Category Archives: Trademarks

What to do with those pesky ™ and ® symbols, and when to use them

Ilene Stritzver at CreativePro.com offers handy tips for creative professionals in typesetting the trademark (™) and registered trademark ® symbols. Her article discusses what fonts to use, how to place the trademark symbols, what sizes should be used, and how to adjust the fonts for ugly trademark indicators.

Ms. Stritzvers example of a registration symbol too big, just right, and too small

Ms. Stritzver's example of a registration symbol too big, just right, and too small

But in addition to placement of the symbols, here’s a quick primer on their use and application, if you’re new to the trademark world.

Many creative professionals–and even many attorneys–do not know the difference between the ™ and the ® symbols, or when they should be used.

In the United States, the ™ symbol is used in connection with trademarks that have not been registered with the U.S. Patent & Trademark Office. It can mean that an application is on file, or it can mean that, even though no registration has been sought, the trademark owner claims “common law” or state trademark rights.  Adding the ™ notice is very important, because it is the only way to communicate to the public and to competitors that you’re claiming this word as a trademark. Should a competitor come along later and use a similar trademark on similar goods and services, and you try to make them stop, it is easier for them to argue that (a) they believed you were not using the term “in a trademark sense” but were using it “descriptively” or just as part of plain language, or (b) that, at a minimum, they were not “willfully infringing” on your trademark (which gives the mark holder additional remedies) because you had not provided the notice to the world that you were claiming exclusive rights to use the mark.

In the U.S., “®” is the designation for trademarks that have been registered with the USPTO. Not with your secretary of state, not with any state trademark authority, not with any third-party “registration service,” but with the federal government.  In the United States, trademark rights are acquired upon use rather than registration; however, there are legal advantages to registering a trademark federally.  These include a presumption of validity, a clear date of first use, and nationwide priority at least as early as the date of registration.  Therefore, there is a (slim) possibility that if a person uses an ® symbol improperly, the rights holder could forfeit some of her rights in the trademark (because the trademark owner falsely asserts federal trademark rights in a mark for which they have not received a federal registration).

Technically, there is one more trademark designation missing — “sm” for “service mark.” A service mark is a mark that is used in connection with services rather than goods. Thus, COCA-COLA for “soft drinks” is a trademark, and COCA-COLA DAY (if it existed) for “charitable fundraising services” would be a service mark.  Section 3 of the Lanham Trademark Act recognizes that service marks are “registrable, in the same manner and with the same effect as are trademarks,” and the law does not otherwise substantially distinguish between a trademark and a service mark.  (There are a few minute differences; for example, the USPTO will accept advertisements as “specimens,” or proof of use of the service mark, whereas it will not accept pure “advertisements” for trademarks.) The ® symbol is applied both to registered tradmarks and service marks, but technically “sm” should be applied to unregistered service marks, while ™ should be applied to unregistered trademarks.  The problem, of course, is that there is no ASCII “sm” character, which means that adding an “sm” character, especially in body text, can be cumersome and annoying.  I am not aware of any case that holds that ™ is improper notice for a service mark, but then again, I’ve not looked for such a case.  In other words, if you’re really nervous about giving notice about a particular tradmark, err on the side of caution and use “sm”.

(Please note that ™, “sm,” and ® refer only to trademarks, and not copyrights or patents.)

A thorough trademark attorney, in house counsel, or even a design professional adding the trademark symbols to logos, should be aware of the differences and might want to confirm the status of any trademark periodically when new logos or publications are designed.

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A new (.tel) TLD, a new day for cybersquatters.

Based upon this press release (pdf), Telnic, a British company, is offering a new top-level domain (TLD) “.tel”.

“.tel” is a slightly different domain– According to the Telnic website, “The value of a .tel domain lies with the ability to host personal (or corporate) contact information directly in the DNS, which can then be universally accessible. This stands in contrast to the typical use of the DNS for other TLDs, in which the DNS only provides a mapping between domain names and IP addresses.” For individuals, Telnic can host a page that if accessed, provides contact information for a multitude of devices.  For companies, Telnic provides specialized pages for contacting the business, creating an on-line voting system, etc.

“.tel” domains are supposed to be There is a very limited “sunrise” period, where businesses with registered trademarks get first shot at new domains in the “.tel” TLD. Anyone who applied for a trademark by May 30, 2008, and who has achieved a registration at the time the entity applies for the domain, may apply for domains in the new TLD.  So, trademark owners, if you want to protect yourself in yet another TLD, you have until February 2, 2009 to do so. In addition, trademark owners may also challenge another entity’s registration in the Sunrise period.

