Part of my responsibility as a trademark attorney is to help individuals make informed decisions.  My law practice is devoted exclusively to educating people about trademarks, as well as helping them research, register, and defend their marks.

That said, I feel compelled to provide some background on a web-based company called Trademarkia.  Trademarkia is very similar to LegalZoom in that it is not a law firm.  Also, just like LegalZoom, Trademarkia apparently believes that people who are seeking trademark services can be properly served through a one-size-fits-all approach.

However, my experience has shown that most people are grossly underserved – if not downright blindsided – by the kind of one-size-fits-all approach offered by Trademarkia.

Trademark clearance and protection is serious business.  A trademark is one of the most valuable assets your business will ever own.  You have to do everything exactly right in order to acquire and maintain trademark protection.  So why would you increase the risk of delays, challenges, rejections, and potential litigation by not consulting with an experienced trademark attorney from day one?

So, before you make a decision that you will likely regret, let me fill you in on the disturbing truth about Trademarkia, including what it is and how it operates.  By the way, Trademarkia is in the process of changing its name to “LegalForce.”  But, for the sake of this article, I will refer to the company as Trademarkia because that is currently its most recognizable name.

What is Trademarkia?

Trademarkia is basically a search engine. According to its own website:

“Trademarkia is a US corporation that develops Internet and software technology to aid the public in search of government records.”

“Trademarkia.com is a separate software development company which creates software programming code to deliver automated search functionality using free government and non-government public data.”

Now, I have to ask you, can a search engine think?  Can it ask questions that focus on and address your unique needs?  Can it advise you on the proper course of action? Can it help you avoid the mistakes and pitfalls that may delay or void your trademark application?

Of course, the answers to each of these questions are all “NO.”  A search engine only retrieves data based on the input you provide. If you provide imprecise or incorrect information, the search engine will provide imprecise or incorrect results.  Unfortunately, this means you could be making important decisions based on completely inappropriate information, thereby wasting your hard-earned money.

Can I Reach Trademarkia by Telephone?

This time the answer is “YES,” but you will only get a customer service representative and not a licensed attorney.  In fact, there are some very important warnings about speaking with a Trademarkia customer service representative (CSR) listed right on Trademarkia’s website:

“Trademarkia customer service representatives cannot answer legal questions and you should not share confidential communications with them.”

“Trademarkia customer service representatives can only answer basic questions about our search engine and direct you to public sources of information that might have answers to your questions.”

“CSRs cannot file trademark applications, nor provide any consultation or advice relating to a particular user’s trademark(s).”

So, basically, you can call Trademarkia customer service, but don’t expect too much in the way of actual customer service.

Does Trademarkia Offer Legal Advice?

The short answer is “NO.” The long answer is also “NO,” but I’ll refer you once again to Trademarkia’s own website because it says “NO” much more eloquently:

“Trademarkia is not a lawyer, law firm, legal services provider, or a legal service, is not acting as your attorney, and is not a substitute for an attorney or law firm. The information provided in this site is not legal advice.”

“No attorney-client privilege is created with Trademarkia, Inc.”

“Trademarkia, Inc. cannot provide you with ANY legal advice.  You are encouraged to consult with an attorney in your local geography for legal advice.”

Well, I wholeheartedly agree with Trademarkia that you should always contact an attorney for legal advice.  And I strongly encourage all individuals with trademark needs and questions to do so.  But wait, things are getting even more interesting…

Who is Behind Trademarkia?

And now we get to the part of Trademarkia that is really interesting…and really confusing.  On its website, Trademarkia clearly states that it is not a lawyer, a law firm, or a provider of legal services and, therefore, cannot offer any legal advice or guidance.  However, as we take a step closer and peer through the misty veil of Trademarkia, we can see that there is indeed a law firm lurking in the shadows.

Again, let me share what Trademarkia posts on its website:

“I understand that the Trademarkia.com website and search engine was created by the law firm Raj Abhyanker P.C. in Mountain View, California but is a separate business from the law firm.”

“Trademarkia is a technology company who provides advertising services to attorneys and law firms who choose to advertise their services on Trademarkia websites.”

“I understand that only one law firm is invited to advertise on Trademarkia.com in each country, and that Raj Abhyanker P.C. is the exclusive advertiser on Trademarkia.com in the United States.”

