News | The Trademark Firm

But Does It Distinguish the Origin of Goods or Services?

April 1, 2017 by ddawsey

Increasingly, it seems that the news of trademark law suggests more and more a subject matter control or “suggestion of” a topic than it does a real distinction between the origin of different goods and/or services. For example, you can substantially forget any word or symbol that is reminiscent, in any way, of any college or professional sports team, even if the word or symbol has never been used to identify that team, and even if the nature of the “mark” leaves no reasonable person in any way confused as to origin.

Now we have an example from the world of entertainment (http://www.jdsupra.com/legalnews/warner-bros-trademark-lawyers-target-38624). Admittedly, we are not the world’s greatest movie fans, but I doubt that the term “Golden Ticket” would even conjure up a memory of “Willy Wonka and the Chocolate Factory” to me. And if it did, would we really be confused that a craft brewer and Warner Brothers were trespassing on each others turf? Hard to believe. What we’re seeing appears to be the increasing capture of the English language by trademark interests, and whether the buying public is really aided in assessing the true origin of goods and services remains a very open question. Does this stop when we run out of words?

Trademark Filings Predict New Products

February 8, 2017 by ddawsey

“Trademark filing can predict new products,” comments US trademark attorney David Dawsey. Few things are as closely watches as new models from major automotive companies. In a very recent case, Lexus gives us strong reason to believe that they will shortly be bringing out a new “LC F” model, according to a report by Motor Trend magazine. This is not a new phenomenon, in fact, a 2016 study out of Japan suggested that a great deal of information regarding new products can be gleaned from trademark applications. Read The Study Here.

Interested in using competitive intelligence to help your business? Start by listening to this interview.

Trademark Protection or Monopoly Play? Fitbit v. Laguna 2

May 27, 2021January 21, 2017 by ddawsey

Trademark Attorney Michael Gallagher notes that Fitbit has sued (Fitbit v. Laguna 2) a reseller of its products, New Jersey-based Laguna 2 for trademark infringement, counterfeiting and dilution that once again raises interesting questions about the role of resellers in the marketplace. The suit claims that Fitbit products, designated to be scrapped or recycled, were subsequently resold by Laguna 2. Fitbit claims that Laguna 2 has “continued to threaten to resell these products with no regard for the harm to Fitbit, its brand, and the consuming public.”

This is not the average counterfeiting case. To start with, Laguna 2 is not the average “counterfeiter,” as we usually think of that term. They are a reseller of a number of brand name products, claiming alliances on their website to such companies as HP, Acer, Samsung and LG. Secondly, the products involved are not what we usually think of as “counterfeits” as they appear to be originally genuine, or at least to have originated with Fitbit.

For its part, Laguna 2 claims that these are genuine Fitbit products, refurbished by a third-party, and sold clearly labeled as such.

So what does, or should, happen to the endless number of returned, defective, or close-out items? How far does the trademark holder’s rights to control the eventual disposition of these products extend? Lately we’ve seen trademark holders try to exert trademark claims to try to achieve subject matter control in the area of sports marketing. Is this an honest attempt at trademark protection, or a try to exert end-to-end control across a product’s life?

Some interesting questions await resolution, not the least of which is “How did Laguna get these products to sell in the first place?” We suspect that, absent an early settlement, this case will turn on some highly fact-specific things, such as how the resold products were obtained and labelled for sale. Was there real danger of confusion to the public? We’ll have to wait and hopefully see.

Houston Trademarks

June 2, 2016 by ddawsey

Houston Trademark News & Resources

Can “Space City” be an Owned Trademark?

For an acerbic, and highly humorous, article on the trademark wrangling between the Houston Convention Bureau and “Space City Comic Con” see this article here.

But the dispute masks an interesting point about trademark law. One of the bedrock principles of trademark is that an owner must police its own trademark, and take action against potentially infringing uses. In this case, the convention bureau appears to have let four years pass before taking action against the comic convention? Is that too much time? Has the bureau possible lost some of its trademark rights by delaying? Or are they overreaching anyway, regardless of the amount of time? “Time” and the courts may tell.

