No, I’m not a Red Sox fan, but merely reporting on an interesting case from the TTAB.  The New York Yankees filed an opposition to an individual’s trademark application for BASEBALLS (sic) EVIL EMPIRE and won.  The interesting thing here is that the Yankees have never used EVIL EMPIRE as a trademark or in any other way.  Nonetheless, trademark law has on occasion ignored the fact that someone doesn’t technically own a trademark but may still sue for infringement of the mark (or oppose an application in the USPTO).  This happens when the party is known publicly by a certain name such that consumers would likely believe that the use of a similar trademark is associated with the party known by the name.  In one case, IBM successfully defended the trademark BIG BLUE even though IBM never used the term BIG BLUE itself.  This is a quasi right of publicity applied to trademark law.  When someone applies to register a trademark that is likely to be associated with a certain person, group or other entity, that party has legal grounds to oppose the application.  The TTAB has applied this provision of the trademark law broadly as illustrated by this case and others.  The TTAB has ruled against applications for marks such as APACHE, US CUSTOMS SERVICE (and design), MARIA CALLAS, TO PROTECT AND SERVE (can you guess what group this might be associated with?), and SYDNEY 2000.

by Trademark Attorney Gene Bolmarcich

gxbesq1@gmail.com

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Izzy’s Ice Cream has registered trademarks for The Izzy Scoop® and for the following “trade dress”:

According to their website, they are more than happy to license you so that you can put a small scoop of ice cream on your cone (commercially of course…although you should feel free to try this at home, I would not post a picture of it on facebook lest you get Izzy in a tizzy).

If you don’t think they’re serious, check this out:

 
The most interesting thing about this registered trademark is that it covers both the product itself and retail services for ice cream.  I don’t know if there are any other product configuration trademarks registered as service marks.  Very cool (or cold as it were).
by Trademark Attorney Gene Bolmarcich

gxbesq1@gmail.com

The post An Exclusive Scoop!! appeared first on Trademark Attorney | Register A Trademark Online. Gene

How To Trademark Author Names, Artis Names, and Performer Names

How To Trademark Author Names (i.e. How to register an author name or artist name as a trademark) – Part I

If you are an author, artist, or a performer of some type (e.g. a recording artist) and you want to register your name or pseudonym as a trademark, that probably seems like a reasonable thing for you to do.  After all, your name tells the public something very important about your work, whether it be a book, a music CD, a work of art or some other artistic or literary creation. Unfortunately it’s not so simple.  This has nothing to do with the prohibition on registering surnames (which generally does not apply to full names, pseudonyms or other made up names, although it could if for example, your recording name is simply, “Jones”).  The issue with such names is that the law takes a somewhat odd view of the function of an artist’s name.  While one might argue that such a name at least informs consumers that the product on which the name appears “comes from” this artist, that, according to case law and current USPTO practice, is not a trademark function.

In one of the first cases to address the subject the Court of Appeals for the Federal Circuit held that the name “ABBA” was registrable as a trademark for musical recordings, stating “just showing the name of the recording group on a record will not by itself enable that name to be registered as a trademark. Where, however, the owner of the mark controls the quality of the goods, and where the name of that recording group has been used numerous times on different records and has therefore come to represent an assurance of quality to the public, the name may be registered as a trademark since it functions as one”.   The Trademark Manual of Examining Procedure states as follows:

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Any mark consisting of the name of an author used on a written work, or the name of a performing artist on a sound recording, must be refused registration under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, if the mark is used solely to identify the writer or the artist. See In re Polar Music Int’l AB, 714 F.2d 1567, 1572, 221 USPQ 315, 318 (Fed. Cir. 1983); In re First Draft, Inc. 76 USPQ2d 1183, 1190 (TTAB 2005); In re Peter Spirer, 225 USPQ 693, 695 (TTAB 1985). Written works include books or columns, and may be presented in print, recorded, or electronic form. Likewise, sound recordings may be presented in recorded or electronic form.

However, the name of the author or performer may be registered if:

• (1) It is used on a series of written or recorded works; and
• (2) The application contains sufficient evidence that the name identifies the source of the series and not merely the writer of the written work or the name of the performing artist.

If the applicant cannot show a series, or can show that there is a series but cannot show that the name identifies the source of the series, the mark may be registered on the Supplemental Register in an application under §1 or §44 of the Trademark Act. These types of marks may not be registered on the Principal Register under §2(f).

See also TMEP §1301.02(b) regarding personal names as service marks.

How To Trademark Author Names – Part III

In the recent TTAB decision of In Re Ethan A. Arnold, the Applicant, who went by the name “Blatancy” failed to convince the TTAB that he controlled the nature of the goods at issue, namely, musical CD recordings.  The TTAB stated that the appearance of various other party names in the evidence submitted raised questions about exactly who controlled the quality of the CDs.