A couple of thoughts: (1) Because this top level domain is not maintained by a U.S. company, it may be more difficult to bring cybersquatting actions under U.S. law against a cybersquatter.  In other words, it will be more difficult later to challenge someone who wrongfully acquires a confusing domain name. That’s an extra incentive to register the domain now.  (2) During the “sunrise” period, Telnic uses a “verification agent” to verify that the domain applied for, and the domain name must be “identical” to the registered trademark (excepting spaces, punctuation and diacriticals).  I wonder if the trademark owner could include the “.tel” suffix as part of the claim of being “identical.”  In other words, can Microtel (the hotel chain) register “Micro.tel”? or “Microtel.tel”? or both?  This is certainly not uncommon– look at the “famous” bookmark site del.icio.us (which now redirects to delicious.com).  With my search, I found 2888 records in the USPTO’s TESS database for trademarks that end in “tel” and are currently “live” (meaning that they are valid registrations or in the process of being approved). I’m sure a number of those trademark owners would like to have a snazzy domain like ams.tel or sofi.tel, even if the point of the domain is for communicating.

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Thinking more about MISTER FLUFFY…

As with other trademark practitioners, I can’t stop thinking about MISTER FLUFFY, a trademark allowed to be registered by the Trademark Trial and Appeal Board in part because the opposer, Tootsie Roll, failed to properly make its trademark registrations of record.

Mmm. Fluffy. But dangerous?

Mmm. Fluffy. But dangerous?

–BEGIN TECHNICAL TRADEMARK DISCUSSION–

The TTAB denied Tootsie Roll’s opposition, not on “substantive” grounds (that is by comparing the likelihood of confusion under 2(d) of the Lanham Trademark Act) but rather because Tootsie Roll failed to prove priority in the mark, even though Tootsie Roll owned federal trademark registrations for FLUFFY STUFF and FLUFFY STUFF COTTON CANDY PUFFS for the same goods and services MISTER FLUFFY was being registered for.  Why? Because, when you put in “testimony” before the TTAB (which is just submitting documents, depositions, exhibits, and other information on paper), to make a trademark registration properly of record, the proponent must either (a) provide photocopies of printouts from the USPTO’s TESS and TARR databases (for all proceedings started after August 31, 2007) with the initial pleading (notice of opposition or petition to cancel), or (b) provide “status and title” copies of the registration, which must be ordered specially from the USPTO, or (c) provide live witness testimony as to the status and title of each registration. (Rule here (pdf).) Over and over again, trademark attorneys forget about or ignore this rule, resulting in many (pdf), many oppositions (pdf) and cancellation proceedings being dismissed.

The rule seems easy enough to read and understand, but also seems to confound trademark practitioners.  Why? Maybe because trademark practitioners are (usually) Internet savvy, and rely extensively on the USPTO’s online TESS and TARR databases.  If we use them every day and rely upon them in our practice, why can’t the USPTO?  Perhaps it’s because trademark practitioners take for granted that their clients own registrations, and the organization that grants registrations (the USPTO) is adjudicating whether this other application or registration should be allowed. Shouldn’t the left hand know what the right hand does?

But the violation of this rule is so clear, wouldn’t an attorney’s failure to either attach the TESS and TARR records on the initial pleading or procure a status and title copy of the registrations amount to malpractice?  It would seem that recklessly violating a clear rule of the TTAB, which has been subject to so many TTAB opinion, could constitute a violation of the duty of care.   I suppose there are two stumbling blocks for clients whose attorneys dropped the ball.  First, to be successful in legal malpractice, a disappointed client must prove that the attorney’s violation was the but-for and proximate cause of losing the case.  Because TTAB opposition proceedings in which the senior user’s registrations are at issue are often based upon (a) priority, and (b) a likelihood of confusion, and because likelihood of confusion is extremely fact specific, based upon a multi-factor balancing test, and is presented to a board that believes that each proceeding is decided on its own facts of record, it would be very difficult to prove that, but for the registration, the opposer would have won.  Second, a critical element of malpractice, like any negligence action, is damages. Because the TTAB does not have jurisdiction to decide whether infringement has occurred, or even whether any particular user is entitled to use a trademark in any particular situation, but rather whether an owner has the right to register the trademark, I would think it would be nearly impossible to measure damages incurred by the junior user’s subsequent registration of a confusingly similar trademark. (That’s why injunctive relief is most common in trademark infringement cases that don’t involve counterfeiting.)

—END TECHNICAL DISCUSSION—

So, trademark owners, don’t be a MISTER FLUFFY, be a Mr. Powerful, and make sure you (or your counsel) properly places in the record the apropriate registrations.

