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Google Runs into Trouble in Attempt to Secure Trademark Protection for "Glass"

April 16, 2014,

Glass-google.jpgOrange County - There has been no smooth sailing so far for Google in its push to get the word "Glass" registered by the United States Patent and Trademark Office (USPTO) as a federally protected trademark. While the company obtained registration relatively easily for "Google Glass" in connection with its much anticipated wearable technology device, the road to registration for its newest application has been much more obstructive.

For "Google Glass", the USPTO asked only that Google amend its description of goods and change the Class that it originally filed in before the application could proceed toward registration. For "Glass," the Examining Attorney dealt a much more serious blow, citing a likelihood of confusion with six prior registered trademarks and a potential likelihood of confusion with seven prior filed applications. Beyond that, the Examiner set forth an argument that the word "Glass" is merely descriptive of the goods for which Google is seeking protection namely, "Computer hardware; computer peripherals; wearable computer peripherals; peripherals for mobile devices; wearable peripherals for mobile devices; computer hardware for remotely accessing and transmitting data; computer peripherals for remotely accessing and transmitting data; peripherals for mobile devices for remotely accessing and transmitting data; computer hardware for displaying data and video; computer peripherals for displaying data and video; peripherals for mobile devices for displaying data and video; computer software." The Examiner found that the word "Glass" would be taken by consumers to describe some feature of the goods, specifically that they contain glass lenses or glass parts, and thereby denied registration.

In its response, filed in March, trademark lawyers for Google countered with a lengthy argument that Google Glass is so well known that consumers will not be confused between it and the other cited applications and registrations. The response also argues that since buyers of Google Glass are sophisticated purchasers, they know exactly what they want and will not be confused between the Google product and other products. Though the USPTO has yet to issue any action in regard to Google's response to the refusal, this is sure to be an interesting back and forth between one of the country's best known technology companies and the USPTO.

As for Google Glass itself, the new device made a limited launch among "explorers" on April 15. With a variety of designs and styles soon-to-be available, from sunglasses to cat-eye frames, Google is grappling for a wide consumer base, encouraging buyers to "make Glass your own", by ensuring that the product fits a wide variety of lifestyle and design preferences.

Big Money at Stake Over "12th Man" Trademark in Football

February 13, 2014,

football.jpgOrange County - Lately, it has been hard to miss the reigning Superbowl Champion Seattle Seahawks' "12th Man" signs, banners and cheers across TV, the internet, and social media. Popular as it may be, the term famously associated with the Seahawks was originally coined by the student body of Texas A&M University, with the school going so far as to federally register the "12th Man" trademark in 1990. Now, with the Seahawk's recent success and accompanying use of the phrase, licensing negotiations between the athletic organizations are heating up.

According to longstanding Texas A&M history, the term "12th Man" came about in 1922 when head football coach Dana X. Bible called an A&M basketball player, E. King Gill, out of the stands to suit up to play. Though Gill never ended up playing a single down for the Aggies, his story carried on for years as from that point on, the student body has referred to themselves as the "12th Man" on the field.

By the early 2000s, when Seattle Seahawks fans regularly began referring to themselves as the 12th Man, Texas A&M took note. In 2006, the university commenced a lawsuit against the Seahawks for trademark infringement. The teams ended up settling, with the Seahawks paying a $100,000 lump sum to Texas A&M for its use of the trademark, along with a five year license, renewable for an additional five year term, at a fee of $5000 per year. That deal included a variety of limitations, including a geographical restraint that prevents the Seahawks from using the term anywhere outside of Alaska, Hawaii, Idaho, Montana, Oregon, Utah and Washington.

With the deal ending in 2016, several reports are indicating that the Seahawks are already in talks with Texas A&M to ensure extension of the license. Since the original agreement was made before the takeoff of social media, where much of the 12th Man frenzy has taken place, it is unclear how the teams will work out the problem of geography. While Texas A&M has demonstrated its dedication to keeping the trademark in effect in Texas and its surrounding areas, it may be facing a problem of enforceability now that the Seattle 12th man has become so popular.

Additionally, given the current contract's provision prohibiting the Seahawks from using the 12th Man on fan merchandise, if Seattle wishes to really cash in from the 12th Man retail market, they are going to have to pay up. Initial chatter surrounding the settlement discussions put the license renegotiation fee in the six figure range.

