She might not have 99 problems, but Jay-Z and Beyoncé’s newborn daughter, named Blue Ivy Carter, has already got at least 1 intellectual property problem.

A New Yorker filed a trademark application to the USPTO for “BLUE IVY CARTER NYC” for “infant, toddler, and junior clothing.” Included in the application are photos of the clothes with the BLUE IVY CARTER NYC mark attached. The application claims the date the mark was first used was January 9, 2012. Blue Ivy was born January 7, 2012.

On a side note, I really hope the applicant did not claim that he used the mark as pictured, with the “®” symbol. The “®” symbol in the United States is reserved only for registered trademarks, and misuse is viewed as a type of fraud on the public and punishable by law.

Right of Publicity and False Endorsement

The “right of publicity” is a relative of trademark law, and protects the economic value of one’s name. It stands for the notion that one has the right to control the use of their name for commercial purposes, a notion based in the protection of one’s identity.

“False Endorsement” is a type of false advertising, and U.S. trademark law makes liable “Any person who…uses in commerce any [name], which is likely to cause confusion…to the origin, sponsorship, or approval of his or her goods”.

BLUE IVY CARTER NYC

Ultimately, I highly doubt that the applicant for the “BLUE IVY CARTER NYC” mark will succeed, if it is true that Jay-Z and his legal team are going after those who are capitalizing from his daughter’s name. Even if the application makes it through the USPTO vetting process and a fierce opposition filed by Blue Ivy’s parents, a civil suit could really discourage the applicant in other ways.

Based on the current facts, the case against the applicant is quite strong. Jay-Z, as guardian at litem (I’d be interested in hearing from a family law attorney how this would work in this context), needs only to show that a “likelihood of deception” exists through the use of the BLUE IVY CARTER NYC trademark. Assuming that the applicant’s target market overlap’s Jay-Z’s market, this should not be hard to demonstrate when one considers 1) the uniqueness of the name, 2) the proximity of the date of first use to Blue Ivy’s birth, 3) the inherited fame of Blue Ivy, and 4) the existence of “NYC” in the mark as another link to Blue Ivy herself. I can also see a cause of action for appropriation of name or likeness, usually a state tort law, which makes liable those whose use another’s name for commercial gain.

After Jay-Z is done dealing with this problem, then perhaps he can deal with the recent proliferation of a strain of medical marijuana in California, dubbed “Ivy Blue OG”. Perhaps he would smoke some out of his own curiosity.

- ck

Picture of WIPO Headquarters

The ever-growing amount of business that can be and is being done online is one factor driving the ever-growing need for global protection of trademark rights. The Madrid Protocol is an international treaty which provides one method of registering a trademark in several international jurisdictions through one simplified process. The Protocol is an alternative to the traditional method for a global expansion of trademark rights: filing individual trademark applications in each desired country using local counsel.

The Madrid Protocol allows the holder of a trademark registration in a Protocol country to extend the “home” registration to other Protocol countries. Trademark holders do this by essentially checking off the desired countries and paying a fee. There are currently 84 Protocol countries, and new countries are always joining (New Zealand, India, and Tunisia have all passed legislation in their respective countries to join the Protocol). Filing Protocol applications in foreign jurisdictions does not require foreign counsel.

Procedure and Cost Summary

Using the Protocol to acquire international registrations is effectually extending the trademark rights in the “country of origin”. While any Protocol country can be the country of origin for a Protocol “extension of protection,” the United States will be used as the example.

A trademark applicant to the United States Patent and Trademark Office (USPTO) may choose to extend that application or registration anytime after an application has been made (before and/or after a registration certificate has been issued). A fee is paid to the USPTO, which certifies the application, and send it to the International Bureau, an office maintained by the World Intellectual Property Office (WIPO) in Switzerland. After selecting the countries in which the applicant seeks trademark protection, a fee is paid to the International Bureau. Here are links to the current fee schedule and fee calculator.

