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Monthly Archives: February 2016

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Are Registrations for Product Configuration Trademarks for Suckers?

Posted in Fair Use, Famous Marks, Food, Idea Protection, Infringement, Non-Traditional Trademarks, Product Configurations, Trademarks, USPTO

As a kid, I loved candy. But as an adult, who happens to be an intellectual property attorney, I still love candy. So you can bet your sweet tooth that I was feeling a sugar rush when I came across a pending application to register the claimed mark shown below: The application was filed by… Continue Reading

Dude, It’s Gotten GNARLY for Beer and Wine

Posted in Agreements, Almost Advice, Branding, Infringement, Marketing, Product Packaging, Trademarks, TTAB, USPTO

Trademark issues regarding breweries and wineries are increasingly intertwined as both breweries and wineries grow, flower, and spread out throughout the country.  I have talked before about the issues relating to a perceived likelihood of confusion between marks on beer used by breweries and marks on wine used by wineries (see here, here, and here)…. Continue Reading

Make “Trademark” Great Again: No More Verbing!

Posted in Advertising, Articles, Branding, Idea Protection, Marketing, SoapBox, Trademarks

-Wes Anderson, Attorney In the media, misstatements and misunderstandings of trademark law are legion.  Even the New York Times counts itself among the latest offenders. The Old Grey Lady’s recent article about presidential candidate and real estate mogul Donald Trump closed with the following: Records show just one Goldman employee, a financial adviser in the wealth management division, has donated… Continue Reading

Energizer Bunny to Drain Duracell’s Battery?

Posted in Advertising, Agreements, Articles, Branding, Contracts, Dilution, Famous Marks, Goodwill, Infringement, Law Suits, Marketing, Non-Traditional Trademarks, Trademarks

When I first heard last week about a trademark infringement lawsuit between Energizer and Duracell over pink bunny icons, my first thought was, Duracell is The Copper Top battery brand, what would motivate Duracell and how could Duracell possibly believe it had the legal right to use a pink bunny character in advertising and on… Continue Reading

The Strategic Use of TTAB Proceedings to Advance Trademark Registration Efforts

Posted in Almost Advice, Articles, Trademarks, TTAB, USPTO

Yesterday we wrote about how petitions for partial cancellation under Section 18 of the Lanham Act can be creative and powerful tools when an applicant is confronted with likelihood of confusion registration refusals under Section 2(d), based on over-broad federal registrations. Today, we’re speaking about this important tool that should be found in any trademark… Continue Reading

Thinking Outside Section 2(d) Refusals

Posted in Articles, Infringement, Loss of Rights, Trademark Bullying, Trademarks, TTAB, USPTO

Section 2(d) of the Trademark Act is the statutory basis for refusing registration based on likelihood of confusion with another mark. It is invoked on an ex parte basis by USPTO Examining Attorneys, and it is also raised in the context of inter partes cases between adversaries. When an applicant seeking to register its mark… Continue Reading

A Fine Mess: YouTube’s Reaction to REACT

Posted in Advertising, Articles, Branding, Fair Use, Food, Infringement, Marketing, Social Media, Social Networking, Television, Trademark Bullying, Trademarks

-Wes Anderson, Attorney In the world of YouTube, subscriber count is king. With over 14 million subscribers, the Fine Brothers seemed at the forefront of new media. But earlier this month, the Internet’s collective scorn for a trademark portfolio sent the Fine Brothers’ subscription count tumbling. If you haven’t been following Benny and Rafi Fine of the Fine Brothers… Continue Reading

Nominative Fair Use, as Illustrated by Colorful Balls

Posted in Advertising, Branding, Fair Use, False Advertising, Infringement, Marketing, Non-Traditional Trademarks, Sight, Television, Trademarks

If you watch any amount of T.V. or happened to catch either of the AFC or NFC Championship games last weekend, you’ve probably seen one of the recent cell phone carrier ball commercials. Initially, Verizon created this commercial, wherein a series of colorful balls rolling down a ramp are used to describe Verizon’s apparently superior… Continue Reading

Negative Look-For Advertising Statements

Posted in Advertising, Almost Advice, Articles, Branding, Look-For Ads, Loss of Rights, Marketing, Non-Traditional Trademarks, Patents, Product Configurations, Sight, Technology, Trademarks

Loyal readers know how important look-for advertising can be in making the difference between establishing trademark ownership in the shape or configuration of a product, and being left with nothing but a goose egg (as opposed to a Big Green Egg). That’s not to say, the clunky words “look-for” are required, yet something equivalent and… Continue Reading