Business and Tax Lawyer Blog

Whiskey Creek, a Nebraska based chain company, is seeking to enjoin "Whiskey River," (a well known restaurant establishment with a location in the Jacksonville area) from using this name for their business by alleging trademark infringement.

Interestingly enough, only nine trademark infringement claims were filed in all of 2009 in the Jacksonville area. However, Whiskey Creek has a restaurant location in south Florida and is claiming that the two business names, logos, and menus are confusingly similar to customers and they want Whiskey River enjoined from using its name.

Spokesmen for the Whiskey River camp say they are in compliance with trademark law and that the two restraunts have very different atmospheres and not confusing to consumers. There are several different state and federal laws pertaining to trademark infringement with numerous factors a court looks to in determining confusion. Furthermore, even if confusion is established, there are multiple defenses available to infringement claims that a party will have to overcome in order recover equitable and monetary damages. Find out more about the going concerns in the article at Whisky River, Whiskey Creek? Jacksonville businesses fight to keep trademarks: Similarity of names, logos, missions leads to legal challenges.

Continue reading "Trademark Battle: Whiskey River v. Whiskey Creek" »

Among the various entries in the Oscars, one was particularly interesting in an intellectual property sense. From the Bentley birds in the sky to the AIM and Bic mascot pedestrians walking in the streets, Logorama consists almost entirely of trademarks and logos. The film won the Academy Award for Best Animated Short Film. A producer, referring to the number of logos, thanked the "3,000 non-official sponsors" used in the film during the acceptance speech.

Logorama begins with two Michelin Man police officers, whose lunches are interrupted by a dispatch to apprehend a fleeing criminal, Ronald McDonald. Intertwined are the stories of two Pringles mascots attempting to flirt with Esso Girl at a Pizza Hut as well as a field trip to the zoo with Big Boy and Haribo. Mr. Clean leads the zoo tour, where the MGM Lion is on display. Plots converge during a shootout at Pizza Hut between McDonald and police. Afterward the city is engulf by a giant X-Box logo and eventually ends with the camera zooming out on a world, then a galaxy, then a universe comprised of logos.

According to the creators, the film shows an "over-marketed world built only from logos" to stress that nearly everything in daily life is associated with a graphic of some sort. The piece also appears to be a social commentary depicting the absurdity of the overuse of trademarks and product placements on the big screen.

Logorama was written and directed by H5, a French animation studio and collective of directors founded in 1996. Specifically, the film was directed by Francois Alaux, Herve de Crecy, and Ludovic Houplain.

This recent Oscar is not the film's first accolade. Logorama has received awards in numerous international film festivals including the 2009 Stockholm International Film Festival (Sweden), the 2009 Vendome Film Festival (France), and Cannes in 2009.

Continue reading "Logorama: A Social Commentary" »

In 2009, a Korean Motel called "Hilton Motel" had a suit filed against it in Seoul District Court by the international Hilton hotel chain (HLT International). HLT demanded that the owner of the motel, identified only as Mr. Yoon, cease using their trade name and that he pay HLT an indemnity of $25,541.

Hilton had registered both "Hilton" and its Korean equivalent as trademarks, which gave them exclusive rights to the name. HLT also announced that there are "numerous" lodging establishments in Korea that use the Hilton name illegally, and HLT was planning to bring suit against each one individually. At least one Korean hotel owner changed the name of his establishment to avoid a lawsuit. You can read more about this case at Hotel giant Hilton files lawsuit over naming rights.

Continue reading "Korean "Hilton Motel" sued by Hilton for Trademark Infringement" »

It was a great news story - In late 2009, a group calling themselves the "Yes Men" played a joke involving the US Chamber of Commerce. They put up a phony site along with a phony press release, supposedly quoting the chamber's President, Thomas Donahue, in a speech on global warming. Several national news outlets, including CNBC and Fox News, picked up the story and reported on it as real, even interrupting broadcasting to report on the "breaking" story. The US Chamber of Commerce was not amused by the joke.

The Chamber issued a DMCA takedown notice to the Yes Men's hosting provider, saying that the website clearly infringes on their copyright by directly copying design aspects of their official government site. The Yes Men countered by saying that if the ISP takes down the site, the Chamber will be liable for misrepresentation of infringement. They cited a US Supreme Court opinion, which stated that "parodies must often use substantial portions of an original work to make their point." But legal precedent also implies that parodies can be considered infringing if they are too close to the mark.

The "real" Chamber of Commerce, recognizing the value of its name and reputation, aggressively pursued its legal rights in court, U.S. Chamber Files Civil Complaint to Protect Trademark and Intellectual Property from Unlawful Use, and created a web page, U.S. Chamber of Commerce "The Facts," specifically responding to "false accusations and misstatements" of their policy. This dual approach addressed not only the Chamber's legal defense of its intellectual property rights, but also attempted to minimize the damage to their public image.

Protect your intellectual property - your trade name, trademark and service mark. Contact Jacksonville, Florida business attorneys Wood, Atter & Wolf, P.A. for legal counsel.

Find out more about this story at Yes, but is it funny? US Chamber issues takedown notice for Yes Men parody.

Many companies reach customers by paying for placement of selected words or phrases (key words) at the top of Internet search engine results. Companies generally bid on the selected search terms, agreeing to pay a certain amount to the search engine each time someone clicks on their ad. This is known as "pay per click."

Currently, there are no restrictions on which keywords can be used. For example, any software company can bid to have their ads appear anytime someone searches for Microsoft, by bidding on the term "Microsoft" – even though they clearly do not have the trademark for that name. This may be changing, however, as one search engine giant has already lost a related trademark infringement case tried under European law. The European decision is under appeal, so the decision is not yet finalized. Even when that decision against the search engine company is finally resolved, the issue of a business' claim against the competitor who secured the "pay per click" remains open in the U.S.

If you believe your trade or product name has been infringed, please contact Jacksonville, Florida trademark attorneys Wood, Atter & Wolf, P.A. for legal counsel.

Find out more about this story at Are Competitors Hijacking Your Trademarks in AdWords?

A Federal Judge in the US District Court in Houston, Texas has ruled that the signage used by Trend Setter Realty infringes on a RE/MAX trademark design under both Texas and federal law. The court reaffirmed RE/MAX's red-over-white-over-blue sign design as a protected trademark.

According to RE/MAX Senior Vice President and Chief Legal Officer, Geoff Lewis, RE/MAX attempted to convince Trend Setter to change its signs several times before taking the matter to trial. An important aspect of the RE/MAX argument were the results of a consumer study they conducted with the two signs. Over 25% of those surveyed believed that Trend Setter Realty was affiliated with RE/MAX because of the similarity of the design.

Trademark infringement claims, especially those dealing with something as subjective as design, can be difficult to prove. If you have any questions about trademark issues, please contact a trademark attorney - contact Wood, Atter & Wolf, P.A. for legal counsel.

Find out more about this story at RE/MAX Wins Major Trademark Victory.

Most business owners already know that protecting their trade names, products and ideas with patents and trademarks provides protection from unfair competition. A recent study shows that they can also lead to higher profits for the trademark and patent holders.

Patents and trademarks allow companies to confidently outsource production for cost savings, without fear of losing their intellectual property to an unscrupulous production partner. They also allow businesses to sell their products in wider domestic or international markets for a higher price, compared to other products without the same distinction. Having a trademark or patent can also help differentiate a product from others on the market to attract more buyers.

Licensing allows business owners to expand their operations by selling permission to use the company's trademarked or patented property to other companies; patents and trademarks provide the foundation for successful licensing agreements. Trademark and patent registration is a complex process that requires the assistance of an experienced attorney. If you have a trademark or patent idea you would like to register, please contact Wood, Atter & Wolf, P.A. for legal counsel.

Find out more about how patents and trademarks can help you earn more money at Better profits tied to getting patents and trademarks.

New York City announced in October 2009 that it would be taking steps to assert its legal right to the name "Tavern on the Green." The name belongs to a world-famous restaurant, situated in New York City's Central Park and was reportedly appraised at $19 million. The license to run the restaurant is granted by the City of New York.

After the restaurant's concessionaire, the LeRoy family, declared bankruptcy earlier this year, the city went about looking for a new restaurateur to take over the license. At the time, the request for proposal stated there was no authority to pass along the name Tavern on the Green" along with the license. The city then decided to challenge the LeRoy family's claim to the trademark in bankruptcy court.

The restaurant was originally named by Robert Moses, the parks commissioner, in 1934. Warner LeRoy trademarked the name in 1973, without challenge by the city. The LeRoys claim that they have proof of the legality of the original trademark, as well as proof that they have spent money to defend the trademark against other restaurants.

In response, the city decided to register the name "Tavern in the Park" as a backup name for the famous restaurant. However, in December, an examining attorney for the Patent and Trademark office issued an opinion that the name was essentially too generic to be considered a trademark. Owners of the "Tavern on the Green" trademark also charged that the proposed name was confusingly similar to their mark. This dispute highlights the value of a good trademark, as a business asset in selling a business and the need to register and maintain that trademark by defending it from use by other businesses.

Find out more about this story at A $19 Million Question.

Continue reading "New York, NY - Questions about who owns the $19 million name "Tavern on the Green"" »

Logorama, which recently won an Academy Award for Best Animated Short Film, tells a story using between 2,500 and 3,000 logos and trademarks.  It appears that the creators did not get authorization to use the marks for the project. So far, no explicit objections have been made.  The video is currently blocked from at least one website due to a copyright claim by Autour de Minuit, the production company behind Logorama.

Even if brand owners do object, Logorama's creators could have protection under the fair use doctrine.

One purpose of a trademark is to enable consumers to identify the origin of products or services, thereby enabling better buying decisions. Infringement occurs when party B uses party A's registered trademark in a way that causes a likelihood of confusion. In this manner, a customer might mistakenly purchase party B's product, believing party A manufactured it.

Fair use is a defense to trademark infringement where the important question is whether a likelihood of confusion exists. Courts in different jurisdictions analyze the doctrine differently. Some courts, to varying degrees, borrow concepts from copyright law and consider whether the use of an identical or similar mark for parody and/or satire purposes creates a likelihood of confusion. Parody is use of a mark to comment on the original brand owner whereas satire is use of a mark to comment on an unrelated subject. As with copyright issues, some trademark cases distinguish parodies from satires and have held that fair use applies to the former but not the latter. Other jurisdictions stress the likelihood of confusion test regardless of "whether the butt of the joke is society at large, or the trademark owner in particular."

Whether Logorama's use of the marks is a parody or satire is debatable. On one hand, use of the various logos appears to critique society's reliance on name brands and manufactures' reliance on product placement, which  would constitute a satire. One the other hand, some use of the marks is directed at the original brand, likely constituting a parody. According to the jurisdictions drawing a distinction between parody and satire, fair use would more likely apply where the film targets the original brand. Referring back to the basic test of infringement, however, whether the use of any mark is a parody or satire may not be as important when viewed through the prism of likelihood of confusion. The fact that Logorama features so many marks should not contribute to a likelihood of confusion because no single brand stands out to improperly suggest sponsorship or an indication of origin.

Continue reading "Logorama: Trademark Fair Use" »

The US Department of Justice has announced the formation of a task force that will focus on fighting US and international crimes committed in relation to US intellectual property. The task force will work closely with state, local and international law enforcement agencies. It will also closely scrutinize current intellectual property enforcement activities as well as look at the the links between international intellectual property crime and organized crime.

The recently created Office of the Intellectual Property Enforcement Coordinator, which reports to the President of the United States, will look to the task force to offer recommendations on fulfilling its mission of creating a strategic plan for handling the evolving landscape of intellectual property protection.

Intellectual property crimes include the creation and selling of pirated and counterfeited digital media, luxury apparel, auto and airplane parts and even medication and infant formula; the market for these good is said to exceed $200 billion in the US alone and poses a significant public safety risk.

In the past, the large number of agencies involved in monitoring and enforcing intellectual property laws have made decisive action difficult. It is hoped that this new task force will help streamline and concentrate these efforts. View the full article about the new task force and its responsibilities by visiting Can US get tough on intellectual property crime?

If you have a dispute with respect to intellectual property, please contact Wood, Atter & Wolf, P.A. for patent, trademark and copyright legal counsel.

Native American activists have long tried to contest the federal trademark status awarded to the Washington Redskins NFL football team. The history of the case is this: in 1999 the Trademark Trial and Appeal Board ruled that the name “Redskins” which is considered a derogatory term for Native Americans, was too offensive to trademark. Subsequent lower court and federal court rulings overturned that decision, granting the trademark. The Supreme Court decision not to hear the case effectively upholds the decision of the federal court allowing the trademark.

The law governing trademarks, known as the Lanham Act, does not allow trademarks that “may disparage … persons, living or dead … or bring them into contempt, or disrepute” to be registered. The decisions in this case, however, were based on the fact that the plaintiffs did not file their suit within the time allowed. The new case would have asked the Supreme Court to allow disparaging trademarks to be revoked without a time limit.

The Washington Redskins football team has always held that the term is not meant as an offense. However, the National Congress of American Indians (NCAI) has described the name as “patently offensive, disparaging, and demeaning and perpetrates a centuries-old stereotype,” adding that the term comes from a time when Native American body parts, especially scalps, were bought and sold as novelty items by European settlers.

Several sports teams across the US have dropped names or mascots that might be considered derogatory by Native Americans. Florida State University, along with several other universities and a few professional teams like the Atlanta Braves and Cleveland Indian baseball teams, have refused to change their team names to drop references to Native Americans. You can read more about this case at Supreme Court Fumbles Native American Mascot Challenge.

If you have a question about a trademark issue for your business, please contact Wood, Atter & Wolf, P.A. for legal counsel.

The US Patent and Trademark Office recently awarded Man & Machine with rights to the name “Mighty Mouse” to refer to the company’s “cursor control devices.”

Man & Machine won the rights despite the fact that CBS had actually filed for the trademark six months earlier. During this same time period, Apple was also using the name for its own computer mice. In a bold move, Man & Machine actually sued Apple and CBS for trademark infringement the same day that they filed the application with the US Patent and Trademark Office. CBS and Man & Machine settled the dispute out of court. As part of the settlement, CBS abandoned its registration, allowing the Man & Machine registration to be approved without further complications.

