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Category Archives: USPTO

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This Mac Needs a Knife Too

By on Posted in Advertising, Branding, Food, Marketing, Trademarks, Truncation, USPTO

Louis Armstrong first performed “Mack the Knife” in 1956, a year later McDonald’s introduced the Big Mac, and then, Bobby Darin’s version of ”Mack the Knife” became a chart-topper in 1959. So, these events were all before my time, but I’m left wondering if there was any connection between them, back in the day, or whether they were an unrelated coincidence… Continue Reading

Tie Goes to the Brand or Generic Name?

By on Posted in Articles, Branding, Food, Genericide, Law Suits, Loss of Rights, Marketing, Trademarks, TTAB, USPTO

Boys baseball occupied a fair portion of my evenings last week and this past weekend, a game where almost everyone has at least heard: The tie goes to the runner (when it comes to running the bases anyway – because when it comes to the final score the game continues until someone wins, even if it takes twenty… Continue Reading

Happiness is a Federally-Registered Mark

By on 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

Rapala Billboard Ads Continue to Engage

By on Posted in Advertising, Branding, Marketing, Non-Traditional Trademarks, Patents, Product Configurations, Search Engines, Sight, Trademarks, USPTO

It’s that time of year again. The fishing opener in Minnesota is upon us this coming Saturday, so Rapala is sporting its new billboard advertisement. Judging from USPTO trademark filings, it looks like the cutesy “Bass Friends Forever“ tagline is intended to adorn clothing items too. You will recall that we have consistently covered various iterations of the Rapala billboard… Continue Reading

Protecting Non-Functional Product Design Features Through The Entire Life Cycle: From Conception to Grave

By on Posted in Branding, Contracts, Guest Bloggers, Idea Protection, Patents, USPTO

- Jeffrey Stone, Patent Attorney, Winthrop & Weinstine, P.A. IP protection for product designs is typically found in a combination of one or more of the following protective mechanisms: 1. Contracts which are typically used with employees and 3rd parties to prevent loss of novelty as well as provide notice of ownership. Contractual protections such… Continue Reading

Sheetz Flushing Subway’s Footlong TM Hope?

By on Posted in Branding, Food, Infringement, Law Suits, Marketing, Trademark Bullying, Trademarks, TTAB, USPTO

It has been almost six months since oral argument before the TTAB over the question of whether the word “footlong” is a trademark or a generic name for a type of sandwich. What type of sandwich you ask? One about twice as long as a six inch sandwich, let’s say about twelve inches in length, making it, oh, about a foot long. Needless… Continue Reading

Crushing a Perfectly Good Brand Name?

By on Posted in Advertising, Almost Advice, Branding, Genericide, Loss of Rights, Marketing, Trademarks, USPTO

Remember how important it is to stay on the right side of the suggestive/descriptive line when it comes to making proper use of a brand name? We have cautioned about the danger of “taking a suggestive name, mark, or tag-line, and using it descriptively in a sentence on labels, packaging, ad copy, or the Internet,” because… Continue Reading

The Louboutin Color Trademark Controversy Continues

By on Posted in Branding, Copyrights, Infringement, Law Suits, Non-Traditional Trademarks, Sight, Trademarks, USPTO

While watching Lena Dunham stumble in her 6-inch Louboutin red-soled heels during the 70th Annual Golden Globe Awards broadcast, our comments revolved around the fact that her dress was so long, she should have worn slippers instead of stilettos.  We believed that Ms. Dunham should have waited to wear the Louboutin shoes until she was wearing… Continue Reading

Inherently Distinctive Product Packaging?

By on Posted in Branding, International, Marketing, Non-Traditional Trademarks, Product Packaging, Sight, Social Networking, Trademarks, USPTO

Earlier this month, we asked whether [yo]gurt(lab) has an inherently distinctive interior restaurant environment? This week, we’re focused on product packaging, and ask whether Spine Vodka has enough meat on the bones to satisfy the trademark test for an inherently distinctive product package design? This little gem of an image surfaced in a LinkedIn discussion where I learned… Continue Reading

Kickstarting Your Trademark Portfolio

By on Posted in Articles, Branding, Guest Bloggers, Infringement, Law Suits, Marketing, Technology, Trademarks, USPTO

– Draeke H. Weseman, Weseman Law Office, PLLC 68,929 Backers.  $10,266,845 Pledged.  10,266% Funded. The stat line above describes “Pebble,” a project to build blue-tooth enabled watches with e-paper screens that display information from synchronized mobile phones.  The project is the highest funded project in the history of Kickstarter, a crowd-funding platform started in 2009. … Continue Reading

The Fiscal Cliff, Not a Trademark-Worthy Catchphrase?