“I understand that if I decide to file a trademark application in the United States, I will be represented solely by U.S. licensed attorneys at the law firm of Raj Abhyanker P.C.”

So what gives?  Essentially, Trademarkia is merely a lead generation website used to solicit thousands of trademark applications for the law firm of Trademarkia’s founder Raj Abhayanker.  It provides a free trademark search engine (not unlike the free search you can conduct on the Trademark Office’s own website) which is designed to lure people into applying to register their trademarks without first receiving any legal consultation, advice, or guidance as to whether filing a trademark application is even in their best interest.  Pretty scary stuff if you ask me.

Here’s The Bottom Line…

When you contact my trademark law firm, you will talk to me, an experienced and knowledgeable trademark attorney.  You will not have to deal with a search engine, a customer service person, a paralegal, or even a legal secretary.  When you browse through my website, you will read articles and watch videos about how I can help you achieve your goals in a professional and efficient manner.

More importantly, as your attorney, I will give you all of the legal advice and education you need to make decisions that are right for you.  I will also provide you with personalized service from the moment you contact me, whether it be for conducting a trademark search, preparing your trademark application, or resolving a trademark dispute.

I’ll tell you what.  Why not read for yourself what Trademarkia has to say? Just review the Terms & Conditions section of Trademarkia.com (or LegalForce.com), and if you feel confident it can help you efficiently navigate the complexities and potential pitfalls that are inherent in the trademark search and trademark registration process, then by all means go for it.  Otherwise, please give me a call at (314) 749-4059 and let’s get started on the right foot.

The post Trademarkia Review (Part 1) – Is Trademarkia a Scam? appeared first on .

The United States Patent and Trademark Office (USPTO) uses what is called the “Nice Classification of Goods and Services.”  Basically, this is just a way of classifying goods and services for the sole purpose of trademark registration.  The Nice Classification is the standard used by many countries throughout the world and allows for much greater consistency and coordination between the trademark offices of those countries.  It also benefits trademark owners in the United States and abroad because it simplifies and reduces the cost of applying to register their marks in foreign countries.  Furthermore, the Nice Classification makes conducting a federal trademark search easier and less time-consuming for a trademark attorney because the search can be narrowed to include only the relevant trademark classes.

How are Products and Services Classified?

The Nice Classification groups all products and services into a few dozen categories.  These categories are called “trademark international classes” (or just “trademark classes” for short).  Each trademark class is assigned a number and each trademark class comprises particular types of products or services.  For example, trademark International Class 25 includes primarily clothing, headwear, and footwear, while International Class 14 covers jewelry, watches, and clocks.  Similarly, if a trademark is used in connection with financial planning services, it would fall into Class 36.  But, if the same trademark was used for home construction services, it would be classified in International Class 37.  You can use the Acceptable Identification of Goods and Services Manual (the “ID Manual”) located on the Trademark Office’s website as a guide to determine which trademark class encompasses your products/services.

Trademark Classes and Trademark Registration

When you apply to register your trademark, it often happens that the products/services with which your mark is (or will be) used fall into multiple trademark classes.  For instance, a company such as Disney has federally registered its DISNEY trademark in at least a couple of dozen classes because it sells such a wide variety of products and services under the DISNEY name.  If you think about all of the DISNEY-branded products in the marketplace (clothing, figurines, toys, food items, jewelry, hair accessories, computer software, cell phone accessories, etc.) and services (theme parks, television programs, films, cruise lines, etc.), you can easily see how a single trademark may be eligible for registration in numerous classes.  However, you have to keep in mind that the filing fees you pay to the Trademark Office will depend on the number of trademark international classes in which you want your trademark registered.  Each trademark class you choose will substantially increase the overall costs of trademark registration, especially if you are filing on an intent-to-use basis and anticipate that your products/services will not be on the market for a couple of years or more.  This is because you also pay Statement of Use and Extension of Time fees based on the number of classes in your application.

If you have any questions or concerns about trademark classes in general, or need to know in which trademark international class your products/services are categorized, please do not hesitate to contact me for a free legal consultation.  I hope to hear from you soon!

The post What is a Trademark Class? How Do I Choose the Correct Trademark International Class? appeared first on .

