and Google Inc. have announced plans to dismiss a three-year old trademark infringement lawsuit over Google’s AdWords system. The two companies  now plan to work together to fight trademark abuse online.

Rosetta Stone filed suit in 2009, alleging that Google allowed its competitors to market copycat software when Rosetta’s trademarks were used as search terms in Google’s AdWords system. “Google’s search engine is helping third parties to mislead consumers and misappropriate the Rosetta Stone marks by using them as ‘keyword’ triggers for paid advertisements and by using them within the text or title of paid advertisements,” Rosetta Stone alleged.

As the Associated Press reports, the lawsuit was dismissed in 2010. However, it was scheduled to resume this year after an appeals court ruled that some of the claims should go to trial.

In a statement, Rosetta Stone and Google pledged to “meaningfully collaborate to combat online ads for counterfeit goods and prevent the misuse and abuse of trademarks on the Internet.”

“By working together, Google and Rosetta Stone hope to improve detection methods, and better protect from abuse brands like Rosetta Stone, advertising platforms like Google AdWords, and ultimately consumers on the Internet,” they continued. “At the end of the day, both companies would rather cooperate than litigate, and we believe this agreement is an important step toward eliminating piracy and trademark abuse on the Internet.”

In this case, it appears that Google and Rosetta Stone have decided that it may be more cost-effective to pool their resources against a common enemy as opposed to the time and expense of trial. However, it is likely that this was just one of the factors taken into consideration when settling the lawsuit, as other terms of the settlement have not been disclosed.

How Can I Help?

If you need help to protect a brand, file a trademark application, 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

Saved by an Apostrophe!

A Philadelphia deli is hoping that an apostrophe can save its trademark application. Campo’s Deli at Market is appealing a Trademark Trial and Appeal Board decision that denied its trademark application for the phrase “Philadelphia’s Cheesesteak.”

The TTAB denied the trademark on two grounds. It first determined that the mark was ineligible for trademark registration because it was primarily geographically descriptive. It also found that the mark was confusingly similar to the registered marks PHILADELPHIA CHEESESTEAK CO. & Design, PHILADELPHIA CHEESESTEAK CO., and THE ORIGINAL PHILADELPHIA CHEESESTEAK CO.. All of the existing trademarks apply to “prepared foods, namely, meat.”

As highlighted by the ABA Journal, the deli places particular emphasis on the apostrophe in supporting its claim that it is not seeking to control the more generic term “Philadelphia Cheesesteak.”

“The difference in the two phrases, of course, is an (‘s),” the deli maintains, “which demarcates a particular kind of gloriously gluttonous sandwich provided only by the plaintiff—not just a Philadelphia Cheesesteak, but ‘Philadelphia’s Cheesesteak.’ Plaintiff’s mark is descriptive of the unique and tremendously delicious goods it offers for sale to the famished masses, and is not, by contrast, an indication of the geographic origin of the sandwich, which would otherwise prohibit registration.”

The deli also argues that there is no likelihood of confusion with existing marks because they apply to meat suppliers rather than sandwich makers.

“There is, accordingly, no likelihood of confusion between the requested trademark for a type of sandwich – ‘Philadelphia’s Cheesesteak’ – and three marks for a company which produces wholesale sliced meat. They have different products, different consumers, and entirely different avenues of commerce,” the complaint states.

How Can I Help?

While the success of the appeal remains to be decided, this case highlights that the validity of a trademark can hinge on something as simple as a punctuation mark. As a result, it is imperative to consult with an experienced trademark attorney before filing your trademark application.

If you need help to protect brand, file a trademark application, 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

MySpace Prevents Apple From Trademarking Logo.

Seeking to regain its relevance in the ever-changing world of social media, former giant MySpace may be able to rely on the momentum of a recent intellectual property victory over Apple. The Trademark Trial and Appeal Board recently denied Apple’s bid to trademark its famous music icon after determining it was too similar to a mark already registered by MySpace. Both marks depict a double musical note in an orange rectangle.

Using traditional “likelihood of confusion” analysis, the Board concluded that an average consumer would be unlikely to discern the marks. As explained in the decision:

In view of the facts that the marks are similar, the goods and services are related and are encountered by the same classes of consumers, we find that applicant’s double musical note and design for “computer software [..]” is likely to cause confusion with the registered mark comprising a double musical note and design [..] for listening to MP3’s and for sharing MP3’s and music playlists with others.

