Tag Archives: Chicago Trademark Lawyer

Trademark Regulations and the Likelihood of Confusion test for trademarks of Similar Sounding Characters!

The analysis of trademark infringement and likelihood of confusion is really a question of the nature and character of the mark and the commercial impression it creates in the minds of the consumer.  First, and foremost, a trademark has to be a known word in the English language to be pronounced as a word in the English language.  Also, in order to ensure that a trademark is pronounced properly in a foreign language or under the doctrine of foreign equivalence–the mark must actually be a known word in some language before there is anything to do with pronouncing a word properly.

For example, the word STON and the word STONE although similar in appearance are not pronounced in the exact same way.  In fact, it is important for you to first, recognize what the word is as either, a slang term or an actual English or foreign dictionary with slang translations.  If there are any other similarities in appearance, the appearance must be consistent with the official English or Foreign language translations before the words can be considered similar with respect to their actual appearance.  Although there may be some chance that someone mistakenly assumes that the STON mark is the same in appearance as the STONE mark, the reality is the commercial appearance and impression of the marks in the marketplace is what controls.

Otherwise, the consumers will recognize that STON as used in the marketplace is not even a recognized word and not pronounce it in the same way as the actual English word of STONE.  Thus, you cannot utilize definitions that are consistent with the English language for something that is not an actual known word.  Moreover, to apply the doctrine of foreign equivalence the word must be an actual foreign word to be considered to be the equivalent of the English equivalent.  It will not be considered a foreign word if, it does not have the same characters as a known foreign word.  Moreover, the mark STON has no foreign equivalents, thus, there is no way for any of the definitions or translations STONE to be used to provide an equivalent meaning for STON.

For more go to:   13-1448.Opinion.7-14-2014.1

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New E-Book for Entrepreneurs: A Guide for Entrepreneurs and Business Owners!

We recommend a new book that has been published relating to a Beginner’s Series of Guides for Entrepreneurs relating to acquisition of angel, capital, funds, seed or VC funding for undertaking new efforts to try out and test out the … Continue reading

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Fourth Chicago Based IPO to over a Billion in Valuation! Are Startup and Tech Deals Coming back to Chicago?

Following in the success of LinkedIn, Groupon, Envestment’s IPOs, the Chicago startup, GrubHub went public on April 4, 2014, with shares soaring to over $40 dollars a share well above their $26 dollars per share Initial Public Offering (“IPO”) price.  The New Company was formed through a merger between Chicago based “GrubHub” and New York based “Seamless.”  Will the surge in IPO’s for tech companies continue?  Is there real value there for investors?  Many experts expect the shares to do fairly well, as the initial expected offering rose from the range of $20-$22 per share, all the way up to $26 per share late Thursday night before the Friday morning offering.

The IPO is great for GrubHub, but more importantly, the Chicago Startup community at large.  Chicago is beginning to build a reputation in recent years for its successful tech companies with even better IPOs.  GrubHub is the third recent, Chicago based Tech Company, to have an IPO valuation of over a billion dollars, nearly, $3 billion.  Groupon, the digital coupon and bargains merchant went public in 2011, and is currently, valued at $5.4 billion dollars.  While, a lesser known IPO for Envestnet, a local tech startup that produces software for financial advisors has led to a current valuation of $1.35 billion dollars.

All this success helps aids in Chicago’s current effort to rebrand the City as a Startup and Entrepreneurship HUB.  An effort shared by President Obama, who awarded Chicago, a coveted federally funded high tech hub on February 25th of this year.  Hopefully, this will continue to keep Chicago on the map as not only, a distribution network for products and commodities, but also a thriving City for innovation.  Does this mean more deal and intellectual property work for lawyers? Certainly, seems so as Entrepreneurs are starting to find success and providing a return on investment to Angels, VCs, Private Investors and public shareholders!