The first thing you need is the final version of the logo you want to register.  It is extremely important that you do not apply to trademark a logo that is only in its development stages because if the appearance of the logo significantly changes after your trademark application is filed, the Trademark Office will not permit you to amend your application to reflect the revised mark.  This would leave you with little choice but to file a brand new application and to start the trademark registration process all over again.  So, although you certainly want to apply to register your logo as soon as possible, you should wait until you’re close to 100% sure that the logo you submit to the Trademark Office is the one that you intend to use in connection with the advertising and sale of your products/services.

Color or Black and White?

Before you apply to trademark a logo, you need to decide whether you want to register it in color or in black and white.  Although many individuals and businesses choose to register their logos in color, there are a couple of compelling reasons why you should consider applying to register your logo in black and white.  First, it is possible that you may end up changing the colors in your logo during the trademark application process or some time after your trademark registration has issued.  Should that occur, you will have to seek to amend your trademark application and/or registration so that your logo matches the way in which you’re actually using it in your advertising materials or on your product packaging.  If the colors have changed drastically such that it would be considered a “material alteration” of your trademark, the Trademark Office will not allow the amendment.  This could seriously jeopardize and call into question the viability of your trademark application or trademark registration.  On the other hand, when you apply to trademark a logo in black and white, you can use the logo in any color you want and can make changes to the colors without having to worry about amending your trademark application or registration.

Use of the ® Symbol

Another notable advantage of applying to trademark a logo in black and white is that, once your trademark registration is granted by the Trademark Office, you can use the ® symbol in close proximity to your logo no matter what colors it comprises.  In contrast, if you register your logo in color, you can only use the ® designation when your logo is presented in those exact colors.  Again, this could be detrimental if you vary the color of your logo on a regular basis or do a lot of printing in plain back and white.

Trademark Application Requirements

On the trademark application form, you will be asked to provide a textual description of your logo.  This description must be quite detailed and address all of the features of your logo.  Furthermore, if you decide to apply to register your logo in color, you will also need to claim color as a feature of the trademark and add as part of your description the colors that are incorporated and where they’re located.  The more complex, intricate, and colorful your logo is, the longer your description is likely to be.  You will also be asked to upload a copy of your logo in a size and format that conforms to the Trademark Office’s rules.

If you have any questions about how to trademark a logo, or would like some assistance federally registering your logo as a trademark, please feel free to give me a call or shoot me an email.  I’m here to help in any way I can.

The post How Do I Trademark a Logo? appeared first on .

A generic product name receives no protection whatsoever and is ineligible for federal trademark registration under any circumstances.  If you intend to sell t-shirts under the name SHIRTZ, you would be unable to protect that name because it is merely the phonetic equivalent of the English language word “shirts,” which is the generic term for your products.  The downside to choosing a generic name for your product is that you cannot stop your competitors from using the exact same name for their products.  But, the good news (if you can call it that) is that you never have to worry about being sued for trademark infringement and you don’t have to spend any money conducting a trademark search or obtaining a federal trademark registration.

Descriptive Product Names

A descriptive product name immediately describes a feature, quality, or characteristic of the product.  A good example would be the name RAPID GLUE for a glue that dries quickly.  The problem with descriptive product names is that they receive a very narrow scope of protection and are initially not entitled to federal registration on the Principal Register (although they may be allowed on the Supplemental Register).  Generally speaking, a descriptive product name must be in commercial use for at least five years and have acquired “secondary meaning” before it is eligible for registration on the Principal Register.  So, while descriptive product names tend to be popular because they tell consumers something desirable about the product, they are not a particularly good choice if you want a trademark registration or want to exclude others from using a somewhat similar name for the same type of product.

Suggestive Product Names

A suggestive product name suggests something about the product.  For instance, the name LAVA for a chili sauce would be considered a suggestive product name.  Why?  Because LAVA suggests that the chili sauce is burning hot.  Another example would be SNIFFLES for tissues.  Most product names you’ll come across in your daily life fall into this category.  Unlike descriptive product names, suggestive names are eligible for federal trademark registration right off the bat and receive a relatively broad spectrum of protection.  Suggestive product names are definitely a solid choice from a trademark standpoint.

Arbitrary Product Names

An arbitrary product name is one that consists of a regular English language word applied in an unfamiliar manner.  For example, if you wanted to use the word STAPLER for a tennis racket, that would be an arbitrary use of the word “stapler” because tennis rackets don’t perform the ordinary functions of a stapler.  Arbitrary product names enjoy a broad scope of protection and are able to be federally registered with the USPTO.

