Andrei Mincov's Trademark Factory Update - May 2016

Andrei Mincov - Founder & CEO

Trademark Factory®

news@trademarkfactory.ca
778.869.7281
https://trademarkfactory.com

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Welcome to the First Issue of My Newsletter!

 

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You have my promise that I will not use this newsletter to bombard you with offers to buy anything from me. It will contain two types of content: trademark stuff and personal stuff.

Please note that I certainly don’t want to be spamming anyone and you are welcome to Unsubscribe (at the bottom) if you want to get off this list. Hopefully, you’ll give me a couple months to show some value for you in my newsletter.



Learning to Play

 

I started playing the drums several years before I became an intellectual property lawyer. 

As crazy as it sounds, I was a lawyer for 20 years, and I've been playing the drums for 27 years.

I've always enjoyed sitting at the kit and playing. To me, there are few things in life that get me re-energized as well as drumming does.

Problem is, I always sucked as a drummer. For 24 out of these 27 years, I always wanted to wake up one day and to be able to play the drums well enough so that I wouldn't hate the result. Somehow, that day never came.

Instead, I attended a drum clinic by Dom Famularo 3 years ago. He was amazing. At the end, he left some time for Q&A. 

I got up and mumbled, "Dom, I've been playing the drums for over 20 years. Problem is, even though I love the process, I hate the results. My groove sucks, my timing sucks, my speed sucks, my technique sounds, my sound sucks. Without hearing me play, what's the one thing you'd recommend that I focus on to get better?"

He simply answered with a question, "Have you ever considered studying with an instructor?"

This was one of the most embarrassing moments in my life. 

I sat down quietly. 

But next day, I signed up for drum lessons and have been taking them ever since.

I've also attended 2 drum camps, spending a week at a time learning from and hanging out with legendary drummers.

A month ago, my teacher, Ryan Van Poederooyen told me to learn a song that would be slightly above my level. I couldn't pick anything that would match that requirement so I picked a song that was quite a bit more challenging.

I spent over a month trying to play it. At some point, I realized that I can play it and that I'm now working on trying to play it perfectly. 

I'm not there yet, but I'm super proud of the results so far. What I do know is that I wouldn't be able to get there without help from people who are very good at what they do. 

Check it out and let me know what you think!

Here's the link to the video: https://mincov.wistia.com/medias/wpzeb7jqq7



Trademark FAQ

 

Twice a week, I'm posting my short, specific, no-B.S. answers to commonly asked questions about trademarks

Do any of these apply to you?

Does My Trademark Need to Match My Company Name?

What Is a Trademark?

Can I Add More Products and Services to My Trademark Application After It's Been Filed?

Where Should I Register My Trademarks? (Deciding on Jurisdictions in Which to File Trademarks)

What Is Conventional Priority?

Can I Change the Trademark Itself After My Trademark Application has been Filed?

How Long Does It Take to Register a Trademark?

Can I Trademark Dictionary Words?

Can I Trademark the Same Brand for Different Products or Services?

Do All Countries Protect Unregistered Trademarks? (Common-Law Trademarks)

Can I Trademark a Brand Before It's Launched? (Intent-to-Use Trademarks)

Is My Trademark Available?

Should I Trademark My Startup's Brand?

In Whose Name Should I Apply For My Trademark?

Will the Trademarks Office Help Me Enforce My Trademarks?

Should I Trademark a Logo Done On Fiverr?

How Much Does It Cost to Register a Trademark?

Should I Trademark My #Hashtags?

Are There Annual Trademark Maintenance Fees?

If I Register My Trademark, Does It Mean No One Can Use It?

Four Things Most Commonly Trademarked (The Trademark Dance)

How Does Trademark Factory's Guarantee Work?

What Are Nice Classes of Goods and Services?

Do I Have to be an American Resident to File in the U.S.?

How Are Service Marks Different From Trademarks?

What Are Oppositions?

3 Most Important Benefits of Registering Trademarks

Why Register a Trademark in Canada to Get a .CA Domain Name?

