Joining Lisa Sasevich
  
Super excited to announce that I just got an invitation to join Lisa Sasevich on stage at her Monetize Your Mission event in Las Vegas on October 12—14, 2017.
Lisa is known as the "Queen of Sales Conversion" and is an undisputed expert on making money doing what you love. She has taught thousands of entrepreneurs to speak from the stage, create marketable products and programs, and make irresistible offers without being salesy.
She saw Trademark Factory®'s booth at the eWomen Network conference (see my other article on how that went) and recognized the synergy between us. Both she and I run businesses designed to help entrepreneurs become legendary!
I literally can't wait to share the stage with Lisa and would love to invite you to join us in Vegas for Lisa's event.
You will learn to reach more people with your offer, and create high-level, high-ticket offerings that will deliver the income and life you’ve always imagined — all without the 80 hour work week.
Command high fees from ideal clients who are happy to pay because they know exactly what you do and the value you deliver.
Utilize a one-to-many (leveraged) selling system so you can make your offer from live stages, teleseminars, and webinars.
In other words, you'll learn all you need to get profitable, without being salesy.
P.S. As I read this, I'm thinking: OMG, I wish I could learn all that when I was starting out with Trademark Factory®.
P.P.S. You can still get an early bird ticket for $497 with a $197 bring-a-friend offer. If you are considering going, get your ticket now: http://www.monetizeyourmission.com
How to Keep an Idiot in Suspense
The hardest thing for me this month was not to prematurely share with you some of the very exciting stuff that I'll tell you about in September.
Maybe it's being superstitious.
But I'd much rather share the actual story than what I think the story might be.
Even if it means I have to stifle my desire to tell you everything right this very second...
P.S. In the unlikely event I really need to make this disclaimer: no, neither the title of this article nor the cover of the book is directed at you.
Trademark Screw-Ups of the Month
Louis Vuitton Asks Significant Court docket to Reverse Trademark Parody Ruling Looks like the article is a machine translation into English, so you may not enjoy the writing style but the case is one to follow. Parody exception has been used to justify unauthorized use of all sorts of intellectual property in more and more countries recently, with the term "parody" getting more and more expanded interpretation. We are actually getting dangerously close to any infringement potentially being treated as a "parody." The former requirement for a parody to ridicule the subject of what is being parodied appears to be gone. The requirement for a parody to be funny appears to be gone as well. The requirement of significant creative transformation is virtually gone. Profiting from ripping off someone else's IP while expecting whoever you stole from to appreciate your sense of humor not only creates a dangerous precedent when unauthorized use of IP is justified for no good reason, it creates a parody out of intellectual property laws themselves.
Pobjoy Mint’s use of ‘Britannia’ on silver bullion coin violates trademark Fascinating how a trademark infringement can make your limited-edition product more desired by the public than the non-infringing product. Also, not often do we get to hear the news about trademark infringement in the coin mint business. Just proves the point that trademarks are for businesses of any type, any size, any industry.
Meet The Man Who Wants To Trademark The Swastika — So Bigots Can’t Use It The problem with this strategy is that the applicant must have a genuine intention to use the trademarks for all products and services listed in the trademark application. By publicly admitting that the only purpose of applying to register the trademark is to prevent others from using it, Maynard has pretty much established no genuine desire to use the swastika or the word "nigga" (another trademark he filed for) to offer any products or services. If nothing else, this would be sufficient to make the strategy unworkable.
Man ridicules Olive Garden’s demand letter over trademark dispute Rare occasion when the mocking is well-deserved by the authors of the groundless demand letter. The "Branden Forcements" gag is just plain brilliant!
And then there were four: Cambridge show hit with legal threat Great example that demonstrates the difference of scope between copyright and trademark protection. Copyright in the original work would likely not allow the publisher to prevent the unauthorized parody from being performed, but the they were able to use their trademark rights to force the creators of the parody to pick a different title. That's why it's crucial for business owners to fully utilize different aspects of intellectual property to build and maintain their competitive advantage.
Sioux Falls funeral home files trademark lawsuit over use of name "Heritage" Without a federal trademark registration, good luck trying to enforce your common-law trademark on the word "HERITAGE" against a competing funeral services provider! Especially since someone ELSE, a Michigan-based Heritage Services, LLC, had actually trademarked "HERITAGE SERVICES" for funeral services in 2012. According to court documents, Sioux Falls-based plaintiff had been using the name since 1987, while the Michigan company that registered the trademark started using it in 2009. The plaintiff had never bothered to file its own trademark or oppose the Michigan company's application. None of this means that the plaintiff can't possibly win. But by failing to take proper steps to secure their brand, they ensured that the battle will be painful and expensive and that even in the best-case scenario, they will end up with severely limited rights to the name that they could (and should) have easily owned federally since 1987.