This story shows how important it is to protect your company’s trade names, and to do so as soon as soon as possible in the development process. Changing the name of a product after you have already spent considerable time and money on developing and marketing it is an unnecessary setback that can be avoided with a proactive approach to registering trademarks.

If you have a business legal matter, please contact Wood, Atter & Wolf, P.A. for expert legal counsel.

Find out more about this story at Mighty Mouse trademark awarded to Man & Machine, Mister Trouble can stop hanging around now.

Coach, a luxury brand handbag maker, has sued Target Corp., America’s number two retailer, for selling a knockoff purse that appeared to be an exact copy of a Coach handbag design. The bag in question displayed the signature “C” logo and a copied version of Coach’s distinct tag. Target claims to believe that the handbag was a genuine Coach product. Coach is suing Target for trademark infringement.

Trademark infringement is the use of another party’s trademark without authorization or license. Infringement can include use of a mark that is either identical or confusingly similar to an existing trademark. In a case where the trademark is not copied exactly, the court will determine if there is a likelihood of confusion among consumers, leading them to believe that the item was produced by the rightful trademark holder.

If you believe that your trademark may have been infringed, please contact Wood, Atter & Wolf, P.A. for legal counsel.

Find out more about this story at Coach sues Target for $1M.

Sun-Maid is updating their Sun-Maid girl's new look, and it is sparking controversy. The iconic symbol has been transformed from a girl in a loose-fitting smock to a modern young woman in tight-fitting clothes. The new symbol has been described by some as "Barbie Doll in Amish attire." The update follows on the heels of other well-known symbol modernization of such iconic figures as Betty Crocker, Aunt Jemima and Mrs. Butterworth.

The original drawing of the Sun-Maid girl was made in 1915, and was inspired by Lorrraine Collett Peterson, a young California girl who posed for the watercolor that is the basis of the symbol. Lorraine's look has been updated slightly over the years, but the basis of the image has always been the original watercolor – until now. The new computer animated Sun-Maid girl is a real departure from the original. Comments from conservatives to feminists are less than positive, and mostly focus on the woman's adult shape and snug top.

According to a company spokesman, the redesign was done to bring the company's image into the twenty first century as well as to help educate modern consumers about healthy food choices. It is rumored that the Sun-Maid girl will be featured in upcoming advertising doing the things a modern woman would do, such as going to the gym and shopping. See the old and new logos and find out more about the new Sun-Maid girl at 'Sun-Maid girl' makeover sparks controversy.

Companies spend a lot of money to update logos in order to freshen up their brand image and appeal to modern customers. But they do need to be careful; the image they have worked so hard to establish over the years can be damaged by a makeover that rubs consumers the wrong way. If you have a business trademark issue, please contact Wood, Atter & Wolf, P.A. for legal counsel.

When a company wants to introduce a new product, they need to be careful that they are not infringing on someone else's existing patent or trademark. The following are four examples of out of the ordinary patents and trademarks that may trip up a new product introduction.

Apple Computers vs. McIntosh

When Apple started developing the Macintosh, they deliberately spelled the name wrong in order to sidestep any trademark infringement issues with McIntosh, a high-end audio equipment manufacturer. McIntosh objected, and Apple ended up paying McIntosh an undisclosed licensing fee to be able to use the name in perpetuity.

Amazon one-click

Amazon patented its one-click web checkout system in 1999. Since then it has licensed use of the technology to other companies – but not to rival Barnes and Noble, which they sued for using a similar feature on their website. Long held up as an example of a patent that should never have been awarded, much of the patent was turned over in 2007, but Amazon still protects what is left of it.

Color trademarks

If you want to make pink insulation, you may get a cease and desist letter from Owens Corning. The same holds true if you want to start a wireless phone company; it would be best to stay away from the T-mobile signature magenta. Yes, it is possible to trademark a color as it relates to a specific product or service.

Verizon Droid

When Verizon wanted to name its new phone Droid, they had to ask permission from Lucasfilm, which patented the term in 1977 – the year Star Wars came out. Verizon currently uses the name under license.

You can read about several more surprising patents at They Own WHAT? Nine Tech Patent and Trademark Oddities.

If you have an original product that you would like to patent, or if you need to make sure you are not infringing on someone else's patent or trademark, please contact Wood, Atter & Wolf, P.A. for legal counsel.

Recently, The North Face Apparel Corp. initiated a trademark infringement claim against The South Butt, LLC. The North Face is an international clothing and outdoor equipment company. The South Butt is based in Missouri and also markets a number of T-shirts and a jacket displaying the logo, which resembles that of The North Face because both marks use a similar font and display a similar "rainbow graphic." However, the graphic in the South Butt mark is rotated 180 degrees to appear upside down and is positioned to the left of the name instead of the right, as it is with The North Face. South Face has also adopted the slogan "Never stop relaxing," which may be found similar to The North Face's slogan, "Never stop exploring."

The company's founder is a student at the University of Missouri and is said to have created South Butt as a parody of "all the people who mindlessly wear North Face gear because everyone else they know wears it." South Butt clothing is sold exclusively at a local pharmacy in Missouri.

In its Complaint, The North Face alleged that the South Butt mark is confusingly similar to its own mark and that the company has taken advantage of The North Face's reputation and consumer good-will in selling merchandise with the similar mark. South Butt maintains its products are not affiliated with The North Face.

To succeed in a claim of trademark infringement, The North Face will have to show the South Butt mark confused consumers about the source of the products' origin. So far the case does not look good for South Face because a Federal District Judge stated he "did not find it implausible that the marks cannot cause a likelihood of confusion," and denied the defendant's motion to dismiss.

What's in a brand? This chart claims Pepsi has changed its logo its multiple times over the past decades. However, both Pepsi and its competitor Coca-Cola have changed their logos over time. With that said, is a consistent, "timeless" logo stronger? Or is it better to be dynamic and change with the times?

On one hand, rebranding benefits a product or company by increasing its presence in the market. However, a changing logo gives off the impression that the company lacks confidence. "The first choice was wrong, let's try something else." Further, rebranding by a large, widely recognized corporation may open the door to criticism and parody.

In some cases, an altered image can even evoke consumer outrage. For example. Tropicana tried out a new look for its orange juice containers. The new image was sleek and omitted the familiar orange punctured by a straw. Shortly after Tropicana revealed the new packaging and logo, they received overwhelming negative feedback calling the new look ugly and describing it as looking like a "generic bargain brand."

Choosing a trademark or logo is important. It is crucial to develop a mark that is truly representative of the product or service. It is equally important to develop a logo that will transverse through time and will be easily recognized throughout the market

That's right, removing a UPC can amount to trademark infringement in some instances. Such was the case between retailer CVS and luxury fragrance company, Zino Davidoff. Davidoff packages and distributes luxury products like the Cool Water fragrance, which is preferably placed in similar high-end luxury retail outlets.

In order to maintain high quality and prevent counterfeiting, Davidoff uses a unique UPC with its products. The barcodes contain information such as the ingredients of the product, where it was made, and information about the product's line of distribution. This way, Davidoff is able to easily determine where all its products are in the event of a merchandise recall due to defects.

Davidoff discovered that CVS was selling its merchandise with the barcodes removed and brought a lawsuit for trademark infringement. The matter ended up in the United States Court of Appeal, which ruled in favor of Davidoff. The Court did not accept CVS's argument, that the goods being sold were genuine products, but rather held that removing Davidoff's unique barcodes would "subvert [a] quality control measure," reducing the value of the company's trademark as well as altering the distinctive packaging.

What this case means is that retailers should think twice before altering the appearance of a vendor's merchandise. Additionally, manufacturers now have greater trademark protection. For more information about how a trademark could protect your business, product, or service, get in touch with a trademark attorney to arrange a consultation.

Earlier this month, Walter Frederick Morrison, the inventor of the modern-day Frisbee passed away at the age of 90. The Frisbee has had an interesting history and did not always consist of the same sleek, plastic, far flying device as it does today. Morrison's earliest versions of the Frisbee consisted of a popcorn lid and later a cake pan tossed back and forth between friends in 1937.

After learning about aeronautics as a fighter pilot in World War II and then becoming a carpenter, Morrison took a more aerodynamic route and designed the plastic molded Pluto Platter. The Pluto Platter flew further and more accurately than previous models due to its lighter construction and aerodynamic design. Wham-O purchased the production and manufacturing rights to Morrison's Pluto Platter in 1957, thereafter renaming it Frisbee.

The company's owner barrowed that name from college students who had been tossing empty Frisbie Pie Co. pie tins in the same manner as a Pluto Platter. The name Frisbee was trademarked with the alternate spelling to avoid trademark infringement lawsuits , and the device was also patented. Finally, Wham-O began manufacturing and marketing Frisbees, which were extremely popular due to the national fascination with flying saucers and UFOs. Morrison's story is a great example of how one person's idea can emerge into one of the world's most popular toys. Today, people all across the world enjoy the flying disc, no matter whether it is through a tossing it back and forth or through a game of Ultimate Frisbee or Frisbee Golf.

In the wake of the New Orleans Saints' recent Super Bowl victory, a new battle has begun. This intellectual property contest will take place in the courtroom instead of on the football field, however, and involves two athletic apparel producers and the phrase "Finish Strong."

Finish Strong, LLC, claims that Reebok International Ltd. is infringing on its trademark by illegally using the phrase in a line of T-shirts (pictured here) that promote the Super Bowl victors and proclaim, "We Finish Strong! We Are Saints." Trademark infringement exists when one party has a registered trademark and another party uses a similar mark with products in such a way that consumers are confused as to the products' origin. Finish Strong, for example, may argue that Reebok's use of the phrase on T-shirts may lead customers to believe the shirts are distributed by Finish Strong instead of Reebok. A suit filed in the United States District Court for the Northern District of Illinois on February 25th demands Reebok to stop using the phrase on merchandise. The suit also requests all profits from shirt sales plus other damages.

Finish Strong registered the trademark with the United States Patent and Trademark Office in 1998 and markets various athletic products bearing the phrase.

During the 2009 football season, Saints' quarterback Drew Brees used the slogan to motivate teammates before games. Brees also sold T-shirts with the phrase for the Brees Dream Foundation, a charity supporting cancer research and providing for children in need. He is not a party to the lawsuit, however, because his use of the phrase is pursuant to a licensing agreement and therefore legal.

At this point, it is unclear how the conflict will turn out. Reebok has not legally responded to the claim, but has remarked that it did not know about the company and that the phrase is used only to "describe the Saints' style of play." Whether this would be a viable defense is up to the court, however, the standard for trademark infringement is the likelihood of confusion. Stay tuned for updates.

"Power to the People – Power Belongs to the People." The Rock Art Brewery in Morrisville, VT adopted that phrase in celebration of being able to keep the name of their 10th anniversary beer, the Vermonster, after settling a trademark dispute with a national beverage manufacturer. Earlier, the makers of Monster energy drink, Hansens Beverage Company, attempted to stop the small brewery from using that name. The Rock Art owner received a cease-and-desist letter demanding immediate abandonment of the term Vermonster. The letter explained that use of the word 'monster' would create confusion among consumers between the beer and the energy drink.

After receiving the notice, the brewery owner used the internet to broadcast what had happened. Public outcry ensued as he received support from the internet community. He also received support from stores in neighboring states as they pulled Monster Energy drinks and other Hansen Beverage Co. products from their shelves. Even a United States Senator observed anyone confusing energy drinks and beer should "lay off the energy drinks."

Though the precise details of the settlement are confidential, Hansen will allow Rock Art to continue marketing the Vermonster brew throughout the nation and Rock Art will not enter into the energy drink business.

The 13th Monopoly World Championship was held this week in Las Vegas Nevada. Out of the 41 international contestants, Bjorn Halvard Knappskog, a 19 year old from Norway, emerged victorious. He won $20,580.00, which is the amount of rainbow colored currency in a Monopoly board game.

Monopoly is one of the most distributed board games in U.S. history, with more than 200 million games sold throughout the world. For the few who are unfamiliar with Monopoly, it is a real estate trading game. The goal of the game is to become the wealthiest player by buying property and charging other players rent when they land on it.

There is some dispute over the origin of the game's concept. Some sources say it emerged from The Landlord's Game, which was invented in 1904. Hasbro, the owner, maintains that Charles Darrow invented it during the Great Depression. He was initially rejected by Parker Brothers, now a Hasbro subsidiary, when he approached them with game proposal. The company finally acquired the rights to Monopoly after Darrow began building game sets by hand and selling them. Consumer demand for the game was convincing.

Darrow patented the "game of barter" in 1935, which is currently assigned to Parker Brothers. The Monopoly brand also received trademark protection in 1935.

In 2008, the United States Congress established a new Office of Management and Budget administrative post: U.S. Intellectual Property Enforcement Coordinator. On September 23, President Obama delegated that position to Victoria Espinel, former Assistant USTR for Intellectual Property and Innovation.

Ms. Epinel's primary job will be to combat counterfeiting and bootlegging of software, music, films, and drugs. She'll have her work cut out for her in trying to encourage countries like China to crack down on piracy abroad and prevent such illicit materials from entering the U.S.

I applaud the decision to create a dedicated executive IP position in order to fight the rampant problem of copyright violations. Not enough is being done to make certain that artists rightfully receive proper recognition and compensation for their works.

The race for gold is not the only contest taking place in Vancouver during the 2010 Winter Olympics.  The International Olympic Committee (IOC) requested the Australian Team to stop displaying a boxing kangaroo flag, which they had hung across several balconies in the Olympic Village. The Australians refused. The IOC requested the removal because the flag was said to have violated the IOC's rules against commercialism in the games. The golden kangaroo wearing red boxing gloves is a trademark registered to the Australian Olympic Committee and is used in Australia to encourage sport and sportsmanship in school children.

