DuetsBlog Collaborations in Creativity & the Law

Tag Archives: Federal Registration

Owning a (Wholesome) Four Letter Word

Posted in Advertising, Articles, Branding, Fashion, Marketing, Trademarks, USPTO

I’m not talking about those kinds of four letter words (by the way, we’re still awaiting the Brunetti decision to learn their fate), so today I’m talking about this wholesome kind: Inquiring minds may wonder (and interested alumni) how the University of Iowa might go about owning federally-registered rights in the word IOWA to convert that ™ symbol… Continue Reading

“Hook and Loop” Meet Chutes and Ladders

Posted in Articles, Branding, Genericide, Loss of Rights, Marketing, Technology, Trademarks

Nearly everyone in the IP community is talking about the hilarious viral Velcro music video released last week. Hat tip to Patently-O, Martha, and Brett. The “behind the scenes” video is here. We’ve spoken before about nervous trademark types, behind the scenes doing their level best, and taking steps to try to avoid unwanted genericide of… Continue Reading

Federal Trademark Registration, the First Amendment, and Freedom of Speech: Part I

Posted in Articles, Branding, First Amendment, Marketing, Trademarks, USPTO

Looking forward to sharing the podium with Joel MacMull of the Archer firm (counsel for Simon Tam, where our friend Ron Coleman is a partner) to discuss “Trademark Registration and the First Amendment,” on September 28th at the Midwest IP Institute in Minneapolis. As a drum roll leading up to that discussion, and since there… Continue Reading

NASCAR Brand Gasoline at a Pump Near You?

Posted in Advertising, Articles, Branding, Contracts, Marketing, Non-Traditional Trademarks, Sight, Smell, Taste, Trademarks, USPTO

With the Strafford Publications webinar later today discussing the Lanham Trademark Act’s “Use in Commerce” requirement, with some of my favorite panelists no less, the topic has been on my mind, even when pumping gas into my rental car in Houston, Texas, this past weekend: So, what do folks think, does this photograph of a… Continue Reading

Trademark Goods/Services Limitations, Why Not Exclude Any Federal Unlawful Activities?

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

Those involved in the cannabis industry — where certain activities are legal in some States, but unlawful under federal law — continue to search for creative strategies and solutions in protecting their trademarks and service marks. Picking up where Tim left off last Friday, I’ve been giving some thought as to how the Herbal Access… Continue Reading

Standard Character Trademark Overbreadth

Posted in Articles, Infringement, Trademark Bullying, Trademarks, TTAB, USPTO

When we hear the word “overbreadth” in close connection with the word “trademark,” the often discussed “trademark bullying” topic will frequently come to mind. Yet, discussions about “trademark overbreadth” are not limited to exaggerated and unrealistic trademark claims by a trademark owner. We previously have discussed how one might deal with prior registrations that contain… Continue Reading

Madonna Not Scandalous for Wine Anymore

Posted in Articles, Branding, First Amendment, Marketing, Trademarks, TTAB, USPTO

The headline might be considered old news to some, but since intellectual property attorneys from around the world will be descending upon Minneapolis for the remainder of the week, and since I’ll be speaking tomorrow at the American Intellectual Property Law Association Spring Meeting at the Minneapolis Hilton, on the history and public policy behind… Continue Reading

Self-Inflicted Cuts That Can Kill a Trademark?

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

We have some razor sharp readers and guest bloggers. We’re deeply thankful and especially grateful when our readers and guest bloggers send us real life illustrations of marketing pitfalls we’ve identified, sliced and diced here on DuetsBlog. They provide more great teaching tools. Hat tip to our own James Mahoney of Razor’s Edge Communications for… Continue Reading

PATRÓN Tequila Bottle Design Enforcement?

Posted in Advertising, Articles, Branding, Dilution, Famous Marks, Infringement, Marketing, Non-Traditional Trademarks, Product Packaging, Sight, Trademarks, TTAB, USPTO

When we write about non-traditional trademark enforcement here on DuetsBlog, we almost always are referring to the protection of non-traditional marks like product configurations, product containers, product packaging, color marks, scent marks, tactile marks, and other non-verbal indications of source for a product or service. But, today we’re adding a little twist to our normal… Continue Reading

Easy Registration Refusal, See Park ‘N Fly

Posted in Articles, Branding, Infringement, Marketing, Trademarks, USPTO

Trademark types know all about Park ‘N Fly, whether they travel or not. That’s because it is more than a nearly fifty year old airport parking and travel service brand and federally-registered service mark, it is short-hand for a famous U.S. Supreme Court trademark case from 1985. In that decision, the Supreme Court recognized the… Continue Reading

