Archive for August, 2006

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Standard & Poor’s vs. Standard & Pours

Saturday, August 26th, 2006

Standard & Poor’s, a division of McGraw Hill, has filed a lawsuit against Pascale Hall, the owner and operator of Standard & Pours Coffee & Stocks, a 3-year-old coffee shop and live music venue in South Dallas, Texas.

In the lawsuit:

the McGraw-Hill subsidiary demands that Pascale Hall, Standard & Pours’ owner, pay S&P three times the revenue their company lost due to confusion over the names and three times her company’s profits — all because her shop’s similar name has damaged S&P’s “impeccable” reputation for “accuracy, reliability and integrity.”

In a statement, Standard & Poor’s stated:

We appreciate Ms. Hall’s predicament, but we must make every effort to ensure that our valuable brand is not diluted or misused.

A spokesman declined to elaborate on the release, which repeated the claim that Hall has profited from the Standard & Poors name.

While I can appreciate S&P’s position in this matter, I think the claim that S&P three lost revenue due to confusion over the names is somewhat laughable.

Posted in Business of TMs, Litigation, Trademarks | No Comments »

“Morning After” To Go Over-the-Counter

Thursday, August 24th, 2006

Apparently Duramed’s so-called “morning after” pill, trademark: Plan-B, will become available over-the-counter. However, women will have to prove that they are over 18 years old, in the States.

It seems the White House isn’t too happy, but given the 18 year-old restriction, I guess there’s not much it can say, yet.

Posted in Business of TMs, General, Government Action, Non-Legal | No Comments »

The Spud Lawsuit is Over

Tuesday, August 22nd, 2006

A dispute over salt potatoes by two Central New York food companies is now over. Earlier this year, Hinerwadel’s Inc. filed a trademark-infringement suit against Rapasadi and Sons. The lawsuit claimed Rapasadi purchased bags formerly used by Hinerwadel’s and filled them with their own product.

The two companies settled their differences last Monday. According to the Central New York Business Journal, Rapasadi is banned from selling any salt-potato bags with the Hinerwadel’s trademark on them.

Also, Rapasadi may only sell Hinerwadel’s-brand salt potatoes purchased directly from Hinerwadel’s or potatoes of other brands only if Hinerwadel’s can’t meet their needs.

Posted in Trademarks | No Comments »

Market Leaders Fight Genericism

Tuesday, August 22nd, 2006

Market leaders Google and Apple are apparently leading the fight against the genericism of their trademarks.

Google would like to oust the verb “to google” from everyday language;  the computer company Apple is battling over the concept “pod” according to a report in the Financial Times. The background to all this lies in the fact that trademarks can lose their protection if they become generic concepts.

In the past prominent newspapers have been the lucky recipients of correspondence from Google, and editors of dictionaries are being treated in the same way – the phrase ‘to google’ should not be used any more in the sense of searching the Internet. To be more precise, in German you might have to say instead something like  ‘Ich habe eine Google-Nachfrage gestartet’ or, in English, something like‘ I ran a Google Search’. In the German Duden in the meanwhile the phrase has become defined exactly as in the British ‘Oxford English Dictionary’ and the American Merriam Webster’s Collegiate Dictionary.

At the ‘request’ of the Internet giant, in their recent 24th edition Duden have modified their definition which originally ran as ’to search the Internet, especially via Google’. Now it says ‘to search the Internet using Google’. The Duden entry for the actual word ‘Google’ on the other hand leaves no doubt as to its trademark aspects – it is supplied with an ‘r’ in a circle. Duden would have yielded to the request for an alteration of the entry  in order to avoid any legal action,. say the editorial team. Such requests do occur from time to time . From the legal point of view, Google’s appeal is completely comprehensible – in decisions to do with generic concepts, dictionaries can be used as a weighty argument.

…

When trademark lawyers can influence dictionary definitions and a dictionary editor can permit an alteration of a definition, the believability of  language bibles is bound to suffer. ‘ When in doubt, I would rather prefer to omit such entries from dictionaries, because a dictionary is not assigned with the task of providing advertising for trademarks’, said the head of Duden’s editorial team, Matthias Wermke, to the Financial Times.

Related links:

» Google
» Apple
» More on Apple’s protection of “POD”
» Even More on Apple’s protection of “POD”
» More on Google

Posted in Business of TMs, General, Genericism, Trademarks | No Comments »

UK Supermarket Seeks Registration of “Chav”

Tuesday, August 22nd, 2006

ASDA has applied to register the slang word “chav” as a trademark for its confectionery.

The word appears on the supermarket chain’s Whatever sweets with other popular expressions such as “mint”, “minger” and “bothered”.

Whatevers, an update of traditional Love Hearts which featured tender messages, are now nicknamed “Chav Hearts”.

Asda said: “With slogans from characters in shows such as Little Britain and the Catherine Tate Show providing us with more and more contemporary slang, our Whatever sweets have become very popular with kids and grown-ups alike.

“We thought we needed to give them some respect and have decided to trademark them.”

Those who object to the registration have three months to get in touch with the Trademark Registry.

Related link:

» Define: “Chav“ 

Posted in Uncategorized | No Comments »

Businessman Gets “Screwed”

Tuesday, August 22nd, 2006

Jeberaj Kenneth, trading as Screw You, applied to register SCREW YOU as a trademark in Europe for a wide variety of goods including sunglasses and sex toys, clothing, spectacle cases and breast pumps as well as alcoholic beverages, condoms and sports equipment.

However, OHIM would have none of it.

The original application was rejected on the basis that the phrase did not comply with an article of the Community Trade Mark Regulation which bans marks which are contrary to “accepted principles of morality”. The original Examiner equated the word “screw” to the word “fuck” and said the term was insulting.