Ford and Tesla Clash Over "Model E" Trademark

January 10, 2014,

ford.jpgOrange County - Two of the world's most well known car manufacturers are going head to head over the trademark right to the name "Model E." Records on file with the United States Patent and Trademark Office (USPTO) show that on August 5, 2013, Tesla Motors, Inc. filed a trademark application for "Model E," in several classes of goods, including that for " Automobiles and structural parts therefor." This was enough to sufficiently stir up Ford's attorneys and Ford, in turn, filed its own application for the same name on December 3, 2013.

While Ford never actually made a Model E automobile, they may have a viable claim to a historical right in the name, due to its classic formula of naming cars "Model" with a single letter following. Ford historically rolled out the Model T in 1908, which was the first car to ever be produced for the masses by assembly line. Besides the most famous Model T, Ford also produced the Models A, B, C, F, K, N, R, S, T and Y between the years 1903 and 1938.

Oddly enough, while Ford never officially used the "Model E" moniker as a name for an automobile, Tesla also has yet to formally announce that it will be using the name. The public has been awaiting the unveiling of the new Tesla model to follow the widely popular Tesla Model S. With relatively little information about the upcoming model, car enthusiasts and bloggers simply started referring to the yet-to-be seen Tesla as the "Model E". The name caught on and so did Tesla, which despite filing several trademark applications for the "Model E," have yet to announce that the next addition to the Tesla lineup will indeed bear the moniker.

The upcoming Tesla "Model E" is speculated to be a much more affordable version of the successful Model S, set to compete with the BMW 3-series and Mercedes C-Class, at a price of about $35,000. The much anticipated "Model E-veryone", as some have begun calling it, will be the fourth production car by the California-based car company. Whether or not Tesla is able to win out the fight against Ford for the "Model E" trademark, it appears that Tesla enthusiasts will be ready to buy it when it finally arrives.

Auburn Coach Seeks Trademark Protection For "Hurry Up No Huddle"

November 26, 2013,

football.jpgOrange County - A trademark application filed on November 13th with the United States Patent and Trademark Office (USPTO) reveals Auburn University football's head coach's intent to trademark his signature approach, "Hurry Up No Huddle". The application was filed through the Auburn Tigers' head coach Gus Malzahn's limited liability company and seeks protection over the phrase, which refers to Malzahn's well known up-tempo style of play.

According to filing documents, Malzahn applied for protection in two separate classes, specifically in those covering clothing and glassware. Though his trademark lawyers filed the application based on an "intent to use" the phrase in connection with the goods, shirts displaying the phrase are already being sold in stores and online. A quick web search shows that J&M Bookstore, a retail outpost which has been "serving Auburn students, alumni and fans for over 58 years," is offering the shirts for $17.99. The t-shirts show the phrase "Hurry Up No Huddle" underneath the Auburn University logo and on the back are the words, "Quit Your Whining (You Get 3 Time-Outs)."

The "Hurry Up No Huddle" offensive style has long been associated with Malzahn , even years before he took his post as the Auburn University Tigers' head coach earlier in 2013. In 2003, while he was a coach at Springdale High School in Arkansas, he published his book entitled, " The Hurry-Up, No-Huddle: An Offensive Philosophy." According to the book, Coach Malzahn officially began incorporating the hurry-up, no-huddle philosophy into his offense during his time at Shiloh Christian High School beginning in 1997. During his time at Shiloh, his teams averaged approximately 7,000 yards per season using his quick offensive style. After taking that team to two state championships, he went on to do the same at Springdale High School, before becoming the Offensive Coordinator at the University of Arkansas.

The Auburn Tigers currently rank number four in offense in college football, with much of the program's success being attributed to the "Hurry Up No Huddle" mentality. The team is second in rushing yards this season and has an impressive 10-1 record. Given the sensation of his signature style and how integral it has been to the success of all of his football teams, the potential for "Hurry Up No Huddle" as a brand is obviously something that the famed coach has picked up on. While the USPTO has yet to issue any disposition with regard to the application, it will be interesting to see how this filing fares in the now commonplace trend of athletes and coaches trademarking their namesake nicknames, slogans, and styles. The Hurry Up No Huddle may have its ultimate test coming up this weekend as Auburn plays the top ranked Alabama Crimson Tide in the Iron Bowl.

