Sandy Bottom® Cocktails to Make an Entrance and Warm, Sunny Welcome to Guests at the Four Seasons Hotel Baltimore Soon

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!”

Book Wars: Romance Novelist Seeks to Block Others from Using “Cocky” Trademark

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”.

The term “COCKY” is the subject of a recently registered trademark that has spurred quite the controversy. In April, romance author Faleena Hopkins, through her company Hop Hop Productions Inc., received a certificate from the United States Patent and Trademark Office (USPTO) granting her a trademark registration for use of the word “COCKY” in connection with goods for “a series of books and downloadable e-books in the field of romance.” Under U.S. Trademark laws,15 U.S.C. §§10511052, and 1127,  more than one book is required in order to apply for a trademark for the title of a book series.  See also TMEP 1208 et seq.  The title of a single creative work is not registrable on either the Principal or Supplemental Trademark Register. Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1162, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002) (“the title of a single book cannot serve as a source identifier”).

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.

***For more information on this topic or other trademark matters, please contact Pamela K. Riewerts, Esq., a partner at Oliver & Grimsley, LLC at: pamela@olivergrimsley.com.

This Spring, Stop and Smell the Roses: Bloomery Plantation Releases New Sweetshine®

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 Bloomery Sweetshine ® 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.

We wish our client, Bloomery Plantation, the very best on its new product release!  See more about Bloomery Plantation and its award-winning and creatively flavored liqueurs, here.

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: pamela@olivergrimsley.com

 

Pamela Riewerts, Esq. of Oliver & Grimsley Exhibits On Ways to Create Value and Protect Intellectual Property at 2018 Women’s Business Leadership Conference

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.

For more information on creating value and protecting intellectual property, please contact Pamela K. Riewerts, Esq., a partner at Oliver & Grimsley, LLC at: pamela@olivergrimsley.com.

Coca-Cola discovers small design changes can mean lack of protection of product designs: protecting product shapes and appearances

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?

In addition, the trade dress must not be functional.   See generally, Manual of Trademark Examining Procedures (TMEP) Section 1202.02  The original Coca-Cola bottle design met all of these requirements (i.e. the fluted ridges did not serve a significant function in the product, but rather were merely ornamental).

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.

Should you need assistance with design patents or trademark protection, please contact Pamela K. Riewerts, Esq., partner at Oliver & Grimsley, LLC at: Pamela@olivergrimsley.com

More information may be found on the following websites:

http://www.uspto.gov/patent

http://www.uspto.gov/trademark

http://en.wikipedia.org/wiki/Trade_dress

http://heritage.coca-cola.com/

http://blogs.wsj.com/brussels/2016/02/24/without-the-ripples-coca-cola-bottles-arent-the-real-thing-says-eu-court/

http://curia.europa.eu/juris/document/document.jsf?text=&docid=174563&pageIndex=0&doclang=EN&mode=req&dir=&occ=first&part=1&cid=640112

Trademark Symbols – The Difference Between the ™ and ® Symbols and When Is A Trademark Owner Permitted Use of The Symbols

Trademark Symbols – The Difference Between the ™ and ® Symbols and When Is A Trademark Owner Permitted Use of The Symbols 

A common question among trademark owners is what’s the difference between the ™ symbol and the ® symbol and when can I use them on my trademarks.  It is also a common misconception that you have to obtain a federal trademark registration on your trademark before you can use the ™ symbol.  That is not the case.

You may use the ™ symbol on a trademark even though the trademark is not registered (or even applied for). Thus, whether you have a trademark application pending at the United States Patent and Trademark Office, but it has not reached registration yet, or you have yet to file a trademark application, you may use the ™ symbol on your trademark.  The ™ symbol is notice to others that you are using a word, phrase or logo as a trademark.  It also potentially wards off third parties from using the same or similar mark.  Thus, once you begin using a trademark on a good or service you are providing, you may use the ™ symbol on the mark (or the ℠ symbol if you prefer to distinguish a service mark although ™ may be used on trademarks used in connection with goods or services).  Note – although this is a whole new topic for another article, you should make sure that another party is not already using the same or similar trademark in the same, similar or related area before you begin using the trademark.

As for the ® symbol, you may use that once the U.S. Patent and Trademark office issues a registration for your trademark.  You should not to use the ® symbol on your trademark prior to obtaining a federal registration – such use is considered a misrepresentation to the public that you have a federally registered mark.  Upon registration, you may (and should) use the ® symbol on the trademark.

This ® symbol provides notice to others that you have a federal registration. It is important to note that the failure to include the ® symbol can potentially result in a limitation in damages that you would have been entitled to in a trademark infringement action as your damages could potentially run later. Thus, it is beneficial to include the ® registration symbol once the U.S. Patent & Trademark Office issues the registration to you.

For additional information, please contact Kim Grimsley at kim@olivergrimsley.com.