Usually, when tech pundits talk about patents and trademarks, it is usually in the context of companies ducking it out in the courtrooms (just like Apple and Samsung are doing), but here’s a story that shows that companies can indeed play fair. Click here to read the Whole Story.
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What if you had a trademark that had been around for decades, and had become so common that it popped up millions, and, in fact, possibly billions of times each day around the world? That would have to be about the coolest thing ever. Unless your trademark is SPAM. Then, maybe not so much. Click here for this great article in Forbes Magazine.
You post your pictures, build your profile, and create you online world on Facebook. You come back the next day and it is all gone without warning! Can it really be and can this really happen? The answer is yes and that is exactly what happened to “The Cool Hunter” when they saw their Facebook page and complete online presence removed swiftly and permanently with little warning. The social network shut down this pop-culture account and the founder and nearly 800,000 fans were left wondering just what went wrong. Click here to read this story about about the power of of copyright, terms of service agreements, and intellectual property ownership.
Victoria’s Secret sold or gave away a hot pink tank top with the word “Delicious” written across it without first considering whether or not it might have been a trademark infringement.
The top was included in a gift package of “Beauty Rush” lip-gloss to help promote Victoria’s Secret’s new line of personal care products under the “Beauty Rush” trademark. In much smaller lettering on the back of the shirt was the word “yum” and the phrase “beauty rush.” Much to their surprise, “Delicious” turned out to be a registered trademark of Fortune Dynamic, Inc., which used the mark on footwear for women and children that the company began selling in 1997. They had registered “Delicious” in 1999.
Fortune Dynamic filed suit, but the District Court granted summary judgment in favor of Victoria’s Secret. In an opinion by Justice Jay S. Bybee, the Ninth Circuit reversed. Justice Bybee discussed the eight Sleekcraft factors that can be used to determine whether a likelihood of confusion may exist and the similarities of the mark; he decided that there were enough factual issues in the case that a Summary Judgment was not appropriate and sent it back for trial. He concluded:
“Furthermore, in light of evidence suggesting that Victoria’s Secret used the term “Delicious” as a trademark and suggestively rather than descriptively, together with Victoria’s Secret’s failure to investigate the possibility that “Delicious” was already being used as a trademark, there remains a genuine issue of material fact as to whether Victoria’s Secret used “Delicious” unfairly.” Fortune Dynamic v. Victoria’s Secret Case No 08-56291 (9th Cir, August 19, 2010)
As part of its defense, Victoria’s Secret had asserted that the word “Delicious” accurately described the taste of the “Beauty Rush” lip-gloss and the smell of “Beauty Rush” body care products. In addition, they felt that the word was a “playful self-descriptor” in that a woman wearing the top was saying “I’m Delicious.” No search had been done to determine whether “Delicious” was actually a trademark. A previous promotion had “Very Sexy” written on a tank top, but that phrase was already a registered trademark of Victoria’s Secret.
From my perspective, as someone who is often a part of the process of developing a trademark, one of the most interesting issues is what the executives who put this promotion together actually understood. Did they realize that the manner in which they used the word “Delicious” was potentially a trademark use? Giving them the benefit of the doubt, I presume the answer was no. If they had, they would have gotten the legal department to do a search, although whether or not Fortune Dynamic’s mark would have appeared as an obvious conflict is another question. A quick general search of the word “delicious” in the USPTO records turns up nearly a thousand entries of related marks.
It is relatively easy to do a trademark search, but first, someone must identify the need. If the question is never asked, a good-tasting answer cannot be found.
Are you unsure about what to do when it comes to trademarks?
Do you have questions such as:
- What is a trademark?
- What is its value?
- Does it need to be registered?
- Why should I make trademarks a priority?
Read on to learn the answers to these questions and basic information about trademarks.
What is a trademark?
A trademark is a name or a “brand” that identifies a particular product. For example, XEROX identifies a type of copying product. A service mark is a name used to identify a service. FED EX identifies a specific delivery service. The word trademark is often used to mean both trademarks and service marks. A trademark registered with the United States Patent and Trademark Office is identified by the ® symbol.
What is the value of a trademark?
Most of us in business have an intuitive sense that trademarks have value. In the sale of a business trademarks and good will are one of those nebulous line items accountants puzzle over. Quantifying this value can sometimes be difficult, but, regardless of whether you can put a precise number on it or not, trademarks do have value.
Let’s look at a company like Coca Cola. Most of the value of the company is in the various Coca Cola brands and the formula. If the company took their famous cola and sold it with a different name and color on the label, sales would plummet. Consumers are trained to look for that familiar name and the famous red label. It took decades of advertising to achieve this iconic status, but no one can deny that this mark has substantial value.
Does a trademark need to be registered?
In the United States, trademark and service mark rights are acquired by actual use of the mark on particular goods or services. Registration is not mandatory for use and ownership of a mark. However, the significant benefits, discussed below added to the relatively low cost of registration, make this an easy choice.
The Benefits of Registration
A Federal registration confers a number of benefits that easily outweigh the relatively low cost such as:
- Notice of Your Ownership of the Mark. The existence of a valid registration provides notice to the world of your ownership of a mark– even to a competitor who never searches a mark prior to adopting and using it.
- Ownership is Presumed. The information contained in your registration, is presumed to be true. This is extremely useful. If you have to enforce your trademark rights through litigation.
- Incontestability. After five years a registration becomes incontestable to all but a few legal defenses.
- Creators of new marks will avoid developing a conflicting mark. Competitors who perform a search will find your mark and should make an effort to avoid the use of the same or a similar mark.
- Ability to Stop Infringers. Through the filing of a trademark infringement suit you can request in appropriate circumstances, the following remedies against an infringer:
–An injunction against continued use of his mark,
–Damages equal to the infringer’s profits,
–Treble damages and
– Your attorneys’ fees as damages.
– Seizure of infringing goods.
- Ability to use U.S. Customs to Enforce Ownership. The U.S. Customs Office will accept a registration as proof of ownership and will police the importing of infringing goods.
- Access to the Federal Courts. A registration confers Federal Jurisdiction. This gives you the ability to sue an infringer in any Federal Court throughout the country.
- Foreign Registrations. A U.S. registration can be used as the basis for registration in foreign countries.
- Ability to use Registration Symbol. Once the registration issues you can use the circled “R” as a warning to others of your claim to exclusivity of the mark.
Protect your valuable marks
Whether you have just one product or service or hundreds of them, investing time and money in the development and management of your trademarks is a wise investment. The investment is relatively small compared to the value you will create.
If you want to register a trademark or just have questions, feel free to contact Ted Gerdes @ (310) 385-9501 or firstname.lastname@example.org