Patent, Trademark & Copyright : Law Office of Kloss, Stenger & LoTempio

A synthetic cannabis called Cush produced by "Sky Hi Blends" in Arizona is now sold at some delis and convenience stores in Buffalo, New York.  Buffalo city officials want it off the shelves.

The Dr. Pepper Snapple Group own Orange Crush and think it is trademark infringement. They demand that the name and logo is removed from the labels of the Cannabis product.

"Needless to say, we had nothing to do with this product. We did not authorize the marketing and sale of it. We're angry that our trademark is being infringed and associated with a product like this and we're pursuing all legal alternatives to get it off the streets," said Chris Barnes, spokesman for Dr. Pepper Snapple Group.

Ryan Burgess of  YNN News reported this story and as a buffalo attorney  that practices IP law I appear in this video clip to provide general information regarding trademark infringement.

I was quoted as saying "The question is whether it's going to confuse the public. Confusingly similar marks. It doesn't have to be the exact same thing.

It could be a phonetic equivalent, something close. And if it's close enough to confuse the public, then it's going to be an infringement of the trademark" 

I also found on line a product called Orange Krush. The product is advertised as a "a hybrid all natural bud smoke that grows wild in the peruvian jungles and several tropical islands."

I wonder what the Dr. Pepper Snapple Group thinks about the label on Orange Krush buds? Do you think the drops of orange liquid around the letters are "confusingly similar" to the Orange Crush trademark? Does changing the "C" to a "K" make a difference when infringement questions are raised?

An interesting side note to this story:

I performed a search on the United States Patent and Trademark Office search page I noticed that the trademarks registrations for Orange Crush are listed as DEAD. They have one pending application 85218189 for registration that is live. The registration 3721289 that is live is owned by Starbuzz Tobacco, Inc for tobacco products.

I am curious as to why they did not maintain their trademarks in Orange Crush. And I wonder how hard Sky Hi Blends is willing to push on fact that the registrations expired. If registrations expire there still are common law rights but the benefits of registration are lost.

Here are some of the benefits of owning a federal trademark registration on the Principal Register registration:

• Public notice of your claim of ownership of the mark;
• A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;
• The ability to bring an action concerning the mark in federal court;
• The use of the U.S. registration as a basis to obtain registration in foreign countries;
• The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;
• The right to use the federal registration symbol ®; and
• Listing in the United States Patent and Trademark Office’s online databases.

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One of the things I enjoy about law blogging is my opportunity to interview thought leaders in the intellectual property arena. Recently I had the opportunity to be introduced to Brian Wagner who is a co-founder of a company called "Packaging & Technology Integrated Solutions"(PTIS).

PTIS is a group of “Global Management and Packaging Consultants.” I got a chance to discuss how packaging is relevant to intellectual property such as trademarks, trade dress and patents.

PTIS' serves nearly 100 Fortune 500 companies from around the globe, and from all areas of industry, trade organizations, government, and academia. Packaging is also vital to the sustainability of our environment. PTIS consults corporate America with regard to new and innovative ways to preserve both the IP rights of their clients and the environment without sacrificing profitability.

Thank you, Brian Wagner for participating in the interview. Here are the Q&A's:

What type of company is Packaging & Technology Integrated Solutions (PTIS)?

PTIS is a management consultancy providing strategic and tactical professional services.

Some areas of specialization include innovation, organization strategy and sustainability.

Can you tell me a little about your background and how you started in the packaging industry?

After graduating from Canisius High School, I left Buffalo in 1979 for Michigan State University to study business, intending to return some day to join my father’s Insurance Agency (R.A. Wagner Agency). A series of circumstances and dislike for accounting led to a program switch into the School of Packaging where I joined 1200 undergrads and a thriving program.

I interned with IBM in Rochester, MN learning I had made a great choice and learning a lot about a great corporation. When I graduated in 2004, the “rust belt” was earning its name and jobs in western NY and Michigan were scarce. IBM offered great opportunities, but an opportunity with consumer products and General Foods (now part of Kraft) was more enticing – so I moved to Cranbury, NJ to begin my career.

Since then, I have worked for great companies including Burger King, Multisorb Technologies (Buffalo, NY), Sara Lee and Kellogg’s. In December of 2000 I co-founded PTIS, and we have now led consulting efforts for over 200 leading companies and brands including many of the Fortune 500.

Why is the packaging of a product so important?

Packaging is estimated to be a $650bn global industry, though estimates range as high as $3tn. Depending on the industry and what is being packaged, packaging serves a number of functions – and quite often is “the product.”

When it works well, consistent with delivering the product and brand promise, we take it for granted. When something is wrong, we quickly recognize it and the product and brand value are damaged as well.

Some studies suggest that if all food could be packaged as it is in the western world, we would solve world hunger. The amount of waste, spoilage and disease that exists in much of the world’s food supply chain is due in large part to inferior or even no packaging.

E. Bryan Finison, Jr., in his monthly column on business concepts called the “Finison Corner" wrote a book review about Malcolm Gladwell's book Blink entitled "Finison Corner – Blink – The Power of Thinking without Thinking" (PDF) he highlighted the idea that "Package design will impact the consumers’ perception of how a product will perform, and even impact the way a product tastes."

I found this description of packaging on Scrib– it is simple and not bad:

• Packaging is the science, art and technology of enclosing or protecting products for distribution, storage, sale and use.
• Packaging is a coordinated system of preparing goods for transport, warehousing, logistics, sale and use.
• Packaging helps the consumer quickly understand what the product is all about
• Packaging is a silent salesman

How have you been able to use your own expertise in the packaging field to help other companies better market their products?

I have been blessed with learnings and lessons from some of the best researchers, designers and packaging professionals in the world – starting with consumer insight and understanding. We regularly teach companies how to do research on packaging and how best to extract meaningful and relevant insights that can be translated into successful package designs.

Much consumer product research focuses on products, brands and advertising – packaging is taken for granted and can be the reason a product succeeds, or fails. Over 150,000 new products are launched globally every year, and over 80% fail in 6 months. I believe poor understanding of packaging is one of the key reasons.

How can a company protect the packaging and display of its products?