Eventually, the matter was resolved amicably.  The IOC allowed the Australians to keep the unofficial mascot banner flying after a local Vancouver political leader offered to display the flag from a flagpole in the city.  Australian proponents argued that the boxing kangaroo flag has become an Olympic tradition with the team as it has been displayed at each Olympics beginning with the Sydney 2000 Summer Games.  Furthermore, although the image is a trademark, it should not be interpreted as violating the IOC's non-commercial display rules because it is not associated with a product or service for sale in Canada.  Afterall, it is not as if the team claimed and displayed the Nike Swoosh as their mascot.

The standard for proving fraud in trademark applications, which is grounds for invalidation, has been intensely debated this year. In my post in March 2009, the Trademark Trial and Appeal Board (TTAB) suggested that "inaccurate declarations of use" could possibly amount to fraud. Months later, the TTAB issued a ruling that such inaccuracies only made a "presumption of fraud", which an applicant could overcome by correcting any falsities on the application before a challenge arose. Thus applicants were provided an "option to cure" any inaccurate statements on their trademark applications. The above standards were unfavorable to trademark applicants due to the high risk of trademark cancellation due to invalidation. Under such rule, applicants and their attorneys were required to go above and beyond due diligence in determining the course of use for their potential trademarks.

As if in step with the increasing level of protection for trademark applicants, a recent decision from the United States Court of Appeals for the Federal Circuit provided an even narrower standard to proving fraud and canceling applications. Now the challenger has the burden of proving the applicant had "actual intent to deceive the United States Patent and Trademark Office." In approving this higher standard, the Court reversed the previous TTAB decision and remarked that the TTAB "erroneously lowered the burden of proof" required to invalidate an otherwise legal trademark application.

Despite this added protection, accuracy and honesty is still extremely important in trademark applications. If you are considering obtaining a trademark, first consult with an experienced trademark attorney.

A Florida boat manufacturer, Hell's Bay , obtained a settlement in its case (which included a trade dress claim) against Beavertail, a Minnesota based boat manufacturing company. Hell's Bay, located in Titusville, Florida, has many boat designs, including several shallow water skiffs. In Hell's Bay's case against Beavertail, Hell's Bay claimed that a number of Beavertail's skiff designs copied those of Hell's Bay designs for skiffs. Hell's Bay also claimed its shallow water skiffs were entitled to trade dress protection because of the uniqueness of the hull designs and the skiff's look.

Trade dress deals with the way providers of goods and services package or design their products. In evaluating whether "packaging" or design of products can receive trade dress protection, courts use the same criteria as they use in trademark claims, and trade dress may be entitled protection even though it is unregistered. Some of the criteria courts look at in determining whether to afford trademark or trade dress protection are whether there is a likelihood of confusion as to the source of the goods, whether the mark is functional, and whether the mark is inherently distinctive or has acquired a secondary meaning. If the packaging or design deserves trade dress protection courts can award injunctive relief along with monetary damages. In the Hell's Bay case, the exact settlement terms were not disclosed and no liability was found or admitted; however, as part of the settlement, Beavertail did discontinue manufacturing the questioned designs, destroy its molds for those hulls, and give Hell's Bay some monetary compensation.

If you are a business owner it is important to remember that product design and packaging, including the 'look and feel' of your business, may be entitled to trade dress protection as long as they meet the required standards. If you have questions about trade dress and trademarks, please let me know.

Several former Mail Boxes Etc. franchisees in Florida have been certified as a class, in their California lawsuit against UPS. The Superior Court for Los Angeles County certified the class-action lawsuit in July. The suit was brought by over a hundred former Mail Boxes Etc. franchisees. Known as the Platinum Shield Association, they have claimed that UPS, since acquiring Mail Boxes Etc., has destroyed what was once a growing, stable, and profitable franchise. The former Mail Boxes Etc. franchise owners claim that UPS coerced them into changing from their profitable Mail Boxes Etc. Centers to The UPS Store through a program called "Gold Shield." They also say UPS then tried to destroy the remaining Mail Boxes Etc. franchises that refused to change to The UPS Store by discontinuing national advertising and stopping all support for the Mail Box Etc. franchisees.

Another group of unhappy UPS franchisees is the Brown Shield Association, and they are also litigating against UPS, alleging that UPS has engaged in competition with its own franchisees by offering lower prices to customers who use direct-pickup instead of dropping of packages at local The UPS Stores. Both groups face long fights before their cases will ever see an end. The case led by the Platinum Shield Association started in 2003 and is just at the point of sending out notices to potential members of the class action.

What do you do if you own a franchise and the franchisor sells to another company? Are you obligated to accept changes in your Franchise Agreement? Disputes can be complicated, costly, and take a long time to resolve. If you are purchasing a franchise or you own one already these are issues you might want to find out about by talking to your franchisor and a franchise attorney.

In November 2008, Pepsi introduced its latest and greatest logo. It is blazing forward with its advertising blitz this year with the "Refresh Everything" campaign. The beverage company is pulling all the stops to improve its market share and overtake Coca-Cola.

When originally launched, many people commented that the new logo looked an awful lot like President Obama's campaign emblem. Talk about getting off on the wrong foot! Instead of attracting new people to the brand, the new symbol was already seen as a rip-off. I'd say the more troubling issue is that Pepsi had such a strong logo, that is easily recognized and identified around the world. Why look like an imposter? And why spend the time, money, and energy to re-educate the consuming public?

Not surprisingly, Pepsi owns Tropicana, whose recently introduced new logo was widely panned despite a $35 million dollar investment! Seems to me that a ton of money was spent in both instances for marginal aesthetic gain. Pepsi would do well to invest its resources more judiciously--it appears to be grasping at straws to catch up to Coke!

Do you think Pepsi's rebranding was worth it? Please post your comments or contact me to discuss!

Companies spend millions of dollars enlisting branding firms to revitalize logos they have deemed old and tired. Potential gains include rejuvenating your brand's image, building up new good will among consumers and redefining your place in the market. On the flip side, a perfectly good brand may be tarnished by a questionable makeover.

Major players like Pepsi, Walmart, and UPS all have put their logos under the knife in recent years. It's definitely a balancing act as these businesses have to take care to maintain enough of a connection between the old and new images while modernizing their respective logos to stay fresh.

Also, think of the consumer--with familiarity comes comfort. When updating a logo, will your followers continue to be loyal? How many will turn up their noses at the changes? And for those who never liked to brand anyway, overcoming their existing bias is a gamble.

Notable rebranding misses of late include Kraft, Tropicana and Xerox. A common flaw to all of these redesigns is that they risked the unique qualities of the original in the name of "progress." A company must consider the reaction of its existing customer base as well as that of the new one it wants to bring in!

In the next segment, I'll compare the old and new looks for Pepsi! Stay tuned…

Oprah Winfrey and Dr. Mehmet Oz are suing over 50 small beauty product and dietary supplement companies across the country, claiming that the businesses falsely professed that the TV personality and her recurring talk show health expert endorsed their merchandise.

Among Oprah's list of grievances are consumer fraud and unauthorized use of names, likenesses, and trademarks. Many of the defendant companies appear to be fly-by-night outfits, running credit card scams. The victims are unsuspecting buyers of their vitamins, anti-cellulite and anti-wrinkle creams, and tooth-whitening products. Oprah is incensed that her reputation was purportedly tied to these questionable organizations.

The clout Oprah has today is mind-boggling, but not surprising! People will run out and buy anything if it gets a thumbs-up from her. The same goes for any powerful or famous person. To think that these companies would misrepresent the facts just to capitalize on her sphere of influence is a testament to Oprah's power in the market. While we could argue that a little more caution from viewers in making purchases couldn't hurt, trademark laws exist to protect consumers from being confused as to who endorses which products.

Ensure that your name isn't associated with sketchy characters! Contact a trademark attorney for protection!

If you are thinking about registering a company trademark under an alternate domain name, think again. The American Automobile Association (AAA) recently sued James Van Johns, a Pennsylvania resident, for violating federal cybersquatting laws. According to the Anticybersquatting Consumer Protection Act, a trademark holder can sue anyone who registers or uses a domain name that may confuse consumers or mislead them into believing the website is endorsed by the mark holder.

Van Johns had registered the website AAA.net which appeared similar to AAA's website, AAA.com. This would have likely confused consumers trying to connect with AAA, especially since Van John's site featured advertisements for AAA's competitors.

Fortunately, the parties were able to settle and each side paid their own legal fees. As a result of the settlement, Van Johns had to release AAA.net to AAA without any payment. He is further prohibited from registering any other web addresses similar to AAA.

Louis Vuitton, the high-end fashion retailer, has been awarded $32.4 million dollars in its trademark and copyright infringement case against Akanoc Solutions, Inc., and Managed Solutions, Inc., a pair of website hosting companies. The case, Louis Vuitton Malletier v. Akanoc Solutions, Inc. et al., was held in the U.S. District Court for the Northern District of California and a jury rendered the verdict.

What's unique about this case is that the defendants did not commit any direct violations themselves, but hosted sites that sold Louis Vuitton knock-offs. Contributory trademark infringement is a legal theory wherein a defendant may be liable for assisting trademark infringement or having control over others who directly infringe.

In order to be held accountable for the acts of others, the defendant must know or should have known that another's conduct constitutes infringement and the defendant must give substantial assistance or encouragement to those that directly infringe. I think it's fair that secondary actors and entities that enable infringement are liable for either actively helping infringers or looking the other way!

Want to keep your trademark safe from any type of infringer? A trademark lawyer can preserve the strength of your brand!

An upcoming case, Ride the Ducks v. Bay Quackers, is set to highlight the importance of sound marks, an often overlooked, but key concept of trademark law. A Georgia tour company called Ride the Ducks is suing Bay Quackers, a San Francisco tour company, claiming that the latter distributes kazoos that produce a quacking sound that is identical to the one made by Ride the Ducks' Wacky Quacker noisemaker.

While this may seem somewhat ridiculous, a sound can establish a link in a listener's mind, creating a mental association with a particular business. To qualify for registration, a sound mark must be source identifying and must either be inherently distinctive or have acquired distinctiveness. Famous sound marks include NBC's chimes, the Pillsbury Doughboy's giggle, AOL's "You've got mail" alert, and MGM's lion's roar.

In addition, colors, 3D marks, graphics, scents, and other non-drawing formats also may be eligible for trademark registration. You work tirelessly to carefully sculpt your brand image and amass goodwill. It's critical to employ both common and unorthodox IP protection to uphold your company's reputation!

A trademark attorney can help you craft a personal IP game plan!

Businesses know it is important to protect their trademarks from infringement. If they do not protect their marks, they could lose their exclusive right to use the marks. Some businesses are more aggressive than others in protecting their marks. McDonald's aggressively protects their trademarks. They have filed several lawsuits over the years, attempting to protect the "Mc" term in restaurant and food product use. The key factors in trademark infringement cases are whether the use of a similar mark will cause consumer confusion as to the source of the goods or services or is deceptive in some way.

In the latest installment of the "Mc" lawsuits, a Singapore restaurant franchise has finally won a trademark infringement case brought against it by the international franchise giant McDonald's. The lawsuit started in 2001, when McDonald's sued Malaysian Chicken Curry, which advertises itself as McCurry, for trademark infringement for the use of the term "Mc". McDonald's claims exclusive right of the "Mc" term in restaurant and food product advertising. The Malaysian Chicken Curry restaurant started in 1999 and serves Malaysian style cuisine. The restaurant is named after one of its popular dishes, Malaysian Chicken Curry. McCurry lost the case at the trial level, but after appeals, the court ruled in favor of McCurry.

While McCurry must be happy with their result, this finding will have dramatic effects on the strength of McDonalds' "Mc" designation in Malaysia. Will there be a snowball effect if other countries follow in the High Court of Malaysia's footsteps? Do you think the American court system would have come to a conclusion different from its Malaysian counterpart? Do you think sometimes businesses go too far in trying to protect their trademarks? There are so many possibilities--let's discuss!

Franchisors and franchisees must protect the trademarks and service marks that identify their services or goods, but they also must be careful not to infringe upon other's trademarks or service marks. Litigation can be costly, and whether you win or lose, a lawsuit could potentially bankrupt your business.

One such example of a franchise having to litigate a case is Paris Hilton's lawsuit against Hallmark Cards. The dispute is over the use of a likeness of Paris Hilton's head and the slogan "THAT'S HOT." This phrase was the topic of a previous Celebrity Trademark spotlight I did, featuring the scrawny blonde drama queen's trademark application, which is still pending with the USPTO. Hallmark Cards used the likeness and slogan on a card sold in its franchise stores. Paris Hilton has trademarked the slogan she made popular in the television show, "The Simple Life". The case is has not been finally decided; however, Hallmark Cards recently lost its appeal for dismissal. The 9th Circuit Court of Appeals has remanded the case to the trial court so the disputed issues can be decided.

The whole purpose of trademarks and service marks is to give businesses something to uniquely identify their services or goods. Obviously, you want to use your franchise's trademarks and service marks as often as possible for branding purposes; however, when preparing advertising or marketing material for your franchise, it might be a good idea to consult with an attorney to make sure any likenesses or images used are not already protected.

Judge Sotomayor's career in the judicial system has spanned 30 years and she has ruled on both ends of the spectrum, issuing favorable judgements to both plaintiffs and defendants in IP matters.

In 1997, in Castle Rock Entertainment, Inc. v. Carol Publishing Group, 150 F.3d 132 (2d Cir. 1998), Judge Sotomayor held that a trivia book based on Seinfeld, called The Seinfeld Aptitude Test, violated various copyrights. She also found in favor of licensees of the rights to The Three Stooges in an action to protect their property.

However, in another major case, Tasini v. New York Times et al., 533 U.S. 483 (2001), Judge Sotomayor ruled against a number of freelance journalists claiming that major news outlets had improperly duplicated their work and displayed it on databases like LexisNexis without permission and in violation of copyright laws. Judge Sotomayor opined that these news organizations were in compliance with the Copyright Act of 1976. Ironically, the U.S. Supreme Court ultimately struck down her ruling!

Despite the variation in her decisions, I am glad that there will be a judge on the U.S. Supreme Court with some IP savvy to tackle what is sure to be a huge slate of cases involving new technology.