Interestingly, there is an easy way for an applicant who truly believes that he or she does in fact control the nature of the goods involved.  If the applicant maintains control over the quality of the goods because the goods are published or recorded directly under the applicant’s control, the applicant may submit a verified statement that “the applicant publishes or produces the goods and controls their quality.”  In the case being discussed, the applicant refused to do this (this raises questions that simply can not be answered based on a reading of the case).

An alternative to showing control over the nature of the goods is showing that there has been promotion of the author’s name such that it has become recognized as a source indicator for a series of works.  This is very difficult to show as exemplified in the case In re First Draft, 76 USPQ2d 1183, 1191 (TTAB 2005).  In that case the author, who used the pseudonym FERN MICHAELS, was unable to make the required showing. The TTAB held that FERN MICHAELS identified only the author and did not function as a mark to identify and distinguish a series of fictional books because the “evidence of promotion” was “indirect and rather scant,” despite applicant’s showing that the name had been used as an author’s name for 30 years; that 67 separate books had been published under the name, and approximately 6 million copies had been sold; that the book jackets listed the titles of other works by Fern Michaels and promoted her as a bestselling author; that the author had been inducted into the New Jersey Literary Hall of Fame; and that there was a www.fernmichaels.com website.

by Trademark Attorney Gene Bolmarcich

gxbesq1@gmail.com

The post How To Trademark Author Names and Artist Names appeared first on Trademark Attorney | Register A Trademark Online. Gene

How To Get a Registered Trademark

How to get a registered trademark, is a question that arises when one wants to register a trademark that has both literal and design elements in it.
How To Get A Registered Trademark – Words or Design? 

One of the most misunderstood concepts in trademark registration law is the legal difference between a “standard character” trademark registration for words, letters, numbers, and certain symbols (punctuation, etc.) recognized by the USPTO as standard characters, or combinations thereof, and a “special form” trademark registration that includes any of the aforementioned standard characters. Although the USPTO uses the above terminology, I will use, herein, the more common terms ”word marks” and “design marks” respectively.  “Pure” design marks – those that have no words (i.e. logos) – are not considered herein as they do not present a choice of form when applying for trademark registration. A design mark may comprise only stylized words or may additionally include separate design elements (whether integrated with the words or not). Although I use the term “stylized words”, there is a great variability in the degree of stylization that words can embody in design marks. The mere fact that a mark is a design mark means that any words included in the mark must be stylized, given the many ways a word may be displayed (if only considering the number of fonts in existence!).

The issue analyzed herein is the form in which a design mark (excluding pure design marks, as noted above) should be registered, and the differences in terms of the legal scope of protection afforded each form.  Should you register a word mark or a design mark instead? As you might surmise the answer is that it depends on the mark in question and the landscape of “similar” existing trademarks. This question is important when money is an issue. Although it is certainly an option to register a trademark in multiple forms, trademark registration fees are not insignificant, especially when multiple classes of goods and services are involved.

As always, a picture is worth a thousand words:

Design mark comprising stylized words only:

Design mark comprising stylized letters and other integrated design elements:

Design marks comprising stylized words and other separate design elements:

It is well settled that design marks are “limited” (in terms of the subject matter that the registration covers) to the exact manner in which they appear in the registration and thus, when comparing them to other marks in a likelihood of confusion analysis in legal proceedings involving trademark registration, the proper comparison considers only the mark as it appears in the registration.  What is not as well settled is how to treat a word mark when comparing it to another mark (whether the other mark be a design mark or another word mark). In Citgroup v Capital City Bank Group, a March 2011 case from the Court of Appeals for the Federal Circuit (CAFC), the Court gave some further clarity to this issue but fell short of defining the precise rule.  In a subsequent case, exactly one year following Citigroup, the CAFC had yet another opportunity to consider this issue and again passed on it, leaving some uncertainty as to the scope of protection to be afforded a word mark registration.

Before Citigroup, the TTAB (the court that hears appeals from decisions of the USPTO on trademark registration and also rules on trademark opposition proceedings) applied a “reasonable manners” test to decide the scope of protection to be afforded a word mark.  In accordance with this test, when comparing the word mark with another mark in a likelihood of confusion analysis (“likelihood of confusion” being the test for determining whether a trademark can be registered in light of a prior similar mark), the TTAB would consider all “reasonable manners” in which the word mark could be depicted.

For example, in Citigroup, Citigroup was opposing the application of Capital City Bank for the word mark “CAPITAL CITY BANK” based on Citigroup’s registration for the word mark “CITIBANK”.  In ruling that there was no likelihood of confusion between these two trademarks, the TTAB stated that one possible depiction of CAPITAL CITY BANK, whereby the word “CAPITAL” would be diminished in size, was NOT a reasonable manner of depicting the CAPITAL CITY BANK word mark, and thus it could not consider this possibility as Citigroup had asked the court to do.   One of the reasons for this conclusion by the TTAB was that it did not think that Capital City would want to emphasize such a non-distinctive component of its mark (i.e. “CITY BANK”) due to the large number of other trademarks in the banking industry that contained the words “City Bank”.

