Torco sues Torco

California based Torco International Corporation (www.torcoracingoils.com) sued Michigan based General Sales and Service, Inc. d/b/a Torco Racing Fuels (www.torcoracefuels.com).

Torco International has been in business since 1950 and either applied for or registered the mark TORCO here, here, here and here. 

It looks like General Sales has expended a good amount of money to promote their Torco brand.  I wonder if they did a search before adopting the mark.  If not, they should have.  Maybe they would have taken a different name and avoid the lawsuit.

Tags: trademark, trademark search, litigation, registration

Fast track to a cease and desist letter

You cannot be serious!  What in the world was this guy thinking?  Did he really think he could register the trademarks OHIO STATE BUCKEYES and OHIO STATE LADY BUCKEYES for water, soda and energy drinks.

Just the act of filing the application for registration will no doubt come to the attention of Ohio State's counsel, who should send this guy a cease and desist letter.  No doubt he already got one, as his site appears to be down.

He just got office actions here and here.  Excerpt from the Lady Buckeyes office action:

Registration is refused because the proposed mark consists of or comprises matter which may falsely suggest a connection with Ohio State University.  Although not connected with the goods or services applicant provides under the proposed mark, Ohio State is so famous that consumers would presume a connection.  Trademark Act Section 2(a), 15 U.S.C. §1052(a); TMEP §§1203.03, 1203.03(e) and 1203.03(f); See generally University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); In re Nuclear Research Corp., 16 USPQ2d 1316 (TTAB 1990); University of Alabama v. BAMA-Werke Curt Baumann, 231 USPQ 408 (TTAB 1986); In re Cotter & Co., 228 USPQ 202 (TTAB 1985); Buffett v. Chi-Chi’s, Inc., 226 USPQ 428 (TTAB 1985).

The following is required for a showing of false connection under Section 2(a):

·        the mark sought to be registered is the same as or a close approximation of the name or identity of a person or institution;

·        the mark would be recognized as such;

·        the person or institution identified in the mark is not connected with the goods sold or services performed by applicant under the mark; and

·        the fame or reputation of the named person or institution is of such a nature that a connection with such person or institution would be presumed when applicant’s mark is used on its goods or services.

In re Nuclear Research Corp., 16 USPQ2d 1316 (TTAB 1990); In re Cotter & Co., 228 USPQ 202, 204 (TTAB 1985); Buffett v. Chi‑Chi’s, Inc., 226 USPQ 428, 429 (TTAB 1985).

Applicant’s mark OHIO STATE LADY BUCKEYES refers to Ohio State University and would be recognized as such.  Ohio State University is among the largest and best known Universities in the country.  See, e.g., the attached Wikipedia entry.   Applicant does not appear to have any commercial connection to Ohio State University.  Ohio State is so well known and licenses its name in various forms for so many collateral goods that consumers are likely to presume a connection between Ohio State University and applicant’s goods.  Accordingly the mark creates a false connection between applicant and Ohio State University. 

If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s).

I'm still scratching my head on this one.

Oh well.  Go Blue.

Tags: Go Blue, trademark, registration, cease & desist, wtf, office action, 2(a), false connection, refusal

Fair Use lesson from Mr. Skin

Okay, this is copyright related, but here at Search-My-Trademark.com, we're interested in more than just trademarks. Film Threat has an interesting article on Mr. Skin, of Internet and Howard Stern fame (and fortune).  It talks about how Mr. Skin got started.  But most important, at least from a legal perspective, the article asks Mr. Skin how it got the rights to show all of the film clips of naked celebrities.  And this is what he said:

MrSkin.com is a compilation of reviews, references and other critical commentary on actresses and the films in which they have appeared, just like any televised review program. The website is also a resource for viewers who want to purchase movies in which the more than 11,000 actresses they feature have appeared.

Accordingly, they fall squarely under fair use provisions of the law (and equivalent foreign exemptions for review and criticism) and have successfully operated under this premise since launch in 1999.

Also, about 75-percent of movie companies and movie distributors send us screeners of their films for us to review at MrSkin.com. They realize a site that gets over six million visitors a month, and has a spokesman who is heard weekly on Howard Stern and many other shows has a pretty good platform to promote their movies.

