Trademark Application

USPTO Reverses Position on Apple’s IPAD MINI Trademark Application

April 5, 2013, by Mandour & Associates, APC

Los Angeles – Late last year Apple, Inc. filed a trademark application for IPAD MINI for the new smaller and sleeker version of its famous iPad.  Apple has already owned a registered trademark for IPAD since 2010.

On January 24, 2013, the United States Patent & Trademark Office issued a first Office Action rejecting the IPAD MINI Application, claiming that the trademark was merely descriptive.  The Examining Attorney found the word “mini” descriptive as “something that is distinctively smaller than other members of its type or class.”  The Examiner also rejected the IPAD portion of the trademark as descriptive, stating “…‘IPAD’ is descriptive when applied to applicant’s goods because the prefix ‘I’ denotes ‘internet, and the term “PAD” is descriptive of the goods because it “refers to a ‘pad computer’ or ‘internet pad device’”.

The refusal was somewhat surprising in that the U.S. Patent and Trademark Office previously allowed registration of the IPAD trademark.  Beyond the descriptiveness refusal, the specimen of use submitted with the application, a web page from Applicant’s catalog, was also rejected.  The Examining Attorney stated that the specimen “fails to include a picture or a sufficient textual description of the goods in sufficiently close proximity to the necessary ordering information, a web link for ordering the goods, and thus, appears to be mere advertising material.”

However, in a near complete reversal, on April 3, 2013, the Examining Attorney “superseded” the original Office Action and issued a Supplemental Office Action.  In the new Office Action, the Examiner withdraws both the descriptiveness refusal and the refusal of the specimen of use.  Now, with her apologies, she only requires a disclaimer of the term MINI apart from the trademark as shown.

It is unknown whether the Examiner made a second review of her first Office Action, if a supervisor reviewed the Office Action she initially sent to Apple, or if Apple’s counsel spoke to the Examiner requesting clarification of the Office Action.  Regardless, Apple will undoubtedly agree to disclaim the word MINI.

Apart from the descriptiveness and specimen refusals, eight different prior pending applications were cited against the IPAD MINI application on the basis of a likelihood of confusion.  So, unfortunately for Apple, it does not appear that IPAD MINI will be registering any time soon.

Tagged as: Apple, iPad Mini

Yankees have Rights to Evil Empire without Trademark Registration

February 25, 2013, by Mandour & Associates, APC

Los Angeles – A U.S. Patent and Trademark Office panel recently ruled that the New York Yankees have rights to its nickname Evil Empire and can prevent others from registering the name as a trademark, even though the team has never attempted to register the trademark.

On February 8, the Trademark Trial and Appeal Board held that the company Evil Enterprises Inc. could not trademark BASEBALL’S EVIL EMPIRE, which it planned to use on clothing with the Yankees logo and a depiction of a devil holding a pitchfork.  The TTAB said that consumers are likely to be confused by the clothing and believe that the goods are associated with the Yankees.

The team has never attempted to trademark the phrase, nor has it used the name in connection with any goods or services, yet the TTAB said the name has become linked with the Yankees in the minds of the average American to the point that the team has inherent rights to the name.

The panel cited a number of news articles about the 27-time World Series champions that referred to the team as the Evil Empire and concluded “there is only one Evil Empire in baseball and it is the New York Yankees.”

Evil Enterprises originally filed a trademark application for BASEBALL’S EVIL EMPIRE in 2008, which the Yankees filed a notice of opposition to in 2009.

Evil Enterprises argued that it should be able to trademark the name as it refers to any sports team that is willing to spend huge sums of money to get the best athletes.  The board rejected this argument, saying that articles that refer to other sports teams as Evil Empires merely indicate the teams want to be in the Yankees position and be able to afford a roster of players that can win more championships.

The board also rejected Evil Enterprises argument that the trademark is a “spoof and parody” of the team and therefore will not cause confusion.

