Category Archives: Trademarks

Because Mattel evidently hasn’t yet had its fill of litigation, it filed suit yesterday seeking to overturn the United States Patent and Trademark Office’s (USPTO) ruling that it could not trademark “Motown Metal” for its Hot Wheels toy cars because that would dilute Universal Music Group Recordings Inc.’s “Motown” mark.

Mattel’s pleadings alleged that it submitted a trademark application to the USPTO in November of 2005 for “Motown Metal,” the name of the new line of Hot Wheels cars that were to be an homage to the cars produced in Detroit during the 1960s and 1970s. The line included toys modeled after the 1970 Chevrolet, the 1965 Mustang, and the 1969 Pontiac GTO. Universal opposed the application on the basis that it would dilute the distinctiveness of the Universal “Motown” mark, which has been in use since 1959 on music-related goods and performances. The Trademark Trial and Appeals Board (“TTAB”) agreed with Universal and denied the application on September 30, 2011. In its decision, the TTAB found that Mattel’s “Motown Metal” and Universal’s “Motown” were “sufficiently similar that an association between them [was] established.”

While in the past the TTAB has relied upon surveys showing that at least 73 percent of the general public recognized the senior mark, here the TTAB made the dilution finding based only upon Universal’s advertising and sales revenue numbers. The board found this evidence sufficient to prove that the “Motown” mark was famous and well-known by the public.

In addition to an order overturning the board’s decision, Mattel is also wants a court order that it is entitled to register “Motown Metal” for toys. Alternatively, Mattel wants a court order preventing Universal from registering the senior “Motown” mark on toys.

The case is Mattel Inc. v. UMG Recordings Inc., case number 2:11-cv-09813, in the U.S. District Court for the Central District of California.

Groupon had another really good day in court yesterday. A federal district judge in California ruled for Groupon in a pending trademark suit, holding that Groupion, LLC (a customer software development company) and Groupon (the on-line couponing company) are not confusingly similar. Groupion had moved for summary judgment and an injunction to prevent Groupon from using its name. “Despite the similarity in the spelling of the two words, the court finds that the marks, when viewed in their entirety and as they appear in the marketplace, are dissimilar,” wrote Judge Jeffrey S. White.

While both parties began using their respective names in late 2008, according to Plaintiff Groupion, there was no problem until Groupon began developing and marketing its own customer relations management software in 2009 and 2010 in order to do more business with merchants. Plaintiff Groupion complained that consumers were confused by the use of the names and that even Google’s search engine confuses the two, asking the user if he or she meant to search on “Groupon,” when the plaintiff’s mark is entered.

However, the plaintiff could not carry the day and provide proof strong enough to convince Judge White that there was a likelihood of confusion with the consumers at issue. This seems reasonable to me, given that the consumers for product development software are quite different from the ones that are looking for a good deal on a haircut and highlights at their local salon. I wonder if Groupon is able to get a deal on all its legal fees, because some lawyers have successfully used it (but that is a topic for another day).

I frequently get calls from concerned clients who have registered trademarks at the U.S. Patent and Trademark Office. They have received some sort of official looking “invoice” from a company that sounds governmental and important and the “invoice” implies that the client’s trademark will expire or be dismissed or some such horrible thing unless $650 bucks is promptly remitted. Be advised that this is a scam and don’t fall for it.

How the Scam Works

The scammers send unsolicited mailings to registered trademark owners and applicants, offering trademark monitoring services, trademark renewal services, and other general trademark maintenance at exorbitant prices.  These companies have nothing to do with the United States Patent and Trademark Office (“USPTO”) but search the USPTO public records and send offers directly to trademark owners.  Their materials are designed to appear as though they were prepared by an official government agency, often disguised as government invoices or other official notices regarding trademark rights.  Many trademark owners have mailed in large sums thinking that these invoices are required for trademark registration or protection.

For example, the United States Trademark Protection Agency has chosen a name confusingly similar to the USPTO and offers “trademark monitoring services” through unsolicited mailings.  This service monitors only the Trademarks Official Gazette and the USPTO online database of trademark applicants, both of which are available to the public, without charge, on the USPTO website.  The USPTO is aware of this scam and has posted a warning on its website that “An entity doing business as the ‘United States Trademark Agency’ is NOT affiliated with the United States Patent and Trademark Office.”

Similarly, Trademark Info Corporation mails trademark owners “invoices” requesting payment of $596.00 in exchange for “publication” of the mark on a website that provides nothing more than a list of other trademark owners that were scammed for the fee. Other known companies that regularly send out unsolicited mailings include United States Trademark Center, American Trademark Agency, Trademark Renewal Services, and Trademark Safeguard – Trademark Monitoring Service.