Trademark Requests Using The “N-Word” Dramatically Increase Following SCOTUS Ruling This is called "opportunity." When unreasonable and arbitrary limitations of individual rights are removed, people tend to look for ways to benefit from greater access to free market conditions. And just like most new businesses never get to celebrate their 3rd anniversary, the vast majority of these new "offensive" trademark applications would never create any real value for their owners. A trademark is only an asset when its owner is actually doing something with it that is supported by the market. And that's where most of these new applications will fail. Read my detailed comments on the decision of the U.S. Supreme Court at https://trademarkfactory.com/tm-news-and-screw-ups/the-us-trademark-office-can-now-expect-a-flood-of-offensive-name-applications
Al Capone was done for taxes. Now Microsoft's killing domain-squatters with trademark law There is nothing new about using trademark law to go after cybersquatters. What is somewhat new is getting a broad judgment against unspecified John Does who may be "using and infringing Microsoft's trademarks, trade names, service marks, or Internet Domain addresses or names to carry out the enjoined activity." The interesting thing about the order is that while it contains a list of offending domain names, it also contains a provisions that creates a simplified path for Microsoft to add to the list by serving a motion to the court. The order even sets out a procedure for a Court Monitor to deal with future infringing domain names. The biggest problem with domain name disputes is that every time a new infringing domain name would popup, the plaintiff would need to start over, thus making the expenses vastly unproportional to the ease of registering a new domain name. This order makes this chasm significantly smaller.
European Court orders probe into ‘significance of Kerry’ as Irish butter rivals clash over trademark With thousands and even millions of people buying a product, with the product generating millions and billions of dollars in revenue, no wonder the business that makes and sells the product is going to do whatever it takes to protect its brand. The brand is what sells. Losing control over the brand may easily mean losing the entire business. Conversely, gaining a stronger monopoly over the brand may easily mean greater market share. When your revenues are calculated hundreds of millions, such things really start to matter.
Chelsea Handler Is Being Accused of Ripping Off Her “A Broad Abroad” Segment Once again, a demand (even when it's just a simple tweet) backed up by a registered trademark makes the adverse party immediately reconsider their ways. Without a registered trademark, you usually have to go the whole way from your lawyers writing a demand letter (that is often ignored) to taking the dispute all the way through the court system.
Metro Detroit microbrewery battling national liquor company over trademark The local brewer is asking the right question when he says, "I'd like to get an explanation as to what they think is confusion." That's what trademark disputes always come down to. Would the purchasing public be likely to be confused into thinking that products of two different manufacturers actually come from the same source. Here, the question is not whether E&B is too close to E&J but whether the overall impression created by the two logos is such that consumers with some vague recollection of the E&J logo would be likely to think they are buying the product from the same company when they get to buy beer with E&B logo. I would say that if you don't know the history behind both brands, the answer to that question is, possibly yes. Apparently, E&J does not mind that E&B keep the mark as long as they restrict their sales to Michigan and Ohio, which is probably as far as common-law would protect E&B's brand.
Amazon is trying to trademark the Echo’s blue rings There are several notable things about this filing. First of all, it is now past examination stage as the application is being published for opposition purposes. So unless someone opposes, the trademark will be registered in due course. Secondly, Amazon had to overcome some serious objections raised by USPTO examiner to show that the blue rings function as a trademark, that is that they help the public identify the source of the product rather than being "loading wheels" common in the industry. While Amazon's whole response to the office action is well-written (which is why the trademark was eventually approved by the Trademarks Office), one argument deserves special attention. Amazon claimed that "loading wheels" used by others associate with "LACK of services and content" (that is, waiting for something to happen), while in Amazon's case, the rotating wheel actually symbolizes action that consumers would associate with Amazon's products. That was a very smart argument to make.
RICHARD PRINCE MAY SOON GET WHAT’S BEEN COMING | JUDGE SAYS COPYRIGHT CASE GOES FORWARD It's a sad day when you realize that anti-IP crusaders have created an environment when blatant copyright infringement is something that needs discussion and, even worse, litigation. There used to be a time when if you stole someone else's works and profited from them, it was a no-brainer that you should be punished for it. But various "IP should be free" and "copyleft" warriors keep pushing the boundaries of "fair use" and "fair dealing" and would have you believe that pretty much every use is fair as long as it generates a happy audience. This creates an absurd argument that intellectual property only protects that which no one wants to use, while the works that actually of some interest to the public should not be protected. It's great to see some pushback towards common sense. It's sad when such pushback is news and not what everyone takes for granted.