In the appeal of this decision by the TTAB, the CAFC took this as an opportunity to strike down the “reasonable manners” test. Even though the CAFC held that the TTAB applied the wrong test and, by doing so, improperly limited the scope of the CAPITAL CITY BANK mark, it nonetheless still agreed with the ultimate conclusion of the TTAB that the marks were dissimilar enough (for other reasons) so that Citigroup’s opposition was dismissed.

Without defining a new test, the CAFC did hold that the “reasonable manners” test was overly restrictive, which means that a word mark will now be given an even broader scope of protection against subsequent trademarks in proceedings involving the right to registration.  On the flip side it also means that word mark registrations will be more difficult to obtain because they might be deemed to encompass an existing design mark under the new, as of yet undefined, test.  All we know about the new test is that it gives more latitude than the “reasonable manners” test in determining how a word mark might be envisioned for comparison purposes (query: would the test include even “unreasonable manners” of depicting the word mark?)

In a case exactly one year after Citigroup, the CAFC once again had an opportunity to define the rule that would replace the “reasonable manners” test but failed to do so because it was unnecessary in the context of the case. In the case of In Re Viterra, the applicant’s mark, XCEED, was refused registration based on an existing registration for the design mark shown here:

The TTAB applied the “reasonable manners” test in comparing XCEED to the X-Seed design mark and held that a depiction of the mark XCEED whereby the letter X would be larger than the “CEED” portion of the mark was a reasonable manner of depicting the word mark XCEED (the TTAB decided this case before the CAFC’s ruling in Citigroup thus it still applied the reasonable manners test).  Although not going so far as to say that the exact registered design mark was a reasonable depiction of XCEED, the TTAB still held that the reasonable manner of depicting XCEED whereby the X is larger would nonetheless be confusingly similar to the registered design mark, especially when considering the other similarities between the marks.

On appeal, the CAFC said that the TTAB essentially got the final decision of confusing similarity correct notwithstanding that it applied its old reasonable manners test, and so there was no need to define a new test in order to determine the outcome of this case (i.e. a newly defined test would have considered an even more diverse group of visual depictions of XCEED, and so the outcome would not have been different).

What does this all mean for registration strategy? As always, given a mutually exclusive choice, a word mark is preferable to a design mark because it will “cover” (i.e. extend the registration benefits to) future forms of the mark that you may use and thus it has a longer shelf life than a design mark.  Due to the abandonment of the “reasonable manners” test, word marks are now even more beneficial as they will be given a broader scope of protection vis-à-vis design marks.  As mentioned earlier however, they are going to be more difficult to obtain.

The only downside to a word mark registration is that it will never be deemed to “cover” the non-literal portions of a mark (the stylization of the words) or any separate design elements in a logo, when the mark it is being compared to does not contain any literal elements that are within the scope of the literal elements of the word mark registration. So for example, if Coca Cola only had a word mark registration (assume it is not a famous mark, as that could change the analysis), they would not be able to use the rights in that word mark registration to challenge a mark having very different literal component (e.g. Pepsi) but utilized the exact script form of the Coca Cola design mark as used (but not registered in this hypothetical).

Although that has always been the basic rule with regard to word marks, one must now wonder how the new approach that gives wider latitude to word marks would deal with such a situation.  Because the CAFC has said it is proper to look at the forms of the marks in actual use to help guide a court in determining what are the possible ways to consider that a word mark might appear, what is to stop a court from considering a word mark registration to cover the stylized form as it is used, and then to compare that stylized form with the other stylized mark?  Although literal elements are considered dominant over design elements in comparing two marks, there is no absolute rule that two stylized marks for different words can never be confusingly similar.

The take-aways are as follows.  Whenever there is some non-literal aspect of a mark that you want to protect aggressively apart from the words, it’s a good idea to get both a word mark and a design mark registration for the trademark in order to get the broadest protection (there might even be justification for an additional registration covering just the stylized words).  Also, where there is a separate design component (e.g. the Cisco or Sun marks above), the design mark should be registered because that design component will not likely be considered part of any mark variation that the new test would include in the scope of protection for that mark.  This is especially true where the literal component is not highly stylized, in which case a design mark provides sufficient protection for the word as it is actually used (plus other variations).  Finally there are some design marks for which certain partial portions of the design may be registered.  This comes down to whether the design portion makes a “separate commercial impression”…quite possibly a subject for another paper.
by Trademark Attorney Gene Bolmarcich

gxbesq1@gmail.com

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An interesting dispute caught my attention recently while perusing the publicly available database of TTAB proceedings (hey, don’t judge me). It seems that one of Best Buy’s claimed trademarks is the color of the shirts worn by its in-store employees based on twenty years of use.  Best Buy also claims that these workers have become known both inside and outside of the company as (appropriately enough) “Blue Shirts”.

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by Trademark Attorney Gene Bolmarcich

gxbesq1@gmail.com

The post Very Cool Trade Dress For a Yogurt Shop appeared first on Trademark Attorney | Register A Trademark Online. Gene