In its response to the Trademark Office’s rejection, Apple halfheartedly argued that (1) the word “app” is not merely descriptive because it could be an abbreviation for words other than “application,” such as “apparatus,” “appendix,” and “appointed,” and (2) the word “store” is not merely descriptive because the iTunes App Store is not a traditional brick-and-mortar store or online retail store.  Finally, Apple rather humorously argued that its APP STORE mark “creates a clearly recognizable double entendre” in that APP would “be immediately recognized as a variant of the applicant’s well-known APPLE STORE mark.”  Yeah, right.  “App” is short for “apple.”  Give me a break.  Nobody knows or refers to Apple as “app.”  Not a single person.

After the Trademark Examining Attorney was done cracking up at Apple’s ridiculous and nonsensical arguments, he issued a final refusal to Apple consisting of approximately 145 pieces of internet evidence tending to show that APP STORE would be perceived by the general public as merely a place to purchase software applications.  End of story, right?  Apple waves the proverbial white flag.

Unfortunately not.  Instead, Apple filed a Request For Reconsideration, admitting that APP STORE is, in fact, merely descriptive but that the mark is entitled to registration anyway because it has acquired distinctiveness and secondary meaning.  In other words, Apple argued that the general public would recognize APP STORE as belonging to Apple (and only Apple) because of the extraordinary success of the iTunes App Store, its extensive marketing and promotion of the APP STORE mark, and the unsolicited media coverage of Apple’s services.  In support of its argument, Apple attached a whopping 400 pages of exhibits, including sales figures, advertisements, and media articles.  And you know what?  The Trademark Examining Attorney was actually persuaded by all of Apple’s evidence (or more likely didn’t feel like looking through all of it) and allowed Apple’s application for APP STORE to be published for opposition.

Well, apparently Microsoft was paying close attention to Apple’s APP STORE trademark application because on July 6, 2010, it filed an opposition against the application on the basis that APP STORE is generic for a store that sells software applications and, therefore, is legally incapable of identifying and distinguishing Apple’s services from those of its competitors.  Microsoft specifically attached evidence to its Notice of Opposition indicating extensive third-party use of “app store” in connection with their own services, media articles generically referring to “app store” as a place to purchase applications, dictionary definitions of the words “app” and “store,” and even statements on Apple’s own website in which Apple refers to “apps” in the generic sense.  I also note that I’ve personally never seen Apple use a “TM” next to APP STORE, which you might expect if Apple truly believed it could claim exclusive rights to the phrase.

I could not agree more with Microsoft’s position and, honestly, I think every software application provider should be thanking Microsoft profusely for taking a stand against Apple’s anti-competitive behavior.  I mean, let’s say that I owned and operated a pet store and I decided to not-so-creatively name it PET STORE.  I spend 500 billion dollars over 30 years advertising and marketing my services, and I am known as the best pet store in the world, and my pet store does 100 billion dollars worth of sales each year, and my pet store is featured in thousands of newspapers, magazines, trade journals, and my pet store is written about on thousands of websites, and my pet store is the biggest in the United States.  Guess what?  I still don’t have a trademark!  The fact is that a generic phrase like “pet store” can never become a trademark under any set of circumstances for a store that sells pets, just like “candy store” can never become a trademark for a store that sells candy, “grocery store” can never function as a trademark for a store that sells groceries, and “app store” can never become a trademark for a store that sells apps.  These types of phrases are freely available to any business that wants to use them.

Hopefully, the Trademark Trial and Appeal Board will see right through Apple’s smoke-and-mirror arguments and deny it the monopoly it seeks.  Of course, if you disagree, please feel free to drop a comment.