Fanciful Product Names

Finally, a fanciful product name is one that is completely made up and has no meaning in the English language.  So, the name YAGZET for a brand of laundry detergent (or really any product) would be a fanciful product name because it means absolutely nothing.  Fanciful product names are eligible for federal registration and receive the greatest amount of protection under the law.

If you have any questions about whether you can trademark a product name, or are unsure about which category your product name would fall into, please do not hesitate to contact me.  I would be happy to assist you.

The post Trademark a Product Name? Can Yours Be Registered as a Trademark? appeared first on .

Option #1 – File a Response that Satisfies All Outstanding Requirements

You will receive a final office action if you did not properly address a relatively straightforward issue raised in a previous non-final office action.  For instance, the trademark examining attorney may have requested that you amend the identification of products/services listed in your trademark application, enter a disclaimer of a descriptive portion of your trademark, or modify the description of any design elements that are part of your trademark.  In the event you failed to comply with the trademark examining attorney’s requests, a final office action will be issued reiterating those same requests.  If you prepare and file a response to the final office action that fully satisfies all outstanding requirements, then the trademark examining attorney will approve your trademark application and it will continue through the registration process.  If you don’t, your application will go abandoned.

Option #2 – File a Request for Reconsideration

You will also receive a final office action if you were unable to previously overcome a serious substantive rejection of your trademark application.  While the most common substantive rejection is likelihood of confusion, your trademark can also be refused registration for many other reasons, including if your trademark is merely descriptive, scandalous, deceptive, geographically descriptive, or merely a surname.  In the event you were unsuccessful in persuading the trademark examining attorney to withdraw the rejection, you may want to consider preparing and filing a Request for Reconsideration in order to submit additional arguments and evidence that might sway the trademark examining attorney in your favor.  If the Request for Reconsideration fails, you can use these additional arguments and evidence in an appeal to the Trademark Trial and Appeal Board (“TTAB”) (see Option #3 below).  One thing to remember is that filing a Request for Reconsideration does not extend the deadline for filing an appeal with the TTAB, which is six months from the mailing date of the final office action.

Option #3 – File an Appeal with the Trademark Trial and Appeal Board

Regardless of the issues presented in a final office action, you have the right to file an appeal with the Trademark Trial and Appeal Board (“TTAB”).  Again, the appeal must be timely filed or else your application will go abandoned.  The Notice of Appeal and all subsequent legal briefs can be submitted electronically with the TTAB.  Because an appeal can involve complex legal issues and will require an intimate knowledge of the TTAB’s rules and procedures, I urge you to consider working with a skilled and experienced trademark attorney to maximize the chances of winning your appeal.

If you have any questions or concerns about how to effectively deal with a final office action, please feel free to contact me.  As a trademark attorney, I can help you avoid the unnecessary costs and substantial consequences of your trademark application inadvertently going abandoned.  I’m always glad to provide assistance.

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You can perform a very basic USPTO trademark search yourself on the Trademark Office’s website (www.uspto.gov).  Although this basic search will not reveal all confusingly similar trademarks, it is a very good starting point for your trademark research.  All you have to do is type in the words that comprise your trademark and see what comes up.  Unfortunately, if your trademark consists of very common words, it is possible that hundreds (if not thousands) of applications and registrations will be returned as results.  If this happens, you may want to consider working with an experienced trademark attorney who can use a variety of methods to pick out the ones that are most likely to be cited by the Trademark Office as a basis for refusing registration of your trademark.

Trademark Search Results

The basic USPTO trademark search is sometimes called a “knockout” search because it will only reveal very obvious conflicts with your trademark.  If you find such a conflict, then there is no reason to hire a trademark attorney to conduct a more thorough federal trademark search because he/she will quickly find the same problem you did.  On the other hand, if your search did not find any obvious conflicts, or if it uncovered a few trademarks that are somewhat similar and you’re not sure whether they could be problematic or not, then that is when you should contact a trademark lawyer to advise you of any risks associated with using and applying to register your trademark.

Is it a Comprehensive Trademark Search?

