Posts in Trademark

As part of the Trademark Operation’s continuing series of roundtable discussions to gather stakeholder views on important issues, a roundtable discussion about USPTO’s practice regarding amendments to identifications of goods and services due to technology evolution will be held on Friday, April 11, from 2 – 3 pm. The session will be open to the public and webcast. The event will take place in the Madison Auditorium at the USPTO offices, located at 600 Dulany Street, Alexandria, Virginia 22314.

The Court will hear oral argument as follows: on February 26, in two cases on granting (Octane Fitness) and reviewing (Highmark) attorneys’ fee awards; on March 31, in a case (Alice Corp.) on patent eligibility of system and computer-implemented method claims; on April 21, in a case (POM Wonderful) on claims under Section 43 of the Lanham Act challenging labels regulated by the Food and Drug Administration; on April 22, in a case (Aereo) on whether a provider of broadcast television programming over the Internet violates a copyright owner’s public performance right; on April 28, in a case (Nautilus) on the proper standard for finding indefiniteness invalidity for patents; and on April 30, in a case (Limelight) on joint liability for method claim infringement where all of the claimed steps are performed but not by a single entity.

Any action or fee due on Thursday, February 13, will be considered timely on the next succeeding business day on which the USPTO is open. Because the TEAS forms cannot be reprogrammed to accept delayed filings, if customers choose to file tomorrow, they will need to employ workaround procedures, which may include filing petitions. Thus, it is strongly recommended that any submissions due today be filed today, if possible.

But deciding to apply for a federal trademark registration isn’t the end-all-be-all. Frequently a name or mark is selected for a business without a trademark search ever being done. That can be extremely costly if it is later learned that some other individual or company has been already been operating under that name or mark. Even in the situation where no trademark infringement liability attaches, the second comer will need to stop using, give up on any good will already developed and move on. This can be quite costly, just in terms of recalling and revising advertising campaigns, letterhead, business cards and the like. The best advice is, therefore, to always do a trademark search and file for a United States Trademark.

You have probably had circumstances when you have positively associated with a certain trademark. Perhaps you were traveling and had the option to eat at one of several restaurants… A trademark is a significant asset. A trademark not only becomes your company seal, but it is how consumers will relate to your goods or services. If you have high quality goods and services for a reasonable price then customers will associate your company with positive feelings and memories, so the next time they see your trademark they will conjure up in their minds a whole host of positives. This conjuring up of positive feelings, emotions and memories of satisfaction can be powerful.

The Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the Office for Harmonization in the Internal Market(Trademarks and Designs) (OHIM), the State Administration for Industry and Commerce (SAIC) and the United States Patent and Trademark Office (USPTO), (hereinafter referred to as the “Partners”) held the 2013 TM5 Annual Meeting in Seoul, Republic of Korea on 5-6 December 2013.

On December 12, 2013, Members of the House and Senate introduced bipartisan legislation that would allow the United States or any state or local government to register official insignia for federal trademark protection. This bill would amend the Trademark Act of 1946, also known as the Lanham Act, to allow the Federal government as well as all State and local governments to register with the U.S. Patent and Trademark Office (PTO) marks consisting of their flag, coat of arms and other official seals.

It’s amazing how fast a successful product is counterfeited and how brazen the copying is. The figure above illustrates what counterfeiting looks like. Counterfeiters copy everything….except price and quality. They copy the shape, the color, and the style of the product. They copy the images straight from your Kickstarter campaign. They copy the packaging you designed and the name you developed. They cut your price anywhere from 10% to 1,000%. Their quality is at best sub-standard and at worst dangerously defective. I’ve personally purchased counterfeits that have broken on first use and I’ve read reports of counterfeits catching on fire when plugged in.

Currently, there are up to three vacancies on the TPAC that need to be filled. Each committee has nine voting members who are appointed by, and serve at the pleasure of, the Secretary of Commerce. Each member serves a three-year term.

The firm is back at it again in 2013 taking on another alleged trademark scam operation after successfully prevailing in a similar claim just over 1 year ago against USA Trademark Enterprises. See Trademark Scammers Out of Business Thanks to Leason Ellis. In that case, 7:12-cv-0620 (SDNY), alleged that the defendants had engaged in false advertising and unfair competition by marketing a so-called “catalog” of trademark registrations. The case settled for $10,000, which the firm donated to the United States Patent and Trademark Office (USPTO). Thus, the defendants would do well to stand up and take notice. It seems that Leason Ellis is living by the the words that mark the youth of my generation — “We’re not gonna take it, no, we ain’t gonna take it, we’re not going to take it any more!”

Stone Temple Pilots has filed a lawsuit against its former lead singer, Scott Weiland, claiming in part that they kicked him out back in February of 2013, yet Weiland (who now performs solo) continues to use the band’s name for his own performances, which allegedly violates the band’s partnership agreement.

Trademarks are an important protection for any business, but nowhere in Canada is this as vital as in Québec, where failure to have a registered trade-mark may lead to notices and fines for business owners. These are precipitated, but not imposed, by the Office de la langue française (translated to: Office of the French Language), or OQLF, a public organization mandated to uphold the quality of the French language, and to ensure it become the “normal and everyday language of work, instruction, communication, commerce and business” in the province of Québec.[1] Since the 2012 provincial election that saw a return to power for Québec’s leading sovereigntist party, the Parti Québecois, the OQLF has been implicated in a few high profile cases that have muddied the waters for businesses operating in Québec.

Anybody who has any involvement with Intellectual Property (“IP”) knows full well that protecting IP means a multi-step process. Obviously, step one is the conception of the invention, idea, trademark, trade name, or other innovation where protection might be necessary. Step two is the decision about what to do with the “new” idea, etc. in terms of the need to try for exclusivity on it –or not. Many “new” things do not need IP protection – and other “new” things may not qualify for it. If the “new” idea fits into the area where protection is desirable and it qualifies, then the next step is to seek legal protection. Of course, such protection will have a cost – whether or not the protection is sought by the inventor/conceptualizer himself/herself or itself (in the case of an organization) or assistance of counsel is required.

Mehmet Oz, M.D. is taking the fight to the scam operators who have been duping the public using his good and extremely popular name. Indeed, the two-time Emmy Award-winning, nationally syndicated daytime series The Dr. Oz Show is launching an aggressive campaign to stop illegal use of the Dr. Oz name, image and show. This campaign dubbed “IT’S NOT ME,” began Monday, May 6, 2013.

Capone, an Illinois corporation, did not have authorization to use the Tommy Gun trademarks on alcoholic beverages that carry a reproduction of the Tommy Gun marks. Additionally, Saeilo claims that Capone’s infringement not only violates federal trademark law, but also Illinois state law and common law.