A quick search of the Trademark Office’s records reveals that Dirt Cheap has been using the DIRT CHEAP mark since 1993 and owns federal registrations for DIRT CHEAP (Reg. No. 2613728), the racy (and disturbing) chicken logo displayed in the banner of its website (Reg. No. 3047335), and FUN FUN CHEAP CHEAP (Reg. No. 2878533), all of which are for distributorship and/or retail store services featuring beer, liquor, and cigarettes.  Although it’s not particularly pertinent to the story, the FUN FUN CHEAP CHEAP registration should probably be amended since all of the television commercials and printed advertisements now use CHEAP CHEAP FUN FUN instead.  In fact, if you take a look at the specimen of use that Dirt Cheap submitted to the Trademark Office when it filed its Declaration of Continued Use about six months ago (shown below), you will see that it actually displays the mark as CHEAP CHEAP FUN FUN.

Clearly, the Trademark Office should have refused to accept the Declaration since the mark as displayed on the specimen does not match the mark as registered.  Perhaps the person in charge of examining the Declaration was drunk on Dirt Cheap’s “30 Dime Wine.”

Well, apparently another St. Louis based company by the name of SUJVL, Inc. wanted to innocently inform its customers of how incredibly inexpensive its alcohol and cigarettes were and decided to adopt the trademark CHEAP CHEAP as the name for its liquor store.  Unfortunately, I was unable to find a website for Cheap Cheap, but being the investigative trademark attorney that I am, I took a short drive over to one of Cheap Cheap’s two locations to check it out.  Here is a picture of the front entrance of the store:

Anyway, to the surprise of not a single trademark attorney, Dirt Cheap recently filed a trademark infringement lawsuit against Cheap Cheap in the United States District Court for the Eastern District of Missouri (Case No. 4:10-cv-01198), alleging that the CHEAP CHEAP trademark is likely to cause confusion with Dirt Cheap’s registered DIRT CHEAP and FUN FUN CHEAP CHEAP trademarks.

Wow, if this isn’t classic trademark infringement/unfair competition, I don’t know what it.  DIRT CHEAP and CHEAP CHEAP are nearly identical in appearance and sound, they both use the same stylized font, they both have a similar meaning and commercial impression, and both are used in connection with retail liquor stores.  In addition, CHEAP CHEAP undoubtedly brings to the minds of consumers the “Cheap Cheap Fun Fun” slogan exclaimed by the chicken in Dirt Cheap’s TV commercials and as displayed on its website and printed advertisements.  Seriously, the only thing Cheap Cheap didn’t rip off was the stupid chicken mascot (there must be a God after all).

I rarely say this about defendants in trademark infringement lawsuits, but I think I can honestly say that Cheap Cheap doesn’t stand a chance of winning.  It should just start phasing out the use of CHEAP CHEAP now and save itself the considerable time and expense of defending this lawsuit.  It certainly isn’t going to be cheap (or cheap cheap or dirt cheap) to change its name, but it’s certainly less pricey than spending tens of thousands of dollars on legal fees, losing, and then having to make the change anyway.  Good thing the owners of Cheap Cheap likely have enough booze in their inventory to make dealing with this situation a little more palatable.

Just when you thought New York City only needed (and frankly only wanted) one nude buckaroo roaming the streets entertaining and/or scaring and/or mortifying those who happen to come across him, here comes comedian and ex-stripper Sandy Kane (whose real name is Sandra Brodsky) to provide New Yorkers even more rancher-in-the-raw festivities.   According to a story in the New York Post, the bikini-clad Kane has been appearing and performing in Times Square for several years calling herself THE NAKED COWGIRL.  The story reports that Kane and Burck used to have a good relationship but it turned sour when Kane refused to sign a “Naked Cowboy Franchise Agreement” and recorded a song called “The Cowboy” with another male counterpart.  Burck is now threatening to sue Kane for trademark infringement stemming from her use of the name NAKED COWGIRL in connection with her live music and comedy performances.

Like most ordinary people would after reading this article, I surfed over to the Trademark Office’s website to see whether Burck happened to own a federal trademark registration for NAKED COWBOY.  Sure enough, he applied to register NAKED COWBOY on July 15, 2009 and was granted a registration for the trademark just over a month ago on May 25.  My search also revealed that Burck owned a registration for NAKED COWBOY dating back to 2002, but is was canceled in June 2009 for failure to file a declaration of continued use with the Trademark Office.  Hey, keeping those skin-tight briefs Clorox-white would be enough for any man to forget to renew his trademark registration!

