Category: Trademark

How do I Establish and Protect a Trademark?

Monday, 13 February, 2012 05:26 Written by Aaron Thalwitzer 0 Comments
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Don't let your trademark become a generic term like Aspirin. Pick and use your trademark correctly to ensure the best protection.

Trademarks are often thought of as just a logo or a name, but for a business, they’re much more valuable. A trademark is what separates (for us in Florida) Publix from Winn-Dixie. Without trademark and similar legal protections, there is little Subway can do to stop me from opening up a Subway of my own — without licensing their intellectual property or paying them a red cent. Trademarks are defined as any word, name, symbol or device or any combination thereof; as previously discussed, you can trademark sounds and even a  color. Trademarks are often the most valuable asset a business can own; they are a business’ identity, without which the public would confuse you with your competitors.

So, how do you establish a trademark?

The best trademarks are simple and straightforward. It should be easily pronounceable, short, and not tough to spell. My firm, Zies Widerman & Malek, in Melbourne, Florida, is few of these things, but, as a the saying goes, you can pick your nose, but you can’t pick your name (that’s how it goes, right?). Anyway, if you’re in the pizza business, including pizza in your name is advisable. Naming your pizza business Anthony’s Pizza, not so much.. Every town has a multitude of Anthony’s Pizzas, so why create confusion and risk a lawsuit by using a diluted trademark? Be distinctive and unique. The more likely your name is to confusion your customers, the more likely you are to get involved in a trademark infringement lawsuit. Such lawsuits are lengthy and expensive — good for lawyers, bad for you. Selecting a strong trademark that is more fanciful and arbitrary (i.e. Best Buy), rather than descriptive (i.e. Healthcare Staffing) is easier to protect.  The best trademark will be suggestive, rather than descriptive.

Next, search for your chosen name on TESS. If your name isn’t registered already, contact a trademark attorney to register it ASAP. A search report is valid only as of a given date. You can do it yourself, but as the proverb goes, a man who is his own lawyer has a fool for a client.

After registering your trademark, use it consistently and continuously. Careless use could cause the mark to fall into the public domain. It’s better to use your trademark as an adjective than a noun. “Use Aspirin medicine” is superior to “Use Aspirin”. Bayer famously lost their trademark describing acetylsalicylic acid due to such carelessness leading to genericization over time.

Can I Trademark a Sound?

Monday, 06 February, 2012 06:18 Written by Aaron Thalwitzer 1 Comment
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Cooooo-stanza! See? Trademark sounds work.

We hear them every day. The clip that plays before the radio show you listen to. The short sound before a movie or TV show you watch, linked inextricably with a logo or other item.

A sound trademark is a trademark in which sound is used to uniquely identify the commercial origin of products or services. Think, “By Mennen” or “Co-stanza!”

The test for whether a sound can serve as a trademark “depends on [the] aural perception of the listener which may be as fleeting as the sound itself unless, of course, the sound is so inherently different or distinctive that it attaches to the subliminal mind of the listener to be awakened when heard and to be associated with the source or event with which it struck”. In re General Electric Broadcasting Co., 199 USPQ 560, 563 (T.T.A.B. 1978) (a series of bells for radio broadcasting services was held to be capable of functioning as a service mark upon evidence of acquired distinctiveness. The decision also referred to other sound marks that had been registered in respect of series of musical chimes, sound of a creaking door, sound of a coin spinning on a hard surface and electrically produced series of three notes).

The biggest and baddest case was probably when Harley-Davidson tried to register as a trademark the sound of a Harley Davidson motorcycle engine. Of course, Harley Davidson’s competitors filed oppositions against the application, arguing that many similar motorcycles use the same engine which produces the same sound. After goodness knows how much money spent litigating (and six wasted years) Harley Davidson withdrew their application.

In recent times, sounds have become more common trademarks in the marketplace. The World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights definese a trademark as, “any sign…capable of distinguishing the goods or services of one undertaking from those of other undertakings.”

Check the “USPTO Kids’ Pages” (somehow, that exists) for samples of many well-known trademark sounds.

Aaron Thalwitzer is an attorney practicing in Melbourne, Brevard County, Florida.

Trademark Infringement: One Name, Two Restaurants, Two Blocks Away

Monday, 23 January, 2012 05:29 Written by Aaron Thalwitzer 0 Comments
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You are not alone!

