Archive | Trademarks

Google’s Trademark Survives Genericide Attack Despite Use as a Verb

Google’s trademark was attacked by two individuals who claimed that the GOOGLE trademark was generic for the act of internet searching in the case of Elliott v. Google, Inc., No 15-15809 (9th Cir. 2017). The owner of a valid trademark can become the “victim of genericide,” which occurs when the public appropriates a trademark and uses it as a generic name for a type of goods or services regardless of the source. If this happens, as it did for ASPIRIN and THERMOS, the trademark owner can loose its rights in the mark.

Here, the plaintiffs claimed that the public’s use of google as a verb, e.g. “I googled it,” showed that the trademark was generic. The plaintiff’s claimed that a word can only be used in a trademark sense …

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Components of a Trademark Cease and Desist Letter

At its most basic, a trademark cease and desist letter explains the what and why of the wrongful conduct and requests that it stop. Below provides a more detailed explanation of some components that may go into a cease and desist letter, depending on the circumstances.

1.  Who is this?

Simply explain who you are. For example, “I’m the president of Acme, Inc.”

2. Tell them what you want

Provide a brief one or two sentence summary of the issue and what you want. For example, “I am writing regarding Beta Inc.’s use of the word “BOSSES” in connection with the sale of widgets. As this use infringes Acme’s trademark rights, Acme demands that you immediately stop all use of BOSSES in connection with the sale of widgets.”

3. Explain

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Should I use Inc or LLC in my Trademark?

Look at the way well-known brands use their company name as a trademark or services mark. They usually do not include an entity descriptor–e.g. Inc., Corp., Ltd., or LLC–in those brand usages. For example, the company behind the Starbucks brand is “Starbucks Corporation.” However, you rarely see the word “corporation” used in connection with Starbucks when Starbucks is used as a trademark. Instead, “Starbucks Corporation” is mostly used in the fine print when referring to the corporation rather than the brand, such as in their copyright notice.

One reason for that is marketers probably do not want unnecessary legal language cluttering up their beautifully crafted names/brands. Another reason is that trademark law somewhat discourages the inclusion of entity descriptors in trademarks.

The Lanham Act provides for the federal registration of …

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Transferring Ownership of a Trademark

“Use of the mark by the [trademark] assignee in connection with a different goodwill and different product would result in a fraud on the purchasing public who reasonably assume that the mark signifies the same thing… Therefore, if consumers are not to be misled from established associations with the mark, [the mark must] continue to be associated with the same or similar products after the assignment.” – Fifth Circuit Court of Appeals

sugarbustersregCo-author and publisher, Sugar Busters LLC, purchased the registered service mark SUGARBUSTERS (Reg. No. U.S. 1,684,769). Then Sugar Busters LLC tried to sue on Ellen Brennan for trademark infringement based on the registration, but lost when it sought a preliminary injunction. Sugar Busters lost because the registered mark was for retail services, which were not related …

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Secretary of State Approval of Corporate Name Is No Defense to Trademark Infringement

“the fact that defendant received a charter [from the State of Illinois] to use the name ‘Lady Esther Corset Shoppe, Inc.’ does not protect [the defendant].”

Lady Esther, Ltd. sued Lady Esther Corset Shoppe, Inc. for unfair competition based on the defendant’s use of “Lady Esther” in it company name. It appears the defendant argued it was protected from suit because the Illinois Secretary of State approved the formation of its corporation under the name Lady Esther Corset Shoppe. The court rejected this argument in Lady Esther, Ltd. v. Lady Esther Corset Shoppe, Inc., 317 Ill. App. 451, 458 (Ill. App. Ct. 1943).

The Lady Esther case is old, but this point is still valid: the approval of a corporate or LLC name by the Illinois Secretary of State is no …

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Trademark Disclaimers and Hopeless Trademark Appeals

LouisianaThis appears to be another case where the applicant pursued a hopeless claim. Why did this happen? The problem is that the applicant initially chose a weak trademark and then tried to prop it up by pursing a course that it could not win.

