Monday, September 28, 2009

A Book Review

There are a number of good books for lawyers covering trademark law. One book that I believe is useful for both lawyers and laypersons alike is Trademark Law: A Practitioner's Guide by Sigrun D. Kane. The book is published by the Practising Law Institute, 810 Seventh Avenue, New York, New York 10019 and is currently in its fifth edition. It provides a good overview of the law and is full of practical advice. The book gives the reader insight into the world of trademarks in an accessible, user friendly way. There are illustrations to explain many of the concepts and conflicts discussed in the book.

The book gives insight into the workings of both the Trademark Office and the Trademark Trial and Appeal Board. It is not a substitute for legal advice, but it can give a leg up.

Monday, September 21, 2009

A Useful Site

There are a number of useful trademark oriented websites. One worth checking out is This site facilitates a search of the Trademark database located at The search available throught the Trademarkia website is no subsitute for a more thorough search, but is is a good place to start.

I will periodically highlight other useful sites.

Friday, September 18, 2009

The Care and Feeding of Trademarks

Once you have a federally registered trademark, and are a proud recpient of the certificate complete with gold seal, your job is not done. There is periodic upkeep, such as filings with the Trademark office between the 5th and 6th years. It is important to continue to use the trademark in commerce, as abandonment can be found from lack of use. If you expand the good or services you provide under the trademark, consider filing a new application for them.

In addition to the above, you should, at the very least, make regular searches of the USPTO Trademark database to determine if any competing trademark applications have been filed. While the USPTO will regularly refuse to register what it believes are conflicting trademarks, it doesn't catch everything. Early contact with the owner of the proposed trademark may avoid a costly dispute.

Friday, September 11, 2009

Intent to Use Registrations

Say you have a great name for a product in development, but you are not ready to go to market with it. Even though you are not yet using the name in commerce, you can still preserve your priority by filing an "Intent to Use" application with the Trademrk Office. You need to have a bona fide intent to use the trademark, and there are some time limits on the life of an intent to use application, but it can be a great way to secure rights for that great product in the making.

Thursday, September 10, 2009

Kool-Aid versus Kool

For the past 75 years, Kool-Aid(R) has been a staple of summer time rereshment stands (I sold a gallon or two myself in my day) and an American icon (Jim Jones, notwithstanding). An upstart, with the name of "Kool", tried to get a trademrk for "Non-alcoholic beverages, namely carbonated beverages". Kraft Foods Global Brands, LLC, the owner of the Kool-aid trademark, opposed the "Kool" registration.

Faced with an ocean of evidence (including 450,000,000 gallons of Kool-Aid consumed per year), the Trademark Trial and Appeal Board had no difficulty in sustaining the opposition (TTAB opposition #91186494) in a decision dated August 20, 2009.

The proponent of the Kool mark attempted to distinguish its proposed mark and product from the Kool-Aid line, but was unsuccessful. There were just too many similarities for the TTAB to swallow.

Tuesday, September 8, 2009

Trademark law for Artists


Fine art has long enjoyed copyright protection. The law recognizes the right of a painter or sculptor to the following exclusive rights set forth in Section 106 of the Copyright Act (17 USC § 106 (1)):

1. The right to reproduce the art work.

2. The right to prepare derivative works based on the art work.

3. The right to distribute copies of the art work to the public.

4. In the case of audio visual works (i.e. performance art), the right to perform the work publicly.

5. The right to display the copyrighted work publicly.

Section 106 provides the legal basis for an artist to stop the distribution of unauthorized copies of her work. The sale of a painting, absent an assignment of the right to reproduce the work, does not give the purchaser the right to make copies. This is true even where the work was commissioned by the owner.

At times, however, copyright protection fails. While it is clearly impermissible to exactly copy a specific work by an artist, what about the artist's style? Would Dali have a protectable interest in his melting watches? It should be remembered that, while copyright law provides protection for creators of works of art for limited periods of time, the goal is to promote creative works for the benefit of the public. Once the artist's limited but exclusive period of time has passed, the work is in the public domain. At that point, anyone is free to make copies of and profit from the work.

