Archives for March 2023

Trademark Class 35 – The COMPLETE Guide

March 17, 2023 by Michael Kondoudis

If you’re a business owner, it’s vital to understand trademark class 35 because it relates to advertising, business, and office functions.

By Michael Kondoudis, Small Business Trademark Attorney

This is our COMPLETE guide to Trademark Class 35. This comprehensive guide will explain what trademark class 35 is, why it matters for your business, and how to register a trademark in this class. Whether you’re new to trademarks or an experienced hand, if you need to know about trademark class 35, this guide is for you.

Let’s get started!

What is a Trademark Class?

A trademark class is a part of the United States Patent and Trademark Office’s (USPTO) classification system for the products and services that can be listed in a trademark application. The USPTO’s trademark class system comprises 45 separate classes.

A trademark class is a category used to classify different types of goods and services for the purpose of registering trademarks. These classes are divided into 45 distinct categories, with each category representing a certain type of product or service. For example, Class 35 includes services related to advertising and business management, while Class 25 includes clothing and other items related to apparel.

What is Trademark Class 35?

Trademark class 035 is for business and advertising services, including retail services. These services would include those provided to businesses.

Trademark class 35 is one of the 45 classes that the United States Patent and Trademark Office (USPTO) uses to categorize the products and services that can be listed in a trademark application.

Trademark class 35 is among the most popular and frequently used trademark classes.

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What Does Trademark Class 35 Cover?

Trademark Class 35 covers advertising and business services. Most services associated with advertising, carrying out, and managing commercial businesses are covered in Class 35.

What is Included in Trademark Class 35?

Trademark class 35 is an important classification under trademark law in the United States. This trademark classification applies to a variety of services that are specifically related to business and advertising. This includes services provided by retail stores, online shops, and professional services that accommodate businesses with advertising, marketing, and sales techniques.

What are Examples of Trademark Class 35 Services?

Examples of trademark class 35 services are marketing, consulting, public relations services, advertising agency services, and managing corporate enterprising. Additional examples include customer loyalty programs, consumer sales promotion services, distribution of products for advertising purposes, and retail store services.

Top 10 Examples of Trademark Class 35 Services

Advertising agency services for promoting the goods and services of others
Retail store services
Marketing (email, social media, print)
Arranging and conducting promotional events and trade shows
Brand management services
Business consulting services in the field of marketing, advertising, and promotion
Business research and information services
Business risk consulting services
Marketing consulting services
Online advertising and marketing services

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What is a Class 35 Trademark?

A class 35 trademark is a trademark for business and retail services that fall into the United States Patent and Trademark Office’s (USPTO) class 35 for services related to advertising and business management.

What is a Class 35 Trademark Used For?

Trademark class 035 is used to protect services related to advertising, business management, and retail store services. A class 35 trademark protection gives businesses peace of mind that their unique mark will not be infringed upon, helping them maintain their hard-earned reputation and brand recognition.

Examples include advertising services, marketing services, promotional services, business consultation, and project management. Businesses that use these services can register their logo or slogan as a class 035 trademark, ensuring exclusive use. Upon successful registration, the owner is provided with various legal rights, such as being able to initiate lawsuits against anyone who infringes on the trademark.

What Does a Class 35 Trademark Cover?

A trademark in class 35 covers advertising and business management services, such as creating marketing plans, providing professional advice, and protecting the trademark owner from infringement. Registering a class 35 trademark is essential for service providers looking to safeguard their rights in their respective lines of business.

What are the Benefits of a Class 35 Trademark?

A class 35 trademark ensures protection services that are exclusive to the owner. By registering in this trademark class, businesses can secure their name and identity while being able to prevent others from infringing upon it. Companies also gain legal protection overall commercial activities related to their brand, allowing them to keep their intellectual property safe. In addition, registering a class 35 trademark allows businesses to benefit from all the possible advantages of owning a trademark: increased recognition and protection against competitors who might seek financial gain from an existing product or service without prior authorization.

How to Get a Class 35 Trademark

The process of filing a Class 35 trademark application involves submitting the necessary paperwork and information to the appropriate body, such as the U.S. Patent and Trademark Office (USPTO). The application must include an accurate description of the goods or services associated with the mark, as well as the correct classification number for Class 35. Additionally, certain fees may be required in order to complete the registration process. Once all of this information is submitted, it will typically be reviewed by an analyst in order to determine if the application meets all necessary requirements before being approved or denied.