How do you feel about Judge Sotomayor's qualifications? How do you think her background will affect the Supreme Court's decisions? Please post your comments or contact me to discuss!

Judge Sonia Sotomayor was confirmed by the United States Senate on August 6 and will be sworn in as a member of the U.S. Supreme Court on August 8. Despite coming under fire from a variety of Republican opponents, Judge Sotomayor was voted in by a 68-31 tally.

Judge Sotomayor was a highly-decorated intellectual property attorney in private practice, and served as a partner in a Manhattan law firm prior to her tenure as a judge. She has relevant experience in cyberlaw and appears to be a quantum leap over Judge David Souter, the technologically-challenged Justice she is replacing.

Judge Sotomayor has impeccable credentials from her college years through her time on the bench. Her dedication and enthusiasm are striking: while doing trademark work for Louis Vuitton, she routinely took to the streets in a bulletproof vest and tracked down people peddling fake Louis Vuitton purses!

I admire Judge Sotomayor for her remarkable experiences and, being an intellectual property attorney myself, share her passion for clients! Up next, I'll go through some of her past history with IP cases.

KB Toys, longtime vendor of children's toys, regrettably has filed for bankruptcy and is currently liquidating its assets in order to satisfy its creditors. Among the items up for bid were KB Toys trademark, logos, and domain name as the retailer is shutting down all of its approximately 460 stores.

For a business that began in the 1920s, they have only been using the name, "KB Toys" since 1996, according to their trademark registration, and "Kay-Bee Toys" since 1997, according to another trademark registration.

Those registrations cite a handful of other prior registrations. A trademark is any word, name, symbol, device, or any combination thereof used to identify and distinguish goods. One may last forever, but can expire due to either non-use or loss of distinctiveness. Ownership can arise due to either public use or registration, but registration affords many more advantages when it comes to deterring infringement.

Trademarks are assets. As such, these assets may be transferred or sold by executing an assignment. A retail operator called CE Stores secured the rights to KB Toys' intellectual property for $2.1 million dollars and may capitalize on the good will that KB Toys built up since its inception in 1922.

It's a shame that KB Toys has been forced into a situation where it has to part with the good will of its own intellectual property, isn't it?

Twitter can't seem to catch a break when it comes to trademarks. The United States Patent and Trademark Office has preliminarily denied Twitter's bid to trademark the word "tweet." Twitter appears to have lost the race, not against time to prevent their potential trademark from becoming generic, but against three other companies that filed applications containing the word "tweet."

TweetMarks, Cotweet, and TweetPhoto all submitted trademark applications for their respective names that predate Twitter's filing. What's ironic is that these are all independent sites that were created to piggyback onto Twitter! The USPTO wrote that a trademark on "tweet" would likely cause confusion among consumers as to its source. The goal of a trademark is for the public to be able to unequivocally identify a brand.

Twitter has indicated that it even if the trademark is ultimately registered, it would allow liberal use of "tweet" unless it would be injurious to the company. Now it seems that Twitter will be unable to protect the term at all. No matter what the outcome, millions will still be tweeting, including me!

I can think of other grounds upon which "tweet" would be denied registration. Trademarks should describe a product or service. They cannot be generic nouns, like "milk," "car," or "scissor." I have heard the word used as a noun ("Post a tweet so I'll know what you are doing"). Similarly, trademarks cannot be used as verbs ("Her thumbs are sore from tweeting on her phone"). Thus, trademark registration should only be granted if "tweet" was used as an adjective, as in, "Your tweet micro-blog is always updated," or "Stop sending tweet messages at the dinner table."

I can help you navigate the subtle trademark registration rules. Let me know if you have a question about them.

Even the United States Patent and Trademark Office isn't immune to posthumous Michael Jackson mania. The USPTO has opened a new exhibit in conjunction with the National Inventors Hall of Fame and Museum to commemorate the late Gloved One's contributions to intellectual property.

Catch it while you can! The exhibit is slated to run from July 15 to September 7, has no entry fee, and all are welcome to visit. As I mentioned in an earlier post, Michael Jackson was very savvy when it came to IP and even had his own patent for gravity-defying shoes.

Whether you loved him or hated him, there is no denying the indelible imprint Michael Jackson left. This is exemplified by the many trademarks he left behind, including this one, for his Heal the World Foundation. With all the bizarre news reports swirling about both his life and death, it's nice to focus on some of the positive things he did!

Want to see the exhibit in person? It's located inside the USPTO headquarters at 600 Dulany Street, Alexandria, VA, 22314.

Have you noticed that some brand names include the name of a location to denote where the products originate, while others include a location that is completely unrelated?

You can use a geographical or regional name in your trademark as long as its meets two requirements: the mark cannot be geographically misdescriptive or deceptive. First the term cannot be geographically misdescriptive. This means the mark identifies a location other than the origin of the goods or services. For example, Durango chewing tobacco is completely unrelated to the city of Durango. The product is neither produced or distributed from there.

Second, the mark cannot be deceptive. A mark is deceptive when consumers reasonably believe the goods or services originate from the described area due to that area's reputation. Back to the Durango example, that brand is both misdescriptive and deceptive because the city of Durango does in fact produce similar tobacco products. Therefore, consumers would reasonably infer that the Durango brand also originates from the named city.

On the other hand, misdescriptive terms are permitted if they are not deceptive, meaning consumers will not likely believe goods or services come from that area. For example, the Yukon is a trademark for an SUV. Although the Yukon is also the name of a location, it is not known for manufacturing SUVS. Therefore, consumers are not deceived into making the false connection between the product and the location.

Some of the reparations sought by the plaintiffs in a class-action suit against YouTube, the ubiquitous video sharing website, have been thrown out by a U.S. federal judge. Judge Louis Stanton, of the Southern District of New York, denied a number of plaintiffs' claims for statutory damages.

YouTube is a subsidiary of Google and receives 1.2 billion video views per day. Its level of exposure has soared as amateurs and professionals alike post over 65,000 new videos every day. The clips uploaded run the gamut from home videos to pro sports highlights to news updates.

The judge ruled that statutory damages for all domestic and foreign works that are not timely registered are barred by the Digital Millennium Copyright Act of 1998. He further declared that some of the videos in question were foreign works not governed by U.S. copyright law and therefore punitive damages would not be available for them. This decision appears to have no bearing on several of the other plaintiffs as their works fall under the Copyright Act.

YouTube is by no means out of the woods yet, as another, far more ominous lawsuit has been filed against Google by Viacom, to the tune of $1 billion dollars. At this stage, Google's main defense seems to be that as long as it immediately takes down illegal videos once it becomes aware of a violation, it is in compliance with the Copyright Act.

I, for one, really enjoy YouTube videos and hope that it can find a way to operate within the bounds of copyright law. It would be a shame for such an innovative site to be shut down, so hopefully some sort of licensing agreement or other permission can be secured.

What're your feelings on YouTube? Please post your comments or contact me to discuss!

A federal jury in Minnesota has awarded the Recording Industry Association of America $1.92 million dollars in its copyright infringement case against Jammie Thomas-Rasset, a 32 year-old woman from Brainerd, MN, for allegedly offering 24 songs for download on the Kazaa file-sharing platform.

Approximately 35,000 people have been threatened with legal action by the recording industry for illegal downloading, but Rasset's case was the first and only one of its kind to reach trial proceedings. For copyright violations, juries may enter verdicts of up to $150,000 per song pursuant to federal law.

Online music piracy has exploded since the advent of peer-to-peer networking and was popularized on the heels of software such as Napster. According to a 2007 study by the Institute for Policy Innovation, music piracy costs American workers $2.7 billion dollars annually, and 71,060 jobs are lost each year. Piracy divests artists of their rights to their own intellectual property and circumvents the traditional financial compensation structure. Currently, there are myriad channels available for legally acquiring music including iTunes, Zune, and Amazon.

Piracy remains a rampant problem, but the helter-skelter pursuit of individual offenders is not the answer. The recording industry should focus its collective energy on ensuring that P2P networking sites themselves are implementing adequate precautionary measures to deter copyright infringement. Such a strategy would effect a more equitable distribution of liability and prevent individuals from shouldering a disproportionate share.

The estate of late pop star Michael Jackson filed suit recently against two California-based organizations that it claims have infringed on its "King of Pop" and "Thriller" trademarks while pretending to be a charitable organization endorsed by Jackson.

This is the first trademark infringement suit filed by the estate since Jackson's death in June of 2009. The Heal the World Foundation and an affiliated corporation called United Fleet were named in the suit, which states that the defendants have registered 6 trademarks and applied for 41 more that could be considered "identical or confusingly similar" to the Michael Jackson estate's trademarks. The suit seeks to both to prevent the defendants from using the trademarks and also asks for the destruction of any infringing products.

Trademarks were developed as a means of protecting the public by making it easy for them to identify the source of a given good. Trademark holders need to be vigilant to prevent their marks from being infringed upon by parties with no rights to the mark. This not only protects their financial interests but helps them maintain their good name with the public.

If you have an unresolved business legal matter, please contact a trademark attorney our firm for expert legal counsel.

Find out more about this story at Michael Jackson Estate Alleges Violations of Trademarks, Rights of Publicity.

True story: I loved Twitter. Then I hated Twitter. And now I use it only to diversify my online social media portfolio. I mean, the micro-blogging site has even spawned new lingo in the English language! As I just used the term, an update posted on Twitter is referred to as a "tweet."

Consequently, Twitter has submitted a trademark application to the U.S. Patent and Trademark Office for the word "tweet." This process likely will turn into a race against the clock as "tweet" may become genericized before Twitter can fully establish its rights in the term.

A genericized trademark refers to one that has become so prevalent that it comprises the definition for a general class of product or service. Such a trademark no longer carries the specific connotation intended by the applicant but has developed into the generic description itself. Notable examples of genericized trademarks include "cellophane." Companies like Xerox take painstaking efforts to educate the public not to use the word as a verb ("Xerox this memo,") but rather, as an adjective ("Make a Xerox photocopy.")

What this means is that Twitter must actively take measures to inhibit broad usage of "tweet" or else it may effectively forfeit some of its rights in the word. One option is to formally notify users of proper trademark use. I would love to be part of the ad campaign that promotes phrases like, "Send me a tweet micro-blog." It is critical for trademark applicants to maintain the fine balance of popularizing their brands while concurrently preventing genericide so that they may retain their full intellectual property rights in their trademarks.

Are these rules nitpicky? Sure they are! But they all serve a purpose. Want to find out more? Send me a tweet!

Jay Leno may be the predictable, humorless, lisping shadow of the much more talented, suave, and hilarious Conan O'Brien, but that's not the only thing our mega-chinned lackey was lacking. For five years, thejaylenoshow.com domain name did not belong to the veteran comedian and former Tonight Show host. Instead, it was occupied by one Guadalupe Zambrano in order to drum up interest in his real estate page. Fortunately, Jay Leno now has rightful possession of the web address after the World Intellectual Property Organization recently mandated that it be returned to him.

Cybersquatting refers to bad faith registration of a domain name so as to profit from someone else's trademark. To add insult to injury, cybersquatters often attempt to extort money from the trademark holders by offering to sell the addresses back to them. The U.S. Antisquatting Consumer Protection Act was enacted to deter this type of exploitation. Misleading users in an effort to draw them to a particular site is banned by the Act.

The WIPO held that following a 30-year career, Leno had procured common law trademark rights to his name, and gave Zambrano a 10-day window to surrender the web address to Leno. A domain name represents one of the keys to widespread recognition, builds website traffic, and helps to create a natural association between a site and a person or entity.

I'm glad that the WIPO issued a decisive ruling and empowered trademark holders. People who have worked for years to build goodwill in their names deserve protection. Opportunistic cybersquatters should not be rewarded for their deceptive tactics! However, I don't know why this is the only registered trademark with Jay Leno's name. If you know, would you please pass it along to me?

 The Associated Press has reached an agreement with All Headline News, to drop its intellectual property lawsuit alleging that AHN essentially stole AP stories and tried to pass them off as its own. The complaint included misappropriation of news reports as well as copyright and trademark infringement.

The suit was filed in January 2008 in the U.S. District Court for the Southern District of New York and the AP relied heavily on the theory of "hot news." This theory was originally set forth in International News Service v. Associated Press, 248 U.S. 215 (1918), wherein the Supreme Court held that, as far as ownership rights, breaking news may be treated like quasi-property. U.S. District Court Judge P. Kevin Castel ruled that "hot news" could serve as a basis for a misappropriation claim in the instant case, because money, time, and resources were expended to gather this information. This decision was somewhat surprising as most view "hot news" to have limited applicability.

The AP accused AHN of actively copying its news information without a license and rewriting it to appear as AHN's original work. The suit was ultimately resolved in June 2009 and as part of the deal, AHN conceded that it had used AP intellectual property without permission in several instances.

If someone had pilfered my work, I would find out whether they intended on giving me credit for my work, or whether they intended to compensate me for what was rightfully mine! It is unsettling when people try to take credit for someone else's efforts, because it doesn't offer any motivation for creative, hard-working individuals to keep contributing to the public sphere.

Want to insulate yourself from intellectual property theft? Contact an intellectual property attorney to learn how to guard your important business content!

We all know Apple, the trendy electronics and software brainchild responsible for mesmerizing us with iPhones and iPods. The technology giant hypnotizes us, and we truly believe that without their fresh, avant-garde products, we are not sexy or cool. (*Ahem* Despite their marketing prowess, I still believe I can be sexy and cool as a PC girl.)

What most don't know is how unequivocally silent Apple has been when it comes to disclosing information about its research and development. Despite online advances such as Facebook, Twitter, and other sources for disclosure, the company remains tightlipped with respect to its engineering.

Strict controls are imposed in the name of security to prevent employees from releasing any valuable information and harsh sanctions are in place for those who do. Apple is virtually impervious to leaks and even goes so far as to keep its own employees in the dark; many themselves are shocked when new products, such as the latest iPhone 3GS, are unveiled. The company is also famous for its product plan ruses designed to mislead both outsiders and also its own employees as to the state of certain Apple technology.