In his appeal, Kenneth argued that the two words were not equally offensive, and that the phrase “screw you” was in common, acceptable use in English, as demonstrated by its use in Eastenders and The Simpsons.

The board accepted that the two terms were not equally offensive, and that public swearing was more acceptable now than it had been 30 years ago, but that the liberties extended to artistic expression were not necessarily to be extended to commercial expression. The phrase “screw you”, the board concluded, was definitely a profanity.

The Grand Board of Appeal board ruled, however, that there were some contexts in which the profanity would not present a problem. The trademark would be permitted in relation to the goods proposed by Kenneth that would be sold in sex shops, such as sex toys, artificial breasts and breast pumps.

The board also said the trademark could provide protection for condoms even outside of sex shops, since any purchaser would be unlikely to be offended by the term. The board rejected protection in relation to alcoholic beverages, which had been previously granted in the UK.

Related links: 

» source article
» Board decision
» Define: “screw you“

Posted in Free Speech, International, Trademarks | No Comments »

A Long-Held Secret Revealed?

Monday, August 14th, 2006

Environmental groups in India are charging that Coca-Cola and Pepsi beverages contain toxic levels of pesticides. As a result of these allegations, six Indian states have issued full or partial bans on the sale of Coke and Pepsi in their states.
Predictably, the companies are fighting back. “The Coke you drink in India would be as clean as the Coke you get in Paris,” Coca-Cola Asia group communications director, Kenth Kaerhoeg said.

The scariest part is that India’s Supreme Court has given the companies’ Indian arms six weeks to reveal the ingredients of their soft drinks. Coke and Pepsi account for nearly four-fifths of India’s $2 billion soft-drinks market.

Both Coca-Cola and PepsiCo were forced out of India in 1977 by a socialist government that objected to a lack of local investors and an unwillingness to share technology such as Coke’s top-secret formula.

The 16-year ban ended in 1993, two years after India launched ambitious economic reforms to open its closed economy and so start catching up with rival China’s stellar growth.

After all these years of secrecy, I have difficulty believing that either company will give up its formula willingly. On a practical note, it seems odd that the formula – or at least the ingredients regardless of percentages – could be reverse-engineered to determine whether toxic levels of pesticide exist.

Posted in Business of TMs, International, Trade Secrets | No Comments »

Threats from Far Away

Friday, August 11th, 2006

China has a reputation of being a jurisdiction where piracy runs rampant. The text of an American Public Media story illustrates this point. The transcript of the news story is below:

Every week China’s trademark office publishes a list of logos that it’s approved. Recently, the list included a logo familiar to American public TV viewers.

That’s the Public Broadcasting System’s theme. You may also recall seeing PBS’s logo, a pointy-nosed profile? Well, Beijing trademark authorities recently gave a Chinese businessman rights to use it in China on things like t-shirts and hats.
Since PBS is hardly known in this country I wondered what he planned to do with it. So I called the lawyer who handled the registration. Obviously, Lawyer Hou Songlin had been waiting for a call from a foreigner.

Lawyer Hou said Chinese are clever and know how valuable trademarks are to foreign companies. He wouldn’t tell me what he knew about the company that owned the logo, but he was ready to bargain.

HOU SONGLIN (translator): “Tell me how much money the American side can offer for their trademark” Hou started bidding at a mere $100,000. That would be a nice profit. It only costs a few hundred dollars to register in the first place. It soon went up to $250,000 because he said he might have to grease some palms.
I called trademark lawyer Joe Simone of Baker & McKenzie to find out how often Chinese register logos that belong to foreign companies.

JOE SIMONE: “Every week there’s numerous, obvious examples of piracy. On average we’ll find 15 or 20 of companies that we know.”
But he says few companies pay ransom. Most lodge a complaint and that can stop the logo from being used in China for as long as eight years. On the phone, when I reminded Lawyer Hou that according to Chinese law, the American company has until August to challenge the registration he suddenly became confrontational, threatening.

HOU SONGLIN (translator): “It’s easy to make Chinese angry. And when we get angry we want revenge. If you file a complaint. I will never sell it to you!”
I told him I’m a reporter, not a company representative, but he didn’t seem to get it. Lawyer Hou wasn’t done with me yet. He called me back looking for information.
It turned out he had no idea who the pointy-nosed logo belongs to, or what PBS is. So he didn’t know how much his catch was worth. He asked me to tell him the Web site of the owner.
I declined, but he’d probably be disappointed to learn it’s PBS, a non-profit organization that’s been facing budget cuts from Congress.

Source: http://marketplace.publicradio.org/shows/2006/07/19/AM200607192.html

Posted in Business of TMs, General, International | No Comments »

Are There Any Spots Left to Bite the Apple?

Thursday, August 10th, 2006

It is claimed that six young Native Americans will file another petition at the USPTO‘s Trademark Trial & Appeal Board seeking cancellation of the NFL’s registrations of REDSKINS.

In 1992, a group of prominent American Indian leaders filed a similar petition that is still pending 14 years later. Both petitions call for the cancellation of the federal government’s registration of the Washington “Redskins” trademark because its use is disparaging to American Indians. The petitions cite extensive evidence concerning the history of the use of the term “Redskin” and public perception of the objectionable term. Both sets of petitioners are represented pro bono by the law firm of Drinker Biddle & Reath LLP.

This issue has been pending for fourteen years, with no end in sight.

Posted in IP - General, Trademarks, TTAB | No Comments »

Laches In Israel

Saturday, August 5th, 2006

Plaintiff, owner of prior Israeli registration of Life Styles is barred from making trademark infringement claims against Australian owner and manufacturer of Life and LifeStyle for condoms because Israeli company had been aware of defendant’s use for 8 years before brining any action.

 >> see article

Posted in International, Litigation, Trademarks | No Comments »

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