Ah, don't you just love capitalism. 

Related:

JibJab Media, Inc. v. Ludlow Music, Inc.

Rocketboom interviews Mark Hosler of negativland

Article on Trademark Fair Use.

Tags: copyright, trademark, fair use, Mr. Skin, Howard Stern, celebrity

Why you want to file a Section 15 declaration

The TTABlog has an excellent post, as usual, on why you want to file a Section 15 declaration to make your registration incontestable.

Tags: trademark, TTAB, Section 15, incontestable, incontestability, registration

Surf City USA service marks

The Huntington Beach Conference and Visitors Bureau are taking steps to claim exclusive trademark use of the service mark SURF CITY USA. They have filed ten applications for the mark and has recently received registrations for three of the ten applications.

The three marks, registered on the Supplemental Register, are for the following classifications:

Reg. No. 3091711 (May 9, 2006) - IC 035. US 100 101 102. G & S: Advertising and marketing; and promoting the economic development in the city of Huntington Beach. FIRST USE: 20041119. FIRST USE IN COMMERCE: 20041119

Reg. No. 3088922 (May 2, 2006) - IC 025. US 022 039. G & S: Clothing and sportswear, namely hats, t-shirts, shirts, jackets, sweaters, footwear, shorts, pants, and belts; tennis clothing, namely, shirts, skirts, shorts and pants. FIRST USE: 20051103. FIRST USE IN COMMERCE: 20051103

Reg. No. 3088921 (May 2, 2006) - IC 018. US 001 002 003 022 041. G & S: Handbags and sports bags. FIRST USE: 20051102. FIRST USE IN COMMERCE: 20051102

The other seven applications are for the following classifications:

App. No. 78705827 - IC 003. US 001 004 006 050 051 052. G & S: Sun care preparations, namely sunscreens, sun blocks, tanning products and wind screens

App. No. 78545796 - IC 041. US 100 101 107. G & S: Entertainment services, namely, concert bookings, live music concerts, live musical performances, and conducting surfing contests; amusement arcade services and amusement centers and parks; conducting seminars in the field of history and development of historical areas; organizing community festivals featuring a variety of activities, namely sporting events, art exhibitions, flea markets, ethnic dances and the like; and conducting guided tours of a historical site and area.

App. No. 78545776 - IC 035. US 100 101 102. G & S: Retail store services featuring sporting and recreational goods and equipment, surfboards, videos, music, clothing, carry bags and totes, toys, sunglasses and cosmetics.

App. No. 78545752 - IC 028. US 022 023 038 050. G & S: Toys, namely, toy surf boards, surf board leashes, wetsuits, volleyballs, kites, rollerblades, inline skates, skateboards, scooters, kayaks, boogie boards, snorkels, masks, fins, floatation devices, inflatable pools, floats, tubes, pool lounges, goggles, swim caps, fishing rods, fishing reels, tackle boxes, discs (frisbee), volleyball nets, kite surfing rigs, kick balls, horse shoes, ring toss sets, bike boards, electric mini bikes, card tables, sneakers, running shoes, coolers, arm chairs, tents, and tanning beds (specify each toy); games, namely, box games, handhelds; sporting goods, namely, surf boards, surf board leashes, wetsuits, volleyballs, kites, rollerblades, inline skates, skateboards, scooters, kayaks, boogie boards, snorkels, masks, fins, floatation devices, inflatable pools, floats, tubes, pool lounges, goggles, swim caps, fishing rods, fishing reels, tackle boxes, discs (frisbees), volleyball nets, kite surfing rigs, kick balls, horse shoes, ring toss sets, bike boards, electric mini bikes, card tables, sneakers, running shoes, coolers, arm chairs, tents, and tanning beds stuffed toy animals; toy bicycles and toy cars.

App. No. 78545730 - IC 012. US 019 021 023 031 035 044. G & S: Bicycles, tricycles, motorcycles, cars, trucks, motorized golf carts, brake systems for vehicles, tires, vehicle seats, bicycle parts, namely chains and handle bars.

