KWW’s Comments

• Nov 1st, 2016 @ 9:25am

  USPTO

  on Copyright Office Fucks Over Thousands Of Sites With Plans To Remove Their DMCA Safe Harbors
  Yet another example of the differences between the USPTO and the Copyright Office. The USPTO has started providing e-mail reminders about registration renewal documents. For the people. Given how horrible the Copyright Office website is (including the e-file system), I'm not holding my breath that they even have the infrastructure or know-how to do something similar.
  
  https://www.uspto.gov/trademark/trademark-updates-and-announcements/uspto-now-issuing-courte sy-email-reminders
  
  "On January 27, 2015, the United States Patent and Trademark Office ("USPTO") began sending courtesy email reminders of upcoming post-registration maintenance filing deadlines for §§8 and 71 declarations and §9 renewals to registration owners who have (1) "live" registrations on the date of sending; (2) provided a valid email address to the USPTO; and (3) authorized email communication. No reminders will be sent by regular mail, and no follow-up emails will be attempted for undeliverable emails."
• Sep 16th, 2016 @ 6:54am

  (untitled comment)

  on Boise State Somehow Got A Trademark On Non-Green Athletic Fields
  Yes, you can receive a trademark registration for a color - even a smell or sound - but I'd like to see some proof of the trademark registration for "non-green" fields. That sounds like a phantom mark, which is not allowed. A registration has to be for a single mark. By claiming that your mark is "non-green," you are claiming multiple other colors. Maybe the author can provide a link to that application or registration.
  
  See: https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1200d1e12571.html
  
  Here's the registration for blue:
  http://tsdr.uspto.gov/#caseNumber=77574724&caseType=SERIAL_NO&searchType=statusSearch
• Jun 6th, 2016 @ 6:15am

  Cannot register movie title as TM (as Kevin Wimberly)

  on Sony's New Emoji Animated Movie At Trademark Odds With Guy Who Trademarked Emojis
  You actually cannot register the title of a single movie (or book or album) as a trademark (unless it is serialized). This is the second or third erroneous "armchair TM attorney" issue I've seen within the last month or two on TechDirt. Please research some of these statements first.
  
  Yes, many times the names of movies are registered trademarks, but not for "movie services" or "movie goods."
  
  See TMEP 1202.08:
  
  1202.08 Title of a Single Creative Work
  The title, or a portion of a title, of a single creative work must be refused registration under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, unless the title has been used on a series of creative works. The title of a single creative work is not registrable on either the Principal or Supplemental 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"); In re Cooper, 254 F.2d 611, 615-16, 117 USPQ 396, 400 (C.C.P.A. 1958) , cert. denied, 358 U.S. 840, 119 USPQ 501 (1958) ("A book title ... identifies a specific literary work ... and is not associated in the public mind with the publisher, printer or bookseller...."); In re Posthuma, 45 USPQ2d 2011 (TTAB 1998) (holding the title of a live theater production unregistrable); In re Hal Leonard Publ'g Corp., 15 USPQ2d 1574 (TTAB 1990) (holding INSTANT KEYBOARD, as used on music instruction books, unregistrable as the title of a single work); In re Appleby, 159 USPQ 126 (TTAB 1968) (holding the title of single phonograph record, as distinguished from a series, does not function as mark).
  As noted in In re Cooper, there is a compelling reason why the name or title of a book cannot be a trademark, which stems from copyright law. Unlike a copyright that has a limited term, a trademark can endure for as long as the trademark is used. Therefore, once copyright protection ends, and the work falls in the public domain, others must have the right to call the work by its name. G. & C. Merriam Co. v. Syndicate Publ’g Co., 237 U.S. 618, 622 (1915); In re Cooper, 254 F.2d at 616, 117 USPQ at 400; Mattel Inc. v. Brainy Baby Co., 101 USPQ2d 1140, 1144 (TTAB 2011). Moreover, if the work sought to be registered is not copyrighted, the public may copy it at once and would be as clearly entitled to call it by its name. In re Cooper, 254 F.2d at 616, 117 USPQ at 400.
  See TMEP §1301.02(d) regarding the titles of radio and television programs.
• May 9th, 2016 @ 5:58am

  I concur (as Kevin Wimberly)

  on Advice To Immediately Trademark Kickstarter Projects Rests On Crowdfunding Not Being Commerce
  As another IP attorney, I agree with Stephen's analysis. You cannot use traditional notions and definitions of "commerce" to determine if there is a "use in commerce" for Lanham Act purposes. There is also a distinction between use of goods in commerce vs. use of services in commerce. Some of what Mr. Geigner argued sounds like an argument toward crowdfunding as a "service" such that engaging in a crowdfunding campaign might be a use in commerce - of crowdfunding services. However, if the campaign is for a tangible good, and there is no tangible good on which to affix the mark, then you will have a very difficult time convincing the USPTO and/or a court that there has been a statutory use in commerce.
  
  Also, some of Geigner's points are actually reasons that an intent-to-use path exists. When you create a business entity with your state and start gearing up to make a product, no, that does not mean that you are making a "use in commerce" for trademark purposes. Are you doing something commercial? Absolutely. But you are not using the trademark in interstate commerce on your goods at that point, so you file an intent to use application to put others on notice that you intend to use that mark on your goods in the near future.