Posts Tagged ‘trademark prosecution’

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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.

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By: Mark R. Malek

Although I do not have much information about it yet, a recent article indicated that Facebook has filed a trademark infringement lawsuit against Friend Finder and Adult Friend Finder.  Apparently, the function on Facebook that allows people to find “friends” is referenced as a “friend finder.”  A quick search of the USPTO records, however, indicate that “FriendFinder” and “AdultFriendFinder” are registered trademarks of Friendfinder, Inc.  The “AdultFriendFinder” trademark was used in commerce at least as early as 1996, as was the “FriendFinder” trademark.  I do not recall Facebook being around that early, so I am not sure where Facebook is coming from with this one.

As our readers know, I have been somewhat critical of Facebook’s trademark enforcement tactics.  See my previous articles about Facebook here, here, and here.  Although, to be perfectly open and honest – I would love to be one of the attorneys selected by Facebook to zealously (and I mean zealously) enforce the Facebook trademark portfolio.  I am pretty sure that such a client could keep me and maybe a couple other attorneys in our firm somewhat busy!

The complaint was not yet available for download and review, but as soon as I get a copy of the compliant, I’ll try to post an update so that we can figure out what Mr. Zuckerburg is up to now.  I really wonder if any of these decisions are run by him.  Who makes the decision to file these lawsuits?  Is Zuckerberg briefed by a team of attorneys as to who they think is infringing the Facebook trademark portfolio and he makes the decision on who to sue and who not to sue?  For some reason, I highly doubt he is involved in the process at all.

I will post a little bit more about this as I get more information.  In the meantime, please feel free to become a fan of TacticalIP at

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By: Mark R. Malek

I’m just sitting here watching the NCAA tournament and I know that somehow, someway, I can relate this to intellectual property.  Of course, I remember that “March Madness” is a registered trademark.  I did not realize, however, that it is registered to the March Madness Athletic Association.  I have to assume that the NCAA Cartel somehow has their hands in the March Madness Athletic Association.

As you can imagine, similar to the NFL’s aggressive protection of it’s most famous trademark – the “Super Bowl,” the March Madness Athletic Association has lawyers that rigorously defend its trademarks.  I read a pretty good article about March Madness and how you just can’t use the term to promote your own goods and services.

Inevitably though, you will see a commercial or some advertisement where, for example, a car dealership is promoting their big sale as the “March Madness Sale.”  You have to assume that this type of behavior gets shut down pretty quickly.  The alternative, of course, is to think of something to promote your goods or services in a way that ties it to the event in question, but that still respects the trademark rights of others.  That is why you always see commercials around late January and early February that say something along the lines of “are you ready for the Big Game?”  Everyone knows what “Big Game” they are talking about, right?  I don’t dare say it because of fear that the NFL will work me over real good.

The point here is that just because the name of the sporting event is cool, do not think that you can automatically use that name to promote your own goods or services.  The other point is that you will certainly have time to write articles like this if your team has been crappy for 5 straight years and you have stopped paying attention to the tournament….thanks a lot NC State!

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By: Mark R. Malek

I know that this is breaking news to many, but I am a die-hard Jets fan.  I am still in a period of morning now that the Super Bowl has come and gone.  Worse yet, my N.C. State Wolfpack is not giving me much hope for a decent March, so I am relegated to watching spring training games and, every now and again, I will turn on the NASCAR race.  That is pretty short lived though.  Generally, my three year old will make his way into the room and the conversation will go a bit like this:

Jacob: “What are you watching Daddy?”
Mark: “NASCAR son!”  (please try to imagine pretend southern accent)
Jacob:  “The cars are going fast Daddy.”
Mark: “’’Bout 200 miles per hour boy.” (another fake accent)
Jacob:  “Can we watch Fireman Sam?”
Mark: “Of course.” (accent is gone, just a weak Daddy at this point)

Those of you who are unfamiliar, Fireman Sam is a British cartoon about – you guessed it – a Fireman named Sam.  The story takes place on Pontypandy Island, which is populated by 10 idiots that seem to find their way into trouble every waking minute of the day!

Back to the trademark issue at hand.  One of the proudest days of my life as a Jets fan was when the Jets beat the Patriots and the evil Tom Brady to reach the AFC Championship game.  I went to the local Jets tavern to watch the game with my neighbor, a Pittsburgh Steelers fan (who eventually talked me into going to Pittsburgh to watch the AFC Championship game – see my article about my wonderful experience in Pittsburgh here).  I was absolutely shocked when the Jets pulled out a victory.  I guess Bart Scott, the NY Jets powerful linebacker had something to prove.  He gave the following interview right after the game:

If you did not giggle after that interview, something is seriously wrong with you.  I had just about forgotten the interview until I walked into a restaurant in Pittsburgh and saw some fellow Jets fans.  We all got together, made some noise, and then they looked at some Pittsburgh fans and yelled “CAN’T WAIT!”  That little saying became the mantra of the entire weekend.  Everywhere you saw a Jets fan, you heard “CAN’T WAIT!”  I started searching high and low for a t-shirt or a hat or something that had the now famous interview saying on it.  How could someone miss out on the opportunity to make a few bucks on that?  Put me in line with the rest of the suckers that would have ponied up some cash for that apparel.

