On March 27, 2020, the President signed the Coronavirus Aid, Relief and Economic Security Act (CARES Act) – This Act is to provide the various areas in which the government is providing emergency assistance and health care to individuals, families and businesses impacted by COVID-19. Under the CARES Act, the United States Patent and Trademark Office (the “PTO”) has provided for the extension of certain trademark filing deadlines between March 27th and April 30th, as the PTO has determined that practitioners, applicants, registrants and others associated with PTO filings and fees are being impacted and may be unable to make timely filings due to the outbreak.
In particular, the PTO and the Trademark Trial and Appeal Board (TTAB) has provided that they are giving a 30-day extension for the following deadlines currently due between March 27, 2020 and April 30, 2020:
Response to an Office Action, including Notices of Appeal from the final Office Action under 15 U.S.C. § 1062(b) and 37 C.F.R. §§ 2.62(a) and 2.141(a);
Statement of Use or Request for Extension of time to file a Statement of Use under 15 U.S.C. § 1051(d) and 37 C.F.R. §§ 2.88(a) and 2.89(a);
Notice of Opposition or Request for Extension of Time to file a Notice of Opposition 15 U.S.C. § 1063(a) and 37 C.F.R. §§ 2.101(c) and § 2.102(a);
Priority filing basis under 15 U.S.C. § 1126(d)(1) and 37 C.F.R. § 2.34(a)(4)(i);
Priority filing basis under 15 U.S.C. § 1141g and 37 C.F.R. § 7.27(c);
Transformation of an extension of protection to the United States into a U.S. application under 15 U.S.C. § 1141j(c) and 37 C.F.R. § 7.31(a);
An Affidavit of Use or Excusable Nonuse under 15 U.S.C. § 1058(a) and 37 C.F.R. § 2.160(a);
A Renewal application under 15 U.S.C. § 1059(a) and 37 C.F.R. § 2.182; or
Affidavit of Use or excusable nonuse under 15 U.S.C. § 1141k(a) and 37 C.F.R. § 7.36(b).
There are other extensions available as well. For instance, TTAB has provided that if COVID-19 has caused a delay in a filing not mentioned above, a request (in an ex parte appeal) before the Board or a motion (for trial cases) for a reopening of a case may also be made.
Also, if a trademark application was abandoned or a trademark registration was canceled/expired under any of the deadlines listed above (due to an inability to respond to a trademark-related Office communication by its original deadline) because of the COVID-19 outbreak, the PTO will waive the revival and reinstatement fees.
Thus, filing one of the above documents will be considered timely provided that the filing is made within 30 days of the original due date and provided that the filing includes a statement that the delayed filing or payment was due to the COVID-19 outbreak. With regard to the type of circumstances that would be considered to effect a timely filing, the PTO has noted the following situations::
cash flow interruptions,
inaccessibility of files or other materials,
personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment.
The PTO and TTAB are providing information as to their extensions and information on frequently asked questions on its website at www.uspto.gov/coronavirus. The PTO will continue to evaluate the situation and will report if additional measure or extensions are put in place.
While we can’t quite enjoy the warmth of summer just yet, guests at Four Seasons Hotel Baltimore will soon be able to have the next best thing in their in-room bar selection – Sandy Bottom® Sparkling Rum Cocktails! Tasting almost like a sunny afternoon, the light and fizzy coconut flavored beverage will be offered in rooms, bringing the beach to you.
Founded in 2009, entrepreneur Sandy Mazza was inspired by her friends while boating on the Chesapeake Bay. She created the beverage as a way for busy women to keep summer alive year round whether camping, tailgating, boating, or lounging on the beach. Her ambition ultimately led to Sandy Bottom at retailers throughout Maryland, the pool bar of the MGM National Harbor, and soon to be the Four Seasons Hotel Baltimore to welcome guests.
You don’t have to wait to go to the Four Seasons Hotel Baltimore to find this refreshingly crisp, sparkling rum cocktail. Check out their website to find where you can purchase some Sandy Bottom® for yourself today!
Special kudos to our client The Sandy Bottom Enterprises, LLC and Sandy Mazza! As our client says, “Never quit and dream big!”