The International Bureau then forwards the application to the selected countries’ trademark offices, which then assess the application on more-or-less the same basis they would a domestic application. If the application meets the foreign trademark offices’ requirements, an “extension of protection” is granted in that country. It is important to note that this is not the equivalent of a registration in that country. This will be explained in the next post.

Initial filing costs are based on the number of international classes (listed here with brief descriptions), as well as costs charged by the trademark office of the country of origin. This fee is $100 per class for the USPTO. Keep in mind these are only initial costs, covering only the cost of filing the application.

- ck

Regarding the sale of goods (as opposed to services, which have an easier requirement), a mark is considered to be “used in commerce” if “it is placed in any manner on the goods or their containers or the displays associated [with the products, or if this is not possible,] then on documents associated with goods or their sale….”

When submitting evidence to the USPTO to demonstrate “use in commerce” on a website, the specimen must:

(1) include a picture of the products;

(2) show the mark sufficiently near the picture of the goods to associate the mark with the goods; and

(3) contain the information necessary to order the products.

Remember that “mere advertising” of one’s product with the mark is typically insufficient, whereas “a display associated with the goods” is sufficient. Not only must the mark connect with the product in the minds of consumers, but the consumers must also be provided with enough information so that they can place an order.

In a 2007 case,  In re Valentine Inc., the TTAB considered the fact that a trademark applicant’s website, in addition to pictures of the goods, provided “an on-line catalog, technical information intended to further the prospective purchaser’s determination of which particular product to consider, an online calculator and both a link to, and phone number for, customer service [to place an order]”.

Taking these things into consideration when designing and building your website can help avoid a problem later down the line when you apply for your trademark, especially if you are strictly an online-based business. Make your trademark obvious on your page, with the goal of leaving an impression upon visitors of your mark as they click “add to shopping cart” or pick up the phone to order.

-   ck

We have another case of the “big bad company versus little guy” again, making me think about the amusing South Butt trademark case a few years back when I was in law school (which ended in a confidential settlement, and now the <thesouthbutt.com> website is no longer accessible). I imagine the 18 year old kid’s South Butt clothing company was bought out for a nice sum.

Here, we have Vermont t-shirt company (little guy) “Eat More Kale” against “Chick-fil-A” ($3.5 billion revenue). Chick-fil-A has been sending cease and desist letters to Eat More Kale owner Bo Muller-Moore, citing infringement of Chick-fil-A’s “Eat Mor Chikin” trademark, registered for clothing items, including tshirts. The cease and desist letters are claiming that Eat More Kale activities are likely to confuse the public and dilutes the distinctiveness of Chick-fil-A’s trademark. All the while, this has become huge news, and driving major amounts of traffic to <eatmorekale.com>.

Chick-fil-A is basically claiming that the public which is seeking out “Eat Mor Chikin” apparel is likely to be confused with “Eat More Kale” shirts, the crux behind a likelihood of confusion claim. (also see, the typical likelihood of confusion test). Trademark serve the purpose of letting consumers know the origin or source of a certain product. If a part of the public thinks that Eat More Kole shirts are produced by Chick-fil-A, Chick-fil-A may have a valid claim.

Chick-fil-A is also making a trademark “dilution” claim. The premise of a dilution claim is not that consumers are necessarily confused by the trademark, but rather that the infringer is slowly whittling away the ability of the trademark to be a clear indicator of one source; that the more companies with marks like Eat More Kale are allowed to exist, the weaker Eat Mor Chikin becomes as a trademark.

Here are some of the t-shirts in question:

Eat Mor Chikin

Eat More Kale

Eat Your Kale by Eat Mor Chikin (interesting site, using “Eat Mor Chikin” banner but selling “Eat Your Kale” tshirts. Perhaps this is a parody of the whole situation itself?)

While the artistic design of these shirts are obviously different, a likelihood of confusion case is not based only on the artistic similarities. The effect of the shirts will be analyzed against the “relevant” consuming public.

