Winds of Change in U.S. Patent Law

Read my article about changes in U.S. patent law in the March 2011 issue of Intellectual Property Magazine - you can find it on my my website at www.tmwlaw.com.

Fried Chicken Trademark Fight

With everything else there is to worry about in this world, you would think people could avoid fighting over who owns the right to use the name of a famous president as a trademark for fried chicken restaurants. But you would be wrong. As reported in the New York Times, there is a battle going on for the KENNEDY mark in connection with fried chicken restaurants -- http://www.nytimes.com/2011/02/14/nyregion/14chicken.html?_r=1&scp=1&sq=kennedy%20fried%20chicken&st=cse
Mr. Abdul Haye owns the registered mark KENNEDY FRIED CHICKEN, Reg. No. 2994240, for restaurant services. The registration issued September 13, 2005, which means it is now in the filing period for the declaration of continued use. According to the New York Times article, the KENNEDY fried chicken brand "has spawned hundreds of imitators." The article states that Mr. Haye is sending out hundreds of letters to other parties who are using the KENNEDY name demanding they pay him a monthly franchise fee. There are a few problems that Mr. Haye should be aware of here.
First, supposing some of the recipients of the letters are willing to comply, there will need to be some mechanism put into place to ensure that the owner of the trademark exercises adequate supervision over the nature and quality of the services - otherwise there could be a naked licensing issue.
Second, it seems that some of the letter recipients may assert the defense of laches - one has to wonder if Mr. Haye may have waited to long to assert his rights.
Third, as the NYT article indicates he is sending the letters "to Kennedy outlets across the country," it would seem that some of the other users of the name may claim they have common law priority in their market area, while others may claim that there is no likelihood of confusion because Mr. Haye does not operate in their locality and has no present plans to begin operations there.
Long story short, although Mr. Haye enjoys the benefits of a federal registration and the legal presumptions that go with it, he may have a hard time if he has to go to court against some of the other KENNEDY outlets. If he really is sending out hundreds letters he may be biting off more than he can chew (sorry). Let's hope that Mr. Haye is aware of the necessity to file maintenance documents with the USPTO between the 5th and 6th anniversary of his registration date - otherwise he may miss the deadline to file his section 8 declaration and lose his registration.

The Gift that Keeps on Giving

It has come to my attention that Sarah Palin has filed an application with the USPTO to register SARAH PALIN as a service mark for "Information about political elections; Providing a website featuring information about political issues" in class 35 and "Educational and entertainment services, namely, providing motivational speaking services in the field of politics, culture, business and values" in class 41. As of this writing there is an office action outstanding in which the trademark examining attorney has noted that the class 35 specimens are unacceptable because they do not show use of the applied-for mark in connection with any of the services specified in the application. According to the office action "the specimen submitted for 'Information about political elections' is a news story on the Fox® Network about Ms. Palin" and the specimens submitted for "Providing a website featuring information about political issues" are postings on Facebook®. Thus, "the specimen does not show use of the mark as 'providing a website featuring…'. Rather the proposed mark merely appears as a posting name." Judging by these specimens, it seems that Palin or her attorney may not completely understand what constitutes use of a word or symbol as a trademark.
An application to register BRISTOL PALIN has also been filed, for "Educational and entertainment services, namely, providing motivational speaking services in the field of life choices" in class 41. The "field of life choices?" An interesting field - the USPTO may require some clarification on that. There is also an office action outstanding against this application because the specimen does not show the applied-for mark in actual use in commerce. People generally just do not understand the specimen submission component of the trademark application. Palin and her daughter have a lot of company in stumbling over this requirement. Although both these applications have been initially refused for failure to provide an acceptable specimen, the Palins' attorney should be able to overcome the refusals.
A small thank you is due to John McCain for bequeathing to the American people this gift that keeps on giving. I have my doubts that Palin provides any "educational services." But she does provide "entertainment services."

Is APP STORE Generic?

Here is an interesting trademark story. Apple Inc. applied to register APP STORE (application Serial No. 77525433) for, among other things, “Retail store services featuring computer software provided via the internet and other computer and electronic communication networks; Retail store services featuring computer software for use on handheld mobile digital electronic devices and other consumer electronics.” The USPTO published the application and on July 6, 2011 Microsoft filed a notice of opposition, (Opposition No. 91195582) alleging that “app store” is a generic term for retail stores selling computer applications, and as a generic term is incapable of registration.

Microsoft’s argument certainly seems strong. In its notice of opposition it alleges that the term “app” is a common generic name for software applications, citing Apple’s own use of term as a name for a type of product (as opposed to a brand). Microsoft alleges that Apple’s own web site promotes “Apps made just for Ipad” and describes its APP STORE as offering “tens of thousands of apps . . . .” This is exactly the type of use of a purported trade name that should always be avoided by anyone who would claim trademark rights in the name. Apple, had it put more thought into its use of the term “APP” would have been better served to refer to “App™ software applications made just for Ipad” and “tens of thousands of App™ software applications.” While Apple could have avoided providing evidence of the term APP’s generic nature by using it as a brand name, these constructions sound artificial – probably because the term APP is indeed a generic term.

Besides Apple Inc.’s own use of the term APP as a generic name for software applications, Microsoft’s notice of opposition also cites to dictionary definitions of the term APP, uses by other retailers of the term APP STORE as part of the name of their stores selling software applications, and use by the press as a name for retail stores selling software applications.

On January 10, 2011 Microsoft filed a motion for summary judgment. The summary judgment brief is supported by evidence of Apple Inc.’s own use of the term APP to refer to software applications, evidence of use of the term APP STORE in the press to refer to stores selling software applications, evidence of competitors’ use of the term APP STORE to name their own retail store services in the field of computer software, and evidence of consumers’ use of APP STORE to refer to the app stores of Apple Inc.’s competitors. The summary judgment brief even includes a quotation from Steve Jobs replete with generic uses of both APP standing alone and “APP STORE” in reference to the competing “app stores” using Google’s Android platform. Microsoft argues that just as THE COMPUTER STORE was held generic for a store selling computers, In re Computer Store, 211 USPQ 72 (TTAB 1981), APP STORE must be generic for a store selling apps.

Currently the summary judgment motion is pending. As of January 22, 2011 Apple Inc. had not yet filed a response brief. How do you think the Trademark Trial and Appeal Board should rule? Is APP STORE generic for a retail store selling software applications, or should Apple, Inc. be permitted to claim the exclusive right to use the term to identify its own retail store services, forcing competitors to use other terms?

TEAS Glitches

When you make a filing in a trademark application using the Trademark Electronic Application System (TEAS), an email confirmation of the filing is usually instantly generated. Sometimes, however, there can be a glitch in the system, and you do not receive the email confirmation. Usually this situation will self correct, and your filing will be duly posted to the application file within a day or two. If you are making your filing on or close to the deadline and this happens, however, it may be a good idea to call the Trademark Assistance Center to see what the problem is. In any event, it is always a good idea to print or save the confirmation screen that appears immediately after you submit your filing - this will give you proof that the filing was made.

New Blog Created Today

Today marks the launch of the Thomas M. Wilentz Trademark Blog. This will be a forum for news and commentary about trademarks from the perspective of an attorney who practices in this field. This blog will not contain any legal advice. Its purpose will be to inform and (hopefully) to entertain.