Posts Tagged ‘registered trademark’

You Never Forget Your First Time …

Saturday, 19 May, 2012 06:00 Written by Bill Harding 4 Comments
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Relax.  It’s not that kind of post.

Today I am christening a new TacticalIP blog category:  Intellectual Asset Management (IAM).  To introduce some terminology used in the field, I thought I would share the story of my initiation to the world of IAM.

Long before I became a patent attorney, I was a software engineer and entrepreneur.  My five-employee company licensed property insurance rating software to agents across the State of Florida.  One day, I called my only competitor and pointed out that the Florida rating software market “wasn’t big enough for the both of us” (yes, it was an awkwardly John Wayne-esque conversation between two computer geeks).  I eventually agreed to sell my software line of business to the competitor company.

No tangible property changed hands in our sales transaction, as my little software company owned no buildings, vehicles, furniture, nor even our rapidly-depreciating computing hardware.  To support the sale, I collected an inventory of all the intellectual property my company was to formally hand over to the buyer.  For example, our copyrighted software code, training manuals, and website content all qualified as intellectual property.  Also, the trademarked software product name, logo, and slogans I conveyed to the buyer were all intellectual property.  Had my company owned and transferred any patent rights to insurance-related inventions, those patents certainly would have qualified as intellectual property.

Immediately after the deal to sell my rating business closed, the buyer unceremoniously pitched all of my company’s inventoried intellectual property directly into his trash can (figuratively, if not literally)!  Why?  Refer to the beginning of my story:  the buyer was a competitor!  That company already had its own insurance rating source code, training manuals, website content, product name, logos, slogans, etc.  So what exactly did that competitor really buy if not formal, government-registered intellectual property?  It turns out the only asset my company had that was of value to that competitor was … our customers!

While my company was operating, we followed the common industry practice of keeping our customer database confidential to complicate, if not prevent, pilfering of those customers by competitors.  Proprietary information used in the operation of a business and that is maintained confidential for competitive advantage is called trade secret.  My company’s customers were not its property (no company can “own” its customers).  Nonetheless, that trade secret list of customers was certainly an intellectual asset and, in the eyes of that competitor anyway, it was the only asset my company had that was of any value at all to his business.

Moral of the story:  Intellectual assets certainly include formal intellectual property rights (e.g., patent, trademark, copyright), but also may include a vast array of intangibles that nonetheless are of value to the asset holder or to some interested acquirer.  Intellectual Asset Management (IAM) is all about creating, managing and exploiting such intellectual assets to realize value for the owner.  What constitutes an intellectual asset often is limited only to the eye of the beholder.

Disney Goes After Pixar Petroleum for Trademark Infringement

Friday, 09 December, 2011 09:38 Written by Mark Malek 1 Comment
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By: Mark R. Malek

If you have read my articles in the past, you may have figured out that I frequent the Disney Theme Parks often, and I watch most all of the Pixar movies (see my most recent article about Disney here).  I would like to blame that on my kids but, in all honesty, I was a Disney season passholder and a fan of the Pixar movies long before I had kids.  I do like most of the Pixar movies (with exception to Wall-E) and, since Steve Jobs was a majority stakeholder in Pixar, I was somewhat saddened by his passing last month.

I came across a story last week in the Wall Street Journal that caught my eye.  As it turns out, an oil and gas company in Calgary, Alberta announced that it would organize its oil sands and carbonate bitumen interests into a subsidiary called Pixar Petroleum Corp. Even more interesting, however, is the name of Pixar Petroleum’s parent company – Paramount Resources Ltd.  The article went on to note that Paramount Resources Ltd. also has a subsidiary named Fox Drilling Inc., and maintains an interest in MGM Energy Corp.