App. No. 78545717 - IC 009. US 021 023 026 036 038. G & S: Eyewear, namely, sunglasses, optical frames, reading glasses and cases for sunglasses and spectacles, pre-recorded audio and video tapes and CDs featuring surfing, city scenes; beach activities and computer software relating to action games and safety equipment, namely, bicycle, motorcycle and safety helmets. FIRST USE: 20060221. FIRST USE IN COMMERCE: 20060221

App. No. 78518984 - IC 016. US 002 005 022 023 029 037 038 050. G & S: Printed materials, namely, newsletters and pamphlets in the field of travel and tourism; and informational flyers featuring travel and tourism; and brochures about travel and tourism. FIRST USE: 20041203. FIRST USE IN COMMERCE: 20041203

Press release is here.

By registering the trademark, the Bureau has taken the first crucial step in its plans to make Huntington Beach a household name synonymous with the Southern California beach lifestyle. From here, the Bureau plans to implement a global branding strategy that includes an official logo, advertising campaign and licensing deals with merchandisers of everything from beach cruiser bicycles to furniture. The goal is to promote the city as a destination resort and build Surf City USA as a lifestyle brand which will generate revenue for tourism promotion and provide funding for city improvements.

Tags: trademark, brand, registration, Surf City USA, Huntington Beach, licensing, strategy, press release

Some trademark statistics

According to the United States Patent and Trademark Office's Trademark Electronic Search System ("TESS"), there are a total (as of May 11, 2006 at 4:16 PM) of 2,385,842 registered trademarks, of which 1,290,000 are active.

That's a lot of trademarks.  And those are just the ones registered with the USPTO.  There are many more trademarks registered with the states, and many many more unregistered.

So you still think you have a unique name that no one else is using.  Look at the numbers and think again.  Without performing a trademark search, you run the risk of adopting a trademark that is confusingly similar with one or more pre-existing trademark.

Consider these numbers also:

• During the work week, the USPTO receives approximately 900 to 1,000 trademark applications per day.  On weekends, they get about 100 applications per day


• 
  The USPTO has received the following number of applications in the following years:
  
  
  
  • 2005 - 263,126
  
  
  • 2004 - 250,252
  
  
  • 2003 - 224,754
  
  
  • 2002 - 214,143
  
  
  • 2001 - 218,134
  
  
  • 2000 - 285,775
  
  
  • 1999 - 263,838
  
  
  • 1998 - 198,650
  
  
  
  


• 
  The USPTO has received the following number of applications in the following months of 2006:
  
  
  
  • January - 20,823
  
  
  • February - 21,771
  
  
  • March - 26,130
  
  
  • April - 21,532
  
  
  
  

Tags: trademark, trademark search, search, USPTO, statistics, filings, registered trademarks

Bold Vision Consulting now has a decision to make after getting trademark cease & desist

Lynnelle Bianco is a business consultant with over 25 years of experience in sales, marketing, and strategic planning.  According to her website, she began her consulting business, Bold Vision Consulting, last year.  Unfortunately, it appears she did not conduct a trademark search before she started up her business.  If she had, she no doubt would have found out about Dublin, Ohio based Bold Vision, LLC which had registered the trademark BOLD VISION for Business Management Consultation.

The Ohio firm first used the mark on October 15, 2001, filed for registration on March 22, 2002, and was registered on August 12, 2003.

According to Ms. Bianco's blog, she got a cease and desist letter from an Ohio attorney demanding that she cease using the Bold Vision name.  She lays out her two choices as follows:

A) Change the name of my business which means:
• Find another name that represents my work, my values, my views and …yes, the VISION of my business as well as Bold Vision.
• Redesign and re print every piece of marketing collateral I’ve created in the last year (and PAY for all this redesign and reprinting) Oh, this includes the website AND finding a new domain name - which means the new company name has to be an unregistered as a domain name also.
• How about every article I’ve ever written and published? Every article out there has Bold Vision noted in the by line. This BLOG is just one place where you can find my articles. I’ve also submitted articles for publication on various business sites and in newsletters here and there, so technically, I’ll have to remove the “Bold Vision” from these publications also… after I track them all down.
• And, get this – I’ll have to remove any reference to Bold Vision in any meta tag or search term from any website, newsletter or e-copy associated with my business.