As you know, the world of packaging design patents is very crowded. However, patents (design, utility and process), trade secrets and trade dress are commonly used to protect inventions in the packaging space. Of course graphic elements are protected with copyrights and trademarks.

Note that Trade Dress is increasingly used by major national brands to defend their package size, shape, and overall design versus private label competitors attempting to copy them in the marketplace.

Why is it so important for a company to protect its Intellectual Property? How does this relate back to the packaging industry?

Packaging is similar to other industries in this regard. A significant amount of time, resources and money are expended to invent and innovate – and without IP protection, it would be simple for competitors to copy package (and packaging machinery) designs and processes. In the end, without IP protection, innovation would likely cease.

Have you filed for patents or trademarks in the past?

I only have my name on one patent (US Patent 6,641,854 PDF), but have been very involved in the process many times.

The kinds of companies we work with all value IP protection, with policies and processes, so being involved in these processes is unavoidable.

Why is it so important for a company to differentiate its product's trade dress? How does this contribute to its overall success?

As mentioned previously, the use of Trade Dress protection has increased in recent years, in particular where large national brands such as Procter & Gamble have worked to fend off copycat private label competitors.

In many cases, design elements such as shape, texture and color are clearly associated by consumers with a specific brand (ex. Coke red and their contoured can) – so these can be leveraged to protect brands through package designs. The best companies recognize these opportunities when they go to market, but Trade Dress is still largely underleveraged.

On your webpage, you asked the question "Are you fully differentiating your product's trade dress, and protecting its IP?" How does packaging differentiate trade dress of a company and how does that help in the overall profitability and marketing of the company?

My firm does a lot of work in “Experiential Packaging” recognizing that the more senses we engage, the more memorable a brand and product and the stronger the emotional connection. All consumers make purchase decisions with their emotional right brain and analytical left brain.

Shape, visual design elements, texture, aroma, taste and sound throughout the use experience are all critical – most companies focus only on graphics. Companies we work with have demonstrated sales increases and decreases when, for example, removing ridges and nubs on a bottle, intended to save cost. These elements became over time, part of the unconscious consumer experience.

As previously noted, national/global brands are under attack by companies with often inferior products, who simple develop copycat package designs and place them on the store shelf in close proximity but at discount prices. These copycat companies spend virtually no money on research and development, allowing them to charge less – an unfair advantage. So, identifying and proving trade dress protection is a valuable defense.

Sustainability is becoming a growing concern for many consumers and companies alike. How does PTIS help companies to balance both financial and sustainable goals? Have you come up with any new ideas regarding sustainability as it pertains to intellectual property law?

Sustainability is about considering unintended consequences on future generations. Responsible members of the packaging industry have always worked to minimize packaging relative to the use and distribution requirements of the product – and keeping the three Ps in balance.

 The Sustainability "three Ps":

• People (Society, Equity),
• Planet (Ecology) and
• Profit (Economics)

It makes sense to minimize/optimize packaging and it is well known that packaging has a small ecological foot print, and in fact, more packaging can reduce product waste and spoilage, and most “products” have a far more significant environmental footprint.

Regardless, packaging is visible and receives significant negative press. The attention on packaging as well as on the world’s finite resources has led to new materials development (renewable resources, made from recycled materials, more recycleable, etc), new methods of automatically identifying materials for waste separation and recycling, etc. This is a great area for IP protection and innovation.

What is your position on Open Innovation?

Another topic worth mention and discussion is “Open Innovation.” For decades, companies have realized that regardless of how many dozens, hundreds or even thousands of smart people they have – there are millions more outside their four walls.

An MIT professor I have worked with, Eric Von Hipple, studied the source of inventions and innovations, and found that in many industries, less than 50% of the successes were actually invented by the company. Instead, they were acquired or discovered and commercialized.

In 2003, Henry Chesbrough published the first of three books (so far) on what he calls “Open Innovation.” P&G says “Connect and Develop” – and there are other names.

So now, at least hundreds of companies of all sizes are creating open innovation programs and web site portals that welcome new ideas and inventions. One of the biggest hurdles our benchmarking research has identified in innovation programs has to do with IP, and lack of willingness to share ownership.

My firm PTIS specializes in helping companies to build successful innovation and Open Innovation programs and processes – often starting with development of IP strategies and policies that lead to winning programs and efforts.

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I am a Buffalo attorney who focuses on intellectual property law and I rarely get an opportunity to discuss fashion branding with other intellectual property attorneys.

However recently I needed to find a Canadian attorney to help me file a trademark assignment for one of my clients in Canada, and I enlisted the help of Ashlee Froese a branding lawyer and Trade-mark Agent at Keyser Mason Ball LLP, a law firm in the Toronto area.

As it turns out Ashlee started a new website called canadafashionlaw.com and through the miracle of modern technology we connected on twitter and LinkedIn.

When I noticed Ashlee's moniker on twitter was @BrandFashionLaw I asked her if I could interview her for a blog post and she most graciously answered all of my questions. Thank you so much Ashlee!

And here is that interview:

Can you tell me a little about your background and your law firm in Canada?

I am a lawyer called to the Ontario bar in Canada and a Canadian trade-mark agent. I am an associate at Keyser Mason Ball LLP, a medium sized full-service law firm based in Mississauga, Ontario.

I am an active committee member with the International Trademarks Association and the Intellectual Property Institute of Canada. I am also an executive member of the Toronto Intellectual Property Group. I am a regular guest lecturer at various universities and colleges in Toronto, Canada on intellectual property and branding law.

Why did you become an intellectual property attorney and in particular a fashion trademark attorney?

From the first time I watched L.A. Law, I knew I wanted to be a lawyer. However, I fell into intellectual property law. Ever eager to ensure that I would get into law school, I worked at a law firm throughout the 4 years of my undergraduate degree. It happened to specialize in anti-counterfeiting enforcement, a niche area of trade-marks law.

During law school I studied other areas of law, however, intellectual property (especially trade-marks law) always held an interest. After an internship with the United Nations, I was fortunate to join a pre-eminent Toronto-based intellectual property law boutique. This allowed me the opportunity to hone in on trade-marks law from all aspects (prosecution, litigation, licensing etc.)