In all seriousness, I think Burck has a pretty strong case against Kane for trademark infringement and unfair competition, especially considering the appreciable amount of fame and recognition Burck’s NAKED COWBOY name enjoys throughout New York and the exposure he’s had throughout the U.S.  Clearly, Burck doesn’t own the concept of dressing up (or is it undressing?) like a cowboy and performing music in the middle of Times Square.  Any freak-show is free to do that.  However, the issue is that Kane’s use of the name NAKED COWGIRL tends to imply an association or affiliation with Burck such that the public may mistakenly assume that Burck sponsors or endorses Kane and her performances.

But, Kane might have some leverage with Burck after all.  In reviewing Burck’s trademark registration for NAKED COWBOY, I note that the mark is registered for the following slew of services:

Educational and entertainment services, namely, providing motivational and educational speakers; Entertainment in the nature of circuses; Entertainment in the nature of dance performances; Entertainment in the nature of live performances by a musical personality/performer; Entertainment in the nature of live radio personality performances; Entertainment in the nature of on-going television programs in the field of news, comedy, variety; Entertainment in the nature of prerecorded sex-oriented, joke-oriented, insult-oriented messages by telephone; Entertainment in the nature of television news shows; Entertainment in the nature of live musical group, television comedy series, ethnic festival; Entertainment services, namely, live, televised and movie appearances by a professional entertainer; Entertainment services, namely, personal appearances by a celebrity, radio-TV personality, actor, movie star, model, sports celebrity; Entertainment services, namely, providing a radio program in the field of entertainment, comedy, motivational speaking via a global computer network; Entertainment services, namely, providing a television program in the field of entertainment, comedy, motivational speaking via a global computer network; Entertainment services, namely, providing an on-going radio program in the field of news, comedy, variety; Entertainment services, namely, providing an on-line computer game; Entertainment, namely, a continuing comedy, variety show broadcast over television, satellite, audio, and video media; Entertainment, namely, live music concerts; Entertainment, namely, live performances by musical bands; Entertainment, namely, television news shows; Multimedia entertainment software production services; Radio entertainment production; Radio entertainment services, namely, radio programs featuring performances by a person or individual, fictional character, radio personality, TV personality

As far as I can tell from Burck’s website and bio, it does not appear that Burcke actually has ever rendered, or is currently rendering, the services I have bolded above.  Therefore, Burck’s registration may be subject to cancellation on the basis of fraud on the Trademark Office in that Burck declared in his application that the NAKED COWBOY mark was in use in connection with all of the services when perhaps the mark was actually only in use in connection with some of the services.  Kane may be able to use the threat of a cancellation proceeding to help her reach a satisfactory settlement with Burck that doesn’t include paying Burck $5,000 per year to be a Naked Cowboy franchisee.  Just a thought.

Whatever happens, the naked truth is that (1) Kane shouldn’t use the NAKED COWGIRL name if there is a likelihood of confusion with Burck’s prior use of NAKED COWBOY, and (2) Burck, well, he should just put on some pants already.

Anyway, on August 3, 2009, Sony Ericsson (one of Nokia’s fiercest competitors), filed two applications for the marks X3 and X4 (Serial Nos. 77795219 and 77795228 respectively).  These applications were filed on an intent-to-use basis and are both for cell phones and related accessories.  I also note that Sony is already the owner of a 2009 federal registration for the mark X1 (Reg. No. 3620481), as well as various other registrations for marks consisting of a single letter and three numbers, including J210, W900, K310, Z530, and many others.  Again, the marketing minds at Sony weren’t exactly working overtime when they came up with these bland and lifeless trademarks.

