Yes, it’s true. A person can trademark his own name. It has been reported by newsfeed.time.com and many other sources that Governor Sarah Palin applied for the trademark “Sarah Palin” and her application was rejected. There is a very simple explanation for this.

When a person’s name is the trademark, a written consent needs to be included in the application. Sarah Palin did not include this written consent.

So, while the news is hyped up about her not getting her trademark accepted, this is a mere technicality that occurs to over 80% of all trademark applications filed. It can be corrected and then, will continue on it’s way through the regular examination process.

If a person wants to use his or her name for a trademark, he has to have it used in commerce. One cannot simply trademark his name for the heck of it. There must be a bona fide intent to use the name in commerce, in connection with goods or services. Of course, if the name is already in use, that is fine, too.

Many superstars have trademarked their names: Tina Turner (for clothing, music, posters, entertainment services),  ‘Madonna’ (for clothing), and David Letterman (for entertainment services, t-shirts, mugs) to name just a few. And more and more famous name are being protected with a trademark every day.  It’s smart business.

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Various sources report that Your Baby Can, LLC has been aggressively enforcing their trademark rights via law firm Johnson & Pham, LLP of California. The term “aggressively enforcing their trademark rights” is actually not the correct  description of what they are doing.

Baby Can’s law firm has been scanning the Ebay list of sellers who are legitimately re-selling their used BABY CAN READ products, and sending them demand letters not only demanding that the seller cease and desist offering the item for sale, but also, they have the gall to demand a signed affidavit and a healthy check! People have attested to amounts ranging from $700 all the way to $10,00.  These people are private, individuals, and overall lawful citizens who are scared by such legal tactics.

If you or anyone you know has received such a letter, we urge you to 1) not send any money; 2) report the law firm to the California Bar Association, the Attorney General’s Office of California, and the Better Business Bureau.  This advice applies to any similar situation. Not all law firms are legitimate. This is harassment clear and simple. No law firm can demand money from you for simply re-selling a used item.

The essence of the demand letter includes a claim that the BABY CAN READ items being offered for resale are counterfeit. If that is the case, the law firm needs to go after the real culprit – the original seller, and the manufacturer of the counterfeit items. Not normal ebay users who hold ordinary jobs, and do not profit from a single solitary re-sold used item.

It is always disturbing to us at the National Trademark Center to hear of such behavior among lawyers,
especially in the field of Intellectual Property.

It seems that these lawyers have convinced their client, Your Baby Can LLC, that going after every reseller, no matter how insignificant, is a way to make a fast buck. Don’t be intimidated!

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A few weeks ago, we posted an article about the use of trademarks in films. One filmmaker actually contacted the Philip Morris company, seeking permission to use the MARLBORO trademark in his film. It was on a large sign inside a convenience store, where a scene was occurring.

Philip Morris wrote him that the use of their trademark is protected under the doctrine of “fair use.” They also went on to explain a class action lawsuit that was settled in 1998 regarding use of their trademark in media. Take a look at the article here at the Nolo Blog.

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On December 30, 2010, the New York Times reported that New York city ordinance was struck down, which would have forced retailers to post graphic pictures of diseased lungs, brains and teeth in shops to discourage the purchasing of tobacco products. This was referred to as the “Anti-Smoking Poster Law” and would have applied to all small kiosks and convenience stores. As many of you undoubtedly know, these types of stores are heavily populated by teenagers i.e. young smokers.

The Judge hearing the case wrote that while the law was well intentioned, it violated federal law.

In 1965 a federal law called the Labeling Act was enacted, which gave the federal government exclusive authority over cigarette warnings.

In his ruling, Judge Rakoff pointed out that the Labeling Act also contained a provision forbidding any state
laws from conflicting with the federal government’s policies on cigarette warnings and advertisements. That, he concluded, makes the city’s poster policy illegal.

