Category Archives: Trademarks

Trademarks: Only Use in Commerce Establishes Ownership

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Trademarks can be a business’s most valuable assets. Apple’s mark is estimated to be worth more than $355 billion. The Amazon mark lags behind by a hair at $350 billion.

When the value of a company’s trademark can be so high, it makes good sense to carefully develop, grow and protect marks.

Trademarks can take many forms but first and foremost a mark must serve the purpose of identifying the source of goods in the minds of consumers. Letters, numbers, domain names, abbreviations, nicknames, words, slogans, color, alone or in combination with other colors, and designs can serve as marks.

The configuration of products or packaging, called “trade dress” also can serve as a mark if not functional.  Generic terms (computertraining.com) can never serve as a trademark because they remain available for anyone to use. Marks that are merely descriptive of the goods (Ever Sharp) must acquire secondary meaning, being an association in the consumers’ minds between the goods and their source.

“First come, first served” is the basic rule of acquiring rights in a mark. Ownership of a distinctive mark goes to the first to use it in commerce; ownership of a descriptive mark belongs to the first mark that acquires secondary meaning through use. Continue reading →

Intellectual Property Lawyer Kaitlin Corey Scores Win in WIPO Trademark Proceeding

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Kaitlin Corey - Business and intellectual property lawyer at Goodell DeVries

Kaitlin Corey – Business and intellectual property lawyer at Goodell DeVries

Intellectual property lawyer Kaitlin Corey recently secured a win for her client, a process serving company, in an administrative panel decision in the WIPO (World Intellectual Property Organization) Arbitration and Mediation Center. The complaint, which was filed by a competing process serving company, alleged that the client’s use of a particular domain name for its website infringed the complainant’s federally registered trademark.

In her WIPO response, Kaitlin established that the complainant’s federally registered trademark is merely descriptive, and the complainant failed to prove secondary meaning to establish a protectable mark. The Panelist also found that the complainant brought its WIPO complaint in bad faith, finding that its attempt to transfer the domain name was an attempt at “Reverse Domain Name Hijacking.”

This case serves as a worthwhile lesson to business owners to choose protectable trademarks and steer clear of descriptive marks.

Should I Register My Mark? Yes!

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Should I Register My Trademark? YesA pal and I walked across the parking lot at the Maryland State Bar Association conference last month looking for a lunch joint; the topic of our conversation was whether and why copyright and trademark registrations are necessary and beneficial.

My bud correctly pointed out that a trademark acquires common law rights as soon as it is used on goods or services, and a copyright exists as soon as the work is fixed in a tangible medium of expression. The bulb over my head lit up; my June column was born. I offered to buy him an adult beverage, or two, for the idea.

“You’re correct,” I said. “Both copyrights and trademarks exist without registration, but registration of both confers substantial and valuable rights.”

Continue reading →

Trademark Law and ‘Trump Too Small’

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The U.S. Supreme Court recently heard argument in a third trademark case in which a denied registrant sought to overturn a provision of the Lanham Act on First Amendment grounds.

The mark at issue is “Trump Too Small.” First there was Tam in which the court held “The Slants” must be registered for a musical band even if it allegedly disparaged Asian-Americans. Next was Brunetti where the court required the U.S. Patent and Trademark Office to register “Fuct” for a clothing line, a salacious term if ever there was one. The Lanham Act’s bans on registration of salacious and disparaging marks were held to violate First Amendment rights because they were expressive speech. Continue reading →

The Taco Tuesday Tussle

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Some fast food trademarks make me hungry. Taco Bell’s recent fight with Taco John’s over Taco Tuesday® did so. But trademark battles between two fast food chains aside, I thought more interesting was how Taco Bell turned the dispute into entertaining advertising that promoted its brand more than its product. More on this shortly.

Is Taco Tuesday a proprietary trademark, a designator of a single source of a product? Is it a generic term, available for use by all sellers of tacos to describe in terms generally known to the public that tacos are eaten or a good deal on Tuesdays? The question to chew on is what has the public come to understand Taco Tuesday to represent? A designator of source, or is it merely a declaration used by many that Tuesday is a day to eat tacos? Even if it began life as a designator of source, it can become generic through use. Think shredded wheat, or aspirin. Continue reading →

Listen Up: Trademark and Copyright Law with Kaitlin Corey

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Intellectual property lawyer Kaitlin Corey was interviewed on the “Conversations with Rich Bennett” podcast on June 21. You can listen here:  https://harfordcountyliving.buzzsprout.com/849097/13076409-trademark-and-copyright-law-with-kaitlin-corey

Kaitlin is a partner at Goodell DeVries where she handles a wide range of intellectual property matters. Contact her at kcorey@gdldlaw.com.

 

Chew on This: Parody of Famous Mark Not Protected by First Amendment or Excluded from Dilution Liability

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On June 8, 2023, the Supreme Court of the United States issued a unanimous decision in the case of Jack Daniel’s Properties, Inc. v. VIP Products LLC, No. 22-148, 599 U.S. ___ (2023), ruling that when an alleged infringer uses a mark as a trademark to designate the source of its own goods, the Rogers test providing First Amendment protection for titles of artistic works does not apply to shield the challenged use from liability for trademark infringement, nor do the noncommercial use and fair use exclusions under the Lanham Act apply to foreclose dilution liability.

Jack Daniel’s makes and sells whiskey using the bottle design and label shown below, which are trademarks of Jack Daniel’s and are covered by several trademark registrations, including “Jack Daniel’s,” “Old No. 7,” the arched Jack Daniel’s logo, the stylized label with filigree (twirling white lines) and the distinctive square bottle design. VIP Products is a dog toy company that makes a line of chewable rubber toys called “Silly Squeakers,” many of which are designed to look like and parody popular beverage brands. Jack Daniel’s found no humor when VIP Products added the “Bad Spaniels” toy to its line (shown below), which is about the same size and shape as a bottle of Jack Daniel’s whiskey and uses the words “Bad Spaniels” in place of “Jack Daniel’s” in a similar font and arch, uses a similar black label and filigreed border, replaces “Old No. 7 Tennessee Sour Mash Whiskey” with “The Old No. 2 On Your Tennessee Carpet” and substitutes “43% poo by vol.” and “100% smelly” for “40% alc. by vol. (80 proof).” VIP’s Bad Spaniels product is packaged for sale with a hangtag (shown below) bearing two logos, one for Silly Squeakers and one for Bad Spaniels, and includes a disclaimer that the product is not affiliated with Jack Daniel Distillery.

Trademark Law - Jack Daniels and Bad Spaniels

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