Cardinals' Rally Squirrel Stirs up Trademark Fight

October 30, 2013,

squirrel.jpgOrange County - The St. Louis Cardinals are in the midst of a dispute over the trademark of its popular "Rally Squirrel." The team is trying to knock out a federal trademark application filed with the United States Patent and Trademark Office (USPTO) by a St. Louis area business owner named Phil Rideout. Rideout claims that he filed the application with the intent of building a sports brand around the name, but the Cardinals have opposed the filing, claiming that the name has become a fundamental part of the ball club's identity.

Back in 2011, when the Rally Squirrel was at the peak of its popularity, Rideout was one of many local businesspeople who cashed in on the frenzy, manufacturing and selling squirrel themed merchandised to Cardinals fans. At the same time, the St. Louis Cardinals themselves created and sold Rally Squirrel T-shirts and provided fans with squirrel rally towels at games.

Though its opposition is still lingering with the USPTO, the Cardinals have shown no sign of giving up, with one its representatives recently commenting that the "Cardinals Rally Squirrel is alive and well." The parties are currently trying to work out a settlement, but the fight seems stalemated for the time being, with Rideout claiming that he was the first user of the term and the Cardinals countering that he is attempting to unjustly profit from the goodwill of the team and its association with the furry creature.

The now famous rally squirrel first appeared back in 2011, during that year's National League Division Series between the Phillies and the Cardinals. During game three of the series, the squirrel popped out in the outfield and interrupted play as it darted across the field. In game four, the squirrel appeared again and caused a distraction among players, before leaping into the stands.

From that point on, the tiny rodent was dubbed the "Rally Squirrel" and became the unofficial mascot of the St. Louis Cardinals, receiving much media attention by players, commentators and fans alike. The Cards ended up winning the world series that year and the Rally Squirrel has remained a fan favorite ever since, with his own Twitter account, T-shirts and merchandise. He is even featured as a life-sized mascot on the field at Busch Stadium alongside Fredbird, the cardinal bird mascot.

Truce between Apple and Amazon over Trademark for "App Store"

July 11, 2013,

apple-store.jpgOrange County - A judge in Northern California Federal Court on Tuesday dismissed a case between technology giants Apple, Inc. and Amazon.com, Inc. over trademark infringement claims after the two sides reached a settlement agreement.

The conflict stems from Amazon's use of the term "appstore" in its marketplace of programs for use witg Google's Android cell phones and Amazon's Kindle Fire. Amazon originally used "Amazon Appstore for Android," to refer to its online store, but upon introduction of the Kindle Fire, Amazon dropped use of "for Android." This switch prompted Apple to take legal action.

Apple originally filed its complaint in 2011, alleging that it had the exclusive right to the term APP STORE.

Apple, based in Cupertino, Calif., first filed a trademark application for APP STORE in July 2008, which the U.S. Patent and Trademark Office approved in 2010. Microsoft Corp. then filed an opposition to the application, so registration of the trademark is still pending based on the outcome of the civil trial between Apple and Microsoft.

Apple argued that it originally coined the term "app store" in relation to its innovative online store for applications to download onto iPhones, iPads, and iPods that it introduced in 2008. Since then, Apple's competitors, such as Amazon, have introduced similar marketplaces for application downloads. Apple asserted in its complaint that Amazon's use of "appstore" constituted false advertising, leading consumers to believe that Amazon's virtual store was associated with its own.

Seattle-based Amazon asserted in response to the complaint that the term "app store" had become generic, and that it was frequently used by business participating in the app store marketplace. The company further argued that consumers understood the differences between the app stores for different platforms, and would not be confused by Amazon's use of "appstore."

U.S. District Judge Phyllis J. Hamilton ordered the two parties to begin mediation earlier this year. The two sides reached an agreement on June 28, as Apple agreed to a covenant not to sue Amazon over this matter. Judge Hamilton dismissed the case on July 9, citing the agreement between the two corporations.

The case was originally scheduled to begin trial next month.

