"Suzy" asks: If I look on uspto.gov and see that there is a company already trademarked under a name similiar to my company’s name will my trademarked registration be denied? My response: Not necessarily. Just because someone else has trademarked a name similar to yours does not always hurt your chances for getting a trademark. A perfect example is the trademarked name "Delta". There are two companies using this name. First, Delta Airlines. Second, Delta Faucets. How can these two companies claim the trademark for Delta? The answer lies in trademark categories. As of this writing there are 45 trademark categories (divided by products and services). A few examples of categories are machinery products, musical instruments, medical device products, rubber products, restaurant services, communications services, and on and on. Delta Faucets and Delta Airlines are both allowed to use the trademark Delta because they are registered in different categories. Delta Faucets owns Delta in […]
Not a day goes by that I don’t get a call from a distressed business owner who – after using one of those ‘trademark filing’ services online – contacts me because their trademark got rejected. And it always brings to mind the origin story of the lucky horseshoe. Legend has it a blacksmith (who later became St. Dunstan) was approached by a man who asked that horseshoes be attached to his own cloven feet. Dunstan recognized the customer as Satan and explained that he must shackle him to the wall to perform the service. While hammering, Dunstan deliberately made the job so excruciatingly painful that the bound devil begged for mercy. He refused release until the Devil promised to never enter a house where a horseshoe was displayed from the door. Hence the reason today’s door “knockers” look like horseshoes. The application for and granting of a trademark is a process. One in which several steps must be taken. Not […]
If you are in business, and are successful and profitable, your business name should be registered. Why? It prevents others from using it to do the same type of business, represent their businesses as yours, steal your customers and ruin your business reputation. Without it, you have a big liability, almost as if you are leaving the door to the shop open when you leave at the end of the day. Registration also offers you other rights. The United States Patent and Trademark Office website lists seven specific ways trademarks protect your business. 1. Public Notice of Your Claim of Ownership of the Mark When you apply for a ownership of your business name and are approved, it is published in the Official Gazette. This weekly online publication gives the public 30 days to examine and oppose your registration. If there is no opposition, the patent office generally issues registration certificates about 12 weeks after publication. 2. A […]
I had the pleasure of meeting Patent Office Commissioner Robert Stolll this week in Fort Lauderdale, Florida. Commissioner Stoll is the person in charge of the Patent & Trademark Office. The buck definitely stops with him. He came down for a Symposium on Intellectual Property at the Riverside Hotel on Las Olas Boulevard and gave a fascinating talk on proposed changes and improvements at the Patent Office.
The owner of a Federally registered trademark is presumed to be the exclusive owner of the mark for the goods and services. So, if a word or phrase is already trademarked, does that mean you can’t use it? Most people think yes. But there is a little loophole in trademark law that allows you to use a trademarked term even if it’s protected and widely used. Let’s take a closer look with a few examples… Trademark Example #1: Delta I’m sure you’ve heard of the airline giant Delta Airlines. But you probably aren’t aware of Kitchen faucet manufacture Delta Faucet. Delta faucet holds a number of trademarks for its products including its In2ition two in one shower, the Linden waterfall pull-out kitchen faucet, and the Dryden bath faucet. But it also owns a registered mark on the Delta name, just like Delta Airlines. And they are not the only ones. There is Delta Dental. Delta Computer Group. And Delta Pixel matrix […]
There are some interesting trademark disputes making headlines in the past couple of weeks. Here is a quick recap of the odd, funny and (sometimes) insane world of trademarks. Facebook Trademark against Your Face Facebook continues its quest for world domination by trying to trademark the word "Face". However, the Patent and Trademark Office reports that the trademark will only apply to “telecommunication services, namely, providing online chat rooms and electronic bulletin boards for transmission of messages among computer users.” The Trademarked "Face" of Facebook? Here’s the full New York Times Story – Facebook Trademark "Face" Universities Enforce Trademark against High School Alligators are everywhere here in South Florida, but only one Florida school can use them as a mascot. Earlier this year, University of Florida demanded that Glades Day School (just a few miles west of our Coral Springs office) cease use of the Gator trademark. A New York Times articles writes, "Universities have confronted high schools with which […]
The threat of trademark infringement doesn’t necessarily have to shut down your business or bury you under legal bills. If you do not have much invested in the name, you may decide to just change your business name and pray you don’t get sued for past infringement damages. But if you get hit with a trademark infringement claim, do you have to give in? A recent article in Forbes online magazine details one woman’s ordeal with trademark infringement. It all started with a cease and desist letter explaining the various ways her business infringed on U.S. trademark rights. Click on the link to read more about: Do you fight back or pick a new name…Trademark Infringement.
