Latest News Articles from UKTrademarkRegistration.co.uk

Should TWEETY PIE Claim Prior TWEET Rights?

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Global fame means maintaining a global ‘police watch’ on use of your trademark registrations, which for Twitter Inc, is a major task.

Twitter Inc has succeeded in securing a trademark registration in the UK for TWITTER, TWEET and RETWEET, but has had to oppose quite a few conflicting applications in the UK.

In a district court in San Francisco, Twitter is having to oppose a trademark registration (LET YOUR AD MEET TWEETS) belonging to Twittad that threatens to block Twitter from registering TWEET as its own legitimate" mark.

Twittad is a company that offers online advertising services specifically for use on Twitter and in connection with Twitter's services.

Twitter Inc considers that Twittad's trademark registration should be cancelled because it was registered for purposes the company does not use it for and because it exploits the popularity of Twitter. According to Twitter Inc, such use constitutes trademark infringement given Twitter's prior use and widespread consumer recognition of the TWEET mark and use of the trademark LET YOUR AD MEET TWEETS to identify Twittad’s services would be likely to cause consumer confusion. Under US trademark law, trademarks should not generally be issued if another mark exists and is therefore likely to cause confusion, mistake, or deception.

Twitter said that it had made a considerable investment in the word "tweet" and had filed an application to trademark it to protect the investment and "goodwill" associated with the word. It has certainly done so in the European Union. At least, Twitter has secured enough trademark registration muscle to prevent and argument that the word Tweet has become generic although policiing those rights on a global basis will be a constant struggle for the company. Even in Europe, whilst many twitter-related trademarks have successfully been opposed or withdrawn, there have been a number of successful registrations such as TWEETABILITY and CARTWEET, for advertsing and related services.

Twitter’s position is that prior to the launch of its social networking platform, TWEET was only associated with "birdsong" but that it had become "widely adopted by consumers and media outlets to refer to Twitter" since.

All of this rather overlooks the fact that Tweety Pie was the first real tweeter.

Methinks maybe Tweety Pie has prior rights!

Expelliamus Trademark Registratum! Harry Potter's Trademark Registration Spell

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Expelliamus Trademark Registratum!

Ahead of the opening of the 'Making of Harry Potter' theme studio attraction in scheduled for Spring 2012, Warner Brothers has gone trademark mad, recently filing EU Community Trade Mark applications for THE MAKING OF HARRY POTTER in no less than 19 Classes of the OHIM Trade Mark Register in addition to a suite of other familiar characters including:

HERMIONE GRAINGER
RAVENCLAW
SLYTHERIN
HUFFLEPUFF
MARAUDERS MAP
NEVILLE LONGBOTTOM
HOGWARTS EXPRESS
HONEYDUKES

In 2010, Warner Bros. purchased Leavesden Studios in Hertfordshire, England, which is the place where all of the 'Harry Potter' films were produced. It is located about 20 miles outside of London. According to the attraction's website, the Making of Harry Potter studio tour will last three hours, and allow us Muggles to see actual sets from the series, including the Great Hall and Dumbledore's office. The Great Hall set will come to life as fans get to see its solid stone floor and the same tables and benches that the wizards-in-training used in the first film, 'Harry Potter and the Sorcerer's Stone.' Dumbledore's office will be another treat on the tour, offering Potterheads a chance to see the Sorting Hat and the Sword of Gryffindor, as well as paintings from the films.

Nothing like the power of a brand.........provided it is protected by trademark registration.

Tickets go on sale later this year .

Trademark Registration - THE SUN ON SUNDAY - Possible Conflict Ahead

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Trademark Registration: THE SUN ON SUNDAY - Possible Conflict with News International

As the sun sets on The News of the World, speculation is rife that News International will orchestrate a new dawn for a new title aimed at exploiting the seeming inexhaustable appetite of the great British public for a sensational Sunday read.

It has been noted that a South London media agency, two days before the announcement of the demise of The News of The World, registered the domains www.thesunonsunday.co.uk and www.sunonsunday.co.uk. Coincidence? You be the judge.

