Strengthening Commercial Identity: Trademarks and Small Businesses
By Paul Beattie | Oct 05, 2012
Somewhere in the suburbs of Seattle, never mind where exactly, there is a little apocryphal, bakery called FRIAR ANGELINO’S. It makes the best bread imaginable – a circle of sourdough, with a flaky outer crust and a warm, spongy interior. Above the entrance is an old weather-beaten sign depicting a rotund, smiling monk, with a bottle of wine in one hand and a loaf of bread in the other. Not long ago, an investor approached the owner. A deal was struck, and now FRIAR ANGELINO’S bakery franchises are springing up throughout the region. The loaves of bread have also begun appearing in supermarkets, wrapped in simple brown paper bearing the bakery’s trademark: the name FRIAR ANGELINO’S and a picture of a fat, smiling monk.
Blue Ivy Carter Gets Star Treatment From The Feds
By Rimon Admin | May 21, 2012
In what world do parents name their kid Blue Ivy? That could only happen in a world where a usually reputable media outlet devotes an entire webpage to the child, which could only happen in a world where an unauthorized U.S. Federal trademark registration application for a mark comprised in part of the child’s name gets filed, examined and abandoned all in 11 days. Why, this world looks a lot like Hollywood; not the city, mind you, so much as the mentality.
The LAST BEST PLACE That Doesn’t Need a Trademark Registration
By Rimon Admin | May 21, 2012
Why obey federal trademark law (aka the Lanham Act) when you can just pass a new law that exempts you from it? Montana’s Senators sure are slick and I’m betting the Last Best Beef wishes it had a beef with any other State besides Montana!
Instead of federally registering and enforcing its rights in Montana’s slogan, THE LAST BEST PLACE, in 2005 Montana Senators Conrad Burns and Max Baucus got Congress to pass a law prohibiting the use of “federal funds” for trademark registration of the term during the following fiscal year. Never mind that the USPTO is a fully user-fee funded agency. This provision was included in an appropriations bill to prevent any funds that the government allocates to the PTO — as in all of its user fees — from being used to register THE LAST BEST PLACE.
Apple’s Continued Attempts to Trademark “App Store” may Fall Short
By Rimon Admin | Jul 08, 2011
Earlier this year in March, Amazon launched the Amazon Appstore, which was then a new avenue for buying Android apps. Almost immediately after the launch, Apple proceeded to file a trademark infringement suit against Amazon over the usage of the “Appstore” phrase. The case is contingent upon whether “app store” can be deemed a generic term that simply describes any app marketplace, as opposed to one of Apple’s trademarks – a unique, company-specific element that identifies the company’s brand and distinguishes its products and services from that of other companies.
Geek in Trouble — Best Buy Believes Geeks will Get it in Trademark Infringement Dispute with Newegg
By Rimon Admin | Jun 24, 2011
Being that my brand is BrandGeek®, when I saw the Wall Street Journal headline, “Now That Everyone Wants to Be a Geek, Lawyers Have Been Called,” I thought trouble surely was headed my way. Thankfully, I’m not pedaling electronics, nor religion via VW Beetle, so it appears I’m safe. For now. Imagine the panic when I first saw the headline in an e-mail from my friend Julie Markham at Greenlighted. I could only imagine tomorrow’s headline, “Trademark Attorney Tried for Infringement,” but I knew I’d done my due diligence, so it had to be something else.
ICANN Approves Open Season on new gTLDs for 2013
By Rimon Admin | Jun 23, 2011
On June 20, 2011, the Internet Corporation for Assigned Names and Numbers (ICANN) approved a new generic top-level domain (gTLD) program, first introduced in 2008. The program will greatly increase the number of gTLDs allowed for use on the internet, which is currently limited to 22 (such as .com, .org, and .net).
Interpreting the Startup Visa Act
By Rimon Admin | Jun 22, 2011
On March 14, 2011, Senators John Kerry and Richard Lugar introduced a bill titled the Startup Visa Act of 2011, which is an updated version of a 2010 bill. If passed, the act would provide temporary work visas to various kinds of foreign workers if certain financial benchmarks are met.
NAD Teaches TransFair USA to fine tune Fair Trade Seals & Asks Avon to Amend Advertising
By Rimon Admin | Jun 20, 2011
As discussed in my December 13, 2010 post, the National Advertising Division (NAD) of the Council of Better Business Bureaus (BBBs) offers a streamlined, self-regulatory mechanism for remedying false advertising claims made in nationally distributed advertisements. While NAD has a 95% success rate, those advertisers who fail to follow NAD’s recommendations may find themselves before the FTC upon NAD’s recommendation.
On February 16, 2011, I reported on NAD’s recommendation that Nano-Tex cease making several (green and other) advertising claims in connection with three of its fabric coating products. On January 24, 2011, I discussed NAD’s recommendation that Sherwin-Williams modify its no-VOC claims for its HARMONY brand paints.
Senate Passes Patent Reform Bill
By Rimon Admin | Mar 10, 2011
The Senate recently passed "The America Invents Act" which, if completed, would be the first major overhaul to U.S. patent law in more than half a century.
Has the PTO Gone to Pot?
By Rimon Admin | Aug 10, 2010
Pipe dreams of trademark protection for marijuana go up in smoke . . .
On April 20, 2010 the USPTO issued a federal service mark registration to Sunny Chan d/ba Good Leaf Collective for the mark GOOD LEAF COLLECTIVE for "Retail store and on-line retail store services featuring medical marijuana". Ironically (and probably much to the delight of Mr. Chan), April 20 is a counter-culture holiday amongst marijuana users. Unfortunately for Mr. Chan and the nearly 100 other applicants who are waiting for the USPTO to issue registrations for their marijuana related products and services, on July 20, 2010 the PTO had a change of heart and the applicant's pipe dreams may have gone up in smoke.
On July 20, 2010, the USPTO sent Mr. Chan a letter informing him that his federal service mark registration was issued mistakenly and has since been canceled. The letter continues to state that Mr. Chan's application has been restored to pendency and the file returned to the Examining Attorney to issue a refusal.
In a related twist, the USPTO publishes a Manual of Acceptable Identifications of Goods and Services on its website for use by federal trademark registration applicants . According to a July 19, 2010 WSJ article, on April 1, 2010 the PTO approved an ID for "Processed plant matter for medicinal purposes, namely medical marijuana". The USPTO offers a public service whereby applicants (or their counsel) can suggest IDs to be added to the manual. I have used this service many times to assist clients in the sustainabiltiy space get their innovative product and service descriptions pre-approved by the PTO. Apparently, someone suggested the medicinal marijuana ID, which the PTO approved given that there are fifteen states in which medical marijuana is legal (AK, CA, CO, DC, HI, ME, MI, MO, NV, NJ, NM, OR, RI, VT, WA). The addition of marijuana to the manual apparently created a rush on the PTO with several new applications filed for marijuana and marijuana related products and services. Apparently, the marijuana ID was removed in mid-July admist questions from the Wall Street Journal about its prudence.
Thus, for now, legal medical marijuana growers and purveyors will have to rely on common law rights, or use broader categories in their trademark applications -- such as dried plants or agricultural seeds -- to protect their trademarks nationwide.