If you search for books with the word “COCKY” in the title, the romance genre offers a large selection. One author in particular appears to be building a series of books with titles created as a play on words based on the main characters’ last names, Cocker. Thus, the books feature titles with the word “COCKY,” including titles such as “Cocky Roomie” and “Cocky Senator”.
Since obtaining the U.S. Trademark Registration Certificate for COCKY, Hopkins has been asserting her registered trademark in cease and desist letters and threatening litigation against novelists in romance and other genres in order to force them to change the titles of their respective books. The world of romance e-books is mostly filled with self-published authors – generally meaning that these authors don’t have the commercial revenue to fight lawsuits, or design new cover art and promotional materials in order to comply with demands or risk their works being removed from online retailers such as Amazon.
Romance Writers of America hired an intellectual property lawyer to assist authors affected by the “COCKY” owner’s recently issued trademark and aggressive enforcement tactics. Retired lawyer turned writer Kevin Kneupper filed a Petition for Cancellation with the USPTO. In response to this action, Hopkins, through her attorneys, filed for a preliminary injunction and a temporary restraining order in the Southern District of New York against Kneupper and writers Tara Crescent and Jennifer Watson, authors accused of violating the trademark. Hopkins argued that the social media tirade against her has resulted in popular hashtags, such as #CockyGate and #ByeFaleena, and has directly affected her sales and income. On June 1st, a federal judge denied Hopkins’ motion and dismissed Kneupper from the lawsuit.
Hop Hop Productions, Inc. is also asserting ownership of a second “COCKY” trademark, a stylized design wordmark featured in the cover art title of the books. The font used was allegedly created by Set Sail Studios, which is owned by graphic designer Sam Parrett. Parrett recently sent a cease and desist letter to Hopkins and asserted ownership claims in connection with the font. At this time, Hop Hop Productions, Inc. remains the registered owner of this trademark in the USPTO. However, the USPTO provides means for parties to contest ownership, such as by procedural means of opposition of allowed trademarks or cancellation of registered trademarks.
Trademark rights provide an owner with a right to stop unauthorized third-parties from using the same or similar mark on similar or related goods in order to reduce the likelihood of consumer confusion. Trademark owners should seek legal counsel on evaluating enforcement methods and tactics prior to taking any action. Challenges or consequences may exist, such as third parties taking actions to oppose allowed trademarks or cancel registered trademarks, along with posts made to social media related to a matter.
Chilly weather has been plaguing us for longer than usual this spring, but we’re seeing a seasonal shift! The folks of Bloomery Plantation Distillery have coaxed in the warmer weather with a newly launched product that joins the trademark-branded Sweetshine ® ranks of its internationally acclaimed flavored spirits!
Making its official debut, Saffron Rose Sweetshine ® tastes of rose, orange, and hints of saffron, and exhibits the champion-style quality of its family spirits, having been honored with the Silver Medal in the 2018 San Francisco World Spirits Competition. In addition, the creative artwork of the lovely lady, Miss Rose, adorning the Sweetshine ® label, is indicative of the signature trade dress featured on all Sweetshine ® products and is complimentary to the portfolio of award-winning label illustrations.
Together with having a quality product, Bloomery Plantation’s successful brand foundation is based on its intellectual property, which is built upon its registered trademarks, and distinguishable trade dress creating an iconic look and feel of its products. Through these efforts, Bloomery Plantation has set its business and products apart from other distilleries and products in the industry.
A protectable trademark and brand are essential components of a prosperous business foundation, directly impacting business viability and valuation. Bloomery Plantation has taken its business to a new level by using its intellectual property, registered trademarks and creative trade dress, to visually distinguish its product, increase brand recognition among consumers, and increase product visibility and placement on retail store shelves. Together with a number of factors, including hard work and a quality product, Bloomery Plantation’s new trademark and branding campaign has increased valuation for the BloomerySweetshine ® business, along with also playing a part in the business’ increased sales revenue. Our law firm was instrumental in helping Bloomery Plantation secure its intellectual property in its new branding efforts. We advise clients during the product naming process, perform trademark investigative clearance searches, draft and file trademark and copyright applications with governments, both U.S. and abroad, and handle applications throughout the entire government examination process. In addition, our firm also assists with maintaining protection and enforcing intellectual property against unauthorized third-party users.