How Do I Apply for a Class 35 Trademark?

To apply for a class 35 trademark, you must file an application with the United States Patent and Trademark Office (USPTO). The USPTO will review your application to determine if it meets the necessary requirements for registration. The most important requirement is that your mark must be distinctive enough to distinguish your product or service from similar products or services on the market. Once the USPTO approves your application, your trademark will be registered in the official USPTO database.

Top 10 Examples of Class 35 Trademarks

GOOGLE (Internet Advertising)
WALMART (Retail Store Services)
MICROSOFT (Business Consultation and Advertising Services)
EBAY (Online Retail Store Services)
DELOITTE (Accounting + Bookkeeping Services)
KOHL’S (Retail Store Services)
J.P. MORGAN (Financial Records Services)
AMAZON (Online Retail Store Services)
NYSE (Online NFT Marketplaces)
TARGET (Retail Store Services)

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Michael Kondoudis

For more than twenty years, Michael Kondoudis has been the go-to trademarking expert for businesses of all shapes and sizes. Michael is a USPTO-licensed trademark and patent attorney, educator, speaker, and author of the Amazon best-seller: Going From Business Owner to Brand Owner. He is also an authority trusted by national news media on major trademark stories.

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

www.mekiplaw.com

What is a Dead Trademark – A COMPLETE Guide

March 17, 2023 by Michael Kondoudis

Dead Trademarks can be used much of the time but you need to be careful to understand why the mark is dead or you could risk a claim of infringement.

By Michael Kondoudis, Small Business Trademark Attorney

This is our COMPLETE guide to dead trademarks.

A trademark can “die” for any number of reasons. This guide explains what a Dead Trademark is, how a trademark can “die,” and what a Dead Trademark means for competing brands.

If you want to know about Dead Trademarks, including if you can use a Dead Trademark, then read on. This guide is for you.

What is a Trademark?

A trademark is a unique word, sign, or symbol that distinguishes a product, service, or business from the competition. The most popular trademarks are names, words, logos, and phrases. Trademarks protect words, symbols, phrases, and logos that identify particular goods or services.

A trademark owner can take legal action when a competitor tries to use the trademark (or anything confusingly similar) without permission.

Trademarks ensure that customers can easily identify the products they want in the marketplace and receive consistent quality service each time. Essentially, trademarks make products and services easier to spot in the crowd.

The U.S. Patent and Trademark Office (USPTO) regulates trademarks in the US. To register a trademark with the USPTO, you must file an application with the USPTO, which will review the application and decide whether to approve or deny it.

What is a Dead Trademark?

A Dead Trademark is a trademark that has been canceled by the USPTO, invalidated by a Court, or abandoned by its owner.

Every Dead Trademark was once registered or applied for, but the US Patent and Trademark Office doesn’t recognize it anymore because it has been abandoned by the owner, invalidated by a Court, or canceled by the USPTO.

The term “Dead Trademark” refers to trademarks that have lost their federal legal protections or were the subject of a failed USPTO trademark application. Dead trademarks are not protected by the USPTO or federal courts. Dead trademarks cannot be used to block pending trademark applications.

Every year many thousands of trademarks are abandoned, canceled, or invalidated. So, encountering a Dead Trademark is not uncommon.

What Does it Mean If a Trademark is Dead?

A Dead Trademark means that the owner of a trademark has lost federal legal rights to it. This means anyone can register the logo or phrase for their use. Many businesses take advantage of this by assuming ownership of the Dead Trademark so they can rebrand without putting much effort into creating something new. In this way, Dead Trademarks can present a unique chance for businesses to add new elements to their branding strategy.

When a trademark is “dead,” it means that anyone can use it without fear of legal repercussions from the original trademark owner.

A Dead Trademark is generally available for anyone else to register, making it an opportunity to take ownership of an old, inactive logo or phrase. Taking ownership of a Dead Trademark is a popular method for businesses to gain a new brand without starting from scratch.

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How Does a Trademark Die?

A Dead Trademark happens when a trademark is abandoned by its owner, canceled by the USPTO, or invalidated by a Court.

