Trademark Attorney

Laurel Sutton, Principal of Catchword Brand Name Development

Back in December, Racebrook Marketing Concepts held a Brand Name Auction during which "150 Timeless Trademarks and Domains" were offered for sale. But the auction was more bust than boom: only about 50 people showed up, with a few more bidders participating online. The prices, too, were disappointing, with the highest bid coming in at $45,000 for Shearson, $23,500 for Meister Brau, and $30,000 for Handi-Wrap. Collier’s, a magazine brand with a long history, sold for $2000, to someone acting as a third-party representative for a publishing company, according to AdAge.

Part of the reason for the low turnout, and low returns, was likely confusion over just what one got for the winning bid. The folks who bought the iconic record label Victrola for $1000 got the rights to an intent-to-use trademark application for a wide variety of goods and services in Class 9, including CDs, televisions, computer hardware and software, calculators, printers, amps, speakers, and cell phones. The catch is that since the ITU was filed in 2006 and published for opposition in 2008, the new owners have very little time to verify actual use and submit a specimen of use. Many of the other brands sold were on the basis of ITUs, although a few, like Handi-Wrap for plastic wrap, were actual registered trademarks.

Now this kind of intellectual property dealing is familiar territory to trademark attorneys, but to the average marketing exec or start-up entrepreneur, it’s rough going. The distinction between trademark and brand is something that naming companies like my own, Catchword, have to explain to the majority of new clients. And a "brand name auction" certainly sound like you’d be getting more than just a trademark application; it could imply a logo, collateral, advertising, or even patents to a product. Perhaps it’s not deliberately misleading, but it’s certainly overpromising.

From a brand perspective, the important question is whether you can repurpose a brand name. This is a different matter than the revival of a brand, as was the case with TaB. Coke never stopped making TaB, but the brand suffered a deep decline in popularity when Diet Coke was introduced. But some people remained fans, and the brand continues to be produced; it’s even gained something of a cult status with celebrities, and has a whole fan-site devoted to its no-cal goodness (ILoveTaB.com). TaB never died. It just took a little breather.

But take one of the unsold brand names from the auction, Annie Hall. The trademark for this name is specifically for clothing, and the name itself is obviously derived from the 1977 Woody Allen movie. I’m not surprised it didn’t sell; speaking as a consumer, the last time I dressed like Annie Hall was in, oh, 1978. Annie Hall as a character is iconic because of the way she dressed. The influence of that style – vintage, layered menswear – has been strong and persistent, and women’s style is better for it. But the name, and the brand, say "1977" and "slightly crazy" much louder than they say "fashionable". Reviving the brand and trying to invest it with a modern feel seems implausible, if not impossible. Perhaps someone will buy it just to print t-shirts that say "Annie Hall" on them.Continue Reading The Brand Name Auction: Bargain or Bust?

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

…

–Sharon Armstrong, Attorney

Trademark attorneys often counsel their clients to file trademark applications with the broadest scope of goods and services possible (e.g., broad categories of goods without any trade channel limitations). The main reason for this is to provide clients with the broadest scope of trademark insulation on the registry. Filing for ELVISWARE for “tableware” rather than “glassware featuring pictures of Elvis” may prevent third parties who desire to register a similar mark for related but not necessarily identical goods and services (say, ELVISWARES for table linens). If the Trademark Office finds the identification to be too broad or unclear, it will simply issue an office action to require further clarification or specificity.

Filing with a broad scope of goods and services has other benefits too, such as providing a little mystery as to the precise nature of your goods and services. A fun example is related to the recent video teaser from Neill Blomkamp, the director of the film District 9, which was nominated for a best picture at last year’s Oscars. As the website Slashfilm notes, “the video…features two young men who discover a dead alien-looking creature in a puddle on the side of a dirt road. The creature has a circular stamp on its side which reads ’18.12 AGM Heartland Pat Pend USA’ and the outer circle reads: ‘US Inspected and Approved.’”

More after the jump…Continue Reading Yet Another Good Reason to Listen to Your Trademark Attorney

Would it surprise you to learn that not all trademark types are created equal? I didn’t think so. Like any profession, some of the professionals are better and more gifted than others. A few are much better. And, if bell curves have any application here, a few are much worse too.

In the inaugural post for DuetsBlog, last March, we introduced a type of trademark attorney known as "Dr. No," and we discussed how he or she likes to focus on the "Parade of Horribles" instead of creative solutions to difficult and important problems:

The underlying personal brand promise for this lawyer is to say “no,” early and often, believing an enormous hourly rate is still justified by citing a multitude of technical and valid legal reasons in support of the unhelpful answer. He is obsessed with saluting to the Parade of Horribles.  He is typically part of the problem, not the solution.  Perhaps repeated frustration with this kind of Dr. No is what motivated one cartoonist to brand (uh, jab) the “trademark attorney” as “the most basic figure," at least in the world of Art.

