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.

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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.

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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.

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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.

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Metallica the metal shop came on the radar of the band’s trademark attorneys when the shop attempted to register an internet domain name with the term Metallica in it.  The band’s trademark attorneys pressed the metal shop to change their name and drop the use of Metallica all together.  The metal shop wasn’t deterred however, and filed a trademark application with the Canadian Intellectual Property Office in 2008, seeking to obtain a trademark registration for the following services: custom metal fabrications, welding and machining.  The band’s trademark attorneys filed an Opposition to the trademark application, stating that the metal shop’s name would be confused with the band’s trademark.  More than three years after the initial Opposition, the Canadian Intellectual Property Office concluded that there was no likelihood of confusion and that the metal shop would be free to pursue their use of the name.

Did the Office make the correct decision?  Are consumers likely to be confused as to whether the band has any connection with the metal shop?  Although the term Metallica is strongly associated with the band, it seems unlikely that consumers would make the intellectual jump that the band is somehow actually involved in metal manufacturing.  Producing metal goods in a shop is just not similar enough to making metal music on the stage to cause confusion – rock music on the one hand and fabricated metal on the other.   So, the Canadian Intellectual Property Office allowed the metal shop’s trademark application for registration.

While Metallica the band’s trademark attorneys may not be too concerned about a small, metal manufacturer in Canada, it’s doubtless that they would prefer to keep open space around the band’s Metallica brand and prevent any brand dilution.  Of course, their main goal should be to preserve and strengthen the Metallica brand, and prevent other from not only using anything confusingly similar, but also anything that could dilute the Metallica brand.

Protecting against brand dilution is just one of many services that a good trademark attorney can provide.  Whether you are a small business like the metal shop or a group of global rock stars, trademark strategy can be critical to your business success.   If you are filing a trademark application or protecting your existing trademark registration against confusingly similar marks, the trademark attorneys at Trademark Access can provide the expertise you need.

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The newest development involves alleged trademark infringement among two of the most brazen startups, Filmon and Aereo.  Both of these companies provide streaming TV via the internet, through the use of mini antennas that deliver content from broadcasters like ABC, NBC, and CBS to online subscribers. As if both of these companies didn’t already have enough legal troubles raining down on them from the major networks, they have now hired trademark attorneys and started suing each other.

Filmon.com has marketed streaming TV services through a product called Win-TV-Aero-m.  Hauppauge, a company that makes mini TV antennas, transferred the rights to its trademark registration for the mark “Aero” to Filmon on February 6, 2013.  According to the law suit filed on February 7, 2013, the next day, Filmon alleges superior rights to the trademark “Aero” and that Aereo’s trademark registration for “Aereo” is invalid.

Filmon’s trademark attorneys argue that Aereo, which used to be called Bamboon, has tried to unfairly capitalize on the name Aero, and create a similar sounding and confusing knockoff.  The earliest use of “Aero” according to the complaint, was in January of 2011, at a trade show in Las Vegas.  Then, in October of 2011, Bamboon filed a service mark application for “Aereo,” and changed the name of its company to Aereo.

The use of Aereo has apparently been getting under the skin of Filmon and their trademark attorneys for some time, but it came to a head when Filmon received a letter from Aereo in mid-January, 2013.  The letter alleged that Filmon, and its owner Alkiviadis David, and partner company “Aereokiller” were infringing their “Aereo” trademark, and demanded they cease using the name Aero.  As a result of the cease-and-desist letter, Filmon’s trademark attorneys promptly responded with a law suit against Aero.  Of course, one of the fundamentals of trademark law is that you should not assert trademark infringement until you know you were the first to use the trademark.

But the lines are a little blurred as far as who has the right to the term Aero or Aereo.  As stated above, Filmon has a major business partner known as Aereokiller, LLC.  Apparently, this name was created as a direct challenge to Aereo, as a way of stating their superiority to Aereo.  One wonders at what point they began consulting their trademark attorneys and, if consulted, what strategy they had in mind when making this decision.

In any event, the trademark suit between them may become moot if the major TV networks win the copyright infringement suits.  In light of their mutual foes, they may want to spend less on their trademark attorneys and invest together in defeating the lawsuits by the major networks.

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Timelines.com filed a trademark application for the mark “timelines” on May 23, 2008 and was granted a trademark registration for the mark on May 4, 2010.  So on September 29, 2012, Timelines.com had its trademark attorneys file a lawsuit against Facebook for trademark infringement.  Facebook had its trademark attorneys file a counterclaim to invalidate Timelines’ trademark.