Abandonment

Generally, abandonment occurs when a trademark owner stops using it in the marketplace to distinguish a product, service, or business from the competition. This means the trademark isn’t used to show that a product or service is different from the competition. Also, a trademark owner can request that the USPTO abandon its registered trademark.

When someone stops using their trademark, it is called abandonment. An abandoned trademark is a dead trademark and is unenforceable.

Cancellation

Generally, this occurs when the owner fails to submit renewal documents as the USPTO requires. In other words, they have either stopped using the mark or have not paid renewal fees to keep it active.

Trademark rights can last forever, but only when the owner maintains their registration at the USPTO. On certain anniversaries, the owner must submit certain documents to the USPTO. When a trademark owner fails to maintain a registration, the USPTO will cancel it for “non-renewal.” The USPTO can also cancel a trademark registration after a cancellation proceeding.

A canceled trademark is a dead trademark and is unenforceable.

Invalidation

Generally, invalidation occurs when a court determines that a trademark infringes another trademark, or the owner lets the mark become generic through misuse. Sometimes a court decides that one trademark looks too much like another. Or, if the owner does not use their trademark correctly, it might become generic, and the court will not protect it.

An invalid trademark is a Dead Trademark and is unenforceable.

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If a Trademark is Dead Can I Use It?

Yes, if a trademark is dead, you can probably use it. It is possible to use a Dead Trademark.

It is possible to claim a Dead Trademark, but there may be repercussions from the original owner if they decide to use it again in the future. So, while it is possible to claim a Dead Trademark, you may expose yourself to a claim of infringement if the original owner still has rights to the trademark and decides to use it again.

Ultimately, it is important to ensure that the trademark has been canceled, invalidated, or the original owner has stopped using the mark. Otherwise, the original owner could potentially have legal rights to the trademark and might challenge your use as trademark infringement.

Can You Register a Dead Trademark?

Yes, individuals and companies can register and use Dead Trademarks.

It may seem strange to think of registering a dead trademark, but it can be done in certain circumstances. Dead trademarks are those that have become abandoned or are no longer used by their owners. The USPTO (United States Patent and Trademark Office) will accept an application to register a Dead Trademark.

The first step is to consult an experienced trademark counselor or attorney to determine if the mark can be registered.

But Beware!

Dead trademarks can be tricky legal matters to navigate as they are not always easy to identify. They often change hands several times. Determining whether a trademark is dead requires a careful analysis to evaluate whether the mark has been abandoned, invalidated, or canceled.

Can You Revive a Dead Trademark?

Yes, if the Dead Trademark is the subject of an unsuccessful application you can file a petition with the United States Patent and Trademark Office (USPTO) can help to reinstate your application. The USPTO will review your petition and may allow you to continue with your trademark registration if all requirements are met.

When filing a petition to revive an abandoned trademark application, you must include certain information, such as the reasons why your application was abandoned and what will be done to address the issues that led to its abandonment. You may also need to prove that you are still interested in obtaining the trademark. Depending on the circumstances, you may be required to pay additional fees or undergo additional examination by the USPTO.

If your petition is approved, you will be allowed to continue with the trademark registration process, and your application will resume from its abandoned status. This can be lengthy and complicated, so it’s important to ensure all requirements are met before filing a petition. Once your trademark is successfully registered, it will be protected under federal law. You will have exclusive rights to use the mark for the goods or services specified in your registration.

Although filing a petition is necessary to revive an abandoned trademark application, it’s important to remember that there is no guarantee that the USPTO will approve your petition. Understanding the risks involved in pursuing a trademark registration before filing a petition is important. Additionally, you should consult with a qualified attorney to ensure that all requirements are properly met and that your application is handled correctly throughout the process.

With experienced guidance, reviving an abandoned trademark application can be a successful endeavor. Filing a petition with the USPTO may be your only chance to save your application and protect your brand, so it is important to understand the process of filing a petition and all that is required for success.

Take the Next Step and Legally

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Take the Next Step Legally Own Your Trademark

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Michael Kondoudis

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

www.mekiplaw.com

Seven Reasons You Need a Trademark Attorney in 2023

March 15, 2023 by Michael Kondoudis

Applying to protect your trademark is just not a DIY project. If you file your trademark application yourself, you’ll probably do it wrong.

