trademarks

Amazon Brand Registry: Add Trademarks To The Cart

Published on

By Vivek Vaidya The retail industry has been revolutionized by online marketplaces. Amazon leads the charge, with programs like Amazon Prime making it easier to purchase products online than going to a brick-and-mortar stores. The rise of Amazon has also caused an increase in counterfeiting, trademark infringement, and the unauthorized resale of products on the… Read More

By Vivek Vaidya

The retail industry has been revolutionized by online marketplaces. Amazon leads the charge, with programs like Amazon Prime making it easier to purchase products online than going to a brick-and-mortar stores.

The rise of Amazon has also caused an increase in counterfeiting, trademark infringement, and the unauthorized resale of products on the platform. Third parties are selling products using the goodwill of others, resulting in lost sales and licensing revenue to the true owner of the brand. Previously, the only option for parties who believed their products were the victims of counterfeiting was to prove the infringement to Amazon. There was no burden on the seller to prove that they were not violating the law. There has also been a growing concern around fraudulent complaints by parties who are not the true owner of a brand.

In an effort to streamline the thousands of complaints filed each day, Amazon has launched the Amazon Brand Registry. The Amazon Brand Registry allows brand owners, manufacturers, distributors, and resellers to control their content and marketing materials, including their titles, product descriptions, and product photographs. Most importantly, successful registration with the Registry establishes a brand owner’s valid ownership of a trademark with Amazon and provides an expediated process for causing Amazon to remove unauthorized sale of products bearing its trademarks. It also serves as a deterrent and a defense against fraudulent complaints.

The threshold requirement for joining the Amazon Brand Registry is trademark registration with the United States Patent and Trademark Office (USPTO). Not only can the store name be registered as trademark with the USPTO, but so can the individual products that are being sold, along with any logos and tag lines that are used. Copyrights registered with the U.S. Copyright Office can also be included, allowing copyright owners to quickly effect the removal of infringing photographs, videos, and other content.

If you sell your goods on Amazon, registering your trademarks with the USPTO and then with the Amazon Brand Registry is extremely important in the new retail landscape, and will provide great return on your investment. The process can be complicated, but we’re here to help with the logistics of protecting your intellectual property on Amazon and beyond. Get in touch with us at info@bendlawoffice.com or (415) 633-6841.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

Read Less

Is GOOGLE Too Generic To Be A Trademark? Well, Let’s “Google it!”

Published on

By: Vivek Vaidya and Nidhi Kaushal Can I get some Kleenex please! Do you have any Aspirin? How about a Q-Tip? Can you Xerox this for me? We often use popular brand names in our daily life as a stand-in for certain products or services. While it may be a company’s dream to turn its trademark… Read More

By: Vivek Vaidya and Nidhi Kaushal

Can I get some Kleenex please! Do you have any Aspirin? How about a Q-Tip? Can you Xerox this for me?

We often use popular brand names in our daily life as a stand-in for certain products or services. While it may be a company’s dream to turn its trademark into a household name, it could also could result in the death of a brand.

A trademark provides protection to the names, slogans, and logos that distinguish a company’s goods and services from others. However, trademarks that become “generic” lose their distinctiveness, and in turn lose their trademark protection. A trademark becomes generic when the general public start identifying similar products or services through that single name. For instance, Kleenex has become a generic term for tissues, and Xerox has become generic for photocopying devices. When the product or service with which the trademark is associated acquires a substantial market dominance or mind share of the public, it can become victim to “genericide.”

Google faced a situation where two individuals, David Elliot and Chris Gillespie, filed a request for cancellation of the GOOGLE trademark on the grounds that it is generic. They claimed that the word GOOGLE has become synonymous with “search the Internet,” and Google should lose its trademark protection.

In May 2017, the case was heard by United States Court of Appeals for the Ninth Circuit. The court ruled that the plaintiffs were unable to show that there is no other way to describe “internet search engines” without calling them GOOGLE. The court reasoned that “not a single competitor calls its search engine a GOOGLE and because members of the consuming public recognize and refer to internet searches engines using other terms, the plaintiffs have failed to show that there is no available substitute for the word google as a generic term”. However, the court of appeals recognized the possibility that over the time a valid trademark becomes the victim of genericization when the name has become an exclusive descriptor that makes it difficult for the competitors to compete unless they use that name.