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“Stripper Idol” Update — The Docs

Here are the filings with the United States District Court, Western District of Texas, in Fremantle v. Benelux Corp. and Athanases Stamatopoulous, Civil Action A08-CA-908LY. (Blogged here and here).

The Complaint (pdf)

The Exhibits (pdf).

Note that Fremantle’s proof of infringement comes from an ad placed in the Austin Chronicle.  It’s blurry, it’s in black and white, but it does look like the same font that American Idol uses.

Also interesting, as Gene at IPWatchdog noted, that the Complaint contains Counts I (Federal trademark infringement and unfair competition), II (trademark infringement and unfair competition under Texas law) and IV (trademark dilution under Texas law).  Conspicuously absent is Count III, which Gene hypothsized may have been a claim for federal trademark dilution.  The questions arise:  Was the omission of the federal dilution claim intentional, or an oversight? If it was intentional (perhaps a decision made at the last minute) was it because Fremantle was concerned about a finding that AMERICAN IDOL is not famous, or that something like STRIPPER IDOL does not dilute it?  Or did they believe that relief under the Texas law (which appears to require a lower threshold of fame than the Lanham Act) would provide all the remedies they needed (after all, the strip club is not going to offer these services outside of Texas, so if you shut them down in Texas, that wins the case)?

This would be a fun one to follow, although my guess is that the case will be settled quickly and confidentially.

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“Stripper Idol” Part Deux

Gene Quinn at IP Watchdog has written this post about the ongoing “Stripper Idol” lawsuit (blogged by yours truly here).  In the post, he argues that the commentators on Fox News covering the story argued on the Bill O’Reilly program that because no one would confuse a strip club with American Idol, there’d be no likelihood of confusion as to source of the services, and therefore the strip club wins.  Gene writes:

While I do enjoy O’Reilly, the fact of the matter is that his legal correspondents were dead wrong, as are most legal correspondents when the attempt to pontificate about matters relating to patents, trademarks or copyrights.

He then states that a trademark dilution theory is most likely to be successful, as “likelihood of confusion” need not be proven.  While I agree with him that the O’Reilly commentators were “dead wrong” in their assessment of the merits of the suit, I respectfully disagree that dilution is the best theory for FremantleMedia to pursue.

First, dilution is sticky because you have to prove that your mark is “famous.”  Under the Texas dilution statute, which may be more liberal than the Section 43(c) of  the Lanham Act, fame may be easier to prove.  But it’s still a significant threshold of proof that the plaintiffs must overcome.

Second, a number of recent federal decisions have noted that for a junior mark to dilute a senior mark, the junior mark must be nearly identical to the senior mark.  In other words, if we’re not going to look at consumer confusion, you have to prove a very close nexus between the allegedy famous mark and the allegedly diluted mark.  While STRIPPER IDOL and Design may be close the AMERICAN IDOL and Design design, it’s a hard burden to show that the more risque mark actually dilutes the distinctive quality of AMERICAN IDOL or tarnishes its image.

My continuing belief is that the best theory revolves around likelihood of confusion, not as to source of the goods, but as to sponsorship or affiliation. A typical survey question used to support Plaintiff’s case may ask something like “Do you believe this strip club had to get permission from anyone to use this logo? If so, who?”  I wouldn’t be surprised if a good percentage of people would respond “Yes; American Idol.”  That’s confusion as to sponsorship or affiliation.

Dilution is a good idea, too, particularly under Texas law (which may be more lenient than the federal standards), and I can’t wait to see how the case unfolds.

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Selling knock-off Rolexes is illegal? But everybody else is doing it!

This watch is for sale online.  A real Rolex or a $99 fake?

This watch is for sale online. A real Rolex or a $99 fake?

The Wisconsin State Journal brings us this story of Vincent Konicek, the owner and developer of toprolexreplica.com, who has surprisingly been sued for–can you believe it–selling knock-off Rolex watches over the Internet and cybersquatting.  His reply?  Essentially admit the conduct, assert the “everybody’s-doing-it” and “ignorance-of-the-law” excuses, and then admit that you need a lawyer:

Konicek said Wednesday that he started selling the fake Rolexes after a trip to China, where they were being sold on the street for $10. Konicek sells his own Chinese-made Rolexes for $99.

The lawsuit states that Rolex found out about the site in October and wrote to Konicek. He faxed back a letter five days later, saying that when they finish “suing all of the following merchants listed on Google search pages, call me and let me know you are going after me next.”

He attached two pages of a Google search that used the terms “Rolex replica.” Rolex concluded that Konicek is “fully aware” that what he is doing is illegal and willful, the lawsuit states.

