Microsoft’s Name Game.

So how much is a trademark worth?  A lot if you are on the loosing side of a trademark battle.

After loosing a trademark battle earlier this year to Sky Broadcasting (BSkyB) in the England and W ales High Court, Microsoft agreed to stop using the SkyDrive brand for its cloud-based storage service.


The companies agreed that Microsoft could use the name for “a reasonable time” after the decision was handed down four months ago.

So what will be the new name of Microsoft’s product?  No one knows for certain, but hopefully the company performs more due diligence is selecting a name that will not land them in another trademark battle here or abroad.

This just points out how important a clearance search for a trademark is prior to filing the application.  Although the name was registered in the United States without any opposition, it apparently was not cleared for international conflicts.

If you intend to take your brand global, it is important to identify your target markets and plan your brand accordingly.  Issues often arise during the translation of a seemingly innocuous mark into a foreign language where it suddenly becomes offensive.

For instance, German makers of knapsacks refer to them as “Body Bags,” or when GE used the mark GPT for GEC-Plessey Telecommunications, the French pronunciation is  “J’ai pété” or “I’ve farted”.

So be sure to have your mark cleared for the markets you want to brand your product(s), otherwise, you may be making a costly mistake.

How Can I Help?

If you, or someone you know, need any help with Intellectual Property issues, from filing a patent, trademark or copyright, or just need advice regarding how best to protect your inventions, ideas or your brand, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

#1 Again!

I am proud to announce that for the fourth year in a row, my firm, Sheldon Mak & Anderson, has received a national Tier 1 ranking in the 2014 Edition of U.S. News – Best Lawyers “Best Law Firms.” The firm was recognized for outstanding work in Trademark Law.  The rankings, presented in tiers, showcase more than 10,000 law firms ranked nationally or by metropolitan region.

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Sheldon Mak & Anderson is honored to receive the following national rankings:

NATIONAL TIER 1

Trademark Law

NATIONAL TIER 2

Litigation – Intellectual Property

Patent Law

NATIONAL TIER 3

Litigation – Patent

In addition to national recognition, Sheldon Mak & Anderson also garnered four metropolitan Tier 1 rankings for Los Angeles in the following practice areas:

METROPOLITAN TIER 1

Litigation – Intellectual Property

Litigation – Patent

Patent Law

Trademark Law

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Sheldon Mak & Anderson is proud to share this honor with all of its attorneys. Achieving a high ranking is a special distinction that signals a unique combination of excellence and breadth of legal expertise.

The “Best Law Firms” rankings are based on a rigorous evaluation process that includes the collection of client and lawyer evaluations, peer review from leading attorneys in their field, and review of additional information provided by law firms as part of the formal submission process. Because firms are not required or allowed to pay a fee to be listed, the U.S. News – Best Lawyers ranking is one of the most respected in the legal community.

The national first-tier rankings will be featured in a special Legal edition of U.S. News & World Report, out on newsstands later this month. The national and metropolitan first-tier rankings are featured in the “Best Law Firms” standalone publication. The rankings in their entirety are posted online at http://bestlawfirms.usnews.com.

How Can I Help?

If you, or someone you know, need any help with Intellectual Property issues, from filing a patent, trademark or copyright, or just need advice regarding how best to protect your inventions, ideas or your brand, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

Facebook Trademark Dispute Over “Timelines” Headed to Trial.

A trademark lawsuit over Facebook Inc.’s “timeline” feature is likely headed to trial. The social company media company faces infringement and unfair competition claims filed by Timelines Inc., which hold the trademark registration for “Timelines” and “Timelines.com.”

Timelines, Inc. filed the trademark infringement suit shortly after Facebook unveiled the new feature in 2011. Its website allows users to record and share historic events. Meanwhile, the Facebook feature with the same name allows users to organize their milestones shared on the site chronologically.

Facebook subsequently attempted to quash the suit by seeking cancellation of Timelines’ registered marks. “The term ‘timelines’ is merely descriptive of, or generic for, the services offered by plaintiff and thus plaintiff’s trademark registrations are unenforceable and subject to cancellation,” Facebook argued.

“Given the generic or at least merely descriptive nature of the term ‘timeline’ when used to identify chronologies of events and related information (or tools for their creation), as well as the prior and widespread use of the term by third parties, counterdefendant does not own exclusive rights in the term ‘timelines,'” the counterclaim further alleged.

However, a federal judge recently refused to dismiss the lawsuit and ordered it to trial later this month. Facebook “has failed to demonstrate, as a matter of law, that the marks are generic,” U.S. District Judge John W. Darrah wrote. “At this stage in the proceedings, it is not unreasonable to conclude that as to this group of users, ‘timeline(s)’ has acquired a specific meaning associated with plaintiff.”

I will continue to follow the case and provide updates as they become available.

How Can I Help?

If you, or someone you know, need any help with Intellectual Property issues, from filing a patent, trademark or copyright, or just need advice regarding how best to protect your inventions, ideas or your brand, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

Is “Ungoogleable” a Word?

