Is your trademark "fanciful"?

Is your trademark "fanciful"?

If there is one question that is not asked enough in the realm of intellectual property, it is, “Is your trademark you are considering strong enough?” Trademark registration is granted on a number of bases, one of the most important being the relationship of the mark to the goods and services. It is essential to find a mark as unrelated as possible to your business’s goods or services for the best trademark protection. That relationship, in turn, has an effect on the “strength” of the mark and, therefore, the mark owner’s ability to take advantage of the rights and privileges granted by registration.

There are four categories of word marks which can be registered. 

1) Fanciful - the strongest trademark. The mark has no relation to the business’s goods and services, and that creates a presumption that the mark’s existence is owed to them. Kodak, Polaroid, Kleenex, Twizzler, M&M’s, Snickers, Linux, and Google are examples of fanciful trademarks.  They are unique, made-up words created as trademarks that had no bearing on the related goods (cameras, tissues, candies, computer operating systems, and web site indexing tools).

2) Arbitrary – a strong mark, but weaker than a fanciful mark. The mark has no relation to the product, but the word already exists. “Apple” and “all,” for example, are real words, but there is nothing about Apple or All that might lead a prospective purchaser to associate those words with computers or laundry detergent.

3) Suggestive - the mark suggests something about the product; however, the connection between the mark and the goods or services must still not be completely obvious. Frigidaire, iPad, Xerox, Walkman, and Mercury are examples of marks “suggesting” goods associated with cold air (refrigerators), pads to write on (hand-held computing devices), equipment used in xerography (copiers), a man walking about (portable, personal stereos), and getting somewhere as fast as a Roman god’s messenger (motors, e.g. outboard motors for boats).  Note that some of these examples are unique, made-up words.  However, their lexicographic origins “suggest” something associated with the prefix or suffix.

4) Descriptive - the mark describes the product. This is a very weak trademark that requires "secondary meaning" in order to gain trademark protection. Most descriptive marks do not gain trademark protection. The mark owner must prove that the public can identify that the product comes from the mark owner. The slogan, “The milk chocolate melts in your mouth, not in your hands” is descriptive of any chocolate candy coated with a hard shell, but after many years of continuous use the consuming public associated that slogan with M&M’s chocolate candies, entitling the maker to registration.

Two categories of terms that won’t be accepted for registration are worth mentioning.  Obscenities will be rejected.  A registration application will inevitably be rejected if the word(s) is Generic – words that are the same or equivalent to the goods or services.  These words can never be registered as trademarks, and they are given no protection whatsoever.  Remember that trademarks tell the purchasing public the source of the goods and services, and generic terms can’t convey that information because the source is not distinguishable from other business sources if the mark is generic.  It is also important to keep in mind that it doesn’t matter whether the generic terms are real words or made up words. For example, “apple” is a real word, and Apple was acceptable for registration in connection with computers, but that word may never be the trademark of a grower or seller of apples.  Girlgear is an example of made-up word, but it still can’t be registered as a trademark of athletic apparel (also known as gear) for girls.

These concepts must be kept in mind when considering the right name for marketing purposes in order to develop a trademark that’s just right for each business’s image.

Ironically, some trademarks become generic words.  Aspirin, cellophane, escalator are examples of words that started as trademarks, but have become a part of the vernacular.

The FTC won’t fine my company for violations of advertising laws, right?

The FTC won’t fine my company for violations of advertising laws, right?

Wrong.

Recently, the FTC settled with several companies that one person owned over the amount of minutes received in purchasing calling cards.  The FTC charged in a complaint filed in the U.S. District Court for the District of New Jersey that consumers who purchased the calling cards did not receive the promised amount of minutes per card.  The FTC alleged that the cards delivered an average of only 45% of the advertised minutes due to extra fees.  Those extra fees could be found on the cards, but they were in fine print that was difficult to read. 

The FTC claimed that the agency tested the cards extensively, and that 139 of 141 cards failed to deliver the number of minutes advertised on the point-of-sale posters.  The FTC also alleged that the cards had hidden fees, such as “hang-up” fees and weekly fees. 

All of this is defined as deceptive marketing of the products (calling cards) in violation of the Federal Trade Commission Act, 15 U.S.C. §41.

Instead of fighting the FTC allegations, the New Jersey companies decided to settle.  They agreed to a Consent Order with the FTC, which is an agreement with the FTC in which a company will change its behavior in some manner in order to conform to FTC regulations.  These changes include:

·         Paying a fine of $2.32 million;

·         Being barred from misrepresenting the amount of time consumers will receive from prepaid calling cards;

·         Being required to clearly and prominently disclose any fees or charges; and

·         Needing to routinely monitor the advertising materials displayed by their distributors and the number of minutes of talk time their prepaid calling cards deliver to consumers.

Obviously, the difficult part of this settlement is the amount of the fine.  $2.32 million is a lot for a small company to pay.

More can be read on the FTC’s website at: http://www.ftc.gov/opa/2012/02/millennium.shtm

How can my company avoid these FTC fines?

