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Tag Archives: Lanham Act

Pepsi Gets Grip on MLB All-Star Extravaganza

Posted in Advertising, Articles, Branding, Food, Marketing, Non-Traditional Trademarks, Sight, Trademarks, USPTO

How cool is it to have the MLB All-Star Game and related events, right here in Minneapolis? Very. As the advertisement shows, Pepsi is playing a large role in the event, as the “Official Soft Drink” of the MLB All-Star Game. As attractive as the ad is, sadly, I suspect that only trademark types and… Continue Reading

It’s ‘MERICA Weekend

Posted in Branding, Famous Marks, Trademarks, USPTO

July 4th weekend usually makes me think of three things:  the cabin, my favorite random historical facts about Presidents (did you know this?), and the Declaration of Independence.  In fact, I always encourage people on July 4th to read the Declaration of Independence, which includes one of the first usages of one of the most… Continue Reading

Red Solo Cup Inspiration?

Posted in Audio, Branding, Dilution, Goodwill, Marketing, Non-Traditional Trademarks, Trademarks

Marketing types, it may well be obvious to some, but it is always important to consider the source of inspiration for the branding and marketing of the products and services you promote. At least for those who follow country singer Toby Keith, with a Costco retail end-cap display like this, it’s hard not to assume where the… Continue Reading

Stealing Trademarks Can Land You in Jail

Posted in Law Suits

Trademarks and branding are worth a lot of money to a company.  The Fourth Circuit recently addressed the serious issue of trademark counterfeiting.  This form of trademark infringement occurs when a company manufactures goods (or performs services) that are identical to those of the trademark owner, and then passes them off as the authentic goods… Continue Reading

Co-opting Political Symbols for Commercial Use

Posted in Trademarks

–Sharon Armstrong, Attorney The Lanham Act prevents applicants from registering any of a number of words and devices as marks, including immoral or scandalous matter and flags or coats of arms.  In terms of the latter exclusion, such a prohibition makes sense; without it, for example, any merchant could use an American flag to hawk… Continue Reading

Intellectual Property Plaintiff Admits to Being Ignorant?

Posted in Copyrights, Goodwill, Infringement, Law Suits, Non-Traditional Trademarks, Trademarks

About a week ago another interesting federal intellectual property case was filed in the District of Minnesota: Fantasy Flight Publishing, Inc. v. Puffin Software et al. Although the four count complaint includes a federal unfair competition claim, a Minnesota deceptive trade practices claim, and a common law unjust enrichment claim, the case really appears to be centered around the copyright infringement… Continue Reading

The Galleria of Retail Jewelry Store Taglines

Posted in Advertising, Branding, Goodwill, Marketing, Television, Trademarks

 On this Valentine’s Day, after enduring weeks of the same endless running of national retail jewelry chain advertising, leading up to this annually celebrated day of love and affection, I thought it might be fitting to try a few retail jewelry store taglines on for size and examine – at least from a trademark perspective – their protect-ability and likely placement on the… Continue Reading

What Does “Trademark” Mean to You?

Posted in Trademarks

Inherent in the question posed by the title of this post is the fact that the word "trademark" has more than one meaning, in fact, multiple meanings in the English language. Yet, some trademark types would have you believe that there is only one true meaning to the word "trademark" and that this meaning is not… Continue Reading

Does Size Matter, When Identifying a “Trademark Bully”?

Posted in Counterfeits, Infringement, Law Suits, Trademark Bullying, Trademarks

Who says that being a large corporate trademark owner is one of the prerequisites to earning the emotionally-charged, pejorative, and ill-defined label “trademark bully“? Well, the original directive to the USPTO appears to assume that “trademark bullying” is a one-way street, disfavoring only large corporate trademark owners, and ignoring the possibility that individuals and small businesses are equally capable of deserving… Continue Reading

Trademark Bullies Beware the Seventh Circuit

Posted in Infringement, Law Suits, Trademark Bullying, Trademarks, TTAB

Actually, not just the Seventh Circuit Court of Appeals (governing appeals from the federal district courts in Illinois, Indiana, and Wisconsin), but the Seventh Circuit is the most recent to reaffirm that our current legal system does, in fact, provide protection against real “trademark bullies” — and more generally — those who abuse the legal process with unfounded Lanham Act claims…. Continue Reading

IP Grammar . . . and Those Who Cringe About It

Posted in Mixed Bag of Nuts

             Last September, in my blog post entitled "What Does Trademarked Mean to You?," I wrote: More than a few trademark types cringe when their clients or others say things like "let’s trademark it," "they didn’t trademark their logo," or "we don’t want to trademark this name," and, when they ask questions like "is it trademarked?"… Continue Reading

Seth Godin on Trademark?