Even seemly innocuous information, such as the health of CEO Steve Jobs following a secret liver transplant, is kept under lock and key. Such unwavering devotion to discretion is a calculated business model and is indicative of executives that fully appreciate the high value of intellectual property. However, this secrecy can breed suspicion and give birth to consipiracy theories among consumers. Trade secrets are critical for any business and comprise the essence of brand image and identification, but today's sophisticated public demand the truth and trust in the products they support.

What measures should your business take to protect its trade secrets? An intellectual property attorney can show you how to preserve your sensitive information, and balance a positive brand name image.

Many known brands incorporate punctuation, such an asterisk (E*Trade) or an exclamation point (Yahoo!), into their trademarks. But does this translate into a stronger mark? More importantly, will punctuation make your trademark stronger?

In general, punctuation will not increase your trademark's strength unless it alters the actual meaning of the words or creates more consumer identification with the mark. In other words, punctuation tends to strengthen trademarks when it causes consumers to associate the mark with a particular good or service. For example, E*Trade and Yahoo! are known partially for their punctuation.

If a mark consists of terms that are generic or merely descriptive of goods or services however, adding punctuation will not increase its strength or make it more capable of being registered as a trademark. This is because changing the appearance of the mark does not change its meaning in the eyes of consumers. For example, the Trademark Trial and Appeal Board held that the mark "3-O's", used in connection with car wheel rims, to be merely descriptive and denied trademark registration. The TTAB noted the term thirty is commonly used to describe the diameter of wheel rims. Despite the unique configuration of the hyphenated 3 and O, there is no difference between the mark and the descriptive term because consumers understand the two as synonyms.

Are you considering registering a trademark? Be sure to consult with an intellectual property attorney to assess the strength of your mark and possible methods for improvement.

Like most other modern business owners, you likely use keyword adverting through internet search engines. Most advertisers use generic terms such as 'massage' or 'furniture' as keywords. However, using the registered trademark of another as a keyword for your product or service may constitute infringement. So if you plan on using a third party trademark in this manner, proceed with caution and observe the tips below.

In case you are unfamiliar with the terminology, keyword advertising involves the advertiser using the services of an internet search engine, such as Yahoo! or Google to attract customers. The advertiser will purchase from the online search service certain terms or keywords that correspond to its products or service. When a potential customer enters the keyword into the search engine's website, they are directed to the advertiser website.

If your advertising efforts result in a likelihood of consumer confusion, you could be liable for trademark infringement. The best practice is to refrain from using another company's name as a keyword. Instead, employ generic terms that refer to your business. If you do use another company's exact name or trademark, avoid using the term in the description of your website. Alternately, make it clear to consumers that another party owns the mark and that you are only using it for advertising or comparison purposes.

When applying for trademark registration with a use-based application, it is necessary to provide information regarding use of the mark in commerce. While the lay definition of 'commerce' is simply business transactions, the legal definition provides specific requirements.

In Federal Trademark terms, commerce refers to that which is regulated by the U.S. Congress. This includes interstate commerce, which is any transaction between states. For example, using the mark in the ordinary course of trade across state lines or out of the country is satisfactory. Other forms of interstate commerce include advertising over the internet because it involves the transfer of information through communication networks that cross state lines and is available to a national audience. In addition, advertising through television qualifies as use in commerce even if produced and broadcasted within one state. This is because television is federally regulated.

Proof of use in commerce is accomplished with a sworn statement declaring how the trademark is used as well as the date of its first use. For more information regarding use in commerce or trademark applications in general, contact a qualified trademark attorney.

Popular social networking website Facebook implemented a new policy effective as of June 13, 2009 enabling users to register URLs for their usernames. What this means is that a Facebook user may register, for instance, www.facebook.com/pepsi as the address for his or her profile. The registry process is a first-to-register system awarding a specific username to whomever requests it the earliest.

Users with no connection to, or legal permission from, registered trademark owners may seek to register existing trademarks on Facebook and preempt the registered trademark owners from obtaining their rightful usernames. An association of your trademark with an unrelated profile, especially on a platform as prevalent as Facebook, unfortunately can have detrimental consequences for your product, service, and/or brand image.

My firm has used its own trademark on its Facebook page. It is "www.facebook.com/WoodAtterWolf." I would be incensed to know that other law firms might be using our trademark to direct traffic away from our profile, towards themselves, and I would certainly take measures to stop this infringing use.

Facebook has included some limited safeguards but the onus is on the registered trademark owners to actively ensure that misuse does not occur. If you have discovered infringement, Facebook provides a link to report unauthorized use of your trademark to them.

I am curious as to ICANN's (the Internet Corporation for Assigned Names and Numbers) role in this subject. ICANN has adopted several domain name dispute policies, including the UDRP (Uniform Domain Name Dispute Resolution Policy) for its accredited registrars. My guess is that many Facebook users who use another's trademark name for their profile will find themselves tangled up in a domain name dispute resolution procedure. This could be a messy situation, since there are many complicated and intricate rules even under the UDRP.

Unsure of the implications this development may have on your registered trademark? A trademark attorney can inform you of all the potential ramifications.

The recently deceased superstar was known by many names: the King of Pop, M.J., Jack-o, and the list goes on. We also recognize him either as a dark-skinned cherub-faced child or a pale, middle-aged man with over-processed facial features. Why don't we also know him as an Intellectual Property Goldmine? Love him or hate him, the supremely talented character was a genius when it came to securing various forms of intellectual property during his long and decorated career as an artist and performer. Michael Jackson brilliantly relied on copyrights, trademarks, and even patents to protect his work, and was an avid collector of others' proprietary works.

Jackson registered his name with the U.S. Patent and Trademark Office and held a multitude of trademarks ranging from performances to merchandise to fan clubs. Even for a personality as distinctive as Jackson, trademarks played an important role in further distinguishing him from others.

Not only did Jackson guard his own work and attributes, he even acquired copyrights to other music. He owned a 50 percent stake of Sony/ATV, a joint venture which controls publishing rights to two hundred and fifty one Beatles songs. Jackson famously outbid Paul McCartney to purchase the song-copyright catalog in 1985. Today, Sony/ATV is estimated to be worth upwards of $1 billion dollars.

Amazingly, Michael Jackson even patented his very own invention, a method and means for creating an anti-gravity illusion. The patent features a shoe interfitting with a peg protruding from a stage and enables a wearer to lean forward at a 45 degree angle to the floor without falling. It certainly appears to be unprecedented for a musician to have obtained a patent himself.

If you have a successful business, you may want to consider expanding through franchising. By franchising, you can grow larger and faster because the franchisees provide the funds for the growth, not you.

One important issue to consider before franchising is whether you have developed a strong trademark for your business. This is crucial because a strong trademark delivers a consistent message to consumers about your franchise's products and services. Franchisees will pay higher royalties for a franchise like Subway, which has a nationally reputed trademark, than they will for a franchise with little or no consumer recognition.

In the very least, be sure to register your trademark before franchising. Registration provides a presumption that your trademark is valid. This will facilitate any claim of infringement in the unfortunate event that one of your franchisees attempts to improperly license or use your trademark.

A strong trademark is a term or phrase that does not merely describe the goods or services. Rather, strong trademarks require imagination, thought, or perceptions to link the mark with the provider of the goods or services. Such marks may suggest the quality of the goods or services, or may not have anything at all to do with the goods or services. For example, Greyhound might imply that a bus line provides fast transportation. Apple, on the other hand, may have nothing to do with a line of computers.

In an earlier post, it was stated that an inaccurate declaration of use on a trademark application would amount to fraud unless corrected before registration. According to a recent Trademark Trial and Appeals Board case, however, such inaccurate statements of use can be cured even after trademark registration.

If the registrant corrects the false statement prior to any challenge to the registration, it creates a presumption against fraud. This means that if the challenging party produces no other evidence to support registration fraud, the registrant will be found not-guilty of fraud. This decision provides a positive direction for future trademark registrants, even though it is not binding and therefore not mandatory authority. The option to cure a statement that has the potential to incur liability of fraud is a benefit to the trademark owner. Many future owners are initially unsure about the exact intended use of their mark. As a result, a common practice is to overstate such declarations of use because an understatement will likely lead to insufficient trademark protection.

Don't take a chance with your trademark application! Have a competent trademark attorney prepare or review your application.

You may be familiar with Octomom, the Florida woman who recently gave birth to octuplets, but have you heard of Octomom the brand? Nadya Suleman, "affectionately" nicknamed "Octomom" by the tabloid media, recently applied to the USPTO to register the nickname as a trademark for use with clothing and disposable diapers. The application presents some interesting issues.

Commentators say the term "Octomom" is probably capable of functioning as a trademark as long as it is used to identify a brand or a source of goods or services. Others contend that trademark examiners will think otherwise. The application includes a section stating the "mark identifies Nadya Suleman, whose consent(s) to register is made of record." Such a statement may cause her mark to be perceived as identifying a person, rather than products or services.

In the same light, even if Suleman was to trademark her own name, surnames usually receive the same treatment as descriptive marks under trademark law. Therefore terms that include a name, "Jones Cosmetics" for example, are not protectable without a secondary meaning. Suleman has not established a secondary meaning for her name or nickname, because she has yet to use the term in commerce to identify clothing or disposable diapers. It is likely that the USPTO may require her to offer proof that the name has a reputation connected with the listed goods and not merely to her.

If you have considered obtaining a trademark for a brand that contains a name, contact an experienced trademark attorney for advice regarding secondary meaning requirements.

If you have registered a trademark for your business, you may have also thought about using your logo with promotional merchandise. Many trademark holders increase brand awareness by affixing their mark to hats, t-shirts, or mugs. There are different methods of ensuring that the logo retains its protected status while you use it in this manner.

The best way to protect the mark is through registering multiple classes on the trademark application. For example, in addition to stating the mark will be used in connection with your particular goods or services, also indicate the mark will be used with classes that include promotional items such as t-Shirts, Class 25, and coffee mugs, Class 21.

In the alternative, if money is a concern, you may enforce your mark without registering for additional classes. Common law trademark rights can prevent others from using your mark in a particular region, with specified goods or services, if you are already using the mark. Because federal registration can cost anywhere from $275 to $ 325 per class, common law enforcement may be a more economical choice for business promoters with limited start-up capital. However, while common law rights protects the mark, they do not provide the same presumption of validity and ownership as federal protection.

If you have any questions about obtaining a trademark, or about common law trademark rights, contact an experienced trademark attorney.

In response to businesses' growing frustration with the limited availability of simple internet domain names, the Internet Corporation for Assigned Names and Numbers (ICANN) plans to sell new top-level domain (TLD) names.

Domain names have historically ended with these popular TLDs: .com, .net, and .edu. Currently, there are only 21 TLDs. ICANN proposes to make "personalized" TLDs available to any business with $185,000. Allowing a business to have their name become the TLD opens up an enormous, and possibly endless, combination for domain names. For example, a famous fast food chain can end their domain name in ".mcdonalds." Subdomain names for the TLD can also be available to identify a particular business, like "bankofamerica.bank."

The availability of personalized TLDs will become a nightmare from the intellectual property enforcement standpoint. The increasing number of domain names means additional time and money to monitor misappropriation, and to protect customers from infringers.

In attempting a preemptive strike against infringers, ICANN proposes that it will review applicants who must argue why they should be awarded a particular TLD. Grounds for rejecting an applicant include: having a TLD that is confusingly similar to another, pursuing an immoral TLD like .xxx, or seeking a culturally or politically insensitive TLD.

While many people avoid hiring an attorney by filling out one-size-fits-all legal forms, if you plan to file your own trademark application, you may want to reconsider. Assistance from a trademark attorney is a wise investment.

Each and every field on the trademark application form has legal significance. That is, every entry defines legal rights, and an inappropriate entry may grant or deny an unintended legal benefit. Often, trademark owners commit several common errors while filing their own application, such as not selecting the proper filing basis or submitting an improper specimen. Another mistake is filling out the application by seeing how colleagues have completed theirs, or filling it out "the way I always do." Cookie-cutter answers are not always appropriate for a new trademark application.

Further, trademark owners may declare that they have used a trademark in commerce when, in fact, they have not. In trademark law, commerce refers to use across state lines. Because the Trademark Examiners do not always verify whether this requirement is met, your registered trademark may, in fact, be invalid and unenforceable.

Have a trademark attorney help you file your application. A good attorney should sit down with you to discuss your trademark, and the best way to maximize your legal rights by properly filing your application.

In order to register your trademark with the USPTO, you will need to submit a specimen. You may have heard this term or read about it, but what exactly does it mean? Also, what is the proper way to submit a specimen for a trademark application?

First of all, a specimen is "an actual example" of your mark being used in commerce or with the identified goods or services. This is more than a drawing of your mark.

For trademarks used with goods, a specimen is an example of the mark with the actual product or packaging. This includes tags or labels, containers, displays, or simply a photograph of the product bearing the mark. Invoices, brochures, and other documents are generally not acceptable forms of specimens for goods. However, such materials may be sufficient for service mark specimens.

For service marks, a specimen should show the mark used in conjunction with sale or advertising of the service. Examples include, signs, brochures, business cards, or stationary. The only requirement is that the document containing the mark also references the nature of the service. For example a business card bearing your mark along with the phrase automobile detailing service is sufficient.

In any event, your specimen should not include the actual product (or service for that matter) and must be either flat and no larger than 8 ½ by 11 inches if filing by paper application or contained in a digital JPEG image if filing electronically.

For questions regarding protecting your works of authorship, contact an intellectual property lawyer today.

Wood, Atter & Wolf recently hosted an exhibit at the 2009 Business & Career Expo, hosted by the Jacksonville Regional Chamber of Commerce at the Prime Osborn Convention Center. Admission was FREE to the public!

We showcased Trademark and Franchise law with Alpha Growth Strategies, who are experts in business development and franchising. Together, we featured legal and business consultations regarding trademark registration, licensing, and business/franchise evaluations.

The Expo featured 250 exhibits, and attracted over 1500 people. For more information on next year's event, contact us.

