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

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 ® 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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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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