For more information on creating, securing, and protecting your Product, Trademark, and Brand, please contact Pamela K. Riewerts, Esq., Partner and Intellectual Property Attorney at Oliver & Grimsley, LLC. Pamela may be reached via email at: firstname.lastname@example.org
On March 8, 2018, Oliver & Grimsley’s Pamela Riewerts attended the 2018 Women’s Leadership Conference, hosted by the Howard County Chamber of Commerce in Columbia, Maryland. The conference celebrated women entrepreneurs in the Maryland, D.C., and Virginia area. Phenomenal women speakers presented — such as Laura Gamble, the regional President of Maryland PNC Bank, and Col. Laurie Moe Buckhout (U.S. Army), the President and CEO of The Corvus Group, a business providing training services to scientific and technical clients.
Tracey Ellison of impactHR, First Lady Yumi Hogan, and Pamela Riewerts, Esq.—patent attorney and partner at Oliver & Grimsley, LLC.
In addition to supporting women leaders, the conference also focused on advancing women owned businesses. Speaker panels throughout the day featured topics such as “Energizing and Motivating Women,” “Leading Multi-Generational Teams to Success and Life Balance,” “Succeeding and Soaring in Male Dominated Fields,” and “Rising to and Inspiring from the Top.” Maryland’s First Lady, Yumi Hogan, also made an appearance and inspired and congratulated women on being great leaders in everyday life. The event featured sponsors such as Creatrix Inc. – providing services in software and systems engineering and architecture, and impactHR – providing HR and business solutions.
We appreciate the opportunity to participate in this worthwhile event, and for the opportunity to exhibit and speak with women business owners on the value of intellectual property.
How Famous is the Coca-Cola bottle design? Not quite enough to protect small differences
Design patents are an increasingly useful tool in product configuration protection, but as Coca-Cola recently learned, even a famous product design has its limits. As surely everyone knows, Coca-Cola owns a protected famous trademark for it’s original hour-glass bottle shape featuring fluted ridged lines. Earlier this year, however, the European Union (“EU”) Court denied trademark protection to Coca-Cola for a newly evolved, smooth shaped bottle. The Coca-Cola Company v. Office from Harmonisation in the Internal Market (Trademarks and Designs)(OHIM) 2016.
Under EU law, a trademark may consist of “the shape of goods”, as long as the shape is distinguishable from other third-party products. Coca-Cola’s original hour-glass bottle featuring ripple contours is “one of the most famous shapes in the world… is so distinctive it could be recognized in the dark” Coca-Cola stated. However, the EU court found that Coca-Cola failed to establish that the new smooth bottle design had acquired distinctive familiar connection and character through use.
Coca-Cola originally developed the fluted contoured bottle in the U.S. in 1915 to distinguish its bottle from competitors making similar bottles. Cola-Cola developed a glass “bottle so distinct that you would recognize if by feel in the dark or lying broken on the ground.” After several years of continuous use the unique distinction and recognition lead to trademark protection.
The new smooth bottle shape maintains the hour-glass bulge in the center of the bottle consistent with the original bottle shape, but does not feature the rippled contours that brought the original bottle its worldwide recognition. Although Coca-Cola argued that the smooth bottle is “a natural evolution” of the traditional bottle, both the EU Trademark Office in 2014 and the EU court in 2016, denied the request for trademark protection.
Strategies to Secure Initial Product Appearance and Shape Protection via Design Patents
Similar to the EU, U.S law also allows for trademark protection of product configuration and packaging that acquire distinctiveness over time. See Section 43(a) of the Lanham Act, Section 15 U.S. Code 1051. However, the design must gain “secondary meaning” as the Supreme Court has ruled that “a product’s design is distinctive, and therefore protectible, only upon a showing of secondary meaning”. See Walmart v. Samara.
Design patents can fill this “use” gap – as they also have the ability to protect unique product appearance and packaging at initial launch of products. This form of protection can serve as the first line of protection to claim ownership of distinctive shapes before the established passage of time that later may provide a basis for prolonged customer recognition which eventually may be used to establish trademark protection for the source of origin of the product. While design patent protection has a definitive term of protection– 15 years (See Manual of Patent Examining Procedures (MPEP) 1501), trademark protection, once established, may continue perpetually so long as the trademark is in use.
