NameWire on use of the Mandela name for branding purposes.

Much has already been written about “in-game” use of trademarks.
This article, part 1 of 3, is a good primer on the subject.

From the New York Times: “Searches on the U.S. Patent and Trademark Office database run throughout Monday failed to find either “Windows Azure” or “Azure Services Platform” as registered trademarks. Microsoft used both names to describe its Software and Services technology.”

I’m not even sure where to start with this article. Instead of dissecting the entire piece, all I will say for now is that Microsoft has successfully used Paris Convention priority many times. Its strategy in some cases has been to file trademark applications in countries which do not have an easily accessible trademark databases, such as Germany. Microsoft will then go about registering domain names and also filing trademark applications in other countries within 6-months of the original filing, thereby claiming a priority date of the original filing. It allows the company to operate in stealth mode while at the same time securing priority.

UPDATE: Sure enough, at least one US application is based on a foreign filing in South Africa.

File under “What the hell were they thinking.”

The LA Times is reporting federal prosecutors in California may attempt to seize control of the trademarks of the notorious Mongols motorcycle gang.

But the most lasting blow to the San Gabriel Valley-based bikers may be down the road: In an unusual maneuver, the feds are also seeking to seize control of the Mongols’ trademarked name, which is typically accompanied by its cherished insignia — a ponytailed Genghis Khan-like figure riding a chopper.

U.S. Attorney Thomas P. O’Brien said if his plan is successful, the government would take over ownership of the trademark, and anyone caught wearing a Mongols patch could have it seized by law enforcement on the spot.

“Not only are we going after the Mongols’ motorcycles, we’re going after their very identity,” O’Brien said in a telephone interview early this morning. “We are using all the tools at our disposal to crush this violent gang.”

MONGOLS trademark registration, owned by Shotgun Productions, LLC.

I have no idea if this would be a successful strategy in helping to fight crime, but it sure is creative.

A great quote:
“If you’re a brand you eat, drink, smoke or wash yourself with, you’re going to be OK[.]”

In the same article, Gary Stibel, CEO of New England Consulting Group, says that private label’s are “positioned to move and grow[.]” This doesn’t always go over so well with name brands.

The Boston Herald is reporting that the Back Bay Restaurant Group is suing a North Shore pizza restaurant for trademark infringement, claiming its logo is confusingly similar to that of the Boston company’s Joe’s American Bar & Grill chain. The article shows the two logos side by side.

Some see turmoil, while bottomfeeders others see opportunity. Although domain name issues are always front and center for those of us that handle intellectual property matters on a daily basis, it is completely understandable that domains are not at the top of the list of concerns for these banks. (via The Licensing Plate)

Reminds me of a song…

Movie star Brad Pitt has shoved Paris Hilton off the top of a list neither will have coveted being on. A fan entering Pitt’s name in a search engine now has a startling one in five chance of finding a malware-hosting site instead, says McAfee.

As more trademark owners use the Madrid Protocol to extend their rights into foreign territories, the Protocol’s advantages and shortcomings are coming to light. One potential pitfall of particular note for owners of registered extensions of protection to the United States is beginning to take form on the horizon.

The United States imposes strict use requirements in connection with the maintenance and renewal of trademark registrations. These requirements differ greatly between registrations resulting from applications under §1 and §44 of the Trademark Act, and those resulting from Extensions of Protection under the Madrid Protocol (§66A).

Trademark practitioners are well aware of the requirements for filing Section 8 affidavits. Generally, the owner of a U.S. trademark registration must file a affidavit or declaration of continued use or excusable nonuse (Section 8 affidavit), on or after the fifth anniversary and no later than the sixth anniversary of the date of registration, and within the year before the end of every ten-year period after the date of registration. The registrant may also file the Section 8 affidavit within a grace period of six months after the expiration of the deadline, provided a surcharge is paid.

However, the above requirements do not apply to registered extensions of protection issued by the United States Patent and Trademark Office (“USPTO”) pursuant to the Madrid Protocol. The requirements for such registered extensions are very different than the requirements for registrations under §1 and §44, and merit close attention.

