TradeMark Express Blog: All Things Trademark

2009-11-11T07:54:00.000-08:00

Trademarks for the Troops

A hearty THANK YOU from all of us at TradeMark Express to our troops.

Since it's Veteran's Day, I thought it'd be nifty to take a look at filed trademarks that are about the vets.

Hope for Veterans is owned by Community Hope and "is a transitional housing program...to provide a safe, supportive environment wherein former servicemen and women can start rebuilding their lives." Find out more about them here.

Recruit Veterans "is a service-disabled veteran owned and operated staffing and recruiting firm." Read more about them here.

Thank a Vet is a pending trademark for a clothing line. Buy the clothes here.

2009-11-10T07:25:00.000-08:00

Trademarkia

Launched in September of this year, Trademarkia is a free, incredibly easy to use search engine that allows users to search the USPTO database of Federal trademarks, be they live or dead.

Two of my favorite features:

* Logo Themes: The USPTO does offer the capability to search logos on their site but it's a bit cumbersome. Here's an article about how one can do so. But Trademarkia's interface is much easier & really, it's just neat to browse through logos.

* Trademark Categories: aka Goods/Services Each classification is accounted for here & each has it's own snazzy design leading you into the International Classification. Once you're in a class, you can then look at Federal trademarks alphabetically.

Now it should be said that while Trademarkia is super snazzy, very easy to use & just overall cool looking -- this is a search of the Federal trademarks ONLY, meaning we're missing State trademarks & Common-Law databases.

Also another thing I noticed is in conducting my SAM test, the engine seems to work pretty similar to the USPTO, which means the user will need to be sure to check all possible variations of the mark when conducting this preliminary search.

SAM Test

USPTO Flaw #1, Sound: Trademarkia, like the USPTO, brings up 3 marks for IShine but not Ice Shine.
USPTO Flaw #2, Appearance: Again, same results as the USPTO - Trucool but not Turcool
USPTO Flaw #3, Meaning: This one was a bit odd as Trademarkia resulted in only 1 hit whereas the USPTO comes up with 23. Not sure what happened there.

Even given the above, I still strongly recommend folks use Trademarkia as a preliminary clearance Federal trademark search engine. It's far & above easier to use than the USPTO. Then once your mark clears that preliminary step, you can move on to the comprehensive part of the trademark process.

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2009-11-04T12:24:00.000-08:00

Distinctiveness & Descriptiveness Continuum

Here's a visual snapshot of the USPTO's Distinctiveness & Descriptiveness Continuum. Click to view a larger version. I hope it makes the PTO's guidelines a little clearer plus I like charts, graphs & whatnot :)

So far I've written about merely descriptive marks so I'll be sure to hit the other sections & re-post this visual with links to each new post.

2009-10-29T13:41:00.000-07:00

Descriptive Trademarks

The title here is a bit misleading as descriptive words are not typically allowed to be registered on the USPTO’s trademark Principal Register. Let’s back up a little...

One of the main points (some would argue THE main point) of having a Federal trademark is to have exclusive rights to a name, a logo or a slogan within your industry. Given that, words that “merely describe” the goods or services are not going to be allowed.

There are two main reasons the USPTO provides:

1) “to prevent the owner of a mark from inhibiting competition in the sale of particular goods”

What this means: The owner of the descriptive word(s) can’t trademark it as it could create a stranglehold, of sorts, on the word(s) within the industry. For instance, the word “trademark” is disclaimed on our Federal trademark registration on TradeMark Express, meaning we’re not claiming exclusive rights to the word “trademark” as it’s a descriptive word for our industry.

2) “to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products”

What this means: People should have the freedom to use descriptive words in advertising or in describing their goods/services. Using the example above, other companies offering trademark services should be able to use the word “trademark” to describe their services, in their advertising, etc.

So How do I Know if my Name is Descriptive?

As with anything trademark, it’s never black & white. Each situation is going to vary from the next. The basic litmus test is “does this word describe the product and/or service?” and if the answer is yes, then you’ve most likely got a descriptive name on your hands.

It is not necessary that a term describe all of the purposes, functions, characteristics, or features of a product/service to be considered merely descriptive; it is enough if the term describes one significant function, attribute, or property.

Here are some examples provided by the USPTO:

• APPLE PIE held merely descriptive of potpourri (most likely because the words describe the scent)
• BED & BREAKFAST REGISTRY held merely descriptive of lodging reservations services
• MALE-P.A.P. TEST held merely descriptive of clinical pathological immunoassay testing services for detecting and monitoring prostatic cancer

If you’d like help determining if your name is descriptive, please leave a comment or email me at dc@tmexpress.com

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2009-10-29T11:29:00.000-07:00

Brainstorming Tips for Creating a Business Name

Here's a few things to keep in mind:

1) Keep your industry, your clients/customers, your advertising plan in mind.

