• /
    • Archives /
  • May 31, 2014

Archives For May 31, 2014

Why the USPTO Supplemental Register Matters to You

June 24, 2014 — 2 Comments

If you’ve explored the trademark database maintained by the U.S. Patent and Trademark Office you might have seen some marks filed on the “Supplemental Register” rather than the “Principal Register.” While the differences may not seem too great on their face, the rights associated with each registry are quite different.

The Principal Registry

The Principal Registry is a registry of federally protected trademarks. Once registered, a mark owner may:

  1. Begin using (R) on the registered mark;
  2. Obtain greater damages in an infringement action;
  3. Use the registration to seek protection in foreign countries;
  4. Use the registration to prove constructive notice of ownership; and
  5. File for incontestable status after five years.

The Supplemental Registry, on the other hand, doesn’t offer all of those benefits.

The Supplemental Registry

The most common reason a mark ends up on the Supplemental Registry is because it was rejected for the Principal Registry due to a number of reasons such as descriptiveness or use of a surname or geographical term.

Unfortunately, the owners of marks on the Supplemental Registry only receive benefits 1, 2, and 3. Those owners can’t use the registration to show constructive notice and they can’t seek incontestable status. Further, their acceptance of the Supplement Registry implies they know their mark is week due to descriptiveness or another registration hurdle. Thus, the registration might scare away some potential infringers, but it won’t help too much in any infringement litigation.

The key requirements to obtain a Supplemental Registry registration are quite simple: the owner must be using the mark in commerce and it cannot be generic because generic terms don’t have the effect of serving as a source identifier.

What You Should Consider

If your mark isn’t suitable for the Principal Registry, you should consider seeking protection on the Supplemental Registry because even a Supplemental Registry registration can be used to scare off potential infringers. However, it should be remembered that if you are trying to build a brand based on your mark, the Supplemental Registry isn’t a good long-term tool to achieve that goal. Rather, you should begin using a brand/mark that is protectable on the Principal Registry to better protect your rights and the real value of your brand.

If you want to learn more about trademark law, be sure to sign up for Mighty Updates, our monthly email newsletter!

Image: Thinkstock/Vladimirs

*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

In Trademark Law , , , ,
permalink

How “World Cup” Trademarks Are Affecting Your Google Search Results

June 17, 2014 — Leave a comment

When you search for something on Google you commonly receive a small number of ads in your search results. But, when you search for “World Cup” you will tend to get actual results without ads, plus the famous Google OneBox (the little box at the top of your search results with relevant information). It’s an interesting twist that we will explore below. But first, we’ll explain how keyword advertising and trademark infringement create a new frontier for trademark lawyers.

Keyword Advertising

When you run a search, say for McDonald’s, you’ll get your standard results but also some ads. Those ads are from companies that paid the search engine to display their ads anytime a user searches for a specific keyword. Anyone can buy a keyword, even if that keyword is the name of a competitor.

That raises an interesting legal issue: whether using a keyword protected by a trademark registration constitutes trademark infringement.

Keyword Advertising & Trademark Infringement

While the issue is not fully resolved, most courts have held that keyword advertisers may use protected trademarks in their campaigns, provided they don’t use the protected trademarks in the ad’s copy.

Thus, Burger King could purchase the McDonald’s keyword so that anytime a user searched for McDonald’s, Burger King’s ads would have a chance to appear. According to most courts, that doesn’t constitute trademark infringement. However, if Burger King then used the McDonald’s name in the actual copy, that would be considered infringement.

You might then suspect that a Google search for “World Cup” would result in many ads because that term is so popular. But Google has made some unique decisions with respect to that search.

“World Cup” Search Results

The few court cases that ended in the legal conclusions discussed above are simply the common law. But, Google has its own rules and policies regarding keyword advertising.

It looks like Google is controlling searches for “World Cup” because if you search that term you usually won’t receive ads in return. Rather, you’ll see the Google OneBox (below) with information about the World Cup.

Search Results

You might also notice the official FIFA World Cup trademark in the box, indicating Google is likely receiving payments from FIFA for this. Other Google users are even indicating they have received some ads, but they have been ads for official World Cup sponsors such as Degree deodorant.

It would be interesting to know if FIFA is controlling Google’s keyword searches and offering exclusive Google advertising to its sponsors, but even if such deals exist, we will likely never learn about them.

The Takeaways

First, it is kind of nice to be able to search “World Cup” and not get a bunch of ads.

But second, and more important to you, this is a good lesson in keyword advertising. You may not be able to stop someone from bidding on your protected trademarks as keywords, but if you find ad copy using your marks, you should take action to stop the infringement.