PalmStar Media Closes Near $12M National Lampoon Deal; Can Laugh Brand Regain Luster? No hard assets, just the brand and other intellectual property of a business that was nearly run into the ground—for $12M. What is YOUR IP worth?
Oklahoma State Opposing Ohio State’s ‘OSU’ Trademark Application Tough when there are several states that start with an 'O.' Will there be one to own OSU on the federal level? Ohio State? Oklahoma State? How about Oregon State? This is probably one of those cases when joint ownership would be in order, where the parties agree to limit their use of the trademark across the states.
A legal battle over ownership of the term 'fight sports' ends in victory for Fight Network Here's the thing. CSI may lose rights in their "Fight Sports" trademark eventually but by having registered it back then when they could, they were able to stop SOME competitors from using the term and they forced Canada's Fight Network to go through full-blown litigation to oust the presumption of validity and ownership. That's one of the biggest benefits of registering trademarks. Once you got the certificate, no matter how ridiculous your claims, you are deemed to own the trademark unless someone successfully challenges it.
AN AUSSIE BRAND'S IN A LEGAL SPAT W/ ABERCROMBIE & FITCH OVER 'BONDI BEACH' There are special rules about trademarking geographical locations, but only when such geographical locations signify some quality aspect to consumers. For example, wine from grapes grown in a particular region, or wool that comes from sheep grazing in a particular location, and so on. When there is no such special significance, trademarking names that refer to geographical locations can be fair game.
Indians on the spree to relinquish trademarks: Blame GST This is pure insanity. It's like shooting yourself in the foot—just to be able to occupy a seat in the bus for people with disabilities during the rush hour.
Why Are Celebrities Rushing to Trademark Their Children’s Names? Short answer: because the cost of trademarking is negligible compared to potential value of a trademarked brand. There are few investments out there that can realistically provide a return in hundreds of thousands of percents. Trademarks is one of them.
BMW accuses automobile parts manufacturer of trademark infringement So someone is distributing car parts for (but not from) BMW on Amazon. And BMW sues the part manufacturer for trademark infringement? Wonder if they tried going through Amazon internal channels that make it relatively easy for trademark owners to shut down trademark infringing activities... Or maybe there were no trademark infringing activities—and BMW simply wants to bully someone with infinitely less resources than BMW (or Amazon) out of business?
Kylie Jenner hit with copyright infringement lawsuit over ‘Life of Kylie’ promos While ideas are not generally protected by copyright, the two images side by side show too much similarity for Jenner to claim that all she borrowed was the "idea of a lip closeup." The only question is, could Jenner show that Sara Pope actually does not own right in HER image, as that image may also have been copied from somewhere else. In other words, if you can't defend your own use, you attack the rights of the plaintiff.
A SUPREME COURT RULING HAS OPENED THE FLOODGATES TO A STREAM OF GROSS TRADEMARKS Great research on what used to be considered scandalous, immoral and disparaging trademarks—with some pretty tasty examples. We have actually had to turn several clients down as their trademarks weren't trademarkable because of this rule that is now gone. I've always said that it's not the role of the government to legislate morality. As long as it doesn't violate individual rights (and "not being offended" is not one of them), the government should let the free market decide whether a particular disparaging brand has any value. I posted my detailed comments on the USPTO case here: https://trademarkfactory.com/tm-news-and-screw-ups/supreme-court-rocks-the-trademark-office-in-slants-case
Food Fight: Pennsylvania Pierogi Festival Threatened With Trademark Infringement It's fascinating that PIEROGI FEST was registered on the Principal register, with only the word "FEST" disclaimed. It would seem that the trademark is descriptive at best, if not generic. My prediction: if the case ever goes to trial, Pennsylvania Pierogi Festival would be able to invalidate PIEROGI FEST trademark for lack of distinctiveness and thus avoid liability. As we often tell our clients, it's not just about getting the trademark registration certificate, it's about whether you can use it to actually enforce your trademark against competitors using a somewhat similar brand.
