Apple Trademark Application Trouble in Mexico

trademark registrationYou may have read our earlier blog post about Apple’s trademark troubles in Brazil.  In Brazil, a company called Gradiente beat Apple to the Brazilian trademark office and registered the name iPhone long before Apple released their mega-hit mobile phone.  Because Gradiente was the first to obtain a trademark registration, they are entitled to exclude Apple from using the “iphone” mark in Brazil.  Since we last wrote about this story, Apple has been able to bring its considerable resources to bear and the two companies are currently in negotiations over a deal that would allow Apple to use the brand in Brazil.  But just when Apple appears to be resolving that problem, a new issue has emerged for Apple’s trademark attorneys in Latin America.

Apple filed a trademark application in Mexico for the term iPhone in several categories.  One of the categories was international class 38 covering telecommunication services.  Initially Apple was rejected in this class because of a likelihood of confusion with a Mexican company called iFone.  iFone (i.e., Gradiente) specializes in server-based telecommunications systems and filed a trademark registration in Mexico in 2003.  Following this rejection, Apple’s trademark attorneys argued that iFone wasn’t actively using the mark and should be stripped of their trademark rights, which would allow Apple to overcome the likelihood of confusion rejection and obtain a trademark registration.  This appeal recently went to the Mexican Supreme Court which ruled against Apple stating that Gradiente had made sufficient use of the iFone mark and denied Apple a trademark registration for the iPhone mark in the field of telecommunications systems.

Although this ruling does not necessarily mean that Apple won’t be able to sell or call their devices iPhones in Mexico– Apple has Mexican trademark registrations in two other classes, 9 and 28, covering computers, software, cameras, mobile phones and electronic game devices respectively – it does mean that iFone can probably block Apple from using iPhone in reference to telecommunication services in Mexico.  This could be problematic for Apple, because even though Apple does not offer telecommunication services, the iPhone has significant overlap in this market.  Apple will have to be careful how it markets the iPhone in Mexico or risk being sued by iFone for trademark infringement. You can probably expect iFone’s trademark attorneys to be keeping watch.

Apple’s Mexican blues illustrate the numerous considerations that accompany a trademark application, including whether acquisition of foreign rights is important, which class or classes to file in and how to make trademark use of the mark.  It also illustrates the importance to having trademark attorneys conduct a thorough trademark search.  An skilled trademark attorney can help you make the most of your trademark registration.  Contact the trademark attorneys at Trademark Access for outstanding service and experience you can trust.

Categories: Trademark Application

Google Trademark Attorneys Crack Down on Swedish Language

trademark attorneyThat’s ogooglebar!  If you’ve had recent conversations with your Swedish friends, you may have heard this term.  In fact, it’s become so commonly used in Sweden that the Swedish Language Council planned to officially add it to the Swedish language. The English translation basically means ungoogleable, something that you can’t find through the use of a search engine.  With our ever increasing reliance on internet searches it’s a useful term, but it is also a term that Google wants to make sure is handled with appropriate care.  That’s why Google’s trademark attorneys recently contacted the Language Council asking them to reference Google’s status as a registered trademark and to change the definition from all search engines to Google specifically.  This was not a vanity move by Google, but rather a move to protect their trademark registration.

It’s good to be Google these days, but with the omnipresence of its search engine and other applications, the company needs to be careful that its trademark does not become genericized, or in other words, become generic.  If people begin using the term google to mean the action of searching the internet regardless of whether they are using Google’s search engine or not, Google runs the risk of the term losing its unique source identifying nature and thereby forfeiting the rights associated with its trademark registration.  Good trademark attorneys know to advise their clients on how to avoid having a brand name become the definition of the marketed goods so they do not lose their trademark rights.

