Recently, a coffee restaurant opened up near Los Angeles calling itself “Dumb Starbucks”. It has nothing to do with the established, and well-known coffee restaurants that operate under the Starbucks trademarks. The new restaurant even employs logos similar to those owned by Starbucks and a similar trade dress.

The new restaurant is claiming legal protection from trademark infringement under the doctrine of parody. Starbucks says it is aware of the new restaurant calling itself “Dumb Starbucks” and is looking into its legal options.

So the question becomes: can the new restaurant shield itself from legal liability for trademark infringement by employing a defense based on parody? In the opinion of this writer, this defense fails. (It is likely that this is nothing more than a grandiose publicity stunt, and the new restaurant will voluntarily relinquish the “Dumb Starbucks” moniker in short order. The prospect of litigating this issue would seem to be unappealing to the upstart.)

The defense of parody to trademark infringement is an extension of a trademark defendant asserting its first amendment right to free expression. However, freedom of speech under the first amendment is not absolute. In the context of trademark infringement, a defense of parody is more likely to be upheld where the asserted parody is done for the sake of humor. Such does not appear to be case here. Rather, the motivation appears solely to be commercial gain. Moreover, the fact that the very similar, if not identical use of rather famous trademarks are utilized in connection with identical goods and services further would seem to negate the parody defense. This would seem to be a case where the use of the trademarks leads to the likelihood of confusion in the marketplace, therefore a finding of infringement and the defense of parody fails.

As is expected, most well-known rock bands have an extensive portfolio of trademarks registered in the United States Patent and Trademark Office. (Most likely, there are foreign registrations as well, which is beyond the scope of this discourse.) This is a look at the trademark registrations of The Grateful Dead, and related entities.

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I get calls in my office frequently from clients who have received a solicitation in the mail which request payment of money. The scenario goes like this. You, or more likely your attorney, filed an application to register your trademark in connection with particular goods or services in the United States Patent and Trademark Office (USPTO.)

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One of the more common reasons that an application to register a trademark is rejected is that the mark as it is shown on the specimen is merely ornamental. This common basis for rejection is often found when applicants file an application to register a trademark on their own, pro se, without the aid of an experienced trademark attorney. Note that this is typically an issue of the manner in which the mark appears on the specimen and not a issue with regard to the mark itself. However, this can be fatal to the application if the applicant did not have appropriate specimens at the time of filing the application.

A mark will be deemed to be merely ornamental if the mark appears on the specimen as a merely decorative feature, and does not identify and distinguish the applicant’s goods. As such, the decorative matter does not function as a trademark.

This rejection is most often seen when the specimen provided is a t-shirt or article of clothing and the mark is splashed in large font on the front of the shirt.  This issue is not limited to clothing, however. The issue of ornamentation may arise when the application to register the mark is in connection with mugs, printed matter, or other goods.

As such, it is important to be sure that the mark is used as an identifier, i.e. a brand name or the like, or the application might be rejected. Worse, it may not be a rectifiable issue.

 

Infringement without likelihood of confusion or how congress has created broad protection for the Olympic symbols. The Amateur Sports Act of 1978 crafts an exception for the usual requirement of likelihood of confusion in a determination of trademark infringement. In pertinent part, the Act states that without the consent of the U.S. Olympic Committee, the Olympic symbols, (i.e., the familiar rings and other symbols of the Olympics) are reserved. Any person who uses these Olympic symbols, without consent of the USOC, for the purpose of trade or to induce the sale of goods or services, or the like, is subject to civil litigation. In other words, there is no need to prove likelihood of confusion, as would normally be the standard, in order to prove trademark infringement in the case of the defined Olympic symbols.

Trademarks that are merely a surname are marks that consist merely of a last name or family. These marks are not immediately eligible for trademark registration absent a showing of acquired distinctiveness. This rule of law is based on the social policy that people should be entitled to use their own surname in business in connection with a product or service. The trademark examiner may look at several factors to determine whether or not the mark is merely a surname. Among these factors are how common or rare is the surname, whether the surname is associated with any of the trademark applicants, and whether the trademark has other meanings other than as a surname.

However, once the public associates the surname with a particular source of the product or service, the surname has acquired so-called secondary meaning. This may occur through substantially exclusive and continuous use of the surname in commerce in connection with the goods or services. In this case, the mark is said to have acquired distinctiveness and may be eligible for trademark registration.

Associated Press
NEW YORK — Anti-Wall Street demonstrators are trying to trademark the phrase “Occupy Wall Street” before anyone else does.

