New York is investigating what I think is a question of first impression:
Does a copyright infringement take place where the copy is made? or where the owner of the right resides. The former is where the infringing action originated, but the latter is where the injury occurred.
I wonder if the court will look into other torts across jurisdictional lines. What happens when you stand in North Carolina and throw a rock at someone in South Carolina? Who has jurisdiction?
Penguin v. American Buddha
(got to love the name too)
Thursday, June 17, 2010
Friday, May 14, 2010
How many things are a foot long?
So Subway (the national sandwich chain, the guys behind Jared and his nice weight loss) has decided to register a new trademark.
They've registered "footlong".
Much to my shock and surprise the PTO actually granted their registration - or more specifically, accepted for publication. Basically they submitted an application and the PTO said that the term is sufficiently unique to be granted a trademark registration unless anyone can show otherwise.
They publish in the Official Gazette, then people who may also have an interest in the name can oppose the registration.
So far it looks like 9 oppositions have been filed and one application to extend time to allow an opposition to be filed.
It's a bit of a complicated history. Doctor's Associates Inc. (yes, that's the corporation that owns Subway) filed a registration for "footlong" in relation to sandwiches.
The registration was denied because of pre-existing marks for "footlong express" that sold hotdogs at sporting events.
DAI fought that, saying sandwiches are basically nothing like hotdogs and since DAI doesn't sell at sporting events, there's no likelihood of confusion.
The PTO didn't buy it.
So DAI filed to cancel the pre-existing marks.
And the owner of that mark didn't bother to file an answer defending it. Subsequently the mark for "footlong express" was canceled and now there's no likelihood of confusion.
The application was also refused because it was merely descriptive of the goods. The sandwiches are a foot long (I've never measured, but I'd be surprised if they really were).
Well that was dropped because DAI said basically that "footlong" just tells you something is 12 inches, but it doesn't tell you what is 12 inches. It could be foot long neckties. It takes imagination to leap from an adjective to the noun it describes.
The PTO bought this and let it go forward.
Now I think what really happened was more along the lines of the PTO throwing its hands in the air and saying to itself - these folks are really going to fight for this and we don't have the resources, time, or inclination to go into the historical use of the word "footlong" so we'll just approve it and let someone else oppose it and fight it out in a trial.
Which is what's happening now.
Now this came to my attention because DAI has been sending cease and desist letters to small mom and pop delis to get them to stop calling their sandwiches "footlongs".
However, it is nice to know that DAI is not going to get away with simply throwing it's weight around and intimidating or outspending the little guy. Big guys are opposing the registration. Here's a list of the opposers so far:
A&W Restaurants, Inc.
Long John Silver's Inc.
KBI Holdings, L.L.C.
RaceTrac Petroleum, Inc.
Taco Bell Corp.
Sheetz, Inc.
American Dairy Queen Corporation
Firehouse Restaurant Group, Inc.
America's Drive-In Brand Properties LLC
KFC Corporation
Pizza Hut, Inc.
DOMINO'S IP HOLDER LLC
Kahala Franchise Corp.
So looks like this is going to be a big fight over a big sandwich.
They've registered "footlong".
Much to my shock and surprise the PTO actually granted their registration - or more specifically, accepted for publication. Basically they submitted an application and the PTO said that the term is sufficiently unique to be granted a trademark registration unless anyone can show otherwise.
They publish in the Official Gazette, then people who may also have an interest in the name can oppose the registration.
So far it looks like 9 oppositions have been filed and one application to extend time to allow an opposition to be filed.
It's a bit of a complicated history. Doctor's Associates Inc. (yes, that's the corporation that owns Subway) filed a registration for "footlong" in relation to sandwiches.
The registration was denied because of pre-existing marks for "footlong express" that sold hotdogs at sporting events.
DAI fought that, saying sandwiches are basically nothing like hotdogs and since DAI doesn't sell at sporting events, there's no likelihood of confusion.
The PTO didn't buy it.
So DAI filed to cancel the pre-existing marks.
And the owner of that mark didn't bother to file an answer defending it. Subsequently the mark for "footlong express" was canceled and now there's no likelihood of confusion.
The application was also refused because it was merely descriptive of the goods. The sandwiches are a foot long (I've never measured, but I'd be surprised if they really were).
Well that was dropped because DAI said basically that "footlong" just tells you something is 12 inches, but it doesn't tell you what is 12 inches. It could be foot long neckties. It takes imagination to leap from an adjective to the noun it describes.
The PTO bought this and let it go forward.
Now I think what really happened was more along the lines of the PTO throwing its hands in the air and saying to itself - these folks are really going to fight for this and we don't have the resources, time, or inclination to go into the historical use of the word "footlong" so we'll just approve it and let someone else oppose it and fight it out in a trial.
Which is what's happening now.
Now this came to my attention because DAI has been sending cease and desist letters to small mom and pop delis to get them to stop calling their sandwiches "footlongs".
However, it is nice to know that DAI is not going to get away with simply throwing it's weight around and intimidating or outspending the little guy. Big guys are opposing the registration. Here's a list of the opposers so far:
A&W Restaurants, Inc.
Long John Silver's Inc.
KBI Holdings, L.L.C.
RaceTrac Petroleum, Inc.
Taco Bell Corp.
Sheetz, Inc.
American Dairy Queen Corporation
Firehouse Restaurant Group, Inc.
America's Drive-In Brand Properties LLC
KFC Corporation
Pizza Hut, Inc.
DOMINO'S IP HOLDER LLC
Kahala Franchise Corp.
