DuetsBlog Collaborations in Creativity & the Law

Gone Fishing, in Sin City

Posted in Branding, International, Marketing, Trademark Bullying, Trademarks, TTAB, USPTO

Spring break brings my family to Las Vegas this year; when we made the plans, we never anticipated leaving behind better weather in Minneapolis, especially this time of year. Oh, well. At least it isn’t slowing down our hiking adventures in the amazing Red Rock Canyon area.

Meanwhile, closer to the strip and all the over-the-top commercial activity, one of the notable trends on steroids here in Vegas is the frequent use of lower case branding and visual identity — I’ll be sure to share some photos on this subject  later on. Until then, please remember these oldies, but goodies on the subject:

  1. lower case branding & visual identity
  2. i am ben
  3. Mayo Clinic Logo loses lower case visual identity

Since I’m largely unavailable and figuratively fishing in Vegas at the moment, if you’re looking for some fresh content on the nuances of trademark law, I’d encourage you to check out John Welch’s post today on the TTABlog. In his typically capable fashion, he reports on an appeal of a very interesting likelihood of confusion case involving federal registration of the automobile tire marks MILANZA, POTENZA, and TURANZA.

I remember being surprised a couple of years ago when the USPTO’s Trademark Trial and Appeal Board found MILANZA unlikely to be confused with Bridgestone’s prior POTENZA and TURANZA marks. As John reports, the Court of Appeals for the Federal Circuit just reversed that decision, with this little gem and sober reminder for our naming consultant readership:

“There is a heavy burden on the newcomer to avoid consumer confusion as to products and their source. *** This court has cautioned that there is ‘no excuse for even approaching the well-known trademark of a competitor.’ *** This caution applies here; the prior user is entitled to the traditional protections of its marks of trade, as against newcomers choosing a confusingly similar mark for the same goods.”

Last, as I close out this potpourri post, I’d like to thank Marsha Ajhar of Hartman Craven and Katherine Brown of IBM, for their grand hospitality and the very kind invitation to speak last week at the International Intellectual Property Society’s monthly meeting in New York City, where we had a great discussion on trademark enforcement strategies and avoiding the social media shame-wagon in the context of trademark bullying.