2) The more unique & distinctive a name, the higher the chances that the name is legally available for use. And the higher the chances of obtaining the trademark.

3) Think of your business as having a personality. What kind of image do you want your business to portray?

Specific brainstorming tips:

Think about what you want but more importantly, think about what you DON'T want. If you don't want a 3-word name, don't bother with those. If you don't want non-English words, don't bother with those & so on and so forth.

What are the "types" of names you like? Think about words in their simple forms, e.g. adjectives, Latin roots, mythological names, etc. Compile a listing of the types & then seek out resources, such as books or sites, which specialize in those types.

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2009-10-27T11:49:00.000-07:00

Free Preliminary Trademark Search

TradeMark Express implemented a new service recently - ONE free preliminary USPTO search completed over the phone with you. We always conduct a preliminary USPTO search before we start comprehensive search but this new feature does NOT require that an order be placed first.

If you'd like your ONE free preliminary USPTO trademark search, contact me: shannon@tmexpress.com; Contact Page; 800.340.2010

2009-09-28T07:47:00.000-07:00

Twitmark Express

TradeMark Express has joined the twitter party finally. I've been toying around with the idea for awhile and finally got around to it.

Follow me at TradeMarkExpres

Tweet you later!

2009-09-22T14:46:00.000-07:00

Trademark International Class: Class 36 (Insurance and Financial Services)

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2009-09-22T09:14:00.000-07:00

Trademark International Class: Class 35 (Advertising and Business Services)

All goods or services are categorized within International Classes (IC hereafter). Goods run from classes IC 1-34, while Services are in IC 35-45. Please see a complete chart here. Let's take a closer look at one of these trademark classes – class 35.

What is International Class 35 All About?

Each class has a short title heading that gives a snapshot of what that class is all about -- IC 35's short title is advertising and business services. Pretty vague, eh? The USPTO has 1476 accepted descriptions that fit into IC 35; check them out here.

The first part of IC 35’s description, advertising, is straightforward. If it’s advertising, marketing or promoting services that are being offered, then IC 35 is where it goes. Now there are going to be some exceptions, as with anything related to trademarks.

Tangible advertising goods, such as signs, flyers, brochures, are NOT going to be in IC 35 as those items are not technically a service though are definitely part of a service; tangible paper-based advertising goods are in IC 16. Training, coaching, educating, etc. about advertising, marketing or promotion is NOT going to be in IC 35 but rather in IC 41, which is the educational class.

The second part of IC 35’s description, business services, is not straightforward at all. Semantically, all services could be considered as business services, yes? No way says the trademark powers that be; at least no way if those services can fit within a different international classification.

So What Business Services are in International Class 35?

Ooh this is a tough nut to crack as there are definitely some discernible patterns within this class but there’s a whole lot of slap-dash in here too. Here’s a general breakdown:

• If your services consist, in part, of the word business, you’re likely in IC 35. This includes consulting, advising, administration, management, development, information, organization, research, planning, etc.

• Employment services are in this class, which includes hiring, recruiting, placement, staffing and career networking.

• Retail services selling ANY products under the sun, which means a brick and mortar store, online retail sites, mail order, catalog, wholesale, etc.

Obviously there’s a whole host of other services in IC 35. If you’re wondering about your services, feel free to email me.

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2009-09-11T07:45:00.000-07:00

Yadda Yadda Yadda

The suit against Jerry Seinfeld's author wife, Jessica, has come to an end. The District Court dismissed all claims set forth by Missy Chase Lapine; however, there apparently is still the matter of the defamation claims stemming from Jerry Seinfeld's remarks on the David Letterman show. Read the entire article here.

2009-09-10T09:38:00.000-07:00

New McRuling

In Malaysia, local restauranteurs McCurry won an 8 year legal battle against McDonald's for the right to use the Mc- prefix. The McReign of McDonald's seems to be nearing an end as long as other restaurants serve food that is different enough from McDonald's so as not to confuse customers. Read the entire article here. This ruling will undoubtedly result in a McBurst of new restaurants.

2009-08-26T13:00:00.000-07:00

Trademark International Class: Classes 32 & 33 (Light beverages; Wines and spirits)

All goods or services are categorized within International Classes (IC hereafter). Goods run from classes IC 1-34, while Services are in IC 35-45. Please see a complete chart here. Let's take a closer look at a group of these trademark classes – classes 32 & 33.

