A Legal Blog by Aaron | Sanders, PLLC


Honey Catches Flies and Hackers, But Not A Trademark Registration

In honor of Valentine’s Day, the Trademark Trial and Appeal Board has offered us honey. You know, that stuff with which you catch more flies.

The lines between descriptive and suggestive marks has never been easy to define.  Bitvoyant, a Virginia-based software company, found that out this week.  Bitvoyant applied to register the mark HONEYFILE in connection with the following:
Computer software platforms for use in the field of computer network security that assist in the tracking of data exfiltration and network intelligence in Class 9; and

Computer security consultancy; Computer security service, namely, restricting access to and by computer networks to and of undesired web sites, media and individuals and facilities; Computer security services, namely, enforcing, restricting and controlling access privileges of users of computing resources for cloud, mobile or network resources based on assigned credentials; Computer virus protection services; Design and development of electronic data security systems; Platform as a service (PAAS) featuring computer software platforms for use in the field of computer network security that assist in the tracking of data exfiltration and network intellegence in Class 42.
The Examining Attorney found the mark descriptive, based on evidence that the cybersecurity industry used the term to denote files that would…

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Catch Downtown Fever! Why Trademark Ownership Disputes Are the Worst

Who Owns the Jelly Nailed to the Wall?

There are few legal holy messes like a dispute over trademark ownership. Sure, copyright and patent ownership disputes can be messy, but nothing like trademark ownership. And, sure, copyright ownership can be tricky, but it’s a walk in the park compared to trademark ownership. Here are some reasons why:

There can normally be only one owner of a trademark for a given set of products in a given market. Why? That’s because a trademark serves as a link between products and a single source. In contrast, copyrights and patents can have multiple owners.
But there can be multiple legitimate owners of trademarks for the same or similar products, if (a) they are geographically remote from each other AND (b) the later (“junior”) user isn’t on notice about the earlier use (which is often the case). Why? Because the point of a trademark is to prevent confusion, and there’s chance of confusion if different owners are far enough away from each other. Copyrights and patents, by contrast, automatically have national scope.
The owner of a trademark is the one who “actually uses” it for the products in the market. But often many hands are involved in…

WE WANT DOWNTOWN FEVER! WE WANT DOWNTOWN FEVER! (Even if we would have to go to a different club to see them?) By Asroma - Own work, CC BY-SA 3.0, https://commons.wikimedia.org/w/index.php?curid=6746532

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Crying in Your Beer: With Trademarks, Get Clearance Before Falling in Love

Applications to Register a Trademark Can Give Away Your Position

BLACK OPS is a great name for beer. It suggests (and doesn’t merely describe) the beer as dark, secret and elite. It’s as though only you and a select few know about this beer.

The thing about excellent trademarks is that great minds often think alike, and more than one person is likely to independently hit upon the same clever trademark. But, usually, there can only be one—the one used in commerce first. This is known as priority.

There Can Only Be One! (But Where?)

In the old days, it was not unusual for similar trademarks for similar goods to co-exist, provided they were far enough away from each other. But increasing mobility, the development of national markets and distribution systems, the internet and, most of all, federal trademark registration have changed that. Nowadays, it’s actually pretty uncommon for a product’s market to be geographically limited. You can sell nearly any moveable product nationwide, and even services are increasingly available to remote customers.

The way it used to work is like this: Say Xena started selling NOS HABEBIT hummus in Florida in 2000, and Yanni independently started selling NOS HABEBIT hummus in Oregon in…

Plaintiff's BROOKLYN BLACK OPS on the left (only $29.00 a bottle!), Defendant's BLOCK OPS BREWERY on the right.

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Bald Attempt to Use Trademark Law to Silence Criticism Is Defeated

It’s Outrage Week!

I know this is hard on the heels of my take on an outrageous attempt to leverage a dicey trademark registration into some settlement money, but at least there, you could admire the guy’s chutzpah. What I want to talk about today is willfully ignorant bullying—by government officials.

What is it, exactly, about small-time politicians and their complete inability to handle criticism? (WARNING: the second link was manufactured on machinery that also manufactures satire.)

Defending the Honor of the Murderous Seal

Anyway, Union County, New Jersey, like other counties in the United States, has a nice little seal. Here it is.

Isn’t it precious? I like the colonial-era house and—wait—what’s that? I think that’s a redcoat shooting at someone? That’s not nice. Well, I’m sure there’s an interesting story behind it. Indeed, there is. It depicts the killing of Hannah Caldwell during the Revolutionary War at the hands of a British soldier. At the time, New Jerseyans were wavering about which side to support, and the news of her murder tipped the scales in favor of the Revolution. One suspects a bit of propaganda was involved, but so it goes.

A political activist, Tina Renna, has a local-access program in Union County.…

CountyOfUnionSeal

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I Like Pi: Trademark Registrations for Fun and Profit

SPACE MARINES Repeated as Farce

Remember the SPACE MARINES bogus “trademark” DMCA takedown notice? In that case, a markholder succeeded in temporarily blowing one by a sophisticated technology provider, Amazon. This time, with the Zazzle-π issue, we have a much more cynical version.

Zazzle is a successful print-on-demand online store. Designers upload their designs to Zazzle, and Zazzle makes them available to the general public, splitting the profit with the designer. Among other things, you can order T-shirts with a wide variety of designs on them. And because nerds are like that, there are a lot of T-shirts with some variant of pi (π) on them. I don’t know if you can rich doing this, but designers must make some money from this system, and buyers get to express their mathematical and/or punning nerdiness.

Zazzle then received a rather confusing demand letter from Ronald Millet, Esq.. It’s confusing because he starts of demanding that Zazzle “CEASE AND DESIST ALL COPYRIGHT INFRINGEMENT” (capitalization and bold in original) but then goes on to talk about his client’s amazing trademark registration.* The letter isn’t very specific, saying only that his client has noticed Zazzle’s use of “the mathematical symbol ‘pi,’ … in association with the…

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