The City of Chicago received a total of $70 million for a Pentagon-led institute that focused on high-tech digital manufacturing and design.   The Startup Community in Chicago is flourishing, and there’s no better place or time for individuals with a dream and an idea, to start looking to make them into a real business.  If you or someone you know has an amazing idea for a startup business and is looking for investors, look no further than the Entrepreneurs and Executives Bruch Club’s Startup Competition (EEBC-It’s Just Brunch!).

At the EEBC’s 2014 Spring Competition, Startups were presented with the chance to pitch their businesses to actual equity and angle investors.  During the March 2014 Competition $2,000.00 in actual seed money was awarded to the top three teams by the EEBC-It’s Just Brunch!  See the Winners:  EEBC Its Just Brunch Spring 2014 Competition Winners Final

Meet the Panelists and Investors:  EEBC Startup Competition Special Thanks to Panelists_Final Proof_032514

The next EEBC Quarterly Competition takes place in June 2014 and the EEBC is currently, looking for qualified teams to compete.

Visit http://eebrunchclub.com/ for more information, http://www.chicagostartupattorney.com, or go to www.vrplawgroup.com

The New Generic Top Level Domains (GTLDs) and what do they mean for online consumers and retailers!

When we browse the internet, we know how to get to the websites we want to go to.  We know to type in, for example, “amazon.com,” and know that by doing so we will be able to shop on Amazon.  This has already started to change, however, as the Internet Corporation for Assigned Names and Numbers (ICANN) has decided to make over 1,400 new top level domain names available for purchase.

Now, we will likely have to go to “movies.amazon” or “books.kindle” in order to get to the site we want. In essence , we will have to relearn how to find products and services on the web.,  Moreover, consumers will have to understand the new top level domain and which TLD and URL will enable them to find the products or services they want.  On line retailers will have to understand how the new TLDs may impact their SEO process. consequently, the new TLDs may or may not lead to a better online distribution means.

These new domain names have been met with mixed reviews.  On one hand, companies are excited; these new names allow them to advertise their brands even more, encourage competition and innovation, and assist consumers in getting to the correct site.  On the other hand, however, people worry about the cost of registration and upkeep, not to mention the potential for trademark violations and cybersquatting.  Registration for one name costs $185,000.00, and in most cases, it makes sense for companies to register multiple names.  This is a defensive maneuver, as it will keep others from registering names that will cause consumer confusion or infringe on trademarks.

While ICANN has developed a database to protect trademarks, called “Trademark Clearinghouse,” it has its drawbacks.  For one, it costs $150.00 a year, per trademark.  Further, it may not be the most effective; it only protects against identical matches of trademarks.  This does not include misspellings or names that are very similar to trademarks.  So, companies will have their work cut out for them when purchasing the top level domain names and protecting them from competitors.

The first seven new top level domain names went live on the Internet on January 29th, 2014.  So far, we have seen the addition of .bike, .clothing, .guru, .holdings, .plumbing, .singles, and .ventures.  More are expected to come out on February 5th, 2014.  For more go to http://www.vrplaw.com

TTAB Cancellation Proceedings, Timing of Motions for Summary Judgment, and Motions for Reconsideration!

It is surprising how often clients will not realize that the TTAB Opposition and Cancellation Proceedings are litigation proceedings.  They are administrative in nature, but the Federal Rules of Civil Procedure and Federal Rules of Evidence still apply.  Thus, filing a summary judgment can often be an effective method of resolving cancellation and opposition proceedings with the TTAB.   The TTAB’s rules do have some nuisances, such as the requirement that the parties exchange 26 (a) (1) disclosures before filing a summary judgment motion.

However, even in most Court proceedings the parties will not file a summary judgment motion, until after both sides have had an opportunity to complete discovery.  Unfortunately, the TTAB and its attorneys are not necessarily used to making rulings on evidentiary issues, motions in limine, and a variety of other areas of trial practice.  Thus, often times the TTAB does make mistakes on key evidentiary issues, standards of law and application of trial standards to TTAB cancellation and opposition practice.

