Archive | Trademarks

Trademark Registration Invalid for Lack of Use in Commerce Before Statement of Use Deadline

TAOIn 2010, Marcus Bender visited a TAO restaurant or nightclub in an attempt to sell Kia Vodka. After that attempt failed, Bender Consulting Ltd. (Bender), which Mr. Bender owned, filed an intent-to-use trademark application on TAO VODKA for alcoholic beverages other than beer, which later registered.

TAO Licensing, LLC, petitioned to cancel the TAO VODKA registration. TAO owns several restaurants and nightclubs named TAO in cities, such as New York, and Las Vegas. TAO alleged that the registration was not valid because Bender did not use the mark in commerce prior to the deadline to file a statement of use, among other reasons.

Bender asserted that its registration was valid based on one sample case of Vodka shipped to Mr. Bender from a Vietnamese distillery. Mr. Bender allegedly provided samples, at no …

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Happy New Year: It’s not a Trademark for Wine, But it is for Dolls

HappyNewYearLNJ Vineyards LLC applied to register HAPPY NEW YEAR as a trademark for wine. The USPTO Examining Attorney refused registration asserting that HAPPY NEW YEAR did not function as a trademark when used in connection with wine.

The Examining Attorney said:

“HAPPY NEW YEAR, is a common sentiment usually conveyed when wishing someone happiness in the new year…Further, such phrases are commonly associated with wine and wishing someone a happy new year. … Accordingly, the mark functions only as the sentiment it conveys, rather than as a trademark/source identifier for the wine.”

If you heard/saw “HAPPY NEW YEAR” in connection with wine, would you think its a brand or would you think it was the common sentiment wishing you a happy new year? People drink wine on new years eve and commonly wish …

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How Important is the Description of Goods or Services in a Trademark Application?

LegalForce-v-LegalZoom

Raj Abhyanker is the owner of the lawfirm LegalForce RAPC Worldwide and of Tradmarkia.com. Raj and his lawfirm sued LegalZoom, the USPTO, and the State Bars of California, Arizona, and Texas based on what Raj alleged is LegalZoom’s unauthorized practice of law in connection with trademark application filing.

Alleged Unauthorized Practice of Law

Raj alleged that LegalZoom engaged in the unauthorized practice of law in connection with LegalZoom’s trademark application filing service. Raj and his law firm used LegalZoom to apply for two trademarks in connection with two of the Plaintiff’s businesses.

According to the complaint, LegalZoom represents on its website that it does not practice law. However, the complaint alleges that LegalZoom collects a service fee for its “peace of mind” review service. The complaint alleges that during the “class …

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Why You Should Own and Control Your Domain Name

“Do you want to build your online brand on the sand of someone else’s domain registration or on a bedrock of a domain registered in your name?”

FLNBIf you buy a piece of land, a house, or a building, would you allow the title to that property to name your real estate agent or your maintenance contractor? No, you would not. When you are spending hundreds of thousands of dollars or more on something you make sure that you actually own it in your name.

The same should be true when you buy a domain name for your website, regardless of the price. You should own and register it in your name, and not your technology provider’s name or anyone else’s name. When this is not the case, it can …

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Incontestable Status of Mark Found Generic Does Not Prevent Exceptional Case Attorney Fees

REACTIVEGeoDynamics sued DynaEnergetics for trademark  infringement of GeoDynamics’ REACTIVE trademark. GeoDynamics owned U.S. Trademark Registration No. 3,496,381 for the REACTIVE mark. After a bench trial the court found that REACTIVE was generic for the goods of fracturing charges for use in oil and gas wells and ordered the registration cancelled.

The defendant moved for fees and the court agreed that GeoDynamic’s trademark case was exceptional based on the weakness of its case. GeoDynamic asserted that the case was not exceptional because, among other reasons, the REACTIVE mark had achieved incontestability status at the USPTO. The court rejected that view. The incontestability status was not a bar to finding the case was exceptional.