Well, apparently, Nokia wasn’t too thrilled with Sony attempting to register X1 and X2, as evidenced by its June 21, 2010 filing of a notice of opposition against both applications (which was later amended by Nokia on June 30 to correct some minor errors).  Unlike many oppositions, Nokia’s claims are not based on a likelihood of confusion, descriptiveness, dilution, or deceptiveness.  Nope, Nokia’s claims are based on its belief that Sony’s X3 and X4 marks “lack sufficient distinctiveness to function as a trademark” and, therefore, are barred from registration on the Principal Register.  So, Nokia is basically alleging that Sony’s marks are so pathetically unoriginal and unimaginative that they legally cannot function to identify and distinguish between Sony’s cell phones and those of its many competitors.  Wow, that’s quite the kick in the groin for Sony’s marketing gurus.

So, let me get this straight.  In Nokia’s mind, it is perfectly OK for it to register marks for mobile phones and accessories consisting of a letter followed by two numbers, and Nokia doesn’t seem to have any objection to Sony registering marks for mobile phones and accessories consisting of a letter followed by three numbers, but it simply will not stand for Sony attempting to register marks consisting of a letter followed by one number because they “lack sufficient distinctiveness.”  Seriously, I couldn’t make this stuff up if I tried.  I mean, it’s completely laughable that Nokia actually believes that its N76 and N83 marks are somehow more inherently distinctive and more deserving of registration than Sony’s X3 and X4 marks.  I tell you, if I was a judge on the Trademark Trial and Appeal Board assigned to this nonsense, it would take everything I have not to retire effective immediately.

But wait!  Breaking news:  Motorola attempts to register “M30497354623853762018374473425″ for its highly anticipated new cell phone.  Details on Nokia’s impending challenge to follow.

Anyway, about three months later, a trademark examining attorney at the Trademark Office reviewed Pulser’s application and specifically requested that Pulser “specify whether the letters RDIO have any significance in the computer software, internet, or entertainment industry or as applied to the goods/services described in the application.”  In response, Pulser bluntly indicated that RDIO “has no significance in the relevant trade or industry or as applied to the goods/services listed in the application.”  Relying on Pulser’s representations, the Trademark Examining Attorney allowed Pulser’s application to be published for opposition on September 30, 2009 (it wasn’t challenged by any third party) and the Notice of Allowance was issued on January 12, 2010, thereby giving Pulser six months to provide proof to the Trademark Office that it is actually using the mark in interstate commerce in connection with all of the products and services recited in the application.

If you couldn’t already tell from my tone, I strongly believe the Trademark Office made a gross error in not refusing to register Pulser’s RDIO mark on the basis that it is generic for many of the products and services listed in the application.  As many of you probably already know, generic terms are not trademarks and can never be protected if their primary meaning is the actual name of the product or service with which they are being used.  For instance, the word “soap” for body cleansers is generic, as is the word “pencil” for certain writing utensils.  This tenet also holds true for misspellings of generic terms that do not materially change their common meaning.  For example, the word “photo” does not become any less generic for photography products and services by spelling it “foto” unless that spelling alters the meaning or connotation of “photo.”  That is why the owners of FOTO FANTASY (Reg. No. 2769186), FOTO QUICK (Reg. No. 2997542), and FIRST FOTO (Reg. No. 2926355) were required to disclaim exclusive rights to use “photo” apart from the marks as a whole.  Unquestionably, the word “foto” in these situations is simply an intentional misspelling and nothing more.

Similarly, Pulser’s RDIO mark is clearly the word “radio” with the second letter missing.  Contrary to Pulser’s assertions, the general consuming public would primarily recognize RDIO as merely a misspelling or variation of “radio” when used in connection with Pulser’s audio broadcasting and streaming services.  Even if you believe Pulser’s nonsensical statement that RDIO is a fusion of “radio” and “audio” that should be pronounced “r-dee-o,” wouldn’t it have made more sense for Pulser to apply to register ARDIO?  Now, that looks like a combination of those two words.  But, of course, it doesn’t look much like “radio,” now does it?  It’s almost like Pulser came up with it reasoning for choosing RDIO after the fact in order to help bolster its defense to a possible challenge.

