Nadya Suleman, aka Octomom, has filed a trademark application for the mark OCTOMOM, ensuring her ability to make money from her moniker.
Her applications cover entertainment in the nature of on-going television programs in the field of reality shows in Class 41, disposable diapers in Class 16 and dresses; pants; shirts; textile diapers in Class 25.
You can access information about her application here and here.
Beware: She may have competition here.
This is a great article (for lack of a better word) about the best and worst products of 2007.
My favorite:
The newest creation from the Heart Attack Grill in Tempe, Ariz., features 2 pounds of beef, 12 slices of bacon, and 4 layers of cheese. But it’s not the 8,000 calories that we really have a problem with.
A close second: Windows Vista.
Enjoy!
After Sega fans began speculating that Sega’s recently refiled U.S. trademark application for DREAMCAST signaled a relaunch of Sega’s DreamCast video game console. [Sega had exited the console market and has been developing games for other gaming consoles.] In order to set the record straight, Sega of America’s PR director Charlie Scibetta, explains that his company’s re-filing of the Dreamcast trademark was simply to ensure that it maintained control over it:
SEGA has no plans to get back into the hardware business, but we also want to protect our past and current brands. The trademark application was filed to protect our current and potential future use of the word DREAMCAST and to prevent other parties from using it in a way that could be confused or linked with SEGA.
Its new application covers, among other things, “home video game machines; player-operated electronic controllers for electronic video game machines; video game interactive controller, namely, hand held pads, and floor pads or mats; joysticks for video games; computer cursor control devices, namely, computer mouse; flash memory cards”. Of course, in its application, Sega declared that “Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services”. Mr. Scibetta’s comments clarifying the filing would seem to contradict the bona fide intention to use the mark in commerce.
Sometimes it is important to check with the trademark department before issuing public statements concerning trademarks.
I recently came upon this story about an NFL proposal to require all photojournalists who cover the SuperBowl to wear bright red vests advertising the SuperBowl’s two big sponsors: Canon and Reebok.
However, this post is not about that. It made me think about the NFL’s earlier efforts to prevent third parties from using the phrase “The Big Game” in their efforts – in the NFL’s words – to ” attempt[] an end-run around the term ‘Super Bowl.”
It is true that the NFL has been very successful in preventing others from using the term “SuperBowl” in any context. However, it seems to me that there are two reasons that the NFL has been successful, and neither has anything to do with the strength of its trademark claims. In my opinion, the reasons are 1) the NFL takes on individuals or small entities that cannot afford to defend a federal lawsuit and 2) they take on corporations who stand to benefit from complying with the NFL’s demands. For example, if a company like BestBuy refuses to comply with the NFL’s demands it risks losing potential future tie-in promotions with the NFL and, more specifically, for the SuperBowl. Therefore, large companies comply for business reasons – not because they have weak trademark defenses.
I would love to see some company or individual who does not have the same need for future tie-in contracts stand up to the NFL and watch the NFL actually lose its claim in a court. After all, any company that advertises a sale on big screen TVs in time for the SuperBowl is in fact referring to the SuperBowl – not some competing event. Trademark law does not simply prevent using another’s trademark. It prevents use of a trademark that is likely to result in a likelihood of confusion. To advertise TV sales in order to watch the SuperBowl does not result in a likelihood of confusion – even if the NFL has contracts with promotional partner. Any such sale actually refers to the NFL’s SuperBowl. Thus, there can be no confusion.
Practically speaking, since only authorized companies can use phrases like “Official Sponsor,” etc., there is no real likelihood that consumers would believe that a sponsorship exists by the mere use of the SuperBowl trademark.
If Katonah, NY can find a law firm to represent it pro bono against Martha Stewart, I am sure that someone could find a firm to stand up to the NFL pro bono.