Ford To Fight Lynk & Co Trademark Over Fears It Will Be Confused With Lincoln One of the factors that the Trademarks Office and the courts look at to determine if two brands are confusingly similar is customer sophistication. A customer about to purchase a $2 product is more likely to confuse two somewhat similar brands compared to a consumer about to buy a car. In cases like this, the outcome would primarily depend on extraneous evidence, that is whether Ford would be able to prove that Lynk & Co is trying to imitate Lincoln cars or their parts, advertising or otherwise create an impression that Lynk & Co cars are somehow related to Lincolns.
Buc-ee's trademark legal battle with Choke Canyon put on hold Absolutely ridiculous. If this alligator logo is confusingly similar to the beaver logo, then what isn't? And to add that the defendant copied "oversize bathrooms and ample parking" from the plaintiff is just icing on the cake.
Jaden Smith’s Company Sues Hampton Creek in Trademark Dispute An interesting dispute involving allegations of trademark infringement and breach of contract. Just Goods Inc.'s registered trademarks are all word marks, which means no claim was made in respect of a specific font or style. It will boil down to what the contract says about modification of the look and feel of the packaging.
Frank Ocean T-Shirt at Center of Debate Over Tweet Copyright Copyright protects original works of literature, regardless of their merit. However, the question here is whether a single phrase crafted in form of a tweet is protected. As it often is with intellectual property law, it depends. The outcome typically depends on the degree of creativity that went into authoring the work. Short, everyday phrases could not be trademarked. Something more fancy and elaborate could. Frankly, "Why be racist, sexist, homophobic or transphobic when you could just be quiet?" is somewhere in the middle. But we'll never know if the courts would determine if making tshirts with this phrase constituted copyright infringement as the parties have found an amicable resolution to the dispute.
Mozilla’s EU Policy Manager: EU’s Copyright Reform is ‘a dysfunctional proposal’ If at the dawn of Internet, platforms and ISPs actually demonstrated SOME willingness to cooperate with rightholders in defending their IP against blatant piracy, we would find ourselves in a completely different, much more reasonable, world where the parties are not trying to extinguish one another but find a way to maximize the value for everyone. Instead, what we've got is a situation when platforms and ISPs claim that they should bear no responsibility for anything done by their users and a bunch of IP-haters who—as a result of rightholders' inability to effectively chase each and every user individually—claiming that intellectual property doesn't work. In my perfect world, platforms and ISPs need to be liable for what their users do—unless they take quick and active steps to respond to allegations of infringement. I don't think they should be required to filters needles in the haystack, but they should be required to have SOME capacity for filtering off content that is known to be infringing. The standard here? Very simple. Let's use Flickr as the example, as the article does. Imagine if there was a picture that contained some sensitive information about Flickr's founders. What measures would Flickr take to not have it distributed through Flickr? These would be the measures you'd expect them to take for other people's content. Plain and simple.
Hillcrest retailer has to change its name or face lawsuit The store reached out to its fans for suggestions on the name change. I have a suggestion. Do a proper trademark search and seek to register the new name. And do not, unless you secure the other side's consent, fool around by removing vowels from the name. MCRSFT is still confusingly similar to Microsoft. MNKND is still confusingly similar to Mankind. In other words, if you want to fight, fight over your current name. If you want to comply and rebrand, rebrand to something completely unrelated. In other words, if you are not removing the risk of litigation, why bother with rebranding?
NTS accused of bullying in row over Glencoe trademark First rule when having your lawyers send someone a cease-and-desist letter is, assume the other side is going to make the letter public. If you think you will have a PR nightmare on your hands if your demand letter is published, do not send that letter. The demand letter is not only your opportunity to convey to the other side that your legal position is tenable but also to start building the story that paints you in a better light than the other side. Remember: the audience of the demand letter is not just the other side. At the very minimum, it's the judge who is going to determine who wins. Today, more than ever, the letter's audience is everyone. P.S. And no, you can't force the other side not to publish your letter by claiming that it is confidential.
FERRARI LOSES TESTAROSSA TRADEMARK IN GERMANY This is actually a very interesting case. The theory is that trademarks need to be used to continue to be protected. The idea behind the theory is that brands that the public no longer associates with products or services that emanate from a particular source no longer perform the function of a trademark, which is to distinguish products and services of one business from identical or similar products and services of everyone else. The rule is sound. Trademarks are not about who came up with the name first. Trademarks are about who became known under the name first (or who registered it)—as long as they continue to use the name. And in the vast majority of situations, once the trademark is no longer actively used, it harms no one to allow others to use it. The problem is with legendary brands that are no longer actively sold but are still firmly associated with their prior fame. Many countries have special rules around famous marks, but these rules only apply to active marks. This case demonstrates that maybe we should also have special rules for famous old marks.