Regardless of what happens with the case, one thing is for sure: Eat More Kale is selling a lot of t-shirts right now. I think Chick-fil-A didn’t read my blog post on how social media can be the ultimate equalizer against a large legal war chest.

- ck

Some have viewed this as a pointless exercise, citing the fact that these internet IP infringers will simply bounce back with another top-level domain name based somewhere else in the world. While this may be true, I think there is certain value in executing these seizures on the dawn of the largest internet  purchasing frenzy of the year. I bet a lot of people were spared from purchasing faulty and/or counterfeit products, the people who were seeking cheap and fake products still found them on another site anyway, and many infringing internet dealers were pushed back. As with law enforcement in general, it is a war of attrition, and just because they did not win the battle completely, it does not mean it was fruitless.

- ck

A U.S. trademark registration gives one a nationwide right to use their registered mark, and legally prohibits others from using a confusingly similar mark in the States. However, trademark registrants are responsible for policing their registration, not the USPTO or any other government agency.

As a trademark owner, you will want to patrol both the digital world, and the real world, for potentially infringing use of your mark. You do a great service to your brand by regularly making searches of your trademark using the major search engines. Remember to also check for typical misspellings of your trademark as well. If you find anything that concerns you, you should address the problem as soon as possible. In the real world, it is a good idea to subscribe to the major publications in your industry, and to occasionally spend some time looking through the advertisement sections in those publications. At the very least, this keeps you updated on your competition, and you will be able to address trademark problems as they rise.

Of course, these are only two of many do-it-yourself techniques for policing your trademarks. This is an important part of protecting your brand, because if you do not expend effort to protect your brand, the law will see less of a need to protect your brand as well. Avoid the situation where you are suing an unfriendly competitor for clearly stealing your business, and then showing up in court empty-handed when your competitor’s lawyer asks what you have done to enforce your trademark rights (except for filing a lawsuit after two years of infringing use). To find out about a full range of solutions for monitoring your trademarks, contact a lawyer experienced in trademark law and brand management.

As a trademark owner, you have to maintain your rights by regularly checking for unauthorized use of your mark. If you are aware of possible infringement, you have an obligation to address it, sooner rather than later. “Sleeping on your rights” can lead to losing your rights.

- ck

Professional trademark searches can be valuable when you need to know whether your proposed trademark will likely be granted trademark registration by the USPTO; and when you need to know quickly and with some degree of certainty. Basically, if you are about to invest a relatively significant amount of resources into a brand without having a trademark registration, I would recommend first investing in a full professional search report.

This situation commonly arises when a company develops an idea for a brand or company name, and is ready to move quickly with branding and marketing. While a trademark registration typically takes 6-9 months to clear, at best, marketing can be ready much sooner than that. The dangers of moving ahead without a finalized trademark registration can be any of the following, plus more:

• possibly infringing upon someone else’s trademark, and being liable in court for the infringement.
• spending significant amounts of time on marketing efforts, and then finding out you infringed on another trademark
• spending significant amounts of money on web development, stationary, and advertisements, and then ultimately failing to secure a trademark registration
• choosing a brand or company name, and not being able to secure key domain names
• investing many resources into the new brand or company name, encountering any of the problems above, and then having to spend more resources on rebranding

Seal of the U.S. Patent and Trademark Office (for example only)

Registering a trademark in the United States can cost as little as $275 (for the most commonly used “TEAS Plus” application)  in fees to the United States Patent and Trademark Office. However, as with many procedures involving the law and lawyers, the costs can always end up to be significantly more than the low estimate.