Moreover, over often times, many TTAB Attorneys do not realize the need for a summary judgment to be decided based on admissible evidence.  The same standard applies to summary judgment motions in front of TTAB.  Thus, it is not unusual for the TTAB to make an error of law and require a party to file a motion for reconsideration.  In fact, many times this can be good opportunity to create your record for an appeal to a federal court that may be more comfortable with ruling upon evidentiary issues and deciding summary judgment motions based on Federal Rule of Civil Procedure 56.

Parties are allowed to appeal final decisions from the TTAB to their local Federal Courts, D.C. Circuits or the Federal Circuit and the Supreme Court.  Moreover, the parties may even be allowed to offer new or evidence that was excluded from the TTAB proceedings.  However, the TTAB does offer an Accelerated Case Resolution Process that can be used to have summary judgment motions be used for trial purposes. This can often be a cost saving and effective strategy for dispositions of the TTAB proceeding for both parties.

Thus, working with a Trademark Attorney that has Federal Court Litigation and Trial experience is vital to the success of a TTAB cancellation or opposition proceeding.  If you have any concerns or questions, then please feel free to contact us at http://www.vrplawgroup.,com

Use of Trademarks in Movie Titles Phifty-50 and 50/50 (Seventh Circuit Says Not Enough Facts to Support Actual Likelihood of Confusion as to Origin!)

In a recent, Seventh Circuit Case, the Eastland Music Group v. Lionsgate Entertainment, Summit Entertainment and Mandate Pictures, the Plaintiff’s alleged the use of the terms “50/50” violated their registered and common law trademark rights to the use of the PHIFTY-50 mark for songs, rap music, movies and entertainment.  However, there was no actual indication or allegations that the use of the terms “50/50” was actually causing confusion as to the source of the origin for the movie.  The Seventh Circuit stated the PHIFTY-50 mark is not the same in appearance as the “50/50” mark.  Although the marks sound the same, the Court, performed a cursory examination of the similarities of the marks and stopped with the lack of similarity in the appearance of the mark.  The Court, found that the PHIFTY-50 mark is too weak and a descriptive mark, so that “50/50” mark could be used in a descriptive sense to describe that the main character had a “50/50” percent chance of surviving a surgery involving spinal cyst that had degenerated into cancer of the spine.

Moreover, the Court considered the fact that Wikipedia defined “50/50” as essentially, a fifty to fifty probability of some event occurs or eventuality actually happening.  The Court went on to state that there were many third party users that used the terms “50/50” in a descriptive sense and there may be prior users of the mark.  However, the Court did not perform an actual “prior user” or “failure to police” analysis.  The prevalent of the use of the mark by third parties indicated that the mark was entitled to weaker protection.  The Seventh Circuit ignored Second Circuit Case Law considering the constitutional concerns involving the Freedom of Speech, under the First Amendment, in analyzing infringement of descriptive marks.  Instead, the Seventh Circuit found that Constitutional issues should not be the first issues to consider in a case. Thus, if a case or final judgment can be entered without considering of a constitutional issue at the pleadings stage, then the constitutional should not be considered as moot.

In this particular case, it appeared that although the Plaintiff alleged prior trademark rights, it would have been a junior user with respect to the other third party users.  Moreover, the Supreme Court, precedent indicated that the use of a mark in the title of the intellectual property work can only, infringe the original author’s trademark rights, if, it indicates that the latter author is the origin for the work.  This seems to crossover slightly, into the right of attribution in the original author’s copyrights.  However, since the Right of Attribution must always be complied with and the title of the original copyrighted work must be cited and referenced; it is hard to imagine how there can be a potential likelihood of confusion?  The mark must be placed far away from the actual reference or citation to the original author to engender some likelihood of confusion that may or may not be alleviated based on how close the citation is to the mark or the point of sale or purchase.