Under §71 of the Trademark Act, a registered extension of protection to the United States will be cancelled, unless the holder of the international registration periodically files affidavits of use in commerce or excusable nonuse (”§71 affidavits”) with the USPTO. 37 C.F.R. §7.37 sets forth the requirements for a §71 affidavit. These affidavits must be filed:

(1) Between the fifth and sixth year after the date on which the USPTO issues the certificate of extension of protection; and

(2) Within the six-month period preceding the end of every ten-year period after the date on which the USPTO issues the certificate of extension of protection, or within a three-month grace period with an additional surcharge.

Section 71 provides a three-month grace period for filing the ten-year §71 affidavit with an additional surcharge, but there is no grace period for filing the six-year §71 affidavit.

Unlike §8(c)(2) of the Trademark Act, §71 does not provide for correction of deficiencies after expiration of the statutory filing period.

Section 71 affidavits cannot be filed until five years after the USPTO registers an extension of protection. Consequently, the USPTO will not accept these affidavits until after November 2, 2008, due to the timing of the adoption of the Protocol by the United States.

Normally, trademark owners or practitioners can reliably turn to the Trademark Manual of Examining Procedure (TMEP) for guidance with respect to maintenance and renewal requirements. But a close look at Section 1613 of the TMEP reveals a significant inconsistency.

TMEP 1613(2) states that the ten-year §71 affidavit is due “[w]ithin the six-month period preceding the end of every ten-year period after the date on which the USPTO issues the certificate of extension of protection, or within a 3-month grace period with an additional surcharge.”

The next sentence reads: “Section 71 provides a six-month grace period for filing the ten-year §71 affidavit with an additional surcharge. There is no grace period for filing the six-year §71 affidavit. Unlike §8(c)(2) of the Trademark Act, §71 does not provide for correction of deficiencies after expiration of the statutory filing period. The requirements for a §71 affidavit are set forth in 37 C.F.R. §7.37.” [Emphasis added]

This is incorrect. The grace period for the ten-year §71 affidavit is three months, not six.

Holders of extensions of protection need to be vigilant with respect to §71 requirements. Our firm is aware of a number of trademark law practice guides that either have incorrect information regarding §71 or simply do not mention §71 at all. Even the International Trademark Association’s own Practitioner’s Guide to the Madrid Protocol and Madrid Agreement errs by omission. The Guide contains no reference to the six-year §71 filing requirement. Moreover, we are aware that some trademark docketing software packages do not generate the correct deadlines for §71 filings.

What’s a holder of an extension of protection to do? Well…

· Be vigilant! Holders of extensions of protection in the U.S. under the Madrid Protocol are not only required to renew their International Registrations with the International Bureau, but they must also file §71 affidavits with the USPTO at specified times.

· File the six-year §71 affidavit between the fifth and sixth year after the extension of protection issued (Remember: No grace period!).

· File the ten-year §71 affidavit in the window of time beginning six-months preceding the end of every ten-year period after the date of issuance of the extension of protection, or within the three-month grace period.

· Renew the International Registration with the International Bureau

· And please don’t forget to actually use the mark in the United States.

Great thanks to William J. Morris III for first pointing out the pitfalls of §71 and encouraging the writing of this post.

UPDATE: Trademark prosecution guru, John Welch, has pointed out that although the USPTO will not accept §71 affidavits until after November 2, 2008, the first Section 66 extension of protection in the US was issued on Feb 1, 2005, and so the earliest date that a filing of a six-year §71 affidavit can occur is February 1, 2010. This does not diminish the importance of paying very close attention to these deadlines.

Last month, a federal judge ruled that fashion designer Joseph Abboud could no longer use his own name to promote his wares, thanks to a provision in the contract he entered into when he sold the company to JA Apparel Corp. (for $65+ million, mind you). Readers of our former blog, Legal Fixation, may recall that this has happened before to yet another iconic name in the world of fashion, Paul Frank. Vanity Fair has the details of that sad story. Yet another cautionary tale for those who would consider using their name as a trademark.