Despite the ruling, Evil Enterprises said it will continue to produce its Evil Empire apparel, saying that just because it cannot register the trademark does not mean it cannot use the term as a brand identifier.  The team has never shown any indication that it plans sue for trademark infringement over the use of the name on apparel.

Evil Empire was initially coined by Larry Lucchino, president of the Boston Red Sox, after Jose Contreras signed with the Yankees instead of his team.  Red Sox fans quickly adopted the nickname as a way of disparaging the Yankees.  The Yankees, however, saw the name as a reflection of the team’s success and embraced the name in several ways, including playing Darth Vader’s theme song from “Star Wars” at home games.

Tagged as: Evil Empire, New York Yankees

Apple Likely to Purchase IPHONE Trademark in Brazil

January 7, 2013, by Mandour & Associates, APC

Los Angeles – Apple is expected to make an offer on the IPHONE trademark in Brazil which is currently owned by IGB Eletrônica SA.  IGB Eletrônica SA released an Android-powered smartphone called the IPHONE Neo One under the company’s Gradiente brand this month.

Gradiente said that it will take all measures available to it to protect its intellectual property rights, as it does not believe the two brands can coexist in the same market.

Gradiente applied for the trademark in 2000, two years after Apple launched the iMac, but six years before Apple announced the launch of the iPhone at Macworld San Francisco.

Gradiente was granted the right to use the trademark on its smartphones in Brazil in 2008.  Brazil’s trademark office said that Gradiente requested the right to the trademark before Apple and therefore it has exclusive rights to the brand until 2018.

Despite being granted the right to use the trademark in 2008, Gradiente did not start using the trademark on smartphones until last week.  The company claims its focus had been on a corporate restructuring process, which it wrapped up earlier this year.

Gradiente said it registered the trademark because it expected “there would be a technological revolution in the world of smartphones with the convergence of voice and data transmission and reception via mobile Internet.”

The company, however, has not kept up with the technological revolution.  The phone’s appearance is similar to Apple’s iPhone, but it runs on the outdated 2.3 version of Android’s operating system.  The phone features a 3.7-inch touch screen, Bluetooth, Wi-Fi, 3G and a camera.

Gradiente said it currently does not plan to sell or license the rights to the brand, but it is likely that Gradiente and Apple will come to some agreement that will allow Apple to use the trademark, as Apple will not want to stop selling the iPhone in Brazil.

This is not the first time Apple has had international competition for its trademarks.  Due to a loophole in its contract, Apple was unable to procure rights to the iPad brand in China from Proview Technology before it launched the iPad.  Apple ended up paying Proview $60 million for the trademark.

The trademark in Brazil is not expected to bring that much money in, as the market is significantly smaller in Brazil than it is in China.  However, the company will likely still pay a substantial amount of money for the trademark, thanks to the popularity of the iPhone name.

Tagged as: Apple, Gradiente, IGB Electronica

Microsoft Renews “Killer Instinct” Trademark, Stokes Hopes Of Game Revival

September 19, 2012, by Mandour & Associates, APC

Los Angeles – Microsoft Inc. sent waves through the video game world on Monday when it issued a cryptic announcement saying it is renewing the trademark for the classic 1990s fighter game series Killer Instinct.

“With all due respect to our friends in the media who like to frequent trademark sites, we thought we’d break this one ourselves,” a post on Microsoft’s playxbla.com, the official site for its Xbox Live Arcade, said. “Our legal eagles have authorized us to say: ‘We have either renewed or refiled a trademark application in various jurisdictions.’” The post was accompanied by the classic Killer Instinct logo.

Sure enough, the U.S. Patent and Trademark Office shows a listing for the word trademark Killer Instinct filed on Microsoft’s part on Sept. 12. The trademark is registered for video game software and entertainment services providing video games online.

The trademark registration instantly sparked hopes in the gaming community that Microsoft will reboot the iconic fighting series for its Xbox 720 next-generation gaming system with a third installment of the game. Gaming websites also predicted Microsoft will reissue the original two entries in the series on XBLA.