Last week the U.S. District Court for the Northern District of Illinois set a trial date of April 22, 2013 for the companies’ trademark attorneys to battle it out.  At issue is whether or not the term “timelines” is generic enough to be invalidated as a registered trademark.  Facebook’s trademark attorneys say it most definitely is.  Timelines argues that it owns a valid trademark registration for the mark, which they don’t consider to be generic at all.  According to a post on Timelines’ website:

Our company owns a valid trademark on the term “Timelines” that is for a particular application, specifically for “providing a website that gives users the ability to create customized Web pages featuring user-defined information about historical, current and upcoming events.” We’ve spent years building this brand and using it in the above stated way on our site, Timelines.com.

Facebook — a company that has applied for or trademarked the terms “Face,” “Wall,” and “Like,” as well as sued others for using “Book” in their names — is using the name “Timeline” for a new product that is focused on how people express and share events and history online. Facebook either knew or should have known (given their rigorous defense of their own intellectual property) that the U.S. Patent and Trademark Office granted us this trademark. People at Facebook could have at least contacted us for permission to use or license the name. They did not.

Let’s be clear: We aren’t against Facebook launching this new service. Our issue is that they’ve named and branded the service “Timeline.”

It is interesting to note that Timeline.com’s trademark registration is registered on the USPTO’s Principal Register.  A trademark registration on the Principal Register receives an evidentiary presumption that the trademark is “distinctive” rather than “descriptive”. That means Facebook’s trademark attorneys will be saddles with the burden to prove the “timelines” mark is generic or descriptive.  This burden shifting arising from the trademark registration may save Timeline.com significant legal fees.  Engaging a trademark attorney early on to assist in filing a trademark application can pay for itself down the road when enforcing the trademark.

Registering a trademark early on is also important because many trademark rights accrue with time.  For example, a mark registered on the Principal Register for five year may be able to obtain incontestable statue, which prevents third party challengers from invalidating the registration except in very limited circumstances.  Similarly, the longer and more extensively a mark on the Supplement Register is used in commerce, the stronger it becomes and the easier it is to show it has acquired distinctiveness. A descriptive mark that has been used in commerce for over five years may be able to receive a presumption of acquired distinctiveness and be registered on the Principal Register.

Of course, it would have been easier for Facebook’s trademark attorneys to argue that the “timelines” mark is generic had it been registered on the Supplemental Register.   But Timelines.com has two registered trademarks for “timelines,” both on the Principal Register, and both live.  Kudos to Timelines.com’s trademark attorneys!

In a comedic note, Timelines.com fans who are interested in following the progress of the case can go to Timelines’ company page…on Facebook.

The post Trademark Attorneys for Facebook Gear Up to Fight for ‘Timeline’ appeared first on Trademark Access.

Roy Fox, from Pendleton, Indiana, apparently began to muse about the possibility of a “Harbowl” many months ago.  As Fox recently told ESPN: “I thought to myself, ‘Can you imagine if these guys played each other? If Pat Riley would go through the trouble of trademarking three-peat, why shouldn’t I try this?’”  He then spent over $1,000 on the trademark application process.  Fox filed two trademark applications – one for “Harbowl” and another for “Harbaugh Bowl.”  Apparently, he didn’t consult a trademark attorney, as his applications were filed with the USPTO using his name for the correspondence information.

After filing his trademark application, in August, the NFL’s trademark attorneys began to contact him, urging him to give up the application.  As the months went by, the NFL’s trademark attorneys grew increasingly threatening.  This is where Fox would have done well to have a trademark attorney of his own.  Initially, Fox tried to bargain with the NFL for the right to the mark, asking for Colts season tickets and an autographed photo of (NFL commissioner) Roger Goodell .  But when the NFL threatened to make him pay for their legal costs, Fox backed down and cancelled the application.

Here’s where a solid understanding of trademark law would have come in handy.  According to Fox’s interview with ESPN, the NFL alleged that his “Harbowl” marks could conflict with their own Super Bowl trademark registrations.   But their arguments may not have been as strong as Fox might have thought.  There are many football bowls around the country.  Does anyone think there would be a likelihood that consumers would be confused or mistakenly believe there was an association between “Super Bowl” and “Harbowl” any more than between Super Bowl and other football bowls such as the Cotton Bowl or Rose Bowl?  Also, would the NFL even have standing to raise issues with respect to trademark registration applications based on the names of the Harbaugh coaches?  What about the NFL’s threat to make Fox pay for its attorneys’ fees – is this even credible?  Any number of good trademark attorneys could have advised Fox regarding these issues.

But Fox is not the only one seeking to capitalize on the HarBowl term by filing for a trademark registration. As of today, there are at least three newcomers to the quest for a Harbowl trademark registration.  According to the USPTO, three new trademark applications for Harbowl were recently filed.   Two were filed using trademark attorneys and one without.  Will the NFL use the same game plan against these newcomers as against Fox, or will the NFL have met its match?  Stay tuned.