Don’t be fooled – it’s more than just filling out online forms. That is the easiest part of the process.

The Federal trademarking process involves making dozens of legal decisions and judgment calls – and you’re not likely to make all of the right choices.

The reasons are simple enough.

When you apply for a Federal trademark, you start a Federal legal proceeding – and it can get complex in a hurry. The many decisions you will need to make are interrelated, and some wrong choices can sink your application from the start – without you even knowing it.

Also, Federal Trademark Law is intricate, and the U.S. Patent and Trademark Office’s Rules are specific, unforgiving, and severely limit how you can change your application after submission. So, if you are going to try your luck and guess at the right answers, think again.

In this article about why you need a trademark attorney, we’ll discuss some of the reasons why you do not want to go it alone at the USPTO.

Seven Reasons Why You Need a Trademark Attorney

1. You’ll increase your probability of success by up to 50%
2. The USPTO will not give you legal advice and cannot give you a break
3. The USPTO encourages you to hire a trademark attorney
4. 80% of All Applications Require a Response to the USPTO
5. You’ll avoid overpaying the non-refundable Official filing fees
6. You’ll save time
7. You’re Running a Business, Not Learning Law

1. You’ll increase your probability of success by up to 50%.

No less than the Wall Street Journal reports that Federal trademark applications filed by trademark attorneys are 50% more likely to be approved than those filed by applicants on their own. That article (link) is based on 25 years worth of USPTO data. The data also shows that the applicants using a trademark attorney to reply to Examiner objections are almost 70% more likely to succeed than applicants who try to go it alone.

According to the Wall Street Journal, Federal trademark applications filed by a trademark attorney are 50% more likely to be approved than those filed by applicants on their own. Plus, you’ll be more likely to secure more protection and avoid overpaying the Official fees.

2. The USPTO will not give you legal advice and cannot give you a break.

The U.S. Patent and Trademark Office forbids its Examiners from giving legal advice. So, if you have a legal question, or face a legal rejection, you’ll be on your own, unless you have a trademark attorney.

You will still be required to meet every rule and requirement, even if you don’t know or understand them. The USPTO cannot give you a break. Ask yourself, do you feel confident that you know:

What is and what is not protectable?
What is a legal disclaimer, and when is it proper?
When is it best not to claim the colors in your logo?
What is the supplemental register?
What qualifies as a specimen of use for your products (and what does not)?
What are the legal requirements for a substitute specimen?
How to apply du Pont factors to measure trademark dissimilarity?

A trademark attorney can help you navigate these legal complexities.

3. The USPTO strongly encourages applicants to seek legal advice.

Because the Federal trademarking process is so complex, the USPTO encourages all applicants to consider hiring a trademark attorney:

“A private trademark attorney can help you before, during, and after the trademark application process…. an attorney may save you from future costly legal problems… [and] can help you navigate the application process to provide optimal protection of your trademark rights, by, for example, accurately identifying and classifying your goods and services, and preparing responses to any refusals to register that an examining attorney may issue.”

Remember, the USPTO cannot give you legal advice!

4. 80% of All Applications Require a Response to the USPTO

All applications for Federal trademarks are examined by the USPTO for compliance with many legal and procedural requirements. Applications are only granted after the USPTO determines that all of these requirements are met.

Most applications are initially denied, however. You can be denied for any one of hundreds of reasons. Sometimes, it’s a simple fix – if you know what you’re doing. Other times, you’ll need to submit a legal argument based on legal research and case citations. This is where DIY applicants get into trouble.

Trying to respond to the USPTO on your own fails more often than it succeeds. Plus, it is very easy to make a problem much worse if you don’t know exactly what you are doing. That’s where an experienced trademark attorney matters.

5. You’ll avoid overpaying the non-refundable Official filing fees

No one likes to overpay their taxes. The same is true for trademark filing fees.

Every trademark application requires a filing fee, which is calculated based on the content of the application. The USPTO categorizes every product or service that you can sell into one or more of 45 classes and will compute a filing fee for each class that your application involves. These filing fees are not refundable and can amount to $1000 or more – depending on the products and services listed in your application.

An experienced trademark attorney can make sure that you only pay for approved classes and that you avoid paying for those the Examiner rejects.

