Archive

Archive for the ‘Trademark Registrations’ Category

Do Not Try Attempt to ‘Trademark’ Covfefe

June 12th, 2017 Alexander No comments

On Wednesday, May 31st, at 12:06 a.m., President Donald Trump tweeted the following: “Despite the constant negative press covfefe”- and that was it. However, at 5:50 a.m., the tweet was deleted.

At 8:49 a.m., Kenneth L. Gallman applied at the USPTO to register “Covfefe Coffee” as a federal trademark, stating that he wants to use it to sell coffee.

Eight days after the tweet was posted, twenty-six “Covfefe” trademark applications had been filed. Some of these included clothing, beer, fragrance, and investment advice.

Trademark lawyers expected this to happen. These days, trending words from the news and pop culture are usually superseded by trademark applications. Three days after the Boston Marathon bombing, four applications had been filed for “Boston Strong.” Fifteen applications had been filed for “Nasty Woman”, the phrase Trump used to describe Hilary Clinton during a presidential debate, by the end of last year.

Mark H. Jaffe, a trademark attorney, stated that: “There’s this perception for certain people that this is somehow a money maker, this quote-unquote ‘trademarking it’. But that’s not exactly how it works.” The bulk of the rush-to-register applications are denied by the USPTO, resulting in a waste of time and money.

For more information see Law360.

Joanne Ludovici, a partner at McDermott Will & Emery LLP, said: “These types of trending phrase trademark filings are rarely productive uses of applicant resources because they rarely meet the requirements for federal registration.” In order to obtain a registration, the applicants must demonstrate a bona fide intent to use the term on a specific set of goods and services, which is something the majority of them lack. On top of this, the applicants must demonstrate that the term distinctively distinguishes the applicant as a source of goods.

An examiner stated that: “The public will not perceive the slogan as a trademark that identifies the source of applicant’s goods, but rather only as conveying an informational message: that the consumer or purchaser supports the ideas and messages conveyed by rallies and organizations dedicated to advancing women’s rights.”

For more information, see Law360.



USPTO Not Backing Down From TM Fight With Alabama Judge

October 7th, 2015 Alexander No comments

The U.S. Patent and Trademark Office has found itself in hot water: fighting back against a federal judge who ordered the Trademark Trial and Appeal Board to erase one of its precedent-setting opinions.

An Alabama federal judge approved a private settlement last year between the University of Alabama and a small T-shirt company that required the TTAB to vacate a ruling it handed down against the university. The board refused this summer, arguing the judge couldn’t overturn a ruling without reviewing it.

The TTAB is fighting back, saying such an outcome would allow parties to improperly use private settlements to wipe out valuable administrative case law simply because they don’t like it.

“It’s an interesting situation that I’ve never seen happen before,” said John L. Welch, a trademark attorney with Wolf Greenfield & Sacks PC and an expert in TTAB proceedings.

The case centers on a trademark application filed by a ‘Bama fan, for a logo with a houndstooth pattern bearing the words “Houndstooth Mafia” to be used on T-shirts and hats. The logo was inspired by the signature houndstooth fedora worn by the late, great Alabama football coach Paul “Bear” Bryant during games.

The school filed an opposition at the TTAB to block the registration on the grounds that the houndstooth pattern itself had come to be closely associated with the school such that it owned common law trademark rights to the design.

A panel of TTAB judges strongly disagreed. In a 78-page precedential opinion dismissing Alabama’s case, the board said that even though the houndstooth design was associated with Bryant and the university, consumers don’t see it as the kind of distinctive source designator that Alabama could protect under trademark law.

Even though the two sides quickly settled their dispute when the “Houndstooth Mafia” mark was assigned to Alabama, Alabama still believed that the TTAB’s decision, was “clearly erroneous in a number of material respects” and “should be vacated.”

The TTAB refused to vacate its ruling. The TTAB said Judge Proctor could only overturn the decision with some kind of judgment that the board had made real legal errors. Indeed, Judge Proctor said he had expressly intended to overrule the board’s decision. “The court got it wrong. It wasn’t even in the same ballpark,” Proctor said of the board’s ruling.

Though the judge’s mind appears made up, government attorneys moved to intervene in the case, likely to appeal the decision if he sticks to his guns. And if briefs filed in recent weeks are any indication, they plan to strongly defend the TTAB’s right to keep its ruling.

Most importantly, the government briefs point out that neither party ever ordered the record from TTAB be sent to Judge Proctor for review, meaning he couldn’t possibly have fully reviewed the board’s decision.

Experts say the government has reason to fight: Precedential opinions are hugely important to the wider trademark community and policy goals of the agency, and the TTAB should only be forced to toss them if a judge rules on appeal that they’re legally incorrect — not because two parties say they don’t like them.

“I don’t see how a court can allow two parties to just throw out a decision,” Welch said. “It’s kind of crazy to let two parties decide that, on behalf of everyone in the country, ‘We don’t like that decision, so we’ll give you some money and we’ll wipe it off the books.’”

For more information, see Law360.



Judge Recuses Herself In Cochran Firm Trademark Suit

November 19th, 2014 Alexander No comments

A California federal judge on Monday recused herself from a trademark dispute between The Cochran Firm PC and a former partner, Randy McMurray, after acknowledging that she had heard a Cochran Firm associate speak about its structure, an issue that’s at the heart of the former partner’s argument that the trademark is invalid.

Johnnie Cochran and his fellow partners changed the name of their law firm to The Cochran Firm in 2004 and registered the name with the U.S. Patent and Trademark Office in 2005. McMurray was hired with the firm in 2000 and became a partner in 2003.

In 2007, with The Cochran Firm’s blessing, McMurray formed The Cochran Firm Los Angeles LLP. But after years of attempts to negotiate a formal agreement between the firms, The Cochran Firm sent McMurray a cease-and-desist notice in 2012, saying he was no longer allowed to use the Cochran Firm mark or anything similar. McMurray allegedly ignored the notice and continued to use the name.

McMurray alleges he was promised continued use of Cochran’s name in exchange for assuming the firm’s Los Angeles office. The Cochran Firm has disputed McMurray’s claims, saying he refused to sign partnership agreements with the national firm.

McMurray then sought to disqualify U.S. District Judge Beverly Reid O’Connell after learning that she had been present to hear statements made by a Cochran Firm associate. The associate stated during a seminar attended by Judge O’Connell that the Cochran Firm is a national office — a claim McMurray disputes — making Judge O’Connell a witness to a disputed evidentiary fact, according to his motion.

During the seminar, which was on the topic “Civil Rights Cases” and organized by the Consumer Attorneys of Los Angeles Association, the associate said that she worked “at The Cochran Firm in Los Angeles,” that “The Cochran Firm is a national office,” that “we get tons of civil rights cases” and that “in our office, we get a lot of calls” from consumers.

McMurray’s motion states that the associates exuberance in making these public statements could give a reasonable person the impression that it was a deliberate attempt to stage a performance or a ‘preview’ before the judicial officer presiding over this action.

“The court concludes that an appearance of bias may be raised if the court were to possess personal knowledge of statements made regarding the structure of the Cochran Firm,” Judge O’Connell said.

Whether The Cochran Firm is a national office or a network of partnerships is currently being considered. In May, the appeals court left in place a preliminary injunction blocking McMurray from using attorney Johnnie Cochran’s name for his own firm, but remanded the case so the lower court could reconsider McMurray’s unclean hands defense.

That defense alleges that The Cochran Firm’s ownership of the Cochran mark is invalid because it committed fraud on the U.S. Patent and Trademark Office by misrepresenting itself as a single law firm partnership.

An attorney for The Cochran Firm stated that while she thought the judge’s recusal was unnecessary, she and her clients respected her decision.

However, in its May opinion, the Ninth Circuit ruled that the structure of The Cochran Firm’s business “is important in assessing whether [the firm] has unclean hands.”

“Specifically, [The Cochran Firm] may be misusing the trademark to deceive the public into believing it is a single, national firm, when in fact it is a network of separate partnerships,” the panel wrote.

For more information, see Law360.



Trademark Infringement

April 28th, 2010 admin No comments

Trademark infringement is the unauthorized use of a trademark. The owner of a registered trademark may bring legal action against anyone who uses his trademark without permission. However, a registered trademark is not always required. The owner of a common law trademark may also bring legal action against unauthorized users, but an unregistered trademark is only protected within the geographical area within which it is being used or in the geographical areas into which it may reasonably expect to expand to.



Trademarks

April 26th, 2010 admin No comments

Trademark is another form of intellectual property. A trademark typically takes the form of a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks that comprise of marks which do not fall into these standardized categories.

A trademark is a distinctive sign or indicator used by an individual, business, organization, or legal entity to identify their products or services to consumers. A trademark is a unique identifier and it serves to distinguish ones products or services from that of other entities.