Trade Name vs. Trademark: TTAB Clarifies the Difference Between Words Used to Describe Products and Services and Those Indicating a Business Name

When the public speaks colloquially about trademark law it often refers to all types of words or marks as “trademarks.”  But not all words qualify as trademarks.  A trade name, the name under which a business operates, can often be registered as a trademark, but the use of a trade name alone is not enough to protect others from appropriating that mark.  Businesses often believe that they are protected from the misappropriation of their trade name just by virtue of its use, but the Trademark Trial and Appeal Board has held differently.

Three Stripes? You're Out! Adidas Awarded $305 mil against Payless for Willful Infringement

An experienced trademark attorney can help you avoid the mistakes of those that have come before you.  Experienced trademark attorneys understand how to help businesses abide by the terms of settlement agreements, and what actions are likely to be found infringing in the aftermath of a negotiated settlement in a trademark dispute.  Failing to understand the mistakes of the past can be a costly misstep in trademark law, and in the case of Payless Shoes it proved to be a $305 million disaster. 

Trademark Rights: Registration Alone Isn't Enough

Protecting your trademarks through the United States Patent and Trademark Office is, of course, important, but application alone is not enough.  It is more important to see a trademark all the way through to the end of the registration process, especially when it is filed under a 1B “intent to use” application.  1B applications allow those that have yet to use their goods and services in interstate commerce to file for trademark protection.  A Statement of Use must be filed within six months after the application's Notice of Allowance is issued to show that the goods or services have been, in fact, used in commerce.  This process allows a trademark applicant to protect its mark before using it in commerce, which can be an effective strategy for protecting a mark from theft by another party.  But failing to file a timely Statement of Use, or an extension of time to file, can result in the loss of your trademark rights.

The Lifecycle of a Trademark Opposition

What do you do when you, or preferably your trademark-monitoring attorney, find a application in the United States’ Patent and Trademark Office’s database that is likely to confuse consumers because it is similar to your mark?  One possible solution is to file an opposition.  Every trademark must go through a series of stages on its way to registration, hopefully on the Principal Register.  One of these stages, titled publication for opposition, allows a party to oppose the registration of a trademark that it believes is likely to cause confusion with its mark.

First Circuit Holds "Duck Tours" is a Generic Trademark

Thinking about registering a trademark?  Make sure you have a competent attorney doing your pre-registration trademark search and think about selecting a mark that is not widely used.  Using a widely used mark will likely welcome other users of the same mark.   Showing that generic trademarks can arise from abbreviations, the First Circuit Court of Appeals recently held that the phrase “duck tours,” when used in a composite mark in relation to boat tours, is generic and causes no likelihood of confusion.  This decision reversed the district court's holding that the “Super Duck” trademark, in connection with boat tours in the Boston area, created a likelihood of confusion with the plaintiff's “Boston Duck” mark. 

Breaking Down the Chateau Grand Traverse v. Grand Traverse Distillery Trademark Case

As previously posted "Chateau Grand Traverse Sues Grand Traverse Distillery Over Name" we have two local companies fighting over trademark rights to use "Grand Traverse" as part of their brand. 

Grand Traverse Distillery sells Vodka.   Chateau Grand Traverse sells wine.  Of course, the question raised is whether the geographic indicator for Grand Traverse, the county in which both companies operate, is capable of trademark protection in the first instance.   This is not the first time the issue of geographic descriptiveness has come to the forefront locally, as two wineries in Leelanau County, Michigan fought over the use of "Leelenau" in their wine branding last year which culminated in a three judge appellate panel of the sixth circuit court of appeals ruling in favor of Chateau de Leelanau Vineyard and Winery on trademark infringement claims brought by Leelanau Wine Cellars, Ltd. In that case, the court of appeals ruled that there was unlikely to be consumer confusion (and mysteriously overlooking the more obvious problem of geographic descriptiveness).

Chateau Grand Traverse Sues Grand Traverse Distillery Over Name

The Traverse City Business News is reporting that Chateau Grand Traverse, a Michigan winery, has filed a federal lawsuit against vodka producer Grand Traverse Distillery alleging trademark infringement over the distillery's use of the "Grand Traverse" name.  The dispute arises from the winery's opposition to the Distillery's Trademark filing with the United States Patent and Trademark Office (USPTO) for registration of the mark "Grand Traverse Distillery" on the principal registrar. 

The winery claims trademark rights in the name since it has used the mark "Chateau Grand Traverse" since 1977 and had recently filed and was granted trademark registration in late 2007. Grand Traverse Distillery filed for its trademark protection July 2005.  However, trademark rights date back to the date of first use in commerce. 

This is an interesting lawsuit in that both companies deal in the manufacture and sale of alcohol beverages which Chateau Grand Traverse says has led to confusion among customers.

Read the full article below...

What is a Trademark Worth?

