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Showing posts from 2006
Do You Hear What I Hear?
I received a question in response to this post about sound trademarks. "'What has to be provided to trademark a particular sound?'According to TRIPs the ability to file and register a sound trademark "depends on [the] aural perception of the listener which may be as fleeting as the sound itself unless, of course, the sound is so inherently different or distinctive that it attaches to the subliminal mind of the listener to be awakened when heard and to be associated with the source or event with which it struck."Okay, now what does that actually mean? Basically, the sound has to be 'inherently different or distinctive' in that when someone hears it the sound is associated with the mark.For instance, MGM has successfully filed and registered their distinctive lion's roar. To see more sound trademarks, go here.
Filing a sound trademark application is similar to filing a traditional trademark except in respect to the sound its…
Who's Got a Question? Yesterday's post got me thinking about you guys, the lovely readers and the questions you may have. So, I'm going to leave this post up for a few days & ask you…Are there any questions I can answer for you? They can be about trademarks, copyrights, patents or starting a business. If so, please comment & I'll make a post about it. If you'd like your web site listed with the post, be sure to include it.Or if you prefer to remain anonymous, please email me. I'll then post about it but take out any personal details. You can also chat with me live here - scroll down and click the Chat Online button. I'm looking forward to reading your questions!

Sony's ®Not Playing Around The mania surrounding the release of Sony's ® newest incarnation of the Playstation ®, the PS3 has subsided a bit. It helps that the first batch of gaming systems has sold out. Sony has taken preventative measures to ensure that they are the one & only importer of their new wunderkind.Read more about trademarksWhat if someone's using your trademark or trade name without your permission?
Oxfam Gets into the Fray Oxfam, "a development, relief, and campaigning organisation that works with others to find lasting solutions to poverty and suffering around the world," has voiced their concerns to Starbucks ® about Ethiopia's coffee trademarks.For more about trademarks, click here. For more about USPTO Application FAQ, click here.
Jimmy Buffett wants his Cheeseburger back Ok, well not really but he does want Robert Akard to stop using his name and likeness.



Apple ® Says NO to the gPod Ichiro Kameda, a Japanese based businessman, has joined the ranks of those getting not-so-fun letters from Apple ®. There was quite a bit of hub-bub last year about Apple ® launching their own gPod but so far that hasn't seemed to surface in the marketplace.However, Mr. Kameda's device is, uh, um of a sexual nature and even passed through the USPTO's research process so we'll see how successful Apple is with their latest bout.I wonder if people are associating POD names with Apple because the brand is so well-known OR because of all the press about the company threatening legal action against the random POD's 'round the world. Hmm…
K-Fed's Having a Helluva WeekBritney Spears has filed a petition for divorce from Kevin Federline. And if that wasn't enough for the wanna-be rapper, he also "made an undisclosed cash payment" to Thomas Dolby in their copyright infringement case.
Patent Your Invention -- Resources, Links & Books

To protect an original invention OR a significant improvement to an existing product, a patent would be filed. Here's the USPTO's definition.

NOLO is a great, free informational site. Also, be sure to read what else the USPTO (United States Patent & Trademark Office) has to say about patents:

USPTO's FAQ about Patents
USPTO's How to Get a Patent
Search Patents

Associations may be a good avenue to explore. These organizations will address many of the thoughts, questions and concerns you'll inevitably have as well as many you haven't anticipated yet.

International Federation of Inventors' Associations
United Inventors Association
Directory of Local USA & Canada Groups

Research, research, research – this cannot be stressed enough. Read as much as you can. Here are some book titles that are relevant:

Getting a Patent:
* Patent It Yourself (11th Edition) by David Pressman
* Patents and How to Get One …
Lawyers on the Loose!

The USPTO will be experimenting with telecommuting lawyers starting next year. Read more about that here.

A Veritable Voluminous Vat of Varying Varieties of Vagueness
aka The USPTO Glossary

The USPTO offers a great service to the public by having the glossary available for viewing. However, some of the language makes you want to say 'huh? what was that?'