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While a trademark registration is not required, it can be a useful tool in litigation.  Filing a trademark application to protect a company icon early on can help reduce enforcement costs later when trying to protect a business icon.  Elaborating further regarding the alleged trademark infringement, Sony claims that “with the intent of unfairly capitalizing on the consumer goodwill generated by Butler, Bridgestone has used and is using the same or confusingly similar character, played by the same actor, to advertise its products or services in the commercial.” (Click here to see related TechDirt article.)

Two issues arise in a case like this.  First, is Sony entitled to trademark rights over a character it created for a series of television advertisements?  Second, if Sony does have trademark rights in the Kevin Butler character, does the Wii playing character in the Bridgestone commercial infringe Sony’s Kevin Butler trademark?  Had Sony filed a trademark application and obtained a trademark registration, it would have been entitled to a presumption of trademark rights.  However, because Sony failed to have its trademark attorneys file a trademark application for the Kevin Butler character, it will have the burden of proof in the case to establish trademark rights.

US Code defines trademark as any word, name, symbol, or device, or any combination thereof … to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods. See 15 U.S.C. § 1127.  Sony may argue that the Kevin Butler character is a symbol that consumers associated with Sony, sort of like the Mickey Mouse character is a character symbol commonly associated with Disney.  Of course, Sony will have the burden of proof to establish this since they did not file a trademark application and obtain a trademark registration.  Having the burden of proof means they will likely have to pay more fees to their trademark attorneys to prove their case.  There is no doubt that Sony invested a lot into building up the Butler character and consumers likely did associate the character with their product, but if they claim trademark protection here, one potential consequence is that it could prevent an actor from working for another company in their advertisements and portraying a similar character.  This raises some interesting issues.  How intertwined would the character need to be with the product to quality for trademark protection?  How different would the new role need to be to avoid infringement?

Bridgestone indicates that it intends to fight the lawsuit by showing that Sony has failed to register a trademark for “Kevin Butler,” that the character has not acquired secondary meaning and that there is no likelihood of confusion among consumers.  If Bridgestone’s trademark attorneys are able to establish these issues, Sony’s trademark infringement suit will likely fail.  It will be interesting to see how strong of a case Sony’s trademark attorneys can make.  Novel trademark issues like these bring up unique challenges.  Of course, had Sony filed a trademark application early on, it is possible these issues could have been examined during the trademark registration process at a much lower expense than litigation. While a trademark registration does not solve everything, properly prosecuting a trademark application before going to battle over brand issues can help a business resolve brand issues early before the expensive prospect of litigation.

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Kaepernick’s dance, known ostentatiously as Kaepernicking, could be just the kind of thing to move some trendy in-the-moment T-shirts, or other memorabilia.  According to the Unites States Patent and Trademark Office, Kaepernick had his trademark attorney file a trademark application for him on January 14^th for “clothing, namely shirts.”  If his trademark strategy is successful, then Kaepernick’s trademark attorney may soon be Kaepernicking as well.

One might wonder why Kaepernick’s trademark application only covers shirts.  Doesn’t his trademark attorney know there are numerous other lucrative memorabilia on which to apply the Kaepernicking mark?  One can only speculate why this choice was made.  But failing to name other memorabilia in the application does not mean that someone else can obtain a trademark registration for Kaepernicking for other merchandise.  A trademark application for Kaepernicking by someone other than Colin Kaepernick is likely to get denied a trademark registration.  There are a few rules that prevent trademarking another person’s name, especially if that person is famous.  You can read more about this in a previous article we posted about Tim Tebow’s Trademark Application (click here to read).

With Kaepernick’s hype and the upcoming Super Bowl, no doubt he has the necessary fame to prevent third parties from registering his signature moniker.  Kaepernicking could easily end up on more than a few T-shirts.  And Kaepernick is no doubt among celebs who realize the monetary value of cashing in on their hype with a well-timed trademark registration.  Might as well get while the getting’s good, if it’s as easy as staking your claim to a trademark.

Other sports figures that have recently filed trademark applications to capitalize on their hype have perhaps paved the way for Kaepernick’s move.  Jeremy Lin was successful in beating his trademark application opponents last year.  He’s now the sole applicant for “Linsanity,” a popular phrase among certain merchandisers looking to cash in on his hype.  And most relevant is Tim Tebow’s trademark for “Tebowing,” which is, of course, his famous end zone prayer stance.

While the hype, and therefore the value of these trademarks may be short lived, it can be very lucrative.  In fact, retail sales of official (licensed) merchandise came to a whopping total of $12.79 billion in 2011 in the United States and Canada alone, according to The Licensing Letter’s Sports Licensing Report.  It’s easy to see why trademark registration is important when that much money is at stake, in an industry prone to knock-offs.

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