Krusty Krab. Restaurant. Trademark Infringement.

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Sponge Bob SquarePants. Lawsuit.

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Trademark Infringement. Krusty Krab.

Almost everyone with young children knows about the animated TV series, Sponge Bob SquarePants. The show is based in the fictional underwater city, Bikini Bottom. And of course, within this city is a restaurant called The Krusty Krab, run by a grouchy crab called Mr. Krabs.

In January of 2016, this fictional restaurant became the center of a trademark lawsuit.

Viacom. Nickelodeon.

Viacom, who owns Nickelodeon, the network which airs Sponge Bob SquarePants, filed a trademark infringement lawsuit against a Texas based company, IJR Capital Investments, who attempted to open a seafood restaurant called…The Krusty Krab.

Although the name of the fictional restaurant was never registered with the United States Patent and Trademark Office, Viacom contended that its common law trademark rights were violated. A common law trademark is established through continued “use” and not through statute. Attorneys for Viacom argued that the Krusty Krab animated restaurant has been in continuous use since 1999 and appeared in over 160 episodes of the TV series.

Secondary Meaning.

Earlier this year, U.S. District Court Judge Gray Miller ruled in favor of the plaintiff, Viacom. The judge cited precedent and continued use in his decision, noting that the name “Krusty Krab” had acquired “secondary meaning” and was thus, distinctive. He went on to say that the potential for confusion was very high.

Judge Miller stopped short of awarding Viacom on their claim of trademark dilution, noting that the defendant, IJR Capital Investments, never actually opened the proposed restaurant, thus never used the trademark in commerce, a requirement for both federal and state trademark dilution law.

In the past, Viacom has allowed restaurants to use its trademarks via licensing agreements, the most notable example being a restaurant chain called Bubba Gump Shrimp Co. which originated from the 1994 box office hit “Forrest Gump.”

This case is far from the first of its kind. Other common law marks such as “Daily Planet” and “Kryptonite” were the subject of lawsuits involving Warner Bros. and DC Comics.

Once again, this case highlights the importance of “use” when there is no registration. Consistent use over a prolonged period, as well as “secondary meaning” are two of the key elements of common law trademark lawsuits.

I’m Attorney Francine Ward, and what do you think? Join the conversation on my Facebook Law Fan Page, my Twitter Law Page, my Google+ Page, or in one of my LinkedIn Groups.

 

Trademark Scammers. USPTO SCAM.

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Non-USPTO Solicitations

USPTO Scam

USPTO Scam

Here is yet another way scammers are trying to part you from your hard-earned money.

The USPTO recently announced that trademark holders are receiving letters in the mail requesting payment on fees due for the trademarks.

The fraudulent solicitations include offers such as: for legal services; for trademark monitoring services; to record trademarks with U.S. Customs and Border Protection; and to “register” trademarks in the company’s own private registry.

Furthermore, these scammers are using letterhead that mimics the look of official government documents and are using names that resemble the USPTO, such as “United States,” “U.S.,” “Trademark,” “Patent,” “Registration,” “Office,” or “Agency.”

Trademark Scam.

The Department of Justice reported that these scams resulted in the loss of approximately $1.66 million from copyright holders, and has only resulted in 5 convictions.

So, if you get a letter in the mail stating that it’s from the USPTO office read the letter carefully before making a decision about whether to respond.  According to the USPTO “All official correspondence will be from the “United States Patent and Trademark Office” in Alexandria, VA, and if by e-mail, specifically from the domain “@uspto.gov.”

What do you do if you are a victim?

File an online consumer complaint with the Federal Trade Commission (FTC). See here.

The USPTO has offered several examples of just some of the non-USPTO solicitations that have been mailed out, which can be reviewed here.

Until next time, I’m Attorney Francine Ward helping you protect what’s yours. Join my conversation on FacebookTwitter, or in one of my LinkedIn groupsGoogle+ Circles. Feel free to subscribe to my newsletter.

How to choose a trademark that can likely be protected?

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The best way is to make one up – be original and creative!

Trademark Image1My greatest challenge when it comes to trademarks is the marketing department. In most cases, marketers tell their clients, when choosing a trademark, to select a mark that “describes” what they do.

Trademark lawyers tell clients, do NOT choose a mark that describes what you do. Instead, select a mark that is unique and distinctive, not descriptive. When counseling my clients, the best way for them to accomplish that is to make up a word and then market it to the hilt.