View our page for more information on Trademark Search in Houston.

New York City Trademarks

June 2, 2016 by ddawsey

New York Trademark News & Resources

Did you know that the New York Public Library is a member of the United States Patent and Trademark Office’s Patent and Trademark Resource Center program? As part of that program, the library provides resources and education to the public about the use of Patent and Trademark materials and other resources (primarily those found on the Internet), and provide access to many of those resources at their Science, Industry and Business Library location. They also a wealth of information about Patents and Trademarks, as well as individual consultations about researching Patents and Trademarks. During regular library hours, they provide some assistance by telephone at 917-ASK-NYPL (917-275-6975). Learn more at their patent and trademark website: http://www.nypl.org/node/5723

View our page for more information on Trademarks in New York City.

Atlanta Trademark

June 2, 2016 by ddawsey

Atlanta Trademark News & Resources

The Patent & Trademark Resource Center (PTRC) at Georgia Tech Library has been a trademark depository library since 1946. Although they cannot do the application for you or give legal advice, they offer a wealth of resources to help you make your search of patent and trademark databases more efficient. They can also help instruct you in the use of the search tools available at the Library for you to conduct your own patent and trademark searches.

They offer online classes and personal instruction, details of which can be found at: http://libguides.gatech.edu/c.php?g=53972&p=348359 On-site consultation and training may be arranged by appointment based on availability. To make an appointment, please email ([email protected]) or call (404-385-7185) first.

Visit this page for more information & Resources on Atlanta Trademarks.

Chicago Trademark

June 2, 2016 by ddawsey

Chicago Trademark News & Resources

Can Out-of-State Entities Claim “Chicago Style?”

Two out-of-state entities from Minnesota and Connecticut are fighting for trademark rights in the popcorn business, leading one to speculate on how far place names can be taken in trademark. Is there such a thing as “Chicago Style” popcorn, and if, isn’t that a descriptive phrase that might not be eligible for trademark protection? You can read a bit about the dispute here.

The scene was set when St. Paul, Minnesota popcorn maker Candyland, Inc. secured the right to the mark CHICAGO MIX® over some other food giants. And as one might expect, after that battle, they weren’t please when Westport, Connecticut based “Popcorn, Indiana” began selling “Chicago Style” popcorn through such major outlets as Wal-Mart, Walgreen’s, CVS and Whole Foods.

The case is just getting underway, but you can read the Complaint as filed by Candyland . Candyland alleges trademark infringement, federal unfair competition, violations of Minnesota Deceptive Trade Practices Act, and trademark dilution (use of a similar mark that “dilutes” the reputation of a “famous” mark).

Oddly enough, so far, neither of the litigants, nor Candyland’s lawyers, are from Chicago. Will Popcorn, Indiana hire a Chicago firm to fight for the name “Chicago Style?” We’ll see.

Don’t Forget International Trademark Registration

September 25, 2015 by ddawsey

International trademark registration doesn’t exist, at least in a simple and unified form. Trademark registration is territorial in essence, meaning that trademark protections are only good in the country (or sometimes group of countries) in which they are registered. You have to file an independent trademark application in every country where you want to register it, except for special situations like the European Community Mark, which has cross-border effectiveness within the EU.

USPTO to Allow Pilot Program Allowing Changes in Goods and Services

September 2, 2015 by ddawsey

The U.S.P.T.O has announced a pilot program to allow petitions to change the identification, post-application, of goods and services in trademark applications. The scope of allowed changes is fairly narrow, applying only to situation where “evolving technology has changed the manner or medium by which the underlying content or subject matter of the identified products and services are offered for sale or provided….” Nonetheless, it is a major change in USPTO policy, where to the present time, virtually NO changes have been allowed to specified goods and services during application.

May I call you by your name? Nominative Fair Use

May 26, 2015 by ddawsey

A new action in Texas once again calls into question the breadth of the doctrine of “nominative fair use” in trademark. Boiled to its essentials, it allows a party to use a trademark, without permission, in order to refer to the actual goods of the trademark holder. Here’s part of what the International Trademark Association says about nominative fair use.