What are International Classes 32 & 33 All About?

These 2 classes represent the beverage classifications for trademarks. Class 32 is light beverages and has 182 possible descriptions; class 33 is wines and spirits & has 129 possible descriptions.

Almost any non-alcoholic beverage is in IC 32 except beer, which is in IC 32. This class includes waters, juices, sodas as well as syrups and essences used in making non-alcoholic beverages.

IC 33 is going to be any type of liquor, wine or spirit. Also included are syrups and essences using in making alcoholic beverages.

Geographical Indications for Wines & Spirits

Wines and spirits get a special little section of their own in the Trademark Manual of Examining Procedure and it's all about location, location, location. When a geographic name is used as part of a name for wine or spirits, the USPTO has all kinds of things to say about that. Let's break it down by what they say and what that means:

Geographical Indications Used on Wines and Spirits That Do Not Originate in the Named Place

"Geographical indications" are defined...as "indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin." ... Obscure areas or those that do not have a reputation or other characteristics generally associated with wines or spirits should not be prohibited from registration (emphasis added).

Clear as a bell, eh? Basically this means that USPTO will refuse a mark that contains a place name if (1) the place is known for that particular good (e.g. Champagne, France as cited in the refusal against Champagne from Spain AND (2) your goods do not originate from that place, as in the champagne example.

There is an exception and that's for obscure areas or for areas that don't necessarily have a reputation for wine or spirits, such as with Tropical Liqueurs of Florida.

Geographical Indications Used on Wines and Spirits That Originate in the Named Place

This one's a bit easier to understand. Here's what the USPTO says:

"If the wines or spirits originate in the identified place, and the primary significance of the mark is a generally known geographic location, the examining attorney should presume the requisite goods/place association, and refuse the mark under §2(e)(2) as geographically descriptive, or require disclaimer of the geographic term, as appropriate."

This is talking about wines or spirits that do originate in a known geographic location and the above has a two-fold explanation.

First, if the ENTIRE mark is the name of the place, the USPTO will refuse it on the grounds that it's descriptive, as they did with Shampagne. As you can see in this case, even an alternate spelling does not bypass the descriptive refusal.

Second, if a PORTION of the mark is the name of the place, the USTPO will require a disclaimer of that portion, as they did with Bialla Napa Valley.

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2009-08-24T11:51:00.000-07:00

Retweet This

Last Thursday, Twitter filed a Federal trademark application for RETWEET for three different classes. Take a look at the record here.

What does this mean for the 4.9 million uses found online? Does this mean Twitter's going to start sending out please-stop-using-our-trademark-as-a-verb letters a la Google?

2009-08-18T11:19:00.001-07:00

Trademark International Class: Classes 29, 30 & 31

(Meats & processed foods; Staple Foods; Natural agricultural products)

All goods or services are categorized within International Classes (IC hereafter). Goods run from classes IC 1-34, while Services are in IC 35-45. Please see a complete chart here. Let's take a closer look at a group of these trademark classes – classes 29, 30 & 31.

What are International Classes 29, 30 & 31 All About?

These 3 classes represent the food classifications for trademarks. Class 29 is meats & processed foods and has 699 possible descriptions; class 30 is staple foods & has 900 possible descriptions; class 31 is natural agricultural products and has 345 possible descriptions.

Meats, poultry, seafood, game are, of course, going to be in IC 29. Also within that class are things like oils, frozen foods composed primarily of meat or fish, canned meats, fruits & vegetables. Nearly anything you'd find at the butcher or in most of the food aisles is going to be in IC 29.

IC 30 are for goods you find in your baking aisle and also includes things like coffee, tea, flavorings, noodles, breads, etc.

Most anything you find in the produce section is going to be in IC 31. Also included are things like fresh flowers and things that are alive be they animals or Christmas trees.

How do I file in International Classes 29, 30 or 31?

Filing in any of the food classes has the same process as any other name. First, comprehensive research is needed to ensure that the name is legally available. That research should entail looking at the ENTIRE of the food and beverage industry. There can be some crossover when it comes to the same or similar name within the entirety of the industry but each situation is different. Let's look at a couple of examples:

1) In 1948, Bluebird was filed for canned fruits and juices in IC 29

2) In 1972, Bluebird was filed for ham & pork in IC 29

3) Fast forward 20+ years when the USPTO was a lot stricter and you'll find that Bluebird was still able to be registered for snack cakes in IC 30.