6. You’ll save time

Trademark Examiners work under severe time constraints and are required to meet strict quotas. In many cases, the Examiners are willing to try to negotiate applications to allowance so that they can get easier credit towards their quotas. Examiners are most willing to negotiate with trademark attorneys because they can send us offers without the need to take the time to explain all of the Federal Laws, USPTO Rules, and Court decisions involved. We already know them.

The Federal trademarking process routinely takes between 8-12 months. Working with a trademark attorney can help ensure that you are closer to the 8-month timeframe and not the 12.

7. You’re running a business, not learning trademark law

Federal Trademark law is complex. The USPTO has too many rules and procedures to count. It takes years to learn how the trademarking process works. You can’t dependably rely on hope and luck. There are a lot of attorneys who can’t even do it.

It’s better to focus your skills where they’re most needed: running your business.

Final words

For these reasons (and many others that are far beyond the scope of this article), the U.S. Patent and Trademark Office’s encourages applicants to work with a trademark attorney. So, do yourself and your business a favor. Hire an experienced trademark attorney. You’ll maximize your chances of success, minimize the risk of overpaying the Government for your trademark, get a better result, and save yourself time and worry.

Take the Next Step and Legally

Own Your Trademark

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Take the Next Step Legally Own Your Trademark

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Michael Kondoudis

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

www.mekiplaw.com

Famous Trademarks: A COMPLETE Guide

March 3, 2023 by Michael Kondoudis

All famous trademarks have two things in common: they are iconic and given more legal protections than other marks.

By Michael Kondoudis, Small Business Trademark Attorney

This is our COMPLETE guide to famous trademarks.

A trademark can become famous for several reasons. It may be catchy or memorable, like Nike’s “Just Do It” slogan. It may be associated with a popular product or service or be part of a successful advertising campaign that helps to spread its message more widely. Some trademarks become famous due to many years of use and extensive advertising.

If you want to know about famous trademarks, including what they are and how they become famous, then read on. This guide is for you.

What are Famous Trademarks?

Famous trademarks immediately connect a product or service with the source of that product or service. Examples of famous trademarks are GOOGLE, FORD, PEPSI, TACO BELL, and WALMART. Like all famous trademarks, these trademarks are widely recognized and instantly create an association with their respective brands.

Famous trademarks are iconic.

What is the Advantage of Being a Famous Trademark?

Famous trademarks are treated differently under the law than other marks. Famous trademarks receive enhanced legal protections from infringement and broader exclusive rights. So, a famous trademark enjoys a wider scope of protection and exclusivity of use.

Famous trademarks enjoy more protections because they are more likely to be recognized by the public. Their iconic status gives them a higher chance to be recognized and remembered, which is why the law treats them differently than other marks. These protections make famous trademarks more valuable.

Famous trademarks are entitled to extra legal protection under federal law.

The U.S. Patent and Trademark Office (the “USPTO”) has made many legal determinations that marks are famous, including: (1) MOTOWN for audio recordings; (2) SONY for entertainment services; (3) JACK DANIELS for whiskey; (4) GOOGLE for search engine services; (5) JAWS for video recordings; (6) RED BULL for energy drinks; and (7) BOSE for audio equipment.

Examples of Famous Trademarks

Famous trademarks represent many of our favorite brands, from APPLE to STARBUCKS. The public immediately recognizes them due to their distinctiveness and renown.

Examples of famous trademarks include APPLE, BARBI, FORD, GOOGLE, LEVI’S, TACO BELL, NIKE, PEPSI, and WALMART.

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List of Famous Trademarks Examples

Coca-Cola

Coca-Cola is one of the most famous trademarks in the world. The company was founded in 1886, and its distinctive red and white logo has been used since 1887. The company sells over 1 billion bottles of Coca-Cola a day, and the brand is worth an estimated $74 billion.

Coca-Cola

Nike

Nike is a global leader in athletic apparel and footwear. The company was founded in 1964, and the Nike swoosh logo was introduced in 1971. Nike generates billions of dollars in revenue annually, and its products are worn by some of the world’s most famous athletes.

