A restaurant opened in Scottsdale not long ago called Twin Peaks. The name brings up some issues. First, there is a very well-known brewery in Tempe and Scottsdale called Four Peaks, named (presumably) after a local mountain with a prominent profile on the horizon (a friend suggested that Twin Peaks might just be half-size Four Peaks).  Second, we all know the TV show Twin Peaks. My wife made the connection between the new restaurant and the TV show before she made the connection between the new restaurant and the brewery, which indicates the significance in the likelihood of confusion analysis of the mark’s literal element with respect to the mark’s services. When a mark is famous, identity of a second mark can create confusion even if there is a chasm between the goods and services.

So is there actionable confusion here? Not likely. The restaurant and the TV show are so different that crossover is unlikely. The Trademark Office apparently didn’t think there would be confusion, either. Twin Peaks the TV show is protected with federal trademark registrations – one for “entertainment services in the nature of a dramatic television series” and the other for a “series [note: a series] of video recordings featuring entertainment.” Twin Peaks the restaurant has a few federal registrations, and the Trademark Office didn’t raise the TV show’s marks against any of them during prosecution of the applications.

While I think there is otherwise a pretty clear prima facie case of infringement here, the transformative nature of the mark should add a slight wrinkle to the case.  Does the addition of “Brew” to create “Brewskee,” a slang term for a beer, push this new phrase far enough away from the trademark that is clearly different?  Of course, this may not even be brought up given that the mark has very likely become generic.

Trademark protection is available when it is applied to a book series, however. The Twilight books, the Harry Potter books, the Hardy Boys series, Goosebumps, Sweet Valley High – these are examples of series of books that use the same main title and then perhaps a lesser subtitle. The main title appears consistently throughout the series and can qualify for trademark protection.

If you are considering writing a book and want to attempt to get trademark protection, you can file a trademark application on an intent-to-use basis. As long as you actually intend to properly use the mark in commerce, you can file such an application and have it processed through the Trademark Office. If you are successful in the processing phase (called “trademark prosecution”), you will have 6 months to start producing and selling your books with that mark. If you don’t do it in the first 6 months, you can extend that time by another 6 months. In fact, you can extend the time out to 3 years in total.

Consider why you want to get a trademark on your title. Is it because you are going to write several books in a series and want to prevent others from writing knock-offs? Do you want to write one book and hopefully sell merchandise related to its story? Are you hoping to have ghost-writers pump out similar novels under the main title? These considerations, and others, should be shared with your trademark attorney when you discuss how you are going to proceed.

A patent is what you make of it. It is the start of a long process involving manufacturing, marketing, selling, and struggling. Just as buying hammer at Home Depot doesn’t mean you’ll come home to a newly remodeled home, owning a patent doesn’t guarantee you any sort of success. It’s a tool whose effectiveness is realized by the skill and drive of the owner.

The Supreme Court is currently tackling a case whose core issue is the patentability of a process of applying a drug containing an active ingredient and subsequently measuring that ingredient’s levels in the patient.  Patentable subject matter is an issue the Supreme Court does not often take up, one reason simply being that it is a difficult issue.  Oral argument was yesterday, and Justice Breyer, at least, revealed some frustration around the issue (via Patently-O):

JUSTICE BREYER: Suppose I discover that if … someone takes aspirin … for a headache and, you know, I see an amazing thing: if you look at a person’s little finger, and you notice the color [indicates that] you need a little more, unless it’s a different color, you need a little less. Now, I’ve discovered a law of nature and I may have spent millions on that. And I can’t patent that law of nature, but I say: I didn’t; I said apply it. I said: Look at his little finger.

MR. SHAPIRO: Sure.

JUSTICE BREYER: Okay? Is that a good patent or isn’t it?

MR. SHAPIRO: No … Well, because you — you’ve added to a law of nature [to] just a simple observation of the man’s little finger.

A statement of use can be filed anytime during a currently pending six-month period. However, any corrections to a filed statement of use must also be filed within that six-month period or within an extension period following afterward (if available – an extension period can’t extend past the 3-year mark). Applicants place themselves in risky situations when they file on the last day of the six-month period or close to the last day of a six-month period – if anything goes wrong, it will likely be impossible to correct the deficiency within the period.

To dampen that risk, an “insurance extension request” can be filed. An insurance extension request is a hedge against your statement of use. If the request granted, the extension provides you with an extra six months to correct any problems with your statement of use.

Why would you file an insurance extension request, especially there are filing fees associated with it that might be forfeited if you don’t need it? Well, there is a certain amount of processing time in the Trademark Office. It is highly unlikely that a statement of use will be evaluated and accepted or rejected the same day it is filed. The statement of use is first assigned to ITU staff and is then forwarded to the Trademark Examiner assigned to the application. This can take often take a week or two. If you file a statement of use one or two days before it is due, there is little chance that the filing will even land on the Trademark Examiner’s desk before that deadline has already passed. If the statement of use is acceptable, that’s fine. But if the specimen doesn’t show the mark quite right, or the Examiner thinks that the goods shown in the specimen are different from the goods identified in the application, there may be a problem that can’t be cured. So there is a chance that you will lose out the $100 / class fee for the insurance extension request, but failing to file one could cost you the application if there are problems in the statement of use.

And, of course, LOGO has been made the subject of a trademark application recently.  How cute to have the word LOGO function as a trademark for a game about logos and trademarks.

I love the analogy to a piece of tangible property as a way for the layman to understand an intangible patent.  Landis ends the explanation with an adaptation of a line from Sperry v. Florida, which I love as well for its emphasis and implicit warning to inventors: “[T]here are very few if any chores in the area of legal draftsmanship that are as demanding of language as the chore of drafting a claim.”