Posts Tagged ‘trademark office’

The Trademark Office Is Sending Out Warnings About Trademark Monitoring Scams

Friday, 15 June, 2012 16:35 Written by Mark Malek 0 Comments
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By: Mark R. Malek

This is an issue that has driven me nuts for years. One of my clients will call and ask me if they need to pay an invoice that they received from the Trademark Office. Confused, as to why the Trademark Office would have sent them an invoice, I ask the client to forward it to me. I usually receive an e-mail shortly after the phone call attaching the alleged invoice.

Surprisingly, the invoice includes a seal that resembles that of the Trademark Office, and indicates that the trademark owner owes $400 (or some similar amount) for a trademark monitoring service. It does not purport to be a company that is providing an optional service. Instead, it appears to be a fee from a governmental agency. My general advice to my clients upon reviewing these types of documents is that “if you don’t receive for me, it is a scam.”

I wondered how long it would take for the Trademark Office to do something about this. Just last week, I received a trademark registration for my clients, and enclosed was the warning that is pictured on the right.  Please click on it to enlarge it so that you can read it.  Clicking once will take you to another page that displays a bit of a larger image, and please click on that image to get to an even more readable version. The warning tells the trademark owner to be aware that private companies not associated with the United States Patent and Trademark Office use trademark application and registration information that is publicly available to solicit various services. It also puts the trademark owner on notice that these private companies use names similar to the USPTO, or other governmental agencies, when soliciting these services.

I am glad that the Trademark Office is taking this proactive step to warn trademark owners. My only question is whether or not something can be done to stop these scam artists. Has anyone ever checked to see if they actually provide the services that they collect money for? I highly doubt they do. Please comment below if you have run into similar situations.  I am curious to know if anyone has any knowledge on whether or not these companies actually provide the services that they purport to provide.

DR. DRE TO DIAMONDDRE, CEASE AND DESIST

Tuesday, 20 March, 2012 06:00 Written by danieldavidson 0 Comments
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By Daniel Davidson

Dr. Dre is not a new comer to fighting in courts for his intellectual property.  Around this time last year, a judge awarded Dre 100 percent of the online sales of his iconic compilation, The Chronic.  In a recent letter sent to up-and-coming music producer, DIAMONDDre, the Dr. tells him to lose the name.

DIAMONDDre was granted a Certificate of Registration from the U.S. Patent and Trademark Office on December 6, 2011 for his moniker.  Also a holder of a U.S. Trademark Registration, you guessed it, Andre Young, p/k/a Dr. Dre.  In fact, the two service marks are registered in International Class 41 for entertainment services (tisk, tisk Examining Attorney).

In the letter issued to DIAMONDre, Dr. Dre demands that DIAMONDDre cease and desist any further use of the name, or he will pursue his rights in a court of law.  Would Dr. Dre have a case?  I would think so.  I am even surprised that a likelihood of confusion refusal wasn’t issued by the Examining Attorney of DIAMONDDre’s trademark application.

Nonetheless, I am sure that Dr. Dre has given DIAMONDDre a deadline in which to agree to comply with the cease and desist letter.  Should DIAMONDDre not comply with Dr, Dre’s demands, within the allotted time frame, it will be interesting to see if Dr. Dre will fight to remain the only Dre in the music production business.  The value that Dr. Dre’s name has obtained is worth millions, and I would have to assume that it would be worth it to Dr. Dre to uphold his exclusive right to use the name Dr. Dre in connection with entertainment services.  Is “DIAMONDRE” exactly the same as “Dr. Dre?”  Of course not, but it us confusingly similar, the standard for confusion in trademark law.

Cheers.

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.

 

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

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

 

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