Although trade-marks are important for every business, I believe that trade-mark protection is especially critical in the consumer products industry. Couple the fact that the fashion industry is a heavy weight in the consumer products industry with my passion for fashion, becoming a fashion trade-mark lawyer was a natural step for me. If you are fortunate to be find passion in your job, it ceases being “work”.

How does a fashion law trademark attorney differentiate themselves from any other trademark attorney?

The fundamentals of trade-mark law are applicable to every industry. The law is the law, irrespective of the industry. However, there are certain nuances within each industry that may change your application of the law to the business or alter ever present “business considerations” that govern clients’ decision-making. As a lawyer, understanding those nuances can be of great assistance to your client. I hope to bring these insights to the fashion industry. Such specialization is not uncommon in the intellectual property field. For example, you oftentimes come across patent lawyers that focus on the pharmaceutical industry. I believe this can be applied to the fashion industry.

How important is it for a company to develop brand recognition through trademark?

Very! I cannot overstate this enough. A trade-mark is more than just a slogan or a pretty design. It represents the quality, reputation and character of the company. Ultimately, the trade-mark symbolizes an unspoken dialogue between the consumer and the company, otherwise known as “goodwill”. The goodwill generated by the trade-mark is what keeps the consumer coming back for more. Moreover, an important function of a trade-mark is to ensure that your company’s brand is distinctive, thereby setting it apart from its competitors. Simply put, without trade-mark protection your company is merely another company selling a widget. It is an uphill climb to generate market presence without brand recognition.

Why is it necessary for companies in the fashion industry to protect their product through trademark registration?

This goes back to my previous statement that trade-mark protection is especially critical in the consumer products industry.

But trade-mark protection goes beyond logos and slogans, which can serve the fashion industry well. For example, Canada’s legal trade-mark system allows a company to protect colors, three-dimensional trade-marks, distinguishing guises, certification marks etc. If you are creative in your company’s trade-mark protection strategy, you can go above and beyond merely protecting the label.

In the fashion industry, licensing is the cash cow. At the most basic level, trade-mark protection is fundamental to ensuring that the brand remains strong. Before you can let others play in your fashion house, you have to make sure that your fashion house is secure. Dependent upon the jurisdiction, governing trade-marks legislation will mandate that further steps need be taken to ensure that, in a licensing arrangement, the trade-mark still remains distinctive of one source.

You wrote an interesting article on your website canadafashionlaw.com recently regarding the Christian Louboutin red soled shoes which gave rise to a trademark dispute. How is it that a color of shoe can be the basis of a trademark dispute? Is this also known as trade dress?

The Christian Louboutin v. Yves Saint Laurent (PDF) case is really interesting. As previously mentioned, in certain jurisdictions color can constitute a trade-mark. Take Ikea for example: there is no doubt that blue and yellow comprise part of the distinguishing and distinctive elements of its brand. The same can be said of red soles for Christian Louboutin.

Any fashionista worth her Prada will easily recognize a Christian Louboutin shoe. The red sole has inextricably become linked with Christian Louboutin. Therefore, it functions as a trade-mark.

In a recent fashion show, Yves Saint Laurent displayed a variety of shoes (i.e. purple shoes with purple soles, green shoes with green soles and, finally, red shoes with red soles). It was this last color combination that got Christian Louboutin’s attention.

Christian Louboutin was able to secure a US trademark registration for the red sole in association with, inter alia, footwear. (Trade-mark applications are still pending in Canada and Europe).

A US trade-mark registration grants exclusivity throughout the US for the trade-mark in relation to those wares/services.

It is Christian Louboutin’s belief that Yves Saint Laurent is infringing on that exclusivity. 

Yves Saint Laurent, on the other hand, will likely contest the granting of the trade-mark, on the basis that a red sole is common within the fashion industry and, therefore, cannot be exclusively proprietary to Christian Louboutin.

Can you help companies identify and protect their trademark like the red bottom of a shoe in the fashion industry or any other industry for that matter?

Absolutely. I encourage clients to look beyond their traditional view of trade-mark protection to take advantage of brand protection via distinguishing guises and color, for example. I believe that trade-mark protection functions as both a shield and a sword for the business. Fundamentally, trade-mark protection functions to create a fence around your fashion house. It stakes your territory. This is the shield aspect to trade-mark protection.

But the trade-mark also functions as a sword: the exclusive proprietary aspect to the trade-mark ensures that competitors cannot get too close to your brand. The more creative you are in protecting your brand means the greater the “brand monopoly” your company may enjoy in the marketplace.

Do you think the copyright laws should be changed to help the fashion industry? Or is the fact that knockoffs keep the industry constantly looking for better designs to keep in front of the copycats a good thing for consumers?

If the designer was secure in the fact that nobody would be able to copy a fashion design, they might not be so anxious to come up with the next best thing. Can it be argued that the common practice of copying new fashion designs in affect forces designers to come up with fresh new ideas?

This is hot topic of debate. Really this boils down to whether you believe that fashion is a function of utility or a piece of art. Whereas a pair of standard jeans may not be especially note-worthy, a one-of-a-kind haute couture evening gown is a different creature.

If you look at some countries that very clearly have a thriving, profitable and note-worthy fashion industry, you will note that those intellectual property laws specifically protect fashion articles. France, for example, has a well-established legislative history (since 1793) of protecting fashion designs through copyright legislation. It is logical that fashion industries will thrive in jurisdictions where intellectual property laws explicitly protect the fashion industry.

As technology advances, the necessity of garnering protection for fashion designs increases. There are known instances where infringers attend fashion shows, digitally record three-dimensional images of the fashion designs from the runway and instantly e-mail those images to “knock-off” manufacturing sites, all before the fashion show has ended. Often times, the high street store is able to produce and market these inspired knock-offs much quicker than the haute couture designers.

But, there is the counterargument that the haute couture clientele and the high street shopper are separate and distinct consumers that rarely intersect in the marketplace. Thus, the fashion house does not suffer from lost revenue due to fashion design piracy. In fact, its brand is promulgated to a wider market thanks to fashion design piracy. In essence, mainstreaming unique fashion designs injects a revenue stream into the fashion industry at all levels.