One thing to remember is that a USPTO trademark search is not a comprehensive trademark search.  For instance, it will not reveal any trademarks that have been registered only at the state level.  Each state maintains its own trademark registry and it is possible that someone owns a state trademark registration for a mark that is identical or confusingly similar to your mark.  In addition, a USPTO trademark search will not uncover “common law” trademarks that have never been registered at the federal or state level, but are being used in commerce in connection with the advertising and sale of products or services.  Although the Trademark Office  cannot cite state trademark registrations or common law trademarks as a basis for rejecting your trademark application, there is always the chance that an owner of a state registration or common law trademark could challenge your application during the trademark opposition period.

Of course, if you need some assistance with your USPTO trademark search, please do not hesitate to give me a call.  As an attorney who focuses exclusively on trademarks, I can provide the guidance you need to streamline your search and help you avoid unexpected delays and pitfalls.  I look forward to hearing from you soon!

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Last week, a friend of mine emailed me an article about a trademark issue related to the Trayvon Martin story. In the event you haven’t heard about Trayvon Martin because you’ve been doing research in Antarctica for the past month, Trayvon was an African-American teenager who was shot and killed in Florida by a neighborhood watch captain who claims he was acting in self-defense. Trayvon was wearing a hooded sweatshirt and was unarmed at the time he was shot. The controversial killing has received an enormous amount of media coverage because the shooter has not been arrested by Florida authorities and it appears from a 911 call that he might have provoked Trayvon by following him throughout the neighborhood and approaching him when there was no justification to do so. The case has understandably sparked public outrage in many parts of the country and has resulted in numerous demonstrations and protests during which participants have chanted such phrases as “I AM TRAYVON” and “JUSTICE FOR TRAYVON.” These two rallying cries have appeared on t-shirts and hats worn by Trayvon’s supporters, as well as on large signs and banners used during the protests.

On March 21, Trayvon’s mother, Sybrina Fulton, applied to federally register the trademarks I AM TRAYVON and JUSTICE FOR TRAYVON for a wide variety of prerecorded digital media featuring Trayvon Martin. You can view the trademark applications here and here. Both applications were filed on an intent-to-use basis, meaning that Ms. Fulton had not used the marks prior to the filing date of the applications. Needless to say, I think it’s more than a little weird that Ms. Fulton is preoccupied with filing trademark applications less than a month after her son was killed. Although Ms. Fulton claims that she doesn’t intend to profit off the trademarks she’s seeking to protect, the whole point of filing an application is to protect your commercial interests in a trademark and to obtain exclusive rights so that you can prevent others from using a mark that’s confusingly similar. If Ms. Fulton truly has no commercial interests and does not want to stop others from using Trayvon’s name, then I question why Ms. Fulton would spend $650 in government fees to file two trademark applications.

But Ms. Fulton is not the only person wanting to “protect” Trayvon’s name. Just two days after Ms. Fulton filed her applications, a California resident named Marcus Singletary filed an intent-to-use trademark application for JUSTICE FOR TRAYVON for “hooded sweatshirts.” And then on March 27, a Kansas resident by the name of Martin Markley filed a trademark application for IF I HAD A SON, HE’D LOOK LIKE TRAYVON for “licensing of advertising slogans and cartoon characters.” Now, this phrase might sound familiar to you because it received an incredible amount of media attention after President Obama said it during a press conference at the White House on March 23. Well, apparently, Mr. Markley was the originator of this phrase because he claims in his trademark application that he first used it on March 17, which is almost a week before President Obama ever uttered those words. As fine a person I’m sure Mr. Markley is, I think it’s more likely that he’s suffering from a debilitating case of the fibs rather than temporarily obtaining superhuman powers to see into the future.

I’m very curious about how all four of these trademark applications are going to be treated by the Trademark Office. The Lanham Act (which is the primary federal trademark registration statute) prohibits the registration of trademarks that “falsely suggest a connection with persons living or dead.” To establish that a proposed trademark falsely suggests a connection with a particular person, it must be shown that:

(1) the mark is the same as, or a close approximation of, the name or identity previously used by a particular person;
(2) the mark would be recognized as such in that it points uniquely and unmistakably to that particular person;
(3) the particular person named by the mark is not connected with the person or entity providing the products/services; and
(4) the fame or reputation of the particular person is such that, when the mark is used with the products/services, a connection with the person or institution would be presumed