Meanwhile, no trademark registration exists, nor any trademark application, for THE SUN ON SUNDAY in Class 16 for newspapers.

News International, should they launch a new title under the name THE SUN ON SUNDAY, could face a challenge from Newcastle Chronicle & Journal Limited whose trademark registration in Class 16 for SUNDAY SUN has a pedigree going back almost 30 years.

Should be a good fight.

Meanwhile, the technicalities of trademark registration are of little comfort to the employees of The News of The World who are facing not only the sack but a potentially blighted journalistic career given the moral turmoil of that has given rise to the demise of the title.....apparently.

London Law Firm, Silverman Sherliker has launched a News of the World Employees Action Group to provide legal support and advice to the erstwhile News of the World employees who are struggling to come to terms with the sensational news...of which they are, ironically. now themselves the primary subject .

London Law Firm Publishes The Trademark Registration Checklist

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A quick Trademark Registration 'Boot-Camp' that aims to explain the legal and commercial benefits of trademark registration and what every business should know about how to protect the legal rights in their business name....

1. Exclusivity: The One and Only…

Trademark registration will confirm your legal ownership of the name or brand and enable you to stop others using your name for the same, or similar, goods or services. A successful trademark application will mean that you quickly become the only business that can use the name in your sector. This cannot be achieved by domain name registration or by company name registration. Any name you adopt should be legally available, satisfy the criteria for trademark registration and should be registered as a registered trademark without delay. Trademark registration will ensure that you have the exclusive right to use your particular name or brand in your product or service sector in the geographic market for which you have obtained registered rights.

2. Stay Safe: Avoid Infringement Claims

A successful trademark registration demonstrates conclusively that your name is deemed to be legally available in your market sector and does not belong to anyone else. It generally means that pre-registration searches showed your name to be free for use and registration and that no one else was able successfully to oppose your application. Once you have obtained a trademark registration, the risk that your use of the trademark will infringe the trademark rights of anyone else is vastly reduced. The converse is also true. If you steam ahead and adopt a trademark without checking if it is available, and protecting it by trademark registration, you are running a very high risk that you will sue for trademark infringement by the owner of the mark. This ultimately means court action against you to restrain your use of the brand, and award of damages, confiscation and destruction of infringing stock and heavy legal costs.

3. Protect Goodwill and Reputation

A strong and memorable brand that is protected by trademark registration is the surest legal foundation on which to build the reputation and goodwill of any business. A business that soldiers on without the benefit of a registered trademark is missing out on a huge commercial opportunity. Strong registered brands (Mercedes, Google, Amazon, iPad, The London Eye etc) quickly pass into the collective consciousness of the world consumer market and become synonymous with quality, consistency and reliability.

4. Get Noticed: Differentiate Your Business

The main purpose of a trademark is to denote the origin of the products or services to which the trademark is attached. The trademark becomes a badge of origin and quality. In short, the consumer knows where it came from and what to expect. So every business has an equal opportunity to adopt a distinctive brand that it alone owns and protecting it by trademark registration. This enables the business to differentiate itself from every other business in the same market sector. It makes no sense to adopt a name that is already in use, or is similar to an existing name, since this will not serve to differentiate your business from the competition. Your brand should be strong, memorable and unique and, for this reason, invented or quirky words tend to be best.

5. First is Best: Avoid Pre-emptive Registration

Once you have identified a legally available name that you want to adopt for your business you need to bang in a trademark application without any delay. If you do not do so, someone else may file an application before you and you will lose the opportunity to own the name exclusively. This may be because someone else has seen your name in print or, for example, at a trade-show, and thinks it is a good name that they would like to use. It may simply be an honest, concurrent application. Whether it is coincidental or intentional, the first application will usually take precedence. To avoid a pre-emptive application act fast and do not invest in any name until you know that you have successfully protected it by trademark registration.