In sum, RDIO is no more a trademark for audio broadcasting services than FOTO is for photography services.  If u disagre, plz feel fre 2 leav a komment.

As you can see, the Andy’s logo and signage are predominantly red and yellow, with the word ANDY’S presented in a stylized cursive font.  Also, there is a huge, double-scoop ice cream cone perched on the top of a rectangular roadside sign that is situated close to the restaurant’s entrance.  Although not important to the story, I note that Andy kind of looks like Elmer Fudd with a bow tie.

Just as I was pulling into the parking lot of The Happy Fisherman, I caught a glance of another frozen custard shop on the opposite side of the street called “Randy’s Frozen Custard.”  Randy’s is located less than 1/4 of a mile from Andy’s and was recently ranked #1 for the best place to grab a frozen treat (Andy’s was ranked #2).  Here are some photographs:

Not unlike ANDY’S, the name RANDY’S is depicted in a stylized cursive font against a red background.  Although the letters are white and not yellow like those that make up ANDY’S, the restaurant’s outside lighting gives off a yellow glow.  Furthermore, there is large, two-scoop dessert cone sitting on top of a pole next to the restaurant.  Thankfully, there is no Elmer Fudd lookalike.

After eating four pieces of catfish, salad, bread, french fries, hush puppies, coleslaw, pasta salad, and a complimentary pineapple fritter, I decided to take a trip over to Andy’s for a little frozen custard (wouldn’t you?).  Before I ordered my espresso and chocolate chip concrete with vanilla custard, I asked the teenage employee at the window what the deal was with Randy’s.  Of course, he didn’t know all the details but, apparently, the guy who owns Randy’s used to be an Andy’s franchisee.  And, in fact, where Randy’s is now located used to be where Andy’s was before it moved into its current location.  The employee basically indicated that the owner of Randy’s decided not to renew his Andy’s franchise and now does everything he can to make people think there is some relationship between his frozen custard shop and Andy’s.

I have no idea whether what was told to me is accurate, but if it is, I wonder why Andy’s seems to be doing nothing about it.  Andy’s owns numerous federal registrations for ANDY’S and ANDY’S FROZEN CUSTARD (Reg. Nos. 3097065, 2774370, 3183122, among others), not to mention a registration for the dessert cone signage (Reg. No. 2679514).  In my opinion, when you take into account the totality of the circumstances, it appears that Randy’s is merely trying to ride the coattails of Andy’s.  Unquestionably, the names, colors, signage, and fonts are all extremely similar, and both restaurants sell frozen custard.  Again, I don’t know all the facts and there is likely some background information I’m not privy to, but to just the casual observer (OK, a casual observer who also happens to be a trademark attorney), it looks like trademark infringement to me.

Oh, and by the way, the concrete I inhaled at Andy’s was delicious.  Unfortunately, I didn’t have the chance to try Randy’s frozen custard, but I have a feeling that, like everything else about Randy’s, it would have been confusingly similar to Andy’s.

If you’ve ever bought anything online at popular websites such as walmart.com, borders.com, or zappos.com, you may have noticed at checkout a payment option called “Bill Me Later.”  Bill Me Later is a service offered by a subsidiary of PayPal called I4 Commerce Inc.  and is basically a revolving credit account (backed by CIT Bank in Utah) that is an alternative to using a standard credit card.  When shoppers click on the Bill Me Later option, they are prompted to enter their birthday and the last 4 digits of their social security number.  The system then runs what amounts to a credit check and, if approved, the purchase is completed.  Then, in about 10-14 days, the shoppers receive a bill in the mail for the purchase amount, payment of which is usually due 30-90 days later.  If the bill is not paid on time, interest starts accruing at a whopping 19.99% APR.

