This question comes up pretty regularly, usually in the context of a small business owner who’s filed a trademark registration on their own, without consulting with a lawyer who handles this type of work. When the USPTO rejects the registration, often because there is another mark that uses similar or identical language in the same class of goods or services, then the person who filed for the mark is left scratching their heads and asking a few questions: “What does the rejection really mean? Can I still use the mark? Will I get sued if I do? Is it possible to convince USPTO that they were wrong to initially refuse?”
As with everything in the legal world, the answers are… Continue reading
“Ken dumps Barbie” read the ads, which feature a picture of a frowning Ken doll, male companion to Mattel’s Barbie. Ken apparently did this because Mattel, maker of Barbie dolls, contributes to global deforestation, and Greenpeace isn’t happy about that. Greenpeace tried to run this ad, but it was rejected by Facebook:
Greenpeace seems to have a point. There is a concept akin to copyright’s fair use doctrine that relates to trademark use, although as always with trademarks, if there is evidence of confusion among the public, things start to go off the rails fast. Here’s what Greenpeace had to say about the Facebook takedown:
According to our legal analysis prior to the campaign, this complaint to Facebook that Greenpeace… Continue reading
It appears that Apple’s finally given up on trying to trademark “pod” itself. Of course, iPod is still a distinctive, and protected, term. But what amazes me is that Apple spent 13 years trying to exert control over the three letter word “pod,” which is a Latinate stem for foot. Colloquially, it’s come to mean anything that’s sort of rounded in shape, egg-like, or small and portable. It’s a great multipurpose word, which is obviously why Apple was so interested in in to begin with. But, come on … it’s malleable, and that is what pushes it in the generic direction.
iPod, on the other hand, is unique and different. At least, it was when it was introduced. Well maybe… Continue reading
Here’s a very interesting case. A computer software company called Phoenix produced a product that it called CONDOR and trademarked the term in 1997. In 2001, the University of Wisconsin produced a similar product and applied for a trademark on their CONDOR product. Phoenix opposed the registration, and USPTO (TTAB) ultimately rejected the University’s application because of the potential for confusion. Then in 2007, the University of Wisconsin filed suit against Phoenix over the CONDOR trademark in District Court. And they won a reversal of the USPTO decision canceling their mark. The judge in that case also denied Phoenix’s request for damages (and probably attorney’s fees) because it found the University had sovereign immunity.
Here’s where it gets interesting.… Continue reading
Here’s an interesting story from the Wall Street Journal. A guy in California, which recently relaxed its already lenient marijuana possession laws even further, tried to obtain a trademark for his pot delivery service, the clever “Canny Bus.” However, possession of marijuana is still criminal under Federal law, even if the state of California chooses not to allocate its police resources to enforcement or eliminates criminality entirely. So USPTO rejected the application. Worse still for the business owner, because the application appeared in the WSJ, Volkswagen got wind of it and was not pleased at his use of a van graphic similar to the old VW microbus, that staple of the 1970s.
This is illustrative of a practical consideration that… Continue reading
“Freeway Ricky Ross,” a convicted former drug kingpin, is apparently still interested in pursuing a current rapper who goes by the same name, for trademark infringement.
A judge ruled that Freeway Ricky’s moniker didn’t have “secondary meaning” and/or value in commerce from drug dealing.
“Because this illegal activity cannot be used to establish secondary meaning, such allegations do not provide support for Plaintiff having a valid trademark for his name,” the court said.
The original lawsuit was for damages in excess of $10 million.
So, how do you establish secondary meaning in your name? According to this source, you need
. . . proof that [the mark/name] has become distinctive as applied to the applicant’s goods or services… Continue reading