AIRIA Nightclub has Trademark Problems

Posted on May 4, 2012 by tom

John Welch questions whether you would have appealed the recent rejection of Gila River’s application for AIRIA.  Local Arizona tribe and gaming enterprise Gila River has a night club named Airia, but unfortunately, there is an Area nightclub in LA that beat them to the Trademark Office punch.  The Examining Attorney, upon receiving Gila River’s application for AIRIA, twice refused to register the mark in light of AREA.  Gila River appealed, but the Trademark Trial and Appeal Board sided with the Examiner.  It first noted that the marks were used in connection with identical services, and as such, a lesser finding of similarity in the marks themselves would be required to make a likelihood of confusion determination.  The TTAB next found that the marks sounded the same, or at least could sound the same, because there is no correct or absolute pronunciation of AIRIA.  The Board discounted Gila River’s argument as to the geographic separation of the LA and Phoenix clubs, since the applications themselves were not limited geographically.

I’ll keep an eye out for a possible name change for the club in the future.  For what it’s worth, the name is currently advertised as AiRIA.

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Sight, Sound, Meaning, and Fame

Posted on May 2, 2012 by tom

When the Trademark Office receives a new application, one of the first things it does is conduct a search for similar marks.  The Trademark Examiner often searches for identical mark and homonyms in all goods and services classifications and for similar marks in the same goods or services classification.  Famous trademarks are often given broad protection, to an extent where they may block the registration of marks in unrelated goods or services classification.

On a recent run, my wife and I saw that a house near ours had some work being done.  The workers had pulled their trucks and trailers up along the curb outside the house.  The trailers all carried the word HAULMARK on the front.  “Interesting” my wife said – “what about Hallmark?  Seems like they would have a problem with that.”

Hallmark may indeed have a problem with it.  While the marks aren’t spelled the same, there is no discernible difference in how they sound.  A listener can’t tell if she just heard HAULMARK or HALLMARK.  And the HALLMARK brand is an incredibly famous one, no doubt entitled to protection beyond its typical greeting card and storefront business.  However, there just likely isn’t any possibility that Hallmark is ever going to enter the work trailer business, or at least, not under the HALLMARK brand name.  So the marks can coexist, and indeed, there is a registered trademark for HAUL MARK.

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Ascribing a Date of First Use to a Trademark

Posted on April 10, 2012 by tom

All trademark registrations filed under Sections 1(a) or 1(b) of the Lanham Act carry a date of first use. In those registrations that are filed as intent-to-use applications, the date that the mark is first used is typically very easy to pinpoint. However, for registrations that begin as in-use applications, the date of first use is sometimes difficult to remember. If a company has been using a mark for several years, it can often be quite hard to pinpoint when that use first began, especially if the date wasn’t linked to a major launch (companies often launch a new product or brand at conventions and can remember the date of the convention).

When an application is filed, the applicant must specify the date that it first used the mark anywhere and the date that it first used the mark in commerce. These dates must be accurate and definite. It isn’t enough to say “June 1999″ or “2010.” Instead, the date should be entered as the last day in that period. For instance, if the business knew it started using a mark sometime in June 1999, then the acceptable way to enter that date would be as the last day of June 1999: 06/30/1999. The application will then state that the mark was in use “at least as early as 06/30/1999.”

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USPTO Begins Issuing Scam Warnings

Posted on April 2, 2012 by tom

As I have written before, trademark applicants and registrants should be on the watch for official-looking notices or requests asking for fees or registry enrollments.  The USPTO has begun issuing a formal warning notice when it mails the Certificate of Registration.  A copy is here.

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Can I patent something that is used for an illegal purpose?

Posted on March 16, 2012 by tom

This question was posed to me during a recent interview. Is it possible to patent something that is used for an illegal purpose or is used with an illegal substance, or is there a prohibition against such patents? Is patent protection available for radar detectors, methods of cooking cocaine?

Generally, you can patent “anything under the sun that is made by man.” One of the requirements for patentability is that an invention be of the appropriate subject matter. Tangible inventions likely meet this requirement, but there are some limitations to protection, use, and ownership. For instance, atomic weapons have been carved out of patent protection – the Atomic Energy Act specifically eliminated this category of invention from patenting (though there is a large body of patents on devices used in atomic bombs, such as a switch that triggers on a change in air pressure). In other cases, patent applications relating to national security may be classified and held secret, but they can still issue as patents. And there is precedent for the government condemning a patent, or taking ownership in a patent through eminent domain when warranted by public interest.

There isn’t a prohibition on patenting something used for an illegal purpose or with an illegal substance, however. Moreover, such patents can likely be written broadly so that they encompass legitimate purposes or substances.

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The Practice of Removing Sponsored Logos in Triathlon Advertisements

Posted on February 27, 2012 by tom

Several months ago, Slowtwitch.com erupted over an altered image that had been discovered of pro triathlete Hillary Biscay. The original image showed Biscay running during an Ironman-branded race with a jersey that bears a small blue decal. That decal is the logo for REV3, which is the organizer of a series of races that compete with Ironman races. Presumably, at the time, REV3 was one of her sponsors.