By on Posted in Advertising, Branding, Marketing, Mixed Bag of Nuts, Trademarks, USPTO

With the constant stream of news reporting about the impending “fiscal cliff,” how can there be no U.S. federal trademark filings containing those two terms, at the moment anyway? Federal intent-to-use trademark applications typically follow popular catchphrases (as Tiffany Blofield, Brent Lorentz and Jon Applebaum have written about before), even political ones: President Reagan’s “Trust, But… Continue Reading

Design Patent Flexes Muscles

By on Posted in Guest Bloggers, Idea Protection, Infringement, Law Suits, Mixed Bag of Nuts, Patents, Product Configurations, Technology, USPTO

- Jeffrey Stone and Brett Klein, Patent Attorneys, Winthrop & Weinstine, P.A. The design patent is perceived by many designers and patent attorneys as being a relatively weak and impotent patent protection mechanism as compared with the better-respected utility patent. It is typically thought that design patents are only useful in protecting against exact copies…. Continue Reading

The Best DuetsBlog Post Ever

By on Posted in Advertising, False Advertising, USPTO

–Susan Perera, Attorney You see it quite often, phrases like “The Best Car in America” or “America’s Favorite Restaurant” used in advertising.  The Trademark Office does not consider the truth of these statements when considering an application for such a trademark  (which could possibly run afoul with false advertising); instead it focuses on the laudatory… Continue Reading

Bits and Pieces of Brands = Trademarks

By on Posted in AlphaWatch, Branding, Food, Marketing, Product Packaging, Trademarks, Truncation, USPTO

  D + What = Diet Coke? Let’s file this brand truncation example under the AlphaWatch category, even though there is some other stuff going on here too. The rendition of the distinctive Diet Coke soft drink can to the left really popped for me, at the point of sale, positioned on a shelf behind the clear-glass door of… Continue Reading

Happy Thanksgiving(R) Dolls and Guys

By on Posted in Trademarks, USPTO

Thanksgiving is, without a doubt, my favorite holiday.  It’s a day to reflect on our many fortunes and to spend time with family eating delicious turkey, potatoes, and pie (and maybe watching some football).  It seems that the Christmas trees, music and displays spring up at local retailers earlier and earlier each year, usually immediately… Continue Reading

Truncating an Underwear Brand: JK, JKY?

By on Posted in Advertising, Branding, Dilution, Famous Marks, Infringement, Marketing, Trademarks, Truncation, USPTO

As you know, we’ve spun a lot of fabric over the last few years on the topic of brand and trademark truncation. Marketers seem to love the informality, emotionality, and efficiency of truncated brand names. I suppose trademark types love them too, since they can have the tendency to spin off a variety of complicated legal issues — all… Continue Reading

No BLUE IVY Registration? Not so fast…

By on Posted in Trademarks, USPTO

Celebrity blogs and music magazines were abuzz with the news that Jay-Z and Beyonce “lost their bid” to trademark their daughter’s name BLUE IVY.  “Jay-Z and Beyonce Can’t Trademark BLUE IVY.”  “Jay-Z and Beyonce Lose Right to Trademark BLUE IVY.”   Hold your horses, single ladies, you might want to check on it.  They got about… Continue Reading

Marketing Pitfall Kills Yellow Color Trademark

By on Posted in Advertising, Articles, Infringement, Law Suits, Loss of Rights, Marketing, Non-Traditional Trademarks, Sight, Trademarks, USPTO

Caution must be exercised in advertising and marketing materials when the brand owner desires ownership of non-traditional trademarks such as product configurations (here and here), trade dress, and single color marks too. In our ongoing effort to raise the awareness of marketing types to pitfalls that can kill non-traditional trademark rights, a recent decision from the Fifth… Continue Reading

Trademark Victims?

By on Posted in Branding, Food, Infringement, Marketing, Trademark Bullying, Trademarks, USPTO

Hardly a day goes by without the media reporting on some sort of trademark dispute. Enter the need for a winner and a loser, a bully and a victim. You know the typical media drill by now, Goliath is the trademark owner and a guilty bully, and David, of course, is an innocent victim, lacking any personal responsibility whatsoever…. Continue Reading

Louboutin & Lessons Learned

By on Posted in Branding, Copyrights, Infringement, Keyword Ads, Law Suits, Marketing, Non-Traditional Trademarks, Search Engines, Sight, Trademarks, USPTO

As promised, here are some further thoughts, lessons learned, and remaining unanswered questions concerning the recent and long-anticipated decision of the Second Circuit Court of Appeals in Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc. Lessons Learned for Marketing Types: Single color trademarks may be owned, registered, and protected when they are distinctive and… Continue Reading

Louboutin Wins Second Circuit Appeal, Sort Of . . . .

By on Posted in Branding, Infringement, Law Suits, Marketing, Non-Traditional Trademarks, Sight, Trademarks, USPTO

At long last, here is a pdf link to the decision, and here is the Second Circuit Court of Appeals summary in a nutshell: “We conclude that the District Court’s holding that a single color can never serve as a trademark in the fashion industry, Christian Louboutin S.A. v. Yves Saint Laurent Am., Inc., 778… Continue Reading