The Board acknowledged that when placed side-by-side, certain differences between the two icons do exist. However, it was quick to note that “the test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression so that confusion as to the source of the goods and services offered under the respective marks is likely to result.”

The Board also rejected Apple’s argument that the trademark held by MySpace was weak because eight other trademarks using similar musical notes. Ultimately, the Board found that the Apple and MySpace marks had more in common than the other marks. The Board also cited the similarities in how the marks would be used. “Applicant’s software and the registrant’s services perform similar functions: controlling digital music,” it noted.

Even powerful companies like Apple do not always come out on top in intellectual property disputes.  MySpace was victorious in this case because it was able to demonstrate a likelihood of confusion with its existing mark.

How Can I Help?

If you need help selecting or protecting your brand or 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. 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

I can’t do it my way

The owner of hot dog business was unable to convince the United States Trademark Office that his trademark for “Franks Anatra” would not cause confusion with the famous singer with a similar sounding name. Frank Sinatra LLC opposed the trademark application, alleging that it falsely suggested a connection with Ol’ Blue Eyes.

To establish that a mark falsely suggest a connection with a person, the following elements must be satisfied: (1) the mark is the same as, or a close approximation of, the name or identity of a person; (2) the mark would be recognized as such, in that it points uniquely and unmistakably to that person; (3) the person named by the mark is not connected with the activities performed by applicant under the mark; and (4) the fame or reputation of the person is such that, when the mark is used with the applicant’s goods or services, a connection with the person would be presumed.

In this case, Bill Loizon, the trademark applicant, claimed his trademark had nothing to do with Frank Sinatra. Rather, he contended that Franks refers to “frankfurters, hot dogs, and other similar food items,” while Anatra means “duck” or “drake” in Italian. Given that hot dogs are generally not associated with ducks or Italians, Loizon offered another explanation for the name. He said Anatra refers to the People’s Republic of Anatra, which he maintains is an island country that is “all about the hot dogs.”

As detailed by the Hollywood Reporter, the Trademark Office was not convinced. “There is nothing inherent in applicant’s mark or in his marketing to lead consumers to translate the word ‘Anatra’ to duck. Furthermore, we do not understand how applicant’s mark engenders the commercial impression relating to anything other than a play on the Frank Sinatra name,” the ruling states.

The Trademark Office also concluded that Frank Sinatra, although diseased, still maintains a level of fame sufficient to cause customer confusion. “Frank Sinatra is an iconic American cultural figure whose fame and reputation easily satisfy this element of the test for a false suggestion of a connection,” the appeals board confirms.

As you can see, the rules for registering a trademark containing the name of living and/or famous individuals are fairly strict. While the association may help attract customers, the legal ramifications generally outweigh any benefits.

How Can I Help?

If you need help with branding your new business, 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. 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

The red shoe diaries.

Christian Louboutin is fairly famous for making and marketing his exotic shoes with the red soles.  So famous in fact that the Second Circuit Court of Appeals has ruled that the distinctive red soles of Christian Louboutin shoes are entitled to trademark protection.

However, only if the rest of the shoe is not red.

(The offending red shoe)

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. After negotiations between the two designers failed, Louboutin filed a trademark infringement lawsuit.

The appellate court concluded that Louboutin’s trademark, consisting of a red, lacquered outsole on a high fashion woman’s shoe, has acquired limited “secondary meaning” as a distinctive symbol that identifies the Louboutin brand.

The decision reverses a lower court ruling that a single color can never serve as a trademark in the fashion industry.

The court did, however, instruct the U.S. Patent and Trademark Office to limit the trademark to uses in which the red outsole contrasts with the color of the rest of the shoe. “It is the contrast between the sole and the upper that causes the sole to ‘pop,’ and to distinguish its creator,” the opinion states. I heartens me to know that the justices understand the word “pop” in a fashion context.  Actually, I am sure that the women on the court educated the male members of the judiciary on the word “pop.”

Under the modified trademark, YSL’s shoes do not infringe. As a result, both designers walked away from this case with a victory.

Now about those blue suede shoes….

How I Help

If you have a distinctive brand that you need help to protect, 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.  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

Picture Day!

