HRFM Today

European Trademark Bureaucracy Changes its Name ... and Confuses Everyone ...

As if there isn't enough confusion in the trademark world, the home of the European trademark Bureaucracy has changed its own name.   The admittedly confusing Office for the Harmonization of the Internal Markets or OHIM  (… so what does it harmonize and which markets exactly?) will now become the European Union Intellectual Property Office (EUIPO).  Sounds simple right?  Except that not all Intellectual Property is governed by the Office and a mark may not actually be enforceable inside all of the European Union ...

Industry Focus: Cleantech: Apple e-Car?

Rumors about Apple competing in the Electric vehicle space appear to multiply by the day.  The latest evidence of a coming Apple Car is the registration of  the domain names  apple.cars, apple.car and apple.auto.   However, a review of pending trademark applications and registrations owned by the Cupertino electronics company doesn't reveal anything yet filed for anything auto related.  Similarly, a quick search for pending patent applications with the words vehicle, battery, auto or car reveal patent applications that relate to Apple's in car entertainment system "CarPlay", but nothing that appears to relate to an actual electric Apple Car.

That being said, patent applications are not made public for at least 18 months after filing and Apple has a reputation for secrecy that would make it unlikely to reveal its hand before absolutely necessary.  Apple also has a reputation for not worrying too much about others' trademarks when it does not suit them so it could be that Apple is just not that worried about trademark protection at this point. 

Others including the Chairman of Daimler and Elon Musk of Tesla  believe that Apple is moving ahead on this vehicle with Musk indicating it being obvious due to Apple hiring 1000 engineers to work  on it.   Given that Apple has not been afraid to enforce its intellectual property, particularly in multiple lawsuits versus Samsung over the look of the iPHONE, the lack of actual IP protection being pursued (i.e., no real patent or trademark applications filed) other than a few domain names that may be just as easily utilized for CARPLAY, is curious but  this may just be keeping the world guessing....which going back to the days of Steve Jobs is exactly what Apple likes to do...

By Victor Cardona

Reminder: Trademark Registration Requires Use in Commerce

You really do need to use a mark to get a trademark registration.  In case anyone needs reminding, "Use in commerce", that is, use of a trademark or service mark in connection with the sale of goods or services really is required prior to receiving a trademark registration. (see our previous post regarding use requirements) We are putting aside for another day the lack of such a requirement for trademarks which claim priority to foreign trademark registrations... 

The Court of Appeals for the Federal Circuit (“Federal Circuit”) recently held that applicants for service marks under Section 1(a) of the Lanham Act must show that the advertised-for services have actually been rendered in commerce in Couture v. Playdom, Inc.

Trademark Fees Drop

As of January 17th, Trademark Office fees for filing a trademark application have changed.

As indicated above the fees for filing a trademark application on paper ... if anyone does that anymore ... have not changed.  The standard electronic filing fees per class have not changed either.

It gets a little more interesting when one files an "RF" (i.e., reduced fee) application or a "Plus" application.  In the case of the former, an applicant must promise not to file anything relating to the application on paper to grab a $50 discount.  For a further discount, a Plus applicant must do that required for the "RF" applicant and also choose the identification of goods/services from the Trademark Office's official manual for such goods/services.     

For most applicants the "RF" application doesn't present much of a problem since most of the "paperwork" we file is now done online anyway.  However, the requirement of the "Plus" application to recite goods/services only from the Offcial Trademark manual could present a problem especially for any new goods/services (that may not be in the Manual) or when it is necessary to file a narrow application for goods that are different from or just narrower than those in the Offical Manual.  New fees are on the Trademark Office site here.  Hat tip to Carl Oppedahl.   Any questions please contact Victor Cardona.

IP 101: Do I need a trademark if I have a DBA, Corporate name or even a domain name?

Question:

Does a soon-to-be corporate name or DBA protect my desired name from use by others under trademark law or do we need to take additional steps?

 

Answer:

No, the registration of your corporation name or state DBA registered pseudonym does not prevent others from using your name in conjunction with the sale of goods or services.   A domain name would only let the registrant use the name as a web address to point others to particular web content but in and of itself does not prevent another from registering the same term with the Trademark Office.

So having a domain name or business name does not mean that you have a trademark registration.  In order to reserve a trademark with the Trademark Office you should take the following steps.

First, it is desirable to do a trademark search to determine if anyone else is using your desired name or one similar such that confusion would be likely. This search should include the records of the Trademark Office, related trade journals, other publications, and the Internet in general (e.g., GOOGLE it! ).

