US Armed Forces Step Up Efforts to Enforce Trademarks

USMC
As reported by the New York Times, branches of the US armed forces are increasing their efforts to enforce military trademarks.

Numerous commercial products and services not actually associated with the military make use of military logos and mottos.

These products include insignia for the “Star Fleet Marines,” sold on a Star Trek fan site, as well as Marine-logo underwear and “Leathernecks” toilet wipes.

The fan site agreed to remove the Marine logo from its products but continued to use the marine name, as seen above.  (The name “marine” is descriptive of a type of military unit and is not unique to the US Marine Corps.)

The Pentagon has responded to the use of military-related marks by having its trademark attorneys send “cease-and-desist” letters to infringers.

The Marines already hold at least 68 registered trademarks and are continuing to get more, at an increasing pace: one mark in 2003, four in 2008, and nine from 2010 to 2011.

See Also:  US Navy Tops Fortune 500 Companies in Patents

In 2013 The Marines licensed the trademark, “Pain is weakness leaving the body,” for use on water bottles.

See Also: What Is A Trademark? 

Walt Disney Co. tried to register the mark “SEAL Team Six” for items including toys, videogames, snow globes, and Christmas stockings – two days after the unit’s mission to kill Osama bin Laden became public.

Disney said it was considering producing a TV series about the elite unit.

In response to Disney’s application, the Navy filed its own trademark registrations for “SEAL Team” and “Navy SEALs.”

Disney later agreed to withdraw its trademark application, “out of deference to the Navy.”

Registering military marks allows the US government to collect licensing revenues.  The Marines have collected $5.4 million in trademark licensing fees since 2009.

The Army increased its number of licenses from 120 in 2011 to 265 in 2013.

If you have questions about the use of military-related logos, symbols, or slogans, or if you are interesting in licensing government-owned intellectual property for consumer use, it’s always best to consult with an attorney to avoid potential trademark infringement.


Leech Tishman’s Intellectual Property attorneys are dedicated to the protection and monetization of your ideas and innovations. Many of our registered patent attorneys have advanced degrees enabling them to truly understand the complex technical details of your idea. Several bring engineering expertise, others molecular biology, manufacturing and business acumen to your trademark, copyright, patent prosecution and litigation and trade secret issues, both domestic and international.
Our clients range from individual inventors, authors and owners of creative works to entrepreneurial enterprises, government entities, mid-sized corporations and Global 500 companies with operations throughout North and Central America, Europe, South Asia, the Far East and Australia.
We have serviced a vast array of industries including automotive, cosmetics, e-commerce, electronics, entertainment, fashion, food and beverage, furniture, internet, manufacturing, networks, optics, publishing, software, technology, toys, and wireless.
We are committed to providing you with strategic counseling and personal attention throughout the entire life cycle of your project.
We are proud of our longstanding relationships with local innovation communities and enjoy working with entrepreneurs and businesses who wish to protect their ideas and good names.
Please contact us today for a free consultation at (855) UR- IDEAS or (626) 796-4000.

Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.

Photo Attribution: Seal of the United States Marine Corps. As a work of the U.S. federal government, the image is in the public domain.

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Tomato? Tomahto? Is There One Right Way to Pronounce a Trademark?

Tomato Trademark PronunciationFederal Circuit Says No When Trademark is Not a Recognized Word

The case arose out of a dispute between StonCor and Specialty Coatings, competitors in the market for “epoxy coatings used on concrete floors.”

In 1992, StonCor registered the mark STONSHIELD with the US Patent and Trademark Office in connection with “floors and flooring systems comprised of epoxy resins . . . for use in industrial and institutional applications,” among other products.

In 2008, Specialty Coatings applied to register the trademark “ARMORSTONE” in connection with “[e]poxy coating for use on concrete industrial floors,” among other products. StonCor opposed registration of the ARMORSTONE mark on six grounds.  Among other things, it argued that:

  • The USPTO should not allow registration of the ARMORSTONE mark because consumers would likely confuse it with STONSHIELD when used in connection with epoxy floor products.
  • ARMORSTONE is not eligible for registration because the mark is merely descriptive.

The Trademark Trial and Appeal Board (TTAB) analyzed the likelihood of confusion based on thirteen factors, the relevant ones being:

  • The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression, and
  • The number and nature of similar marks in use on similar goods.

With regard to the first factor, the TTAB considered how consumers would pronounce “STONSHIELD.”

StonCor presented evidence that “ston” would be pronounced like “stone.”

However, the TTAB reasoned that the spelling of the word and “ordinary rules of English” dictated that the word would be pronounced with a short “o” as in “on.”

Taking this and other factors into consideration, the TTAB found there was no likelihood of confusion.

See Also:  Monetize Your Ideas — Trademarks

StonCor appealed.

The Federal Circuit found that the TTAB had erred by failing to credit StonCor’s evidence that consumer would pronounce “STON” as “stone”:

Where a trademark is not a recognized word and the weight of the evidence suggests that potential consumers would pronounce the mark in a particular way, it is error for the Board to ignore this evidence entirely and supply its own pronunciation.

However, the court concluded that this was harmless error and that other factors supported the TTAB’s conclusions.   The Federal Circuit held that there is no single correct way to pronounce a trademark that is not a recognized word.