Avoiding the "Dr. No" moniker and mindset should not be the only goal of trademark types. There is clearly room for improvement in our profession in other areas too.

Gather ’round, it’s time to meet J.D. Waffler.Continue Reading J.D. Waffler: The Art of Taking a Position

Beneath the large umbrella of the law known as Intellectual Property (or simply, IP), one of the badges of superiority that trademark lawyers are able to brag up to their patent and copyright colleagues is that trademark rights are capable of lasting forever — there are no term limits — so, the underlying legal rights can be truly timeless, provided, of course, they continue to be…

—Karen Brennan, attorney

I found Fig. 1 (from what I am sure was a very valuable patent, although I could not locate it) to be very fitting for this post.  After three and half years, four Office Actions, a Petition to the Director and finally an appeal, our client’s product configuration mark for the PPK…

The newest fare at the Minnesota State Fair is not Camel-on-a-Stick, Buffalo-on-a-Stick, or any other kind of Food-on-a-Stick, but rather, Trademark-on-a-Stick.

Earlier this week, the Minnesota State Fair (owned and operated by the Minnesota State Agricultural Society, a Minnesota State Agency) was hot to skewer the unauthorized use of its nearly three-decade-old and more recently trademarked logo, by incumbent Republican U.S. Congresswoman Michele Bachmann, in a political ad targeting DFL challenger Tarryl Clark’s record on tax policy.

This trademark objection has generated quite a bit of publicity, with coverage being reporting by MinnPost, The Minnesota Independent, the New York Times (blog), Politics Daily, MPR News, TPM, and Politico. The Bachmann ad referenced the MN State Fair and used its official logo while suggesting that Clark has voted to increase taxes on what foodies covet at the fair, including their favorite corn dogs, deep fried bacon, and beer.

Central in the debate over the lawfulness of the Bachmann campaign’s use of the logo is a question we have pondered on DuetsBlog before (e.g., here, here, and here), namely, whether the use of another’s logo crosses the legal line and is likely to cause confusion as to sponsorship, affiliation, approval, or endorsement, or whether it may constitute lawful nominative fair use. So, it should be no surprise to readers of DuetsBlog, that in the end, it is consumer understanding of the use in the ad that controls whether or not it is lawful.

The Minnesota State Fair’s objection certainly is not frivolous and is rooted in a common and traditional trademark concern over likelihood of confusion. Bachmann for Congress political ads begin with the statement: "I am Michele Bachmann and I approve this message." According to Minnesota State Fair officials, Bachmann’s use of the above Minnesota State Fair logo is likely to lead viewers to incorrectly believe that the Minnesota State Fair approves Congresswoman Bachmann’s message or has endorsed her campaign. What do you think, is that what viewers will believe?

Bachmann’s campaign denies that the logo use was unlawful, but without explaining why no confusion is likely and without specifically articulating what would likely be a nominative fair use defense, it voluntarily has decided to drop use of the official logo and instead opted to switch to a more "generic" image. Apparently what the campaign means by "generic" is not that it lacks the look of a trademark and/or logo, but rather is one not specifically used or owned by the Minnesota State Agricultural Society.

Bachmann for Congress’ revised television advertisement may be viewed here, showing no use of the trademarked official logo, but I’d hardly call the use "generic" — it remains a  logo use, even if it is a fake one that swaps fireworks for a ferris wheel, and alters the color scheme and typeface. Do you think that consumers will notice or recognize the fake logo as being fake or just believe it is an additional logo used by the MN State Fair that they haven’t seen before?

Interestingly, the change may not be enough to satisfy the MN State Fair. Apparently, it continues to have concerns about the revised Bachmann ad, and it has asked the Attorney General to look into the question of whether the change is sufficient to avoid confusion as to endorsement of the Bachmann campaign. Having said that, with only a few more days left before the close of the 2010 MN State Fair, one must wonder whether the campaign will move on and moot this lingering concern too, leaving the State Fair ads behind, as it continues to run new ads down the final stretch of the campaign.

Stay tuned, tomorrow I’ll attempt to make the case for why the State of Minnesota needs to hire an experienced trademark attorney.

Bonus political speech consideration below the jump:Continue Reading Fair Logo, Fair Use & Fair Politics? The Minnesota State Fair’s Trademark-on-a-Stick

Years ago I recall hearing a veteran trademark lawyer warn intellectual property continuing legal education attendees, "When your toolbox only has a hammer in it, everything in your world starts to look like a nail."

Fair enough. It’s time for all of us to revisit the contents of our professional toolbox.

Last week, following the firestorm of criticism surrounding Best Buy’s cease and desist…