6. Anti-Sabotage Measure: Competitors

If you fail to protect your name by trademark registration, you lay yourself wide open to attack by competitors you want to close you out of the market by filing an application to register your name and then alleging that your continued use of the mark constitutes trademark infringement. If a competitor gets a trademark registration for your name, or a very similar name, you may have to stop using your brand and could effectively lose your business overnight. It may be possible for you to seek a revocation of the competitor’s mark on the basis that you used it first or perhaps that the competitor is acting in bad faith but this is likely to cost you a very substantial amount in terms of legal costs and you may fall short on proof. Sometimes an oversea competitor will seek to register your trademark in national markets where you have not protected you name for the same products(eg by filing an EU or Community Trade Mark for all of the EU Member States) with the intention of preventing you from expanding into those markets or selling your products in those countries without rebranding your products for those markets.

7. Anti-Retaliation: Employees, Suppliers, Developers

Given that anyone can file an application to register a trademark if they have a genuine intention to use it, you can see that it is very easy for an aggrieved supplier or ex-employee, or anyone else who has a grudge against you, or your business, to retaliate by getting a trademark registration for your name if you yourself have neglected to protect it. This can cause you a major headache. It is quite common for developers or joint venture partners to make a pre-emptive, retaliatory application for trademark registration of the business name in order to give themselves a negotiating platform in the settlement of a wider, ongoing dispute. Prompt trademark registration in the first place closes off this avenue of attack and ensures that your business cannot be held hostage over the ownership of its own name.

8. ‘Lock In’ Brand Value

By protecting your business name by trademark registration you are effectively ‘locking in’ your brand value. If you think about it, if you develop your business under a brand that you have not take the trouble to check out and protect, you are taking the very real and inevitable risk that the name you are using is legally owned by someone else. In such a case, all of your hard work and advertising spend under that name is actually simply building up the goodwill and reputation of a business that is owned by someone else. When you are obliged to stop using the name you will lose any brand value that you may have acquired and will have to start again with a new name. Lock in the brand value of your business by trademark registration.

9. Defeat the ‘Copy-Cats’

If you are successful, often competitors will try and copy your name and business model. They may, for instance, try and adopt a variant of your url. If you have protected your name by trademark registration, any copying of the domain name in this manner will probably amount to a trademark infringement and you will be able to stop them. Also, it is possible to protect, not just word marks, but also strap-lines, graphics, shapes and colours by trademark registration, so it is often possible to get a degree of exclusivity for the ‘look-and-feel’ of your business in this way, which also makes it much harder for competitors to copy your business idea effectively.

10. Assure Investors

Given the fundamental importance for any business of exclusive ownership of its brands and trademarks, potential investors often, quite rightly, require the business to demonstrate such ownership as a condition of making the investment. The most conclusive demonstration of ownership is a trademark registration certificate. Conversely, a conflict over name ownership is quite often a reason why investors do not proceed. Quite simply, they are not interested in buying into a legal dispute over the ownership of one of the main assets of the business.

11. Due Diligence: Satisfy Buyers

If you are planning to sell your business at any time, you will need to protect all of your names, marks and brands by trademark registration. Any prospective buyer will want to know that you have all of these rights under ownership and that there are no third parties using same name, which would obviously dilute the strength of the brand, or worse, actively seeking to prevent you from continuing to use your name. Since the value of the goodwill of your business is inextricably linked to the ownership of its trading name, failure to obtain a trademark registration can not only mean that you will not get the price you expect for your business, but, in difficult cases, your business may simply become unsaleable because of uncertainty or legal conflict over your right to use your current business or product name.

12. Support Expansion: Franchising, Licences, Agents

A strong brand protected by trademark registration is a sure footing on which to develop a business by way or franchise, licence or agency. A franchise is, in effect, nothing more than a glorified trademark licence and the very least that any franchisee will expect is the unfettered right to use the franchise name. The commercial benefit of being part of an umbrella brand is, after all, one of the main reasons that people invest in a franchise. A registered trademark can be licensed for a royalty. Any agency or distributorship network will want the comfort of knowing that you have the sole and exclusive legal right to use your product names and the only way this can be obtained conclusively is by way of trademark registration.