What is Post-Allowance Statement / Declaration of Use?

Am I Protected Between the Filing and the Registration of My Trademark?

What Is Post-Registration Statement of Use?

How to use trademarks to create a sense of uniqueness for your business?

What Goes Into a Trademark Application? 

What happens if you don't respond to correspondence from Trademarks Office in time?

What Makes a Brand Valuable? 



Mincov Kids Take Gold!

 

For the first time, both my daughters (Masha, 10, and Patricia, 6) got ALL gold medals in all categories at the Millennium Cup rhythmic gymnastics competition!

And, of course, David couldn't miss the opportunity to socialize with the ladies!



Patricia Mincov's cupcakes

 

My six-year-old Patricia is taking singing lessons.

She was supposed to perform this song, but organizers cancelled the event.

So I thought I'd have her perform it in front of a much larger audience, you!

Watch on YouTube and let her know what you think!



Trademark Screw-Ups of the Month

 

Lacoste wins crocodile trademark battle in New Zealand: We covered this situation in our cartoon about combined trademarks. Lacoste wins trademark dispute against Crocodile because Lacoste registered its alligator logo separately from the name, LACOSTE.

RATT File Lawsuit Against JUAN CROUCIER For Trademark Infringement: Yet another case when a trademarked name of a music band becomes the subject of a legal war after the band breaks up. I especially like the conclusion that the judge isn't convinced either party owns the trademarks.

Indian court orders Apple to stop using 'Split View' name in trademark case :Interestingly, someone (not Apple) tried to trademark SPLITVIEW in the  U.S., and a letter of protest was issued stating that that the mark is potentially merely descriptive. So apparently, Apple didn't view SPLITVIEW as its trademark in the U.S. because they realized that the name is descriptive. I'm assuming that would be their position on the appeal in India. Would be interesting to see the final outcome.

Another ad blocker claims Adblock Plus used a trademark complaint to force it offline: While the name ADBLOCKER may have been considered clearly descriptive
today, it wasn't when it was registered as a trademark in multiple jurisdictions. If creators of AdBlock Ultimate think that "rebranding"  to Ad Blocker Ultimate will be sufficient to avoid confusion with AdBlock Plus, they may find themselves in the middle of a completely unnecessary legal battle. I mean, since you're rebranding already anyway, why not rebrand to something that people would not confuse with an addon that is known to a much greater number of people? At best, this will detract their attention from creating a superior product. At worst, it will be the end of their product with all the legal fees and costs.

Burberry, J.C. Penney Settle Trademark Suit Out of Court : A registered trademark makes it a lot simpler and cheaper to force even a huge retailer to stop selling infringing products.

Home improvement star Bob Vila sues Loves Park man for trademark infringement : A perfect example of how trademarks can help protect personality rights as well.

Sanders campaign accused of "trademark bullying": Usually, socialists want to simply do away with the intellectual property. This is an interesting example of when a socialist is trying to use trademarks to bully those who disagree with his views into silence. Comrade Bernie has trademarked his campaign's slogans (which just shows
another way you can use trademarks) but is now feeling the bern because of his overzealous lawyers.

Christian Louboutin Wins Trademark Lawsuit: Red Sole Triumph!: As I've been saying, a trademark is ANYTHING that allows your customers  to tell your products and services apart from identical or similar services of everyone else. It can be a word, a phrase, an image, a sound, a smell, or even a color. U.S. Court of Appeals has just confirmed that Christian Louboutin owns color red as a trademark for red
soles of their shoes.

Danube forced to change Ritz project name due to trademark infringement: Yes, even highrise buildings are within reach of previously registered trademarks.

What's in a name? Plenty, if you're in the Merck vs. Merck trademark fight: Big boys don't call each other names. They sue for trademark infringement.

South Korean chicken restaurant fined for using Louis Vuitton trademark: Really? Louis Vuitton chicken? Usually, trademarks only give protection  in respect of specific products and services for which they are registered. Famous trademarks, however, get a wider scope of protection. Well, because they're famous. But it takes a LOT to be considered a famous trademark.