In addition to the USPTO filing fee, legal fees for registering a trademark typically range from about $1000.00-$5000.00 USD. Pricing models also differ from firm to firm, but I think a good trademark lawyer should be able to state a flat fee, as well as clearly identify what is and is not included with the flat fee. A reasonable trademark lawyer should include in a basic trademark service the following:

1. A preliminary search of the mark, both in the USPTO database and on the internet in general. This step can only serve the purpose of eliminating major potential problems, as no trademark lawyer should represent that they themselves have the ability to conduct an exhaustive search.
2. If the preliminary search returns no major problems, the lawyer should then file the application with the USPTO, which begins the official process.
3. In about 3 months, a USPTO lawyer will review the application. If there are problems with the application, the USPTO will issue an Office Action, which is a formal statement identifying problems with the application, and usually indicates what is needed to fix the problem. I strongly believe that a good trademark lawyer should include in a flat fee, a set number of hours which the lawyer will dedicate to dealing with simple Office Actions. I typically include 2 hours of my time, and this ensures that simple problems will be resolved without my client having to pay more money.
4. About a month after the application is approved by the USPTO, the application is then submitted for “opposition” for 30 days: published on the internet for anyone to see, and to oppose if they believe they may be harmed by a registration of the mark in the application. As with step 3, small problems may be resolved without too much time (again which I believe a good trademark lawyer should include with a flat fee), but larger problems may occur.
5. About a month after the opposition period ends, or after all oppositions are satisfactorily resolved, a trademark registration will be issued.

I believe clients are generally happy with flat fees, as it helps to maintain some predictability in the process.  However, clients should understand that whether the services offered under a flat fee arrangement are sufficient for their mark to be registered does depend on what is being sought to be registered.

For the mark “App Store”, Apple has been fighting the USPTO and many other companies, including Amazon.com, for years. Of course, legal fees for this mark are definitely in the five-figure range, and likely in the six-figure range. I do not mention this to frighten anyone, but one must consider that Apple has done a cost-benefit analysis of this venture, and has decided to pursue this. Also consider that Apple’s brand alone is worth $153 billion, so they understand the value of investing in their brand.

To conclude, the stronger a mark is, and the more unique it is, the more likely the mark will smoothly travel through the registration process, meaning less money spent on lawyers. The combination of a strong mark and having a lawyer with a flat fee will help you keep your legal expenses in check through this brand-building process.

- ck

In recent days, San Francisco based Twitter has won a few small victories in the never-ending gargantuan effort of establishing and protecting their brand. Yesterday, a WIPO arbitration panel handed over a judgment which will transfer the <twitter.ch> to Twitter from a Swiss cybersquatter, even citing a Swiss trademark registration.

Also, according to an unverified report, Twitter has also cleared up some legal problems which were standing in the way of their U.S. trademark registration applications for the word “TWEET”. Contrary to what many of the articles I have just read on the subject say, the battle for the trademark registration is not over yet. Based on a quick view of the history of the TWEET applications (one and two), it looks like more troubles may be lying ahead for TWEET. More in the next blog post.

- ck

However, courts have held that not all nonuse will lead to abandonment. An interesting series of cases occurred in the 1940’s where courts consistently held that suspension of a use of a trademark due to war would not lead to abandonment of a mark.

In Vaudable v. Montmarte, the famous Parisian restaurant Maxim’s was closed due to German occupation in WWII, and thus suspended it’s wine and catering services in New York, where it operated under the same name. Another New York restaurateur opened a replica of the Parisian Maxim’s in New York City, and the court fell deaf to the restaurateur’s claims that the real Maxim’s abandoned its trademark rights, finding no abandonment of the mark since Maxim’s business continued after the war in 1946. A similar finding on the abandonment-due-to-war issue. occurred in Chandon Champagne Corp. v. San Marino, involving the “Dom Perignon” mark. However, the ultimate result was against the owners of “Dom Perignon.”

Courts have refused to find abandonment in many situations where companies stopped using their trademarks due to outside circumstances: labor strikes, government seizures of foreign based companies, severely low levels of sales, and resource-intensive litigation causing a halt in business operations.

If you find your company needing to temporarily halt your trademark use due to severe outside circumstances, you may still preserve your trademark rights!

- ck