It seems to me that this is just a group that gets a kick out of choosing names for their companies that are similar to those of the movie industry. Who knows, maybe these folks are big movie fans. It is not as though the names are not famous. Most everyone has seen a movie made by one of these companies in the past few years.  Disney Enterprises, Inc. owns a slew of trademarks on the Pixar name.  There are several different variations, each directed to the different movies that Pixar has created.  It is amazing to me that nobody at Pixar Petroleum stopped for a second and thought, “maybe Disney is not going to like this so much.”  Besides Google and probably GE, is there another company that has deeper pockets that you are looking to pick a fight with?  Probably not.

I understand that the argument for Pixar Petroleum to attempt to make is that there is no likelihood of confusion between the entertainment industry that Disney is involved in with the petroleum industry that Pixar Petroleum is involved in.  The analysis does not end there.  There is a trademark dilution issue that has to be addressed.  Rene Dial has posted some articles on trademark dilution (see here and here). The Wall Street Journal article cited attorney Gloria Phares who noted that “just because you have a mark in one area, like in animation, doesn’t mean you have a monopoly on a mark.” Gloria’s analysis is correct, but I really hate the use of the word monopoly when referring to intellectual property.

Technically speaking, intellectual property rights do not provide a monopoly to the owner. Instead, it provides the owner with the right to exclude others from using their intellectual property. I know that you are now saying “what’s the difference?” The difference, especially in patent law, is that intellectual property does not give you the right to make and sell whatever you have protected – it merely gives you the right to exclude others from doing so. It is a subtle difference, but it is a difference nonetheless. Over time, however, it seems as though intellectual property owners have tried to over force and over interpret the rights that they have. This behavior is, in my opinion, improper, and is the driving force for much opposition to intellectual property rights.  This discussion has to be saved for another article – possibly a series of articles.

Back to the issue at hand – perhaps, as indicated in the Wall Street Journal Article, this was a jab at Disney and Pixar for their recent jabs at big oil.  The plot of Cars 2 (which I saw in the theater with my kids…twice) revolved around big oil trying to destroy a new company that was introducing alternative fuel.  Yes, it was a bit difficult for the kids to follow, but all is forgiven when Mater does something funny.

 

 

 

 

Twitter Settles Trademark Case and Secures “Tweet” Trademark

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

 

Entrepreneur Magazine a Trademark Bully… to Entrepreneurs

Saturday, 28 May, 2011 08:55 Written by Mark Malek 2 Comments
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By: Mark R. Malek

I came across a story on the Businessweek Magazine Website that rang my trademark bully alarm.  It seems as though Entrepreneur Magazine, which publishes a magazine geared towards the interests of, wait for it, wait for it – entrepreneurs, is suing  entrepreneurs for trademark infringement.  As I was initially reading the story, I was thinking – ok, this author might not have it right.  Entrepreneur Magazine is probably only really going after folks who are putting out competing magazines and using the “Entrepreneur” trademark for their magazines.  Unfortunately, Paul Barrett did understand and was right on.

Entrepreneur Magazine’s latest victim is Daniel Castro, who operates the website EntrepreneurOlogy.com.  Daniel is described as being a serial entrepreneur, having started several different businesses. EntrepreneurOlogy.com is website that, essentially, promotes Mr. Castro as an aid to entrepreneurs and provides tools to “corporate executives to get back to the basics of entrepreneurship.”  Entrepreneur Magazine does have a trademark for “Entrepreneur,” among many others, as used in relation to “advertising and business services, namely, arranging for the promotion of the goods and services of others by means of a global computer network and other computer online services providers; providing business information for the use of customers in the field of starting and operating small businesses and permitting customers to obtain information via a global computer network and other computer online service providers and; web advertising services, namely, providing active links to the websites of other.”

Point of order – isn’t this exactly what entrepreneurship is?  At least a part of it?  For example, “providing business information for the use of customers in the field of starting and operating small businesses.”  Is that not the same as saying “providing business information to entrepreneurs?” Seems to me that, if I were Entrepreneur Magazine, I would be somewhat careful about trying to flex some trademark muscle against folks…especially against my own customer base.  Has this trademark registration been put to the test yet?  Seems to me as though suing your target audience is not a very bright idea.  How are entrepreneurs supposed to trust anything in a magazine for entrepreneurs that involves the advice of “sue your target audience?”