I recently gave a seminar entitled, "From Emblems to Empires," which teaches business owners how to use trademarks to produce, protect, and promote their business. In line with the business growth topics, Franchise Law professor and former restaurant franchise CEO, Jim Cataland talked about the characteristics of a franchisable concept. Bill Saccula, president of Alpha Growth Strategies, told us about businesses that are making the transition into becoming a franchise operation.

The event was held at Havana-Jax in Jacksonville, Florida. There was a networking mixer and heavy hors d'oeuvres were served. Admission was $15.00, but free for members of:

- JAAA (Jacksonville Asian American Alliance)

- IndoUS Chamber of Commerce of Northeast Florida

- Puerto Rico Chamber of Commerce of Northeast Florida

The event was a great success; hope you can make the next one.

There is a new way to stay informed of the news and notices from the United States Patent and Trademark Office by using an RSS feed. Now, instead of constantly checking the Official Gazette and Federal Register Announcements, you can receive real time updates on your email homepage.

RSS, or Rich Site Summary, is an information format that allows you to receive updates as they are published. You can use a favorite web mail homepage or an RSS feed reader to receive multiple lists of information by "subscribing" to each source. For example, with your Yahoo or Google homepage, you can get the latest headlines from the New York Times as well as recent blog entries from your favorite blog.

You can also subscribe to the Trademark Lawyer Blog by clicking the Subscribe icon on this page.

You may have seen advertisements wherein one brand name compares its product with that of its direct competitor. Such ads point out key differences between the products while displaying the competitor's trademark. You may have wondered how an advertiser can use another company's trademark without being liable for infringement. Also, if you own a business, you may have wondered if you are permitted to use your competitor's trademark in your advertisements.

Comparative advertising is widely used and even encouraged in the United States because it relays more information to consumers, enabling them to make better choices. If you plan to engage in comparative advertising, however, you should be careful to use the competitor's trademark in a way that is accurate and non-deceptive. You should also show that the products sold under the competitor's mark are different form yours. Also, do not give the impression that the competitor endorses or supports your product. Finally, in displaying the competitor's trademark in your advertisement, do not alter their logo or name in any way, and remember to include the proper designation such as "TM" or "®."

The most popular form of comparative advertising is when a product is "compared with other leading brands." Other brand names are not specifically identified, therefore avoiding allegations of improper use of the marks.

Another form of comparative advertising actually involves permissive use of the competitor's brand name. For example, if Cheer laundry detergent wanted to compare their product with Tide, Cheer may agree to pay Tide for permission to use the Tide logo.

It is possible to have a federal trademark, state trademark, or both. You can register a mark with the United States Patent and Trademark Office to obtain a federal trademark. By registering with the USPTO, you may protect your mark from infringement throughout the United States for a fee of $275.00 per class of goods or services. On the other hand, you can register your mark through The Florida Department of State, Division of Corporations to acquire a state trademark. In this manner, you may protect your mark from infringement in the State of Florida for a fee of only $87.50 per class of goods or services.

Why register in both? In the event of infringement, you can seek remedies under both the federal and state laws. I recommend filing both federal and state applications if your competition in your industry is fierce and lucrative. An example of this would be the technology industry, especially prior to the ".com" bubble bursting.

You must, however, qualify to file for a trademark registration. Be sure that your trademark qualifies for registration before paying the filing fees, since those are non-refundable.

Congratulations to Doctor Easy Medical Products! They recently registered trademarks for a name and logo with the Florida Department of State, Division of Corporations. They registered the same trademark and logo with the United States Patent and Trademark Office in November 2008.

The Elephant Ear Washer and logo depicting a blue elephant spouting water from its trunk identifies a product that Doctor Easy produces. The product is an ear-washing device, which incorporates a pump spray bottle and a plastic "elephant trunk" tube that is long and flexible.

Have you considered registering a trademark? Before seeking federal or state registration, you may want to determine the geographic area you'll use the mark and how much you are willing to pay for the application fee. For a federal registration, filing fees are $275 per class of goods/services. For a Florida registration, filing fees are $87.50. Filing fee costs differ from state to state.

For more information on state and federal trademarks, contact a trademark attorney.

If you are a trademark applicant or registrant with the United States Patent and Trademark Office, be weary if a company contacts you offering services such as trademark monitoring or document filing. Such companies may appear to be affiliated with the USPTO and often request fees for their services. They usually send official looking communications that include personalized information like your trademark file number or the name of your mark. Such items are public information. Do not be confused as these companies are not government entities. They merely attempt to profit from public naivety. In a recent news article, the USPTO has warned that it does not provide such trademark services and is not affiliated with any such companies that do.

Further, if you have employed an attorney to file your trademark application, then you should not receive any correspondence from the USPTO. Your attorney acts as your agent in dealing with trademark matters. Therefore, all USPTO communications should go to your counsel.

If a company or organization that appears to be affiliated with the USPTO has contacted you or requested fees, you may file a complaint with the Federal Trade Commission.

If you have any questions regarding the trademark filing process, or are unsure if you have received a communication from the USPTO, contact an experienced trademark attorney.

Small businesses rely on their proprietary assets, and many of these business depend on global transactions. However, less than one fifth of these businesses realize that their federal trademark and patent protections are limited to the United States. Are your IP assets protected abroad?

Without a doubt, profits fall prey to overseas counterfeiting and piracy. Counterfeiting is the creation of imitation products while piracy involves the unauthorized use or reproduction of software.

Stopfakes.gov is a great resource to help determine whether you should seek international protection. The website features different tool-kits to educate business owners about intellectual property (IP) protection in various foreign countries. Also included are instructions for filing a compliant against international infringers.

Strategy Targeting Organized Piracy (STOP) is part of a government effort with a two part objective. The first part is to strengthen IP enforcement throughout the world. The second part is to prevent IP crime throughout the world. STOP, along with other government organizations, provide protection to domestic businesses by regulating U.S. boarders and preventing the importation of counterfeited products, for example.

For more information on international trademarks or patents, contact a trademark attorney who understand the need to work closely with IP counsel abroad.

Worthington Millwork, based in Jacksonville, Florida, specializes in the design of architectural columns. Their website features a user-friendly approach to custom-designing columns; clients use the "3-Step Column Builder" to chose the base, column, and capital combination.

In addition to receiving trademark registration for their logo earlier this year, the company has recently been issued a Certificate of Trademark Registration from the U.S. Patent & Trademark Office for their name: Worthington. The mark consists of standard characters without a claim to any particular font, size, style, size, or color. This means that parties intending to use the name in any context--for example, over the radio, in different colors, or different fonts--will have to receive permission from Worthington Millwork.

Trademark registration includes many benefits such as the right to file a Complaint in federal court. By registering their name, Worthington has ensured that others will not be able to use it in the same class of goods or services. Improper use would lead to customer confusion and Worthington would have the power to take legal action. Thus trademark registration protects the company. Registration also protects the consumer by discouraging impostors from marketing inferior goods or services under the same name.

Are you interested in registering your company name or logo? Contact a trademark attorney for advice and help with the process.

"You got the right one baby!"

"The breakfast of champions"

"Reach out and touch someone"

These are slogans that identify Pepsico, Wheaties, and AT&T. Slogans and jingles can add enormous value to your business or brand by generating consumer good will and awareness. Not only will customers associate the slogan with your product or service, but the slogan may also evoke positive feelings. How many times have you had Mazda's "Zoom zoom zoom" song stuck in your head all day? A trademark identifies the source of origin of goods or services. However, trademark registration is not limited to names and logos. You can also register a slogan. In order to register a slogan as a trademark, the slogan must have acquired a distinctive character as a consequence of use and the slogan must associate, in the eyes of the public, between the goods or services and their origin. For more information about obtaining trademark registration for a slogan, contact a competent trademark attorney.

Clients from coast to coast often ask me: "Should I register my trademark with the U.S. Trademark Office or in with the state in which I do business?" My laconic answer is: YES!

It is possible to have a federal trademark, state trademark, or both. You can register a mark with the United States Patent and Trademark Office to obtain a federal trademark. By registering with the USPTO, you may protect your mark from infringement throughout the United States for a fee of $275.00 per class of goods/services.

On the other hand, you can register your mark with the state in which you do business. The Florida Department of State, Division of Corporations to acquire a state trademark. In this manner, you may protect your mark from infringement in the State of Florida for a fee of only $87.50 per class of goods/services.

Have you considered registering a trademark? Before seeking federal or state registration, you may want to determine the geographic area you'll use the mark and how much you are willing to pay for the application fee.

For more information on state and federal trademarks, contact a trademark attorney.

Before applying for a trademark, carefully consider the goods and services with which you plan to use your mark. It is better to be precise, otherwise you may lose your trademark protection.

During the application process and before the issuance of a registration number, a trademark applicant must declare whether the mark will be used in connection with all the goods or services listed in the application. Afterward, the trademark owner must periodically make similar declarations in order to renew the registration.

In the U.S., you can only register a mark for actual use. For example, you cannot declare that the mark is used in conjunction with all types of apparel when you only use the mark with accessories for women. Recent decisions from the Trademark Trial and Appeal Board (TTAB) suggest that inaccurate declarations of use may be considered fraudulent and invalidate the trademark in its entirety. Although fraud normally requires a willingness or knowing element, the TTAB has reasoned that trademark applicants are in a position to know whether their declaration of use is accurate. Therefore, any inaccuracies may amount to fraud.

Every line in the application form has legal significance! Carefully examine and document how you use or intend to use your mark in order to avoid an inaccurate declaration of use on your application. By omitting uses on your application or renewal, you may lose protection for the mark in connection with that particular good or service. But by being over inclusive, you may end up with no protection at all.

For assistance with registering trademarks or for information regarding proper filing methods, contact a competent trademark attorney.

Worthington Millwork, based in Jacksonville, Florida, specializes in the design of architectural columns. Their website features a user-friendly approach to custom-designing columns; clients use the "3-Step Column Builder" to choose the base, column, and capital combination.

The logo you see here has recently been issued a Certificate of Trademark Registration from the U.S. Patent & Trademark Office. In addition to the logo's design, the colors, blue and white, are essential features of the trademark.

First used in commerce in 1985, the mark identifies the brand and appears on the Worthington Millwork website, as well as their on their product catalog and company literature. For nearly 20 years, Worthington Millwork has been providing residential and commercial customers with architectural columns, wall niches, and many other functional and decorative architectural details.

Registering your company name or logo provides several benefits such as notice of your ownership and allowing you to bring an action in federal court if someone uses your trademark with the same goods or services for which it is registered.

Do you have a unique logo or name for your business? Consider contacting a trademark attorney to help with the process.

Have you ever said, "Wrap it in cellophane" to ask for your food to be wrapped in plastic? How about, "Kleenex is softer to blow your nose" to recommend facial tissue to a friend, or "I need a xerox of this report" to request a photocopy of your document?

Cellophane, Kleenex, and Xerox are all trademarked brand names. By using a brand name to describe a generic product, you may be furthering trademark dilution.

Dilution occurs when a trademark becomes so overused that the trademark starts to identify a product itself, rather than the brand or company behind the product. Personally, I find that to be the case with "Band-Aid" and "Google." Why? Because we over-look the fact that the plastic bandage for our paper cut was not, in fact, made by Johnson & Johnson, even if we did ask for a Band-Aid. In addition, how many other Internet search engines are used when we're asked to "Google it"? Compare this with consumers' attitudes to other products: watch how noses turn up to cola that did not originate from the Coca-Cola company!

If a trademark becomes too diluted, it may become a generic term and lose protection under trademark laws. Companies on the verge of losing their protected status due to dilution will often launch extensive and expensive campaigns to prevent the public from using their trademarks in a generic fashion.

Are you concerned about the dilution of your trademark? Contact a trademark attorney for a consultation.

During the week of June 22-27, 2009, inventors and innovators gathered in Alexandria, VA for Innovation Week. The United States Patent and Trademark Office hosted this event at their headquarters in order to celebrate the important role patents and the USPTO play in the economy and the advancement of science and technology.

The event was open to the public and included dexhibits on display, technology specific presentations to patent examiners, and a multi-day conference for independent inventors.  Interested parties were able to attend Innovation Week as a spectator or were able to take a more active role in the event by participating as a keynote speaker, technology specific presenter, and patent exhibitor.

As the Internet becomes a more integral part of life and business, disputes inevitably arise over domain name use. A domain name, sometimes called an "Internet address" or "URL", is registered with a domain name registry. The Uniform Domain Name Dispute Resolution Policy (UDRP) provides trademark owners a remedy against infringing use of domain names.

Domain name registrars can adopt the UDRP by incorporating its language. In that case, you will be contractually bound to the terms of the UDRP when you sign a registration agreement. By registering a domain name, you represent that you are authorized to use that term. In other words, you warrant that the word you use for your domain name will not infringe on another person's protected trademark.

A valid trademark owner can file a complaint with an approved dispute resolution service provider if abusive domain name registration is suspected. Abusive registration includes using a domain name that's considered identical or misleadingly similar to a protected mark, in bad faith, and with out authorization from the owner of the protected mark. The offender may be required to submit to an administrative proceeding such as arbitration by an independent panel of the dispute resolution service. If the panel determines that the offender has violated policy rules, the offender's domain name may be suspended or transferred to the owner of the original trademark. In any event, offenders are not entitled to refunds from the domain name registrar.

If you suspect improper use of your registered trademark in an internet domain name, contact a competent trademark attorney to explore the possibility of filing a complaint.

In October 2008, federal agents arrested over 60 members of the California based Mongols Motorcycle Club. The three-year undercover operation was code named "Operation Black Rain ." In addition to the normal criminal charges, the indictment also sought to control the gang's "very identity": their own registered trademark.

The Mongols, investigators learned, operated more like a legitimate corporation rather than a typical gang of outlaws. Most notably is their ownership in intellectual property. "Mongols" is a registered trademark (Reg. No. 2,916,965) listed as being used with "services, namely, promoting the interests of persons interested in the recreation of riding motorcycles. The bikers have also registered as a trademark their logo, seen above.

