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Steve Baird®

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Just so you know, I'm all about brands and the law, both professionally and personally. I regularly annoy family and friends in retail stores by focusing on product labels—not to buy the product, but to read the fine print and ask, “Who owns these brands” and “Did they really register those marks?” To understand the depth of my passion for brands and helping clients achieve their business goals, legally, you must understand that my interest in business and branding goes back to the late 1960s. The very first brand I recall profiting from was Jiffy®. Even before being old enough to deliver papers for the Iowa City Press Citizen, between episodes of Bewitched®, I would bake cupcakes and walk my finished product door-to-door, sampling along the way, of course, throughout our Kimball Road neighborhood, mostly selling them to husbands whose wives didn't bake enough (probably watching Bewitched®), according to them at least. One hundred percent profit margins are easy when you can use the necessary equipment and raw materials directly from Mom's kitchen. Mass producing "hot pads" (pot holders, not real estate) and selling them door-to-door was another favorite childhood business venture at the ripe age of six. Graduating to lawn-mowing age worked well with my paper routes because I could easily see who needed help cutting their grass and, in some cases, avoiding neighborhood ridicule. Yes, you're right, Dad loaned me his Lawn-Boy® mower on weekends, rent-free, and even bought the gasoline (Dad was not brand loyal at all with gasoline, so I have no brand memory there). Another pure profit opportunity. Let's just say that Mom and Dad were generous, unsecured investors in my development and future. Thanks Mom and Dad, I now understand the meaning of overhead and capital improvements! I bucked a lot of family tradition and jokes to become a lawyer and a trademark guru. There is not one lawyer in the family tree, as far as my sister knows (and she would know). Nearly everyone is, or was, a teacher of some kind. That must be where my passion for educating others about the legal implications of branding comes from. Basically, I have been speaking about the legal implications of branding since the early 90s, after permitting my pharmacist’s license to expire (after being a victim of an armed robbery where Dilaudid® was on the top of the gunman’s list of desired controlled substances), and shortly after working for an 86 year old federal judge whose chambers had a nice view of the White House in Washington, D.C. While I’d like to say that the movie My Cousin Vinny inspired me to become a lawyer, it was released two years after I graduated from law school. So, really, I guess it just inspired me to be a better lawyer and leader. For now, you can call me a “thought-leader” in the trademark world, and the thankful leader of a very talented group of creative and insightful lawyers and staff who are dedicated to putting our intellectual property clients in the best possible position to achieve their business goals. When I'm not in the office, "cracking the whip," making sure others in the group keep their bios on this blog short and sweet, working (which isn't to say I'm not still thinking about my clients' businesses), or soaking it up in the hot-tub with my soul-mate, I am a dedicated family man - a.k.a. the chauffeur. Until they reach the driving age, I'll continue to shuttle my four wonderful kids around to their athletic and other events, at which you can find me cheering in the stands.

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

Last October, as you may recall, I wrote this in a post entitled “The Mark of a Real Trademark Bully“:

[T]he U.S. Patent and Trademark Office (USPTO) is currently seeking information about various litigation tactics, including whether “you think trademark “bullies” are currently a problem for trademark owners, and if so, how

Seems as though any trademark owner who sends a cease and desist letter is bound to be called a trademark bully by someone. In fact, the USPTO has extended the period for comments by a month with a new deadline of February 7, 2011.

If you had started selling shirts, pants, and  under the trademark and brand KAKATOO, and you received a cease and desist letter from someone selling shoes under the trademark and brand DELICIOUS, would you not be crying foul and/or applying the ever-popular label “trademark bully”?

Obviously, I don’t believe the USPTO is a trademark bully, but asking the question, and discussing some recent likelihood of confusion refusals issued by Examining Attorneys at the USPTO, I believe, helps put in perspective the recent flurry of discussion and concern of trademark bullying. It also reinforces the power of federal trademark registrations.

This is how the Examining Attorney at the USPTO initially refused registration of KAKATOO for clothing, based on a prior registration for DELICIOUS for shoes:

Applicant’s mark KAKATOO is confusingly similar to the registered mark DELICIOUS because KAKATOO is the foreign equivalent of “delicious.”

Under the doctrine of foreign equivalents, a mark in a foreign language and a mark that is its English equivalent may be held to be confusingly similar. TMEP §1207.01(b)(vi); see, e.g., In re Thomas, 79 USPQ2d 1021, 1025 (TTAB 2006); In re Hub Distrib., Inc., 218 USPQ 284 (TTAB 1983). Therefore, marks comprised of foreign words are translated into English to determine similarity in meaning and connotation with English word marks. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772,396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005). Equivalence in meaning and connotation can be sufficient to find such marks confusingly similar. See In re Thomas, 79 USPQ2d at 1025.

The support for this refusal is below the jump.Continue Reading Foreign Equivalents?

There are many things that serious trademark owners do throughout the lifecycle of a trademark to mitigate risk, protect the valuable goodwill in their underlying brand, and preserve their valuable investment in this important intellectual property asset. Here is a fairly extensive, but certainly not exhaustive, and often forgotten, list of those things:

  1. Clear new

The Intellectual Property Owners Association (IPO) submitted its comments last Friday in response to the USPTO’s recent invitation for input on whether “trademark bullying” is a problem.

In response to the USPTO’s key question “Do you think trademark ‘bullies’ are currently a problem for trademark owners, and if so, how significant is the

The New Year will be ringing in a brand new trademark truncation, ironically caused by a recent expansion.

Just so you know, it’s not a new type of Gatorade (G01, G2, and G03), excuse me, G.

So, what can this latest trademark truncation represent?

 

Apparently, the truncating trademark owner has not yet secured the most obvious domain, www.b1g.com, because it’s for sale, by someone apparently located in Russia.

Answer below the jump.Continue Reading Trademark Truncation Alert: B1G