Adidas, registered trademark owner of the three stripes design, has won a trademark infringement lawsuit against Collective Brands Inc., the operator of Payless and Stride Rite shoe stores.  The verdict: $305 million dollars.  While years of marketing, brand protection, and consumer advertising undoubtedly contributed to the strength of the trademark, it all started with the trademark being registered with the USPTO (and in other countries).  You can see an example of the three stripes here.  By investing in its trademarks and other intellectual property, Adidas positioned itself to protect against the unauthorized use of its trademarks, and more importantly pursue those infringers.  The result is monetary damages and a strengthened trademark.  This verdict confirms that a trademark has tremendous value to an organization.  The proper investment should be made in order to ensure you have performed a proper trademark availability search when selecting a trademark, registered your trademark upon selecting it, continuously used the trademark in a proper manner, and taken efforts to protect it by preventing unauthorized use of the trademark.  Contact us today for all matters relating to your trademark.

Trademark Law: "Initial Interest Confusion" Doctrine Applied

Technology & Marketing Law Blog: Adwords Ad Creates Initial Interest Confusion--Storus v. Aroa

Storus Corp. v. Aroa Marketing Inc., No. C-06-2454 (N.D. Cal. Feb. 15, 2008).

(Sorry for my delay blogging this one).

A federal district court has held that displaying a competitor's trademark in Adwords ad copy constitutes impermissible initial interest confusion, leading to a summary judgment win for the trademark owner. This is one of the first competitor-vs.-competitor search advertising cases where the plaintiff has won the trademark claims. This case also has an interesting and rare discussion about the trademark implications of a retailer’s internal search engine.

On the surface, this case looks problematic for the search
advertising industry. Any time a search advertising practice is deemed
infringing, it should promptly eliminate all similar ads from other
advertisers, taking a chunk of revenues out of search engine pockets.
Further, when advertisers are liable for trademark infringement, it
increases the risk that search engines will be contributorily liable
for those infringing ads.

... Aroa’s practices here (displaying a competitor’s trademark in the ad copy) are already restricted by all of the search engine trademark policies. Therefore, this ruling shouldn’t reduce much ad revenue for search engines.

Technorati Tags: trademark, trademarks, trade mark

A Trademark Availability Legal Opinion Before Selecting a Brand Name Can Save You Six Figures Later

A simple trademark assessment by a competent lawyer can cost anywhere from $350 to $2,000 depending on the breadth of the search.  That price is pretty cheap compared to the cost of having an injunction issued against you for trademark infringement.  All told, being named as a defendant in a trademark infringement or cybersquatting lawsuit can cost hundreds of thousands of dollars. 

In the case discussed below, Palantir Technologies branded its company in 2005 with a name that easily could have been identified in a trademark availability search.  A good trademark attorney would have discovered both a prior US trademark registration and a Panantir.net's web site.  The common use in a service category which includes databases would have resulted in an attorney opinion that the Palantir name was too high risk.

A Google Search reveals this result for Palantir Technologies.  Palantir Technologies : The future of analysis.  It turns out Palanir forgot to analyze trademark availability or failed to understand the risks associated with brand name selection of a prior use.

Palantir.net began providing Web design, development, and database services nationally under the Palantir name in 1996. It acquired the palantir.net domain name in 1997. Palantir.net incorporated in 2000 and obtained a federal registration for PALANTIR in 2006. It sells to educational and cultural institutions, as well as financial, corporate, and governmental clients.

Palantir Technologies designs database software for the Central Intelligence Agency and a financial services company. It started offering products under PALANTIR in 2005. It is a small company but it purchases the word “palantir” from Google’s AdWords service and outranks Palantir.net in Google search engine results.

Palantir.net moved for a preliminary injunction enjoining Palantir Technologies from using PALANTIR in advertising. In imposing a preliminary injunction, the court required Palantir Technologies to place on all of its Web sites, including its blog, a “prominent disclaimer that advises viewers that it is different from Palantir.net and that advises viewers how to access Palantir.net.” The court also enjoined Palantir Technologies from “engaging in any Internet advertising under the palantir mark, that is, no more Google advertisements.”

The case cite is Palantir Technologies, Inc. v. Palantir.net, Inc., 2008 WL 152339, No. 07-3863 (N.D. Calif. Jan. 15, 2008).

Seattle Trademark Lawyer - Published by Michael Atkins  Palantir.net Gets Preliminary Injunction Against Palantir Technologies

Technorati Tags: brand, marketing, Palantir

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Scrabulous Infringing On Scabble Trademark Held By Mattel?

You know Scrabble. Created in 1933, the classic wordplay board game has been a favorite worldwide for decades. So when Calcutta-based developers Rajat and Jayant Agarwalla created a Scrabble knock-off application called “Scrabulous” for the social networking site Facebook, people started signing up like crazy. As of today, Scrabulous has 600,000 daily users but that’s only a quarter of the number of people who have signed up to play it. Hasbro Inc., which owns the rights to the crossword game in the United States and Canada, and Mattel Inc., which owns the rights elsewhere, believe the online game, developed in India, infringes on their copyrights and trademarks.