Or

B) Respond to the attorney’s letter with an alternative view / plan / suggestion, which means:
Find a lawyer who is experienced in IP law, hire them to review the situation and write the response.
Wait for the Ohio attorney’s response to the response.
Decide whether to respond to the response to the response and…. well you get it. $$$$

Either choice will no doubt be painful. 

I commend Ms. Bianco with admitting her error for the world to see in order to educate her readers of the real and potentially expensive dangers of adopting a name or trademark without first conducting a trademark search.  I wish her well with whatever decision she makes.  From the tenor of her blog post, I have no doubt that her vision will remain bold.

Tags: trademark, trademark search, search, naming, risk, name change, cease and desist

Puppies versus Cat

We couldn't resist posting this cute video of puppies checking out a cat found on YouTube.

UPDATE 5/12/06

Here's an expanded version found on Google Video:

Tags: puppies, cat, YouTube, video, cute

Seattle Seahawks and Texas A&M settle 12th Man trademark dispute

The Seahawks posted the following message on its website:

Texas A&M University and the Seattle Seahawks announced that they have agreed on the scope of Seattle’s future use of the 12th Man trademark. The agreement resolves all of the issues presented in the pending lawsuit, which has been dismissed. Neither side admitted any fault or liability.

The Seahawks acknowledge Texas A&M’s ownership rights in the mark and will continue to use the mark under license in connection with the Seahawks’ operations, promotions and fan activities in the Pacific Northwest.

Another article here.

Info on Texas A&M's registered 12th Man trademark here and here.

A related interesting note, Australian company Talbot & Maxwell Pty Ltd filed an application for 12th Man for beer and non-alcoholic carbonated beverages.  NFL Properties, LLC (but not Texas A&M) was granted two extensions of time to oppose, but failed to file a Notice of Opposition.  Having no other potential opposers, the Patent and Trademark Office issued a Notice of Allowance on April 11, 2006.

Tags: trademark, opposition, litigation, settlement, license, Seattle Seahawks, Texas A&M

The Birth of the Brand Valuation Consultancy Business

CFO.com has a fascinating story on the beginnings of the brand valuation consultancy business.  Apparently, the first brand valuation was ordered by the British firm RHM in a sucessuful attempt to ward off a hostle take-over from another company.

Trademark related excerpt:

"Having paid Interbrand nearly half-a-million pounds for their work, my aim was to make sure we really exploited that and built upon that work," says Schurch. "It gave me a tool to say to marketing, 'You are charged with protecting the value of these prize assets, the brands. You need to demonstrate year on year that you are protecting and growing them.'"

Schurch and Ginny Knox, the joint chief operating officer of consumer brands, set up a review process for the company's 20 brands based on seven metrics that were used in Interbrand's valuation. They comprise statistical measurement of: 1) how the overall market segment has changed; 2) the brand's stability; 3) market share and other "leadership" qualities; 4) long-term trends for the brand; 5) advertising spending, sales promotions and related activities to "support" the brand; 6) geographical distribution; and 7) trademarks and other legal protection.

Emphasis added.

Tags: branding, valuation, trademark

A peek inside the Intel Inside trademark protection strategy

In a previous post, we discussed the litigation between Intel and Internet Transaction System's ("ITS") over ITS' use of ePayments Inside.  Well it seems that Intel is very protective of the word "Inside" and will challenge your use of the word as a trademark.  Witness Intel's opposition to the Ultraflex Systems' application for ULTRA MUSCLE INSIDE ULTRA SAFE STEP & Design.

Intel describes its Intel Inside Program as follows:

9.    Opposer [Intel] has invested billions of dollars in advertising and promoting its computer hardware and other products under the INTEL INSIDE mark.  This advertising extends, and has extended, to all media, including but not limited to radio, print ads, trade shows, the internet, and television.