According to the SBA, here are some other points to consider as you choose your trademark:

  • How will your trademark look? – On the web, as part of a logo, on social media.
  • What connotations does it evoke? – Is your name too corporate or not corporate enough? Does it reflect your business philosophy and culture? Does it appeal to your market?
  • Is it unique? – Pick a name that hasn’t been claimed by others, online or offline. A quick web search and domain name search will alert you to any existing use.
  • If you intend to incorporate your business, you’ll need to contact your state filing office to check whether your intended business name has already been claimed and is in use.
  • It is web-ready? – In order to claim a website address or URL, your business name needs to be unique and available. Next, check whether a domain name (or web address) is available.

You can read more tips on the SBA website here: https://www.sba.gov/content/how-name-business

Until next time, I’m attorney Francine Ward sharing useful legal information. Join my conversation on FacebookTwitter, or in one of my LinkedIn groupsGoogle+ Circles.

USPTO Fee Changes

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USPTO – United States Patent and Trademark Office

Trademark Search. Trademarks.

 Trademark Applications. USPTO

Many people are probably not aware that the United States Patent and Trademark Office is not funded by taxpayer money, rather, it is entirely funded by fees paid by patent and trademark holders. When more funds are needed for the vast array of services provided by the USPTO, fees must inevitably go up.  Therefore, it’s not surprising that the USPTO has increased service and processing fees on 42 specific trademark filings, starting January 14, 2017.

In effort to drive users towards electronic filing, the largest fee increases are on paper filings. For example:

The per-class fee for paper filing has increased to $600 from $375 for an initial filing, with increases ranging from $75 to $200 on other applicable per-class fees.

Other increases include fees for paper filings to the Trademark Trial and Appeal Board. This includes 6 fees for initiating proceedings, and 4 fees for requesting extensions for notice of opposition fillings.

In a statement posted on www.uspto.gov, the reason for the increases are as follows:

“We have made these changes to better align fees with full costs, to protect the integrity of the register by incentivizing more timely filing or examination and more efficient resolution of appeals and trials, and to promote the efficiency of the trademark process, in large part through lower-cost electronic filing options.”

In 2015, the latest available year for data, there were 709,453 total patent documents published by the USPTO. This was a new record. The number of trademark applications for the same year was 530,270, and the number of trademarks currently registered and maintained through the USPTO is more than 2.1 million. With these numbers perpetually growing, the need for streamlining and expediting the patent and trademark process is obvious.

As technology continues to progress at a breathtaking pace, the way we process and protect intellectual property must keep pace. And it is more important than ever to get the proper legal help with your patent and trademark applications. A mistake can cost you dearly and you may never get a second chance.

Until next time, I’m Attorney Francine Ward helping you protect what’s yours. Join my conversation on FacebookTwitter, or in one of my LinkedIn groupsGoogle+ Circles. Feel free to subscribe to my newsletter.

Trademark. Proof.

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Trademark. Proof.  

Trademark. Proof.

Trademark. Proof.

 

NEWS Flash! If you don’t use your registered trademark you WILL lose it.

Back in July of 2012, the USPTO implemented a pilot program called, Proof of Use. The USPTO (Trademark Office) randomly selected 500 registrations where Section 8 and Section 71 Declarations of Use were filed. The results of the program were stunning and should serve as a wake-up call to all trademark registrants. Several of those were cancelled.

The intent of the pilot program was to test the accuracy and legal integrity of registered trademarks. The program wanted to ensure that registrants were using their marks as they said they were.  The samples selected were of registrations under Trademark Act Sections 1(a), 44(e), 66(a), and 1(a) and 44(e).

Trademark holders were asked to supply “proof of use” for the marks they registered. After analyzing the data, the USPTO asked some of the participants to delete goods and/or services from their registration that did not satisfy proof of use, while others received notices of cancellation.

Here is a breakdown of the data under the sections registered:

     Asked to delete goods/services                        Received notices of cancellation

Section 1(a)                              27%                                                                                     18%

Section 44(e)                            58%                                                                                       7%

Section 66(a)                            59%                                                                                     14%

Combined 1(a) and 44(e)      63%                                                                                      13%

Combined, over half of the registrants were unable to verify that they were using their trademarks as they said they were in the Declaration of Continued Use.

The USPTO fully expects that you will use your trademark for the specific goods/services listed in the registration. I cannot stress the importance of adhering to ALL post-registration requirements.  If you don’t, rest assured you will lose your trademark. It may not happen today, or tomorrow, but it will happen. Even if the USPTO does not cancel your registration on its own, an unhappy competitor could institute a cancelation proceeding.

While you may save a few dollars by trying to register your trademark by yourself, in the long run it will cost you so much more than if you had the help of an experienced attorney who specializes in Trademark law.

Feel free to join my conversation on FacebookFacebook Esteemableacts Fan Page, or my Facebook Law Page, you can also interact with me on my Twitter Esteemable Acts pageTwitter Law Page, or on LinkedIn.