Posts Tagged ‘trademark office’

Twitter Settles Trademark Case and Secures “Tweet” Trademark

Wednesday, 12 October, 2011 08:53 Written by Mark Malek 0 Comments

By: Mark R. Malek

Many of you may know that Twitter sued Twittad for trademark infringement over the “Tweet” trademark.  Apparently, being a forward thinking company, Twittad decided to register the “Tweet” trademark and beat Twitter to the punch.  This is really by no fault of Twitter.  Twitter can probably be described as a victim of their own success.  They launched this site that allows people to post 140 character updates.  The people who use Twitter naturally started referring to these updates as Tweets.

In fact, there is an entire subculture and vocabulary that goes along with using Twitter.  For example, on my Twitter account (@PTOLawyer) I have 18,000 followers, who I refer to as my Tweeps.  I tweet content mostly having to do with intellectual property law.  Sometimes my Tweeps will retweet my tweets so that their Tweeps can follow one of my tweets that they find to be interesting.  Did you follow that?  Twitter users did.

Anyway, Twittad saw some value in the Tweet trademark, and decided to file a trademark application for it.  In response, Twitter sued Twittadd.  In an article posted yesterday on Techi.com, it appears that Twittad has settled the trademark infringement lawsuit with Twitter.  As part of the settlement, Twittad will transfer the registered “Tweet” trademark to Twittad.  The settlement was confidential, so it is unknown whether or not Twittad received compensation for the trademark.

Here’s the question of the day – How does Twitter use the “Tweet” trademark in interstate commerce?  The only thing I see on the Twitter website is a count of how many “Tweets” I have posted.  I am not sure, but maybe that is enough.  In order to receive federal trademark protection, you must use your trademark in interstate commerce, i.e., between two states.  Certainly, using the trademark on the Internet will fulfill that requirement, but it has to be more than just an indicator of how many “tweets” I have posted, right?  The trademark has to identify the source of a good or service.  I am not sure how indicating the number of “tweets” that I have posted achieves that requirement.  Twitter may possibly try to rework their site in the future in order to try to better use the “Tweet” trademark in interstate commerce.  We will have to see where this goes.

In the meantime, please feel free to follow me (@PTOLawyer) on twitter for more great updates.

 

Anheuser-Busch trademarking area codes in wake of Goose Island purchase

Sunday, 10 July, 2011 18:06 Written by Scott Nyman 1 Comment

Scott Nyman

 

Last week, I spent some time on one of my favorite cities, Chicago. Between the Taste of Chicago, Giordano’s, Gino’s East, and the wide selection of craft and microbrews available, let’s just say I packed a little extra carry on for my return to Florida (and leave it at that!). But, all fat jokes aside, Chicago is a summer paradise for anyone who enjoys good beer. In the winter, it’s indiscriminately brutal.

In Florida, our beer selection is much more limited than our northern neighbors. Our specialty taps reach little further than Guinness, Heineken, and Landshark. While in Chicago, I made sure to spoil myself with the likes of New Belgium’s Fat Tire and 1554, Great Lakes Brewing Company’s Edmund Fitzgerald and Elliot Ness, and the local Goose Island’s 312. And, of course, I had an Old Style in Wrigleyville while rooting for the Cubs to triumph over the Sox (they didn’t).

Imagine my surprise when learning that Goose Island has recently been acquired by brewing behemoth Anheuser-Busch. The purchase most likely includes all trademarks and other  intellectual properties owned by company behind Goose Island beers, along with the breweries and recipes that made the brewery famous. I was even more surprised to learn that AB has been applying for federal trademark registration of the area codes of other beer loving cities. Being a Clevelander in my early years, I searched the local “216″ area code in TESS. Yep, AB filed the application for federal registration directed at the Cleveland, OH market. A quick search of other cities I’ve called home revealed additional registrations for Miami, FL’s “305,” but oddly not for Columbus, OH’s “614″ or Tampa Bay “813″ or “727.” Go figure!

This make me wonder if Great Lakes Brewing Company, a Cleveland native with a very excellent line of beers, is planning to oppose the mark. If anyone from Great Lakes is reading, I would love to help. Just writing this article is making me crave a Blackout Stout.