Hopefully, another angle can be found, making it completely legal to allow this cool law. Why should Australia beat us in curbing cigarette smoking? Why should they be the only ones publicizing the nasty effects of cigarettes? Don’t YOU want to see graphic images of rotting teeth and lungs?

Please submit any related story. We obviously are fond of this topic as we are vigilant anti-smokers.

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In July, we posted an article announcing the upcoming Australian ban on trademarks on tobacco products.  As you readers may recall, the ban will begin in July 2012.

For the last five years,  health warnings on tobacco products have been mandatory. The change that will occur starting in July 2012, will be that tobacco packages must be generic. That means no trademarks allowed on any tobacco product! All names of cigarettes will appear identical, in a standard font and size. Australia is doing this to reduce tobacco consumption. They say doing so will generate money that can be “plowed into the health system.” (NY Times.com)

The action was praised by the World Health Organization, which called the law “a new gold standard for the regulation of tobacco products.” Wake Forest IP Journal

Of course, not everyone is happy about these changes.  Tobacco companies, for one. They argue that the new rules will encourage counterfeiting, and will make it difficult for consumers to recognize brands they trust. We can expect tobacco companies to fight these measures, claiming their Intellectual Property rights are being “damaged.” (Of course, it is all in the name of saving lives. How can they complain?)

And the fighting has already begun. World tobacco giant British American Tobacco recently accused Australian importer Trojan, of trademark infringement when it’s Captain Black cigar packages were covered with ugly graphic photos of decaying lung tissue and the words “lung cancer” were stamped across the front of the picture.  (see picture above). But would YOU buy a product with such a clear and graphic warning? We think this strategy could work and effectively reduce smoking.

We applaud the government Australia on this remarkable and brave position.

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Network World reports that after a lengthy legal battle, Trek 2000 International successfully obtained trademark protection for its THUMBDRIVE trademark from the United States Patent and Trademark Office recently. The US Trial and Appeal Board ruled that THUMBDRIVE is not a generic term.

This is bad news for several publications PCWorld, CNET, PCMag.com just to name a few. These and others have been using (abusing) the THUMB DRIVE trademark recently. They will now have to switch to using the generic term USB flash drive, or risk a legal battle.

Under US Trademark Law, governed by The Lanham Act,  generic terms are not trademarkable. There are severaltrademarks that have become generic, and as a result, have lost their trademark value. Some well known ones are xerox, aspirin, and escalator.  In order to prevent a trademark from becoming generic, the mark needs to be strictly enforced. That means, money for a good legal team. Everyone needs to be out there, watching the market for ways that particular trademark is being used or misused by unauthorized parties.

Trek 2000 International obviously spent a bundle. Their law firm,  White and Case is a top tier law firm with multiple offices. They got a big win here.

The mark THUMB DRIVE was applied for in 2000 and was turned down for the mark being generic. But the Board was obviously convinced that the term is not generic because of the follwing issues:

1) other companies are marketing their own flash drives using different names, i.e. not THUMB DRIVE.”

demonstrating they were serious in their enforcement of the trademark, and 3) When remarking that the typical 2) Trek 2000 had successfully stopped some media outlets from using the THUMB DRIVE term. This helped them in person would consider THUMB DRIVE generic, the board reasoned that that is not the standard. In effect, they explained that the source of the “generic” rule is not the English language, but rather, commerce.

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For those of you filmmakers, or filmmaker wannabes, you already know that this issue comes up a lot. The question being, “can I use trademarks in my film?”

By “trademarks in your film” we are referring to actual products, as they appear in the film. These often appear as part of the scenery, i.e. items on the shelf of a grocery store; billboards on the sides of buildings, etc.

If these items clearly depict their trademarks, the owner of the film could risk having a legal battle on his hands with the trademark owners. One way to avoid this is to do what NBC does, namely, only use fake products.