Killer Instinct was developed by the game studio Rare and was originally put out in an arcade format, in addition to versions for Nintendo’s Super Nintendo and Game Boy gaming systems. It became highly popular quickly after its 1994 release, and inspired the arcade sequel, Killer Instinct 2, which Nintendo released in 1996. KI2 was released in a modified form for the Nintendo 64 gaming system later that year, under the name Killer Instinct Gold. Microsoft acquired Rare in 2002.

Numerous Rare executives have publicly said in recent years that while everyone at the studio would like to make Killer Instinct 3, no such game was in development. The classic fighting game model that thrived in the 1990s has ceded significant ground in popularity to the first-person shooter in the last decade. Microsoft, however, may now be hoping to cash in on a surging cultural wave of 1990s nostalgia.

Los Angeles Based Paramount Pictures Files Trademark Applications for World War Z

July 23, 2012, by Mandour & Associates, APC

Los Angeles – Imagine a world where legions of humans are inflicted with a terrible virus that turns them into flash-eating monsters. Zombie fans were given reason to rejoice when Paramount Pictures filed trademark applications with the United States Patent and Trademark Office to register the enormously popular World War Z concept for use with video games. Evidently, gamers will be treated to games based on the wildly popular Zombie books by Max Brooks. Brooks’ original novel, The Zombie Survival Guide, was released in 2003 and quickly became a cult classic. The apocalyptic author’s second zombie novel, World War Z: An Oral History of the Zombie War, was released to critical acclaim in 2006 with movie rights quickly purchased in 2007.

The World War Z trademarks were originally filed back in May, 2011 for use on mugs, beverage glassware, waste baskets, figurines, key chains, statutes, various types of apparel, masks, Halloween costumes, action figures, board games and toy model hobby craft kits. The most recent applications, quite possibly in anticipation of the movie being released in June 2013, were filed July 10th. The trademark applications were filed in order to secure the trademarks for use with various video game platforms. The USPTO website further reveals that the World War Z trademarks were intended for use with “entertainment services, namely, providing online electronic games, downloadable electronic game programs, electronic game software for handheld electronic devices, video game cartridges and discs”.

Undoubtedly, a deluge of World War Z products will hit the market in the summer of 2013 when the movie is released. The movie will star Brad Pitt.

BNA Wine Group Battles Anheuser-Busch For Airport Code Trademark

June 29, 2012, by Mandour & Associates, APC

Los Angeles – Last week, Anheuser-Busch announced that it filed a trademark application for BNA which is the airport code for the Nashville Airport. Anheuser-Busch filed for “BNA” along with 41 other airport codes. However, Nashville winery BNA Wine Group insists that it has superior rights to the trademark “BNA” and filed before Anheuser-Busch. The fact that two companies plan to utilize the same trademark is not necessarily a problem in itself. However, because both parties intend to name alcoholic beverages after the airport code and distribute those products in the same area, it is anticipated that problems will ensue for one or both parties.

Although there is a chance that both groups could obtain rights to the trademark “BNA”, it is highly unlikely. Despite the fact that beer and wine are obviously two different beverages, both companies are in the business of selling alcohol and there is not a significant division between the core business and distribution of the two companies. Consequently, if Anheuser-Busch produced an alcoholic beverage with the same name as a wine produced by the BNA Wine Group, it would likely cause confusion with consumers and distributors. Such confusion is adequate grounds for USPTO denial of trademark registration for one or both parties.

Regardless of the potential confusion, It is likely that the USPTO will suspend action on the Anheuser-Busch trademark application until the registration for BNA Wine Group is complete.

Last year Anheuser-Busch also registered 14 area codes with the USPTO, including “615″, an area code in Nashville. The move was part of a plan to cash in on the popularity of locally labeled beers and microbrews produced by hometown breweries. As part of this plan, Anheuser purchased Goose Island Brewery in Chicago last year and noted tremendous success with its locally produced 312 Urban Wheat Ale. Anheuser-Busch anticipates the same success with the BNA labeled beer if and when it is allowed to register the trademark.