If you have questions about your whether your trademarks would be considered confusingly similar to a competitor’s, contact our office for a free initial consultation.


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Leech Tishman’s Intellectual Property attorneys are dedicated to the protection and monetization of your ideas and innovations. Many of our registered patent attorneys have advanced degrees enabling them to truly understand the complex technical details of your idea. Several bring engineering expertise, others molecular biology, manufacturing and business acumen to your trademark, copyright, patent prosecution and litigation and trade secret issues, both domestic and international.
Our clients range from individual inventors, authors and owners of creative works to entrepreneurial enterprises, government entities, mid-sized corporations and Global 500 companies with operations throughout North and Central America, Europe, South Asia, the Far East and Australia.
We have serviced a vast array of industries including automotive, cosmetics, e-commerce, electronics, entertainment, fashion, food and beverage, furniture, internet, manufacturing, networks, optics, publishing, software, technology, toys, and wireless.
We are committed to providing you with strategic counseling and personal attention throughout the entire life cycle of your project.
We are proud of our longstanding relationships with local innovation communities and enjoy working with entrepreneurs and businesses who wish to protect their ideas and good names.
Please contact us today for a free consultation at (855) UR- IDEAS or (626) 796-4000.

Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.

Photo Attribution:  “Flash-lit Macro Tomatoes” by The Ewan is licensed by CC BY-SA 2.0 Generic.

Fossil Told to Pay Attorneys’ Fees for Frivolous Trademark and Patent Defense

Fossil Trademark Patent Defense

Fossil Inc., the maker of handbags, jewelry, and other apparel and accessories, was ordered to pay the attorneys’ fees of a company that successfully sued Fossil for trademark and patent infringement.

Plaintiff Romag Fasteners Inc. makes and sells magnetic snap fasteners used in handbags and other accessories.  It holds a US patent for “Magnetic Snap Fasteners” and also a registered trademark for the mark “ROMAG” used in connection with these fasteners.

Romag sued Fossil, Macy’s, Nordstrom, and other stores for patent infringement, trademark infringement, and other cause of action based on sales of handbags allegedly including infringing fasteners.

In April, a federal jury in Connecticut returned a verdict finding Fossil liable for trademark infringement, false designation of origin, common law unfair competition, and violations of the Connecticut Unfair Trade practices Act. The jury also found Fossil and Macy’s liable for patent infringement.

The jury awarded Romag $7 million based on Fossil’s profits, but the judge ruled that damages based on lost profits were only available for willful trademark infringement, which Romag had not established. The remaining award was $41,863 against Fossil and $12,562 against Macy’s.

The judge ordered that Fossil pay part of Romag’s attorneys’ fees on the grounds that Fossil’s defense that the patent at issue was invalid “bordered on frivolous.”

The judge noted that fasteners were only a “minute portion” of Fossil’s and Macy’s costs of doing business but that the patents were Romag’s “primary business assets.”

She said:

There is a risk that plaintiffs similar to Romag could be discouraged from bringing claims that may garner only small awards but are nonetheless vital to the survival of their businesses where defendants, as was the case here, aggressively pursue invalidity counterclaims in an attempt to prolong litigation and exponentially increase the cost and risk of pursuing a lawsuit.

The judge cited the US Supreme Court’s recent decision in the Octane Fitness case, which allows judges to require a losing party to pay the winner’s attorneys’ fees in exceptional cases.

Romag had asked for $3 million in fees, but the judge rejected several of the grounds and ordered additional briefing on the amount.

Fee Shifting in Patent Cases

The Romag case shows that raising a frivolous (or borderline frivolous) defense can be equally expensive.

Patent Attorney, Laura Lloyd says,

This is an interesting result and I would remind clients to consider the merits or dangers of fee shifting in all stages of an infringement proceeding.

If you are facing an intellectual property infringement suit and want help deciding whether you should fight or settle, contact our office to arrange a free initial consultation at 1-855-UR-IDEAS.

Please Like us on Facebook and Follow us on Twitter for the most current intellectual property news.

Leech Tishman’s Intellectual Property attorneys are dedicated to the protection and monetization of your ideas and innovations. Many of our registered patent attorneys have advanced degrees enabling them to truly understand the complex technical details of your idea. Several bring engineering expertise, others molecular biology, manufacturing and business acumen to your trademark, copyright, patent prosecution and litigation and trade secret issues, both domestic and international.
Our clients range from individual inventors, authors and owners of creative works to entrepreneurial enterprises, government entities, mid-sized corporations and Global 500 companies with operations throughout North and Central America, Europe, South Asia, the Far East and Australia.
We have serviced a vast array of industries including automotive, cosmetics, e-commerce, electronics, entertainment, fashion, food and beverage, furniture, internet, manufacturing, networks, optics, publishing, software, technology, toys, and wireless.
We are committed to providing you with strategic counseling and personal attention throughout the entire life cycle of your project.
We are proud of our longstanding relationships with local innovation communities and enjoy working with entrepreneurs and businesses who wish to protect their ideas and good names.
Please contact us today for a free consultation at (855) UR- IDEAS or (626) 796-4000.

Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.

Photo Attribution:  “Tyrannosaurus Rex” by David Monniaux is licensed by GNU Free Documentation License.