Moreover, the Seventh Circuit, seemed to focus on the cost and expense of trademark litigation in holding in light, of the small likelihood of actual confusion the Plaintiff’s had not asserted a trademark infringement claim and dismissed the case on a 12 (b) (6) motion to dismiss.  It appeared that the Seventh Circuit seemed to be moving towards a Tomboy and/or Irbal or plausibility analysis for trademark infringement claims.  We will see if, this trend continues and if, defense attorneys have a new tool in their arsenal to combat marginal trademark infringement claims.

If you have any concerns or questions on how to prosecute or defend a trademark infringement matter, then please feel free to contact us at http://www.vrplawgroup.com

How to grow your business and manage business and legal risks? How to make your business more attractive to Investors?

One of the most practical ways that a business owner can grow his or her business and make it more attractive to investors is by creating an operations and/or process manual.   This provides a method of creating knowledge transfer between the owner, employees, and anyone else that may be working for you.   It is also a ready source of trade secrets and training materials for new employees.   If you can write down what you know, then you have to spend less time revising it to improve on your processes, training replacement employees, identify potential areas of further research and development to develop additional products or services.

After you have taken the time to create an operations plan you can use it to tweak your business plan and corporate strategy.  For example, are there processes that are prone to increase risk of liability, if so, then you can think about creating a subsidiary or another company to use to shield the less risky aspects of your business.   Maybe, a general commercial liability or products liability insurance policy will effectively help you manage the risk of liability.  The operations manual can be used to train new employees and protect against the risk of losing your employees to your competitors.  Maybe, you are growing at a rate that exposes you to federal and state employment statutes, and it makes sense in investing in a good employment manual and human resource training program.

Moreover, once you have written down your operations manual not only can you identify areas of innovation, but also potential areas for developing your intellectual property portfolio.  The Operations Manual can be the start of an IP development strategy to help create barriers to entry and increase the value of your business.  You can develop not only trade secrets, but patents, trademarks, trade dress, and copyrights.  In addition, you can identify customers that are generating a large portion of your revenues and try to cater to their need for your products or services.  You can identify the traits of these customers that will allow you to find other similar customers to whom you can pitch your product or services.

These customers may also be good sources for strategic alliances and partnerships or some form long term supply or services agreements.   Once, you identify who they are you can also develop product or service bundles and/or add on products or services.  However, if you have not created a method of tracking who your customers are, then you cannot scale your business.   If you have any concerns or questions about your business or corporate planning, then feel free to contact us.

Naked Licensing of Trademarks: Is your policing policy good enough to establish control?

Many trademark owners thinks that their job is done once, they have registered their trademarks.  However, trademark law rewards individuals that decrease the costs for consumers to find and identify products and services that they are looking to acquire.  In order to facilitate this policy and designation of a source of the quality and nature of the origin of the goods or services, the Lanham Act, the USPTO and Trademark Law protects the owners’ goodwill and marks.  But, the failure to properly monitor the mark and ensure that the marks are still able to serve these purposes may lead to a forfeiture or abandonment of the mark.

One of the ways, a trademark owner can lose or abandon his mark, is by engaging in naked licensing. If you have very lax or non-existent methods for ensuring that licensees that are using the mark are not required to meet your level of quality of the goods or services, then you may not be fulfilling the purposes of having your mark serve as an indicator of source, origin and/or quality.   If you have oral or implied licenses that do not require payment of royalties, then you may have difficulty enforcing your trademarks in the future.

You may be unable to count on your licensees use to establish continue commercial use of the mark to sell a product or service and may have gaps in your claimed years of use.  This may impact your priority rights, your rights to renew, your ability to make a mark incontestable, to sue counterfeiters and cyber squatters and maintain your low customer acquisition costs. Unfortunately, the old adage that if you do not own it you lose it is accurate with respect to trademark law.  Moreover, trademarks that are not controlled by their owners and licensees that are not monitored for how they use your trademarks can become more of a liability than an asset.

If you have any concerns or questions about your trademark rights, protecting your barriers to entry and low acquisition costs for consumers, then please feel free to contact a trademark attorney at VRP Law Group.