You’d think Hasbro & Mattel, who together own the world-wide rights to the game, would see an opportunity here and find a way leverage these social media passionistas to further promote their product. Sadly, they don’t see it that way and have issued a cease and desist order trying to get Facebook to take the game down.

From a legal standpoint, Hasbro / Mattel are well within their rights and in fact, as Shel Israel points out in a response to Matt Dickman’s excellent post on this topic last week, companies must consistently go after intellectual property infringement cases to make future charges stick. Moreover, if the Agarwallas had simply printed a copy of Scrabulous and sold it as a board game, there would be little controversy about whether it constitutes a copyright violation.  Technorati Tags: trademark, copyright, hasbro, mattel

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Leelanau Cellars Loses Case on Appeal

A three judge appellate panel of the sixth circuit court of appeals ruled in favor of Chateau de Leelanau Vineyard and Winery on trademark infringement claims brought by Leelanau Wine Cellars, Ltd.  Leelanau Cellars applied with the United States Patent and Trademark Office (USPTO) for registration of the mark “Leelanau Cellars” on the principal register in 1997 based on first use of 1977.  In 1999, the Defendant began doing business as “Chateau de Leelanau Vineyard and Winery.”

Leelanau Wine Cellars claimed the exclusive use of the word “Leelanau” which is also the geographic region and county where wine is produced and bringing a federal court infringement action against Defendant for its use of Chateau de Leelanau Vineyard and Winery.

Obtain more information here:

• Read Court of Appeal's Decision in Leelanau Wine Cellars v Black & Red.
• Read the Traverse City Record-Eagle article “Leelanau” fair game for labels.

Tiffany and Co. Sues Tiffany's Resturaunt Over Name

Diamonds.net is reporting that Tiffany and Co. has sued a restaurant over the restaurants use of the "Tiffany" name. This is an interesting law suit in that Tiffany's deals in jewelry and is certainly well known for its high quality goods. However, the argument here is that a restaurant with the same name will cause confusion with Tiffany and Co.. When a mark is clearly "famous" as the Tiffany and Co. is in the jewelry market courts are more willing to provide protection across different markets. Whether a court is willing to stretch the Tiffany trademark so far as to preclude a restaurant from using that name remains to be seen.

Chicago area company settles logo infringement case for $3 million

Chicago area company settles logo infringement case for $3 million.

A Chicago area businessman has agreed to pay $3.1 million to settle a trademark infringement case involving unauthorized use of university logos. Donald Bruno, of Burr Ridge,, was placed on probation for 2? years after pleading guilty to unauthorized use of a trademark. Bruno, president of Romeoville-based American Family Products, agreed to pay $1.15 million in criminal fines and $1.74 million in civil fines, penalties and restitution, according to court records in Will County, Ill. The company and Bruno were accused of illegally using logos from the University of Iowa, Iowa State University and nearly 60 other universities and companies on sports memorabilia.

If you don't defend your trademarks, who will?

GROKLAW has an interesting post about a recent NY Times story  reporting that Leo Stoller, who by appearances is an expert at sending trademark infringement threat letters, was able to trademarked the word relatively common word "stealth."

As you can see, it appears that Mr. Stoller aggressively defends his trademarks and does very well against people who don't fight back.  Give Mr. Stoller credit for defending his marks.

Groklaw provides two links for further information about the tactics used by this gentleman, once his marks have been approved. 

http://www.biglist.com/lists/lists.inta.org/tmtopics/archives/0404/msg00092.html
http://www.biglist.com/lists/lists.inta.org/tmtopics/archives/0404/msg00093.html

Here's an explanation on how trademark law does work on Bitlaw.

Google Dismissed from AdWords Trademark Case

Google scored a trademark victory over GEICO in a battle over key word advertising. Google offers advertisers the ability to have their ads feature in Google, and on other web sites based on key words people search for everyday. Google was sued when it allowed advertisers to set up their key word campaigns to trigger based on searches for their competitor's names.

The court found that this practice did not violate trademark rights of the insurance carrier. Read the whole story. This is an important victory for internret advertisers who might otherwise get sucked into litigaiton brought by trademark owners againt competitors.

"There is no evidence that that activity alone causes confusion, " Brinkema said, in granting Google's motion for summary judgment on that issue.

But Brinkema said the case would continue to move forward on one remaining issue, whether ads that pop up and actually use Geico in their text violate trademark law. Google contends that its policies expressly forbid advertisers from using trademark names in the text of their ads. The search engine says it does its best to prevent ads that violate the policy from sneaking in, and that the advertisers would liable for any trademark violation, not Google.