These companies prey on trademark owners’ desire to vigorously protect their marks. While trademark owners obviously should monitor and protect their intellectual property, the services offered in these unsolicited mailings are confusing, expensive and unnecessary.

MAINTAINING AND PROTECTING YOUR TRADEMARKS (The Stuff You Do Have To Do To Keep Your Trademarks Alive)

An owner of a federally registered trademark is required to file an affidavit confirming their continued use of their mark during the sixth year following the date of registration (a “Section 8 Affidavit”). In addition, the trademark owner must file a Section 8 Affidavit and a renewal application (a “section 9 Affidavit”) during the tenth year following the date of registration.  If you don’t meet these and other deadlines, your registration will get cancelled. You do have fees associated with this filings, but they should only be paid to the USPTO (and your lawyer may also have legal fees associated with accomplishing these maintenance filings for you).

In addition, you should monitor third party use of similar marks so that you can oppose applications for confusingly similar trademarks and spot potential infringers. Because failure to adequately pursue infringers can lead to loss of certain rights and remedies, you should contact qualified trademark counsel any time you see someone else using your marks in an infringing way.  Many trademark owners use third party trademark monitoring services available from NameProtect, CT Corsearch, Thompson and other reputable companies.  These companies provide thorough monitoring services at reasonable prices and do not send unsolicited mailings to trademark owners.

Official trademark notices will only be sent by the USPTO or your attorney.  If you do receive a notice regarding your trademark rights, alert your attorney before you make payments to any third party.  Please alert employees in your financial, accounting, or other relevant departments to make sure they aren’t taken in by the scammers either. Everyone in your organization should feel free to file these “invoices” in the “round file.”

1. Do not pick a trademark that you’ve heard used before on similar goods or services. Although it may seem obvious, I have had clients call and ask me to clear and seek registration of a mark that they saw on a similar store or restaurant while on vacation. Very simply, if someone else already has it, you can’t have it and you don’t want it because the goal is to create your own unique brand, associating your product or service with you as the source. Taking someone else’s mark or one very similar to it not only works at cross purposes with this goal, it will get you sued for trademark infringement.

2. Do not pick a trademark that merely describes your product or service. While it seems like a good idea to let your customer know what it is you’re selling, i.e. Marcy’s Home Cooking (for a catering service) or Ruben’s Professional Hair Cuts (for a barber shop), this makes for an extremely weak trademark that will be difficult and expensive to police and protect. Under US trademark law, you cannot obtain a trademark in a word that is “merely descriptive” of the good or service at issue. The reasoning behind this is that it is in the consumer’s best interest for sellers to be able to accurately describe the good or service. If one seller were allowed to co-opt descriptive words for a product to the exclusion of all other sellers, then consumers would be harmed because the products that they need and want couldn’t be accurately described by their sellers. What this means is, if you pick a merely descriptive word for your product or service, you can’t keep others from using that word in relation to similar goods. Again, if the goal is to pick a mark that will allow consumers to exclusively associate a good or service with you as the source, picking a descriptive mark won’t do it. Although there are some exceptions (basically if you’ve spent a boatload of advertising on the mark and customers no longer see it as “merely descriptive” but, rather as shorthand for you as the source), you are limited in your ability to stop others from using your mark if it is too descriptive.

3. Don’t use your last name if there is already another prominent mark in your field with that name. Let’s say your name is Stanley McDonald. However, if you open a restaurant called “McDonalds,” you will likely receive a cease and desist letter from the Golden Arches and they will have little sympathy for how the name is a tribute the long proud lineage of the McDonalds of Kingsport, Tennessee.

4.Don’t make plans around a mark that hasn’t been adequately cleared. Again, although it may seem obvious, don’t pick a trademark and start using it without clearing it first. We often get calls from clients who are launching a $50,000 media blitz in three days using the new mark and ask us to clear it. If there is a problem with the mark, everyone from legal or marketing is in a huge mess–a mess that would have been easily avoidable if the mark was cleared before any investment was made in it.

5. Don’t pick a mark that contains the name of a place you think makes the goods sound fancier. For example, don’t call your bottled water “Iceland’s Purest” if it really doesn’t come from Iceland. If a mark contains material that is “geographically misdescriptive,” you likely won’t be able to get it registered.
The best and strongest trademarks are those that are purely made-up or “arbitrary and fanciful.” Once you’ve found one that sounds like coined nonsense, you know you’ve really got something there. But you’d better use it and register it before somebody else does.