Incontestability is somewhat misleading because “incontestability” is only achieved with respect to some grounds on which the registration …

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Multi-Color Design Trademarks and Trade Dress

SATA_Italco_PaintSATA GmbH sued Discount Auto Body and Paint Supply LLC for infringing its product design trademarks in the alleged sale of paint spray guns. SATA GmbH & Co. KG v. Discount Auto Body and Paint Supply LLC, No. 2-17-cv-03101 (D.N.V. 2017).

This case demonstrates that it is possible not only to obtain trademark protection in a product design comprising a single color applied to an area of the product, but also on any color applied to an area of a product. In other words, the use of any color on an area of a product can itself act as a trademark, indicating a source of goods and/or services.

One of the trademark SATA asserted was U.S. Trademark Registration No. 2,770,801 for a design mark of “a green band of color extended around the circumference …

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How to Find Cases Interpreting the Illinois Trademark Registration and Protection Act

The Illinois Trademark Registration and Protection Act (“Illinois Trademark Act”) provides a system for registering and enforcing trademarks in Illinois.  765 ILCS 1036/1 et seq. However, in many instances there may not be any relevant cases interpreting the provisions of the Illinois Trademark Act. Section 90 of the Act may solve this problem by providing that cases interpreting the federal Lanham Act are persuasive authority for interpreting similar provisions of the Illinois Trademark Act. 765 ILCS 1036/90.

In particular, section 90 states:

…The intent of this Act is to provide a system of State trademark registration and protection substantially consistent with the federal system of trademark registration and protection under the Trademark Act of 1946, as amended. To that end, the construction given the federal Act shall be examined as persuasive …

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Reversing Order of Words of a Mark and Consistent Use of a Mark

CAGE_PHConventus Orthopaedics applied to register two marks CAGE PH and PH CAGE for surgical implants. The Examining attorney refused registration on the basis that each mark was descriptive. The Examining attorney argued that PH was descriptive for proximal humerus (bone). The TTAB reversed finding that there was not enough evidence to show that PH was descriptive.

What’s interesting about this case is that the applicant applied to register CAGE PH (No. 86534128) and its reversed/transposed order PH CAGE (No. 86534174). This is unusual. Normally you want to use a mark consistently in order to properly build trademark rights. Inconsistent use of a mark can negatively impact your trademark rights.

Further, the TTAB has said that reversing or transposing the elements/words of a mark does not avoid a conflict when the overall commercial impression …

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Name with Dictionary Definition Involving Illegal Activity: How Will it Play with the Jury

ContrabandYesterday, I wrote about Contraband Sports LLC’s lawsuit for declaratory judgement that its four finger weight lifting glove does not infringe Fit Four LLC’s design patent D652,607. If this case goes to trial, could there be any difficulty arising out of Contraband’s name?

On one hand, a party’s name should have no bearing, merits-wise, on whether or not it infringes a patent. On the other hand, does Contraband’s name have a negative connotation that could impact the jury?

The Oxford English dictionary provides one definition of “contraband” as “goods that have been imported or exported illegally.” Merriam-Webster’s dictionary provides an other definition of the term as “illegal or prohibited traffic in goods.” Dictionary.com provides a definition of the term as “anything prohibited by law from being imported or exported.”

Say …

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Stats Require Context to Support Assertion that Mark is Famous: $33M Sales, $1.8M Marketing Not Enough

KUHL_KUL_Marks

Daniel Shuff applied to register the mark KU:L for bicycles. Alfwear Inc opposed the application based on its registered marks KUHL, KÜHL, and KUUL for lip balm, fabrics clothing, including rugged outdoor clothing.

Alfwear attempted to show that its mark was famous. But showing that a mark is famous is hard. A famous mark must have extensive public recognition and renown. Aflwear presented evidence that:

  1. it had used the KÜHL mark since 1993,
  2. it used the mark on 200 styles of outdoor clothing per year,
  3. it had $33 million in retail sales in 2012,
  4. it sold over 1 million pairs of pants in 2015,
  5. it spent about 1.8 million a year between 2012 and 2016 marketing and advertising,
  6. it sold its products in over 1000 retailers through out the US, including in REI, Scheels,
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