Like many other companies, electric car manufacturer Tesla Motors is looking to expand into China. It may have to put its plans on hold though due to trademark registration problems. In 2009, an opportunistic Chinese businessman, Zhan Baosheng, filed a trademark application with the Chinese trademark office covering the mark TESLA in 12 different classes, including cars and auto parts. The trademark application was ultimately granted giving Baosheng a trademark registration for the mark TESLA. So when Tesla filed its Chinese trademark application, the application was rejected, with the Chinese trademark office citing Baosheng’s earlier trademark registration. So, for the time being, Tesla has no legal right to commercially use its TESLA mark in China, which is a big problem for the car company looking to take advantage of the exploding Chinese demand for automobiles.
Apple 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.
We recently posted an article discussing the University of Alabama’s efforts to enforce their trademark registrations. The story involved a small bakery that makes cookies using the University’s “A” logo. The University of Alabama contracts with Collegiate Licensing Co. to police their trademark portfolio. Collegiate recently sent a cease-and-desist letter to this small bakery in Northport, Alabama. The letter ordered the bakery to stop selling products that contained the University’s trademarks. The University of Alabama has a trademark registration covering its “A” logo.
The first step to protect your brand is to obtain trademark protection by registering a trademark, but this is just the first step of an ongoing process. After acquiring a trademark registration, you must enforce it or risk infringers diluting your brand equity or unjustly profiting from it. The United States Patent and Trademark Office will not enforce your trademark registration for you. You must actively enforce your rights against infringers. A recent story posted by the San Francisco Chronicle highlights the efforts of the University of Alabama to enforce their own trademark rights.)
Tim Tebow is many things. He is an athlete, an advocate, a Heisman trophy winner, and now it looks like he will be a trademark registration owner. A trademark application for the term “Tebowingg” recently survived the 30 day opposition period provided after a trademark publishes. The trademark application should proceed to registration, which will entitle XV Enterprises, a company solely owned by Tim Tebow, to the exclusive rights to use the mark “Tebowing” in commerce in connection with the sale of hats, shirts, and t-shirts.
If you are successfully able to register your United States federal trademark, you have navigated the trickiest part of the trademark process. However, you are not completely out of the woods. Simply because you register a trademark does not mean that it will remain valid and enforceable forever. For your trademark registration to remain valid or active, you must show the United States Trademark office that you have continued to use the mark in commerce after registration.
You are probably familiar with two small symbols commonly displayed after the use of a U.S. trademark, the ® and the ™ symbols. But you may wonder what the difference between them is. These two symbols indicate that the owner of a mark is asserting trademark rights in connection with the mark. These “trademark” symbols are intended as notice or a warning to third parties regarding the type of rights that accompany a mark.
Boise State recently licensed its blue field design to Hosei University near Tokyo, Japan. See article here. It turns out that Boise State possesses a trademark registration (U.S. Trademark re. No. 3,707,623) – which protects the color blue used on artificial turf in a stadium. Boise State’s blue stadium field trademark and licensing deal is a good example of the value of some of the more atypical forms of trademark protection and the need to think outside the box when thinking about trademark registrations.
Your business plan is set. You’ve thought long and hard about what your business name should be. Now you’re ready to trademark your business name. You begin your trademark application and lo and behold there are two options for filing your trademark – standard character mark and stylized/design mark. So which should you choose? If you aren’t concerned about protecting any distinct look or style for your business name, then you might consider going with the former. If you have a logo or a stylized font or script that you want to use together with your name, then you might consider the latter option. Of course, there is more to the decision than merely deciding if you only need to protect a word or slogan or if you also need to protect design aspects of your trademark; so you should seek the advice of a seasoned trademark lawyer.