You may recall that on many episodes of Seinfeld, Jerry and the gang were drinking sodas, and the name of thesoda was unrecognizable. Currently, on NBC’s 30Rock, Liz Lemon, the main character, is often featured eating a puffed cheese snack food. It is not a real snack food. It is not “Cheetos” or “Cheese Doodles” or “Herr’s” or any real brand. It is a made-up brand. (NBC is very careful when it comes to trademarks. As we reported in a previous story, NBC kept the trademarks from Conan O’Brien’s skits when he left Late Night.)

Note, as a general rule, there is nothing wrong with including trademarks in a documentary or fictional film. Itis a case of “free speech” vs. “trademark” rights. However, who wants to duke it out in court? It is expensiveand risky. After spending all that time and money on a film, the risk of having to re-do it becomes very real when up against savvy intellectual property lawyers. And what independant filmmaker wants to foot the bill for his defense?

Better to play it safe and do what NBC does – make up your own marks. That way, if your film becomes a hit, you won’t run into trouble.

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TTABlog.com Reports that the mark BIG EFFIN GARAGE and BIG F’N GARAGE were both refused by the Trademark Examiner as being scandalous. On appeal, they have been allowed. The big issue here, obviously, is the word EFFIN or F’N. We all know what it means. (Don’t we?)

So, are these two words allowed? And if so, is the real word, “fucking” allowed?

Under Trademark Law, more precisely, the Lanham Act, Section 2(a), in order to prove that a mark is scandalous or immoral, the burden is to prove that it is vulgar. In this case, both Urban Dictionary and Dictionary.com were used by the applicant and by the examining attorney; by the Applicant to show that the terms EFFIN and F’N are polite substitutions for the forbidden word “fucking”, and by the Examiner, to show that the words EFFIN and F’N are vulgar in themselves.

Well, the Board was not convinced that EFFIN and F’N are in themselves vulgar terms, and the trademarks have been approved. The Board held that  “these derivative terms are utilized as a substitute precisely because they are less offensive, and may be used in conversation, in television, and on internet message boards.”

Interesting. How “low” are they willing to go?

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Consumerist reports that Dairy Queen, Inc. has taken Yogubliz, Inc. to court over the BLIZZARD trademark, which is Dairy Queen’s most popular item, consisting of a mix of soft serve ice cream, candy and cookie pieces, and other dessert toppings.

Yogubliz, a California frozen yogurt chain, features frozen yogurt beverages called BLIZZBERRY and BLIZZ FROZEN YOGURT PRODUCTS,  a frozen dessert similar to the BLIZZARD, except made from frozen yogurt instead of ice cream.
Dairy Queen asserts that the BLIZZBERY and BLIZZ are so close to BLIZZARD, that they constitute trademark infringement. They worry (and rightly so) that the confusion could worsen if Yogubliz expands beyond California and Nevada.

Dairy Queen’s lawyer said: “It is more than reasonable to conclude that when Yogubliz chose a term whose only significance is a shortened form of Blizzard, Yogubliz did so with every intention of trading on the fame and goodwill of Dairy Queen’s mark.”

A hearing is scheduled for August 23rd. We will stay tuned….

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NameWire reports that in July 2012, cigarette companies will have to use “plain, logo-free packaging on their cigarettes in a bid to make them less attractive to smokers.”

In place of attractive lettering and designs will be health warnings. The cigarette company brand name will appear at the bottom of the package, in small plain font. This is all the Australian government’s way of reducing cigarette consumption.

Science Direct’s, Daniella Germain writes:

“When brand elements such as color, branded fonts, and imagery were progressively removed from cigarette packs, adolescents perceived packs to be less appealing, rated attributes of a typical smoker of the pack less positively, and had more negative expectations of cigarette taste. Pack appeal was reduced even further when the size of the pictorial health warning on the most plain pack was increased from 30% to 80% of the pack face, with this effect apparent among susceptible nonsmokers, experimenters, and established smokers.”

The World Health Organization wants the rest of the world to follow Australia’s lead. What will that mean for Tobacco Companies in the US? We’ll have to wait and see.

Our hats are off to Australia for this progressive health move!

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