According to this article on Yahoo Sports, Bart Scott has filed a trademark application for “Can’t Wait” in connection with “men’s, women’s and children’s apparel.”  This is an “intent to use” application, so my hopes of getting a t-shirt anytime soon should remain minimal.  Below is a copy of the application as filed with the Trademark Office:

Mark Image

Word Mark CAN’T WAIT!
Goods and Services IC 025. US 022 039. G & S: Men’s, Women’s and Children’s apparel
Standard Characters Claimed
Serial Number 85222895
Filing Date January 21, 2011
Current Filing Basis 1B
Original Filing Basis 1B
Owner (APPLICANT) Scott, Bartholomew E. INDIVIDUAL UNITED STATES 724 W. Lancaster Avenue Wayne PENNSYLVANIA 19087
Attorney of Record Joseph E. Walsh, Jr.
Type of Mark TRADEMARK
Live/Dead Indicator LIVE

Undoubtedly, this application will be rejected.  The reason for the rejection, however, will be because the description of goods and services is way too broad.  The trademark Examiner will likely require an amendment to the description of goods to specify the type of apparel that the mark will be used in connection with.  The next question, however, is will it be enforceable.  Please permit me to provide the typical lawyer answer – maybe!  The law was a bit of a tough transition from engineering from me.  As a civil engineer, the bridge falls or the bridge stands.  Everything is pretty much black and white.  In the legal system, however, we only deal in shades of gray.

Doug Farrar, the author of the article, is a sports writer – and a damn fine one.  With that in mind, however, I really wish he got a technical read of his article before posting it.  The article is riddled with intellectual property inconsistencies.  For example, Doug notes that Scott had trademarked the “Can’t Wait” phrase – actually he has only applied for it.  He has a long way to go before he gets it.  Then Doug notes that NFL Properties would somehow be involved in enforcement.  I do not see why they would unless Scott assigned his rights to them, or if Scott insisted on putting the NFL logo on the shirts.  Lastly, and this one just about killed me – Doug interchangeably uses “copyright” and “trademark.”  These are two distinctly different types of intellectual property.  Copyrights are meant to protect works of art, i.e., novels, sculptures, paintings, music, etc.  Trademarks are meant to be source identifiers, i.e., McDonald’s brand hamburgers, Nike brand shoes, Kleenex brand tissue (yes they still somehow have a trademark).

Here’s the best part about this whole thing.  Just because Bart Scott said it, does not necessarily give him rights to the term “Can’t Wait!” with respect to apparel.  I could have just as easily started selling green t-shirts with the words “Can’t Wait” on them…and nothing else, i.e., no Jets symbol, no NFL logo.  I think that Bart Scott would have been hard pressed to stop me.  His best strategy, and one that would most certainly work, would be to out spend me on litigation….it wouldn’t take much.  Don’t worry Bart, I would have never done that to you.  I sure do hope to see those shirts soon.  Please feel free to send me a case of them.  I’ll wear one to next year’s Super Bowl and cheer my Jets on to a championship!

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By: Mark R. Malek

I have to thank my good friend, Attorney Heather Vargas, for sending me this update.  According to an email blast that went out from the USPTO’s email news service yesterday, the Trademark Electronic Search System (TESS) was not producing accurate results for a brief period of time on January 18th.  The body of the email from the USPTO is copied below:

“On Tuesday, January 18, the USPTO became aware that searches conducted prior to 3:30 p.m. through the Trademark Electronic Search System (TESS) were not producing accurate results. The TESS problem was resolved; however, it is suggested that any searches conducted prior to 3:30 p.m. be performed again to ensure accuracy.”

The interesting part of this “warning” is that the USPTO does not seem to know when the inaccuracies started, or what the inaccuracies are.  The point is, if you have recently relied on a trademark search that was only conducted using the TESS system, do it again!  My personal belief, however, is that you should never rely on a search that is done using the TESS system.  It is a great place to start, but the inquiry should not necessarily end there.

Sometimes you can immediately dispense with any further search based on the results of a TESS search.  Other times, however, your search may not come up with much of anything that you find to be relevant.  If you file a trademark application right away, and your client immediately starts using the trademark, there is a chance that your client could be in harm’s way.  What if there is a confusingly similar registered trademark out there that did not show up in your brief search on TESS?  A confusingly similar trademark might not be identical to your client’s trademark and, as such, would likely not show up in a TESS search unless you typed in the right words.  Not only will the Examiner likely reject the application, but your client might get a nasty little letter from the trademark owner telling them to CEASE AND DESIST!  If your trademark client is relying on this search to launch his/her business, then maybe consider a more comprehensive search, and hopefully one that includes common law trademarks, domain name registrations and state trademarks.

The information that is provided by the USPTO’s email news blast can be helpful and I recommend subscribing to it.  Please click here to subscribe.




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