I’m in Orlando, Florida, this weekend, visiting my family, and an old friend has asked me a question.

Question: I’ve owned and operated a restaurant under the name [JR's] for 20 years. A month ago a restaurant opened up less than a mile away with the exact same name, [JR's] [ed. note - names have been changed to protect the innocent]. They serve barbecue, we serve Tex-Mex. Both are casual, moderately-priced, serve beer, and are generally ‘fun’ places to eat. They stole my name, right?

Answer: You are alleging trademark infringement, which, once proved, could warrant an injunction, damages, or both. You have a good claim.

First, let’s again review the Lanham Act, which creates a cause of action against any person who, in connection with goods or services, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin … which (A) is likely to cause confusion, or to cause mistake, or to deceive as to the… connection … of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, [or] services… See 15 U.S.C. § 1125(a)(1).

The key for a plaintiff in proving infringement of its trademark is to show the likelihood of consumer confusion. See Restatement (Third) of Unfair Competition § 21 cmt. a (1995) (“The test for infringement is whether the actor’s use of a designation as a trademark … creates a likelihood of confusion ….”).

An injunction will force the new JR’s to stop using the mark “JR’s”. A party seeking a preliminary injunction must establish (1) irreparable harm and (2) either (a) a likelihood of success on the merits or (b) a sufficiently serious question going to the merits and a balance of hardships tipping decidedly in the moving party’s favor. See Jackson Dairy, Inc. v. H.P. Hood & Sons, Inc., 596 F.2d 70, 72 (2d Cir.1979) (per curiam). In a trademark infringement case, proof of a likelihood of confusion establishes both a likelihood of success on the merits and irreparable harm. See Hasbro, Inc. v. Lanard Toys, Ltd., 858 F.2d 70, 73 (2d Cir.1988).

Relief may be available under 15 U.S.C. §§ 1114 (imitation of registered mark) and 1125(a) (false designation of origin). To prevail on a claim of trademark infringement, a plaintiff must show, first, that its mark merits protection, and, second, that the defendant’s use of a similar mark is likely to cause consumer confusion. I will assume you have have validly registered your mark (if not please do so; a registered mark in continuous use for five consecutive years after registration, and still in use, becomes incontestable under 15 U.S.C. § 1065) and turn consider the pivotal question: the likelihood of confusion.

Now we apply the multi-factor test, which requires analysis of several non-exclusive factors, including: (1) the strength of the mark, (2) the degree of similarity between the two marks, (3) the competitive proximity of the products, (4) actual confusion, (5) the likelihood the plaintiff will bridge the gap, (6) the defendant’s good faith in adopting its mark, (7) the quality of the defendant’s products, and (8) the sophistication of the purchasers. This will give us a good idea of the likelihood of confusion, but the court is not limited to these factors, and all must be viewed in the context of whether the consumer will be confused as to the source of the product.

I’ll go factor by factor.

(1) Your restaurant has been around for 30 years, so I will assume you have a strong mark. (2) The marks are identical. (3) You are directly competing geographically (6) and in terms of markets and could walk from one location to the other. (7) Good faith is impossible to determine without additional facts, but it may be inferred that the new JR’s is aware of your mark. (7) I don’t know anything about the quality of Defendant’s products. (8) I’ll assume the purchasers are an average sampling of the population, since the prices are moderate and you both serve beer.

There is an additional factor. The mark, “JR’s” probably derives from someone’s proper name. If both restaurants have proprietors named “JR”, things get mucked up. “[C]ourts generally are hesitant to afford strong protection to proper names, since to do so preempts others with the same name from trading on their own reputation. ‘To prevent all use of [a man's personal name] is to take away his identity; without it he cannot make known who he is to those who may wish to deal with him; and that is so grievous an injury that courts will avoid imposing it, if they possibly can.’” Brennan’s Inc. v. Brennan’s Restaurant, L.L.C., 360 F. 3d 125 (2d. Cir. 2004). The name of a person, therefore, like other descriptive marks, is protectible only if it has acquired secondary meaning.

The ultimate answer will depend on the overall impression of the name. I believe, on these facts, that you would probably prevail on an infringement claim. However, if the new JR’s added “BBQ” to their name, you would have an uphill battle. You will have to show that consumers will be confused by the names. Given the extreme proximity of the restaurants, one can envision two people meeting at disparate JR’s if an address wasn’t specified. You may want to consider hiring a trademark attorney. There are other claims and options beyond the scope of this article.