It had to happen sometime.  Today was the day that we are taking new photos for the firm’s web site.  I’ll post the new one once the photographer has photshopped me into greatness!  Well, maybe not greatness, just handsome like Tom Cruise, Ashton Kutcher, or Channing Tatum.  Personally, I don’t think there are enough presets in to world to make that happen.  So, to assist my makeover the lovely Renee Garafano from Glendale SalonSpa worked on me for what seemed like hours, but was actually only a couple of minute.  She is really good, so you might want to go to her spa for some special treatment.

And so it begins!

A nose job.

What have I gotten myself into!  Like Picasso preparing to paint, Renee prepares to apply…I don’t actually know what is being applied.

A break in the action while Renee refilled the make case.  I’m sure she didn’t expect to have to cover THIS much real estate.

Finishing touches, then: Lights, Camera, Action!

If you need help determining how best to protect your ideas, or know someone that can use my help (with or without makeup!), 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.

Listen if You Dare!

You can find my very interesting radio show here at www.AdrenalineRadio.com and visit the Podcast – Now Playing section of the website.
Or if you prefer you can listen and download via iTunes at http://itunes.apple.com/us/podcast/adrenalineradio.com-weekly/id469932916

Be kind, this was our first time.  I don’t think we did too bad considering the subject matter.

Danton Mak, a partner at the firm and I did a one hour show this past week discussing intellectual property in general.  However, if you have an idea that needs protecting, please contact me for your 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.

Selecting the Proper Format for a Trademark

If you have done any research into filing a trademark application, you know that there are some decisions to make. One of the most important choices is the depiction of your mark.

There are two possible mark formats that you can use to describe your trademark: (1) standard character format; or (2) stylized or design format.

Standard Character Format

The standard character format is used to register words, letters, numbers, or any combination thereof, without claim to any particular font style, size, or color, and absent any design element.  In other words, just words.

In general, you should submit a standard character drawing if:

  • All letters and words in the mark are depicted in Latin characters;
  • All numerals in the mark are depicted in Roman or Arabic numerals;
  • The mark includes only common punctuation or diacritical marks; and
  • The mark does not include a design element.

Registration of a standard character format provides broad rights for the trademark owner including the right to use the words in any manner of presentation.  For instance, you can use the mark in any font style; it can be bold or italicized letters; and can use both uppercase and lowercase letters, all uppercase letters, or all lowercase letters.  Or any other variation.  I highly recommend getting a word mark above everything, if it is possible.

Stylized Format

The stylized or design format, on the other hand, is is used to register a mark with a design element(s) and/or words and/or letters having a particular stylized appearance that you wish to protect.

In most cases, companies select the stylized format because they want the mark to include color or a design/logo.

Other Considerations

Finally, it is important to note that the two types of mark formats cannot be mixed in one mark.  Therefore, it is important to ensure that you do not submit a representation of a mark that attempts to combine a standard character format and a stylized or design format, because, once the application is filed, you cannot make a material change to your mark.

How I Can Help

As always, this post provides only a brief overview of the advantages and disadvantages of the two trademark formats. Before you undertake filing for a trademark, you should  consult with an experienced intellectual property attorney.

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.

The Number of Female Patent and Trademark Holders is Surging

The number of women obtaining patents and trademarks in the United States has dramatically increased over the past several years, according to a new study conducted by the National Women’s Business Council. Researchers examined data obtained from the U.S. Patent and Trademark Office (USPTO) to determine the number of patents and trademark granted to women between 1975 and 2010. The overall conclusion was  that “U.S. based women demonstrate increasing leadership in patent and trademark activities.”

In 2010, 33 percent of all trademarks granted to individuals and sole proprietorships went to women. Meanwhile, women held 18 percent of all patents granted in 2010, doubling the percentage held in 1990.

Also:

• The number of patents granted to women increased by approximately 34.72% from 2009 to 2010.

• The highest sustained rate of increase in the grant of U.S. patents to women was in the 1986-1993 period.

• The participation of women in Trademark activity as measured by the percentage of Trademarks granted has more than doubled in the period between 1980 to 2010, from approximately 16.5% in 1980 to more than 33% in 2010.

• Women have a significantly higher participation in Trademark activity as compared to Patent activity. For instance, whereas women received approximately 18% of all patents granted in the year 2010, the contribution of women to Trademark activity was more than 33%.

Congratulations!

If you have an idea that needs protecting, please contact me for your 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.  Feel free to ask for one of our very knowledgable female attorneys (like Laura or Katherine) too!