 

Check to see if your city has been covered in the Anheuser-Busch area code sweep:

http://tess2.uspto.gov

Director Kappos Issues Statement as House Considers Patent Reform

Wednesday, 22 June, 2011 11:57 Written by Mark Malek 3 Comments

By: Mark R. Malek

In a press release dated today, USPTO Director David Kappos congratulated members of congress for ushering the America Invents Act onto the floor for consideration by the full House.  My colleague, Scott Nyman, has written several articles about the America Invents Act (see articles here, here, here, here, here, here, here, and finally, here.  As you can tell, the American Invents Act is something that is slightly important to us, and we have been following it closely.  Much of what will come with patent reform will have a direct impact on inventors and various strategies for obtaining patent protection for your inventions (not your ideas).

In his press release today, Director Kappos warned Congress that the USPTO would need access to all of its fees “in order to carry out the mandates of the legislation effectively and perform its core mission to support America’s inventors.”  Kappos is right on.  I have been catching a lot of heat for being so supportive of Kappos.  I have been hearing a lot of folks gripe that he is pro-big business and anti-small inventor.  I think that is not the case at all.  The idea of allowing the USPTO to keep the funds that it generates is geared towards transforming the Patent Office into a more effective and efficient agency.  It will allow the pendency times of patent applications to be decreased by allowing the USPTO to increase the number of examiners, provide enhanced training and improve the infrastructure at the Patent Office.

Of course, these measures help the entire patent system, but they are especially helpful to the small inventor that is likely relying on his/her patent application to be allowed so that they can show investors that they have carved out a specific part of the market.  Believe me – big business is not waiting on the sidelines to launch their technologies.  Truly, the last thing that the USPTO needs is some excuse to increase “government oversight.”  I have said it before and I’ll say it again – why mess with an organization that has consistently operated in the black?  Why skim money from such an agency just to support other agencies that operate in the red?  It just doesn’t make sense to me.  I can only hope that Congress takes the warnings of Director Kappos seriously.

 

USPTO Appoints New Deputy Commissioner for Trademark Operations

Friday, 17 June, 2011 08:48 Written by Mark Malek 0 Comments

By: Mark R. Malek

In a press release dated June 15, 2011, the USPTO announced the appointment of Mary Boney Denison as deputy commissioner for trademark operations. Ms. Denison will oversee the examination and processing of applications throughout the trademark operation.  Ms. Denison was one of the founding partners of Manelli Denison & Selter and focused her practice on trademark prosecution and litigation.

This is just another example of the way things are changing in the USPTO for the better.  First we have a director (David Kappos) that has a background in intellectual property as the Chief IP Counsel for IBM, the largest patent filer in the US for as long as I can remember.  Now we have supplemented that experience with a seasoned trademark attorney to run trademark operations.  Things are on the upswing at the USPTO.

 

Apple to Turn Over Thunderbolt Trademark to Intel

Saturday, 04 June, 2011 14:48 Written by Mark Malek 0 Comments

By: Mark R. Malek

Seems as though every time I turn around, Apple is in the intellectual property news once again.  This time, I understand that Apple will be turning over ownership of the “Thunderbolt” trademark to Intel.

Apple originally filed for the “Thunderbolt” trademark to be used in connection with its new high speed data port.  Intel, however, worked with Apple to develop this new standard.  The deal allows Apple to have unrestricted use of the trademark.  As I was reading through this story, it does not seem as though there was any sort of “dispute” with respect to the trademark.  Instead, it looks as though Apple and Intel worked together on this new standard, and part of Apple’s contribution was to take care of the initial trademark filing.  Of course, any type of intellectual property story with Apple involved always seems like a dispute.

This almost seems like a cross licensing deal, and I am sure that the “Thunderbolt” trademark was not the only piece of intellectual property involved in the deal.  There may have been some patents or patent applications involved, and certainly some copyright issues raised in the licensing deal.

These are some of the things that companies need to think about when entering into collaborative agreements with one another.  Before entering into collaborative agreements with other companies, these types of terms should be agreed upon.  Taking the time to think of these terms and making sure that everything is as clear as possible is a sure way to substantially reduce the likelihood of litigation at a later date.

You will notice that I did not say that litigation could be eliminated.  I wish that were the case, but it is just not feasible.  If someone thinks that they have a right to something, and they have $350 to file a lawsuit (that’s about the going rate for a filing fee for a complaint) then they can sue you.  With the proper agreements in place, however, you will likely have a good defense.

 

 

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