Furthermore, some even claim that fashion design piracy is beneficial to the creativity of the fashion industry, as your question suggested. As the unique fashion design disseminates throughout various income brackets of fashion consumers, the fashion design is “mainstreamed” and the uniqueness of the design diminishes. This creative exhaustion leads to an impetus to further creativity and so a new fashion trend is created. Under this rationale, fashion design piracy constantly pushes the creative envelope.

Ultimately, this line of reasoning negates the fundamental purpose of intellectual property law, namely to encourage development and creativity through protection of those ideas and inventions. What impetus is there to create, knowing that the creations are free for all to benefit from? But, with anything, there needs to be limits and a system of checks and balances in granting certain companies a monopoly through intellectual property protection.

Is there anything else you'd like to add that is currently a hot topic in the fashion trademark industry?

ICANN’s eventual roll-out of new gTLD domain names is causing quite a stir in the trade-marks industry, which may impact any business that has an online presence (which is basically everyone).

I will be addressing this topic and other emerging hot topics on canadafashionlaw.com or on my twitter account @brandfashionlaw. Feel free to follow me there.

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The 2011 National Trademark Expo will be held at the United States Patent and Trademark Office (USPTO) headquarters in Alexandria, Virginia on Friday, October 14th, and Saturday, October 15th.

The free two-day event is intended to educate the public about the importance of trademarks in the global marketplace.

Exhibitors are invited to showcase their trademarks through educational exhibits. Over 10,000 visitors of all ages attended last year’s 2010 National Trademark Expo.

Highlights of the 2011 National Trademark Expo will include:

• “Unusual Trademarks”
• “Evolution of Marks”
• Educational workshops for adults and children
• Exhibits featuring authentic and counterfeit goods
• Costumed characters.

Space is limited, so owners of federally-registered trademarks who wish to participate in the 2011 National Trademark Expo must submit an application.

Applications will be reviewed by the National Inventors’ Hall of Fame on a rolling basis. Applicants will be evaluated on the following criteria:

1. Brand recognition
2. Educational value of the proposed exhibit to enhance the public’s understanding of trademarks
3. Category diversity to ensure the Expo has a variety of trademarks represented

Any owner of a United States trademark registration may apply to exhibit. The deadline for applications is June 15, 2011.

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When starting a new business one of the first things that needs to be done is to create a brand. Branding establishes the first impression that your target audience has of your business. Existing businesses sometimes need to re-create their brand.

I once asked an attorney "why does the public perceive you as the best personal injury attorney?" And he simply replied “because we told them in our advertisements.”

So if you're starting a new business or you own an existing business and your look is getting old and you need to upgrade or simply change and you need a fresh set of eyes to look at the situation where do you go?

I found Reagan Burns the owner and creative director at Lime Creative. Reagan and I had a nice conversation and she answered a few questions for me regarding marketing and branding issues.

What are some things a new business should be aware of regarding branding?

So when you're starting a new business you need to create advertising material, packaging, and trade dress of your actual place of business that says "this is who we are."

• Branding
• Advertising
• Marketing

Branding equals "look and feel of the company." The logo operates to allow consumers to identify with the company. We help determine what the company needs such as a logo, slogan or tagline.

How do you come up with new ideas without stepping on other people's legal rights?

When coming up with new ideas we have to be aware of trademark issues and copyright issues. This is where it's important to find a trademark attorney to perform a trademark search and file an application for trademark or copyright registration. Our company will pass clients onto patent and trademark attorneys to determine whether or not a federal trademark has previously been registered.

How do you come up with new ideas?

Our job is to determine what theme you're looking for. For example, a modern versus traditional look in which the target audience can relate. What is the look and feel of the company? How do you present yourself to the world?  Who do you want to become?

You can worry about efficiency while we worry about branding. In fact, not only do we love branding, but we also love worrying about advertising, and marketing, and designing, and inventing creative ways to add a little pizzazz and flavor to your business.

What do you do as far as following up with your branding plan?

Once we come up with a marketing plan it's important to implement it with consistency. Advertising should be memorable and uniformly consistent. Things like color codes and JPEG pixelation's should be consistent throughout the branding. Everything should have a unified feeling and the marketing plan should repeat the trademark over and over.

What rights does the branding company maintain?

Our client maintains all rights to use their logos as they see fit, whereas we maintain portfolio rights in all our work. Portfolio rights allow our company to maintain examples of our work to promote our business.

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Recently I wrote a blog post regarding the alleged infringement of the trademark IHOP. Now the national drugstore chain Walgreens believes that the Wegmans logo looks too much like the Walgreens registered trademark (.PDF).

So they have opposed Wegmans new trademark registration application (.PDF) and filed a federal lawsuit claiming infringement. 

Take a look at the two trademarks. Do you think they are confusingly similar? Would you think that one company has anything to do with the other simply based on the font of the mark or "trade dress"?

What about just the W? Why does it look like the Washington Nationals logo? Check out the W on the cap and compare that to the Walgreens  registered trademark (.PDF) for the letter W.

Walgreens filed a trademark infringement lawsuit (complaint .PDF) at a federal court in Virginia against Wegmans, a western New York based supermarket chain, claiming unfair competition/ false designation of origin in connection with Walgreens’ U.S. Trademark Registration; trade dress infringement; dilution of Plaintiffs distinctive marks and unfair competition under the common law.

On the same day Walgreens filed in the United States Patent and Trademark Office before the Trademark Trial And Appeal Board a "Notice of Opposition (.PDF)" to the registration of the Wegmans trademark Application Serial No.85/037,348 for the mark WEGMANS.

Because both companies use a similar script in their logos, Walgreen Co. says in the complaint that the marks are confusingly similar and consumers could be misled into thinking the companies are connected.

I thought you just might find this information interesting, the complaint also alleges that both parties used the same Toronto design company, Watt International Inc. See paragraphs 15 and 20 in the complaint (.PDF).

It must be pretty uncomfortable between the Toronto design company and the law suit parties right about now. I wonder if they're using that design firm anymore? And if it is true why isn't the Toronto design company part of the lawsuit?

Wegmans spokeswoman Jeanne Colleluori told the Democrat and Chronicle of Rochester that the company also didn't think there was any possibility consumers could be confused.