So, let's take a look at some of the important words/terms that every person wanting a trademark should know.

First & foremost -- trademark. What is it? Do I need it? Why do I need it? The word trademark can have entire posts written about it; luckily, I've got several for you to check out:

What is a Trademark?
What is a Trademark Search?
Do You Need a Registered Trademark?

Okay, let's move on to some of the trickier definitions.

When an application is filed with the USPTO, there are four different filing bases: use of the mark in commerce, intent-to-use, pending foreign application & foreign registration. Having a pending foreign application or registration is a whole different ball of wax & probably won't appl…
Dead Apples

There's been a lot of hullabaloo about Apple's filing for iPhone in the trademark world.

That got me thinking about Apple's dead marks -- let's take a look at what could have been...



iSchoolwas filed for on September 21, 2001 for International Classes 9, 38, 41 & 42. This mark became abandoned in August 2002 for failure to respond to the USPTO. The mark, specifically IC 41, sounded particulary interesting to me:

"Educational services; educational services, namely, providing a web-based student information system, featuring student grades, attendance records, and homework assignments, that enables school districts, schools, administrators, teachers and parents to record, access, report, and manage their student information and performance data, and allows students and parents to access such information and data, in real time" sounds like a fantastic feature for all schools.

Offlinert became abandoned on July 30, 2004 for failure to respond to the US…
Trademark Renewal & Maintenance – How Do I Keep My Trademark?


After you’ve applied for your trademark, there will be a waiting period of approximately 18 months before your name is actually registered with the United States Patent & Trademark Office (herein referred to as the USPTO). Until then, it will be listed as "Pending."

Sometimes there are hold-ups; the USPTO may not allow you to use the name you’ve chosen to apply for because there is a similar name already trademarked. In this case, you will receive an "office action", which is a notification from the USPTO. If you do receive an office action, it might be due to the USPTO simply needing more information in order to complete your trademark application.

However, it also may be because your name is blocked by another name, which is the worst case scenario, and another reason why it is incredibly important to purchase comprehensive research before you file for your name!

After your name is registered with …
Copyright Registration Sound Recordings Works

First, let's pinpoint what falls into the sound recordings category. Here's what the US Copyright Office has to say:

"Sound recordings are 'works that result from the fixation of a series of musical, spoken, or other sounds, but not including the sounds accompanying a motion picture or other audiovisual work.' Common examples include recordings of music, drama, or lectures."

Here are some books about copyrights:

The Copyright Handbook
How to Register Your Own Copyright

Now to file an application:

The application is fairly simple & the cost is $45 per application.

Despite what others state, a "poor man's" copyright is NOT the same as registering it. Here's what the US Copyright Office has to say:

"The practice of sending a copy of your own work to yourself is sometimes called a 'poor man’s copyright.' There is no provision in the copyright law regarding any such type of protection, and it …
A Little Bit of This, A Little Bit of That

We'll be moving to a new home soon, which means time for posting has diminished a bit. However, I did want to be sure to share with you some news about trademarks & copyrights that I found interesting.



