Posts Tagged ‘registration’

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.

 

 

 

Trademark Office Launches Trademark Dashboard

Thursday, 12 May, 2011 15:06 Written by Mark Malek 2 Comments
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By: Mark R. Malek

You may recall that I posted a couple of articles (see here and here)regarding the new Patent Dashboard that was launched by the PTO.  The Patent Dashboard was a visualization tool that allowed you to view the progress of several different factors on the patent side of the PTO.  For example, and the dial that gets the most attention, one can see how the backlog is coming along.  As you may recall, the patent application backlog, at one time, was upwards of 900,000 patent applications.  Yes, 900,000.  That is not a typo.  I am pleased to report after viewing the dashboard just a few minutes ago, that the backlog is now down to a little over 700,000.

Today, on Director Kappos’ blog, in a guest post by the Commissioner for Trademarks, Deborah Cohn, the Trademark Office announced the launch of the Trademark Dashboard.  The Trademark Dashboard can be viewed here.  All I can say is – WOW!  What a difference.  The Trademark Dashboard is geared more towards when an Applicant can expect a first Office Action on their trademark application.  Any guesses?  No?  2.7 months.  Not years, months!  I am floored by that.  I understand that it takes significantly longer to examine a patent application than it does to examine a trademark application, but the disparity between 2.7 months on the trademark side and 25.3 months on the patent side is ridiculous.  By the way, on some technologies, you can only hope, pray and dream to get something as quickly as 25 months.

Thanks Commissioner Cohn for launching the Trademark Dashboard to keep us all updated.  I can only hope that somehow, the PTO is able to keep more of its funds so that it can decrease the pendency of patent applications to try to catch up with the Trademark Office.

 

Wegmans and Walgreens Settle Trademark Dispute of “W”

Wednesday, 27 April, 2011 21:23 Written by Mark Malek 0 Comments
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By: Mark R. Malek

Walgreens filed a trademark infringement lawsuit against Wegmans Food Markets over use of a “W” logo that Walgreens alleged to be so similar in nature that it would likely cause consumer confusion with the “W” logo that was registered as a trademark to Walgreens.  The claim was recently settled, and Wegmans has agreed not to use the “W” logo (source).

In a trademark infringement lawsuit, there is not necessarily a need to prove that actual confusion exists.  In other words, there is no need to show that one consumer was confused as to the source of the goods and services being offered.  Instead, there is a test that can be applied with several factors in order to determine whether or not there is a “likelihood of confusion.”  I came across a good post that points out the test for determining whether or not there exists a likelihood of confusion.  The very best quote in this post notes that when “determining likelihood of confusion, courts evaluate several factors. No one factor is determinative in and of itself, and how important one factor is over another is very case specific.”  Now you can understand why litigation takes so very long and can be so very expensive.  While one side may be arguing the merits and strengths of some of the factors, the other side is arguing how the other factors are not met and that, therefore, there is no infringement.

The factors that are analyzed include whether or not the marks compete with one another, whether or not they are used in the same channels of trade, whether or not the goods are closely related, whether or not the infringer intended to mislead the consumer, the similarity of the marks, whether or not the customers of the company are overlapping and whether or not there has been actual confusion.  Although actual confusion is only one of the factors, I believe it to be somewhat important.  Then again, there is not likely to be actual confusion standing alone, and only one instance of actual confusion is likely not enough to win the day.

Wegmans probably made a good choice.  There has to be a business decision that was made at some point.  I suspect that in the not too recent past, Wegmans, like many companies nowadays, went through some sort of marketing overhaul and someone probably suggested that it may be time to “update the logo.”  I also suspect that the person who suggested such a thing was shot down pretty quickly.  Now, Wegmans can revisit the rebranding.  All in all, this will probably wind up being a good thing for Wegmans – gives them a chance to “reinvent” themselves.  Please stay tuned – I will post more articles on the tests necessary to prove trademark infringement.

Facebook Sues FacebookOfSex.com for Trademark Infringement

Monday, 25 April, 2011 09:00 Written by Mark Malek 3 Comments
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By: Mark R. Malek

According to an article on Domains.com, Facebook has filed suit against FacebookOfSex.com for trademark infringement.  According to another article on XBiz.com, this is related to the FriendFinder issue that I reported on last week.  I was really wondering about the details of what was going on with the “FriendFinder” trademark.

It seems as though the folks who run FriendFinder.com and AdultFriendFinder.com also run FacebookOfSex.com.  This is apparently one of their chat sites.  So it does not seem as though the fight is over “FriendFinder” as I had originally reported.  In the complaint, Facebook alleges that the launch of FacebookofSex.com was a “calculated scheme to capitalize on the fame of Facebook’s marks.”

For once, I am going to agree with Facebook and take their side on this issue.  When it comes to this lawsuit, I cannot call them trademark bullies.  As you know, I have been critical of Facebook’s tactics in the past.  See my articles here, here, here, and here.  This is not the first time that Facebook has encountered the need to stop the porn industry from using their mark.  You may recall in one of my previous articles that Facebook had to sue Faceporn for trademark infringement and, as of now, the Faceporn page is down.

I tweeted this story earlier this week (feel free to follow me @PTOLawyer) and one of the immediate responses I got back was from my good friend Patrick Anderson (Patrick runs an intellectual property blog – check it out http://gametimeip.com/.  He also tweets @pandersonllc).  Patrick’s response was very accurate – “I’ve never seen the ‘face book of sex’ used in commerce, but that’s one where FB just can’t sit on its hands…” I have to say that I agree with Patrick’s response.  If Facebook value’s their trademark portfolio, which they clearly do, then they have to stop this kind of activity.

I truly cannot think of a legal argument that would give FacebookOfSex.com a leg to stand on.  They are using Facebook’s trademark in its entirety in substantially the same classification, i.e., social media.  Sure these are two very different types of social media, but they are related nonetheless.  The likelihood is small that someone looking for Facebook would be confused if they landed on FacebookOfSex.com and saw some rather graphic pictures.  This trademark argument likely goes more towards dilution, i.e., diluting the value of a very famous trademark.  Facebook is, arguably, one of the more valuable trademarks out there and I believe that the dilution argument will be available for this case.

I will certainly follow this case, but I highly doubt that it gets too far.  I suspect there will be a rather quick settlement reached once FacebookOfSex.com comes to the realization that they are on the wrong side of the law with this one.

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