Kraft's Use of TOPPERS Alleged to be Trademark Infringement

June 17, 2013,

Cheese.jpgOrange County - A fierce battle is underway between the nation's top cheese producers over the rights to the term 'Toppers'. Saputo Cheese USA, Inc. holds the U.S. Trademark for 'Toppers' and the company claims that Kraft Food Group, Inc. infringed on its trademark by using the same term in its product description.

Saputo, a U.S. subsidiary of the Canadian company by the same name, filed a lawsuit in federal court in the Northern District of Illinois against the snack food giant on June 7th. Saputo claims it has used the term TOPPERS continuously since 1996, and has held U.S. Trademark Registration Number 2,330,529 since 2000.

The alleged infringement began in late 2012, when Kraft introduced its Velveeta brand 'Toppers', which are microwaveable pouches of Velveeta cheese product. The new product is designed for use as a single-serve nacho cheese dip and comes in two varieties, Queso Blanco and Original.

The use of 'Toppers' by Velveeta, an Illinois-based corporation owned by Kraft, is particularly damaging, claims Saputo. The company claims that it has developed a reputation for quality cheeses under its TOPPERS label, and argues that the term's use by Velveeta will cause irreparable damage to the reputation of the brand.

Saputo has utilized its 'Toppers' trademark in its Stella Toppers cheese brand, described as Artisan-Style Toppings, with products including Fresh Mozzarella, Parmesan, and Blue Cheese. The company fears that if customers believe the Velveeta 'Toppers' product is associated with the Stella Toppers cheese, it will damage the reputation of Saputo Cheese.

Lawyers for Saputo sent a cease-and-desist letter to Kraft on May 23rd, demanding that the company immediately stop all use of the term 'Toppers'. Kraft's counsel stated in its email response on May 31st that it would investigate the matter. To date, the company has not stopped use of the trademark that Saputo claims is infringing.

In its lawsuit against Kraft, Saputo cites trademark infringement as well as false advertising, unfair competition, and violation of the Uniform Deceptive Trade Practices Act under Illinois law. The company is also seeking damages, including injunctive and monetary relief.

The Rush of "Boston Strong" Trademark Applications Has Begun

April 30, 2013,

registered R.jpgOrange County - In the aftermath of the April 15, 2013 Boston Marathon attack, no less than 8 separate trademark applications containing the words "Boston Strong" have been filed with the U.S. Patent & Trademark Office. The phrase became a popular credo for Bostonians who gathered to show support for one another during a difficult time.

Two of these applications, Serial No. 85,906,569 filed by Born Into It, Inc. for "clothing and accessories" and Serial No. 85,906,495 filed by an Allston, Massachusetts individual for "Imprinting messages on wearing apparel, accessories and mugs" were filed as quickly as two days after the tragedy. The Allston Massachusetts individual has already expressly abandoned that application. Then, on April 20, 2013, three additional applications were filed by individuals in Oxford, Connecticut, New Port Richey, Florida and Brockton, Massachusetts all for apparel items. On April 22, 2013 two more applications were filed and there could be more because it takes about a week for the applications to show up online.

The bad news for those filing a BOSTON STRONG application after April 18th is that the Born Into It Application filed on April 17th will stand in the way of registration. So, that will likely knock out all but one Application filed for BOSTON STRONG COFFEE.

Another problem the applicants face is that the BOSTON STRONG phrase has recently come into widespread usage, so it will likely be very difficult to enforce trademark rights even if the trademark registered. Beyond these issues, most of the applications were filed on an intent to use basis and the applicants likely do not realize that merely printing words on a t-shirt or hat is not considered trademark use by the U.S. Patent and Trademark Office. Instead, a trademark must act as a source identifier, so to be accepted as a specimen of use the trademark must be used on a label or hang tag.

A final issue is that most people will view the rush to register the trademark as in bad taste. The public view of any efforts to enforce rights to the BOSTON STRONG trademark by way of a cease and desist letter or by litigation would likely be viewed in an even dimmer light.

While it is not uncommon for individuals to rush out to file trademark applications involving the newest fad or latest news, as most if not all of these applicants will soon realize it is rarely a good idea.

"See Better Live Better" Trademark Generic According to Bausch & Lomb

April 16, 2013,

eye.jpgOrange County - Bausch & Lomb Inc., well-known optical innovators since the early 1900's, recently filed a counterclaim seeking cancellation of a trademark in a lawsuit in which Bausch & Lomb was sued for trademark infringement. The trademark at issue is "See better Live Better".