* Hormel loses bid for spam trademark by OUT-LAW.com

* Coach files trademark suit against Target over handbag by Chad Bray

* Google ducks a legal bullet by Eric J. Sinrod

* Judge tosses copyright suit against Beyonce by The AP

* Copyright owners bust Univ. students by Jessica Levine

Copyright Registration: Performing Arts Works First, let's pinpoint what falls into the performing arts category. Here's the list of examples from the US Copyright Office: "Performing arts works are intended to be 'performed' directly before an audience or indirectly 'by means of any device or process.' Included are (1) musical works, including any accompanying words; (2) dramatic works, such as scripts, including any accompanying music;(3) pantomimes and choreographic works; and (4) motion pictures and other audiovisual works." Here are some books about copyrights: The Copyright HandbookHow to Register Your Own CopyrightNow to file an application: The application is fairly simple & the cost is $45 per application. Despite what others state, a "poor man's" copyright is NOT the same as registering it. Here's what the US Copyright Office has to say: "The practice of sending a copy of your own work to yourself is sometimes calle…
The Web of Trademark Law is About to get Bigger The Federal Trademark Dilution Act of 1996 is about to expand in scope. The bill is simply awaiting the President's signature in order to become law. The new Trademark Dilution Revision Act of 2006 basically expands the scope of dilution to include blurring or tarnishment. Here's what the government says about both: * "Defines 'dilution by blurring' as an association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. Allows the court to consider all relevant factors when determining whether a mark or trade name is likely to cause dilution by blurring, including: (1) the degree of similarity; (2) the degree of inherent or acquired distinctiveness of the famous mark; (3) the extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark; (4) the degree of recognition of the famous mark; (5) whether the user …
The Pitfalls of Relying on Free Name Research

You found the perfect name for your business and are ready to make your place in the business world. You know you should check to make sure that no one else has rights to your name but where to start?
Doing a search of the web brings up many, many services offering to search your name for free or for a minimal cost. Before you jump on board, make yourself aware of the following pitfalls: Free research will never give you an accurate glimpse of what's out there in terms of names of products or services. If it's free, by all means, take advantage of it; however, please make yourself aware of any "hidden" costs and, most importantly, that you will be missing large chunks of information that are necessary to any comprehensive name search.
Comprehensive searches always cost more than preliminary searches because of the depth and breadth of the thousands of databases that must be searched, at a cost of $1 to $5 per minute wholesa…
Podcast - 204,000,000 & counting


In a somewhat surprising move, it was announced this week that Apple wants to claim rights to the word podcast. A cease & desist letter has already been sent to Texas based Podcast Ready.

Those digits in my headline are how many hits I got for the word podcast when I did a search on Google this morning. It seems to me that trying to prove a point of origin and/or a right of ownership is going to be as close to impossible as impossible can get.

So what do we think? Is this a case of a behemoth company run amok? Or is this simply what Apple has to do - police & protect their trademark?

The online community definitely has an opinion.
A company in Santa Cruz may be Riding a Cruncher

There's been a follow up to the topic I wrote about earlier last month: Going Surfing! Huntington Beach IS Surf City USA ®.

Noland's on the Wharf received a cease & desist letter from the Huntington Beach Conference and Visitors Bureau.

Check out an article from the Santa Cruz Sentinel. The only article I could find in relation to a Huntington Beach paper was almost a carbon copy of the Santa Cruz one; check it out here.

Oh Trademark! My Trademark...your fearful trip is done!

A radio station operating from Lincoln, NE and owned by Clear Channel Communications ® has stopped using the pronoun MY because someone already owns that mark; read about it here.


photo: © martin@party-mania.nl

Doing a quick little search at the USPTO popped up a registered trademark for MY for radio broadcasting services:

Registration Number: 1535807

Mark (words only): MY

Registration Date: 1989-04-18

International Class: 041
Class Status: Active
RADIO BROADCASTING SERVICES
Basis: 1(a)
First Use Date: 1986-04-30
First Use in Commerce Date: 1986-04-30

To check it out, go to the USPTO's Status page and enter the registration number.

The listed owner is George R. Francis, founder and CEO of AmCom General Corporation, the prior owner of the MY trademark. AmCom went through a series of purchases & sales, even once being technically owned by Clear Channel, the very company that owns the radio station in Lincoln, NE that has had to stop …
Do You Need a Registered Trademark?Yup, pilfering from Marit's articles again – time seems to be an elusive friend as of late.It's less of a need than a want. Registering a trademark is NOT mandatory. However, are you a business owner, or do you work with a business that does not currently have a trademark registered or pending with the USPTO? If this last statement in any way describes you, then YES, you may benefit from having a trademark. It is true that many businesses do not register a trademark with the USPTO, but this puts the business at a great disadvantage when compared to another company that does have a trademark. Having a trademark notifies an individual that you have the corner on your market. It allows you to take court action if another business does attempt to infringe upon your name. You are essentially protecting your market upon registering a trademark by publicly individualizing your name. This protection allows a greater piece of mind for the average busi…