While Walgreens says its "flying W" deserves trademark protection because it has been in use since 1951. But Rochester-based Wegmans said the scripted "W" it adopted in 2008 is actually a copy of logos used by the supermarket in the 1930s.

You might be wondering what happens when an opposition and a lawsuit are pending at the same time? I spoke to Buffalo trademark attorney Anne Downey of the law firm Downey and Downey and she conjectured that most likely the opposition would be suspended until the civil lawsuit was settled. And she cited the TTAB Manual Of Procedure (TBMP) [.PDF] section 510.02,

Suspension Pending Outcome of Another Proceeding "...To the extent that a civil action in a Federal district court involves issues in common with those in a proceeding before the Board, the decision of the Federal district court is often binding upon the Board, while the decision of the Board is not binding upon the court."

It's not uncommon to file an opposition before the Board rather than filing a lawsuit because the parties can resolve their issues in a less costly manner than a federal lawsuit. David Robinson of the Buffalo News reported that Wegmans spokeswoman Jeanne Colleluori said,"We were surprised to learn of this lawsuit, since Walgreens did not contact us with any concerns prior to filing it."

Any entity that thinks it will be harmed by registration of the mark has thirty days from the day the mark is published in the Trademark Official Gazette to file an opposition. The opposition may be filed with the Board and a complaint, including a request that the mark not be registered, may also be filed with a U.S. District Court, especially if issues other than registrability such as infringement are alleged.

Elements for the Opposition

Any person who believes that he or she would be damaged by the registration of a mark on the Principal Register may oppose registration by filing a notice of opposition with the Board, and paying the required fee, within thirty days after the date of publication. 15 U.S.C. §1063

An opposition proceeding is similar to a court proceeding in many respects except that:

• the Opposition is filed with the administrative tribunal of the USPTO: Trademark Trial And Appeal Board;
• the Opposition is less expensive;
• the Opposition is based on a written record; and
• jurisdiction is limited to the issue of registrability (no damages). 

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Today is Christopher Columbus Day and if you remember he invented America. No that's not right... he discovered America. Of course he thought he landed in India and we've been mistakenly calling Native Americans Indians ever since and today we celebrate his mistake.

It used to be you would plant a flag into the ground and stake a claim to that land for your country or your family. Today if you invent something you file a patent application and put everyone on notice that this is my intellectual property.

This past weekend I saw the movie  "The Social Network," which is about how Facebook was invented and how  they fought over who owned the company and the intellectual property rights for the Facebook "idea." The movie is set as a series of flashbacks of what the witnesses testify about in a pretrial discovery deposition. What is at stake? The multi-billion dollar pie that is Facebook.

The movie "The Social Network" revolves around two lawsuits. One brought by Cameron and Tyler Winklevoss, twins at Harvard who claim they had hired Mark Zuckerberg to build for them a Facebook type website. Instead Zuckerberg took the idea and created  Facebook. They settled for $65 million.

And a lawsuit brought by Eduardo Saverin, Facebook’s initial CFO and investor, who was "tricked" out of his 30% share of the company by Silicon Valley venture capitalists when Facebook was reorganized.

Mark Zuckerberg the founder and creator of Facebook is listed by Forbes as one of the world's 212 billionaires, he is listed as number 35.

The Harvard dropout's fortune surged $4.9 billion over the last year as private equity deals place Facebook's value at around $23 billion. (Illiquid private shares in secondary markets point to an even richer valuation.) Facebook has more than 500 million members.

This movie is so attractive to viewers because it is everyone's dream is to be the next billionaire. "The Social Network" is the no.1 movie at the box office this week. When clients ask me whether or not a patent will stop anybody from copying their idea, I answer "most likely when you start making money somebody will copy it. But that is a good thing because it means you're making money."

Ezra Klein a Washington Post Staff Writer delves into the deeper issue of  "how do we protect and promote innovation?" in the article entitled "A story bigger than Facebook."

The movie recasts a story of inevitable technological change as the saga of a socially inept genius, two or three of his most important relationships and the social pressures of Harvard University. That makes for a better film, of course. But it misses the richer drama behind transformative innovations like Facebook, and it's part and parcel of the way we misunderstand, and thus impede, innovation.

Robert Soave reporter for the Daily Caller penned an article entitled "The Social Network’ and the case against intellectual property rights" where he queries if Tyler and Cameron Winklevoss had any evidence showing that Facebook founder Mark Zuckerberg stole ideas like “profile pages” when they met in college.

Soave wonders "what if" the twin brothers were able to serve and enforce a "cease and desist" order through a United States court early in the process and stopped Zuckerberg from going forward with Facebook? Would it have been fair to stifle Zuckerbergs' innovation and eliminate the muti-billion dollar Facebook before it ever started to get rolling?

Simply put, Tyler and Cameron Winklevoss can’t claim ownership over what they accuse Zuckerberg of stealing. Ideas — in this case, an online student network — bear none of the qualities of property. They are abstract and intangible. They don’t exist in any physical sense. If another thinker has the same idea, the original thinker is not suddenly deprived of access to the idea; it simply multiplies.

I recently posted that ideas alone are not protectable, the thing, not the idea, is what generates IP rights. But what about protecting the idea by contract? A contract that says "we're going to work together on a project and you will not take the idea and compete against me." So why couldn't Tyler and Cameron Winklevoss claim "Breach of Contract?"

Often times these contracts are called a non-competition or a non-compete contract or agreement. This is the case when a company hires somebody to start a new project and a contract is signed that enunciates that the intellectual property is owned by the company and if the employee leaves the employee will not be able to use that information to compete with the company.

It used to be that a social contract based upon a handshake was all you needed to be protected. 

Recently the US Supreme Court handed down the decision in the Bilski case that ruled that "abstract ideas" were not patentable subject matter.

Is Facebook an abstract idea? Is there a machine or transformation of matter that would allow Facebook to pass the Bilski test? If I was to start a Facebook page that was identical to Facebook right now and call it FacePad would I be able to get away with using ideas such as "a wall" and a "profile" page etc.? Just checked, too late... they are using Facepad already.

