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Messages - JSonnabend

Trademark Forum / Re: Cancellations
09-23-16 at 05:26 PM
Not necessarily.  Registrations can be cancelled for numerous reasons, including a successful challenge by a third party, failure to make maintenance filings, and express abandonment, among others.
You have provided a very nice summary of McCarthy's summary of the law of color marks.  (Although you did not mention the Second Circuit Christian Louboutin case.  Maybe your McCarthy is not up to date?).  What, exactly, do you want to discuss?
MYK is right in broad strokes, but a few points should be clarified.

First and foremost (and MYK did not address this), you cannot "snag" a tradename (sic, trademark).  If you are using the mark or have a bona fide intention to use it, then you can seek registration.  Otherwise, filing a trademark application would amount to perjury (see the declaration you sign upon submitting the application).

Second, if the company is truly defunct, then they likely have nothing to sell.  In that case, you could try to contact someone, although I am not sure who, to obtain confirmation of abandonment and/or some letter of consent.  I suppose you could try to purchase the good will as well, but from a truly defunct company, that may not be possible.

Third, cancellation is not a "suit", it's essentially an arbitration in the TM Office.

Finally, if the company is really defunct, then there would almost certainly not be anyone with proper standing to sue you for infringement.

- Jeff
As a general proposition, you can use another party's trademark to refer to the trademarked product or service.  That's called nominative use.  Using that party's mark in your own mark, however, is more problematic.

In your hypothetical, you could safely refer to the SAT in your advertisements (as in "John's Tutoring Service, we prepare students for the SAT").  You would be on sketchy ground, at best, using the term SAT in your mark (as in "John's SAT Tutoring Service").

- Jeff
I think Mersenne's analysis of clothing marks is off the mark a bit (no pun intended).  The use he describes for the mark COCA-COLA for clothing is a "secondary source" use, and is registerable as such.

Beyond that, his discussion about "designs" is more on point, as it addresses the issue of mere ornamentation versus actual trademark use.  If you are placing a slogan on clothing and nothing more, than the use is likely ornamental and not trademark, and so is neither protectable nor registerable as a trademark. 

There are steps you can take to overcome this hurdle, though, and any competent trademark attorney can advise you.

- Jeff
I think it overstates the issue to say the McDonalds can claim all rights to the MC prefix, even for restaurant related services.  A quick search reveals several junior registrations in that field with the MC prefix.  Doesn't mean McDonalds isn't aggressive in enforcement, just means the outcome of that enforcement is not a foregone conclusion.
A license (with proper QC) would be one option.  So, too, would a consent agreement.

My question is, does the OP really want to allow the junior party to continue use of the mark?

- Jeff
While I agree with ArtChain in the broad sense, MYK is absolutely correct that brands, even before launch, can have significant value (as in his hypothetical).

I also do not agree that it would necessarily be a waste to contact an attorney.  If the evidence is there showing that the applicant effectively "stole" someone else's intended brand, then an opposition should be effective.

- Jeff
What's the alternative, not policing the mark?  Might as well hand it over to the other side, then.

- Jeff
"Availability" of a mark (right to use the mark, really) is dependent on the absence of other marks that are "confusingly similar" to yours.  This standard is unlike domain names, for instance, where the domain in question is either available or is not, with even the most minor variations in spelling being sufficient.

Additionally, as MYK suggests, a trademark may be "available" in that no confusingly similar variation has been registered with the Trademark Office; however, if a confusingly similar variation is in use without registration, that mark may still make yours "unavailable".

So, my advice?  Before dumping any real money into developing your brand (that is, your mark), contact a competent trademark attorney and let him conduct a proper clearance for you.

- Jeff
If your recordings have a "modicum of creativity", then yes, they would be protected by copyright.  The recording of a phone call, I think it is safe to say, does not.
Assuming the conversation between OJ and Lange was not scripted, then it would be classified as "extemporaneous" and therefore not subject to copyright.
Wrong forum, strictly speaking, but close enough.

What you're talking about here is in general terms called "right of publicity".  Without a proper release, the use may violate your child's rights.  If this really is a thorn in your side, I suggest speaking directly to a lawyer.

- Jeff
While I would need more details to fully understand the situation, I can tell you that you might be foreclosed from using your name as a brand for your product.  You would not be foreclosed, though, from identifying yourself, by name, as the creator/principal/whatever for the company and product.

- Jeff
Classes are of minimal importance to the question of registerability/infringement.  They are really there in the modern world for purposes of collecting fees.  By way of example of a mark registered by two non-related entities in the same class, consider the mark UNITED for moving services and airline services in class 39.  Same mark, two different owners, same class.

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