Nice article in BusinessWeek on the process of selecting a name for your business venture, including conducting a search for existing trademarks that might pose a problem for your branding efforts. A choice excerpt:

The game isn’t over when you find a name you like. You have to make sure you have the right to call it your own. To avoid potentially costly missteps, hire an intellectual-property lawyer. Expect to pay your attorney up to $10,000 for all the searches and filings. That might seem like a lot, but according to Ilene Tannen, partner at New York law firm Jones Day, the costs of disputing a lawsuit for trademark infringement, along with lost goodwill, advertising, and packaging costs if you have to change your name, can run to tens of thousands of dollars.

After narrowing the field to half a dozen names, see whether any have been trademarked. Start with the Patent & Trademark Office database, which lists all names filed with the federal government for the purpose of doing business. The owner of a name registered with the PTO trumps anyone who comes afterward, as a federal trademark holds throughout the country. You can search this database yourself at no cost, but an intellectual-property lawyer can do a better job. Inexperienced searchers, for example, won’t know to search the different product classes. An expert can also help you find names that sound like yours, which may take precedence even if they are spelled differently.

If that ten thousand dollar estimate makes you gulp, bear in mind the author is getting information from the Jones Days of the world. I’d more realistically project about a third of that on average from a firm such as ours for search, results analysis, application preparation, and filing.

Still, good article, and good advice overall.

Trademark owners take notice: ICANN will be introducing new gTLDs in the near future. We will report on the sunrise periods as they are announced.

Out-Law, among other outlets, has reported that Google has changed its trademark ad purchasing policy in the UK and Ireland. Previously, owners of trademarks in the UK and Ireland could prevent third parties from purchasing their trademarks as keywords that would trigger third party advertisements. This is no longer the case under the new policy. The new policy reflects the system currently in place in the US. For the rest of Europe, Google still employs a policy of banning the purchase of trademarks as keywords by third parties.

It will still be the case that advertisers are not allowed to use a trade marked term in the actual advert itself under the new rules. Advertisers will be able to buy the right to display their ad when a trade marked term is used by the searcher, but will not be able to use that term in the advert. “The change of policy seems to be the inevitable consequence of a series of court decisions in the UK, the latest being the Mr Spicy decision, which seem to suggest that the use of a registered trade mark as an AdWords trigger would not constitute trade mark infringement, unless the registered trade mark concerned appeared in the visible text of the sponsored link or on the website linked to the advert and directly lead to confusion in the marketplace,” said Lee Curtis, a trade mark attorney at Pinsent Masons, the law firm behind OUT-LAW.COM.

“However, Google needs to be careful in this new policy in that even in the UK and US, it would appear that if the use of a registered trade mark in an AdWords advert causes confusion in the marketplace in the words of the UK courts as to ‘trade origin’ then it is still possible that a court could come to an decision against the defendant,” he said. “The jury, as they say, is still out on that matter.”

Sarah Bird at SEOmoz uncovered an interesting, and brain-bending, application for federal registration of the term SEO for “Marketing services in the field of computers in the nature of providing marketing services for the benefit of others by compiling advertising campaigns, promotional services, and consulting for customers”. SEO generally stands for “search engine optimization,” which Wikipedia defines as both a process and a strategy intended to improve a website’s visibility in search engine results. Frankly, I’m not sure the described services are related to search engine optimization, but then I’m not an SEO professional. Those who are SEO professionals are of course not pleased that the PTO apparently succumbed to the applicant’s Jedi Mind Tricks, and may object.

Frankly, the prosecution history has twisted me around a few times, and I’ll need to read it over a few more to get a grip on the thing.

USPTO Examiners is a new site dedicate to the anonymous evaluation of USPTO trademark and patent examiners. It will be interesting to see how the site develops and if it will reveal discernible trends. (via Securing Innovation)

The Imperial Hotel Management College maintains a YouTube channel that serves as a guide to pronunciation of luxury brands. Currently there are pronunciations of 61 brands. via Agenda, Inc.