In my opinion, the trademarks in all four applications satisfy elements (1), (2) and (4). As to the first element, each trademark includes the name “Trayvon,” which is the legal first name of Trayvon Martin. In reviewing the second element, most people would recognize the marks as pointing to Trayvon Martin because JUSTICE FOR TRAYVON and I AM TRAYVON were being used by thousands of people during highly publicized demonstrations, and IF I HAD A SON, HE’D LOOK LIKE TRAYVON was a nationally broadcasted statement made by Barack Obama specifically referencing Trayvon Martin that was repeatedly analyzed and commented upon on television, radio, and the Internet. As to the fourth element, I think there is little question that Trayvon Martin is currently the most well-known deceased teenager in the country, and when you consider the types of products and services that are listed in the applications, a connection could easily be presumed.

But that still leaves the third element, which is whether Trayvon Martin is “connected” with the people who filed these four applications. When we’re talking about a deceased person, a key consideration is whether or not there is someone (a person, estate, or juristic entity) that has rights in the name and can assert such rights against others. As far as I know, Trayvon Martin had no connection whatsoever with Marcus Singletary or Martin Markley. They just appear to be random people who want to make a quick buck off a bad situation. But what about Trayvon’s mother? Does such a “connection” exist? Well, if you look at the Florida Right of Publicity statute, it states that consent to commercially use the name of a deceased person must come from a surviving spouse or surviving children. Trayvon Martin did not have a surviving spouse or a surviving child who could provide Ms. Fulton with such consent. This makes me wonder whether Ms. Fulton has any more right to register her son’s name than Marcus Singletary or Martin Markley. Since I am far from an expert on right of publicity laws (especially those in Florida), I would love it if someone out there could shed some light on this issue. It would be most appreciated.

I will continue to monitor all four applications and will let you know what happens in about 3-4 months when the Trademark Office examines them. If you love trademarks as much as I do, I’m sure you can’t wait.

The post A Trademark for Trayvon: Protection or Exploitation? appeared first on .

Last week, I received a telephone call from a guy located in Florida who was on the verge of opening a new business.  Apparently, he was thinking about using LegalZoom to assist in the preparation and filing of his trademark application.  For those of you who don’t already know, LegalZoom is an online legal document preparation service.  It is not a law firm and it cannot offer any legal advice or guidance.  People who are looking to register a trademark with LegalZoom (God forbid) are asked to fill out a questionnaire that resembles the official trademark application form provided by the Trademark Office.  They submit their responses to LegalZoom with a payment that covers LegalZoom’s service charge and the government filing fee for the application.  Without checking for accuracy or completeness, LegalZoom transcribes the responses onto the Trademark Office’s official application form and submits it on behalf of its customers.  There is absolutely no review by LegalZoom as to whether the trademark is even eligible for registration, which is a problem considering that there are many categories of trademarks that are completely barred from being federally registered.

Anyway, as my potential client was conducting some Internet research into LegalZoom and its trademark registration service, he happened to stumble across three of my previous blog posts in which I detail the many problems with LegalZoom and the reasons why people should avoid using LegalZoom like the plague.  After I was done patting myself on the back for having such awesome search engine optimization, I started asking him some questions about his trademark and his business.  He indicated that he was going to be starting a website on which people can purchase clothing and other merchandise that have funny, amusing, and/or distasteful sayings printed on them.  Because the name he was considering using was pretty unique, he was concerned about competitors adopting a similar name with the intent to capitalize on any success and good fortune he may have.  He had heard LegalZoom’s commercials on television and satellite radio and decided to check it out.  And as I mentioned earlier, his research into LegalZoom led him to your humble trademark attorney.  I guess I was able to make him doubt LegalZoom just enough to consult with me before handing over $494 to LegalZoom.