Facebook has been working on getting their own patents and purchasing patent rights from others to protect their ideas. Certainly their name Facebook (.PDF) is a registered trademark, try to use something close like the word BOOK. It is very interesting to see how intellectual property has evolved through the virtual world of the Internet. Is Facebook an abstract idea?

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The International House of Pancakes has a filed (.PDF) a trademark lawsuit in U.S. District Court in Los Angeles against a Kansas City, Missouri based religious group that calls itself the International House of Prayer over the acronym "IHOP."

The pancake house is going after the church group for trademark dilution and trademark infringement. If you just clicked my link over the word acronym you would've found out they aren't the only one using IHOP.

While the two houses have practically nothing in common -- it's a stretch to say that the House of Prayer's use of this mark has confused anyone that is looking for a place to eat breakfast, there is no question that they share the same initials and similar web address IHOP.com (Pancakes) and IHOP.org (Prayer).

The first cause of action is for infringement based on likelihood of confusion (15 U.S.C. § 1114(1)). Depending how the court weighs the below listed factors will determine whether or not this is a good cause of action.

"Likelihood of confusion" is usually the defining test in deciding whether a claim for trademark infringement is valid.  The question to be answered to determine if there is a likelihood of confusion is

whether a "reasonably prudent consumer in the marketplace is likely to be confused as to the origin of the goods or services bearing one of the marks." Dreamworks Prod. Group v. SKG Studio, 142 F.3d 1127, 1129 (9th Cir. 1998).

There are eight factors courts may consider in determining whether a likelihood of confusion exists between the goods or services. This is known as the Sleekcraft test, (AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-349 (9th Cir. 1979):

1. Strength of the mark;
2. Proximity or relatedness of the goods;
3. Similarity of the marks (especially in sight, sound and meaning);
4. Evidence of actual confusion;
5. Marketing channels;
6. Type of goods and purchaser care (meaning how much care does a purchaser take before buying the product);
7. Intent when choosing the mark; and
8. Likelihood of expansion of the product lines.

Without going through each factor I don't think anybody's really confused between a House of Prayer and a House of Pancakes!

There is no similarity of goods and nobody is confused that either one of these companies have anything to do with each other. Although it is unnecessary to show actual confusion to establish likelihood of confusion.

There is no reason why two diverse companies can't share the same trademark.  I often say to clients when searching for the availability of a trademark they wish to register: why do you think they have Domino Sugar and Domino's Pizza? What about Ford Motor Co. and Ford gumballs?

I just performed a quick search on the USPTO trademark search page for the trademark FORD and found 1063 marks using the letters "FORD."  I would think IHOP would have a better case against the THE ORIGINAL PANCAKE HOUSE® for a confusingly similar mark.

I think their cause of action for dilution has a much better chance of success. The Federal Trademark Dilution Act of 1995 expanded the scope of rights granted to famous and distinctive trademarks under the Lanham Act. Dilution differs from normal trademark infringement in that there is no need to prove a likelihood of confusion to protect a mark. Instead, all that is required is that use of a "famous" mark by a third party causes the dilution of the "distinctive quality" of the mark.

The first International House of Pancakes restaurant opened in Toluca Lake, California in 1958, and in 1960 the company began to expand through franchising. In 1973 a marketing program formally introduced the acronym “IHOP.”

International House of Pancakes' claims the international House of Prayer selected and adopted the International House of Prayer name, knowing it would be abbreviated IHOP and they intended to misappropriate the fame and notoriety of the household name IHOP to help promote and make recognizable their religious organization.

The International House of Prayers' use of IHOP began long after the International House of Pancakes’s IHOP mark became famous. The religious group, which promotes its belief in daily, continuous prayer, has drawn thousands of people to Kansas City since it opened 10 years ago.

International House of Pancakes alleges in it's law suit:

IHOP mark is distinctive and famous within the meaning of 15 U.S.C. § 1125(c)(1). International House of Prayer acts are likely to cause dilution by blurring International House of Pancakes famous IHOP mark and otherwise have impaired the distinctiveness of this trademark. International House of Prayer willfully intended to trade on the reputation of International House of Pancakes famous IHOP mark and to cause dilution of International House of Pancakes famous IHOP mark.

It seems like dilution is their best argument. I just wonder why it took 10 years for them to file suit. There is another equitable principle in law called "laches" where if you don't enforce your rights in a timely manner it can result in any claim's being barred.  Don't you think if someone uses a trademark for 10 years it would be unfair to make them stop using their name?

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The United States Patent and Trademark Office (USPTO) is hosting the 2010 National Trademark Expo.

The deadline for trademark owners to apply for exhibit space at the Trademark Expo has been extended to August 16. Now is your chance to showcase the vital role trademarks have played in your business.

The National Trademark Expo focuses on educating the public about the important role trademarks play in our society and the global marketplace, and highlights advances in the electronic filing and processing of applications for federal trademark registration at the USPTO.

The purpose of the National Trademark Expo is:

• to illustrate the value of protecting brand names and other trademarks in the increasingly competitive global marketplace;
• to showcase the breadth of marks used by one source;
• to educate consumers on the variety of types of trademarks used in the marketplace;
• to engage the public’s interest in branding;and
• to educate the public about considerations factored into mark selection and brand development.

The Expo will include themed displays, exhibitors’ booths, costumed characters and much more. Exhibit themes may include, but are not limited to, celebrity trademarks, trademarks identifying products often subject to counterfeit, unusual trademarks (sound, scent, color, configurations, motion marks, etc.), certification trademarks, trademarks commonly misused as a generic term, the breadth of different types of trademarks used by one source, the evolution of certain trademarks, people behind the names of trademarks, 100-year-old trademarks, and interesting stories about trademarks and their creation.

Any owner of a United States trademark registration may apply to exhibit. Apply now to Exhibit.

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Congratulations to Spain for winning the World Cup in soccer. But the big money winner is the Fédération Internationale de Football Association (FIFA) for the marketing of the event. The Hollywood Reporter said that 700 million people worldwide watched the World Cup 2010 yesterday.

About 24 million Americans watched Spain win the World Cup over the Netherlands, while 106.5 million viewers in the US  watched the New Orleans Saints' 31-17 upset of the Indianapolis Colts on Superbowl Sunday on CBS.