Time to play devil’s advocate.  Let’s say that I am the trademark attorney for Entrepreneur Magazine, and let’s say that my client comes to me with a list of potential infringers.  On that list are three magazine publishers that include the mark “Entrepreneur” in their title, and three websites that are titled “Entrepreneur” and that each provide business information for the use of customers in the field of starting and operating businesses.  I probably advise my client to ask the magazines to stop immediately.  I probably then tell my client that it is time to do a very in-depth analysis of the websites.  My question to my client is the following: “how else do you think this website should describe their target audience, i.e., how else would you refer to someone that is starting a new business?”  If the answer is anything remotely close to “it wouldn’t make sense to call them anything but entrepreneurs,” then I ask my clients to probably reconsider going after the website, especially if the website merely incorporates the word “entrepreneur” into their title.

If your trademark is the only way to say a particular thing, i.e., your trademark becomes the generic term, then it is not protectable.  For example, the following used to be trademarks: aspirin, trampoline and escalator.  Here are a few that I just can’t believe are still around: Band Aid, Popsicle and Jacuzzi.  Seems to me as though Entrepreneur needs to watch its step here.  I’m not saying that entrepreneur is becoming generic as to magazines for business start ups, I’m just saying that a trademark registration does not give them the ability to remove the word from the lexicon.

 

 

 

Yet Another Despicable Trademark Move

Thursday, 19 May, 2011 11:16 Written by Mark Malek 1 Comment
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By: Mark R. Malek

Living in Central Florida, the story of the death of young Caylee Anthony, allegedly at the hands of her mother, has really taken over news.  The local media loves the case and, on average, at least between five and seven minutes of every local newscast is riddled with some sort of new development.  Right now the case is in the jury selection phase and, as you can imagine, there is much difficulty in seating a jury.

I normally do not follow the local news.  I find it to be almost disturbing.  Nowadays, it is just a series of this person shot that person, there was an accident that backed up traffic today, something happened at Disney, the weather is beautiful, and sports.  That’s not interesting enough to keep my attention.  Just put ESPN on in the background, and I’m a happy camper.  The Casey Anthony fiasco, however, has caught national attention.

The case really got on my radar about two days ago, as I was getting ready for bed and the local news was on the TV as background noise.  I heard the word “trademark,” which made me look up.  Then I saw Casey Anthony’s parents on the TV and wondered what the TV anchor got wrong.  I rewound the DVR to see what I had missed and, sure enough, the TV anchor did not get it wrong.  There was a trademark issue involving Casey Anthony’s parents (a pair that have not been getting some good press either).

According to this story, the Anthony’s filed a trademark application on Caylee’s name and has sent a demand to Café Press demanding that merchandise bearing the name “Caylee” be removed from the site.  Here are the results of a search I did on the CafePress.com site.

I am not so sure that this story is accurate.  I did a search of the USPTO records to view the application and could not find any trademark application for “Justice for Caylee” anywhere.  Nor could I find any application that included the name “Caylee” as any part of it.  I also did a search of the trademark records for the State of Florida and could not find any applications pending that might relate to this poor girl’s name.

For the sake of argument, however, let’s say that the article is accurate and that the grandparents of Caylee Anthony have filed a trademark application relating to Caylee’s name.  How are they using this in commerce?  Also, what is so offensive about a group of people that would like to make a little money and, at the same time see some justice done for this child (who I believe was about four years old at the time of her death, was found in a plastic bag dumped in a swamp behind the home of the grandparents, and whose DNA was found in the trunk of her mother’s vehicle)?  I understand that this case is emotional on many different levels and, to tell you the truth, there is no particular side that I support with respect to this trademark disagreement.  The folks who are selling these t-shirts are not exactly in the right (morally), and the grandparents have no trademark rights.

This is a sad case all around, and there is no winner here.  I just can’t believe that in the middle of this entire mess, trademark law has found a way to become an issue.

 

 

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