Do you know how much money your business would lose if you were forced to shut your doors for a day? A week? A month? Well, if you are making the one trademark mistake I’m about to share with you, then you could be putting all of that income at risk. As a Florida trademark attorney practicing for over 15 years in this specialized area of law, I am no longer surprised by the consequences of simple mistakes made by business owners but they are always disheartening. Here’s the story… "Joe" – the owner of an online kayaking equipment retailer – hired an ad agency to create buzz for his company’s online debut. They created an expensive marketing campaign complete with catchy slogans…news releases… ads…and media kits. All the bells and whistles. But when it came to protecting his company’s name, Joe decided to do it "on the cheap" and failed to properly file for a trademark. This seemingly minor mistake […]
A trademark battle is being waged in federal court right now involving the National Football League (NFL), NFL Properties (NFLP), the New Orleans Saints, Liquid Ventures Inc., Logo Express Marketing Inc., Monogram Express, Storyville Apparel, and Fleurty Girl. And the center of this suit is a Who Dat? Inc. They claim that all of these companies infringed against their trademark of the Who Dat? phrase. Meanwhile the Saints claim it has owned the "Who Dat" trademark since 1988. Full story here – Who Dat trademark case While there are many lessons you could learn about protecting your intellectual property from this case, there is one very important one that may help you from being put out of business (or aid you in shutting down a company that is unlawfully stealing your ideas). Trademarks Protect Your Company Name And Revenue Streams Because of possible trademark infringement, Who Dat’s attorney’s shut down Fleurty Girl’s Facebook page…and the NFL has ordered Fleurty girl […]
Florida restaurant, C.R. Chicks brought a trademark infringement lawsuit against a Michigan Restauranteur, causing the Michigan proprietor to give up his restaurants’ name, C.R. Smokin Chicks, and go back to the drawing board in his efforts to name his restaurant, according to an article in The Detroit News. Ironically, this is only one of several names Gary Baja has turned to in his seemingly never-ending efforts to name his restaurant in a way that avoids claims of trademark infringement from others. He initially started the eatery with the name, Mother Cluckers, back in 2004. That name was abandoned since the landlord found it distasteful. When the restaurant’s name was changed to C.R. Smokin Chicks, Florida restaurant chain, C.R. Chicks, alleged trademark infringement. In an effort to resolve the matter, the owner Gary Baja put black duct tape over the letters C.R. so only the Smokin Chicks would show a seen below (if you look carefully, you will see the tape): Smokin Chicks did […]
CNN reports that International Medial Films, Inc. accused New York filmmaker Andrei Treivas Bregman of trademark and copyright infringement for pornographic films he made under his business name, Michael Lucas. The lawsuit seeks to prevent the sales of the movies, "Michael Lucas’ La Dolce Vita" Parts 1 and 2, and to collect unspecified damages. Bregman, who moved from Moscow to the United States in 1997, called the lawsuit in U.S. District Court in Manhattan a joke. According to Bregman, "Nobody can be confused and think they’re buying Fellini”s movie by buying mine." Bregman also notes that the name Michael Lucas was part of the title, which means "The Sweet Life." New York-based International Media Films said it believed the pornographic films, released early this year, will "infringe, tarnish, and dilute" its trademark rights to the highly decorated "La Dolce Vita," which won the 1961 Academy Award for costume design and the New York Film Critics Circle Award for best foreign film […]
According to an article on Telegram.com, U.S. Marshals visited Kentucky Fried Chicken stores in Webster and Auburn for takeout of a completely different kind: They wanted to make sure all signs, merchandise, and manuals with the KFC corporate trademarks, logo, or design were removed from the premises and destroyed. David J. Chrisler and his wife, Mary, who are currently in Florida, have been in a bucket of trouble for allegedly operating two KFC restaurants for nearly a year after their franchise agreement was terminated. The Chrislers’ Kentucky Fried Chicken court drama began when the corporation successfully sued the couple for breach of contract, trademark infringement, and violation of the Federal Unfair Competition Act. A declaratory judgment was issued by the U.S. District Court for the Western District of Kentucky, Louisville Division, where the popular fast-food franchise has its headquarters. The Chrislers allegedly continued to operate as a KFC franchise, resulting in the federal court in Kentucky issuing a default judgment […]
The Smoking Gun reports that the United States Patent & Trademark Office has rejected a Florida man’s trademark application for the term "Obama bin Laden," ruling that the conflation of the names of a U.S. Senator and the world’s leading terrorist was "scandalous" and erroneously suggested a connection between the politician and the mass murderer. The United States Patent & Trademark Office decided on February 6, 2007 not to register the trademark. Examining Attorney Karen K. Bush informed the Applicant, Alexandre Batlle, of the decision via an Office Action. Batlle, a 28-year-old Miami Beach resident, filed the applciation last month, desiring to use the trademark on hats, shirts, pins, and bumper stickers. In addition to refusing to register the trademark due to "scandalous refusal" and "false association," Attorney Bush also cited the lack of written consent by either Barack Obama or Osama bin Laden, the names of the living individuals identified in the proposed mark. Battle reportedly informed The Smoking […]
The Gazette reports a trademark dispute between Ledo Pizza Inc. of Annapolis and the Marcos family of Prince George’s County. Ledo has filed a trademark infringement lawsuit in U.S. District Court in Greenbelt against Thomas E. Marcos Sr., Thomas E. Marcos, Jr., and James L. Marcos, claiming the family illegally used the Ledo name and trademark to sell food, resulting in financial losses. Just a couple of months ago, the Marcos family and Ledo chairman Robet M. Beall appeared to be best of friends when appearing on The Oprah Winfrey Show and getting national exposure for having one of the best Pizzas in the nation. But now Ledo Pizza System claims that the Marcos family, which helped established the Ledo brand 50 years ago, breached a 12-year-old agreement by selling products under the Ledo name and logo at Expressions catering sevice in Calvery County and at TJ Elliott’s in Bowie, both owned and operated by the Marcos family. The two […]