Trademark law provides another potential source of protection for an artist. In the case of Romm Art Creations, Ltd., et al. v. Simcha International, Inc., 786 F Supp. 1126 (1992), the U.S. District Court for the Eastern District of New York considered the following: Itzchak Tarkay was an Israeli artist of international renown with a particular style. One of his lines was known as "Women in Cafes." The plaintiffs in this case had the exclusive right to distribute posters of that line. Patricia Govezensky was also an artist. She began to produce very similar posters to Tarkay's. When she persisted, the plaintiffs brought suit against her and her distributors claiming a breach of the Lanham Act.
Section 43 (a) of the Lanham Act, 15 USC § 1125 (a) provides a statutory remedy for trademark or trade dress infringement and unfair competition to a party injured by a competitor's false designation of the origin of its product (passing a product off as someone else’s work), whether or not the aggrieved party has a registered trademark…. In short the Lanham Act provides civil redress to one damaged by unfair competition through false or misleading advertising and/or trademark or trade dress infringement. Id., at page 1133-34. In this context, the Lanham Act is designed to prevent unprivileged imitation and the copying of the appearance of a product. In order to prevail, the plaintiff (Tarkay’s distributor) had to establish that the trade dress of the Tarkay work (in essence, appearance):

1. was non-functional (not part of the necessary utility of the object);

2. had acquired secondary meaning (i.e. was recognizable as a Tarkay); and

3. there was a likelihood of confusion as to the source of the competing products.

In making its decision, the Court considered both greeting card and book cover cases, each of which found a Lanham Act violation. Hartford House, Ltd. v. Hallmark Cards, Inc., 846 F.2d 1268 (10th Cir. 1988) and Harlequin Enterprises Ltd. v. Gulf & Western Corp., 644 F.2d 946 (2nd Cir. 1981).

The Court in this case found, on the basis of the following, that Tarkay had a protected trade dress in the style of the "Women in Cafes" series:

1. His works entered the market prior to the defendant's.

2. His paintings met the criteria of an arbitrary or fanciful trademark based on their distinctive visual impression.

3. There was a likelihood of confusion between the works of Patricia and Tarkay.

4. There was evidence of actual confusion.

5. Patricia had the opportunity to view Tarkay's work.

The Court issued an injunction preventing the sale of Patricia's work.

This case has been criticized yet remains good law. It, along with the Hallmark and Harlequin cases, provides support for artists who have developed unique styles.

Thursday, September 3, 2009 is the website for our law firm. You can find out more about me and what we do there. Pay a visit!

Tuesday, September 1, 2009

Do it yourself Trademark search

To be successful in registering a trademark, it is important to select one that is not already in use for the goods or services you offer or intend to offer. The simple searching described here is no substitute for a fromal trademark search, but can certainly help you determine if there are any ready conflicts.

Start with a Google search (or use the serch engine of your choice) of the words you intend to use, linked with the goods or services you intend to offer. Be creative and persistent in searching. if you find an obvious conflict, it is probably best to come up with a different word or phrase (if you have been using the word as a trademark for some time, you may have priority over other users, but tis can be a costly road to follow.)

If the Google search reveals no conflict, check with the U.S. Patent and Trademark website at Go to the Trademark section and start with a simple search. Select Search TM Database (TESS), then new user form basic. hit the button for "live" marks, then type in the proposed trademark as a search term and see what comes up. if you get a list of uses, you need to look at the results to see if there is a problem. if you want to try it, I suggest using "Acme", the manufacturer of choice in virtually every Road Runner cartoon. when I did it, 135 records were found. If your use of Acme were unique, there is a good chance you can use it as a trademark.

Hiring an attorney to help with the process is not a necessity, but certainly a good idea.