13. Company Registration: Control Company Name

Registration of your business name at Companies House, or any national company registration office, gives almost no name security or name ownership rights. In fact, at least in the United Kingdom, it simply means that no one can incorporate company under exactly the same name. Very similar names will often be accepted for registration. However, you protect your business name as a registered trademark, this will prevent any other company from incorporating your name into the name of their company the same products or services in which you trade. In the UK, if someone registers a company name that is the same as was similar to a trademark that you have protected by way of trademark registration, you can object to the Company Names Adjudicator and obliged the company to change its name to a different name.

14. Domains: Avoid Over-reliance on a URL

Whilst it is often difficult to register a descriptive URL as a registered trademark, there is no reason why a name that you have protected by web trademark registration cannot be incorporated into the domain name for your business. Anyone who tries to adopt the same or a similar domain name for similar products or services will then be infringing your registered trademark rights. Trademark registration therefore gives you a degree of control over your domain names and enables you to police similar URL registrations successfully.

15. First Mover Advantage: Protecting The ‘Good Idea’

It is frequently the case that a good business idea cannot be protected legally in the sense that it is not possible to stop other businesses copying the idea as soon as it is launched. Provided the imitators do not infringe any copyright or patent rights they can usually replicate the idea. However, if you are first to market with your idea, you can secure first mover advantage by branding your idea with a strong and individual trademark that is protected by trademark registration. Often the idea itself becomes referred to in common parlance by the trademark itself and, whilst this is questionable from a strictly legal viewpoint, it is certainly a major commercial advantage and is a great help in securing and maintaining market share in the face of copycat competitors.

16. International Roll-Out: Secure Priority Dates

The filing of a trademark application secures a priority date for the future protection of the trademark. This means that if the business succeeds and it becomes necessary to protect the name by trademark registration more extensively in further jurisdictions, trademark applications can be filed in those jurisdictions within the applicable priority period (usually six months from first application) whilst still maintaining the benefit of the original filing date. This means that the protection afforded by any further trademark registration filed during the priority period will backdate to the date of the first trademark application and anyone that has used the trademark in the meanwhile will have been infringing the further trademark registration.

17. Cost-Proofing: Prevent Future Costs

Protecting the main business names by way of trademark registration is a relatively inexpensive process that effectively cost-proofs the business against the potentially very substantial costs of dealing with an alleged or actual trademark infringement. The costs that can be avoided in this way include not only your own legal costs, but liability to pay the legal costs of the aggrieved trademark owner, substantial compensation by way of damages, the loss of all infringing stock and, finally, the costs of carrying out a complete rebrand of the business (including all websites, facias, advertising and other printed material) and protecting the new brand by way of trademark registration.

18. Simplicity: Avoid Legal Complication

There is a satisfying simplicity to being able to hold a trademark registration certificate and wave it in the general direction of anyone who tries to use your name. That is usually sufficient to prevent infringement. In the absence of trademark registration is much harder and much more expensive to enforce common law trademark rights or sustain a case breach of copyright. The burden of proof involved in bringing such cases is substantial and the legal position in relation to her actions for passing off and copyright infringement is always complex. In the case of passing off it is necessary to prove substantial reputation, confusion in the marketplace and consequential financial loss. Legally, this places a huge burden on any business that can be avoided by trademark registration.

19. Logo Rights: Protect Graphics, Logos and Designs

It is possible to include in any trademark registration program not only the actual name of the business but also any logos, graphics or designs used in the business in relation to its products or services. In the absence of trademark protection, it is necessary to fall back on actions based on copyright and these are notoriously difficult to bring.

and so to bed.......

20. To Sleep at Night

The best reason for protecting your business by way of trademark registration!

APP STORE: Too Generic for Trademark Registration?

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Despite a recent California District Court ruling casting a pall over the validity of Apple’s APP STORE trade mark, the computer giant continues to take steps to stop others from using the trade mark.

This week the court ruled against Apple’s motion for a preliminary injunction which would have prevented Amazon from using the mark APP STORE to designate its own online store for Google Android-compatible applications.

The presiding judge, Phyllis Hamilton, predicted that Apple is unlikely to succeed in its case because it lacks “real evidence of actual confusion” between the trade marks.