If nothing damaging is uncovered in such a search then you may want to proceed to register the word(s) of your desired trademark and potentially any associated logo with the United States Patent and Trademark Office.  In addition, eventually you will need to prove use of your mark (i.e., your domain, business names and logos)  in commerce with the desired goods or services in order for those names and logos to rise to the level of trademarks.  The actual formal trademark application process is essentially two steps and may be done online. 

1.  The online application form includes details of the business name and/or logo design, how and where you have used this logo/name.
2. Application fees, which can range from $275-$350 in fees to the government where is single class of goods. Some applications include multiple classes.

The application process includes drafting of an identification of goods and/or services to go with the desired name and/or logo - which is best done by a trademark attorney since it is a one-time thing and cannot be added to later usually.  Also, after filing, the Trademark Office still needs to review the application and typically responds to the applicant with objections and/or requirements which need to be addressed - usually with the help of a Trademark attorney.

If you choose to register, here are a few of the benefits that are associated with receiving a registration through the Trademark Office.

1. There is a presumption that you are the owner of the mark.  In particular, the listing on the trademark registry provides constructive notice to the world that the mark belongs to you.  Anyone who performs a trademark search should also uncover your mark which should reduce the likelihood that someone would try to apply for a mark similar to yours. 
2. You have the exclusive right to use the mark nationwide for the particular goods and/or services associated with the mark.
3. You can potentially use the mark in other countries in the same way that you would be able to use it in the U.S. Your US trademark provides a priority date relative to a filing of trademark applications abroad  if it is filed within six months of the US filing date.
4. You can add the "R in a circle" “®” to your logo which puts others  on notice that this is your registered  trademark.

By Victor Cardona and Viqar Hussain

“Hop”ping Mad: Trademark Disputes Among Breweries on the Rise

The number of craft beer breweries in the U.S. has been on the rise in recent years.  In 2003, there were 1,485 craft beer breweries in the U.S. and in 2013, the number almost doubled to 2,822.  The increase has been exponential; the number of craft breweries in 2013 demonstrates a 15.3% increase from 2012.  More craft breweries means more competition among brewers, but it also means more beer brands (over 93,000 to date) and more disputes over the trademarks of those brands. 

A trademark can be any word, name, symbol, device, color, or any combination thereof that serves as an identifier of source for particular goods in commerce.  To be registered with the United States Patent and Trademark Office (“USPTO”), a trademark must be distinctive and in use in commerce.

GNOME Trademark Battle Ends, Thanks to Online Fundraiser for Legal Fees and Public Support

According to the website for the open-source group, GNOME Foundation, Groupon recently confirmed it will abandon all 28 of their pending trademark applications for the trademark GNOME and will change its name for Groupon's new tablet and related software.  Over the past year, Groupon has filed several trademark applications with the USPTO for the mark GNOME (including several different variations, such as G-NOME, G.NOME, G NOME AND GNOME BY GROUPON).  The trademarks were allowed by the USPTO, but still subject to third party opposition.  In order to file an opposition to 10 applications by December 3rd, GNOME started an online donation site to raise $80k and public awareness.  According to GNOME's website, it raised over $100k before Groupon decided to abandon its trademark applications.  See https://gnome.org/groupon/

IP and 3-D Printing - Is That Iron Man on That Prosthetic?

3D printing, a rapidly growing technology that transforms computer-aided designs into tangible, functional three-dimensional products, presents almost unlimited possibilities to consumers but also presents countless intricate intellectual property questions to attorneys and innovators.  e-NABLE uses crowdsourcing to design, share, and produce prosthetic hands for children using 3-D printing.  Even such a worthy cause presents weighty questions for the use of this technology in view of others’ rights.

So do I need to actually use a trademark or servicemark to reserve it with the trademark office?

The trademark system is a use based system such that to have any rights use must be made of a mark in commerce in connection with the sale of goods or services.  For goods , such as products, widgets and things you can touch, this use must be directly on the goods via an engraving marking, label or other direct contact of the marks on the goods.

Industry Focus:Cleantech:Tesla trademark problems over in China?

 In an off again, on again, off again story, Tesla appears to have finally settled its dispute in China over its flagship trademark.

Tesla's troubles  had appeared to be over before but this time Tesla has said that it is buying up the domain names owned by this individual and he has said he is giving up his rights. Only time will tell...Victor Cardona