One critical function of a trademark is that it serves to identify the source of the goods or services provided by the trademark owner.  If the term google begins to refer to an internet search using any search engine, it becomes an everyday word and loses its trademark status.  It no longer carries its source identifying characteristic signaling to the consumer that the term indicates the search is provided by Google.  That is probably why Google insisted that the Swedish Language Council specify that the term refer only to the Google search engine and not all search engines broadly.   The Swedish Language Council decided to drop the word all together rather than make the changes requested by Google.  However, by preventing codification of a generic reference to the term google, Google’s trademark attorneys were successful in preventing erosion of Google brand trademark rights.

As unusual as it may sound, these are the types of things trademark attorneys have to monitor.  Conducting a trademark search, filing a trademark application, and subsequently obtaining a trademark registration are just the beginning stages of securing trademark rights.  Once a trademark registration is granted, the United States Patent and Trademark Office does not monitor trademarks for infringement or genericization.  A good trademark attorney can help you with these tasks and to properly protect and enforce your brand rights.

If you need assistance securing or enforcing a trademark registration, contact the knowledgeable trademark attorneys at Trademark Access for all your trademark needs.

Categories: Trademark Attorneys

Android Trademark Attorneys File Infringement Suit

Trademark AttorneyBefore Google came around, the only place you were likely to hear the word “android” was at a sci-fi convention.  But the term has become popularized since Google branded its smartphone operating system ANDROID.  Commercials and advertisements for the newest smartphones promote devices offering the latest version of Android along with a host of other features.  Due to the popularity of the operating system, Android has become somewhat of a buzzword.  But as it turns out, geeks and nerds weren’t the only ones using the term Android before Google and now Google will need to consult its trademark attorneys because it is facing a lawsuit for trademark infringement.

Oko International Co. is the owner of the U.S. Trademark Registration Nos. 3,467,615 and 3,729,178 for the mark ANDROID covering timepieces, watches and watch bands and bracelets in International Class 14.  Oko began marketing its watches using the Android mark in 1994 and had its trademark attorney file a trademark application in 2007.  In 2008, Oko was granted a trademark registration for the Android mark.

Oko’s trademark registration does not cover mobile phone operating systems, so one would think Google could avoid a branding fight so long as it does not make any Android branded watches.  It is possible for multiple parties to use identical marks so as long as there is not a likelihood of confusion.   This usually means the parties concurrently using the same mark are using the mark on very different goods which are sold in different channels of trade.  For example, Shell Trademark Management B.V. has a trademark registration for the mark SHELL for “liquefied petroleum gas.” Another company, U.S. Foodservice, Inc., also has a trademark registration for the mark SHELL, but covering “flatware, namely, forks, knives, and spoons.

Why would the trademark attorney for U.S. Foodservice file a trademark application for the mark SHELL knowing that Shell Trademark Management B.V. already owned a trademark registration for the mark SHELL? Because the trademark attorney for U.S. Foodservice would know that there is not a likelihood of confusion between the use of SHELL for petroleum products and cutlery. In other words, a consumer viewing SHELL branded cutlery is not likely to think that it came from the same source as SHELL branded liquefied petroleum gas, or vice versa.  So Oko and Google may coexist as registered trademark owners for the Android mark so long as there isn’t sufficient overlap between the goods and services they offer.

So why did Oko have its trademark attorneys file a lawsuit against Google for trademark infringement? Although speculation has recently increased that Google might be entering the watch market, the accused product identified in the lawsuit is actually a watch manufactured by Modify Watches.  Modify Watches are offered for sale on Google’s online store under the name Android.  Oko is seeking monetary damages for the watches sold and an injunction to remove the watches from the Google Store.  Oko may also be trying to send a message to Google not to use the Android brand if and when Google decides to enter the watch market as speculated.  Oko is a relatively small company, but their trademark attorneys do not seem to fear Google.  With a registered trademark in their arsenal and priority apparently dating back to 1994, Oko seems to be in a good position.

Big or small, if your business brand is important to you, contact the trademark attorneys at Trademark Access to see how we can assist you in registering, protecting, and enforcing your trademarks.