Dr. Pepper, Dublin, Texas, and a Trademark

Saturday, 14 January, 2012 09:05 Written by Rene Dial 0 Comments
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By: Rene Dial

While I was perusing the web I ran across an article with regard to Dr. Pepper suing its oldest distributor over the Dr. Pepper trademark.  Yes, that is exactly what I was thinking… Why are they suing their own bottling company over the trademark if they are selling the corporation’s product and if there is an issue, why not pull their contract to bottle Dr. Pepper.  Okay yes, it took me a few minutes to realize they were talking about Dublin, Texas not Dublin Ireland as well.

It seems that the bottler was adding the Dublin name to the Dr. Pepper mark resulting in, you guessed it, Dublin Dr. Pepper which is causing dilution of the Dr. Pepper mark.  Using the mark in this manner would make Dublin the trademark and Dr. Pepper the generic name for the drink which as a trademark owner you do not want.  If the mark is used in this manner there is the potential for the mark to go the way of aspirin and become the name for the type of product instead of the source of the product.

According to the article I read on WSJ.com Dublin makes their Dr. Pepper from cane sugar unlike most other bottlers that use high fructose corn syrup.  Funny as I always thought that the different manufacturers all had to use the same formula to make the product.  The bottling company has agreed to stop bottling and distributing Dr. Pepper as part of the settlement.

I do not have a copy of the complaint or settlement so I am not sure as to how long Dublin has been using the name with the trademark to sell Dublin Dr. Pepper and related paraphernalia or else I would go a little more in detail about the case.  The coffee mugs and other related items were supposedly being sold over the internet and I can only assume that Dublin Bottling not Dr. Pepper Snapple Group was receiving the proceeds.

With the historic value of being the oldest bottler, the surrounding town’s tourism, why not come to some other agreement.  I wonder if Dr. Pepper will force the town to take down their signs?

Have a great weekend.

TROY LANDRY SUES OVER TRADEMARKED SAYINGS

Tuesday, 10 January, 2012 18:07 Written by danieldavidson 1 Comment
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By Daniel Davidson

Entertainment must be hard to come by these days, or the broadcast companies have realized that it is as easy as following around an alligator trapper to keep viewers entertained.  I have to admit, I am a huge fan of the show ‘Swamp People’ which airs on The History Channel.

‘Swamp People’, a show centered on various families in the Louisiana Bayou, depicts the everyday lives of an alligator trapper and the obstacles they encounter.  Some obstacles include extreme weather, poachers, gun misfires, and of course, “Tree Shakas”.

For one trapper, he has encountered a new kind of obstacle, trademark infringers.  Troy Landry, one of the more popular personalities of the show, filed a lawsuit in the U.S. District Court for the Western District of Louisiana claiming that Halpern Import Company, National Cap and Sportswear, Inc., and Ripple Junction Design Co. have infringed upon his trademark rights.  Among the trademarks which Landry claims have been infringed are, “Choot Em”, “Tree Shaka,” “Tree Breaka,” and “Mudda Fricka.”

In the Complaint filed by Troy Landry Productions, LLC, they claim that they are owners of “unregistered and federally registered trademarks,” which include the marks listed above.  Upon examination of the U.S. Patent and Trademark Office’s TESS (Trademark Electronic Search System) for trademarks filed by Landry, I did not come across any trademark registrations for any of his marks, including the applications filed for “Troy Landry” and “Got Gator.”  Although Troy doesn’t have any federal registrations for the trademark sayings, Troy does enjoy common law trademark rights in them.

The companies listed for infringement allegedly offer for sale t-shirts, caps, sweat shirts, etc. containing the “Choot Em,” “Tree Shaka,” “Tree Breaka,” and “Mudda Fricka” trademarks.

Troy Landry Productions, LLC is praying that the Court order the named Defendants be enjoined from using the trademarks, that they deliver all the merchandise, signs, displays, advertisements, packaging, and other materials, which bear the trademarks, to Landry for destruction, an accounting of all profits from the sale of the merchandise, to pay punitive damages, attorney’s fees and costs, and anything else Court deems to be proper.

I have a feeling that Mr. Landry is going to have to wage a few fights to protect his valuable trademark rights.  In protecting those rights, he will be preserving the goodwill which comes with trademarks and his fame.  In turn, Troy will be making his trademarks that much more valuable.

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