Google fiercely guards how its trademark is used. So, it isn’t surprising that the company recently asked the Swedish Language Council to remove the word “ogooglebar” from its list of new words for 2012. The term translates to “ungoogleable” in English and is defined as “something that cannot be found with any search engine.”

As Google seems to be acutely aware, and so should you, a trademark owner can lose its federal registration if the mark loses its distinctiveness and becomes synonymous with a generic product or service. For instance, the Otis Elevator Company lost its trademark registration for “elevator” after the term become generic. Zipper, originally a trademark of B.F. Goodrich, suffered a similar fate along with aspirin.

To maintain the distinctiveness of its mark, Google also discourages the use of the term “googling” in reference to web searches. In a 2006 blog post, the company wrote: “While we’re pleased that so many people think of us when they think of searching the web, let’s face it, we do have a brand to protect, so we’d like to make clear that you should please only use ‘Google’ when you’re actually referring to Google Inc. and our services.”

Google’s response to the Swedish Language Council is a similar attempt to protect its brand. In its letter, Google specifically requested changes to the definition of “ogooglebar” and a disclaimer highlighting that Google is a registered trademark. The Swedish Language Council ultimately decided to remove the word altogether.

How Can I Help?

As this situation shows, simply registering a trademark is not enough to protect a brand. During the life of the mark, companies must often take further actions to enforce and protect their rights.  If you, or someone you know, need any help with Intellectual Property issues, from filing a patent, trademark or copyright, or just need advice regarding how best to protect your inventions, ideas or your brand, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

How A Trademark Search Can Save You Money.

The Kardashian family has built a business empire out of its reality television fame. However, its latest business venture was doomed by a $10 million trademark infringement lawsuit.


Khroma Beauty, the name chosen for the Kardashian’s new cosmetic line, faced a preliminary injunction that halted all product sales while the trademark infringement lawsuit was resolved.

The plaintiff in the case, Kroma Makeup, is actually the second cosmetics company to file suit against Boldface Licensing + Branding, which licenses the Kardashians’ names and likenesses.

In this trademark infringement lawsuit, By Lee Tillett, Inc. alleges that the Khroma Beauty product launch has caused and will cause substantial consumer confusion with its federally registered KROMA mark for cosmetics.

In granting a request for preliminary injunction,  U.S. District Court Judge Audrey Collins agreed. She concluded that the marks both “sound identical” and “appear nearly identical.” She further noted that the “parties both sell cosmetics, and in fact, some of their products are identical, such as blush, compacts, gloss, lip kits, foundation, eye shadow, and bronzer.”

Given the likelihood of both infringement and irreparable harm, the court approved the injunction. “Tillett has demonstrated that it will likely lose business opportunities, customers, and goodwill due to Boldface’s use of the confusingly similar Khroma Beauty marks,” the judge held. “This Court has little doubt that, in short order, the Khroma Beauty products will likely eliminate Tillett’s business entirely, creating irreparable harm to justify an injunction.”

So now Khroma Beauty, the Kardashians’ makeup line, has changed its name to Kardashian Beauty.

The amount of time and money  spent wrangling through the court system was easily avoidable. A trademark search by a qualified trademark attorney would have revealed these problems to the Kardashians’ and perhaps could have avoided eight months of legal fees.

How Can I Help?

Don’t waste your money.  If you, or someone you know, need any help to protect your brand, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

Federal Legislation To End Redskins Trademark?

The ongoing controversy about the Washington Redskins football trademark may ultimately be resolved through legislation, rather than the court system.

A bill currently pending in the U.S. House would cancel the “Redskin” trademark registration.


The legislation, introduced by Del. Eni Faleomavaega, D-American Samoa, would call for the cancellation of all federal registrations of trademarks that use the term “redskin” in reference to Native Americans.

In addition, it would ban the registration of future trademarks that use the term. The bill has co-sponsors from both parties.

At the same time, the Trademark Trial and Appeal Board for the U.S. Patent and Trademark Office (TTAB) is considering a case also claiming that the trademark is offensive to Native Americans. The suit is grounded in the Trademark Act’s prohibitions against the registration of trademarks that are immoral, scandalous, or generally offensives to a relevant segment of the population.

The case was originally filed in 1992 and resulted in the cancellation of the Washington Redskins’ trademarks. However, the United States District Court for the District of Columbia overturned the decision, in large part because the plaintiffs waited too long to file their challenge.

This is probably the most famous “offensive” trademark that was registered.  Normally, the USPTO is required by law not to register certain types of marks.  Section 2(a) of the Trademark Act, 15 U.S.C. 1052(a), is an absolute bar to the registration of immoral or scandalous matter on either the Principal Register or the Supplemental Register.

Basically, this is a judgement call that can be overcome for some marks, but not for others.  In this case the Washington Redskins have won their days in court, hence the reason for the proposed legislation.

How Can I Help?

If you, or someone you know, are facing the cancellation or your valuable trademark, or  need any help with Intellectual Property issues, from filing a patent, trademark or copyright, or just need advice regarding how best to protect your inventions, ideas or your brand, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman