The United States Patent and Trademark Office (USPTO) has been closed since Monday, February 8, 2010 through Wednesday, February 10, 2010 due to inclement weather.  The USPTO has issued a statement notifying inventors and businesses each that Monday, February 8, 2010 through Wednesday, February 10, 2010 is a “Federal holiday within the District of Columbia”.  Any action or fee due on any of Monday, February 8, 2010 through Wednesday, February 10, 2010 (or the preceding Saturday (February 6, 2010) or Sunday (February 7, 2010)) will be considered as timely if the action is taken, or the fee paid, on the next succeeding business day on which the USPTO is open; thus, Thursday February 11, 2010.

USPTO rules state correspondence deposited in the Express Mail Service of the United States Postal Service (USPS) will be considered filed on the date of deposit with the USPS.  Thus, any paper or fee properly deposited in the Express Mail Service of the USPS on Monday, February 8, 2010 through Wednesday, February 10, 2010 will be considered filed on its respective date of deposit.

Further, USPTO rules state patent and trademark-related correspondence transmitted electronically to the USPTO will be considered filed in the USPTO on the date the USPTO received the electronic transmission.  Thus, any patent and/or trademark-related correspondence transmitted electronically to the USPTO on February 8, 2010, February 9, 2010, or February 10, 2010, will be considered filed in the USPTO on the date the USPTO received the complete electronic transmission.

Jim Paige          (612) 392-7310           Jim.Paige@nm-iplaw.com

On Nov. 16, 2009 the U.S. Supreme Court denied cert. in the Harjo v. Pro-Football, Inc. case.  This finally brings an end to the debate about whether the Redskins have an offensive trademark for their football team.   The Supreme Court did not provide any comments regarding its decision to not hear this case.

The case started out in 1992 as a petition by Suzan Harjo on behalf of herself and several other Native Americans to the United States Trademark Trial and Appeal Board to cancel the trademark registrations which were granted to the Washington Redskins Football team in 1967.  Harjo, et al. believed the “Redskins” trademark violated Section 2(a) of the Lanham Act because it was a mark that comprised “immoral, deceptive or scandalous matter; or matter which may disparage or falsely suggest a connection with persons living or dead, institutions, beliefs or national symbols, or bring them into contempt, or disrepute.”  In 1999 the TTAB ruled in favor of Harjo, et al, but Pro-Football appealed (smartly, in my opinion) to the U.S. District Court for the District of Columbia (they had the option to appeal to the Court of Appeals for the Federal Circuit).  The District Court found in favor of Pro-Football.

This case has been in the courts since 1999 primarily about an equitable doctrine called Laches.  The Courts have now all agreed that the Harjo et al. delayed too long in bringing the case, since all of the plaintiffs in the action were alive when the mark was filed with the Trademark Office (1967), but they did not bring the case until 1992, twenty five years after the Redskins mark had been registered.

Laurie Young                (612) 392-7309           Laurie.Young@nm-iplaw.com

Since giving birth to octuplets in January, Nadya Suleman, aka OctoMom, has captured nationwide media attention.  Earlier this month Ms. Suleman filed two separate applications to register OCTOMOM as a trademark and a service mark with the U.S. Patent and Trademark Office.  Was she beaten to the punch?  Almost a month earlier Super Happy Fun Fun, Inc. filed its own application to register the mark.

In most trademark cases, the first in time is the first in line.  The person who is the first to use a mark (or file an intent-to-use application) will have priority over anyone who begins using the mark or files for registration at a later point in time.  The OctoMom situation provides an interesting exception to this general rule.

Section 2(a) of the Federal Lanham Act prohibits registration of a trademark where the mark consists of matter which “falsely suggests a connection with persons, living or dead.”  Likewise, Section 2(c) of the Lanham Act prohibits registration where the mark consists of or comprises “a name, portrait or signature identifying a particular living individual except by his written consent.”  Section 2(c) of the Lanham Act operates to bar registration of marks containing not only full names, but also surnames, shortened names, nicknames, etc. so long as it identifies a specific living individual.

Ms. Suleman is widely known by the nickname OctoMom.  There are many news articles which specifically refer to Ms. Suleman as “OctoMom”.  Thus, it seems likely that the Trademark Office will refuse registration of the OCTOMOM trademark to Super Happy Fun Fun, Inc. unless they are able to obtain Ms. Suleman’s written consent.

This presents an important lesson for corporations and individuals who wish to capitalize on the fame of others.  Trademark laws protect the right of publicity of celebrities or any individual.  Obtaining the person’s consent is a prerequisite to registration.  Nikolai & Mersereau, P.A. can help you draft a consent agreement to gain permission to use a name as well as filing for the trademark registration.

Peter Nikolai    (612) 392-7311           Peter.Nikolai@nm-iplaw.com

So you have a great idea, a revolutionary idea, an idea that could be worth a fortune.  What is the best way to protect the idea so that you can profit from it?

That depends.  U.S. law provides several forms of intellectual property protection.  The right form(s) of protection will depend on the nature of the information to be protected and how it will be used.

• Patent rights protect inventions for a limited period of time.
• Trade secret rights protect confidential information from unlawful disclosure for so long as the secret can be kept.
• Copyrights protect original works of authorship fixed in a tangible medium of expression.
• Trademark, service mark and trade name rights protect words, phrases, pictures, symbols, shapes or other means identifying the source of origin of goods or services.
• Semiconductor works protect mask works fixed in a semiconductor chip product. 

It is important to remember that the various forms of intellectual property protection are not mutually exclusive.

In fact, all may apply to a single product launch.  For at least a period of time, information related to the nature of the product, how it will be priced and how it will be sold must be kept secret.  Even after launch, business information surrounding the product and business plans related to the future are to be held in confidence.  Thus, securing and protecting trade secret rights is important.  The product may involve one or more inventions related to how it works and even how it looks.  Thus, utility and design patents may be available to keep others from using such inventions.  If the product includes semiconductor chips, mask work protection may be available.  Every product has a name and many can be readily identified by their ornamental features or the features employed in packaging.  Trademark and trade dress rights therefore come into play.  Various pieces of literature are typically associated with the product launch including advertising pieces, instruction manuals and software code, all of which give rise to copyright protection.

With each new product introduction, two basic questions need to be asked.  Will I be infringing any intellectual property rights of others? And how can I best protect the substantial investment I am making to bring the product to market?  The earlier these questions are asked, the better.  We, of course, would appreciate the opportunity to help you find the right answers.

At Nikolai & Mersereau we can help you sort out these issues and select the most appropriate types of protection for your ideas. 

Jim Nikolai       (612) 392-7302           Jim.Nikolai@nm-iplaw.com

A U.S. District Court in Georgia determined that Wal-Mart failed to prove it possessed common-law trademark rights to the ubiquitous yellow “Smiley Face” icon that has been used extensively in its advertising.  Because it was unable to show that members of the purchasing public uniquely identified the icon with Wal-Mart Stores, Inc., its efforts to preclude usage by others failed.  As a result, Wal-Mart had not so nice of a day.  (Smith v. Wal-Mart Stores, Inc., 86 USPQ 2d 1835.)

Tom Nikolai     (612) 392-7307           Tom.Nikolai@nm-iplaw.com