Marussia and Manor in trademark dispute over 2015 Formula 1 car: Two of my big passions in the same piece of news: where Formula 1 meets  trademarks. Absolutely fascinating. I wonder if Manor's success in the courtroom is going to be as pathetic as it was on the race track in 2015.

Nestlé foiled by Cadbury as KitKat trademark battle reaches UK: Three things are really interesting about this. First of all, the dispute is not about the name KitKat, but the shape of KitKat chocolates. Unconventional trademarks at their finest! Second, we have a situation when KitKat shape both is and isn't trademarked in the UK. It IS trademarked because Nestle owns a EU trademark, which covers the UK. It is NOT trademarked because UK Trademarks Office upheld Cadbury's opposition against the registration on the national level. Third, and most importantly, whether or not it's trademarked in the UK, I just love KitKats :)

Adidas Files Trademark Suit Against Fellow Footwear Brand, ECCO: Louboutin confirmed its monopoly on red soles. Will Adidas confirm its monopoly on three stripes? Just another proof that trademarks are much more than just a name or a logo.

‘Prince’ trademark application approved days before death: Some people wait too long to get their brands trademarked... Most recent trademark filed on Prince's behalf approved days before his sudden death. 

USPTO asks Supreme Court to hear The Slants case: This could finally open the door to register "immoral" trademarks. We had to turn down many clients who had great brands that included various 4-letter words.

Booking.com Sues U.S. Patent Office Over Trademark Rejection: Proving that your mark is not merely descriptive is an uphill battle in the U.S. Even for a famous brand such as Booking.Com.

Gringo's Mexican Kitchen Is Suing Another Houston Restaurant For Trademark Infringement: It will be very difficult for them to win a trademark infringement case
without a registered trademark, especially since there are other federally registered trademarks GRINGOS & MARIACHIS and GRINGO BBQ. At best, the court will find that Gringo's Mexican Kitchen's trademark can coexist with the federally registered trademarks and HABANERA AND THE GRINGO. At worst, Gringo's Mexican Kitchen will be forced to rebrand by the owners of one of the registered trademarks.

Apple seeks settlement to end Proview 'iPad' trademark dispute: That's a bit iOops

Court Junks Racetrack's trademark suit against gaming company: Horse racing track owners cannot prevent a gaming company from using the names of their race tracks "when describing where an event took place." Wonder if this opens a much larger loophole for unauthorized use of trademarked names of events themselves. What about names and logos of teams?

Google accuses 9to5Google website of trademark violation: That's the danger of using without permission a trademark of someone whose services you are relying on for revenue. Even if they are in the wrong from the trademark law standpoint, they can always shut off your access to the service.

Instagram tells Brit app maker to bin LitterGram name in trademark spat: Anyone can sue anyone for anything, but in reality everything boils down to two questions: 1)does the little guy have the resources to fight the big guy; and 2) If the little guy has the resources to fight the big guy, how successful is the big guy going to be in court. I would not say that the two names are confusingly similar. Instagram surely does not own the "gram" part separately from Instagram. And Litter is not too close in sound, appearance or meaning to Insta. I would say that Littergram could end up winning the case. But it would take a lot of resources to withstand the massive litigation machine behind Instagram.

Apple loses trademark fight over 'iPhone' name in China: Another iOoops. Can't really blame Apple for not caring enough about their trademarks and IP strategy. It is unfortunate that some national courts sometimes favor local hustlers over well-established international brands. On the other hands, Apple should have known that
they'd want to protect the market for accessories, such as leather cases as well.

Salvatore Ferragamo Is Suing Football Quarterback Vince Ferragamo for Trademark Infringement: To be clear, they're not suing him because he plays football under his
own name.

Academy Sues Broker For Reselling Oscar Tickets, Infringing Trademark: Can trademarks be the solution to fight back against scalpers? We'll find out soon. Maybe.



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