Intellectual Property

The Trademark “Spectrum of Distinctiveness”

Trademarks are words, names, symbols and other branding that distinguish and identify the sources of goods or services. Not every trademark is created equal, however, and the trademark “spectrum of distinctiveness” affects the level of protection the trademark receives. Distinctive trademarks are rewarded because they help consumers understand which goods and services come from where, thereby ensuring that consumers know who they are dealing with and (at least in theory) receive consistent quality. Generic terms are not protected because, in essence, they would interfere with the public’s ability to effectively identify the source of different types of goods and services.

So what makes a trademark distinctive?

Distinctive trademarks share three qualities. First, they are different from other marks used to describe similar goods...

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Intellectual Property

What are Common Law Trademark Rights?

Trademarks can be an extremely valuable asset for your business. Think about the value tied to Nike’s Swoosh or the McDonald’s “golden arches.” Protecting the value behind these trademarks is one important step towards building a wall around your company’s intellectual property. Many people don’t realize that certain trademark rights arise automatically once you begin using a trademark. Today’s post highlights these automatic rights, also known as common law trademark rights.

Common law trademark rights versus registered federal and state trademark rights

“Common law” is a term for the rights that have developed through case law versus statutes or codes. Common law trademark rights arise automatically and give the owner of a particular trademark certain rights (see below) without the need to...

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Intellectual Property

Lagunitas Trademark Infringement Lawsuit

On January 12, 2015, Lagunitas Brewing Company, one of the biggest craft brewers in Northern California, filed a trademark infringement lawsuit against craft beer giant Sierra Nevada in the U.S. District Court in San Francisco. The suit was over the use of Lagunitas trademark “IPA” design on its beer label.

According to the complaint, Lagunitas founder Tony Magee became aware that the label on Sierra Nevada’s new Hop Hunter IPA, scheduled to be released January 15, resembled the label on Lagunitas’s flagship IPA, which the brewery first released 20 years ago. According Magee’s affidavit, he says he reached out to Sierra Nevada CEO Ken Grossman before and after sending a cease-and-desist letter, before filing the lawsuit.  From the complaint:

The unique “IPA” lettering used in...

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Intellectual Property

Von Trapp’s Trademark Dispute

What do beer, bocce and Bavarian singers have in common? Apparently a trademark dispute as of last month.

The famous Capitol Hill bar and restaurant Von Trapp’s was recently persuaded to change its name at the request of a member of the Trapp family of “Sound of Music” fame. The new name for the 10,000-square-foot space in Capitol Hill is Rhein Haus, as homage to the longest river running through Bavaria. Everything else about the vast beer and bocce hall will stay the same.

The owners, Deming Maclise and James Weimann, said in a press release they had “vetted the original name and got the federal trademark before opening in early 2013.” There appeared to be no issues with the name at first....

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Business Startup

iVLG News Roundup Week 7 2014: Seattle Startups Invest and Expand; Bitcoin Regulation and Hacking; Seattle Business’ Trademarks and Parody

Seattle Startups Win Investment and Expand

Seattle based Frontdesk, a startup that makes business management and payment processing solutions for service based businesses, raised $4 million dollars in a Series A investment round that included venture capital firms Floodgate and Second Avenue Partners, as well as storied Seattle based entrepreneur Richard Barton. The company plans to use the money to expand.

Seattle based startup Tableau also announced expansion plans and are setting up more offices just down the street from ours in the Fremont neighborhood of Seattle. The maker of data visualization software is taking over a gym and there is no word yet whether they will leave the basketball and squash courts.

Bitcoin Faces Regulatory and Hacking Challenges

Bitcoin users faced an assault on two fronts this...

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Business Startup

iVLG News Roundup Week 6 2014: Secret Apps and Insider Trading; Microsoft’s Path Forward; Paper and the Importance of Registering Trademarks

Rising “Secret” Apps Could Affect Securities Laws Regarding Insider Trading

Apps that allow users to send anonymous and semi-anonymous messages may cause trouble for securities regulators looking to avoid the type of insider trading that has recently been in the news with the SAC saga. The app “Secret” was launched recently, and Silicon Valley startup rumors and more than occasional passive-aggressiveness seem to be among the most shared “secrets”. While some of the rumors were debunked, including the rumor that Evernote was going to be acquired, others, including that Google is planning to buy Squarespace, have yet to be debunked.

These anonymous sharing apps, including Snapchat, Whisper, Secret, among others, have varying degrees of anonymity, especially given recent data breaches, but the potential...

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Intellectual Property

Starbucks Fails to Prove Trademark Dilution Against Black Bear Micro Roastery

Starbucks recently sued Black Bear Micro Roastery, a New Hampshire coffee bean roasting company, for its “Mister Charbucks” and “Charbucks Blend” coffee beans. The District Court held (and the appeals court affirmed) that Starbucks failed to prove that Black Bear’s use of its “Charbucks” marks are likely to dilute Starbucks’ trademarks, and denied injunctive relief—i.e. stopping Black Bear from continuing to market and sell its bean under the “Charbucks” name. This case is particularly interesting because (a) I really like coffee, and (b) it is a true David versus Goliath situation, the small New Hampshire coffee company prevailed over the behemoth company that is Starbucks. And like David, Black Bear won this battle.

A Quick Summary We all know what Starbucks is...

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Intellectual Property

The Famous Jameis Trademark Debacle

We’ve discussed the intersection of sports and the law a number of times on this blog and today our topic revolves around Jameis “Famous Jameis” Winston of the #2 ranked college football team in the country, the Florida State Seminoles.

On October 24, Mukul Mehra, a grad student at the University of Alabama (#1 team in the country – a coincidence? I think not) applied with the USPTO to register the trademark “Famous Jameis.” The trademark was registered under International Classification 25, and specifies the use of “Athletic pants; Athletic shirts; Body shirts; Clothing for athletic use, namely, padded pants; Clothing for athletic use, namely, padded shirts; Golf shirts; Gym pants; Hats; Hooded sweat shirts; Shirts; Shirts and short-sleeved shirts; Sport shirts; Sports caps and hats;...

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Intellectual Property

Protecting Your IP: The Importance of Federally Registering Your Trademarks

Of course you want to protect your company’s intellectual property, since for most businesses it is some of the most valuable assets they hold. You’ve probably been told countless times that you need to “register your trademark.” Perhaps you haven’t been told WHY you should register your trademark. We’ve put together a short series of blog posts on why you should register your trademark, the common pitfalls during the registration process, and asserting your trademark rights, including opposing a trademark claim. Today’s post highlights the major benefits attached to federally registering your trademark with the USPTO.

Common Law Trademark Rights: No Registration Necessary Trademark rights exist the minute you use a trademark “in commerce”—basically the first time you put your business’ name, logo,...

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Business Startup

News Roundup 12/1-12/7: Mergers, Trademarks, Venture Captial Rounds, Vesting, and Spin Offs

RIM Walks Away From BBX Brand Name After Trademark Dispute Blackberry producer Research In Motion, Inc. has agreed to change the name of its new operating system from BBX to BlackBerry 10 after Basis International, Ltd. won a court order seeking an injunction in a trademark infringement claim. In October RIM announced that it would call its newest operating system BBX, and days later Basis International filed suit to protect its registered trade mark “BBx”. In what has been an already dismal year, RIM’s stock dipped further today on the heels of this news that it would have to rename its upcoming operating system.

Expedia Shareholders Approve Spin Off of Trip Advisor Earlier today we discussed the advantages to spin offs, here’s an...

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