Hi and welcome to another in the Omni Legal Group’s video series on intellectual property. My name is Omid, I’m a patent attorney and we are at Club Sportiva’s beautiful Silicon Valley clubhouse to talk more about intellectual property and exotic cars. So there are different kinds of intellectual property for protecting different kinds of ideas. Trademarks are used to protect brands, like McLaren and Dodge, whereas patents are used to protect inventions, like this eye-catching door mechanism. Let’s go for a ride and talk more. Patent applications are generally filed by a patent attorney. A patent attorney is a lawyer who has taken and passed the patent bar. Amongst patent attorneys, there are three different types. When you think of a transactional attorney, think of a silent Tesla Model X or a Rimac Concept One. They are the ones who file the applications to acquire the intellectual property rights for their client. When you think of a litigator, think of a screaming internal combustion engine. They are the ones when someone misappropriates their client’s intellectual property, they file the lawsuits to make sure that it does not happen again. Here at the Omni Legal Group, we are a hybrid of the two. We represent clients all over the world and have the ability to acquire intellectual property rights in any country that has a system for doing so. We also have a litigation practice which means that if someone misappropriates our client’s intellectual property, we have the means to make sure it does not happen again. When you think of us, think of a hybrid hyper car, like a Porsche 918 or a McLaren P1. Like a vault for securing your ideas, we affectionately refer to ourselves as The Idea Bank. We hope you enjoyed this second video of the series and learned a little bit more about patent lawyers and what they do. If you would like to learn about Club Sportiva and renting one of these amazing exotics or becoming a member, visit their website at ClubSportiva.com. Until next time, I’m Omid with the Omni Legal Group and I’ll see you in the next video.
Famous athletes commonly trademark their names and jersey numbers. Indeed, Shaquille O’Neal owns “Dunkman” for apparel and accessories, “Shaq-Fu” for books, softdrinks, and video games, and “Shaq Attaq” for clothing and footwear. Shaq even trademarked his signature. Similarly, Tim Tebow holds the trademark for “Tebowing,” which is the kneeling prayer stance he took before games. Not only do these sports icons trademark their personas, many also seek protection of inspirational slogans or phrases. Back in 2007, the Lance Armstrong Foundation registered “Livestrong.” More recently, LBJ Trademarks LLC, owned by Lebron James, trademarked “Nothing is Given. Everything is Earned.” Olympic sprinter Usain Bolt trademarked an icon of his signature lightening bolt stance as well as the phrase “Bolt to the world.” Pro-athletes seek these trademarks to create a personal brand and generate income outside their athletic career.
Scientific research has consistently confirmed that olfaction is strongly associated with memories and emotions. As such, the use of this less-exploited sense as a marketing ploy provides an advantage over other crowded channels, such as visual or auditory. Earlier this year, Hasbro filed an application for registration of the scent of its Play-Doh toy modeling compound as a trademark. Trademarks serve to distinguish the products and services of one company from those of a competitor in the minds of consumers. Trademarks are commonly words, designs, or combinations thereof, but other non-traditional trademarks, including scent, have been recognized by the U.S. Patent and Trademark Office. Hasbro’s application describes Play-Doh’s scent as “a unique scent formed through combination of a sweet, slightly musky, vanilla-like fragrance, with slight overtones of cherry, and the natural smell of a salted, wheat-based dough.” The toy company also mailed a container of the putty-like substance for the examiner to smell. In order to be granted registration, Hasbro must prove the scent of Play-Doh is distinctive. The scent mark must be unique from other marks such that consumers have come to recognize that scent as being associated with that company and its goods or services.The evidence may be either direct, including consumer surveys, or indirect, including promotional materials, revenue data, and number of years in use. Hasbro claimed acquired distinctiveness in its application based on 62 years of use, beginning in 1955. Moreover, the scent must be non-functional in that it does not serve a utilitarian purpose. More particularly, the scent cannot be necessary to the use or purpose of the product and cannot affect its cost or quality. In response to the toy company’s application, the USPTO issued an office action finding the use evidence to be insufficient. Additionally, the examiner opined that scent in the context of toy modeling compounds is ubiquitous and does not serve as a source identifier. To overcome these obstacles, Hasbro will need to submit additional evidence of the acquired distinctiveness of Play-Doh’s scent. #omnilegalgroup #trademark #Hasbro #PlayDoh
Recent Foreign Brand Victories in China Demonstrate Efforts Against Bad Faith Trademark Applications
In the past, the general impression has been that trademark law in China weighed heavily in favor of local companies over foreign brands. This has proven problematic for many global companies due to the fact that the need to think about intellectual property protection in China is an inevitable reality. Then, at the end of last year, Michael Jordan received a rare ruling in favor of a foreign brand in a Chinese court. The basketball legend had sued Qiaodan (Michael Jordan’s Chinese name) Sports in 2012 claiming the local company had built its business around his name and famous jersey number. Holding in favor of Michael Jordan, the court found the Chinese company’s actions evidenced “malicious intent.” New Balance also received a victory in China earlier this year after it sued three Chinese companies which were all using a highly similar logo on shoes it sold under the name “New Boon.” New Balance received a hefty damages award of $1.5 million after the court decided the defendants had damaged New Balance’s business reputation and depleted its market share in China. Additionally, China’s trademark office recently rejected an application for “MUSK & Chinese Characters” for “electrical vehicles,” which was filed by a Chinese individual. It found the application had been filed in bad faith without the authorization of the widely known opponent. Article 7 of the Trademark Law of China provides generally that use and registration of a trademark should follow the principle of good faith. Moreover, Article 44.1 states that if a mark was registered through “fraudulent or other illegitimate means,” the trademark office itself may invalidate the mark or others may bring an action to do the same. Taken together, these laws and recent court rulings indicate China is taking actions against bad faith trademark applications. However, the trademark office remains overwhelmed with applications and examiners do not have sufficient time to perform a proper analysis of each filing. Thus, brand holders seeking international protection of their intellectual property rights must closely monitor the Chinese trademark office. #omnilegalgroup #trademark
Classic trademarks consist of word or graphic elements or a combination of the two. However, a trademark may consist of colors, sounds, or even shapes of goods. Various candy manufacturers have taken advantage of this by requesting registration of the designs and shapes of their treats as a trademark. For instance, Hershey was granted trademark protection for its classic chocolate bar being described as “a configuration of a candy bar that consists of 12 equally-sized recessed rectangular panels arranged in a four panel by three panel format with each panel having its own raised border within a large rectangle.” The chocolate conglomerate also holds trademarks for the iconic Hershey’s Kiss plume emanating from the top of the candy. Another chocolate maker, Toblerone, has also been successful in trademarking the classic triangular shape of its Swiss chocolate. Nestle, on the other hand, has not been so fortunate as earlier this year, the high court in the UK rejected the candy-maker’s attempt to trademark the four-fingered shape of the Kit Kat bar. In receiving trademark protection, a design or shape must be either “inherently distinctive” or have “acquired distinctiveness,” meaning the public has come to recognize that element as being representative of a particular company. Thus, the shape of a candy bar must be a source identifier. #omnilegalgroup #trademark #halloweencandy #Hershey #Toblerone #Nestle #KitKat