This does NOT mean that same or similar names can be trademarked all over the food & beverage industry. Again, like with anything trademark related, it's taken on a case by case basis.

For example, Jack Daniel's has attempted to oppose numerous filings food products using either the name Jack or Daniel. Sometimes they succeed as they did with Whiskey Jack and sometimes they don't such as with Doc Jack's.

As you can see, filing a name or logo within the food and beverage industry can be complex so be sure to get the proper help first.

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2009-08-10T13:05:00.000-07:00

Trademark International Class: Class 28 (Toys and sporting goods)

All goods or services are categorized within International Classes (IC hereafter). Goods run from classes IC 1-34, while Services are in IC 35-45. Please see a complete chart here. Let's take a closer look at one of these trademark classes – class 28.

What is International Class 28 All About?

Each class has a short title heading that gives a snapshot of what that class is all about -- IC 28's short title is toys and sporting goods. But, as with anything trademark, there's more to it than that. The USPTO has 1317 accepted descriptions that fit into IC 28; check them out here.

This class is fairly straightforward -- essentially almost any tangible item that's used in play or as part of a sport is going to be living here. This includes things like balls, bats, paddles, rackets, nets, poles, boards, pucks, sticks, clubs and on and on. Bags for specific sports are in this class, while all-purpose sporting bags are in IC 18.

Almost (emphasis on this word) any toy you can think of is going to be in this class. There are some exceptions for different products that you'd think would fall into this class - video games are in IC 9 but hand held and stand alone video games machines are in IC 28; arts and craft kits are in IC 16; costumes are in IC 25 while masks are in IC 28.

What Else is in International Class 28?

Seems like with any of these trademark classes, there always seems to be the oddball item or two and IC 28 is no exception. Here are a few items living in IC 28 that seem a bit weird:

• aquatic canine treadmill
• Christmas tree ornaments, decorations and stands
• confetti
• lottery cards and tickets

What's New for International Class 28?

The classification guide is constantly being updated with new goods or services. As the marketplace changes, the trademark office must adapt. Here are some of the 2009 listings for international class 28, good plus date added to the guide:

• Amusement devices, namely, bounce houses in the nature of an air inflated cushion in an air inflated structure 23 Apr 09
• Arm bands for designating team member positions in sports activities 30 Apr 09
• Educational toys in the nature of an illustrated wall map 08 Jan 09
• Game equipment set sold as a unit comprised primarily of a playing board and playing cards and also including rules of play, dry erase boards and erasers, markers, a timer and T-shirts 25 Jun 09

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2009-08-05T07:17:00.000-07:00

Gonna Keep Going

Looking over the blog's stats I can tell that all the different international classification posts have been fairly popular. Given that, I'm going to keep on keeping on.

I wanted to give my readers a quick summary of the different classes I'll cover as well as any respective issues.

If you see something missing or you have a question (or five) about classes, please comment below & I'll be sure to post about it.

Left off at IC 25, clothing -- any other questions or issues not yet resolved for anyone?

Will write posts about:
IC 28
ICs 29, 30, 31
ICs 32, 33
- geographically deceptively misdescriptive marks (say that three times fast)

Then it'll be time to move on to Services and I'm thinking it'd be a good idea to write a post for each class, from IC 35 to IC 45. As I go along, I'll address any other side issues that seem to come up when talking about these classes. Of course, feel free to ask questions galore in the comments section.

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2009-07-31T15:31:00.000-07:00

The House of Mouse is at it Again

And boy have they been busy bees...or er, mice? Disney filed 10 applications on June 24th for Mickey By... for a whole mess of products: toys, clothing, textiles, linens, fabrics, housewares, furniture, pillows, photo frames, bags, backpacks, luggage, books, publications, printed materials, jewelry, audio & video recordings, video games, cosmetics, fragrances. PHEW!

2009-07-28T12:54:00.000-07:00

Trademark International Class: Class 25 (Clothing)

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2009-07-27T15:28:00.000-07:00

Trademark International Class: Class 20 (Furniture and articles not otherwise classified)

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2009-07-27T15:10:00.000-07:00

Trademark International Class: Class 18 (Leather goods)

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2009-07-16T07:20:00.000-07:00

Trademark International Class: Class 16 (Paper goods and printed matter)

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2009-07-15T12:50:00.000-07:00

Trademark International Class: Class 14 (Jewelry)

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2009-07-15T12:06:00.000-07:00

Trademark International Class: Class 9 (Electrical and Scientific Apparatus)

All goods or services are categorized within International Classes (IC hereafter). Goods run from classes IC 1-34, while Services are in IC 35-45. Please see a complete chart here. Let's take a closer look at one of these trademark classes – class 9.