But Konicek didn’t sound all that certain.

“I didn’t know I was going to run into copyright infringement,” he said. “I guess I’ll have to talk to an attorney and see what I can do.”

Here’s the Complaint (pdf). Among the surprising allegations:

  • Konicek registered the domain name in his own name, and left the whois record active. (Maybe he really didn’t know it was illegal?)
  • Rolex sent a cease and desist letter based only on the domain name before the site was active. (Isn’t this the time to at least consult a lawyer on the legalities of your enterprise?)
  • Konicek responded to the cease and desist with a Google printout of other replica sites and a message of ““[w]hen you finish suing all of the following merchants listed on Google search pages, call me and let me know you are going after me next” and went ahead with the site.

I’m slightly sympathetic to Vince.  It always amazes me that so many businesses can sell direct knock-offs of products and seemingly get away with it.  IP owners can register their marks with the Customs and Border Patrol to intercept shipments of counterfeit goods, but that only works when there’s actually an inspection.  There are also administrative procedures with the International Trade Commission to prevent import of products, but that doesn’t stop the piece-by-piece shipment of goods to the U.S. by mail from some foreign company selling on an anonymous website. And raiding mom-and-pop stores in Chinatown isn’t a way to build up goodwill.

I was fortunate enough to work for a company that marketed jewelry and watches in the United States that never sold fakes and was careful to ensure that its products were not likely to infringe any intellectual property rights of others.  And I would guess that the owners of that business would have shared Vince’s frustration that, just because he was an American who was trying to run a transparent business, he gets sued for hundreds of thousands of dollars and dozens of other websites just keep on counterfeiting.  Still, if all of your friends copy music on BitTorrent and get away with it, you can’t cry foul when the RIAA comes after you.  When you sell knock-offs, you can’t be surprised that the original IP owners will be upset.  But what really gets me is why Vince didn’t just go to a lawyer and figure out his options when he got the cease and desist letter. If he was lookin’ for a fight, he got one, and with all of his admissions, he’s in serious trouble.

But who knows–maybe he can become a successful merchant of Obama thongs. (Then again, that may get him into trouble, too.)

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Meep-Beep-Huh? New Mexico’s trademark troubles

As reported by the New Mexico Business Weekly, a Massachusetts company called RailRunner N.A, Inc., which develops truck-and-rail systems and is the owner of RAILRUNNER (U.S. Trademark Reg. No. 3,227,113) and RAILRUNNER (Stylized) (U.S. Trademark Reg. No. 2,966,296), for, among other things “Railway bogies,” “Railway vehicles,” “Repair of railway vehicles” “Logistics management in the field of railway vehicles,” “Custom manufacture of railway vehicles,” and “Educational services [related to maintanence and operation of railway vehicles” has sued the New Mexico Department of Transportation for its use of NEW MEXICO RAIL RUNNER  EXPRESS for a commuter passenger rail system running from Santa Fe to Albuquerque to Belen, NM.

The allegedly offending mode of transport

The allegedly offending mode of transport

According to the article, RailRunner (the company) has been warning New Mexico authorities about the use of the name for a while now.  RailRunner also brought an opposition to the state’s application to register NEW MEXICO RAIL RUNNER, and the Board granted summary judgment to RailRunner on the ground that the New Mexico agency that originally applied for the mark wrongfully transferred the application (an “intent-to-use” application) to another New Mexico agency, in violation of Section 10 of the Lanham Act.

Now that the state (and its subdivisions) have not renamed the commuter line, RailRunner’s speeding them off to federal court in Massachusetts.

A state official was quoted in the article as saying that she was “confident” that the state would be able to work something out, but, on the merits, it looks like the state should be expecting to end up face-first in a big, flat rock.

Who's the coyote, and who's the Road, er RailRunner?
Who’s the coyote, and who’s the Road, er RailRunner?

But, the state may have one saving grace– Sovereign Immunity.  The Eleventh Amendment to the U.S. Constitution essentially prevents individuals from suing states in federal court, and the U.S. Supreme Court has specifically recognized that Congress can’t “force” a state to waive that right through the Lanham Act.  As I’ve not been extensively involved in any trademark litigation matters in federal court against state subdivisions, and I’ve not been involved in this apparently long-running dispute between these parties, I don’t know whether sovereign immunity is available in this situation or whether any of the actions of the state has resulted in a sovereign immunity waiver.  But only time will tell who’s a wile coyote with their branding and litigation strategy and who’s just Wile E. Coyote, missing the prize and ending up with flattened face and some seared fur.


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