Amazon had also argued that the term, APP STORE, is generic, cannot function as a trademark and should not be accorded the benefit of trademark registration. If the court ultimately accepts Amazon’s argument on the generic nature of the APP STORE mark, Apple will most likely lose its trade mark, which has not even been cleared for registration.

Despite these setbacks, Apple has continued to threaten others against using APP STORE and similar terms. Last week, open source software startup, Amahi, received a letter from Apple demanding they cease to use term, APP STORE, on their website.

Apple appears to be fighting on several fronts here. Microsoft, Apple’s major competitor for computer operating systems, is leading the opposition against Apple’s trademark registration for its APP STORE mark at the United States Patent and Trademark Office. Notably, Microsoft also develops and distributes a competing mobile OS – though its application distribution hub is called the Windows Phone Marketplace. Competitive brinksmanship aside, it is hardly surprising that the world’s largest software vendor should like to keep the word “APP” in the public domain. For the past few years (an eon in the tech world), Amazon has been Apple’s main rival in digital content distribution, establishing successful services for the delivery of songs, movies and books. More recently, Amazon has emerged as a player in the hardware market, with its Kindle e-reader competing (at least indirectly) with tablets like Apple’s iPad.

Apple’s motives for targeting a smaller company like Amahi are likely different. It seems that Apple may be trying to show that it is policing the “mark” against ‘genericide’ – the process by which a once-distinctive mark becomes part of common parlance and ceases to distinguish the goods of a particular undertaking.

Apple may be simply be issuing such warnings to help in its battle to keep the APP STORE trade mark alive and kicking.

New ICANN Domains and Trademark Registration

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New ICANN Domains and Trademark Registration

The Generic Top Level Domain is about to become much more specific 'right of the dot' ...Instead of .co.uk, .com and .org, ...think .anything you like!

The ICANN decision yesterday to permit any name, brand or text 'right of the dot' as from next year is focussing world attention on the absolute need of companies to protect their main brands by trademark registration which is the only way trademark owners be able to prevail over the potential loss of their marks to registrants of new domains.

This means that domain addresses will begin to operate much more in the nature of brands themselves.

Trademark owners should now be reviewing the scope of their existing registrations and making sure that they are sufficiently broadly registered to prevent them being incorporated into the new-style domains without necessarily infringing their current trademark registration.

Trademark owners will need to police their registered trademarks much more agressively and much more widely in order to ensure that their trademark registrations are not diluted or, worse still, potentially hi-jacked by registrants of creative new domains.

Indeed, it has been suggested that trademark owners may think about applying to set up their own domain name registries in an effort to retain control of their marks even though the entry cost for so doing will be USD185,000 with ongoing fees of at least USD25,000 per annum.

Another threat to holders of brands already protected by trademark registration, is ICANN's determined policy that the right to obtain a domain during the sunrise period will be limited only to trademarks that are in actual use. At the ICANN meeting yesterday the debate on this point apparently raged for over an hour with ICANN not moving from their position that trademarks must be in use to be granted the right to early and exclusive registration during a sunrise
period.

This policy reinforces the importance of international trademark registration at registries like USTPO where proof of use is a pre-requirement of acceptance for registration.

Apple Joins Battle over iBOOK Trademark Registration

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CNET is reporting that a New York book publisher,J.T. Colby and Co. has filed a lawsuit in New York against Apple Inc claiming that Apple's use of the mark iBOOK infringes the claimant's trademark.They claim injunctive relief and damages.

One notes that this is the second trademark infringement case filed against Apple in less than a week. Probably not fortuitous. More the result of Apple's obsession with wanting to dominate the tech market by seeking to monopolise the use of"i"prefix marks. Given the evident strength of this ambition one further expresses the view that it is more than likely that Apple is aware of any potential trademark claim like this long before it materialises if it has done the usual common law and global searches that usually precede the any such trademark registration programme.

The claimant asserts that the iBOOK trademark was acquired in 2006 and 2007 along with various assets of Byron Preiss, who had published more than 1,000 books under the "ibooks" brand starting in 1999.