And one last thing: SUPERBOWL SUPERBOWL SUPERBOWL SUPERBOWL SUPERBOWL SUPERBOWL SUPERBOWL SUPERBOWL SUPERBOWL SUPERBOWL SUPERBOWL SUPERBOWL SUPERBOWL SUPERBOWL SUPERBOWL SUPERBOWL SUPERBOWL SUPERBOWL SUPERBOWL SUPERBOWL SUPERBOWL SUPERBOWL SUPERBOWL SUPERBOWL SUPERBOWL SUPERBOWL SUPERBOWL SUPERBOWL SUPERBOWL SUPERBOWL SUPERBOWL SUPERBOWL SUPERBOWL SUPERBOWL SUPERBOWL SUPERBOWL SUPERBOWL SUPERBOWL SUPERBOWL
Okay, so this isn’t a particularly recent story. Others have written about it as far back as October 2006. However, there have been some developments since then. So, I guess now is as good a time as any to revisit the issue/story.
The U.S. Food & Drug Administration (the FDA) on April 4, 2007 issued a warning letter to Redux Beverages LLC. In essence, the FDA objects to the naming of Redux’s energy drink (a competitor of Red Bull) COCAINE. In its letter the FDA writes:
According to information on your website, Cocaine is marketed as an alternative to an illicit street drug, and certain ingredients contained therein are intended to prevent, treat, or cure disease conditions. As explained in greater detail below, dietary supplements are products that are intended to supplement the diet . Street drug alternatives, i.e., products that claim to mimic he effects of recreational drugs, are not intended to supplement the diet and, as a result, cannot lawfully be marketed as dietary supplements. In addition, a dietary supplement may not bear claims that it prevents or treats a disease, except for authorized health claims about reducing the risk of a disease. Other disease prevention and treatment claims render the product a drug subject to the drug requirements of the Food, Drug, and Cosmetic Act (Act).
The FDA continues:
The following statements that are noted on your product container or on your website demonstrate that your product is intended as an alternative to an illicit street drug:
- “The Legal Alternative”
- The product name is “Cocaine,” and the letters in the product name appear to be spelled out in a white granular substance that resembles cocaine powder.
- “Speed in a Can”
- “Liquid Cocaine”
- “Cocaine – Instant Rush.”
- “The question you have to ask yourself is: ‘Can I handle the rush?”
- This beverage should be consumed by responsible adults. Failure to adhere to this warning may result in excess excitement, stamina, . . . and possible feeling of euphoria.”
The following statements on your website about an ingredient of “Cocaine” demonstrate that your product is intended to treat or prevent certain diseases:
- “Inositol -… reduces cholesterol in the blood; it helps prevent hardening of the arteries, and may protect nerve fibers from excess glucose damage. Inositol has a natural calming effect and may be used in the treatment of anxiety, depression, and obsessive-compulsive disorder without the side effects of prescription medications.”
Street Drug Alternatives
FDA has become aware of the proliferation of various diet supplement products that are being manufactured, marketed, or distributed as alternatives to illicit street drugs. Street drug alternatives are not intended to supplement the diet. 21 U.S.C. 321(ff). Accordingly, street drug alternatives do not qualify as dietary supplements. See United States v. Undetermined Quantities of Articles of Drugs, 145 F. Supp. 2d 692 (D. Md. 2001). In March of 2000, FDA made available a guidance for industry on street drug alternatives. This document contains additional information and is available at http://www.fda.gov/cder/guidance/index.htm.
You may access the full text of the letter on the FDA’s web site here. A .pdf of the actual letter is available here.
After reading this, I am left wondering what is the point of a U.S. federal registration. The background:
Custom Vehicles created a van that it called “Work-N-Play.” The interior of the van could be converted from a mobile office to a camper so that the owner could “work out of it through the week” and be “playing out of it on the weekends.” In 2000, Custom Vehicles registered “Work-N-Play” with the U.S. Patent and Trademark Office as an “intent to use” trademark, meaning that it would have to be used in commerce within six months.
The following year, Forest River, a much larger company, built a towed van with a ramp door at the back and space inside for a repair shop so the van’s owner could both transport a motorcycle or snowmobile and repair it without taking it to a repair shop. Forest River called its product “Work and Play” and began selling the vans in 2002. By 2004, Forest River’s sales of the “Work and Play” van exceed $10 million in sales. On the other hand, Custom Vehicles sold only one “Work-N-Play” van—a demo model—to a family member for only 2.5 percent of the van’s normal sales price. Both Custom Vehicles and Forest River promoted their respective products at recreational-vehicle trade shows. Custom Vehicles sued Forest River for trademark infringement. The district court granted summary for Forest River and Custom Vehicles appealed.