So I got to wondering about how the trademark for the World Cup was being used, registered and protected around the world. I found a blog called the Worldcupblog.org which reported that FIFA owned a slew of trademark registrations/applications for many different trademarks all over the world. I searched the USPTO webpage and found that there were 150 trademark registrations/applications owned by the organization known as FIFA.

I also found that back in 2006 the World Cup Blog had their wrist slapped by the attorneys of FIFA for what they considered inappropriate use of the trademarks. Although the blog didn't agree with FIFA that their use was inappropriate, in fact the blog considered the use to be a promotion of the event. See how they comically recite why they took down the trademark as requested,

"We have complied with FIFA’s request but not because we agree in the least with their draconian rules. We are just nice people and the only lawyer we could afford to hire to represent us in this dispute was our brother-in-law whose entire legal education comes from watching Perry Mason, LA Law and Law and Order."

Google posted an innocuous drawing on their famous search engine search page. You can see they clearly tried not to infringe on any FIFA trademark. But do you think that the FIFA organization profited by the exposure on Google yesterday?

There have been many examples of overzealous attorneys sending cease and desist letters, the funniest one was the "other white meat" April fools ad for unicorn meat by Thinkgeek.com. In the Unicorn case there was a 12 page letter telling Think Geek Inc. how the National Pork Board was injured by the sale of unicorn meat.

So what does trademark registration protect? Non-commercial use of another's trademark is not actionable as dilution. What is fair use? A trademark can be used when the use does not suggest sponsorship or association with the trademark owner's product or services and therefore is not being used in a manner to confuse the reader.

Use of another's trademark is not considered to be infringement if it falls under one of the following categories of permissible use:

1. Fair Use - this is most commonly seen in comparative advertising; i.e. "In a blind taste test, our cola ranked higher among consumers than Coca-Cola or Pepsi."
2. First Sale Doctrine - Protects resellers/repackagers - this is illustrated by auction websites like Ebay. Resellers frequently list items using another's trademark without authorization, i.e. selling genuine Windows software without being an authorized distributor/retailer.
3. Use in parody or speech - does anybody remember Weird Al Yankovic? 

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How does a trademark benefit your company? Every one knows the value of a name. I wonder what the value of the Nike name and swoosh design is versus all the inventory and assets the company owns. I would guess the name has more value.

But what are the benefits of registering the trademark? Here is a list of benefits of owning a  Federally registered trademark in the United States:

1. Registration is proof of validity;
2. Proof of registrant's ownership of the trademark;
3. Exclusive right to use the trademark in commerce;
4. "Incontestability" after five (5) years registration (stops attacks based on prior use or descriptiveness of the trademark);
5. Constructive notice nationwide of the trademark owner's claim;
6. Nationwide rights in the trademark (trademark rights can be obtained by registering it in an individual state);
7. Right to bring suit in federal court regardless of jurisdictional diversity;
8. Registration rights under the Paris Convention can be used as a basis for obtaining registration in foreign countries;
9. Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods; and
10. Allows you to use the trademark R with a circle around it symbol. ®

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What Inventors Need to Know...

Tom Demitry is an entrepreneur, an inventor, a salesman, a marketer, a man of ideas and as he will tell you first and foremost a father and a man of God. He is constantly coming up with new ideas and new ways to reinvent himself. His passion and enthusiasm are endless.

I met Tom about 10 years ago when I first became a patent attorney and he was looking for someone to help him file a patent application and get a patent for his invention, the PaintMat (PDF). Little did he know that he was my first client! It was the beginning of a long term working relationship and friendship.

Although that product never really became a financial success, Tom took the PaintMat idea across the country selling the product he had patented, manufactured and marketed and learned a lot of lessons in the process.

Since then he started a new endeavor selling baseball caps and various styles of hats with a Christian theme and marketing the hats under the registered trademark (.PDF) SpiritDomes®. This time it seems that Tom is on his way.

I thought a blog post about him might give inspiration and guidance to other inventors and entrepreneurs who are starting out. Here are a couple questions and answers from our interview:

How did you establish a national brand and hat line in this difficult economic climate?

I have 30 years experience in the head-wear business and I received my vision in church on one fateful Sunday. I was thinking of ways I could spread the word of God and had an awesome idea that was very unique in the industry. 

The idea is to imprint a quote from scripture on the under-visor of my product and design the artwork for a hat around the particular quote from the bible; a "SpiritDome".

No one in the world was doing this so I wanted to establish my own unique niche. Being different than everyone else is what helped the brand really take off. The key is to be different and it is what our target consumer, the youth of today want to be- unique and different!

What have you done to protect your idea?

I thought the best way to protect my brand was by filing for a registered trademark. I filed a trademark application with the United States Patent and Trademark Office (USPTO) through KlossLaw and SpiritDomes was a registered trademark within one year of filing. I believe a registered trademark is the best protection available because no one can ever use it in business. It's also versatile in that I can create product line extensions with the brand and the new products would carry the same protection.

What else do you do to build brand recognition?

I've always felt that if a brand was started at the grassroots level and done consistently over a long period of time, that would be the greatest protection of all. Next, all consistent marketing done to promote building the brand such as signage, promo cards, websites, Twitter, facebook, Linkedin, labels, etc. helps to shape the brand properly as well. What's great about the times we live in is that network marketing to get the word out is affordable and effective. The internet is amazing!

Another thing we're doing is partnering with producers, directors, musicians, speakers, etc. to spread the word about our brand.  The value of word of mouth really adds up. We also label our products with SpiritDomes.com to promote our website so that the public knows of and has a direct link to us. The web page is the easiest way to learn more about what we do.

What is the value of Trademark and brand recognition?

Building a profitable company is what we all try to do. The company builds equity in assets like inventory, real property and cash which have a value or net worth. The beautiful thing about brand building is that the brand name itself has what you call Brand Equity. The brand and goodwill in the company itself has value that can be sold for profit depending how famous it becomes.  Just like real-estate appreciates in value when people recognize the great location, the brand gains in value as more people know and recognize the name and associate it with a company that provides a quality product.