Leaders of the protesters in lower Manhattan’s Zuccotti Park filed an application Oct. 24 to trademark the name of their movement with the U.S. Patent and Trademark Office, said Samuel Cohen, one of their attorneys.

“The filing was primarily a defensive move to make sure that no persons not affiliated with Occupy Wall Street were attempting to use the Occupy Wall Street name for improper purposes,” Cohen said Monday.

The application was filed by Victoria Sobel and Pete Dutro, two leaders of the movement who handle its finances. It requests use of the phrase in various forms of merchandise, including backpacks, luggage, clothing and headwear.

The group also wants to use the name in periodicals and newsletters and on a website that features educational materials related to the Occupy Wall Street movement.

The demonstrators have been using a silk-screening station in Zuccotti Park to print T-shirts that say “Occupy Wall Street,” Cohen said.

“Nearly all nonprofit organizations trademark their names,” Cohen said. “And the purpose is to avoid consumer confusion.”

To complicate matters, two other parties also have filed applications to trademark the phrase.

On the same date, Arizona-based Fer-Eng Investments LLC filed a similar application that covered merchandise but not newsletters or periodicals. And on Oct. 18, Robert and Diane Maresca, of West Islip, N.Y., filed to trademark the phrase “Occupy Wall St.”

Simply being the first party to submit a trademark application does not guarantee approval, said trademark attorney Daniel Kirshner, in East Brunswick, N.J. The party that can prove it was the first to use the phrase in commerce likely would have an edge, he said.

But simply printing T-shirts is not enough, he said.

“I get clients all the time that say, ‘I want to print a bunch of T-shirts and get a trademark registration,’” Kirshner said. “The patent office doesn’t think that’s a trademark. That’s decorating a shirt.”

—Copyright 2011 Associated Press

The simple answer is no, you are not required to hire an attorney to file an application to register a trademark with the USPTO. You are permitted to file an application yourself and the filing can be done electronically. There is no law which requires an applicant to hire a lawyer to represent the applicant with the USPTO. In the same manner of thinking, one is almost never required to hire legal representation for any type of legal matter. You are permitted, in most cases, to represent yourself in a murder trial.

The better question is this. Is it advisable to represent yourself at the USPTO. In the opinion of this writer, it is not. An experienced trademark attorney can advise the client with respect to the particular needs of the case. Furthermore, in many cases, it ends up being less expensive to hire a trademark lawyer to file the application properly at the outset, than to pay the lawyer later to amend an application that was improperly filed. Furthermore, a properly filed application is more likely to result in a trademark registration that issues at an earlier date that an improperly filed application. Moreover, in many cases, the Trademark Examiner prefers to deal with a trademark attorney rather than a pro se applicant who is not familiar with the law and the process and who tends to be more emotionally involved with the case. Finally, if your application is so filed sufficiently incorrectly, it may result in the application being denied and no registration resulting.

What constitutes trademark infringement? In other words, if a senior trademark user goes to court and sues another party for trademark infringement, what does the senior party need to prove? This is a complicated issue, but in general, the senior party would need to prove that there use of the allegedly infringing trademark is likely to cause confusion in the market place – so called “likelihood of confusion.” More specifically, the plaintiff would have to show that a significant portion of the relevant consuming public is likely to be confused by the use of the allegedly infringing mark by the defendant. Also worth noting is that likelihood of confusion is the same test that a trademark examiner at the United States Patent and Trademark Office will employ in determining whether a mark barred from registration because of previously registered mark.

How does one prove that there is a likelihood of confusion? The pivotal case on this point is the so-called du Pont case which lays out the factors that the court may consider in a consideration of likelihood of confusion. Among these du Pont factors are:

1. The similarity between the marks. The closer the marks are to each other, the more likely the court will find that there is a likelihood of confusion. Conversely, the more different are the marks, the less likely. It is worth noting that there is no requirement that the marks be identical in order to find infringement by the later adopted mark.

2. The similarity between the products or services sold under the trademark. Obviously, the more closely related the goods/services, the more likely the court will find infringement. The less closely related, the less likely a finding of infringement.

3. The strength of the senior mark. If the senior mark is strong, there is a greater chance that the court will find that there is a likelihood of confusion, and hence infringement. Generally, stronger marks are those that have been used for longer periods of time, have been more extensively used and advertised, and are inherently distinctive (i.e. not descriptive or generic.)

4. Actual confusion in the marketplace. Although there is no requirement to prove actual confusion in order to prove infringement, actual confusion is a factor which may be considered by the court.

5. The likelihood that the senior party will bridge the gap to selling products or services sold by the alleged infringer.