The Seventh Circuit noted that Work-N-Play was a descriptive mark because it describes a characteristic of the vans. Therefore, in order for Work-N-Play to be a legally protected trademark, it must achieve “secondary meaning.” Custom Vehicles argued that a registered trademark carries a presumption of validity and secondary meaning and is therefore enforceable against sellers that use the term or a confusingly similar variant. The court rejected Custom Vehicles’ argument and noted that the act of registration merely begins the process that leads to the presumption. The court pointed out that a registrant could not bank or warehouse trademarks unrelated to any product or service in hopes of extracting a license fee from sellers of products or services for which one of the trademarks might be apt. Instead, a registrant must certify that trademark is used in commerce within six months of filing the trademark application. Within the six months following the trademark registration, Custom Vehicles had sold only one van, and the trademark was not used in the sale. However, even if the trademark had been used in the sale, that would not have been sufficient to place the trademark in the ordinary course of trade because the sale was too obscure to alert a significant number of consumers that Work-N-Play had a definite referent. The Court held that the Work-N-Play trademark had not achieved secondary meaning and there was no basis for supposing that consumers would think Forest River’s van had been produced by Custom Vehicles instead.
You can read the opinion here.
I am concerned by the rationale behind this decision. In a certain sense, I agree with the outcome. A single sale to a family member for 2.5% of the listed retail price in the course of four (4) years hardly seems to me to be use in commerce. According to the source, the trademark Work-N-Play did not even appear on the product which was sold to the family member.
Therefore, I have serious questions about the rationale that the mark was merely descriptive since the U.S. Patent & Trademark Office did not reach that conclusion. It was a Sec. 1(b) application and registered based on use in commerce – not 2(f). In essence, the Seventh Circuit appeals court substituted its judgment for that of the USPTO, and then rendered its decision based on its substituted judgment.
Rather than basing its decision based on its substituted judgment of descriptiveness, perhaps it should have determined that there was never any valid use of the mark in commerce (at least as I read the facts) and thus Custom Vehicles’ registration was invalid.
Perhaps there are facts of which I am not aware. However, it seems like the court just went down the wrong path.
With trademarks such as Super Bowl and Super Sunday, the National Football League had quietly filed trademark applications for the mark The Big Game… well, more than one. It seems that this move has raised eyebrows among some of the world’s trademark behemoths. Companies like Nestle, Time Warner, Pizza Hut, and others have obtained extensions of time to oppose the NFL’s applications.
The article focuses on the Stanford- UC Berkeley football game and how that game has been called “The Big Game” since 1902.
Former Cal football coach Joe Kapp fumed when he heard about the NFL plan. “Traditions and the names of traditions are meaningful in college football,” he said. “What’s next? The game between the two greatest universities in the world that play big-time football is the Big Game. It’s a tradition. It’s history. That’s the true meaning of sport.”
The NFL insists that Cal and Stanford have nothing to fear if it is granted the trademark by the U.S. Patents and Trademark Office.
Although the NFL’s McCarthy said that the league’s trademark application concerned only “a football game played on a Sunday in February” and thus wouldn’t affect the game at Stanford or Cal, Drucker said, “Cal and Stanford still don’t want anybody to have rights to a mark that references their game. The timing of the game is somewhat irrelevant.”
McCarthy clearly misspoke. First, the NFL owns two (2) applications for The Big Game. The one that covers football games covers: entertainment services in the nature of football exhibitions; providing sports and entertainment information via a global computer network or a commercial on-line service in Class 41. I don’t see anywhere in that identification of services where the game is limited to February.
“This filing was done in regard to companies that have attempted an end-run around the term ‘Super Bowl,’ ” said Brian McCarthy, the NFL’s director of corporate communications. “So this would not affect the college game that’s played in the fall.
“It would affect somebody who was trying to intimate a relationship with the NFL or the Super Bowl. They’re trying to draft off the goodwill we’ve built up over the years.”
Asked if a local TV dealership was attempting to intimate a relationship with the NFL simply by pointing out that a customer could watch “the Big Game” on a new flat-screen TV, McCarthy said, “We sell those (sponsorship) rights. In the example you cite, we have an agreement with Samsung on flat-screen TVs. Where do you draw the line? If you don’t trademark your rights, they hold no value.”
