Top Trademark News of Feb 2011 | Trademark Law Firms Blog

Here are the top 10 trademark news stories of February 2011:

1. Subway tries to trademark "Footlong." Casey's General Stores, an Iowa-based retailer, is working with a trademark law firm to fight against Subway's attempts to file registration for "Footlong." Casey's General Stores claims the term is generic.

2. Sarah and Bristol Palin attempt to trademark their names. Sarah and Bristol Palin are attempting to trademark their names for use in association with motivational speaking. Sarah Palin has filed for registration in International Class 041 for use in association with "Educational and entertainment services, namely, providing motivational speaking services in the field of politics, culture, business and values."

3. Ford sues Ferrari over naming of Formula 1 car. Ford has sued Ferrari in a Detroit federal district court over its adoption and use of the name "F-150" for its Formula 1 car.

4. Bing and Yahoo change policy concerning the use of trademark keywords in advertisements. Bing and Yahoo will change their policies concerning the use of trademark keywords in advertisements starting March 3. This change means that Bing and Yahoo will no longer police advertisements for trademark infringement and trademark owners must now police the marketplace on their own accord.

5. President Obama says modernizing USPTO is key to success. President Obama has committed to modernizing the technology used by the United States Patent and Trademark Office according to the New York Times. More than 1,000 examiners will be added over the next two years.

6. Two taverns fight over "Tavern on the" moniker. Tavern on the Plaza, a yet to be opened Indianapolis bar, is suing Tavern on the Green, a Manhattan-based bar that is now undergoing a Chapter 7 bankruptcy. Tavern on the Plaza filed suit in Indianapolis after receiving a trademark infringement threat letter from the Chapter 7 trustee in Tavern on the Green's bankruptcy.

7. Pittsburg Steelers wins trademark dispute over counterfeit t-shirts. The Pittsburg Steelers have won a trademark dispute over counterfeit t-shirts. A U.S. District Court judge has ruled that Nicholas Wohlfarthof Turtle Creek Sportswear has violated a 2005 consent judgment that barred him from selling counterfeit Steeler's merchandise. 

8. Google attempts to block documents that may show extent of consumer confusion. Google is attempted to block the release of documents in a Virgina federal appeals court. These documents, which arise out of a lawsuit filed by Rosetta Stone against Google for keyword advertising trademark infringement, are alleged to reveal the extent that consumers are confused by Google advertisements when they search for trademarked terms.

9. Phat Farm sues "Phag Farm" for trademark infringement. Hip hop clothing manufacturer Phat Farm has initiated trademark litigation against a Florida company that produces t-shirts bearing the term "Phag Farm." The suit seeks $7 million in damages.

10. Audio accessories company wins $2 million in statutory damages in trademark infringement lawsuit. Audio accessories company Odyssey Innovative Designs has won $2 million in statutory damages against Rack in the Cases Limited, a competitor in the audio market. Their trademark law firm alleged that Rack in the Cases Limited made knock-off copies of Odyssey products.

Walmart Battles Trademark Owner in TTAB Trademark Cancellation Proceeding

Trademark Owners Beware: Atlanta hair care business in trademark battle with Walmart, AJC News

Retail giant Walmart files Trademark Cancellation Proceeding against the owner of a small Atlanta hair care business called Embodi International, which is owned and operated by O.B. Nizam.  Nizam filed and achieved trademark registration for the EL EMBODI INTERNATIONAL mark with the United States Patent and Trademark Office back in 2008.

Two years after trademark registration, Walmart filed a trademark cancellation proceeding with the Trademark Trial and Appeal Board asserting that it has common law rights to the Embody name dating back to 2004, and to the Mbody name dating back to 2007.  If Walmart can prove that it first used the names in commerce before Embodi International applied for its mark, Walmart’s claims could trump the Embodi trademark.   According to Nizam, there has not seen any evidence as to when or where Walmart may have used the names in commerce on its products. 

Trademark Lawyers Blog | Pac 12 Knows How to Protect & Enforce Their Trademark

In the United States, one acquires trademark rights when it first uses a distinctive mark in interstate commerce.  Both "distinctive mark" and "use in interstate commerce" are terms of art for trademark lawyers.  However, prior to making a use in commerce, one can file an intent to use trademark application with the United States Patent and Trademark Office (USPTO), so long as she has a bona fide intent to use the trademark.  This filing serves as a constructive first use as long as the trademark is eventually used and procures into a trademark registration.

The college football conference formerly known as the PAC 10 has sought numerous intent to use trademark applications in light of its adding two teams to its conference.  The PAC 12 Conference filed an intent to use trademark application for logos as well as the PAC-12 characters themselves.  Their attempts to register a trademark were presumably done to take advantage of the constructive use benefit associated with filing an intent to use application.

The Super Bowl MVP Goes To...Trademark Registration

A recent article from Yahoo! Sports points out how the NFL is vigilant about protecting its phrase: SUPER BOWL.  The Washington Post goes into further detail and makes reference to "trademarked words" and their effect on who may and who may not use such trademarks.  These articles are popular because the National Football League applied for and became the owner of a trademark registration, and more than one for that matter, for SUPER BOWL with the USPTO.  In doing so, they took the first step toward securing the additional benefits inherent in a trademark registration.  The reason the NFL's trademark for SUPER BOWL is in the news, however, is because the NFL did not stop once it got its trademark registration.

Are You Getting a Trademark Registration Attorney When You Use a Trademark Registration Service?

It seems like every year new trademark registration services appear.  In fact, there are even consumer reviews of these trademark registration services.  Most of these trademark registration services offer trademark searches, trademark application and trademark monitoring services.  Most also seem to identify a price that appears attractive to consumers.  However, it is important to know what a trademark registration attorney can give to you that these services may not.