10.    In addition to Intel's direct advertising of the INTEL INSIDE marks, in 1991, Intel launched its revolutionary INTEL INSIDE program, a logo licensing and co-operative advertising program.  Under this program, computer manufacturers (such as IBM, Dell, and Hewlett-Packard) that sell personal computers containing Intel microprocessors (such as the renowned PENTIUM(R) processor) are licensed to use Intel's INTEL INSIDE logo on their computers and in their advertising and promotional materials.  Through this program, the INTEL INSIDE logo appears on the front bezel of millions of computers around the world and the INTEL INSIDE mark is seen extensively in computer manufacturer advertisements.

11.    The INTEL INSIDE program was revolutionary because this was the first time that an "ingredient" manufacturer in the computer industry reached out directly to the end consumer, instead of marketing solely to the computer manufacturers, convincing the consumer to look for personal computers containing Intel designed microprocessors.  The INTEL INSIDE program is now one of the world's largest co-operative, ingredient brand marketing programs and was regarded as "one of the more magnificent campaigns of the century" according to an article in Advertising Age magazine (November 15, 1999).

12.    As a result, it is estimated that since the program's inception in 1991, advertisements carrying the INTEL INSIDE mark have created an estimated millions of consumer impressions.

13.    Thus the INTEL INSIDE Marks have become extremely well-known famous and recognized by consumers to be Opposer's marks.

14.    The INTEL INSIDE Marks are famous pursuant to 15 U.S.C. 1125(c)(1).

15.    Because of Intel's extensive investment and efforts in promoting its INTEL INSIDE Marks, together with the extensive advertising and promotional efforts of Opposer's licensees under the INTEL INSIDE program, and Intel's use of THE JOURNEY INSIDE mark on its services, the "{word} INSIDE" format is widely recognized and uniquely associated with and beloning to Opposer.

Intel then proceeds to argue that Applicant's use of the ULTRA MUSCLE INSIDE ULTRA SAFE STEP & Design will likely cause confusion and "is likely to blur and whittle away at the distinctiveness and identity-evoking quality of the famous INTEL INSIDE marks."

It's probably safe to say that you don't need a trademark search to know that if you use {word} INSIDE as a trademark, you'll be sure to receive a cease and desist letter from Intel once they discover your use.

Tags: trademark, search, trademark search, Intel, Intel Inside, branding, naming, TTAB

Trademark and Branding Lessons from Enron

I'm listening to the CD version of Conspiracy of Fools by Kurt Eichenwald, which provides an intimate blow-by-blow of Enron's collapse.  The second CD contained the following passage recounting the story of Enron's original name, Enteron.  I apologize for any mistakes in transcribing the text.

The name had been proposed by Lippincott and Margolis, a pricey New York consulting firm, that had spent three months and millions of dollars on the project.  It derived from an analysis of the company’s business:  “En” for energy; “ter” for international and InterNorth; and “on” because it sounded cool.  After thinking it up, the consultants had checked around the world to be sure that no other company was using the name, and that it did not have some vulgar meaning in another language.  Problem was, no one bothered to check Websters.  Enteron is also a word for the digestive tube running from the mouth to the anus.  Particularly unfortunate given that Lays’ company produced natural gas.  Within days of the announcement, the soon to be Enteron was a laughingstock.  It all came to a head one Saturday, as Lay and his two top advisors, Nick Seidel, his president, and Rich Kinder, his general counsel jogged three miles in Houston’s Memorial Park debating what to do.  Seidel and Kinder believed that the issue would blow over in little time.  Lay was equally adamant that the name had to go.  Two days later, Lay contacted the naming consultants informing them that either they needed to figure out a new name quickly, or that it would stay HNG InterNorth.  Somehow, the work that took three months for the first name was repeated in little more than a week.  Lay liked the new suggestion immediately.  The shareholders overwhelmingly approved it.  HNG InterNorth would from then on be known as Enron.  A name that in its first days was already on its way to being bound up in scandal.

So here's my takeaways from this passage:

• Naming a company can cost millions


• Because you may be spending a lot of money on your name, make sure you clear it from a trademark prospective


• When naming, make sure to check for foreign equivalents for potential vulgar meanings


• Also, check for other potentially embarrassing meanings or connotations

Tags: trademark, trademark search, trademark screening, branding, naming, Enron