Archive | Trademarks

Register the Mark You Will Actually Use, Not Unused Similar Variations

Trademark rights are connected with actual use of a mark. Sometimes that use starts before an federal trademark is filed and sometimes it starts after a federal (intent to use) trademark application is filed. But speculating in trademark applications on marks that you don’t intend to actually use is useless.

This brings me a federal trademark application filed on the following mark:

double doink doubledoink DOUBLE DOINK DOUBLEDOINK Doubledoink Double Doink

That whole thing is the mark of the application.

The applicant included many variations of capitalization and spacing of the two words Double Doink. Let’s break down the mark:

  1. double doink
  2. doubledoink
  3. DOUBLE DOINK
  4. DOUBLEDOINK
  5. Doubledoink
  6. Double Doink

The applicant has six variations of Double Doink in the mark. But you don’t need to, and …

Continue Reading

Difficulty of Name Changes: Country Moves to Change Name to End 27 Year Dispute with Greece

It is not uncommon for trademark disputes to resolve with one party agreeing to stop using the mark that is in dispute. If the mark is the party’s name, then a name change is required.

Name changes are usually not easy. Consider the need to change items having the mark, including advertisements, signs, letterhead, business cards, brochures, packaging, marked products, and a website. Further, a name change may mean a loss of customer recognition of the brand and the need to educate customers on the new name.

As a result, it is no surprise that a party is usually not happy about being required to change its name. So too when a country is pressured to change its name.

NPR reports that the parliament of the country of Macedonia (Republic of …

Continue Reading

Amazon Marketplace Problems and the Case For Registering a Seller Name as a Trademark with the USPTO

Verge reports on the problems sellers encounter from false claims and sabotage efforts of other sellers on Amazon’s marketplace.

The Verge article is titled Prime and Punishment: Dirty Dealing in the $175 Billion Amazon Marketplace. It reports that one seller registered a trademark for his watch brand but not the name of his Amazon seller account. Another person then applied and received a trademark registration from the USPTO over the Amazon seller’s account name, registered it with Amazon, and then used the registration to convince Amazon to kick the legitimate seller off and take over his name on Amazon. The article describes it this way:

Over the following days, Harris came to realize that someone had been targeting him for almost a year, preparing an intricate trap. While he

Continue Reading

Weak Marks Leave Only Stylistic Elements Protected: DIY Auto Edition

It is usually not good when the trademark office considers the whole text of your mark to be generic, as the registration for DIY AUTO REPAIR SHOPS demonstrates below. When you want to use a generic element in your mark to describe the goods or services offered, it is usually better to combine that with a unique text element so you have something protectable, to which your reputation can attach.

DIY AUTO, LLC applied to register the DIY AUTO and design, shown below, for the services of providing a website featuring information about automotive maintenance and repair service.

The Examining Attorney refused registration based on DIY AUTO REPAIR SHOPS and design, shown below, registered for the services of a do-it-yourself vehicle repair shop.

 

The Trademark Trial and Appeals

Continue Reading

Five Years: Most Relevant Time Period for Considering Third Party Trademark Use, Federal Circuit Says

Converse filed a complaint at the International Trade Commission (ITC) seeking an order blocking the importation of several shoes that Converse alleged to infringe Converse’s trade dress rights in three design elements on the mid-sole of Converse’s All Star shoes.

Converse asserted trade dress rights in the “design of the two stripes on the midsole of the shoe, the design of the toe cap, the design of the multi-layered toe bumper featuring diamonds and line patterns, and the relative position of these elements to each other.”

Here, the design elements of the shoe are product design trade dress, for which the owner must show that these design elements have acquired distinctiveness in the relevant market place. If the owner fails to show acquired distinctiveness, then it does not have trademark …

Continue Reading

Likely Phonic Similarity Dooms Registration Attempt: MIKA Blocks MYCAH

Devon Goocher applied to register MYCAH for music concerts, among other services. The USPTO refused registration based on a registration on MIKA for live performances by a musical entertainer in In re GoocherSer. No. 87214736 (TTAB Setp. 20, 2018)

Two marks may be found similar if there are sufficient similarities in the sound or appearance or connotation of the marks. Here the similarity in sound was enough to find the marks were similar.

The Trademark Trial and Appeals Board noted that:

…it is very likely that consumers will pronounce Applicant’s mark MYCAH in the identical way that they would pronounce Registrant’s mark MIKA, that is bi-syllabically with the first syllable being pronounced the same as the word “my,” as the vowels “I” and “Y” are often interchanged in,

Continue Reading

Uber CEO Acknowledges that Uber is a Verb

In a September 10, 2018 post on Uber’s website, Uber’s CEO is quoted saying “Very few brands become verbs; for Uber to have achieved this shows how we’ve captured imaginations and become an important part of our customers’ lives….”

Many companies go out of their way to discourage the use of their trademark as a verb or a noun. For example, the owners of the VELCRO brand produced a humorous music video instructing the public not to use VELCRO as a noun or verb. Why?

They did this to prevent the loss of trademark rights in the VELCRO trademark due to what is called genericide. Genericide occurs when the public appropriates a trademark and uses it as a generic name for a type of good or service regardless of …

Continue Reading

Avoid Using Trademarks Descriptively: Corn Thins and Rice Thins Found Merely Descriptive

Real Foods Pty Ltd. applied to register the mark “Corn Thins” for the goods of “crispbread slices predominantly of corn, namely popped corn cakes.” It also applied to register the mark “Rice Thins” for the goods of “crispbread slices primarily made of rice, namely rice cakes.” Frito-Lay successfully opposed the registration of marks on the basis that the marks are merely descriptive of the goods and have not acquired distinctiveness in Real Foods Pty Ltd. v. Frito-Lay North America, Inc. Nos. 2017-1959, 2017-2009 (Fed. Cir. 2018).

A mark is merely descriptive if it immediately conveys information concerning a feature, quality, or characteristic of the goods or services for which registration is sought. The Trademark Trial and Appeals Board (TTAB) and the Federal circuit agreed that a consumer would immediately …

Continue Reading

Protecting Descriptive Marks: Principal Register and Supplemental Register

The USPTO maintains two registers of trademarks. The main register is the principal register while the other is the supplemental register. Most trademark applications seek registration on the principal register. Registration on the principal register provides the trademark owner with more rights and benefits than the supplemental register.

Principal Register

The advantages of owning a registration on the Principal Register, include that the registration on the Principal Register:

  • Provides exclusive nationwide right to use the mark in commerce on or in connection with the goods/services listed in the registration where there was no prior use by others (15 U.S.C. §§ 1057(b), 1115(a));
  • Is constructive notice to the public of the registrant’s claim of ownership of the mark (15 U.S.C. §1072);
  • Provides a legal presumption of the registrant’s ownership of the mark (15 U.S.C.
Continue Reading

Trademark Ownership: The Risk of Owning a Trademark Personally

When a founder starts a business, he or she has many decisions to make. One of those is whether he or she should own assets of the business personally or whether he or she should form a corporation or LLC to own the assets of the business and bear the liabilities of a business. Founders are often quick to form a corporation or LLC to operate the business to shield themselves from personal liability arising from claims against the business.

But occasionally founders and business owners operating under a corporation or LLC seek to register and own trademarks personally rather than have them owned by the corporation or LLC. This is probably a mistake that increases their risk of being personally liable for products or services sold under the trademarks as …

Continue Reading

Powered by WordPress. Designed by Woo Themes