Since launching almost ten years ago, we’ve focused on helping and guiding marketing/branding professionals, as we seek to facilitate their graceful collaborations with trademark professionals.

Our approach has strived to deliver valuable information, without the typical jargon and legalese.

It seriously borders the obvious to say that folks who connect with us here know the importance and value of brands and trademarks, and probably know far less about patents and patentese.

Could novelty be shown, sharing this with patent folks wanting more comfort with trademarks?

In a month, on September 28, at 10:15 AM, I’ll be sharing some of this knowledge at the Midwest IP Institute, in Minneapolis, with a brand new session specifically designed for in-house patent and intellectual property counsel, especially those who may believe that patents are more important than trademarks, called: Trademark Survival Guidance for In-House Patent and IP Counsel.

I’m not saying that one is more important than the other. Nor are there any equivalents here.

What I am saying is that over the last quarter century intellectual property expertise has become far more subspecialized. I’ve witnessed this development first hand over the course of my career. Yet, not all companies have dedicated in-house trademark counsel, so in-house patent counsel often is expected to have at least a working knowledge of the ever-changing trademark landscape.

I’ll be leading a discussion with a very talented group of patent and intellectual property counsel:

  • Paul Sherburne, Associate General Counsel and Intellectual Property Attorney, Graco Inc.
  • Greg Smock, Patent Counsel, Teleflex Incorporated
  • Kirsten Stone, Assistant General Counsel – Chief Intellectual Property Counsel, H.B. Fuller Co.

If you have a strong patent background and want more trademark footing, this session is for you.

If you know patents inside-out, but search for more comfort in trademark matters, this is for you.

If your knowledge of the patent landscape is vast, but you seek to be much better than simply dangerous, when it comes to navigating thorny trademark issues, you won’t want to miss this.

Why? Because we will help you improve your handling and supervision of trademark matters.

In fact, you will learn and apply valuable trademark knowledge to your day-to-day work, and take away the top six trademark tips that will improve and strengthen your trademark advice to business leaders and marketing professionals. Are we speaking your language yet?

If you’re wanting to learn how to translate patentese into valuable trademark skills, here you go.

By the way, I’ll be expanding my patent knowledge and learning more patentese later today (and more than I knew yesterday) at the USPTO China Intellectual Property Road Show at the University of Iowa College of Law, hosted by Dean Kevin Washburn and Professor Jason Rantanen.

While filling up my gas tank at our local Costco last week I coudn’t resist capturing this photo of pump signage to ask our dear readers a few pointed questions:

Is there any doubt that the automobile depicted in the Costco advertisement is a Corvette Stingray? If so, HiConsumption should resolve any lingering questions.

How did you know (if you did), before checking out the 2014 Corvette Stingray photos on HiConsumption? Perhaps the federally-registered Stingray logo on the front quarter panel behind the wheel? The barely visible Corvette logo on the wheels? The overall shape and configuration of the automobile?

Although GM has a long list of non-traditional trademark registrations to sift through on the USPTO database, I was unable to locate one covering the current shape of the Corvette Stingray (I suspect our friends who are also patent types could probably locate some design patents covering the ornamental design of the vehicle, so I didn’t bother going there), but I did locate a few trademark configuration registrations covering earlier Corvette model shapes of actual vehicles and toy replicas (here [cancelled], here, and here).

Marketing types, how would you go about obtaining the Corvette image to incorporate in the above advertisement? Would you feel the need to obtain permission from GM to display these ads at point of sale? I hope so.

Legal types, is there any legitimate basis for Costco claiming fair use here? I’m thinking not — assuming this use is not authorized or licensed, it appears to appropriate the goodwill of GM to attract attention to and help sell Kirkland Top Tier gasoline. Remember this little gem from five years ago in our archives? The Costco ad above — depicting the entire profile of the vehicle shape and design — seems even less justified than the partial Corvette image in the Schlitz ad, at least from where I’m sitting.

Last, do you suppose this ad on signage slipped by Costco’s legal department or might there be an aggressive stand on fair use, or perhaps if questioned, an attempted defense to challenge GM’s underlying rights — I’m assuming GM can establish acquired distinctiveness in the shape if it had to, even without a federal registration (but a single piece of paper as proof would be much better).

Remember what happened when Tiffany (the jewelry company, not our Tiffany) complained about Costco’s unauthorized use of the Tiffany name?

Costco counterclaimed for cancellation on genericness grounds, so what might we expect here, assuming the point of sale advertisement was not authorized or licensed by GM?

I’m thinking this signage is going bye bye, how about you? So, why don’t we just start the count-down now?