The Plaintiff in the lawsuit is Stuart J. Kaufman, M.D., a Florida Ophthalmologist who owns SEE BETTER LIVE BETTER U.S. Trademark Registration No. 3,917,064 for physician services in the field of ophthalmology. Mr. Kaufman is seeking injunctive relief as well as damages from Bausch & Lomb's use of the phrase "See better. Live better" in advertising and on its web site.

The original complaint against Bausch & Lomb was filed in February. In response to being sued, Bausch & Lomb decided to file the counterclaim against Dr. Kaufman asserting that SEE BETTER LIVE BETTER is a generic term in the industry of eye care and therefore the trademark should be cancelled by the U.S. Patent & Trademark Office. In the counterclaim, Bausch & Lomb states that many others in the eye care industry are using the slogan or similar slogans and therefore "No one party should have exclusive rights to this popular phrase." In its counterclaim Bausch & Lomb states that "See Better Live Better is generic for eye services that help people see better so that they can live better."

While it may be a stretch to say that the trademark is inherently generic, Bauch & Lomb can still be successful in cancelling the trademark if it can prove that it is in widespread use. Examples of trademarks that became generic over time are ASPIRIN and CELLOPHANE. To support its claim that the trademark has become generic, the counterclaim lists many other uses of the trademark including uses by ophthalmologists that allegedly used the slogan prior to Mr. Kaufman. This is somewhat of a position pill argument in that Bausch & Lomb is arguing that it also is not entitled to trademark protection in the slogan. Considering this, it may be advisable for Bausch & Lomb to cease use of the phrase regardless of the merits of the claim.

Dr. Kaufman is accusing Bausch & Lomb of "reverse confusion." In other words, he is alleging that the public will believe that Bausch & Lomb is the true owner of the trademark which will lead the public to believe that Mr. Kaufman is the infringer rather than Bausch & Lomb.

Drug Maker Cannot Trademark Peppermint Flavor and Scent

March 6, 2013,

peppermint.jpgOrange County - Drug producer Pohl-Boskamp GmbH & Co. KG cannot trademark the peppermint scent and flavor of a nitroglycerin spray sold to help treat chest pain, according to a recent decision by the U.S. Trademark Trial and Appeal Board.

The TTAB ruled that the taste and smell of peppermint in the Nitrolingual Pumpspray is functional because the peppermint oil makes the spray more effective at treating chest pain due to angina and therefore it cannot be registered as a trademark. The board also ruled that the flavor and smell were not distinct enough to warrant trademark protection.

Pohl-Boskamp filed a trademark application for the peppermint scent and flavor of the Nitrolingual Pumpspray in 2010. The liquid is sprayed under the tongue and is used to help provide relief from an attack of angina pectoris, a form of chest pain brought on when the heart does not get the blood and oxygen it needs because of coronary heart disease.

The board pointed out that the Trademark Act does not bar scents and flavors from being trademarked, as the law describes a trademark as a "word, symbol or device" used to distinguish goods or services. However, the board said that Pohl-Boskamp did not prove that the scent and flavor of the Nitrolingual Pumpspray is deserving of a trademark.

The Trademark Trial and Appeal Board pointed to a patent owned by another company that indicates peppermint oil reduces side effects of nitroglycerin by increasing the rate at which it is absorbed into the bloodstream. This makes the peppermint functional and therefore not protectable by trademark. In other words, allowing the trademark to register would give Pohl-Boskamp a competitive advantage. "Competitors would either have to forgo using peppermint oil or find a way to mask the taste of the peppermint oil, if that were even possible," the board ruled.

The board also pointed out that Pohl-Boskamp's argument that the peppermint smell was "substantially exclusive" to its product was groundless, as the board found competing products with the same scent. The board ruled that since there are several competing products with a similar scent and flavor, consumers would perceive those characteristics as physical attributes of the product, not as indicators of the origin of the product.

"To allow applicant the exclusive right to market nitroglycerine formulations having the flavor of peppermint oil would impermissibly prevent the future use of therapeutic peppermint oil by others in applicant's field," the board concluded.