The case was submitted to the Supreme Court for review. However, in October 2017, the Court declined to hear the plaintiffs’ petition.

Companies spend large amounts of resources to protect and maintain their trademarks. This victory is surely a celebration for GOOGLE and other companies that could fall into the “genericide” trap. However, this issue is on-going, and this case likely marks the beginning of many challenges to the trademark rights of widely used global technology companies.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.  

Read Less

Brewing Likelihood of Confusion: A Look At Coexistence Agreements

Published on

By: Erica Paige Fang When two trademark owners have developed rights to identical or similar marks, they might enter into a coexistence agreement in order to resolve a potential trademark dispute.  The agreement must clearly state in detail the rights of the respective parties and how confusion in the marketplace will be avoided.  Typically, the… Read More

By: Erica Paige Fang

When two trademark owners have developed rights to identical or similar marks, they might enter into a coexistence agreement in order to resolve a potential trademark dispute.  The agreement must clearly state in detail the rights of the respective parties and how confusion in the marketplace will be avoided.  Typically, the goods and services are unrelated, sold in different geographic areas, or utilize different trade channels.

A consent agreement is a type of coexistence agreement that may be entered into the record of a trademark prosecution in order to obtain registration.  The consent agreement usually limits the rights of the party seeking consent, but will not thoroughly address long-term coexistence.   A consent agreement is a declaration that there will be no confusion.  Courts will consider this as evidence there is no likelihood of confusion because the parties entering into the agreement are those who would be most affected by potential consumer confusion.  It is important to know a court can reject a coexistence agreement if it fails to provide sufficient detail regarding avoidance of confusion, or if they believe consumer confusion is unavoidable.

In re Bay State Brewing Company, Inc. (TTAB 2016) the Board determined the consent agreement was not sufficient to avoid confusion and affirmed the 2(d) refusal on likelihood of confusion.  As discussed above, a consent agreement usually carries great weight in the likelihood of confusion analysis.  The consent agreement relates to the market interface between the parties, and is number 10 of the du Pont factors. Here, Bay State Brewing Company (“Applicant”) filed to register TIME TRAVELER BLONDE (BLONDE disclaimed) as a standard word mark for beer, but was refused based on prior registered standard word mark TIME TRAVELER for beer, ale and lager.   The consent agreement limited the applicant to the geographic area of New York State and the New England area, whereas there were no geographic limitations on the Registrant.  The board found the restriction on use only limiting one party effectively allows for simultaneous use by both parties in the same regions, here New York State and the New England area.   Ultimately, the Board determined the restrictions set forth in the parties’ consent agreement would not eliminate confusion in the marketplace.  Further, the Board held the mark TIME TRAVELER for beer, ale and lager is an arbitrary mark entitled to a broad scope of protection.

In re Four Seasons Hotels, Ltd., 987 F2.d (Fed. Cir. 1993), the Federal Circuit found no likelihood of confusion between FOUR SEASONS BILTMORE and THE BILTMORE LOS ANGELES, stating the parties’ coexistence agreement passed scrutiny because the marks were sufficiently different, the services were not identical, and the marks had coexisted in the marketplace for years without confusion.  The Board evaluating Bay State Brewing Company distinguished from this case because the goods, beer, were the identical, and the marks were virtually identical minus the disclaimed and descriptive term for beer, BLONDE.

Parties should weigh future conflicts when considering a coexistence agreement.  Some important considerations include:  1) term of the agreement; 2) rights to license or assign the mark; and 3) potential expansion, particularly into new geographic areas or into new goods and services.  Further, a party should consider whether their mark is arbitrary or fanciful in relating to the goods or services, allowing for a broader scope of protection.   Allowing other coexistence could dilute the mark and weaken the strength of protection.  However, in the right circumstances, a clear coexistence agreement detailing how the parties will avoid likelihood of confusion in the marketplace can help avoid any brewing of confusion, as was the case for the parties in the Four Seasons Hotel.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

Read Less

California State Trademark Protection Could Finally Be Here!

Published on

Guest Author: Erica Paige Fang The current California Model State Trademark Law provides for the registration of trademarks and service marks with the California Secretary of State. It requires the classification of goods and services conform to the classifications adopted by the United States Patent and Trademark Office (USPTO).  This has created a roadblock for… Read More

Guest Author: Erica Paige Fang

The current California Model State Trademark Law provides for the registration of trademarks and service marks with the California Secretary of State. It requires the classification of goods and services conform to the classifications adopted by the United States Patent and Trademark Office (USPTO).  This has created a roadblock for business owners in the cannabis industry because the USPTO will not register a mark with goods and services related to illegal drugs. To date, cannabis is still classified as a Schedule 1 substance by the Drug Enforcement Agency and the Food and Drug Administration.