So looks like this is going to be a big fight over a big sandwich.
Wednesday, April 28, 2010
Kung Fu Grip!
If Kwai Chang Caine is your image of a Shaolin Monk, you may have to do some rethinking.
Instead of fists and pole arms, the Shaolin of today fight like everyone else: with lawyers!
Being a bit of a gun for hire myself, I do find this very amusing. The China Songshan Shaolin Temple has been denied a trademark registration for "Shaolin Medicine".
As I've noted before, a trademark has to be attached to something - something in the marketplace - something you trade in.
So what did the monks call "Shaolin Medicine"? Noodles.
Well, and instant coffee, and a few other foods.
The monks began selling their foods with the name "Shaolin Medicine" back in 2004 and at that time applied for a trademark with the Chinese bureau that handles such matters. A committee rejected the application and the monks filed a lawsuit against the commission. (hyaaa!)
Monday the court ruled against the monks (bam! Ancient martial arts are no match for modern court room techniques).
The commission found, and the court ultimately agreed, that the name would confuse buyers into thinking the food had some actual curative properties. You see, the monks have been peddling "medicine" (mostly herbal remedies, acupuncture and quackery) for 1500 years. Now they are getting into the noodle biz.
The Zen monks have been catching a lot of flack lately for their increased commercialism, but I'm sure they can easily deflect it with their super-human reflexes and acrobatic flips. (keya!)
One source of many
Instead of fists and pole arms, the Shaolin of today fight like everyone else: with lawyers!
Being a bit of a gun for hire myself, I do find this very amusing. The China Songshan Shaolin Temple has been denied a trademark registration for "Shaolin Medicine".
As I've noted before, a trademark has to be attached to something - something in the marketplace - something you trade in.
So what did the monks call "Shaolin Medicine"? Noodles.
Well, and instant coffee, and a few other foods.
The monks began selling their foods with the name "Shaolin Medicine" back in 2004 and at that time applied for a trademark with the Chinese bureau that handles such matters. A committee rejected the application and the monks filed a lawsuit against the commission. (hyaaa!)
Monday the court ruled against the monks (bam! Ancient martial arts are no match for modern court room techniques).
The commission found, and the court ultimately agreed, that the name would confuse buyers into thinking the food had some actual curative properties. You see, the monks have been peddling "medicine" (mostly herbal remedies, acupuncture and quackery) for 1500 years. Now they are getting into the noodle biz.
The Zen monks have been catching a lot of flack lately for their increased commercialism, but I'm sure they can easily deflect it with their super-human reflexes and acrobatic flips. (keya!)
One source of many
The Reason for My Absence
On January 30, 2010, my mother died suddenly and unexpectedly. She was 82 so it was not entirely unexpected. However, she did not have any chronic health problems beyond arthritis and some circulation difficulty in her legs. Basically her kidneys gave out, her blood pressure dropped precipitously, and when blood returned to her heart the strain was too much and her heart failed.
I took some time off an have been involved in another project and taken vacation, but I'm back now and ready to post again.
I took some time off an have been involved in another project and taken vacation, but I'm back now and ready to post again.
The Reason for My Absence
On January 30, 2010, my mother died suddenly and unexpectedly. She was 82 so it was not entirely unexpected. However, she did not have any chronic health problems beyond arthritis and some circulation difficulty in her legs. Basically her kidneys gave out, her blood pressure dropped precipitously, and when blood returned to her heart the strain was too much and her heart failed.
I took some time off an have been involved in another project and taken vacation, but I'm back now and ready to post again.
I took some time off an have been involved in another project and taken vacation, but I'm back now and ready to post again.
Sunday, January 17, 2010
Hail Mary is 35 now
The Hail Mary pass turned 35 in December.
Here is an excellent article about it.
I mention it here because of the last few lines of the article. Drew Pearson owns the trademark on "Hail Mary" for caps and shirts. I wonder if the Catholic Church was annoyed by that.
Here is an excellent article about it.
I mention it here because of the last few lines of the article. Drew Pearson owns the trademark on "Hail Mary" for caps and shirts. I wonder if the Catholic Church was annoyed by that.
Legend of Booty
I just read this brief article and as a trademark attorney something popped out at me:
Age of Booty sequel
On January 11, the makers of Age of Booty filed a trademark registration for the term "Legend of Booty."
The author of the article said "it doesn't make sense that they would register such a title without some sort of plan for a game to go with it." If he were a trademark attorney he would have known that not only does it not make sense, but it's not valid.
You have 2 possible bases for filing an application to register a trademark: you are using the mark in commerce, or you intend to use the mark in commerce within the next 6 months.
A quick peek at the USPTO website shows this is a 1B intent to use application and that it's for "computer game software . . . [etc.]"
So basically Certain Affinity has just told the world "we have a computer game coming out in the next 6 months called "Legend of Booty."
Age of Booty sequel
On January 11, the makers of Age of Booty filed a trademark registration for the term "Legend of Booty."
The author of the article said "it doesn't make sense that they would register such a title without some sort of plan for a game to go with it." If he were a trademark attorney he would have known that not only does it not make sense, but it's not valid.
You have 2 possible bases for filing an application to register a trademark: you are using the mark in commerce, or you intend to use the mark in commerce within the next 6 months.
A quick peek at the USPTO website shows this is a 1B intent to use application and that it's for "computer game software . . . [etc.]"
So basically Certain Affinity has just told the world "we have a computer game coming out in the next 6 months called "Legend of Booty."
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