Fanciful Trademark

Many people wonder about a Fanciful Trademark?  Why should anyone want a fanciful trademark?

Fanciful Trademarks are stronger than Suggestive Marks

Quaker Oats, as a stylized mark, is an example of a strong distinctive pictorial trademark, incorporating a distinct image of a man on its products.

Generally, trademarks help consumers distinguish one product or service from another by acting as a source identifier.  It helps consumers wanting to purchase Quaker Oats branded oatmeal purchase Quaker Oats and not some “knock-off.”

Trademark protection offers greater protection for stronger marks and less protection for weaker marks. Generally, stronger marks are marks which are distinctive and weaker marks are marks which are descriptive. Fanciful, Arbitrary and Suggestive marks are strong marks which are typically considered distinctive enough to receive trademark registration on their own.

Fanciful trademarks are marks which are typically made up and only have meaning when applied to a good or service.  An example of a fanciful trademark is Exxon or Xerox.  The words themselves have no meaning other than to indicate a brand of product.

The next strongest type of mark is an Arbitrary Mark, which is a mark which has meaning but as applied to a particular good or service, is unrelated.  An example of an arbitrary mark is Peter Pan for peanut butter.  Peter Pan is a name of a children’s character in a book but as applied to peanut butter, it has no particular meaning.  As to peanut butter, it is distinctive.

Suggestive Marks are considered the next strongest because they suggest some character or quality of the good or service.  Suggestive Marks do not describe the good or service, but require some form of imagination on behalf of the consumer to associate the mark with the good or service.  Suggestive marks are also protectable, but not as much as Fanciful or Arbitrary Marks.

Descriptive Marks describe the particular good or service and are protectable after a showing of sufficient good will.  An example of a descriptive mark is Bank of America.  On the other hand, Generic marks are not protectable because they are simply a common name for the product or service.  An example of a generic mark would be lite beer for light beer.

If you have questions about choosing a strong trademark, please contact our office to schedule a meeting with one of our trademark attorneys.

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Copyright Application vs. Copyright Registration

Today, the U.S. Supreme Court announced that it will take on the issue of whether a copyright registration or a copyright application is required before bringing a copyright infringement suit.

Currently, depending on the location of your copyright lawsuit, some courts require a copyright registration.  Other Courts simply require that you have filed a copyright application prior to bringing suit.  This means there is a split among the Federal Courts as to whether a copyright owner must fully register their works before suing.

Copyright Law does not require a registration to have a copyright.  However, before you can bring a copyright lawsuit you must have an application.  According to Section 411(a) of the Copyright Act:

No civil action for infringement of the copyright in any United States work shall be instituted until . . . registration of the copyright claim has been made in accordance with this title. In any case, however, where the deposit, application and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute a civil action for infringement if notice thereof, with a copy of the complaint, is served on the Register of Copyrights.

On its face, copyright registration must have been made prior to bringing suit.  However, various federal courts have interpreted that requirement differently.

Courts in favor of allowing suit based on a copyright application. Some courts reason that copyright applications are routinely granted.  The is the only barrier to receiving a registration is the application.  In addition, because the Copyright Office is backlogged, the filing of the application is enough.  Requiring a registration will punish the victim of a potential copyright infringement.  Refusing a lawsuit until their registration is approved will punish them even further.

Courts in favor of the copyright registration requirement.  Some courts believe the copyright law is clear on its face. According to Section 411, registration ….[must] be made before a lawsuit can be filed.  There is no ambiguity or wiggle room.  Even if the copyright registration process takes months, the courts can not be used to settle a copyright dispute until a registration is received.

It is unclear how the Supreme Court will respond.  I suspect the Court will take a literal approach to the registration requirement.  Copyright lawsuit filings have been increasing since 2009.  Prior to 2009 there were only thirty thousand copyright cases filed.  Since 2009 that number has grown annually, reaching over five thousand cases in 2015. It is unclear how many of those lawsuits involve registered works, but if registration is required the number of copyright lawsuits will decrease which will ultimately decrease the number of cases the courts will have to decide.