Whilst Apple has a trademark registration for "iBook" for its Macmaker PC it is alleged that it did not begin to use the term iBOOK to describe electronic books until 2010. Colby alleges that Apple's use of iBOOK' for the electronic library that can be accessed via the iPAD will extinguish the goodwill of plaintiff's 'ibooks' and 'ipicturebooks' marks.

A search of the U.S. Patent and Trademark Office reveals an ibook record for science fiction books was filed in 1999 but listed as abandoned in 2003. Apple apparently filed a trademark registration for iBOOK in 2010 for "software for reading electronic publications on digital electronic devices."

The claim follows last week's lawsuit by Arizona company iCloud Communications, alleging infringement by Apple of its "iCLOUD" trademark registration.

It seems that Apple cannot iMOVE for iLAWSUITS claiming iTRADEMARK infringement.

iWONDER what the next one will be.

iCLOUD Trademark Registration - APPLE Sued ...Again

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iCloud Trademark Registration - Apple sued by iCloud Communications for unfair competition, trademark infringement and injury to business reputation.

iCloud Communications, a Phoenix company that provides telephone services over the internet (Voice over Internet, VoIP), has sued Apple over its iCLOUD trademark registration ambitions in a lawsuit that many suspect Apple will settle out of court.

iCloud is seeking an injunction against Apple to stop it from using the iCloud name and damages for its use so far. iCloud Communications has asked for the destruction of all labels, signs, prints, insignia, letterhead, brochures, business cards, invoices and any other written or recorded material with the iCloud name by Apple.

iCloud argues that Apple uses the brand in a way which is “identical to or closely related” to goods and services offered by iCloud Communications since the latter’s formation in 2005. The company also argued that due to the extensive media coverage given to and generated by, Apple’s announcement of its ‘iCloud’ services and the strong advertising campaign pursued by Apple, the media and the general public associate the mark ‘iCloud’ with Apple, rather than iCloud Communications.

The claimant also suggests that Apple has a long and well known history of knowingly and wilfully treading on the trademark rights of others as this is apparently not the first time Apple has been in this position. The iPhone name was already owned by Cisco Systems, Inc when Apple announced the device. Even the company’s very own name, Apple, proved contentious, as it was most famously used a record label by the Beatles.

However, it seems that Apple has made a habit of launching products and services before sorting out the relevant trademarks beforehand relying on ‘cheque-book’ tactics to resolve trademark registration issues .

PlayStation VITA Trademark Registration of New Generation PlayStation?

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Is PlayStation VITA the street name of Sony’s Next Generation Portable?

Sony has applied for trademark registration of PS VITA and PLAYSTATION VITA, which speculation suggests will be the name for its new PlayStation.

More to be revealed at its E3 press event today.

In light of Sony’s E3 press event, much enthusiasm has continued to grow about Sony and Nintendo’s upcoming consoles.

Sony is expected to unveil its second Play Station, PSP2, or Next Generation Portable (NGP) as it has been known up until now.

In the last week or so, there have been rumours that the hand-held console will be renamed ‘PS Vita’.

On Friday, Sony applied for an EU trademark registration for PS VITA and PLAYSTATION VITA, seeming to confirming the rumours.

London Law Firm Silverman Sherliker Offer iPhone 4 Version of Namesearch TM Legal

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London Law Firm, Silverman Sherliker, have just launched the iPhone 4 update for its ground-breaking app for iPhone and Blackberry NameSea®ch TM Legal

The app enables users to get a free trademark search, free trademark advice and trademark registration quotes...on the move.

Launched to much fanfare and repeated accolades in the City Pages of The Times, NameSea®ch TM Legal has been downloaded by users all over the globe, but particularly in the UK and the US.

It puts users in direct contact with a team of specialist trademark lawyers who will carry out a free trademark search for you upon request and provide free advice an all aspects of trademark registration.

Chris Sherliker, the app's creator said: "We wanted to create an app that would basically provide a free 'trademarks-on-the-move' service for entrepreneurs, NPD specialists and creatives. It has been very popular and underpins our overall trademark service offering. The iPhone 4 update was somewhat overdue and I am pleased to see that it has been welcomed and downloaded by hundreds of existing users worldwide."