Coca-Cola first obtained U.S. design patents on its ornamental bottle shape in 1916, and again on it’s redesigned contoured bottle in 1923 and 1937. Design patent protection at that time lasted 14 years (currently 15 years). Years later in April 1960, after the product gained established customer recognition over time, Coca-Cola obtained federal trademark registration for its fluted contour bottle shape, thereby enabling the company to protect its fluted bottle design indefinitely with continuous use and protecting the iconic bottle that it is today.
If Coca-Cola is seeking to protect its new bottle shape in the U.S., one avenue may be to investigate the availability of design patent protection for the initial protection of the new bottle shape, and then look to secure trademark protection after prolonged continued use of the product. This strategy faired well for Coca-Cola in obtaining initial design patent protection and then continued trademark protection of its original rippled bottle shape.
Discussing these concepts in the current age – the design elements of product are becoming very important. For example, Apple protected its iPhone design and recovered significant damages against Samsung for infringement. Car manufacturers have recently filed claims against game manufacturers for digitizing their car shapes into a game. See as an example BMW v Turbosquid.
Should you seek Design Patent Protection for the Appearances and Shapes on Products or Packaging?
A protectable design must be manifested in the appearance of the product and consist of “visual ornamental characteristics embodied in, or applied to, an article of manufacture. The subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation.” MPEP 1500 et seq.; 35 USC 171 et seq. Design protection is based on specifically drawn product figures made in accordance with the U.S. Patent Office Rules, and submitted to the U.S. Patent Office with a patent application in order to identify the legal metes and bounds of the protected design. If you are interested in preventing others from making, using, selling or importing the same or similar product shape or appearance, you may want to engage a patent attorney to investigate whether design patent protection may be available for your product or packaging. An investigation generally consists of a preliminary search and initial evaluation of your product shape or appearance as being new, novel and non-obvious in order to meet the requirements of the U.S. Patent Office.
Should you Trademark the Appearance and Shape of Products or Packaging?
You do not need to register a trademark with the U.S. Trademark Office to establish trademark rights. Protection is established through use of the trademark. However, without federal registration, the trademark is only enforceable in the geographic area where the product is sold. A federal registration on the principal register, however, provides additional advantages and is likely beneficial in most cases primarily because a federally registered trademark on the principal register establishes nationwide priority throughout the entire U.S. Therefore, registration ultimately gives you the right to prevent others from using or registering your trademark nationwide and provides notice to third-parties of your registration. It should be noted that even with principal register trademark protection you cannot prevent someone in a remote location where you do not actually market or sell your product from using a trademark or product design that is confusingly similar until you actually enter that market. A registered trademark is also presumed valid and may eliminate certain invalidity arguments after 5 years of continuous use (incontestability).
How to Register Appearances and Shapes on Products or Packaging:
In order to register your product shape or packaging in the U.S. Patent and Trademark Office, as a trademark your packaging or product design must have acquired secondary meaning – that is, unique, original, and recognizable by consumers as the source of origin. Can the public identify your company as the source of origin of the product or the packaging by its distinctive features?
If a product design or packaging is not inherently distinctive it can still be registered after it acquires distinctiveness through long use, known as secondary meaning.
There are three ways that a mark itself may be inherently distinctive—if its intrinsic nature serves to identify a particular source.
1) Fanciful trademarks, such as a made-up word (Xerox- a created name with no other meaning than acting as a trademark);
2) Arbitrary trademarks, having no relation to the product other than as a means of identifying the company that produces it (Apple computers- a word in the English language not related to the product);
3) Suggestive trademarks, providing a link between the characteristics of a particular product and its producer (Microsoft- suggestive of software for microcomputers).
Generally, any mark that meets one of these criteria qualifies for trademark protection without any specific proof that consumers associate the mark with the specific source of the product.
To prove that the trademark product or packaging has acquired distinctiveness through secondary meaning, a mark must be shown to be distinct in the minds of the consumer and with a recognizable source of origin. Proving distinctive secondary meaning, however, is often expensive and legally challenging and often involves consumer surveys for recognition.
If you are interested in filing a design patent and/or registering your product configuration or packaging with the USPTO, you should contact an attorney to investigate, advise, and file an application for your product or packaging for registration.