Skee-Ball Trademark Dispute

Posted on January 9, 2012 by tom

I received my latest bit of trademark happenings from this weekend’s Saturday Night Live Weekend Update, not a colleague’s blog. Skee-Ball, Inc., the owner of Skee-ball games filed suit against a company that runs Skee-ball tournaments under the moniker “Brewksee-Ball.” Whoops. Looks like the tourney company didn’t get a lawyer’s clearance on this one before they came up with the name. Not only is the Skee-ball mark an incredibly famous one, but it is highly distinctive trademark because it incorporates a fanciful word that has no meaning, and thus, no connection to the game on which it is applied. The obvious defense is that the Skee-ball mark has become generic, but I’m not so sure there are other manufacturers of this style of game, even though the public certainly knows the game by that particular name. I, myself, have trouble coming up with a generic name for the Skee-ball game without delving into a long patent-type description like a game including an upstream ramp and a downstream arrangement of concentric annular goals….

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.

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Obtaining a Trademark on a Book Title

Posted on December 29, 2011 by tom

Trademark rights in a book title are not ordinarily available. Trademark protection doesn’t extend to titles of single pieces. Even massive sales of a single work cannot create the necessary source-indicating quality that a trademark requires. So if your book is a stand-alone piece, you likely cannot protect its title.

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.

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A Patent is a Tool, not a Ticket

Posted on December 22, 2011 by tom

I hear too many people saying, “I’ve got this great idea. If I could just get it patented, I’d make a million dollars.” A patent isn’t a ticket into a life of luxury. It doesn’t mean squat if you don’t use it. The first indication of this should be the sheer number of patents and the lack of a corresponding number of millionaires in America. If that isn’t enough, then this site should give you an idea that not every patent will spawn a trust fund.

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.

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Patentable Subject Matter – Mayo v. Prometheus

Posted on December 8, 2011 by tom

An invention must be of the appropriate subject matter to be eligible for a patent.  Appropriate subject matter includes, by statutory definition, a machine, article of manufacture, composition of matter, or process.  For most inventions, the determination regarding whether the invention is patent eligible is generally an easy one.  However, in some areas of technology, this questions becomes extremely difficult.

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.

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Insurance Extension Requests in Section 1(b) Trademark Applications

Posted on November 25, 2011 by tom

When an Section 1(b) intent-to-use trademark application receives a Notice of Allowance, the applicant has six months to file an acceptable statement of use to prove that the applied-for mark is being used in commerce. Applicants that fail to file by the six-month deadline can request a six-month extension, and indeed, can continually file those requests extending the time for a statement of use out to a maximum of three years from the Notice of Allowance.

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.

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Look For Advertising

Posted on November 15, 2011 by tom

I was in Santorini a few months ago and saw this sign.  Clients frequently have trade dress aspects of their business that are worthy of protection, but they aren’t sure about how to advertise them.  This sign illustrates a classic way for trade dress owner to teach the public about its brand.  “Look for the Flag Original.”  There area number of reasons this sign wouldn’t actually help develop trade dress rights in the US, but excluding those reasons, the sign is a great example of “look-for advertising,” which is one way to teach consumers to associate the subject of what they are looking for with the source of the product.

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What to Get the Trademark Attorney in Your Life

Posted on November 10, 2011 by tom

I saw on TV the other day the perfect gift for your favorite trademark attorney or advertising executive.  Test their subject matter knowledge with the LOGO board game.  Spin Master, a Canadian company, has developed a game tapping into the marketing that has been thrown at you all your life and the amazing repository of brand knowledge that you may have unwittingly amassed.  You can play a few rounds online, but it is the British version of the game, which makes it a bit more difficult for us Americans, unless there has been some parallel importation of the brand. 

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.

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Patent Claims – An Analogy

Posted on October 27, 2011 by tom

Understanding patent claims is crucial when you are trying to understand what a patent is and what it can do for you as an inventor.  I recently read in Mechanics of Patent Claim Drafting by John Landis a great, easy-to-comprehend explanation: “A claim is a one-sentence definition of the structure of the defined invention.  It defines that invention with the same particularity and precision as the description of a parcel of land in a deed.  The analogy to the deed is a good one because United States [patent] claims serve to define the outer limits or boundaries of the invention in the same fashion as the description of land in a deed defines the outer limits of the land monopoly.”

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.”

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Open Source Prosthetics Development

Posted on October 17, 2011 by tom

After listening to a fascinating interview of double-amputee Scott Rigsby on IM Talk, I began thinking about the world of prosthetics and how it relates to my career in patents.  With nearly all medical devices, intellectual property protection can often be a divisive topic.  On the one hand, some argue that patents are necessary to create incentives to development of new products: research, design, and construction of new medical devices aren’t cheap.  On the other hand, some argue that patents limit access to new medical devices for those who can’t afford to pay the premiums through which medical companies recoup their costs and profit.  Scott noted that in the recent Hawaii Ironman Championships, he had to have $90,000 in equipment to compete.  One organization, The Open Prosthetics Project, is attempting to remove some of the expenditure obstacles  by encouraging open-source design of prosthetics.  It hosts a worthy site at which to spend some time and consideration.

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Brand Bully Basement

Posted on October 12, 2011 by tom

Lara Pearson, operator of the brandGEEK website, has created an avenue for victims of trademark bullying.  Those who feel they have been wrongly pushed around by someone exerting a little too much influence with a trademark can complain at Brand Bully Basement.  As the forum picks up publicity, hopefully the actions complained of there will begin to recede into our memories…

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