The Supreme Court granted the petition for writ of certiorari in the case of Fourth Estate Public Benefit Corp. v. Wall-Street.com LLC.  If you have a copyright case which involves a registered or unregistered copyrighted work, you should contact one of our copyright attorneys.

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Searching for Patents

Searching for Patents can Save Thousands of Dollars.

Patent Searches can save Thousands

Recently the U.S. reached its 10 millionth patent. Internationally, there are more than 1 million patent applications filed each year but only about 50-70% of them result in a patent. A conservative estimate for preparing and filing each application is around $10,000. This means that the odds are roughly 50-50 that an inventor will receive a patent after spending $10k (and no, there are no refunds).

Many of the patents that are rejected, are rejected because they are not new or they are obvious in light of existing patents.  A professional, properly conducted patent search can help identify patents which may indicate the invention is not new or that if new, is obvious. In addition, searching for patents can help identify who the competition is, who a potential licensee is and how others have attempted to solve the same problem and failed.  The benefit of the patent search can often be non-monetary.  Generally, the cost for the patent search can begin around $500 to $2,500 (and can go up from there).

If you hire an attorney conduct a search and spend around $500, the results may indicate that your patent may be unsuccessful. In this case, the search just saved you $9,500.  If as a result of the search, the inventor makes changes to the invention and the application on the modified invention is allowed, the $500 search just help save your $10,000 investment.  Then, if the inventor turns the patent into a profitable business, the benefit of the search can often far exceed its cost.

Prior to filing an application, we encourage our clients to consider searching for patents, which can result in a better application and may save an inventor thousands of dollars.

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Trademark Actions – Reverse Passing Off

Trademark law protects your business against confusion, which can be created by Forward Confusion, Reverse Confusion, Passing Off and Reverse Passing Off.  If this occurs, a trademark infringement lawsuit may be necessary to protect your business.

Trademark Rights

Trademark law functions as a type of unfair competition law and protects businesses against competitors stealing customers or harming the goodwill of the business by creating confusion.

Trademark law covers a business’s brand, slogan, logo and packaging and it may be enforced federally (under the Lanham Act) or on a state-by-state basis under existing state laws.  If a business is likely to loose customers or looses customers as a result of confusion between competitors, then the business may be able to bring a trademark infringement action under the Lanham Act.

In general, the first user (referred to as the senior user) has superior trademark rights over the later user (referred to as a junior user).  If necessary, the senior user can file a trademark lawsuit to stop the junior user from causing confusion.  This confusion can be as to source, affiliation, sponsorship and endorsement between the competing companies and it can occur before the sale, at the time of the sale or after the sale has occurred.

Forward Confusion

Typical trademark confusion which occurs when customers mistakenly think the junior user’s goods or services are associated or come from the senior user.  This is forward confusion and is the traditional confusion which is examined.  Customers want to buy the senior user’s products (think Original Pasta Co.) and mistakenly purchase the junior user’s products (think New Pasta Co.), believing them to be the senior user’s. For example, customer’s want to buy Original Pasta’s pasta in the red and white bag and they buy the red and white bag of pasta, but it is New Pasta Co.’s pasta.  The customer’s mistakenly purchased New Pasta Co’s pasta thinking it was Original Pasta’s pasta.

Reverse Confusion

However, there is a second type of confusion — Reverse Confusion which may also infringe a trademark.  In a reverse confusion situation, the junior user creates customer confusion but in reverse.  In contrast to the example above, the customer’s mistakenly think the senior’s users goods or services come from the junior user.  This may happen for example, when the junior user dominates the market with goods or advertising.  In such a case, the senior user’s brand loses value because it may become associated by the consuming public with the junior user instead of the senior user.

For example, Original Pasta Co makes macaroni under the name MACS and New Pasta Co make macaroni under the name MAX.  New Pasta Co. makes theirs MAX pasta with a green stripe. Customers see lots of advertising showing MAX macaroni with a green stripe and they go to Original Pasta Co asking to purchase the green stripe macaroni under the name MACS, mistakenly believing Original Pasta Co is the same as or affiliated with New Pasta Co.   Customers then learn that Original Pasta Co does not have a green stripe macaroni and they think Original Pasta Co stole the MACS mark from New Pasta Co, believing them to be selling macaroni which was a knock-off of New Pasta Co. MAX pasta.