In 2002, I4 Commerce was granted a federal trademark registration for BILL ME LATER for “credit services, namely providing revolving credit account services and bill payment services to others via the telephone and world wide web.”  Five years later, it was granted another trademark registration for BILL ME LATER,with a check mark logo, for the identical services.  It is important to note that both of these registrations issued on the Principal Register without any disclaimers, meaning that the Trademark Office did not believe that BILL ME LATER, in whole or in part, was merely descriptive of the services rendered under the trademark.

Then, in 2005, a company by the name of MODASolutions Corporation launched a competing service called “eBillme.”  When shoppers use the eBillme option at checkout, they enter their contact information and email address.  Their bill is then displayed on the screen, as well as emailed to them for their records.  Shoppers then have the option of paying the bill through their online banking service, or by printing off the bill and paying it at one of over 36,000 walk-in locations set up in drug stores, convenience stores, etc.  Basically, it’s a somewhat convoluted way to securely purchase items online without having to divulge any personal or financial information to the merchant directly.

In April 2007, MODASolutions filed an application to register its EBILLME trademark for “secure online payment services, namely presentment and processing of bill payment transactions conducted via telephone, internet, and mobile banking.”  Again, it is noteworthy that the Trademark Office did not find EBILLME to be merely descriptive of MODASolutions’ electronic billing and payment services.  Well, apparently I4 Commerce wasn’t too happy about MODASolutions’ application and filed an opposition against it in September 2008 alleging a likelihood of confusion with its prior-used BILL ME LATER trademark.  Around the same time, I4 Commerce also filed a federal lawsuit against MODASolutions alleging trademark infringement and unfair competition.  This lawsuit is currently pending in the United States District Court for the District of Maryland, and the opposition is suspended pending the disposition of the lawsuit.

But MODASolutions isn’t just playing defense.   On the contrary, this past week MODASolutions filed a cancellation proceeding against the two BILL ME LATER registrations owned by I4 Commerce.  In its Petition for Cancellation, MODASolutions alleges that the BILL ME LATER marks should be canceled because (1) they are “generic for bill payment services that allow customers to be billed later for internet purchases” and do not function as a trademark, and (2) in the alternative, they are “descriptive for bill payment services that allow customers to ‘bill me later’ for purchases” and the marks have not yet acquired the requisite secondary meaning and distinctiveness for registration on the Principal Register.  I would like to point out that even though descriptiveness was alleged against both registrations, I4 Commerce’s 2002 registration cannot legally be canceled on that basis because it has been on the Principal Register for over 5 years and is incontestable.  However, it still can be canceled on the basis of genericness.

In my humble and (somewhat) professional opinion, BILL ME LATER is merely descriptive for payment services that allow shoppers to request that they be billed for their purchases at a future date.  The mark immediately describes a salient feature of the services and would be understood as such by the vast majority of the purchasing public.  However, I do disagree with MODASolutions that the mark is generic for such services, although I think it does teeter on that critical line between descriptive and generic.  Whatever the case may be, I think we can all agree that a mark like BILL ME LATER is about as close to generic as you can get and is subject to the narrowest scope of protection available under the law.

But I wonder if MODASolutions has fully thought out the potential ramifications of filing such a cancellation.  Let’s just say that it successfully cancels I4 Commerce’s registrations.  Well, doesn’t it mean that EBILLME is similarly not entitled to registration on the Principal Register?  A persuasive argument could be made that EBILLME immediately describes a primary feature of the services provided under the mark, namely that shoppers can request that online merchants bill them electronically for their purchases.  While I personally don’t believe EBILLME quite rises to the level of being generic, it certainly isn’t deserving of the broad protections to which more distinctive and unique marks are entitled.  But perhaps MODASolutions is willing to sacrifice registration of its mark if it will help it win the right to continue using its mark in the face of I4 Commerce’s infringement suit.

Of course, this leaves me with one last extremely important and relevant question:  Do the lawyers representing I4 Commerce and MODASolutions accept Bill Me Later and/or eBillme for payment of their legal fees?  Just wondering.