Thailand Joins the Madrid System Such a shame that despite all talk, Canada is STILL not a part of the Madrid system. Because of this, Canadian businesses have very limited options protecting their brands outside of Canada—without it costing them an arm and a leg. The only ones who are benefiting from the current situation are large Canadian law firms that get most of their trademark business filing applications for American clients who—had Canada joined the Madrid system—would not be required to use Canadian trademark agents. Or maybe Canada simply wanted to be the 100th member (Thailand became #99)?
Pro-Tip: If You're a Suspected Dark Web Drug Dealer, Don't Trademark Your #Brand Pro-Tip, no less. LOL.
LNC Secretary suggests going after party caucus(es) for trademark infringement What irony! While I personally lean libertarian, one of my biggest problems with the libertarian movement is their advocacy against intellectual property laws. Somehow their support for voluntary exchange and individual rights stops short of protecting those whose labor results in intangible works of art and intellect. And now they want to enforce their trademark? P.S. Libertarian Party's trademark will not allow the party to stop the mentioning of the word "libertarian" on the internet. That's just not how trademarks work. It's only trademark infringement if under someone else's brand you offer products or services that are associated with that brand in the public's mind. By the way, I wonder if the Libertarian Party is aware of the recently published trademarks LIBERTARIAN for alcoholic beverages (App. No. 87202889) and for beers (App. No. 87202884)?
Gucci Escalates Legal Battle with Forever 21 Luckily, both parties have deep enough pockets. If this case goes all the way, we may witness an important shift in how fashion brands protect their designs. For fashion brands, being able to protect design elements they've used for generations is crucial. If Forever 21 wins, it will mean that trademarks are not the proper vehicle to protect such designs, which would be a massive concern, since protection through design patents, or industrial designs, as they are called in Canada, is extremely short-lived, spanning just some 10—14 years. Trademarks, on the other hand, can last forever.
5% GST likely on packaged food awaiting trademark What's fascinating is not the that Indian government is attempting to collect more taxes under an arbitrary made-up excuse, what's fascinating is that Indian businesses, in order to avoid paying the tax, are prepared to give up their brands! This is pure insanity. It's like shooting yourself in the foot—just to be able to occupy a seat in the bus for people with disabilities during the rush hour.
Trading Technologies International sues Vela Trading Technologies over trademark infringement The interesting thing about Trading Technologies trademark is that it was registered based on "acquired distinctiveness" in the U.S., which means that the mark, while otherwise considered descriptive, "has become distinctive of the goods and services [of the owner] through substantially exclusive and continuous use in commerce for at least the five years immediately [preceding the filing of the trademark application]. If that's the case, the interesting question is whether "Vela Trading Technologies" is indeed infringing. Typically, "Vela" would be the dominant element of the trademark while "Trading Technologies" would be considered disclaimable descriptive matter. But how will the court decide if "Trading Technologies" is an actual trademark on the principal register?
Tiffany Scores $19.4 Million Verdict in Costco Knock-off Ring Case Ouch. In situations like these, I often wonder, is it about arrogant expectations that you'd be able to get away with things like that or is it about something else?
Donald Trump Lost a 6-Year Legal Battle to a Trumpet Player This is actually different from the usual fake-news about Trump trademarks that I get to read almost every day. Here, a trumpet player came up with an idea for two phone apps, iTrump and iBone where he teaches playing the trumpet and trombone. The opposition proceedings before the USPTO board were started long before Donald Trump became America's 45th President. Eventually, as a result of the legal back-and-forth, the trumpet player, without any legal representation, was not only able to convince USPTO Opposition Board that his trademark was not confusingly similar to trademarks owned by Trump and his entities, he was actually able to get USPTO to cancel some of Trump's own trademarks for non-use. Things like this happen all the time, and we wouldn't hear about it if it wasn't about Trump. However, there are two things that are fascinating about this story. First of all, it shows that even unrepresented brand owners can sometimes win in such protracted legal proceedings. Second, isn't it interesting how the media acts outraged every time Trump attempts to get something trademarked and then they also mock him if he loses trademark battles?
WeWork Starts Legal Action Against Rival UrWork Over Trademarks Lesson here for both startups: come up with more distinctive brands—and you won't need to argue over whether the other party's brand is nothing but an "open commonly used word."
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