Christian Louboutin Loses Another Trademark Infringement Lawsuit Over Red-Soled Shoes

June 20, 2012, by Mandour & Associates, APC

Los Angeles – Can a designer obtain trademark protection for a specific color used on the soles of its shoes? This question appears to be one step closer to finality after a recent decision was handed down by a French court against designer Christian Louboutin.

The case was initiated in 2008, but Louboutin did not exhaust all of its appeals against Spanish fashion designer Zara until this week. Louboutin had accused the Spanish designer of counterfeiting and unfair competition, claiming that red-soled shoes have been the signature trademark of its shoe collection for over twenty years.

This case is particularly interesting because of its implications for the ongoing battle in a New York Appeals Court between the famous shoe designer and its rival Yves Saint Laurent. Louboutin also sued its competitor Yves Saint Laurent in 2011 over what it considered a trademark infringement of the red sole on its shoes. The lower court rejected Louboutin’s request to stop the sale of YSL’s similarly colored shoes and denied a request for $1 million in damages. A decision has not yet been reached by the new panel of judges in the current appeal. However, Louboutin is relying on the same argument used by Tiffany & Co. in a recent lawsuit against one of its competitors for its trademark blue boxes. Tiffany won its trademark infringement case by showing that consumers recognized the blue box exclusively as that associated with the Tiffany & Co. brand. A decision by the New York Appeals court is highly anticipated by a number of designers who either currently use red on the soles of their shoes, or would like to incorporate the popular trend in their own footwear lines.

Louboutin quickly released a statement after the findings were handed down in its most current lawsuit. The Paris based company is anticipating that its competitors will see this latest decision as diminishing or eliminating its rights to the famous red sole on its shoes. However, Louboutin claims that it continues to own valued and enforceable trademark rights to its red sole trademark in France and the rest of the world. Louboutin also claims that other court decisions have recognized the strong association between Christian Louboutin and its red sole trademark. As such, Christian Louboutin insists that it will continue to enforce and protect its rights to its red sole trademark.

Twitter Updates Its Bird Logo Trademark

June 11, 2012, by Mandour & Associates, APC

Los Angeles – Larry, the blue bird Twitter mascot, has gone on a diet. Twitter has recently unveiled a new look for its trademarked blue bird logo that has some obvious changes as well as some not so noticeable changes.

The San Francisco based social media company took to Twitter to announce the change. Twitter’s creative director Doug Bowman tweeted, “Our new bird grows out of love for ornithology, design within creative constraints, and simple geometry. This bird is crafted purely from three sets of overlapping circles – similar to how your networks, interests, and ideas connect and intersect with peers and friends. Whether soaring high above the earth to take in a broad view, or flocking with other birds to achieve a common purpose, a bird in flight is the ultimate representation of freedom, hope and limitless possibility.”

The main differences in Twitter’s logo appear to be the following: the new bird appears to be leaner, the tuft on the top of the birds head is no longer there, the new bird is looking up rather than straight ahead, the wing of the bird is facing upward rather than downward, and the color blue is a darker shade.

Twitter appears to be flying high above many other social media sites with its 140 million active users, and is on its way to soaring as high as its competitor Facebook. According to Reuters, Twitter is rumored to be the next best company for an IPO and may follow in Facebook’s footsteps. It is estimated that this year Twitter will reach $260 million in revenue.

Just as many consumers can immediately recognize popular logos such as the Nike swoosh, the golden arches of McDonald’s, and the Microsoft Windows logo, Twitter is assured that its blue bird logo will be among this list as one of the most recognizable icons. A tweet posted on Twitter mentioned this goal by saying “from now on, this bird will be the universally recognizable symbol of Twitter,” and “there’s no longer a need for text, bubbled typefaces, or a lowercase ‘t’ to represent Twitter.”