While this opposition perhaps doesn’t rise to the level of being ridiculous, I do find it somewhat curious considering that a cursory search of the Trademark Office’s records revealed two other existing registrations for marks that incorporate the acronym SEC where the acronym is clearly referring to the Securities and Exchange Commission.  The first is a February 2009 registration for SEC TEA PARTY (Reg. No. 3579868) for “blogs featuring commentary on Securities and Exchange Commission and other legal matters,” and the other is for SEC FILINGS NAVIGATOR (Reg. No. 3729014) for what amount to providing online information and guidance to people concerning what information must be disclosed to the SEC.  I also note that the Securities and Exchange Commission has never attempted to register its SEC mark for any products or services whatsoever in the 75 years the agency has been in existence.  I guess it has just been too busy investigating and catching crooks like Bernie Madoff, R. Allen Stanford, Lehman Brothers, and Enron before their illegal schemes could cause catastrophic harm to millions of Americans.

I guess there is the small possibility that some people will be confused into believing that the SEC approves, sponsors, or endorses the services rendered by The SEC Institute.  As the plaintiff, the SEC is going to have to prove its case, perhaps with survey evidence and other expert testimony.  But as far as the SEC’s allegation of a false suggestion of a connection between the two entities, I’m sure the last thing The SEC Institute wants is people to assume there is any kind of association between itself and the SEC, especially considering the SEC’s incredible failures over the past decade to properly carry out its duties and the immense amount of negative media attention surrounding such failures.  In fact, The SEC Institute’s website has a small disclaimer on the bottom of each page which states that “The SEC Institute is not affiliated with the U.S. Securities and Exchange Commission (SEC).”  I swear, if I was The SEC Institute I would demand that the Securities and Exchange Commission immediately put a disclaimer on its website indicating that it is not affiliated with me!

Apart from whether the SEC has a decent case against The SEC Institute, I think it’s a shame that the SEC is spending a portion of its budget hiring one of the world’s largest and most prestigious intellectual property firms (Finnegan in Washington DC) to go after a company that is actually helping businesses and organizations comply with the SEC’s own rules and regulations (which I’m sure are onerous, burdensome, and complex).  The SEC Institute is certainly not harming the (already poor) reputation and (almost nonexistent) goodwill of the SEC name, and I very much doubt there has been any actual consumer confusion stemming from its use of THE SEC INSTITUTE over the past 25 years.  Although reasonable minds can certainly differ, I believe the SEC should be more concerned with spending its finite budget on protecting hard-working American investors from fraud rather than on an opposition that, in the best case scenario, would only prevent The SEC Institute from registering its trademarks and would do nothing to actually stop The SEC Institute from continuing to use its trademarks to advertise and sell its services.  Makes you wonder, no?

I cringe every time prospective clients tell me they “didn’t find anything” after using the Trademark Office’s search tool because I know from experience how weak and unreliable that tool is.  This type of search will most often not catch variations of words, common misspellings, novel or intentional misspellings, verb conjugations, etc.  The Trademark Office’s search tool is really only for finding identical trademarks, which I always encourage my clients to do prior to hiring me to conduct a more comprehensive federal trademark search to find confusingly similar marks (which is the legal standard for trademark infringement).  Clearly, there is little reason for me to perform my search if their search already revealed an obvious obstacle to registering and/or using their trademark.

So, I begin to explain to my prospective client that it really isn’t a good idea to solely rely on the search results generated by the Trademark Office and that a more comprehensive search is something that he should strongly consider.  Not surprisingly, he was reluctant to spend the $250 I charge to perform such a search using proprietary software for which I pay an incredibly outrageous subscription fee to use (seriously, it’s highway robbery).  As a start-up business, he was operating on a very tight budget and he felt that his clearance search was sufficient.  But, after reminding him that a $250 trademark search is at least 100 times less expensive than having to defend a trademark infringement suit (not to mention the money he would waste by filing a trademark application just to be rejected on the basis of another registered mark that would have been revealed in my search), he made the wise decision to spend the $250.