Louisiana Fish Fry Products (LFFP) filed a trademark application on LOUISIANA FISH FRY PRODUCTS BRING THE TASTE OF LOUISIANA HOME! as shown at the beginning of this post.

The Trademark Examining Attorney and the Trademark Trial and Appeals Board (TTAB) both found that LFFP was required to disclaim “Fish Fry Products” as it was descriptive and generic of LFFP’s products. LFFP appealed this requirement to the Federal Circuit Appeals Court and lost in In Re: Louisiana Fish Fry Products, Ltd., No. 2013-1619, (Fed Cir. 2015).…

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Know When to Stop Wasting Money on Trademark Litigation

MoneyWasteYou need to know when to stop wasting money on trademark litigation. Here is a case where the plaintiff should have stopped on day two of the lawsuit, but didn’t.

Dr. Tartell and Dr. Mandel jointly practiced medicine until 2011, when they split their practice and went separate ways. The break up was contentious.

After the break up, Dr. Mandrel (1) registered six domain names using some variation of Dr. Tartell’s name, redirecting some to Dr. Mandrel new website, and (2) purchased Google AdWords keyword for Dr. Tartell name, which caused Dr. Mandell’s website to appear as an advertisement whenever someone searched with those terms on Google.

Tartell filed suit against Dr. Mandell including claims for cybersquatting, false designation of origin, and unfair competition (all trademark law related claims).

The day …

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Names Predictive of Future Product Success?

“…the names of companies are often very predictive of future failure or success.” — Peter Theil.

“[a] great name can’t fix a bad product. A great product can fix a bad name.” — Paola Norambuena.

Choosing a name for your company, product, or service can be difficult and time consuming. But does the name you choose matter?

In other words, assuming that the name you choose does not conflict with another’s trademark rights and the name is a strong trademark, does the name impact the success of your company, product, or service?

Peter Theil, venture capitalist and co-founder of Paypal, thinks names matter. Peter discusses his view on naming in an exchange with Tyler Cowen:

TYLER COWEN: You mentioned Facebook a few minutes ago. In the back, we were

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Speculating in Trademarks is Fruitless: Race to Grab iWatch Fails for Lack of Bona Fide Intent

iWatchThe iPhone was released on June 29, 2007. Six days later on July 5, 2007, watch maker M.Z. Berger & Co. filed a trademark application on iWatch for watches, clocks, and related accessories. Coincidence?

Was the plan to grab up the iWatch trademark and sell it to Apple later? Too bad Apple went with “Apple Watch” instead.

Its a common misconception that filing a trademark application grants rights in a trademark without actually using the trademark. Just file a trademark application and the trademark is yours! No.

Speculating in trademarks without actual use of the trademark is a fruitless endeavor.

Watch maker Swatch AG filed an opposition against the iWatch trademark application. The TTAB, and later the appeals court, sustained the opposition and prevented the registration of iWatch because the …

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Use Your Trademark Consistently or It Will Be Weak: WD-40 in the Crosshair

Most damaging to Sorensen’s argument regarding this factor is his inconsistent use of the crosshair [trade]mark. – Seventh Circuit Court of Appeals.

Sorensen_v_WD-40_CrosshairIn 1997, Jeffery Sorensen founded a company and began selling rust preventive products under the trademark THE INHIBITOR. Sorensen claimed trademark rights in THE INHIBITOR mark and common law trademark rights in the Sorensen Crosshair provided on some of his products, shown to the right.

In 2011, the WD-40 Company, began selling WD-40 Specialist Long-Term Corrosion Inhibitor for a similar purpose. The WD-40 product contained the same volatile corrosion inhibitor as Sorensen’s product.

Sorensen sued WD-40 for infringing THE INHIBITOR and crosshair trademarks in the case of Sorensen v. WD-40 Company, No. 14-3067 (7th Cir. June 11, 2015). But he lost on all counts.

While its not …

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