Trademarks That Violate Public Policy

Posted in Articles, Branding, First Amendment, Law Suits, Marketing, Trademarks, TTAB, USPTO

As our friend John Welch reported last week, the place to be on March 10, 2015, is Washington, D.C., at the 25th Annual “PTO Day,” sponsored by the Intellectual Property Owners Association: John will be part of the panel update on TTAB practice, and I’ll be providing the overview of Section 2(a) of the Lanham… Continue Reading

Samsung Boards Brandverbing Bandwagon

Posted in Advertising, Articles, Branding, Genericide, Loss of Rights, Marketing, Technology, Trademarks, USPTO

Samsung appears to be the most recent brand to board the brandverbing bandwagon with its Galaxy Note 4 advertising campaign, asking the critical question: Do You Note? Samsung has federally-registered in the U.S. the trademark GALAXY NOTE for smart phones, mobile phones, and tablet computers — note the absence of a disclaimer of NOTE, meaning… Continue Reading

Amici Weigh in on “Right to Register v. Right to Use” Trademark Case at Supreme Court

Posted in Articles, Infringement, Law Suits, Trademarks, TTAB, USPTO

More than three months ago, we sounded the alarm about an important trademark case to consider the interplay between the right to register and the right to use a trademark: “Every so often there is a moment when trademark types, marketing types and brand owners need to pay close attention to where the law could be headed. Today, I’m… Continue Reading

(Just) the Right to Register a Trademark

Posted in Articles, Branding, Civil Procedure, Infringement, Law Suits, SoapBox, Trademarks, TTAB, USPTO

Every so often there is a moment when trademark types, marketing types and brand owners need to pay close attention to where the law could be headed. Today, I’m sounding the alarm. If the U.S. Supreme Court decides to follow the advice it recently sought and received from the U.S. Solicitor General (SG) of the Department of Justice, those of… Continue Reading

The Budweiser Bowtie Can Shape Trademark

Posted in Advertising, Almost Advice, Articles, Branding, Food, Marketing, Non-Traditional Trademarks, Product Packaging, Sight, Trademarks, USPTO

Launched a few months ago, it’s called the bowtie can, because it appears to emulate Budweiser’s well-known bowtie brand icon, but the formal description of the Anheuser-Busch beer can at the USPTO is a bit more clumsy and technical: “The mark consists of packaging for the goods, namely, beverage package for the goods consisting of a three dimensional shape of a… Continue Reading

A Floating Feather Suggests What to You?

Posted in Branding, Marketing, Non-Traditional Trademarks, Sight, Trademarks

Recently I happened upon an interesting non-traditional, non-verbal, federally-registered trademark that is sure to inspire multiple naming/branding/design posts for me down the road, and I’m anticipating they’ll be so easy to write, I’ll probably do them while I sleep: So, given that introduction, any guesses as to the brand identified by this floating feather image? Any… Continue Reading

Happiness is a Federally-Registered Mark

Posted in Famous Marks, Food, Mixed Bag of Nuts, Trademarks, USPTO

It should be no surprise that the famous Coca-Cola brand name is federally-registered. One of the many significant benefits of federal registration is the USPTO’s obligation to refuse registration of third party marks that are likely to confuse — most importantly, without the prompting or involvement of the prior trademark registrant. No doubt Coca-Cola will… Continue Reading

OfficeMax’s Rubber Band Ball Brand Symbol

Posted in Branding, Marketing, Non-Traditional Trademarks, Sight, Trademarks

OfficeMax has been sporting its friendly and colorful rubber band ball brand signal on billboard advertising and delivery trucks for some time, but yesterday is the first time I’ve noticed prominent static use of the bouncy rubber band ball as a non-verbal logo on storefront signage positioned next to the OfficeMax brand name (like the… Continue Reading

Seeing Beyond at NeoCon 2012: The Importance of “Policing the Register”

Posted in Infringement, Law Suits, Trademarks

NeoCon is North America’s largest design exposition and conference where thousands of innovative products and resources are showcased for corporate, hospitality, healthcare, retail, government, institutional and residential interiors from more than 700 showrooms and exhibitors. NeoCon 2012 begins next Monday at The Merchandise Mart in Chicago. Thanks to District Court Judge Joan Ericksen of the United… Continue Reading