What is International Class 9 All About?

Each class has a short title heading that gives a snapshot of what that class is all about -- IC 9's short title is electrical and scientific apparatus. But, as with anything trademark, there's more to it than that. The USPTO has 3107 accepted descriptions that fit into IC 9; check them out here.

This class encompasses nearly any tangible goods that are scientific, nautical, surveying, electric, photographic, cinematographer, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.

PHEW! Let's break that down a bit. Here are some of the more often used descriptions for International Class 9:

Software of all kinds.
Video games, which also include the peripherals such as joysticks, players, interactive floor pads and interactive remote controls as well as what used to be considered a service – providing online video games.
CDs, DVDs, audiocassettes, records, whether blank or filled with content, as well as the devices used to play them.
Computer peripherals such as mice, keyboards, printers, and monitors as well as virtually any good related to the telephone, the television or the camera.

What Else is in International Class 9?

Seems like with any of these trademark classes, there always seems to be the oddball item or two and IC 9 is no exception. Here are a few items living in IC 9 that seem to be a weird fit:

• sun glasses, eye glasses and pince-nez
• protective clothing
• dog whistles
• helmets

What's New for International Class 9?

The classification guide is constantly being updated with new goods or services. As the marketplace changes, the trademark office must adapt. Here are some of the 2009 listings for international class 9, good plus date added to the guide:

• Graduated rulers for office and stationery 25 Jun 09
• Hands free devices for mobile-phones 18 Jun 09
• Holders for magnetically encoded gift cards 02 Apr 09
• Life vests 26 Mar 09
• Articles of protective clothing for wear by motorcyclists for protection against accident or injury 5 Feb 09
• Digital music system that synchronizes digital music files stored on a home unit and a car unit 15 Jan 09

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2009-06-25T09:06:00.000-07:00

Any Requests?

I've slowed down a bit in my blog posting lately because work is a bit busy. I fully intend to continue the International Classification train but I thought it'd be a good idea to devote a post for requests.

Are there any of the trademark classes you'd like to know more about? If so, please comment with any questions.

Thanks! I'll be back soon!

2009-06-18T11:00:00.000-07:00

Trademark International Class:
Class 5 (Pharmaceuticals)

All goods or services are categorized within International Classes (IC hereafter). Goods run from classes IC 1-34, while Services are in IC 35-45. Please see a complete chart here. Let's take a closer look at one of these trademark classes – class 5.

What is International Class 5 All About?

Each class has a short title heading that gives a snapshot of what that class is all about -- IC 5's short title is pharmaceuticals. But, as with anything trademark, there's more to it than that. The USPTO has 955 accepted descriptions that fit into IC 5; check them out here.

This class contains within it all the normal items you think of when you hear the word pharmaceuticals – antibiotics, antivirals, aspirin (which used to be a trademark), decongestants, etc. But within this class there also exists other items that have to do with medicating or healing or disinfecting.

If something is anti, it likely resides within class 5 – antibiotic, antibacterial, anti-inflammatory, antifungal, antimicrobial, anticoagulant, antiseptic, antiviral, anti-itch. Vitamins, minerals and supplements are filed in this class as are pesticides, parasiticides, repellents. You're also going to find things like bandages, bath preparations for medical purposes, deodorizers, herb teas for medicinal purposes.

What Else is in International Class 5?

Seems like with any of these trademark classes, there always seems to be the oddball item or two and IC 5 is no exception. Here are a few items living in IC 5 that seem a bit weird:

• baby food
• skin care preparations, hair care preparations, lotions, etc. that are medicated
• gluten free food
• fly paper

What's New for International Class 5?

The classification guide is constantly being updated with new goods or services. As the marketplace changes, the trademark office must adapt. Here are some of the 2009 listings for international class 5, good plus date added to the guide:

• Algaecides [chemicals for swimming pool maintenance] 04 Jun 09
• Aromatized beverages based on fruit, protein, cordial, sugar and other fluid nutrients, namely, meal replacement drinks for use as a food fillers 26 Mar 09
• Dental tablets for disclosing plaque and tartar on the teeth 05 Mar 09
• Disposable wipes impregnated with disinfecting chemicals or compounds therefor for use on {indicate items being disinfected, e.g., railings, countertops, toilet seats} 15 Jan 09
• Face creams and cleansers containing benzoyl peroxide for medical purposes, namely, the treatment of acne 19 Feb 09
• Medicated cosmetics 26 Mar 09

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