Ultimately, this answer depends upon your business.  To say “avoid being deceptive” is simplistic and yet exactly what every business must do.  Businesses make claims in advertising.  Those claims must have substantiation.  To substantiate (i.e., back up) the claims in your advertisements means utilizing expert testimony, extrinsic evidence, tests, studies, etc. in advertising. This is so whether the type of claim you're making, or plan to make, is express or implied. Yes, you should be aware of what your ad may imply. So review your ads carefully--preferably with a lawyer with expertise in this area--and be sure that you can back up your ad claims.

Anthony's CLE class schedule

We at Kravitz & Verna LLC would like to thank the Rutgers Law School-Camden (Anthony's alma mater) and the Jenkins Law Library for recognizing Anthony as knowledgeable in intellectual property.

Anthony Verna CLE Lecture Schedule:

Rutgers Law School - Camden:        September 24, 2012            http://rutgerscle.com/         3.0 Credits

Jenkins Law Library:                          October 3, 2012                   http://bit.ly/AVCLE            1.0 Credits

Anthony Verna to lecture at a CLE class

Anthony Verna to lecture at a CLE class

Anthony Verna is teaching a Continuing Legal Education (CLE) class in Philadelphia at the Jenkins Law Library on copyright law basics.  We at Kravitz & Verna LLC would like to thank the law library for recognizing Anthony as an expert in an area that even many attorneys misunderstand.  Please visit http://bit.ly/AVCLE for more information on this CLE session.

Is your trademark "fanciful"?

Is your trademark "fanciful"?

If there is one question that is not asked enough in the realm of intellectual property, it is, “Is your trademark you are considering strong enough?” Trademark registration is granted on a number of bases, one of the most important being the relationship of the mark to the goods and services. It is essential to find a mark as unrelated as possible to your business’s goods or services for the best trademark protection. That relationship, in turn, has an effect on the “strength” of the mark and, therefore, the mark owner’s ability to take advantage of the rights and privileges granted by registration.

There are four categories of word marks which can be registered. 

1) Fanciful - the strongest trademark. The mark has no relation to the business’s goods and services, and that creates a presumption that the mark’s existence is owed to them. Kodak, Polaroid, Kleenex, Twizzler, M&M’s, Snickers, Linux, and Google are examples of fanciful trademarks.  They are unique, made-up words created as trademarks that had no bearing on the related goods (cameras, tissues, candies, computer operating systems, and web site indexing tools).

2) Arbitrary – a strong mark, but weaker than a fanciful mark. The mark has no relation to the product, but the word already exists. “Apple” and “all,” for example, are real words, but there is nothing about Apple or All that might lead a prospective purchaser to associate those words with computers or laundry detergent.

3) Suggestive - the mark suggests something about the product; however, the connection between the mark and the goods or services must still not be completely obvious. Frigidaire, iPad, Xerox, Walkman, and Mercury are examples of marks “suggesting” goods associated with cold air (refrigerators), pads to write on (hand-held computing devices), equipment used in xerography (copiers), a man walking about (portable, personal stereos), and getting somewhere as fast as a Roman god’s messenger (motors, e.g. outboard motors for boats).  Note that some of these examples are unique, made-up words.  However, their lexicographic origins “suggest” something associated with the prefix or suffix.

4) Descriptive - the mark describes the product. This is a very weak trademark that requires "secondary meaning" in order to gain trademark protection. Most descriptive marks do not gain trademark protection. The mark owner must prove that the public can identify that the product comes from the mark owner. The slogan, “The milk chocolate melts in your mouth, not in your hands” is descriptive of any chocolate candy coated with a hard shell, but after many years of continuous use the consuming public associated that slogan with M&M’s chocolate candies, entitling the maker to registration.

Two categories of terms that won’t be accepted for registration are worth mentioning.  Obscenities will be rejected.  A registration application will inevitably be rejected if the word(s) is Generic – words that are the same or equivalent to the goods or services.  These words can never be registered as trademarks, and they are given no protection whatsoever.  Remember that trademarks tell the purchasing public the source of the goods and services, and generic terms can’t convey that information because the source is not distinguishable from other business sources if the mark is generic.  It is also important to keep in mind that it doesn’t matter whether the generic terms are real words or made up words. For example, “apple” is a real word, and Apple was acceptable for registration in connection with computers, but that word may never be the trademark of a grower or seller of apples.  Girlgear is an example of made-up word, but it still can’t be registered as a trademark of athletic apparel (also known as gear) for girls.

These concepts must be kept in mind when considering the right name for marketing purposes in order to develop a trademark that’s just right for each business’s image.

Ironically, some trademarks become generic words.  Aspirin, cellophane, escalator are examples of words that started as trademarks, but have become a part of the vernacular.

Featured in another e-newsletter

I want to thank Frank Rotella and Rofami, Inc., for featuring an article of mine in a recent e-newsletter of theirs.

http://rofami.com/mainnewslettertopicdidyouknow.htm

"Valuable Trademark Tips from an Experienced Attorney"

Thank you, Frank, for allowing me to share my expertise in this area.