"A patent is limited by time but a trademark can last forever if the brand is built consistently and properly over time."

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How do you protect your intellectual property? What is intellectual property? Is a special sandwich that you make better than anybody else intellectual property? Imagine you are the owner of a new restaurant who has created a new edible masterpiece. And subsequently, to your surprise, you discover that a copycat sandwich is being made across the street, without your permission.What do you do? What are your remedies?

In a new television commercial, Burger King's mascot breaks into the headquarters of McDonald's and steals the recipe to the Egg McMuffin.

I don't think they can register the work with the U.S. Copyright Office and obtain a certificate of copyright. Can they file an application for patent registration of the sandwich structure?

Remember for something to be patentable subject matter it must be a new, useful and a non-obvious improvement over something that's already out there. You don't see too many patents on food recipes and sandwiches. Maybe a design patent (.PDF), but I doubt that will give them much protection.

It may be argued that the business conduct of Burger King in this instance is actionable under federal unfair competition provision of the Lanham Act. While the Lanham Act, in general, focuses primarily on obtaining, maintaining, and enforcing trademark and service mark rights, Section 43(a), allows for suits for false designation of origin. But I don't think there is a false designation, Burger King comes right out and says we're making our own version of this old sandwich.

And it's not a copy of a trade secret (like the McDonald's special sauce) so I don't think there's any grounds for McDonald's to bring a suit. There is probably not much McDonald's can do to stop Burger King from making their version of the egg McMuffin.

What is protectable is the brand name or the trademark. What Burger King is tacitly saying in this clever breakfast commercial is that, McDonald's doesn't own the rights to eggs, sausage, cheese or English muffins. McDonald's owns the trademark "Egg McMuffin(.PDF)."

John DeVore, recently wrote a Special article to CNN entitled "Big burger boys burgle breakfast." about the commercial showing how Burger King's new BK Breakfast Muffin Sandwich's is just a copy of the classic Sausage McMuffin.

But are McDonald's executives upset with this campaign? Have lawyers been rallied and accusatory calls been made?"We haven't received any direct feedback from competitors," said Brian Gries, Burger King's vice president of marketing impact. Gries further defends his company's choice to be up-front about the similarities between the BK Breakfast Muffin and the McMuffin, saying, "We are not above taking a product that we know customers like and delivering it to our guests at a great price."

I love the guile of Burger King making a full admission in the commercial that they are copying this sandwich. I would love to see the internal memos from the lawyers arguing about whether or not they should allow this commercial to air. It is not like McDonald's has not been involved in a number of lawsuits involving trademark issues in the course of its history. But I think if McDonald's brings a lawsuit in this instance it would fuel of a lot of bad press and they would have little chance of success.

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The Inventor's Bible by Ronald L. Docie Sr.

LoTempio Law Blog Book Review

About the book

The Inventor's Biible by Ronald L. Docie Sr., includes a workbook to help an inventor take an idea from conception to the distribution of a product. The book touches on marketing, licensing, and selling an invention. The book reviews the invention process, including:

• Patenting
• Selecting a manufacturer
• Finding the right market
• Developing a marketing plan
• Presenting a product to a company
• Negotiating a royalty deal

My review of the book

This book provides a good explanation of the invention process. The real life stories teach inventors of the potential pitfalls commonly encountered by new inventors. It maps out an inventors voyage through invention, development of the product, to protection and marketing. I think The Inventors Bible is a good book for independent inventors. The book is well written, very readable and covers a lot of useful topics. The Inventor’s Bible is an excellent collection of practical information from an inventors prospective, based on the author’s business experience. Even though the book is not presented from a legal viewpoint it is helpful because it looks at inventing, patenting and product development from a business angle.

About the Author

Ronald L. Docie Sr’s career in selling inventions spans more than three decades. His inventions are featured in Wal-Mart, Kmart and thousands of other distribution channels. As an agent for inventors, Docie has negotiated license deals with many companies including General Motors, and he’s a consultant to Johnson & Johnson on idea submission. He is the president of Docie Development, LLC, an international company that provides services for inventors and corporations.

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What inventors need to know...

“Does the product infringe on a patent?” and “Should a patent application be filed?” are questions a product developer would want answered before going forward with manufacturing, marketing and distributing a product. But what makes a product a long term profit generator?

"Imagination is the beginning of creation. You imagine what you desire, you will what you imagine and at last you create what you will." George Bernard Shaw

There are many factors an inventor needs to take into consideration in order to create a profit generating product from from an idea. I asked Richard P. Conway, new product developer/ inventor and founder of Ingenious Products Inc. to help me put together a list of keys which contribute to a products' long term sales success. Here's the list we came up with:

1. The product solves a real and obvious national consumer need; a convenience product  which creates an easier, faster, less expensive way to deal with an old problem.
2. It’s new and buyers understand they can't get it anyplace else.
3. It communicates instantly its use and benefits to the end buyer on the shelf. Obvious perceived value at the point of purchase.
4. It provides a wide market solution for the national customer (broad market, i.e. something everyone uses like a toothbrush. Not a narrow market product like a tuning fork).
5. It is clearly identifiable to the buyer and Branded with a trademark  (set to enter the market with a unique name i.e. balance buddy).
6. Eye catching packaging (looks cool). Attractive packaging can drive shelf sales and enhance or boost buying interest.
7. It can be sold in multi-generations: i.e  offer new improved generations to keep it fresh on the shelf for the retailer and end buyer.
8. It is recyclable or biodegradable to match the "going green" initiatives set by retailers for packaging and product materials.
9. It is priced right for impulse purchases by the end consumer.
10. Product manufacturing costs are low enough to have a sufficient price mark up margin (i.e. 5x cost) to allow the manufacturer, wholesaler and retailer to make money.  Factors in lowering the cost of manufacturing:     

                   a) Low freight cost: not an odd shape; relatively small and light weight
                   b) Packaging: can be packed on pallets for regular store order fulfillment in 4 to 6 units
                   c) Easy to make: i.e. not labor intensive, small number of parts, made from a mold

Probability of success increases with with each additional factor. If your product doesn't meet all these standards hopefully its strong points will carry the day. Can you think of any other relevant keys to success? Comments are welcome.

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