McDonald’s

McDonald’s is one of the most recognizable brands in the world. The company was founded in 1940, and its golden arches logo was introduced in 1962. McDonald’s is the largest fast-food chain in the world, with over 36,000 restaurants in more than 100 countries.

McDonald’s

Mercedes-Benz

Mercedes-Benz is a German luxury automaker that was founded in 1926. The three-pointed star logo has been used since 1909 and is recognized worldwide as a symbol of quality and luxury. Mercedes-Benz vehicles are renowned for their engineering excellence and are some of the most sought-after cars on the market.

Apple

Apple is one of the most valuable companies in the world, with a market capitalization of over $1 trillion. The company was founded in 1976, and the iconic bitten apple logo was introduced in 1977. Apple makes some of the world’s most popular consumer electronics products, including the iPhone, iPad, and Mac computer lineups.

Apple

Rolex

Rolex is a Swiss luxury watchmaker that was founded in 1905. The company’s name is derived from its founders, Hans Wilsdorf and Alfred Davis, and Rolex watches are widely regarded as some of the finest timepieces in the world. Rolex watches are known for their precision engineering and elegant design, and they are often given as gifts to mark special occasions such as graduations or retirements.

Barbie

Barbie is one of the most popular dolls in the world. The doll was first introduced by Mattel in 1959 and has since become a cultural icon. The Barbie logo is one of the most recognizable logos in the world and features a pink cursive script.

Barbie

Starbucks

Starbucks is a coffeehouse chain that was founded in 1971. The company operates over 23,000 stores in 70 countries and employs over 191,000 people. Starbucks is the largest coffeehouse chain in the world, and its green mermaid logo is one of the most recognizable logos in the world.

Porsche

Porsche is a German automobile manufacturer that was founded in 1931. The company produces sports cars, SUVs, and sedans. Porsche’s logo features a horse inside of a shield with antlers, which is meant to represent speed and power.

Porsche

How Does a Trademark Get Famous?

Federal Courts have held that trademark fame often requires:

a very distinct mark,
federal trademark registration(s)
enormous advertising investments
a significant volume of sales
a product of lasting value.

Time is often a key factor. Thus, new trademarks are generally not “famous.”

These factors imply that a mark has achieved widespread recognition that immediately connects products and services with their source.

Famous Trademark Cases

Washington Redskins

This NFL team recently lost its team name trademark after the USPTO ruled that the name was insensitive to Native Americans. As a result, the team can no longer sue those who create and sell counterfeit Redskins merchandise. The Redskins organization has appealed. Those considering a trademark should extensively research the history of the word or phrase to ensure they won’t need to change it later.

Marvel and DC Comics – SUPERHERO

Believe it or not, the word “superhero” is currently a trademark for both Marvel and DC Comics. They vigorously pursue other comic book publishers in court who dare to use the word on their title pages. Some see this campaign as trademark bullying from two comic book titans, but no one has made a real effort to contest their ownership of the word “superhero” as a trademark.

Tiffany & Co. vs. eBay

In 2008, Tiffany & Co sued eBay for allowing the sale of counterfeit Tiffany products on its website. Tiffany claimed that eBay was not doing enough to prevent the sale of counterfeit goods, damaging its reputation and confusing consumers. The case was eventually settled out of court, with eBay agreeing to pay Tiffany & Co $15 million

Tiffany & Co. vs. Costco

In 2013, Tiffany & Co. sued Costco for selling engagement rings that it claimed were falsely advertised as “Tiffany” rings. A jury found in favor of Tiffany & Co. and ordered Costco to pay $19 million in damages. Costco appealed the decision, but the appeals court upheld the verdict in 2015.

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New Applications – Legally own your trademark.

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Enforcement – Flex your trademark rights. Stop copycats.

Famous Trademark Infringement Cases

Famous trademark infringement cases include instances where one company sues another for use of a similar trademark without approval.

Nike vs. Reebok

In 2000, Nike sued Reebok for infringing its “swoosh” trademark. The case was settled out of court, with Reebok agreeing to pay Nike $10 million and stop using the “swoosh” logo on its products.

McDonald’s vs. Burger King

In 2011, McDonald’s sued Burger King for infringing on its “i’m lovin’ it” slogan. McDonald’s claimed that Burger King’s “Whopper Lovin'” campaign was too similar to its own and would confuse consumers. The case was eventually settled out of court, with Burger King agreeing to pay McDonald’s an undisclosed sum.