Should you use a sweepstakes or other promotion to increase sales?

Promotion devices such as sweepstakes, contests, coupons, gift cards, gift certificates, rebates, giveaways and the like are respected and successful means of garnering customer loyalty and improving sales.  But the days when a company can just “crank one out” are long gone.   Promotions today are subject to regulations in every state and the District of Columbia, and territories such as Puerto Rico.  And more and more federal laws are touching on these topics.  There are traps for the unwary depending on the kind of business (e.g., dairy, tobacco, alcohol, gasoline/fuel, retail, or association with a charity), the size of the promotion (e.g., if a sweepstakes prize is more than $5000 it needs to be registered and bonded in certain states), the duration or expiration of the benefits (some minimums now apply), and who can participate (special rules apply to promotions to children under 13, while others are limited to adults). 

And then there’s the question of what data businesses can collect and what they can do with it. 

Don’t be afraid to promote your business, but do it with a comfortable knowledge of the rules of the road.  In the coming months we’ll tell you about some of the issues you need to know.

It's a Crazy Intellectual Property World

It's a Crazy Intellectual Property World From Apple trying to register a trademark of "App Store" to Apple suing someone for selling white iPhone kits, to CBS being the subject of a lawsuit for copyright infringement; it is a crazy intellectual property world. Do not wade through the waters of intellectual property alone - let's go through some of the difficult stories. Apple's "Appstore" Trademark I do not believe that Apple will be able to either register "Appstore" or "App Store" as a trademark or successfully win its lawsuit for trademark infringement against Amazon.com. This is because many people for years have been using "app" as a shortened form for the word "application." To me, "app" is a generic term and "store" is a generic term used for "a store in which one buys applications." As the story says, "the threshold that businesses must cross in order to avoid being deemed to use a generic term" will be decided in these cases. " CBS and CNET are sued A coalition of artists have sued CBS and CNET for wilfully facilitating copyright infringement. According to the suit, CBS and CNET received advertising revenue when users of the Limewire peer-to-peer downloading system downloaded unauthorized copies of work. http://www.pcmag.com/article2/0,2817,2384913,00.asp Do not forget my speaking engagement: I will be speaking on June 2, 2011 at 6:00 PM to the Executives Club of New Jersey. The topic is Trademark, Copyright and Advertising Law Thoughts for Small-to-Medium Business. It will be jam-packed with thoughts and ideas. Please come. RSVP by clicking this link: http://bit.ly/mN4Nd6

Apple II Apple has filed suit against a small company run by a teen that sells conversion kits to make your iPhone 4 white. To me, it seems more of an issue of trade dress than trademark infringement, though the website's name does use iPhone.

I hope you will be able to come out to see me speak!

I hope you will be able to come out to see me speak!

Executives Club of New Jersey I will be speaking on June 2, 2011 at 6:00 PM to the Executives Club of New Jersey. The topic is Trademark, Copyright and Advertising Law Thoughts for Small-to-Medium Business. It will be jam-packed with thoughts and ideas. Please come. RSVP by clicking this link: http://www.meetup.com/ExecutivesClubNJ/events/17542263/

Hangover II/Tattoo I am sure many of you heard of the conflict between the producers and creators of "The Hangover Part II" and the tattoo artist that designed Mike Tyson's infamous facial tattoo. The artist has sued the producers and creators for copyright infringement. The first question is if a tattoo deserves a copyright. This will probably come down to the medium upon which the design is fixed. I am sure no injunction will be given, though, and we can all go to the movies this weekend. http://bit.ly/lQd9RW

Sweepstakes Have you noticed the proliferation of sweepstakes and contests? I picked up a Nesquick bottle with a sweepstakes. I received an e-mail from the New York Islanders about a sweepstakes. What other companies are holding sweepstakes? http://fb.me/Xi3heVwY

Continuing to visit and update

Just as in the last update, I have been out visiting companies. This time, it was to Toy Fair 2011. I met with many interesting businesses of many different sizes. I also tried out many new toys - all were different. (And I did

I truly am excited about small business continuing to develop and innovate.

The development means that there are more ideas coming to fruition and that means more trademarks and copyrights to protect. It also means more advertising to be vetted. It is important to not forget these components to any business, especially in one where intellectual property and advertising is the business.

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Trademark infringement is high in China - not because of counterfeiting (which is a different issue) - but because of a lack of knowledge of the trademark process. I see it often in the United States, too.

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I am reminded that I spoke to someone recently who asked about a trademark registration. He said that he budgeted for placing the advertisement with a radio station. So, now, his company's trademark and advertisement were out in the ether, in use, but not vetted by an attorney. How does the company know that the mark does not infringe others or if the advertisement passes truthfulness, not misleading, and federal regulations?

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Ford sues Ferrari for trademark infringement, as Ferrari planned to call its newest race car the F150. Ferrari backed off and proposes the use of "Ferrari F150 Italia" instead.

What I like here is the idea that more words in a trademark means that two marks that could be similar really are different: the target markets are different, the goods (while in the same industry) are different, and the marks themselves are different enough so that both can exist.