Well, I think he’s pretty happy that he made that phone call because I just saved him $494.  Under the Lanham Act (which is the primary federal trademark statute dealing with trademark registration), a trademark that “consists of or comprises immoral, deceptive, or scandalous matter” may not be registered with the Trademark Office under any circumstances.  The trademark my potential client wanted to register prominently featured a well-known and highly profane term.  Without going into too much detail, let’s just say that the word appears in George Carlin’s original list of “Seven Words You Can Never Say on Television.”  A very quick search of the Trademark Office’s records revealed that every single trademark application ever filed with this particular word had been rejected by the Trademark Office on the basis that the mark would be considered immoral or scandalous by a large segment of the American public.  As such, I informed him that there was an extraordinarily high probability that the Trademark Office would treat his application in a similar fashion and that the chances of overcoming such a rejection would be practically non-existent.  Although he wasn’t thrilled about the inability to register his trademark, he was grateful that I saved him a few hundred dollars and even offered to send me some money for my time and advice.  I told him I’d just count it toward my pro bono hours for the year.  After all, didn’t I just do a public good by bringing LegalZoom one step closer to bankruptcy?  You’re welcome America.

The fact of the matter is that LegalZoom would have done nothing to dissuade my potential client from filing his trademark application.  Why?  Because nobody at LegalZoom has a clue which trademarks are entitled to federal registration and which ones aren’t.  It would have happily pocketed the money and laughed all the way to the bank.  And where would that have left this budding entrepreneur?  I’ll tell you where.  $494 in credit card debt and a trademark application that isn’t worth a $@#!.

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But Mr. Mbeh isn’t the only moron who wasted at least $325 filing a trademark application that had no chance of being approved.  On January 20 (13 days after Blue was born), a company by the name of CBH By Benton Clothier LLC submitted a trademark application seeking to register BLUE IVY CARTER GLORY IV for a wide range of perfumes, fragrances, lotions, and other beauty products.  Although the Trademark Office did not cite the existing trademark registration for BLUE IVY as a basis for rejection, it did refuse registration because (1) the trademark falsely suggests a connection with Blue Ivy Carter and (2) the mark consists of a name that identifies a living individual whose consent to register the name is not of record.  The only twist in this application is that CBH By Benton Clothier claims that it has been using its trademark since February 14, 2011, which would be before Beyonce was even pregnant.  Needless to say, I am highly skeptical of CBH’s claimed first use date.  Either CBH is lying or it was able to see into the future.  If it’s somehow the latter, I would still question why it took CBH almost a year after its amazing feat to file its trademark application and reserve its rights in the trademark.  That’s like knowing what team is going to win the World Series at the beginning of Spring Training and forgetting to call your bookie.

Besides the amusement factor of these two applications, I find them interesting for another reason.  Both applications were examined by the Trademark Office within two weeks of them being filed.  It usually takes 3-4 months for a trademark application to be reviewed and applications are generally reviewed in the order they are filed.  According to this article from The Washington Post, officials from the Trademark Office anticipated that trademark applications with BLUE IVY CARTER would show up so it was ready to quickly bat them down.  I don’t believe this explanation for one second.  It makes absolutely no sense that the Trademark Office would be actively looking for trademark applications containing BLUE IVY CARTER for the sole purpose of rejecting them quickly.  Besides the fact that the Feds rarely do anything quickly, the birth of Blue Ivy Carter would not seem to be of such national significance to anticipate having to deviate from typical Trademark Office procedure.  I know that the Trademark Office did something similar when Barack Obama was gaining popularity and won the presidency, but to think that Blue Ivy Carter would get the same treatment as Barack Obama sounds laughable to me.  I think it’s much more likely that Jay-Z and Beyonce have very high-powered and well-connected trademark attorneys who contacted the Trademark Office immediately after learning of these applications.  This theory is supported by the fact that Beyonce’s company filed its own trademark application for BLUE IVY CARTER on January 26 and likely conducted at least a cursory trademark search prior to filing.

I’m going to leave you with one final thought to ponder.  What if these two applications were just for BLUE IVY and not BLUE IVY CARTER?  What if an application for BLUE IVY was filed years after Blue’s birth or after Jay-Z and Beyonce were no longer in the public eye?  What if the application was for BLOO IVEE?  In all three cases, would the timing of the applications be the determining factor?  Yes, this is what I spend my time thinking about.

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This week’s article is about the recent antics of Norwood Promotional Products, LLC.  Norwood is a major supplier of imprinted promotional products.  It is probably best known for its line of KOOZIE insulated can and bottle sleeves, but it also offers hundreds of other items on which you can print company names and logos or really anything else you desire.  Did you know that KOOZIE was even a trademark?  Most people just use the term generically to refer to insulated beverage sleeves, but it actually is a registered trademark owned by Norwood.  Although it may not be for long since there is some ongoing litigation about whether KOOZIE has become just a generic word.  But that’s a story for another day.

