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.

"How To Trademark" Update: USPTO to Open Office in Detroit, Michigan

The USPTO  is opening its first satellite office in USPTO history.  Currently patent and trademark examiners are located in Washington, D.C. Where will the new USPTO office be located?  You might be surprised.  While their initial call is for patent examination positions, one has to wonder if trademark registration issues will soon be handled by USPTO trademark examing attorneys located in Detroit, MI? Email to DetroitHiring@uspto.gov.

Traverse Internet Law attorneys regularly help clients understand how to trademark a name.  Contact us for more information about trademark registration, trademark clearance and trademark opposition issues.

Facebook Close to Completing Trademark Registration of the Generic Term “Face”

How to trademark the name "face":  In a story first reported by TechCrunch, the United States Patent and Trademark Office (USPTO) has sent Facebook a Notice of Allowance for registration of the word “Face”. Facebook filed registration for the mark within the category of "telecommunication services, namely, providing online chat rooms and electronic bulletin boards for transmission of messages among computer users in the field of general interest and concerning social and entertainment subject matter, none primarily featuring or relating to motoring or to cars.”

Apparently, there are only a few remaining barriers Facebook has left to perform before its registration of the “Face” trademark is complete.
1) Facebook has to pay the issue fee (no foreseeable problems here),
2) Facebook must file a sworn Statement of Use that it intends to use the trademark in conjunction with products or services in commerce, and
3) Facebook must demonstrate its actual use of the mark in commerce.

Apple Trademark Registration for “There’s An App For That” is Likely Subject to Attack

Just because you achieve trademark registration with the USPTO, does not mean you automatically win.

There’s been a lot of press lately about Apple’s trademark application for “there’s an app for that.”

• Apple’s Trademark Registration for “There’s an app for that” is official
• Apple trademarks “there’s an app for that”

But just because Apple is able to navigate the requirements of the United States Patent and Trademark Office for its trademark registration, does not mean Apple would automatically win.  Apple’s registration for this trademark indicates a “first use anywhere” of January 26, 2009.  Take a look at these Goolge Search results for “there’s an app for that” from January 1, 1989 to January 1, 2008, before Apple started using the phrase to designate its slogan. 

It appears that Apple stole its slogan prior to Apple’s first use.  At a minimum, there will be many arguments for “fair use” as merely descriptive language for various software applications.

Intellectual Property Value is The Basis for Economic Recovery | Patent & Copyright Lawyers

Trademark Law Radio:  Glenn Purdue Discusses Trademarks, Copyrights, Patents & Trade Secrets

• Glenn has been retained as an expert witness for software related cases in which patent, copyright, trade secret and trademark protection and related damages were in dispute. 
• There are several models to value trademarks, service marks, patents, copyrights and trade secrets. Glen discusses cost-based approaches, market-based approaches, and income-based approaches to intellectual property valuation.

Glenn Perdue, managing member at Kraft Analytics, LLC, a valuation, forensics, consulting firm that works with attorneys related to valuation issues, transactional disputes, economic damages, intellectual property, antitrust analysis, corporate investigations, employee fraud, computer forensics and e-discovery, discusses three approaches in valuating intellectual property.

Play: IP Value As The Basis For Economic Recovery
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With: Glenn Perdue

Sponsored by: Traverse Trademark Law

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Announcer:  Welcome to Trademark Law Radio, sponsored by Traverse Trademark Law, Internet Lawyers specializing in Trademark Infringement, Trademark Licensing and Trademark Registration.  Now here is your host, Damien Allen.

Damien Allen:  Good afternoon and  welcome to Trademark Law Radio.  My name is Damien Allen, and joining me today on the phone is Glenn Perdue of Kraft Analytics, LLC in Nashville, Tennessee.   Good afternoon, Glenn.  Welcome to the program.

Trademark Registration Proves Difficult for MTV’s Jersey Shore Cast

In a series of trademark registration decisions issued by the United States Patent and Trademark Office (USPTO), the Office has almost roundly denied trademark registration applications submitted by MTV’s Jersey Shore cast members seeking to register marks in their nicknames.

For example, Paul Delvecchio, Jr.’s (recognized on the Jersey Shore as ‘Pauly D’) efforts to get his DJ business going have been stymied in the USPTO by another trademark that has been in effect since 1973. The trademark preventing Pauly D from registering the trademark ‘DJ Pauly’ is held by another DJ going by the nickname ‘DJ Paulie’.

Mike ‘The Situation’ Sorrentino has also run into trademark registration troubles. Sorrentino’s attempt to register the trademark ‘The Situation’ in conjunction with T-shirt and underwear sales was recently suspended by the USPTO.

Trademark Registration Update: USPTO Announces and Then Removes Marijuana Category for Trademark Applications

Trademark Registration Update: On April 1, 2010 the United States Patent and Trademark Office (USPTO) announced a new trademark category "Processed plant matter for medicinal purposes, namely medical marijuana."

This new trademark registration category incurred a rush of new applications, one of the most memorable of which is “Keef Cola”, a marijuana product that provides patients with the ability to take their medication just like you would drink a can of Coca-Cola.

Trademark-Infringement Dispute Over BLACK SABBATH trademark Settled Between Ozzy Osbourne and Tony Iommi

British lead vocalist Ozzy Osbourne and guitarist Tony Iommi of the heavy metal band Black Sabbath recently reached an agreement over a trademark ownership dispute that can trace its roots to back to 1980, however the most recent contentions arose in 2008. The dispute between Ozzy and Iommi was over ownership of the BLACK SABBATH trademark. The two former bandmates began working towards an agreement back in May after they attended the funeral of their mutual friend, vocalist Ronnie James Dio. Since then, they reached an agreement and very recently they jointly issued this press release;

"Ozzy Osbourne and Tony Iommi of the legendary heavy metal band have amicably resolved their problems over the ownership of the legendary band's name and court proceedings in New York have been discontinued. Both parties are glad to put this behind them and to cooperate together for the future and would like it to be known that the issue was never personal, it was always business."

Contention over ownership rights to the trademark was instigated back in December 2008 when Iommi filed a trademark-infringement lawsuit against Signature Network over the latter’s sale of unlicensed ‘Black Sabbath’ Merchandise. The suit caught the attention of Osbourne because in his complaint Iommi referenced a document dated June 30, 1980 which stated that Osbourne and his company, Monowise, Ltd;

Trademark Applications and Trademark Registrations Decline from 2008 - 2009

In this Article on Virginiaiplaw.com, Robert Angle, noted that FTI Consulting (FTI), very recently released its annual Intellectual Property Statistics. The Intellectual Property Statistics is a compilation of statistics on intellectual property prosecution and litigation. Angle re-produced some interesting statistics from the report based on the difference in the Intellectual Property Statistics from 2008-2009;