Section 2(a) of the Lanham Act bars registration of trademarks that consist of or comprise immoral, deceptive, or scandalous matter.  15 U.S.C. § 1052(a).  The Examiners at the USPTO have rejected as scandalous and immoral several trademark applications related to illegal drugs, citing the adverse health effects of drug use and the classification as a Schedule 1 substance.  California has refused state registration for cannabis related trademarks and service marks on the same basis.  California Assembly Bill 64 looks to change this and allow a certificate of registration that is issued on or after January 1, 2018 for marks related to medical and nonmedical cannabis goods and services that are lawfully in commerce under state law in the State of California.  The Bill proposes to add Section 14235.5 to the California Business and Professions Code, listing the following classifications that may be used for marks related to medical and nonmedical cannabis goods and services:  (1) 500 for goods that are medical cannabis, medical cannabis products, nonmedical cannabis, or nonmedical cannabis products; (2) 501 for services related to medical cannabis, medical cannabis products, nonmedical cannabis, or nonmedical cannabis products.

Up until this point cannabis businesses have been at a disadvantage because they cannot protect their brand.  This downfall has lead to trouble securing investors and growing the businesses.  The other recreational states, Washington and Oregon, have passed similar legislation to offer trademark protection to cannabis businesses in their respective states.  If AB-64 passes, cannabis businesses will want to have acceptable specimen of use ready and a way to date it back to the first use in commerce in order to make registration as smooth as possible.

AB-64 also looks to restrict the advertising of medical and non-medical cannabis and cannabis products.  Proposition 64 that was passed in November 2016 included some advertising restrictions, prohibiting the placement of billboards advertising cannabis that are located on an interstate highway or state highway that crosses the boarder of any other state.  AB-64 would expand this restriction to prohibit advertising on all interstate and state highways.  So while AB-64 may allow the State to grant trademark protection, where companies use that mark to advertise will have to comply with the state’s restrictions.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

Read Less

The Five Steps To Obtaining A Trademark

Published on

Trademarks are often an important investment in protecting the intellectual property of your business. Obtaining a trademark involves five steps: 1.  Search For Conflicting Trademarks Your first step is to make sure there are no conflicting trademarks. You should search on the United States Patent & Trademark Office’s website to see if there are any… Read More

Trademarks are often an important investment in protecting the intellectual property of your business. Obtaining a trademark involves five steps:

1.  Search For Conflicting Trademarks

Your first step is to make sure there are no conflicting trademarks.

You should search on the United States Patent & Trademark Office’s website to see if there are any conflicting trademarks that have already been registered.

You should then work with an attorney to run a more comprehensive search. Even if a trademark has not been registered, it could still have superior intellectual property rights over your trademark if it was in use first.

Note: if the USPTO rejects your application due to a conflict with an existing mark, it will not refund filing fees.

2.  Date Of First Use

Once you have confirmed there are no conflicting trademarks, you will need to complete a trademark application.

You will need the following two dates to complete the application:

(i)                 Date of First Use of Trademark In Commerce Anywhere.

You will need to include the date you first used the trademark “in commerce anywhere.”

(ii)                Date of First Use in Interstate or Foreign Commerce.

You will also need to include the date you first used the trademark in interstate commerce or commerce with a foreign country.

3.  Trademark “Specimen”

The trademark application also requires a trademark “specimen” – an image showing the trademark being used in commerce in the class of goods or services for which you are applying for the trademark.

4.  Class Of Goods & Services

You will need to select the class of goods or services you would like to register the trademark.

You should be strategic in selecting the class of goods or services to register the trademark, as there is an additional filing fee for each class of goods or services in which you register the trademark.

5.  Contact Address

Finally, you will need to include a contact address for the trademark registration.

It is important to remember that anyone can view this address if they search for the trademark on the U.S. Patent and Trademark Office’s website once the trademark application has been filed.

If you have any questions or would like help obtaining a trademark for your business, please contact us at (415) 633-6841 or info@bendlawoffice.com.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.

Read Less