Although I obviously cannot reveal the exact trademark on which I conducted my search due to attorney-client confidentiality, the following situation nicely illustrates what actually occurred with my client’s search.  Let’s say hypothetically that my client’s trademark was CLIFF JUMP and that he wanted to use the trademark for classes and seminars in the fields of personal and organizational growth and development.  When you type CLIFF JUMP into the Trademark Office’s search system, you get the following screen indicating that no records match the search query:

So, my client was technically correct in that he “didn’t find anything.”  He just spent 250 bucks for me to tell him what he already knew, right?  Not at all.  My more comprehensive search revealed two registrations owned by the same company for the mark CLIFF JUMPING (Reg. Nos. 3672445 and 2761445), both of which are registered for educational services in the fields of personal and organizational growth and development.  Unquestionably, the Trademark Office would refuse registration of my client’s CLIFF JUMP mark on the basis that it is likely to cause confusion with these registrations for CLIFF JUMPING.  In addition, there is the possibility that the owner of these registrations would challenge my client’s use of the CLIFF JUMP trademark if he commenced use of it in connection with his services.  Probably not a winning case for my client, wouldn’t you agree?

I think being told bad news about the results of a trademark search is a bittersweet moment for many people looking to adopt a brand new trademark.  Many people who come to me already have their heart set on a particular trademark and are extremely disappointed to hear that their mark is unavailable.  But, on the other hand, I think they’re also relieved to know that they didn’t invest thousands of dollars into developing and marketing a problematic trademark.  Well, that’s of course assuming they hired a trademark attorney to clear their mark before creating labels, product packaging, websites, signage, business cards, and advertisements.

So, it’s back to the drawing board for my client, which maybe is not such a bad place to be considering where he could have been had he imprudently chose to rely on the search he conducted himself.

It probably doesn’t take a genius to figure out what types of programs are opened when these icons are touched (no, you don’t make a phone call by touching the camera icon).  What’s important to note about these icons is that they launch programs that are intrinsic to the devices themselves (telephone calls, email, text messaging, address book, and shooting photographs).  In other words, they are not software applications that merely “open the door” to information or functionality provided by a third-party.  Therefore, these icons do, in fact, function as trademarks to designate the source of the application, which is Apple.

On the other hand, Apple has also applied to register the following four icons for software applications that also come preloaded on its devices (again, click on the icon to see the trademark application):

For my readers who haven’t yet made the switch to the best smartphone on the market (you will eventually, trust me), the first icon allows the user to access videos on YouTube (a website not owned or operated by Apple).  The second one launches Google Maps.  The third icon allows the user to view weather information provided by Yahoo!.  And the last one opens an application which displays current stock prices and other financial information, also provided by Yahoo!.  In fact, when the weather and stock applications are launched, Yahoo’s well-known “Y!” logo appears on the bottom left corner of the screen with no reference to Apple whatsoever.  Furthermore, the word “YouTube” sits directly below the first icon when displayed on the iPhone screen.

So, what distinguishes these four icons from the previous five?  Well, these icons and their associated programs act more as an entry point to services and information provided by companies other than Apple.  Therefore, I believe there is a serious question as to whether users actually view these icons as source indicators (trademarks) for Apple’s computer software or, in contrast, they see them as source indicators for the underlying services provided by YouTube, Google, and Yahoo.  I mean, is there really any difference between these four icons and those associated with the other 150,000 apps available for download from the iTunes App Store created by independent developers?  For instance, when I purchase casino games from my favorite app developer (OK, I get them for free since he’s a good friend of mine), and the icon shows up on my screen, it’s not like I think that Apple is all of a sudden the company behind the game or the software.  Then, when I launch the game, the logo of the app developer appears and my game begins.  The same thing is true when I touch these four icons.  If anything, I would argue that these four icons function more as trademarks for YouTube, Google, and Yahoo! than they do for Apple.  If that’s true, then Apple would have little basis to maintain its trademark applications for those icons.  Of course, it’s a factual question that would perhaps require some survey evidence to answer, but the question remains nonetheless.