If you are still confused about your rights, be sure to check out MightyMarks.com to learn how we can protect your trademark rights.

Image Credit: Thinkstock/Ig0rZh

*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

In Trademark Law , , , , ,
permalink

Have Your Pi and Trademark it Too

June 10, 2014 — Leave a comment

A Brooklyn artist recently upset geeks and t-shirt merchants with a recently approved federal trademark registration on a 3,000-year-old Greek symbol.

In late 2012 Paul Ingrisano applied for a federal trademark registration for the Pi symbol followed by a period in connection to “athletic apparel, namely shirts, pants, jackets, footwear, hat and caps, [and] athletic uniforms.” After correcting some minor errors with the application he successfully obtained a registration for the mark in early 2014.

Within months of obtaining the registration, Ingrisano began enforcing his newly acquired rights. His first big target was Zazzle.com, a website where users can sell goods like shirts and mugs featuring designs created by the users.

In his cease and desist demand letter Ingrisano’s lawyer makes the case that the sale of apparel on Zazzle.com featuring the Pi symbol is likely to confuse consumers as to the source of the goods being sold (the essential element of proving trademark infringement). The letter then goes on to make multiple demands regarding inventory, evidence of sales, and various accountings.

Zazzle’s initial reaction was to remove all potentially infringing materials for fear it might be indirectly liable as the middleman between the creators of the potentially infringing goods and the end consumers. However after receiving complaints from the creators, a Zazzle representative told cnet.com “After reviewing the takedown request more closely, Zazzle has decided to restore the ‘Pi’ products. Zazzle is a marketplace for a community of artists, and we want to continue to support artists who are creating original artwork.”

Zazzle didn’t elaborate further, but several things in the cease and desist letter seemed a bit off. First, the letter requests Zazzle cease and desist all “copyright infringement” when the matter at hand is a trademark. Remember, copyrights tend to protect creative works while trademarks tend to protect names and slogans.

Second, it is unclear if Ingrisano is seeking to prevent others from using the Pi mark or the Pi mark plus a period. The essential question is whether consumers purchasing goods on Zazzle would be confused as to the source of the goods and believe they were coming from Ingrisano when, in fact, they were not. That raises the question as to the importance of the period in the Pi registration – a question that would likely have to be decided by a jury.

This registration and Ingrisano’s attempt to protect the Pi symbol with a period will undoubtedly raise many eyebrows in the coming months and years and we’ll let you know when new developments arise.

Be sure to follow us on Twitter and like us on Facebook to make sure you don’t miss the updates!

Image Credit: uspto.gov

*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

 

 

In Trademark Disputes, Trademark News , , , ,
permalink

Trademark Law – Coming to a Sitcom Near You

June 3, 2014 — Leave a comment

At Mighty Marks®, we like to break down the complexities of trademark law to help you protect your brand. Luckily, sometimes pop culture helps us out and, as illustrated in HBO’s hit series Silicon Valley, trademark law can even provide entertainment.

Richard, the primary founder of the startup featured in the show, spends most of Episode 3 worried about his company’s name: Pied Piper, Inc.

After receiving a check for $200,000 from an investor, Richard learns of the many problems ahead. Specifically, he didn’t own the company name and an irrigation company had federal trademark protection for the name. These are two issues that could have been easily avoided with a little due diligence. Let’s walk through each.

Business Names

First, he should have checked with his state’s Secretary of State to see if the company name was available. Each state maintains records of businesses formed in the state and two entities cannot have the exact same business name on file in the same state. Note this is not a trademark matter, this is a business law matter. Had he searched his state’s records, he would have found Pied Piper, Inc., the irrigation company. He then could have changed the name (even if just slightly) so he could have formed a business entity.

However, poor Richard now has a $200K check payable to “Pied Piper, Inc.” that he can’t cash because he doesn’t have a business entity under that name!

USPTO Registrations

Second, he should have checked the USPTO databases. Just last week we explained how to perform a preliminary “knockout” search including how to search the USPTO database. Had he searched the database, he would have found the irrigation company. He then could have picked a different name or sought federal protection for the name since his use (computer code) is different from the real Pied Piper’s use (irrigation).

But again, poor Richard is in a bind because he is now spending time and money dealing with something he could have prevented with a simple USPTO search.

Remember, when starting a business, just a little due diligence can go a long way. If you enjoy these posts, be sure to subscribe to our monthly newsletter to get more updates in your inbox!

In Trademark Disputes, Trademark Law , ,
permalink