Categories: Trademark Attorneys

Trademark Application for Apple iPad Mini Initially Denied Registration

Trademark RegistrationApple Inc.’s trademark attorneys must be working overtime.  In the last few months we’ve seen Apple involved in trademark issues in China, Brazil, Mexico and now at home in the United States.  The most recent issue stems from Apple’s trademark application for the iPad Mini, the baby brother to the ubiquitous iPad.  Apple was previously able to secure a trademark registration on iPad, but recently an examining attorney at the United States Patent and Trademark Office rejected Apple’s attempt to register IPAD MINI.

Initially, the examining attorney refused registration of iPad Mini under Section 2(e)(1) of the Trademark Act as merely descriptive.  Of course, the initial decision is inconsistent with the fact that Apple already has a trademark registration for the mark IPAD, indicating that at a minimum the word IPAD is distinctive. Subsequently on April 3, 2012, the USPTO withdrew the refusal with respect to the assertion that the term IPAD is descriptive, but maintained that the term “mini” is descriptive and requested that Apple disclaim “mini” apart from the overall mark.  If Apple agrees to the disclaimer – something its trademark attorneys may recommend – then its trademark application will likely be allowed for publication.

Some background on trademark law will be helpful to explain why descriptive terms in a trademark application can be troublesome.  Under trademark law, marks are commonly grouped into four general categories: generic, descriptive, suggestive, and arbitrary (sometimes referred to as fanciful).  The first two categories of marks are not initially protectable as trademark and consequently may not be registered.  The latter two categories of marks may be inherently distinctive and therefore may be registered as trademarks.  A generic mark is something that identifies exactly what the product is, or in other words, it is the actual name of the product.  For example, the term “soap” used in connection with soap.  A descriptive mark is a mark that describes a quality or aspect of the goods or services.  For example, use of the term “creamy” in connection with a line of peanut butter.  Generic and descriptive marks are not protectable as trademarks because allowing exclusive rights to these types of marks would hinder competitors from actually describing their products. As a further example, CREAMY PEANUT BUTTER may not be registrable because PEANUT BUTTER is generic and CREAMY merely describes a characteristic of peanut butter.  Combining the terms does not add anything distinctive to the overall mark.  Accordingly, the trademark application would probably not be allowed for trademark registration, because it would permit the owner to prevent competitors from using terms needed to identify and describe what they are selling to consumers.

One caveat: while generic terms can never receive trademark protection by themselves,  a descriptive mark may be registrable if it acquires secondary meaning.  Secondary meaning means that in addition to the descriptive meaning of the mark, consumers have come to recognize the mark as identifying a source of goods or services and thus attach a secondary meaning to the mark associated with source identification. This can happen over time or because of extensive advertising conducted by the mark’s owner.  An applicant can assert secondary meaning in a trademark application by providing a declaration under Section 2(f) of the Trademark Act and providing evidence of acquired distinctiveness.

Suggestive and arbitrary marks, of course, are protectable as trademarks because they do not limit competitors from properly identifying and describing their goods.  A suggestive mark is a mark that, while not describing a characteristic of the goods, may suggest some characteristic or message regarding the goods. A suggestive mark typically requires some mental step to get from the commercial impression of the mark to the suggested characteristic of the product.    An arbitrary or fanciful mark is a mark that has no natural connection with the type of good or service (but not misdescriptive).  Thus, filing a trademark application for a suggestive or fanciful mark will increase your chances of obtaining a trademark registration.

Understanding how marks may be categorized provides some context for why the iPad Mini trademark application was initially refused registration.  Adding the descriptive term “mini” to an arguably descriptive term “ipad” triggered a response from the USPTO examining attorney refusing registration.  While Apple is likely to obtain an IPAD MINI trademark registration, the current challenge Apple is having demonstrates why a good trademark attorney should be used when seeking trademark registration.  It also demonstrates the importance of really thinking through the trademark creation process before filing a trademark application.

Receiving trademark guidance from an experienced trademark attorney is critical to protecting your brand.  If you have questions about any part of the trademark process or would like to file a trademark application, please contact the  trademark attorneys at Trademark Access.  They can bring you the peace of mind knowing that your brand is secure.

Categories: Trademark Application

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