February 1, 2012
With Super Bowl week already in full swing in Indianapolis, we wanted to remind you of some of the legal issues surrounding ambush marketing in view of the clean zone ordinance put in place by the City of Indianapolis. Ambush Marketing is when one brand pays to become the official sponsor of an event (e.g., the Olympics, the NFL, the World Cup) and another competing brand connects itself with the event without paying sponsorship fees.
Below is a presentation which discusses ambush marketing and ways to combat it. The presentation also covers similar laws used to prevent ambush marketing, such as the Olympics Symbol Act in relation to the 2012 Olympics in London, and the clean zone ordinances, adopted by Dallas for the 2011 Super Bowl.
Click here to download a copy of the presentation.
January 30, 2012
Topics covered in this month’s trademark group presentation include the opening of the registration period for new gTLDs, landrush availability of .xxx domains, and other TTAB case law updates. To download a copy of this presentation click here.
November 15, 2011
Topics covered in this month’s trademark group presentation include enhancements to the trademark electronic application filing service (TEAS), discussion of a case involving trademark unenforceability due to fraud and a case relating to deceptive misdescriptiveness of a mark. To download a copy of this presentation click here.
October 24, 2011
Topics covered in this month’s trademark group presentation include a recent decision involving the sufficiency of a service mark specimen, a recent decision rejecting a descriptive mark on two grounds, and a recent decision finding trade name rights in an admittedly weak mark.
To download a copy of this presentation please click here.
August 22, 2011
Topics covered in this month’s trademark presentation included:
- Trademark applicants’ websites being used for rejections
- Involuntary waiver of sovereign immunity to trademark infringement
- New test for likelihood of confusion and dilution by blurring
- Update on Google AdWords litigation in the European Union
To download a copy of the presentation click here.
July 21, 2011
Topics covered in this month’s Trademark Group presentation include:
- US Patent and Trademark Office (USPTO) is now emailing acceptance of 8 & 15 declarations,
- a proposed rule to permit the USPTO to require more than one specimen for declarations of use,
- .XXX domain names,
- a review of the case concerning John Dillinger’s right of publicity,
- a case concerning the MUSCLE MAIZE trademark is descriptive, and
- a case concerning word reversal in trademarks.
Click here to download a copy of the presentation.
June 22, 2011
Topics covered in this month’s trademark group presentation include USPTO’s Report to Congress on Trademark Litigation Tactics, USPTO seeks comments on fee-processing methods, case law updates concerning topics including privacy of e-mails, the “Red Cross Statute,” and contributory dilution. Click here to download a copy of the presentation.
May 31, 2011
Topics covered in this month’s trademark group presentation include updates from the U.S. Trademark Office and case law updates concerning trademark licensing and likelihood of confusion issues. Click here to download a copy of the presentation.
May 11, 2011
Topics covered in this month’s trademark group presentation include Trademark Document Retrieval 2.0, case law updates concerning topics including right of publicity, natural scope of expansion, bona fide intent, related goods, and Google Adwords in Europe. Click here to download a copy of the presentation.
May 4, 2011
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So, you can rest easy now that you have a federal trademark registration, right? No!
Federal trademark registrations provide many protections and advantages to trademark owners. Nevertheless, even with federal trademark registrations in hand, trademark owners will benefit from active efforts to build and maintain the strength of their trademarks.
A trademark owner can lose trademark rights by not using the trademark, by not using the trademark correctly, by failing to enforce the trademark against third-party infringers and/or by failing to object to generic misuse of the trademark. Ironically, in some instances trademarks can be become so famous (think, GOOGLE®, VELCRO® and STYROFOAM®) that trademark owners must switch gears from heavily promoting their trademarks to limiting how people use their trademarks. Like failing to enforce a trademark against known infringers, improper use of a trademark by the public may diminish the trademark’s value.
It is important to keep in mind that one major rule in using a trademark properly is to use the trademark as an adjective, not a noun or a verb. In other words, the trademark is the brand name (an adjective) describing the associated goods or services.
Trademarks can become generic if the public starts using the trademark to refer to what something is, rather than as a brand name. Therefore, some trademark owners develop branding campaigns to educate consumers on how to properly use their marks. For example, the companies behind the XEROX® and KLEENEX® trademarks have devoted considerable resources in such campaigns to keep these trademarks from becoming the generic nouns for photocopies and tissues. A trademark owner is wise to monitor the trademark’s usage on the internet, in the media and in dictionaries, and should object to improper treatment, such as generic misuse, if necessary.
With respect to enforcement of trademark rights against third-party infringers, trademark owners must act with reasonable diligence in enforcing their trademarks rights. However, courts do recognize the expense and potential business considerations involved in bringing a trademark infringement lawsuit, and as such, a trademark need not be enforced against every nameless John Doe who misuses the mark through a random comment on Facebook. On the other hand, if the trademark is not enforced against the owner’s arch nemesis who is stealing sales, there is a risk that the mark will be found to have lost strength, or worse, that the trademark has become abandoned and therefore completely unenforceable.
Please contact is if you would like to learn more about recommended protection efforts for your trademark.