Posts made in October, 2013

David Versus Goliath in Whiskey Bottle Showdown

Posted by on Oct 29, 2013

One of the iconic, uniquely American products out there is Tennessee Whiskey.  With rugged, outlaw roots stemming from the days of moonshining and prohibition but now accepted the world over as a highly sought after beverage, even the term Tennessee Whiskey tends to evoke a certain image, perhaps even a certain nostalgia. Certainly these mental images, or customer associations in trademark-speak, can give rise to legal problems.  One such case was recently filed by Jack Daniel’s, maker of the iconic black-and-white labeled bottles of Sour Mash whiskey found in bars and restaurants the world over.  In their lawsuit for trademark infringement, the holders of the Jack...

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The Trademark Registration Process Part 3

Posted by on Oct 22, 2013

In Part 2 we looked at the process for obtaining Federal registration of a mark.  Today we conclude with some miscellaneous, but still important, issues in trademark registration. State Registration The first is state registration.  State registration is not as ‘strong’ as federal registration, mainly because there isn’t the kind of strong examination for conflicts with prior marks or abandoned or cancelled marks that there is via the USPTO examination.  However, there is one good reason to obtain state trademark registration – the idea of putting others on notice.  State registration is often very fast – a matter of weeks, instead of the six to twelve...

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Can a Government Entity Trademark their Insignia?

Posted by on Oct 15, 2013

Today we look at an interesting case, In Re City of Houston, before the United States Court of Appeals for the Federal Circuit.  This case consolidated two cases, one brought by the city of Houston, Texas, and the other by the government of the District of Columbia, that asked the same basic question.  In both cases the local governmental entity sought federal trademark registration of their official insignia, e.g. their seal. Background of the Cases Both Houston and DC sought to trademark their seals as a moneymaking and merchandising endeavor.  The United States Patent and Trademark Office (“Trademark Office”) refused both registrations.  The reason cited by...

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The Trademark Registration Process Part 2

Posted by on Oct 8, 2013

Once the use in commerce (or intent to use) requirement is satisfied by the aspiring trademark registrant, the next step is to file an application for Federal registration with the United States Patent and Trademark Office (“USPTO” or “Trademark Office”).  The use requirement is referred to as the “basis for filing” by the USPTO. Trademark Application The application covers formalistic requirements that identify both the filer and necessary details about the trademark.  For instance the name of the filer, correspondence address, drawing of the mark, type of goods/services, dates of use, color features, and sound features are all features of an...

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The Trademark Registration Process – Part 1

Posted by on Oct 1, 2013

How does one go about registering a trademark?  What are some of the requirements in order to obtain protection?  There are many steps and several issues to consider, but overall the process is not arcane or excessively complicated (unlike, for instance, the steps necessary to obtain a utility patent).  Federal Trademark registration is handled by the United States Patent and Trademark Office. Trademark Search To be registrable, a trademark cannot already be owned by someone else.  Thus the first step is to conduct a trademark search.  Various private companies and even some attorneys offer trademark search services and will generate for you a search report. ...

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