The altered image appeared in a promotional piece for the World Triathlon Corporation, owner of the Ironman trademarks. In the altered image, the REV3 logo had been removed. Underneath that image ran information about Biscay and Ironman Louisville.

We frequently see the removal or blurring of logos on TV. This is often done to make it clear that the logo’s company doesn’t appear to be a sponsor of the show or the television station. But the removal of an athlete’s sponsor’s logo is something different: the athlete has a contract with that sponsor to promote the company along with his or her personality and results. The removal of the logo interferes with that the contract and the ability of the company to promote itself.

Is this something that trademark law affects? Perhaps. The doctrine of reverse passing off makes liable one who removes a trademark and attempts to pass it off as their own. The infringing party need not replace the mark with its own; instead, merely leaving the product unbranded is enough for liability. The underlying harm is from the infringing party thwarting the efforts of the trademark owner to identify the source of the product, to link the product with existing goodwill surrounding the mark, and to advertise itself. The de-branding of athletes triggers similar harms. Here, REV3′s link to a successful athlete is eliminated and the promotional value of its logo on Biscay’s jersey is prevented, and passing off seems to be a viable claim, even though WTC isn’t passing the Hillary Biscay “product” off as one of its own. Moreover, it is possible that a general claim for unfair competition may lie as well.

Despite the above, it is doubtful that the practice will be discontinued. It is fairly widespread through cycling and triathlon, and to this point, companies seem to be accepting of the fact that their marks will occasionally be removed from their products or sponsored athletes.

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Local Medical Device Inventor

Posted on February 20, 2012 by tom

Kim Manwaring is a Phoenix neurosurgeon who invented a number of medical devices in his garage-turned-laboratory.  He was profiled in the Arizona Republic this weekend, and I thought it was a great story of the and hard work and creative mind required in starting a tech company.  Read the story here.

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Can I use the Ironman trademark to describe a race I did?

Posted on February 16, 2012 by tom

The Ironman trademark (the second link is to one of the many Ironman registrations) is an extremely valuable trademark to the World Triathlon Corporation. The WTC works to protect its unauthorized use (though sometimes I do question their authorized use). I have heard questions before from other triathletes about how they can use the Ironman word mark, whether in blogs, on t-shirts, in articles.

Ownership in a trademark doesn’t convey the right to remove the use of a word from English. Instead, it provides an exclusive right to prevent others from using the mark in a confusing way, one that may damage the trademark owner’s goodwill in the mark or the mark’s own ability to differentiate the underlying product or service from others.

Consistent with this, the public doesn’t always need to request permission from the trademark owner to use the trademark; that permission is only necessary in certain (but many) situations. Permission isn’t necessary when the use meets the legal definition of “fair use.” Some uses are frequently considered fair, such as a 15-second clip of a motorcycle stunt on the evening news, or a professor’s copying of a portion of a newspaper article passed out in class. Comparative or nominative uses are often considered fair, as well: if BMW names Mercedes in a commercial to say how it outperformed their car, for example, that use is likely not infringement.

The use that many people worry about and have asked me about likely falls under fair use. It would be fine to write an article about your experience at Ironman Lake Placid and use the Ironman trademark in the body of the article. You’d be okay writing a book about your journey to the Ironman World Championships and identifying the various races you competed in as Ironman races. You are using the mark only because you are naming the specific event, and identifying the event without using the trademark would be unduly burdensome. Imagine how difficult it would be to describe the event without using the trademark: for instance, last November, I competed in a branded race where I swam 2.4 miles, biked 112 miles, and ran 26.2 miles in Tempe, Arizona, versus, last November, I did Ironman Arizona.

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Filing an Assignment with a Patent Application

Posted on February 13, 2012 by tom

An assignment can be filed with a patent application to immediately convey control of the patent application to the assignee. This is frequently necessary where the inventor is an employee of a company that will be controlling the patent application. Only an inventor – a human – can be an applicant for a patent, not the company, so the inventor must be the initial applicant with a corresponding assignment conveying to the company thereafter. An assignment doesn’t need to be recorded with the USPTO to pass ownership of the patent application, but it must be on file to allow the company to control prosecution. The cleanest, simplest way of doing this is by drafting an assignment agreement, having the inventor and assignee-company sign it, notarizing it, and then recording it in the Patent Office at the time the application is filed.

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Twin Peaks Trademarks

Posted on January 25, 2012 by tom

Before the end of last year, I wrote about obtaining trademark protection in a series of works. I used books as an example: while you normally cannot register the title of a single book, when you develop a series of books under the same title, that title develops trademark rights for which you can seek a trademark registration. Similarly, a TV show series can develop rights in the name when several episodes are released. Why do I re-bring this up?

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.

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