Lamborghini Files Trademark for ‘Huracan’

May 10, 2012, by Mandour & Associates, APC

Los Angeles – Lamborghini has recently filed for a new trademark with the U.S. Patent and Trademark Office for ‘Huracan’. The word translates to ‘hurricane’ in Spanish and is also known in ancient Mayan history as the god of fire, wind and storms. Lamborghini filed in class 12 for ‘passenger cars and structural parts thereof’ and class 28 for ‘model cars’.

Although it is a guessing game to Lamborghini fans everywhere as to what kind of passenger car to expect, if the vehicle is anything close to the Urus SUV, which was unveiled at this year’s Beijing motor show, fans can expect to be pleasantly surprised.

Lamborghini has not produced a sports utility vehicle since the 1980′s boundary breaking LM002 until this year when it unveiled the Urus. The Urus is expected to go into production in 2015. Some believe that the Urus may actually eventually use the Huracan name instead. It is also rumored to be the replacement name for the revolutionary Gallardo.

In its history, Lamborghini has used words for its luxury cars that have a Spanish origin and are associated with bullfighting. For example, although we now know Murcielago to be one of the fastest cars in the Lamborghini family, the name originates from a famous Spanish bull. Also, Reventon, another Lamborghini trademark, was named after a bull that killed Felix Guzman, a famous bullfighter in 1943. Other Lamborghini cars whose names have a relation to Spanish bullfighting are the Gallardo and Estoque.

Obama Administration Gives Orders to File ‘GI Bill’ Trademark

May 3, 2012, by Mandour & Associates, APC

Los Angeles – President Obama recently gave a speech to members of the military and their families where he spoke about his outrage that members of the military and their families were being targeted and taken advantage of because of their GI Bill. The President said to the crowd, “Sometimes you’re dealing with folks who aren’t interested in helping you” and “they don’t care about you, they care about the cash.” For this reason, President Obama ordered the Department of Veterans Affairs to file for the trademark ‘GI Bill’. The Obama Administration believes that trademark filing will help to stop for-profit schools with “deceptively and fraudulently” targeting military families.

In 2010, President Obama created a Consumer Financial Protection Bureau that was formed to specifically aid veterans, members of the military and their families. Within this Bureau was a special Office of Service Member Affairs which worked with these families to “make better informed decisions regarding consumer financial products and services.” However, after two years it seems as though military families are still being targeted by private for-profit colleges and universities that are eager to enlist these individuals for federal money in its pocket, also known as the GI Bill.

In his speech this week, Obama gave an example of a for-profit college that recruited marines with brain injuries who couldn’t remember what they signed up for. He called this example “appalling and disgraceful” and urged the crowd to be aware of these types of people by saying, “they’re trying to swindle and hoodwink you.” Many of these colleges and universities have created websites to give the appearance that it is connected to the government in order to appeal to these families in particular.

President Obama is scheduled to sign an order that includes programs such as “Know Before You Owe”, which schools can participate in through a voluntary basis. The “Know Before You Owe” program will allow potential students to get an estimate of just how much their education may cost them in total so that they are not blindsided by additional fees, interest, and/or penalties. This will also help with determining if a college or university is considered accredited before enrolling.

In an opposing view of the President’s actions, Sgt. 1st Class Brian Cain stated, “To me the president needs to be taking care of world-sized problems” and “this is kind of like trying to kill a fly with an M-1 Abrams tank.” Sgt. Cain stated that his chain in command already has programs set up to look out for these scams. The Association of Private Sector Colleges and Universities, a representative of for-profit schools, stated it was “disappointed Obama decided to bypass the Congress.”

The GI Bill is estimated to pay out a staggering $9 billion this year alone to educate approximately 600,000 veterans. It is no wonder that according to a recent report by the Senate, for-profit schools spend a combined total of $3.7 billion on recruiting and marketing alone.

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