Coca-Cola vs. Pepsi

In 1999, Coca-Cola sued Pepsi for infringing on its “Share a Coke” campaign. Coca-Cola claimed that Pepsi’s “Be Young, Have Fun, Drink Pepsi” campaign was too similar to its own and would confuse consumers. The case was eventually settled out of court, with Pepsi agreeing to pay Coca-Cola $13 million.

Coca-Cola vs. Pepsi (redux)

In 2003, Coca-Cola sued Pepsi for infringing its “contour bottle” trademark. The case was settled out of court, with Pepsi agreeing to stop using the contour bottle design.

Louis Vuitton vs. Dooney & Bourke

In 2006, Louis Vuitton sued Dooney & Bourke for infringing on its “toile monogram” design. The case was settled out of court, with Dooney & Bourke agreeing to pay Louis Vuitton an undisclosed sum and stop using the monogram design.

Adidas vs. Skechers

In 2015, Adidas sued Skechers for infringing on its three-stripe trademark design. The case was settled out of court, with Skechers agreeing to pay Adidas $40 million and stop using the three-stripe design on its products.

Academy of Motion Picture Arts v. GoDaddy.Com Inc.

In 2010, the Academy Awards sued domain company GoDaddy for trademark infringement over the name “oscar.” The Academy attacked GoDaddy for allowing customers to buy domain names, such as 2011Oscars.com, that were “confusingly” similar to the Academy’s trademarks.

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Michael Kondoudis

Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).

Archives for March 2023

If you’re a business owner, it’s vital to understand trademark class 35 because it relates to advertising, business, and office functions.

What is a Trademark Class?

What is Trademark Class 35?

Schedule a Free Strategy Call

What Does Trademark Class 35 Cover?

What is Included in Trademark Class 35?

What are Examples of Trademark Class 35 Services?

Top 10 Examples of Trademark Class 35 Services

What is a Class 35 Trademark?

What is a Class 35 Trademark Used For?

What Does a Class 35 Trademark Cover?

What are the Benefits of a Class 35 Trademark?

How to Get a Class 35 Trademark

How Do I Apply for a Class 35 Trademark?

Top 10 Examples of Class 35 Trademarks

Schedule a Free Strategy Call

Take the Next Step Legally Own Your Trademark

Dead Trademarks can be used much of the time but you need to be careful to understand why the mark is dead or you could risk a claim of infringement.

What is a Trademark?

What is a Dead Trademark?

What Does it Mean If a Trademark is Dead?

Schedule a Free Strategy Call

How Does a Trademark Die?

Abandonment

Cancellation

Invalidation

If a Trademark is Dead Can I Use It?

Can You Register a Dead Trademark?

But Beware!

Can You Revive a Dead Trademark?

Schedule a Free Strategy Call

Take the Next Step Legally Own Your Trademark

Seven Reasons Why You Need a Trademark Attorney

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1. You’ll increase your probability of success by up to 50%.

2. The USPTO will not give you legal advice and cannot give you a break.

3. The USPTO strongly encourages applicants to seek legal advice.

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4. 80% of All Applications Require a Response to the USPTO

5. You’ll avoid overpaying the non-refundable Official filing fees

6. You’ll save time

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7. You’re running a business, not learning trademark law

Final words

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Take the Next Step Legally Own Your Trademark

All famous trademarks have two things in common: they are iconic and given more legal protections than other marks.

What are Famous Trademarks?

What is the Advantage of Being a Famous Trademark?

Examples of Famous Trademarks

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List of Famous Trademarks Examples

Coca-Cola

Coca-Cola

Nike

McDonald’s

McDonald’s

Mercedes-Benz

Apple

Apple

Rolex

Barbie

Barbie

Starbucks

Porsche

Porsche

How Does a Trademark Get Famous?

Famous Trademark Cases

Washington Redskins

Marvel and DC Comics – SUPERHERO

Tiffany & Co. vs. eBay

Tiffany & Co. vs. Costco

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Famous Trademark Infringement Cases

Nike vs. Reebok

McDonald’s vs. Burger King

Coca-Cola vs. Pepsi

Coca-Cola vs. Pepsi (redux)