In this case, there was not forward confusion.  Customer’s didn’t mistakenly purchase New Pasta Co’s pasta thinking it was Original Pasta Co, they actually went to Original Pasta Co to purchase the macaroni.  They just thought Original Pasta Co was an imitator of New Pasta Co and thought they and their products were inferior.  This is an example of reverse confusion.

Passing Off

Another area of interest to trademark infringement is Passing Off and Reverse Passing Off.  Passing off (or palming off, as it is sometimes called) occurs when a a company misrepresents his own goods or services as someone else’s. Reverse passing off, as its name implies, is the opposite: The company misrepresents someone else’s goods or services as his own.  In the case of Original Pasta Co and New Pasta Co., passing off would be if Original Pasta Co. made green striped macaroni and advertised and sold it to the public.  If New Pasta Co, made an inferior green striped macaroni and sold it as Original Pasta Co’s green striped macaroni, that would be Passing Off. The public would believe that the inferior macaroni product was Original Pasta Co’s and their reputation and goodwill would be harmed and/or diluted.

Reverse Passing Off

Reverse Passing Off occurs when New Pasta Co. purchases Original Pasta Co’s green striped macaroni, repackages it under their own name and sells it as their own.  In this case, the public would come to associate the qualities of Original Pasta Co’s green striped macaroni product with New Pasta Co’s. and Original Pasta Co’s goodwill would become diluted over time.

If you have questions about trademark infringement and whether Forward Confusion, Reverse Confusion, Passing Off or Reverse Passing Off has occurred, please contact one of our trademark attorney to discuss your trademark rights.

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10M Patent – Standing on Shoulders of Greatness

10 Mill Patent Cover

New Cover of Patent, celebrating 10th Million U.S. Patent

The 10th Million Patent was issued on June 20, 2018 to Joseph Marron for a “Coherent LADAR Using Intra-Pixel Quadrature Detection,” which relates to lasers.  This milestone in U.S. patent history truly shows that we are standing on shoulders of those who have come before us.  According to the USPTO, the 10th Million Patent shows that the U.S. patent system helps society progress through human ingenuity as referenced in the Constitution through Article III section 8, in which Congress was called on to “promote the Progress of Science and useful Arts.”

“Never before in history has innovation offered the promise of so much to so many in so short a time.” – Bill Gates

Throughout our history, encouraged by the U.S. Patent system, innovation has fueled amazing economic growth in our Country. Our growth is based on the development and often improvement of others.  We are standing on shoulders of those whose inventions has helped us and furthered our society.  With a 225-year history of awarding patents, it is amazing to realize that in just thirteen years between 2001 and 2014, more than three million U.S. patents were issued.  Over the years, as society has changed, the patents issued to our inventors has changed.

#1 1790 Pot ash
#1M 1911 Puncture resistant tire
#2M 1935 Rail Car Braking System
#3M 1961 Automatic machine language coding system
#4M 1976 Asphalt recycling process
#5M 1991 Ethanol production process
#6M 1999 Data synchronization process
#7M 2006 Polysaccharide Fibers
#8M 2011 Artificial vision system
#9M 2015 Windshield wiper fluid system
#10M 2018 frequency-modulated laser detection and ranging system

According to the USPTO, the new cover design, incorporates a design, typography, and printing, is a “forward-looking, contemporary take on the significance of what the document represents, with a particular emphasis on the value of a patent and its role in the future of our economic and cultural growth.”

As we celebrate the 10th Million U.S. Patent, lets remember what Sir. Isaac Newton said to Robert Hooke in 1675: “If I have seen further, it is by standing on the shoulders of giants.”

...standing on the shoulder's of giants.