To me, the NFL is really overreaching. The NFL is not simply protecting its rights. It is trying to prevent any reference to the Super Bowl – by anyone – unless the NFL gets paid for the mention. In the example mentioned above, to say “Come get your new TV before ‘the Big Game,’” in my opinion, does not imply any sponsorship at all. It is merely identifying a certain day of the year to sell a TV. “In time for ‘the Big Game’” in no way implies any sponsorship. Therefore, the NFL’s attempt to prevent any reference to the game known as the Super Bowl played on a Sunday in February is not a matter of protecting its trademark.
It’s trademark is the Super Bowl – not “The Big Game.” The fact that “The Big Game” obviously implies the Super Bowl is not trademark infringement and does not falsely imply sponsorship.
Furthermore, insofar as others have been using the phrase to refer to the Super Bowl (or the Cal-Stanford) game, it seems that rights in the trademark The Big Game rest with almost anyone other than the NFL. I suspect “The Big Game” was first used by sportscasters decades ago to identify the Super Bowl.
To date, about 20 companies or individuals have obtained extensions of time to oppose the NFL’s The Big Game application. This should be an interesting conflict to follow.
According to this article, Wal-Mart is seeking to register the mark EDLP in connection with online and retail department store services in Class 35, and a lot of people are not happy about it. SuperValu, Inc. has already opposed the application, as has Wakefern Food Corp. and Associate Wholesale Grocers, Inc. Likewise, the following have collectively obtained several extensions of time to oppose Wal-Mart’s application: Lowe’s Home Centers, Inc., Publix Asset Management Company, Giant Food Stores, LLC
Haggen, Inc., Wegmans Food Markets, Inc., Publix Super Markets, Inc., Wakefern Food Corp., Mr. Wendell P.Russell Jr., Food Lion, LLC, BASHAS’ INC., Lowe’s HIW, Inc., Schnuck Markets, Inc., Meijer, Inc., National Association of Convenience Stores, Unified Western Grocers, Inc., Associated Grocers, Inc. and HEB GROCERY COMPANY, LP.
The opposers claim that EDLP is a commonly understood and used term in the retail industry for “every day low prices,” another trademark of Wal-Mart. SuperValu includes as exhibits to its opposition numerous dictionary definitions for “EDLP” as well as industry articles that use “EDLP” as an acronym for “every day low prices.”
However, what I also find interesting relates to my earlier post here which discusses the viability of fraud claims at the USPTO. In its opposition, SuperValu claims that since Wal-Mart was aware of the commonly understood meaning of “EDLP,” it committed fraud when it filed its application and declared, that “to the best of Applicant’s belief no other person, firm, corporation or association has the right to use said mark in commerce.”
Though this does not relate to fraud concerning the goods which a Statement of Use was filed, it does relate to the concept of fraud on the USPTO. It also relates to some points made in the INTA Bulletin on which my earlier post was based and it addresses some of the comments posted by Ron Coleman to my post.
I am curious to see how this turns out.
On a tanget, a review of the file wrapper suggests that the Examining Attorney did not make any inquiries into the meaning of the mark. This surprises me in light of the marks on which I have worked for which the Examining Attorney has inquired whether the mark has any meaning in a foreign language or in the relevant trade or industry. The Examining Attorney, in his Office Action, did not even ask whether the mark stood for something. It seems that this was a pretty big oversight on his part.
As I said above, I am interested to see how the fraud claim is handled by the TTAB. I hope it makes it through a decision.
From this article, which discusses allegations that Hitachi Global Storage Technologies has violated the trademark of Beijing Travelstar High-tech Company by using the latter’s TRAVELSTAR trademark in its product tags, this sentence attributed to the general manager of Beijinh Travelstar:
Hitachi can’t provide any evidence showing that it has not violated BTHC’s trademark.
Now, I am not expert on Chinese trademark law; however, I am not aware of any country’s law that requires the defendant to prove it has not committed trademark infringement. That puts the defendant in the position of proving a negative.
If the plaintiff is claiming trademark infringement, then the plaintiff must prove that infringement took place.
Bastille Day
Tuesday, July 13th, 2010À nos clients et collègues français, nous vous souhaitons un joyeux Quatorze Juillet !
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