Norwood is the owner of a 2010 federal trademark registration for NORWOOD ICATALOG for “electronic catalog services featuring promotional products and custom imprinting services.”  Although this registration is on the Principal Register (which is where businesses want their trademarks to be), the word “ICATALOG” has been voluntarily disclaimed by Norwood.  A disclaimer means that Norwood does not claim any exclusive rights to use the term “ICATALOG” because it is merely descriptive of the services listed in Norwood’s registration.  I also note that Norwood owns another trademark registration for ICATALOG by itself for “custom imprinting on advertising and promotional products.”  This registration is on the Supplemental Register, which is another concession by Norwood that “ICATALOG” is descriptive and entitled to only the narrowest scope of protection, if any.  In this registration, Norwood claims to have been using ICATALOG only since November 2008, which is a very short period of time in the trademark universe, especially when we’re talking about highly descriptive trademarks like ICATALOG.  In general, a descriptive trademark needs to be in continuous use for a minimum of five years before the Trademark Office will even consider granting the trademark owner exclusive rights in the trademark.  Sometimes, a particular term is so descriptive that it is almost impossible to prove that consumers recognize it as a trademark belonging to a single owner rather than simply a word that tells them something about the product or service.

On July 15, 2011, a business by the name of Thomas Publishing Company filed a trademark application seeking to register the following trademark for services related to the publishing, provision, and hosting of electronic catalogs:

As you would expect, the Trademark Office required Thomas Publishing to disclaim the exclusive right to use ICATALOGS since it is unquestionably descriptive of the services listed in the application.  In fact, if you check out Thomas Publishing’s website, you will see that it’s sort of a central repository where manufacturers can upload their electronic catalogs so that buyers can more quickly and easily research different types of industrial products.  The Trademark Office did not cite either of Norwood’s registrations as a basis for refusing registration of Thomas Publishing’s trademark, most likely because Norwood has twice admitted that it doesn’t own exclusive rights in the incredibly descriptive word “ICATALOG.”  As such, Thomas Publishing’s application was approved by the Trademark Office and was published for opposition on December 27, 2011.

Well, I bet you can guess what happened next.  Despite the fact that Norwood has twice conceded any exclusive rights in the word ICATALOG, it decided to go ahead and file an opposition against Thomas Publishing’s trademark application on the basis of priority and likelihood of confusion with its two registered marks.  The most interesting thing about the notice of opposition itself is that Norwood fails to mention that one of its registrations is only on the Supplemental Register and the other one includes a disclaimer of ICATALOG.  Of course, it’s understandable that Norwood doesn’t want to emphasize these facts, but I also think its candor with the Trademark Trial and Appeal Board is somewhat lacking.  Needless to say, ignoring the hard truth signals to me that Norwood knows that its case is flimsy at best, and completely outrageous at worst.

I might have to change careers if Norwood manages to pull out a victory in this opposition.  It seriously would be that appalling to me.  The policy behind not allowing descriptive words or phrases to be monopolized as trademarks by a single business is so that competitors are not unfairly hindered and constrained from using them to legitimately advertise and sell their products and services.  I mean, why does Norwood have any more right to use ICATALOG than Thomas Publishing when both companies use it in association with services related to catalogs available over the Internet?  Let’s face it, how many ways are there to refer to an electronic catalog and still have ordinary consumers know what the heck you’re talking about?  Not very many.  Here is the miniscule list I came up with:

ICATALOG
ECATALOG
ELECTRONIC CATALOG
INTERNET CATALOG
DIGITAL CATALOG

So, if the Trademark Office awards a victory to Norwood, it would essentially be giving Norwood the ability to exclude others from using ICATALOG for products/services related to electronic catalogs.  And if that happens, there would be absolutely nothing stopping someone else from owning ECATALOG.  Or ELECTRONIC CATALOG.  Or INTERNET CATALOG.  Pretty soon, there would be no reasonable alternatives left to use.  I am fairly confident that the Trademark Office will see things the way I do and slap Norwood around a little for filing such utter and complete nonsense, but you can never know for sure.  It’s just a shame that Norwood prefers to make unnecessary and expensive trouble rather than just act in an honest and decent manner in the first place.

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