Newton’s Letter to Hooke

 

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Protecting Patents and Trademarks are Good Business

Intellectual property (IP) generally refers to the legal rights associated with patents and trademarks, copyrights and trade secrets.  In some cases, intellectual property rights are the most valuable assets a business or organization will ever own. Unfortunately, many attorneys are unfamiliar with how these intellectual property rights work and how they need to be protected.

Patents and Trademarks, Copyrights and Trade SecretsAdvising a client on how to secure and enforce these rights and the importance of doing so is something our firm specializes in. This is why we focused on these areas; patents and trademarks, copyrights and trade secrets.  If you would like to find out why intellectual property is essential to the health and success of you or your business and how it can be protected from infringement call our office.

We can help you Protect your Patents, Trademarks and Copyrights with:

• Trademark Searches and Federal Trademark Registration
• Patent Search, Filing Patents, Royalty License Agreements and Enforcement
• Timely Registration of Copyright and Enforcement of Copyright
• Protecting Trade Secrets with Trade Secret Agreements

 

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Plant Patent Provides Monopoly for Holiday Flowers

U.S. Plant Patent

Many of us associate the holiday season with Poinsettia Plants. However, few people realize that it was covered by a plant patent for over a hundred years. Like the poinsettia plant, its history, is colorful and interesting. It also provides an example of how valuable a patent can be, namely, Plant Patents.

Plant Patent for the Poinsettia

The Poinsettia was introduced into America from Mexico in 1828 by Dr. Joel Roberts Poinsett, after whom the plant was named. From an economic standpoint, it is estimated that annual poinsettias sales are greater than $250 million with more than $60 million typically occurring during the six-week period near Christmas. The poinsettia plant has been referred to as the most popular potted plant in America.

Poinsettia’s history dates back to the Aztecs. In fact, Montezuma, the last of the Aztec Kings, like the plant so much that he adorned his palaces with the plant and used its red leaves as dye in his fabrics and its leaves and stems for medicine to treat fever, stimulate breast milk production, and to terminate pregnancies. Its latex (the milky fluid in the stem) can be used to kill pain, kill bacteria, and cause vomiting.

When it comes to patents most people think of utility patents. A utility patent provides a form of monopoly for new and useful processes, machines, manufactures, compositions of matter, or any new and useful improvement thereof.

While most patents are utility patents, there are two other types of patents. Design Patents which are on the rise and Plant Patents. A plant patent may be provided to an inventor who has invented or discovered a plant (not a potato, root or tuber) and is able to reproduce a distinct and new variety of the plant through asexual reproduction. “Asexually reproduce,” means that the plant is reproduced without the use of seeds, usually by cutting or grafting the plant although there are other ways including division, slips, rhizomes, and root cutting, among others. The patent grant under plant patents, lasts for 20 years from the date of filing the application and provide a form of monopoly right, allowing the inventor to exclude others from asexually reproducing, selling, or using the plant reproduced. Since the Plant Patent Act of 1930, more than 23,000 U.S. plant patents have issued.

At Intellectual Property Center, we hope you have a Happy New Year. Feel free to call tel:+1-913-345-0900 or email us to schedule a meeting with one of our attorneys to discuss ways to protect your invention or extend your intellectual property protection with a patent attorney.

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Disney Accused of Looting (i.e. Infringing) Pirate Franchise

Copyright infringement typically involves copying someone else’s creative work. However, what happens when you copy something that was itself a copy of something you create? For example, what happens when someone creates a new website for you or your company; if the new website was based on your old website is it still infringing to loot or steal the website? Is it copyright infringement to use the new website even though it was “based” on your original work?

This issue may be visited in a recent lawsuit filed against Disney involving a movie script based on Disney’s Pirates of the Caribbean ride which was opened fifty years ago. The ride was an attraction that some still describe as “the greatest ride in Disneyland history.”

The recent copyright infringement case against Disney involves two screenwriters, Arthur Alfred II and Ezequiel Martinez, Jr., along with their producer Tova Laiter.  They filed suit against Disney for copying portions of their 1999 screenplay Pirates of the Caribbean and using them in their billion-dollar Pirates of the Caribbean movie franchise.