These marks could be classified as "collective marks", that is, a trademark used to identify membership in an association. As an intellectual property attorney, I am appalled to find out that a registrant could be banned from using their own trademarks for the purposes they have claimed. Sure, they may be involved in criminal activity, but if they are, in fact, a group of people interested in riding motorcycles, punish their criminal acts, not the way they identify themselves. Is it even constitutional to prevent someone from identifying themselves as a member of a group? Is it rational to presume that every member of this group is a criminal?

In what was termed an unprecedented move, the U.S. Attorney filed a restraining order against the motorcycle gang to prevent them from using their name or trademark. The order was granted in United States v. Ruben Cavazos, et. al. The Federal judge stated that, as an asset to the defendant, Mongol Nation, the trademark would be subject to forfeiture as the defendants were convicted in criminal proceedings. Additionally, the court ordered defendants and virtually anyone connected to them–agents, family members-to surrender all paraphernalia containing the name and trademark.

What are your opinions in this matter? I welcome your thoughts and comments.

"Pseudo mark" is a designation the U.S. Patent & Trademark Office assigns to marks that has an alternative meaning or spelling. For example, if the mark was comprised of H2O arranged in a cascading manner, the pseudo mark field in the USPTO database might display the mark as "water fall."

The USPTO assigns pseudo marks in their database to assist in the trademark search process.

The pseudo mark label does not show up on the registration certificate, and this categorization has no legal significance.

In general, the "TM" symbol used in conjunction with a trademark means that the party using that mark is claiming ownership of the mark, but has not registered the mark. The "R" symbol can only be used to show that a trademark has been registered.

There is a classification for trademarks for words that are literally associated with the products they identify. These marks are generic. Words like "milk," "car," or "towel" are all generic words, because they are the nouns of those particular goods. Generic marks can never be used as trademarks. It prevents others from using those words to label those products.

Just because a party uses the "TM" symbol on a generic mark does not make that word a trademark. In fact, three cases before the Trademark Trial and Appeal Board specifically stated that "The presence of the letters 'SM' or 'TM' do not transform an otherwise unregistrable designation into a mark." See In re Remington Products Inc., 3 USPQ2D 1714 (TTAB 1987), In re Anchor Hocking Corp., 223 USPQ 85 (TTAB 1984), and In re Minnetonka, Inc., 212 USPQ 772 (TTAB 1981).

Wonder if your trademark is registrable? Contact me for a consultation.

The trademark application can only be filed by the party who is the owner of (or is entitled to use) the mark as of the application filing date. The applicant may be any person or entity capable of suing and being sued in a court of law. "Entities" includes corporations, partnerships, joint ventures, unions, associations and other organizations capable of suing and being sued in a court of law.

If the president of a corporation is identified on a trademark application as the owner of the mark, when in fact the corporation is the owner, the application is void, because only an owner can file an application. However, if the president and a related company both use the mark, the president will be permitted to be named the owner, if in fact he or she really is using the mark.

If the applicant owns all (or substantially all) of the related company in such a way that he or she controlled that company's activities, there is unity of control, meaning that the the applicant and the company are considered to be a single source, and either could be named as the trademark owner for purposes of trademark application.

For more detailed rules on the trademark process, refer to the TMEP (Trademark Manual of Examining Procedures).

Trademark registration is a complex task, with legal implications lurking in every field on the application. Seek the assistance of a trademark attorney to guide you through this process.

The new Pro-IP Act is the thankfully succinct nickname for the new "Prioritizing Resources and Organization for Intellectual Property" Act. Its objective is to protect innovation, and to better encourage creative contributions to the U.S. economy. President Bush signed the bill into law on October 13, 2008.

In an age where an 11-year old's act of downloading music can cost his parents a six-figure (and in some cases, seven-figure!) judgment, the new Pro-IP act makes it more likely that these judgments roll into the eight-digit categories.

Downloading music is not the only way that copyright laws can be violated. Any type of "copy and paste" work could be an act of infringement. This has widespread implications as more people, including children, are blogging, sharing ring tones, and personalizing web pages.

Invention submission companies and product development companies help patent and trademark owners license and sell their inventions, products, and services. A cursory internet search of these terms will turn up a plethora of hits. Beware! Like any industry, there are legitimate businesses, and there are scams. When choosing one of these companies, keep these tips in mind:

Tip 1: Be familiar with what you own. If you have an invention, be sure you are familiar with the disclosures and descriptions in your patent. If you have a trademark, be sure that it is registered, and be aware of which specific goods and services your trademark will be identifying. If what ends up on the market is not what your patent or trademark claims to be yours, you might lose out on rights to the marketed products or services.

Tip 2: Research the company. Don't be shy about asking the firm for references and credentials. Once you get this information, follow up with them. Check with organizations like the Better Business Bureau. Find out if there is any pending litigation against them, and what issues are in dispute.

Tip 3: Be careful with your money. Almost every patent and trademark owner is enthusiastic and eager to start mass production and distribution. This excited ambition is easily exploited by dishonest enterprises. Be weary of large fees due in advance. When you do forward your money, know exactly how this money is being used. Have an attorney review any agreements before signing the dotted line. Once the deal is signed, be sure to ask for regular accounting statements, so you know how much in royalties you are earning, and you know which parties have licensed your patents and trademarks.

Licensing, marketing, and distributing your products involves an array of legal specialties, include contract analysis, negotiating licensing terms, and enforcement of ownership rights. Be sure to have an attorney familiar with all these facets to assist you.

Around the world, all eyes would turn to Times Square in New York City on New Year's Eve. Millions would watch as Dick Clark entertained us, and finally counted down to the infamous dropping ball in the seconds before the new year arrived in the Big Apple.

He was born on November 30, 1929, but he alleges in a recent trademark registration that he has been using his name, "Dick Clark," since 1948 to "promote the goods and services of others by allowing sponsors to affiliate their goods and services with a television celebrity." (Reg. No. 3533080).

Dick Clark also holds the phrase, "Dick Clark's New Year's Rockin' Eve," to be his trademarks. He has one registration for the phrase's use in association with slot machines (Reg. No. 2688315). He also has a pending application for use of the phrase in conjunction with pre-recorded CDs, DVDs, and video tapes (Ser. No. 77612030).

Interestingly, his familiar sign-off catchphrase is not a registered trademark: "For now, Dick Clark. So long!"

Congratulations to Metro Diner, a local restaurant in the historic San Marco neighborhood in Jacksonville, Florida! They have registered three trademarks with the State of Florida: their name, their logo, and their slogan, "Where The Locals Eat."

The logo, as you can see, is in the signature dark and light green colors. Their slogan is very apropos to their typical customers who crowd the diner for breakfast and lunch.

Protect your business identity--register your trademarks today. Contact a trademark and business attorney to help you through the process.

Last summer I took a vacation far from my office in Jacksonville, Florida, to visit New York City for the first time. It was an interesting experience, to say the least. One of the most interesting sights, of course, being The Naked Cowboy.

The Naked Cowboy is not your average guitar-strumming entertainer. You can't miss him: he's the buff guy in white briefs, a straw hat, cowboy boots, and oh yeah, he spends most of his days in the middle of Times Square. If that's not surprising enough for you, he allegedly makes $5,000 per hour.

Recently, Mars, Inc. launched an ad campaign for their product, M&Ms. The TV commercial features a blue version of their candy coated chocolate, standing in Times Square, dressed in a manner that unmistakably is mimicking The Naked Cowboy.

The Naked Cowboy, whose real name is Robert Burke, is suing Mars, Inc. for $6 million for trademark infringement, unfair use of his image to endorse a product he does not support, and attorneys' fees. See the Complaint he filed here. The trademark infringement allegations are based on Burke's registered trademarks of the name "The Naked Cowboy," and his image (Reg. Nos. 2560456 & 2760208, respectively).

With the Complaint filed in February, it could be months or years until the case is dismissed, settled, or goes to trial. For updated information, contact me, and I'll see what information I can dig up.

So you're in business. You've registered your trademark, identifying the goods or services you're offering. Your business may be restricted to your city, or you may have customers/clients in big cities like Jacksonville or a small town like Palatka. In any event, one of the biggest mistakes my clients make is to file away their trademark's Certificate of Registration, and not give their trademark a second thought.

Florida Statute 495.071 prescribes the duration and renewal procedures for Florida trademarks. Here are some tips:

1. Registration expires 5 years from the date of registration.

2. Renewal can be filed as early as 6 months before the date of registration expiration.

3. Prepare a statement that your trademark is still in use in Florida, for the same class of goods or services as when you filed your registration.

4. Prepare to provide a specimen showing use of your mark in connection with those goods or services.

5. Set aside $87.50 (per class of goods & services) for the filing fee.

The Trademark Expo was held recently at the U.S. Patent & Trademark Office headquarters in Alexandria, Virginia.

Trademarks play a critical role in our marketplace both here at home and around the world. From the moment our GE alarm clocks wake us up, until we turn off our Sony TVs after the late night news, we are bombarded with brand names. The Trademark Expo pays homage to this enormous influence on our choices of goods and services by featuring displays, exhibits, company booths, roaming mascots, and seminars.

The Expo is free and open to the public. All individuals, businesses, and educational institutions that hold a valid registered U.S. trademark are encouraged to apply to exhibit.

Last year's Expo attracted 7,000 people.

Doctor Easy Medical Products' trademark, seen above, was recently registered with the U.S. Patent & Trademark Office. This logo is used to identify a product with a plastic tube that directs a stream of fluid into the ear to flush out ear wax. The inspiration for the term "elephant" came from the fact that the plastic tube was long and flexible, resembling an elephant's trunk.

This logo helps consumers identify Doctor Easy Medical Products as the authentic source for the ear washer, as well as other health & beauty products. To register a logo, name, or slogan that helps consumers identify your goods or services, consult with a trademark attorney.

Just because another party has registered a trademark does not necessarily exclude you from using and registering that trademark as well. Trademark protection depends on the scope of use, extent of use, use of the trademark in a geographic location, and association with a particular set of goods or services, among other factors.

Furthermore, a registered owner may agree to allow another to use the registered trademark, or grant a license to another to use that trademark. Permissive use or licensing involves negotiation of fees, costs, use, and royalties.

On the other hand, registration does not guarantee exclusive ownership. Rights associated with registration may cease if the owner stops using the trademark (either entirely or for the purposes stated in the application for registration), if the owner fails to pay maintenance fees, or if another party can prove that the registered owner was not, in fact, the first to continuously use the trademark to identify goods or services.

Trademark rights continue as long as the owner continues to use it consistently to identify goods or services. A trademark owner can lose rights to the trademark through abandonment of the mark, non-use of the mark, or by granting naked licenses. Tally-Ho Inc. v. Coast Community College District, 889 F.2d 1018, Footnote 6 (11th Cir. 1989).

Getting our minds out of the gutter, "naked licenses" have nothing to do with nudity. Naked licenses are when a trademark owner licenses the use of a trademark without controlling the quality of the goods or services provided by the licensee. If consumers cannot expect consistency of goods or services associated with a trademark, in effect, consumers will cease to attribute those products with that mark. This is essentially the same as non-use of a trademark.

Quality control is vital in trademarks and licensing, which is why many franchises thrive. The intolerance for anomalies assures consumers that they can depend on the goods and services to be exactly as they expect. This high level of predictability is the secret to many franchises' success.

So trademark owners, don't be caught with your pants down when licensing the your rights. Ensure that your licensees are delivering the same quality of goods and services that you have originally attached to your trademark.

While monogamy is the prevailing standard accepted in our society when it comes to spouses and boyfriends or girlfriends, this is not necessarily so when it comes to a license for your patent or trademark.

When you offer the rights to use your patent or trademark, in exchange for fees and royalties, you are licensing those opportunities to another. That other party is called the licensee.

A monogamous license, more appropriately termed, an exclusive license, is where you have only one licensee. Typically, licensees agree to paying higher fees and royalties for the benefit of being the only ones who are allowed to benefit from the intellectual property. NBC was hugely successful last month, because they were the exclusive network to provide Olympic coverage.

There are times, however, where it benefits the patent or trademark owner to enter into a licensing agreement with as many licensees as possible. This is a non-exclusive license. Although a licensee will probably pay less in fees and royalties, the patent or trademark owner benefits from collecting this revenue from multiple licensees. Franchises are an excellent example of non-exclusive licenses to numerous franchisees for the use of trademarks, patents, and other proprietary assets.

From my office in Jacksonville, Florida, to a corner store in Hawaii, you would be hard-pressed to find anyone in the 12-35 year old demographic who does not know Beyonce.

For all six of you who don't, here's a quick pop-culture review: a former member of the '90s R&B trio, "Destiny's Child," Beyonce released her first solo album in 2003. From there, her commercial appeal exploded. Her success as an entertainer includes:

- multiple movie roles, one of which earned her a Golden Globe nomination for her role on the big-screen adaptation of the Broadway hit, "Dreamgirls;"

- endorsement contracts for Pepsi, L'Oreal, and Tommy Hilfiger; and

- bragging rights for being crowned as the first non-model and non-athlete woman to grace the cover "Sports Illustrated Swimsuit Issue."

Why would Beyonce, whose name is a registered trademark with incredible brand name recognition, suddenly want to change her name to "Sasha Fierce?"

Beyonce wants to be known by the name of her alter ego, whom she describes as: "the fun, more sensual, more aggressive, more outspoken side and more glamorous side that comes out when I'm working and when I'm on the stage."

In all seriousness, my question remains, "Why?" I am skeptical that Beyonce wants to change her name for personal reasons. I think "Sasha Fierce" has much more aggressive connotations, but what it makes up for in vamped up sex appeal, it lacks in sincerity. I also imagine that the name change is an attempt to market a whole new line of products, cuing consumers to fear being associated with a brand that was SO five minutes ago.

This Pseudonym Movement has been done by other artists, often as an early indication of the demise of their popularity. These celebrities panic to re-create themselves, rather than attempt a come-back in the more-distant future. For example, Prince became "The Artist Formerly Known as Prince." Puff Daddy has been known as P. Diddy, Sean Combs, and Sean John. And in the extreme, Garth Brooks took a walk on the rock side as his alter ego, Chris Gaines.