Posted in Branding, Dilution, Famous Marks, Idea Protection, Infringement, Law Suits, Marketing, Search Engines, Trademarks

      Seth Godin has an amazing knack for creating and spreading ideas that matter, mostly really good ones, by the way. I always look forward to his daily riffs and I have been known to spread some of his important ideas too when they overlap with things I happen to care a lot about. When it comes to Mr…. Continue Reading

Trademark Specimens of Use: A “Necessarily Subjective” Standard

Posted in Advertising, Branding, Food, Marketing, Product Packaging, Trademarks, TTAB

John Welch, over at the TTABlog, reported on a recent trademark specimen of use case (pdf here); one near and dear to my heart, since I represented the Applicant seeking to register the composite word-only mark DELI EXPRESS SAN LUIS for sweet rolls. At issue in the case was whether the product label specimen (appearing below) shows use of the… Continue Reading

False Advertising Claims on the Rise

Posted in Advertising

There was a very interesting article in the New York Times this weekend worth reading – Best Soup Ever?  Suits Over Ads Now Seek Proof. The article addresses several recent issues raised by companies against competitors over statements or claims being made in advertisements.  Specifically, companies are challenging the truth or implied truth in competitive… Continue Reading

What Does “Trademarked” Mean to You?

Posted in Marketing, Trademarks

               More than a few trademark types cringe when their clients or others say things like "let’s trademark it," "they didn’t trademark their logo," or "we don’t want to trademark this name," and, when they ask questions like "is it trademarked?" or "is that trademarked software?" or "did we ever trademark our logo?" or "should we… Continue Reading

Medline Industries, Inc. v. 3M Company (False Advertising Complaint Attached)

Posted in Advertising, False Advertising, Law Suits, Marketing

v.                                       (Medline Sterillium Rub)                                          (3M Avagard Surgical Scrub) In a very recent false advertising lawsuit, Medline Industries is all lathered up, alleging that 3M Company is playing dirty in the surgical hand antiseptic marketplace by making false and misleading statements in advertising about 3M’s Avagard brand surgical scrub and Medline’s competing Sterillium Rub brand surgical hand antiseptic. Here is… Continue Reading

New York Court Provides No Assistance To “The Little Blue Box” Company

Posted in Counterfeits, Dilution, Infringement, International, Product Packaging, Sight, Trademarks

I, like most women, want a present in a little blue box from Tiffany & Company (a/k/a Tiffany & Co.) This is not just because the company bears my name (I only wish I were an owner of the company), but because Tiffany & Co.’s exquisite jewelry is associated with the fabulous blue box.  Tiffany &… Continue Reading

Goodbye, Mr. Hughes

Posted in Trademarks

–Sharon Armstrong, Attorney This past Thursday, John Hughes—the mind that created every slumber party-worthy movie of my youth—passed away from a heart attack. Whenever I hear John Hughes’ name, my mind, taking some sort of odd word-association trip, automatically shifts to “The Breakfast Club,” which then makes me think of the Simple Minds song “Don’t You… Continue Reading

How Hot Will This Saucy Trademark Chip Fight Be? Blazin’ Hot? Now, That’s Hot!

Posted in Advertising, Branding, Food, Infringement, Law Suits, Marketing, Sight, Trademarks

There is no question that attempting to own "hot" or versions of "hot" appears to have great value and importance in the marketing world. So, how many original, unique, and memorable ways are there to communicate spicy "hot" anyway? As to memorable, perhaps painfully memorable, Paris Hilton apparently sells designer clothes under her "That’s Hot" brand, and judging from… Continue Reading