The lawsuit, filed November 14, 2017, claims that Disney took the “expression of themes, settings, dialogue, characters, plot, mood and sequence of events” from the screenwriters’ screenplay. This screenplay was originally based on one of their original screenplays which was redrafted as a possible back story for Disney’s “Pirates of the Caribbean” ride, which has been around since 1967.

Many works such as book and movies incorporate various similar elements, such as themes or characters.  There are many books which are directed towards common themes, like pirates, natural disasters, and financial success. Just because they have similarities does not mean that one is copied from the other. For instance, your website may include a contact us page with an email and phone number, and the new version may include the same page with an email and phone number.  The fact that they have these similarities does not in and of itself indicate that one is copied from the other.  However, webpages having the same unique and creative description or layout may be more problematic.

In the recent Pirate copyright infringement lawsuit, Captain Jack Sparrow is substantially similar to a “Davey Jones” character created by the screenwriters. The Davey Jones character was a “good” pirate “with a sense of humor.” In addition, the movie uses nearly identical dialogue to the screenplay written by the screenwriters. Ultimately it will be up to the court to sort through this one, but Disney has a reputation for disregarding copyright laws and has been named in various copyright infringement suits such as Lion King, Toy Story, Monsters, Inc., Up, Frozen, Inside Out, and Zootopia.

If you have questions about how this case may apply to your copyright infringement situation, please contact one of our copyright attorneys today at 913.345.0900.

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SCOTUS: ‘The Slants’ Trademark Gets First Amendment Protection

Simon Tam, lead singer of the Asian-American rock group “The Slants,” chose the derogatory term intentionally. Tam wanted to reclaim the racial slur and turn it into a name to be proud of. However, the Patent and Trademark Office (PTO) denied registration, calling the group’s mark “disparaging” under trademark law.

On June 19, 2017, the Supreme Court ruled that the PTO may not reject trademarks on the grounds that they express offensive ideas. Although the government grants trademark registration, the marks themselves are not considered government speech. This means that trademarks do receive protection as free speech under the First Amendment.

The PTO has allowed “positive” marks to be registered while rejecting disparaging marks. The Supreme Court says this is considered viewpoint discrimination – and it is prohibited by the First Amendment. This ruling will no doubt affect similar trademark cases, such as the use of the offensive Washington Redskins mark.

Questions about registering your trademark with the PTO? Contact one of our trademark attorneys today.

Kansas 913.345.0900
Missouri 816.363.1555 

Toll Free 888.IPC.OO2O (472.OO2O)

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Pay BEFORE You Play: Why Music Licensing Matters

Does your business need a license to play music? Do you really need a music license just to play cover songs?

Music licensing is not something to gamble with. Spotify recently settled a class action lawsuit for more than $43 million after failing to pay publishers and songwriters when they streamed their music. While Spotify’s business will survive, what happens when a business cannot absorb the costs associated with copyright infringement?

A local St. Louis blues bar, called Beale on Broadway, was recently sued by Broadcast Music Incorporated (BMI). BMI, ASCAP, and SESAC are performing rights organizations that represent artists and publishers. These organizations represent singers and songwriters and require restaurants and other venues to pay for the music that they play. This arrangement allows businesses to play copyrighted music without fear of a lawsuit for music copyright infringement.

Unfortunately, Beale on Broadway did not obtain a license from BMI.  They have been sued for allowing a cover band to play copyrighted music in their venue.

Copyright law is very unforgiving. The statutes often dictate that if a copyright has been infringed, a defendant has to pay staggering damages that could upend them financially. (Before Spotify’s settlement, the damages were upwards of $200 million.)

In case you’re wondering how BMI found out about cover songs playing in a small St. Louis bar, note that performing rights organizations employ “undercover” representatives to visit venues in search of music copyright infringement.

Does your business or band need help with music licensing? Contact one of our copyright attorneys today.

Kansas 913.345.0900
Missouri 816.363.1555 

Toll Free 888.IPC.OO2O (472.OO2O)

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