My advice to Beyonce would be to stick with what works. People around the world envy her talent and career opportunities. Be greatful and proud of who she is, and the brand that she has become. Leave re-inventing the wheel to the has-beens.

If you have a trademark you would like registered with the USPTO or with the State of Florida, I would be happy to help you.

Go ahead, roll your eyes. I am. And I'm synchronizing it with an annoyed sigh and a defeated slouch. As irritating / overrated / superficial / predictable / contrived / insincere / underwhelming as Paris Hilton is, I have to give the girl credit for this undeniable irony: the emaciated "celebutante" consistently manages to shove her brand name down the American consumer's throat.

Get this: the goods and services identified by the "PARIS HILTON" trademark (Reg. #3249904) includes "conducting parties in nightclubs" and "personal appearances by a media celebrity."

Other (so-called) notable Paris Hilton trademarks:

- her initials, as a logo

- the logo for her perfume

- the title, "Paris Hilton's My New BFF" for her new MTV reality show, where contestants vie for for the coveted title of Paris' new best friend

- And who could show their face in public without Paris' signature stamp of approval: "THAT'S HOT" (Ser. #77163240)

Which celebrity would you like to see on my Celebrity Trademarks spotlight? Have you wondered whether your name or image is eligible for trademark registration? Ask me.

Recently, at the Florida Coastal School of Law campus in Jacksonville, Florida, law professor, Carolyn Herman and patent attorney, Clark Wilson, presented a seminar entitled, "Identifying Intellectual Property Issues for the General Practitioner." It was a succinct presentation covering patent, trademark, and copyright laws.

This is the second annual presentation of this seminar, which was given in conjunction with Florida Coastal's Alumni Weekend celebration. I recommend this seminar to attorneys, business executives, entrepreneurs, and inventors alike, and would encourage anyone interested in attending to sign up for the seminar again next year.

Two years ago, the managing partner of my law firm bought me my first set of golf clubs, had them personalized for me, and hooked me up with private lessons. Little did he know: he created a monster.

It doesn't take a golf fanatic to appreciate that Tiger Woods could very well be the greatest golfer in history. But it's not just his game on the course that makes him a multi-millionaire--"Tiger Woods" as a brand name is worth millions in endorsing goods and services.

The name, "Tiger Woods," as a trademark, has been used since 1997 to identify golf gear and athletic apparel (Reg. #2306354). But that's just the beginning of the list of trademarks in Tiger's name; here's more:

- his autograph

I recently presented my seminar, "From Emblems to Empires: Using Trademarks to Promote, Protect, and Produce Business." The audience were the members of IMPACTJax, a young professionals' group that is part of the Jacksonville Regional Chamber of Commerce.

I discussed the importance of promoting a business name by building a brand name. The goodwill and reputation should then be protected through trademark or patent registration. Only then can defensive and offensive strategies have any teeth against potential infringers. Once a business achieves a level of success with those trademarked or patented assets, I explain why franchising the operation is among other options for expanding the business. In the alternative, for entrepreneurs interested in minimizing the risk of owning a business, I also discuss the advantages of buying a franchise.

Couldn't make it to the original presentation? Contact me to see when this seminar will be presented at a venue near you.

The "secondary meaning" concept is critically intertwined with trademarks and trademark law.

Secondary meaning occurs when a trademark achieves a meaning to consumers associated with the goods or services it identifies.

For example, the primary meaning of the word, "zoom" can be defined as "to move quickly," or "to get a closer look at something." However, when used as "Zoom Zoom," consumers easily associate the slogan as identifying Mazda vehicles. Therefore, "Zoom Zoom" has achieved secondary meaning with the public, because of their association of the phrase with the Mazda brand name.

The stronger the trademark's secondary meaning, the stronger the trademark becomes when disputes arise involving ownership or use of the mark. These disputes typically arise in the form of cease and desist notices, or Complaints filed in court, alleging infringement, dilution, unfair trade practices, consumer confusion, etc.

Federal statutes governing trademark laws are found under the Lanham Act (Title 15 of the U.S. Code). The federal statutes are extensive, providing definitions, detailing procedures, and laying out remedies for aggrieved parties. Disputes under the Lanham Act are brought under federal court.

In addition to these statutes, common law and state statutes also govern trademark laws. Common law is the body of law defined by the courts, and detailed research may be required to find the answers to the questions you are looking for. In addition, each state sets forth its own statutes, and its own courts have jurisdiction to resolve disputes. For example, statutes governing Florida trademarks are set forth in Florida Statutes Chapter 495.

It is important to note that the attorney representing you in state or federal court must be admitted to practice in that particular court or jurisdicition.

If a distinct logo, name, or slogan is used to identify goods or services, the first one to use that trademark is entitled to ownership of that trademark. However, the rights associated with ownership of that mark are limited.

It is thus highly recommended to register the trademark. For a reasonable filing fee, registration offers many other benefits to the owner. Examples include the right to sue for infringement, and getting the clock ticking on the five-year wait before the trademark achieves an "incontestable" status.

Whether offering goods or services at a local or world-wide level, registering a trademark is always recommended. So where should a business begin this process?

If doing business in only one state, then trademark registration should be done with the Department of State. This is true for small businesses and growing chains alike.

Once a business markets and promotes to consumers across state lines, it becomes eligible for federal trademark registration at the U.S. Patent & Trademark Office. This has been an integral step in business growth and franchising. However, it is recommended that the trademarks are also registered at the state level where the business is conducted. In the event that a competitor infringes upon that trademark, then remedies at both the state and federal level may be available.

Despite the fact that there is no such thing as an "international trademark," filing an application for a U.S. trademark can lay the foundation for applying for trademark registration in other countries. There are procedural requirments involved, so consultation with a trademark attorney is advised.

In order for your trademarks to be eligible for registration at the U.S. Patent & Trademark Office, your goods or services must be offered to consumers in more than one state. This is an easier endeavor for businesses with high visibility and high accessibility to the public, like restaurants, gas stations, hotels, etc. However, internet sales and marketing across state lines can qualify as doing "interstate commerce."

For businesses catering only to their home state, they ought to register their trademarks at the state level.

When considering a trademark to identify your goods or services, it is always a good idea to see if that trademark is already in use by someone else, and to what extent this trademark is being used. This is particularly important if that other party is a direct competitor.

This is done by doing a trademark search. The U.S. Patent & Trademark Office has a database, as do most Departments of State. However, other databases and resources should be checked as well. This is because the proper owner of a trademark is not the first party to file for registration, but the first one to use it in commerce.

Trademark searches can be performed by a attorney or by private firms that specialize in this service. In any event, find a professional competent in trademark searches to perform this service for you.

No. Anyone can file their own trademark registrations, but it is highly recommended that you seek legal advice to help you with the process. This is because a trademark lawyer will be familiar with procedural and substantive requirements of filing an application for registration. Having an attorney help you can save time, money, and potentially, grief involved in the application process.

Are collective marks considered to be trademarks? They sure are. Collective marks are used by unions, organizations, and other types of associations to identify membership in that group. Collective marks can be logos, slogans, or names.

Examples of collective marks include the logo for the Fraternal Order of Police, and the name "Boys and Girls Club of America."

As with all trademarks, it is strongly recommended to register a collective mark with state or federal trademark offices.

When you have a trade secret, nothing is more important than keeping it secret.

Arguably the most famous recipe in the restaurant industry, the Colonel's secret recipe with 11 herbs and spices is written on a piece of paper kept in a vault at their corporate offices. The yellowing sheet of notebook paper, handwritten by the Colonel himself, however, had to be transported this week to a temporary location for safekeeping while KFC beefed up security. Transportation security measures included bodyguards for the recipe and handcuffing the briefcase containing the recipe to KFC's president.

Much ado about nothing? Not at all. If the holders of a trade secret fail to take reasonable measures to maintain the secrecy, the value of their secret will be lost if the details are publicized.

I specifically discussed the KFC secret recipe in a recent article published in the Jacksonville Business Journal. The value of the KFC franchise, an internationally recognized business, comes from exclusive access to the recipe, which arrives prepared and ready to be used by the restaurant.

American citizenship is not required to file for trademark registration in the U.S. The basic requirements are that the applicant is using the mark in association with goods and services across state lines, and that the mark is not infringing on the mark of another.

There is technically no such thing as an "international trademark." To secure trademark protection in other countries, an application must be filed in those countries. That process can begin with filing a U.S. trademark application.

While registering your trademark is not mandatory, registration offers many advantages. The following only scratch the surface at the benefits of trademark registration:

It gives notice to the public and to your competitors that you claim ownership of the trademark. An owner of a registered trademark is presumed to be the rightful owner, unless proven otherwise.

If someone else tries to use the same or a similar trademark, you can then assert your ownership rights. This can be accomplished by sending a cease and desist letter or filing a claim for infringement.

You can allow others to use your trademark by licensing the rights to use your trademarks. You can control the way your trademark is used: for particular purposes, in certain places, or for a given length of time. This strategy is fundamental in business growth, business development, and franchising.

Registration with the U.S. Patent & Trademark Office provides a basis for you to apply for trademark registration in other countries. On a related note, you can prevent infringing foreign goods from being imported.

Service marks are names, logos, slogans, and other marks that identify the source of a service. Legally, they are the same as a trademark, which is a mark that identifies the source of goods. The terms "service mark" and "trademarks" are often used interchangeably.

While the "SM" symbol is sometimes used to denote a service mark, "TM" will do just as well. However, once registered with the U.S. Patent & Trademark Office, the "R" symbol is used.

Often, businesses will have both service marks and trademarks. For example, visitors at Disney theme parks who want to avoid the long line for attractions can make a reservation, and get whisked to the front of the line at their designated time. Disney named this service, "FASTPASS," which is a registered service mark. On the other hand the mark, "Mickey Mouse" has been in use since the 1930s, to identify goods like cartoons and comic strips.

Businesses often use their business name to create a logo. Both the name and the logo are trademarks identifying goods and/or services. Should they be filed on the same trademark application?

No. Even if the logo is a stylistic version of the business name, if they can be used separately, they should each be filed on separate trademark applications. Filing an application for the logo protects only the graphic representation of the business name. To protect the business name itself, separate trademark registration will protect the use of that name, regardless of the font, color, or manner in which the business name is being presented.

Most people think of a company logo when they think of a trademark. The Nike "swoosh" is a classic example of this type of trademark. But many people don't realize that you can trademark many things that are unique, including product names, signature sounds, and much more. As a general definition, a trademark can include any word, name, symbol, device or combination of these things, and it must be used in commerce to differentiate a product or service from others on the market.

 For example, an apple grower would not be allowed to trademark the word "apple" for his business, because it is too common and does not distinguish his product from those of other apple growers. But if the apple grower decided to start a computer company in the early eighties, he would be able to trademark "Apple" because, even though it is a commonly used word, it is not a word commonly used to describe computers. In this case, "Apple" would clearly distinguish one type of computer from another.

Perhaps most surprisingly, certain sounds can be trademarked if they are associated with a particular good or service. A well-known example would be the Intel "Bong," used in their television commercials. You can find out more about unusual trademarks by visiting You Can Trademark a Lot More Than You Think.

Trademark is a complicated legal issue. If you have a product or service that you would like to protect via trademark, you will need to seek the advice of a business law attorney. Please contact our Jacksonville, Florida area firm for expert legal counsel regarding trademarks, patents and copyrights.

In light of the excitement surrounding the Monopoly World Championship in Las Vegas, it seems appropriate to recognize the other side of economic board games: Anti-Monopoly. Anti-Monopoly was created by Ralph Anspach in the 1970s and can be purchased on line. The object of the game, which seems fitting, is to break up existing monopolies and restore a free market system.

Anspach's invention had a rough start. When he first marketed the game, the owners of Monopoly sued for trademark infringement. Anspach defended by arguing that the trademark was void because the idea for the game and the name monopoly was in public domain. Contrary to the official Monopoly history, a version of the game was invented more than a quarter century before the current owner registered the trademark. Public domain refers to intellectual property so widely used it belongs to the public and cannot be restricted by a single party. After an almost 10-year legal war, the judiciary agreed with Anspach. This prevented any further infringement claims against Anti-Monopoly and allowed him to market his game. The Monopoly mark did not become void because the United States Congress amended the Trademark Act to create an exception.

In an ironic twist, Hasbro, which owns the Monopoly trademark, now also holds the trademark registration for Anti-Monopoly. The Anti-Monopoly distributor simply uses the mark pursuant to a license as indicated on the game's website.

Since 2007, Philadelphia Wine School has held a culinary and wine competition which it has dubbed Sommelier Smackdown. World Wrestling Entertainment has its own long-running TV show called SmackDown and caught wind of the other use when Philadelphia Wine School applied for a trademark for its name.

WWE is actively trying to put Philadelphia Wine School's use to an end but Philadelphia Wine School doesn't plan on caving and is prepared to fight the opposition. Philadelphia Wine School seems to be banking on the idea that "smackdown" by itself is a generic term that cannot be registered.

Even if the generic defense doesn't pan out, I think that WWE won't be able to show that consumers will be confused as to the source of Philadelphia Wine School's event. Call me crazy but I don't really see Hulk Hogan sitting around, sampling a '52 Merlot!

What do you think of this face-off? Please post your comments or contact me to discuss!

The European Court of First Instance has denied a German clothing and perfume retailer's bid to register an exclamation point as a trademark. Joop! applied for a trademark on an exclamation point logo, both in free form, and enclosed within a box.

A mark has to indicate the source of a good in order to qualify for registration as a trademark. The court said that an exclamation point alone isn't enough to show a link between a manufacturer and its product. In other words, consumers would not necessarily associate an exclamation point with Joop!

While decisions outside of the United States are not binding on us here, they may be helpful in interpreting our trademark statutes. I think that the analysis done by the EU court is analogous to what an American court would do. Intellectual property is a global field so it's important to stay on top of both domestic and international rulings!

Want to know if your mark is registrable? A thorough trademark attorney can let you know what the law allows!