S13 W11 E41-44 Leveraging INSPIRATION: TRADEMARK TRIUMPHS AND TRAGEDIES: APPLE, MCDONALDS, ESCLATOR, ADIDAS AND PUMA [The Inspired Patent Podcast] with Wayne Carroll

S13 W11 E41-44 Leveraging INSPIRATION: The Inspired Patent PodcastTM 

Wayne Carroll - “ Leveraging INSPIRATION: The Inspired Patent Podcast  - Intellectual Property Strategy for Startups & Small Business” 

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Week 11 of 13: Trademark Triumphs and Tragedies: Apple, McDonalds, Esclator, Adidas and Puma

E41: Apple's Failed Attempt to Trademark "Live Photo": The tech giant's unsuccessful bid to obtain a trademark for a popular iPhone camera feature.

E42: McDonald's vs. McSleep Inn: How the fast food giant used its trademark power to stop a small hotel chain from using a similar name.

E43: The Escalator Patent and Trademark Saga: The story of how a successful invention led to a trademark loss for its creator.

E44: Adidas vs. Puma: The sibling rivalry turned trademark battle between two German sportswear giants.

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S13 E41  Apple's Struggle for the Trademark Live Photo Why the best defense is a good offense

Apple bet on a trademark and lost, but then went another round and won. Learn why the best defense in trademarks is a strong offense.

In 2015, Apple introduced a new feature called "Live Photos," which captured a 3-second video clip along with a photo. In January 2016, Apple filed a trademark application for "Live Photos." However, in April 2016, they received an office action from the USPTO stating that the trademark "HP LIVE PHOTO" filed by HP Hewlett-Packard blocked their registration. The USPTO also considered "Live Photo" to be merely descriptive.

Apple responded to the office action and obtained consent from HP Hewlett-Packard, which was signed only by HP. Despite this, in the second office action issued in February 2017, the USPTO still maintained that the trademark was blocked by HP LIVE PHOTO but acknowledged that the issue of being merely descriptive had been overcome.

Simultaneously, Apple appealed the office action to the Trademark Trial and Appeal Board (TTAB) and a second consent agreement with HP that was signed by Apple and HP.  The trademark examiner in the Trademark Office agreed that the second consent agreement resolved the issue, so the appeal board sent the case back to the trademark office.

The trademark application for "Live Photos" was published in September 2017. However, in October 2017, an opposition was filed by Gang Cao, who claimed that "Live Photos" was generic. Both parties engaged in legal proceedings, including filing a complaint, answer, and a motion for summary judgment. The opposition process involved substantial discovery which always results in large legal fees.

In June 2021, the TTAB sustained the opposition, ruling that "Live Photos" was generic, which meant Apple was denied the right to register the trademark. Undeterred, Apple appealed the TTAB's decision to the federal district court in August 2021.

Surprisingly, Gang Cao did not respond to the appeal, which allowed Apple to present its case to the Federal District Court to overturn the TTAB's ruling. In February 2022, the court issued an order overturning the previous ruling, stating that "Live Photos" was descriptive with secondary meaning, thereby recognizing Apple's right to obtain a trademark registration for Live Photo.

The court's decision acknowledged that "Live Photos" had acquired distinctiveness and secondary meaning through Apple's extensive use and promotion of the term. This ruling solidified Apple's ownership of the "Live Photos" trademark, affirming its ability to protect the brand and prevent confusion among consumers.

Apple won the case because they were able to present lots of evidence that it used the term LIVE PHOTO extensively as a trademark. This was their strong offense, that resulted in a good defense against the opposition.

BIO:
Wayne Carroll founded Inspired Idea Solutions Law Firm in 2013, an IP boutique law firm focused on helping small businesses with intellectual property. At Inspired Idea Solutions, we use a proven process for obtaining IP rights that focuses on aligning the business strategy of small business clients with their IP strategy. We help small businesses implement a strategy to ensure they own and leverage their intellectual property. We also have clear expectations with zero hidden fees.  

In addition to his legal work, Wayne is an Eagle Scout and actively volunteers with the Boy Scouts of America. He is also a proud father of six children and enjoys playing pickleball. Wayne's extensive experience and expertise in intellectual property law make him a highly respected attorney and a valuable asset to clients seeking protection for their intellectual property rights. Wayne can be reached at 480-741-2440 or Wayne@inspiredideasolutions.com. You can also connect with Wayne on LinkedIn.  

Schedule an appointment with Wayne Carroll for a strategy session on protecting and leveraging your intellectual property.

S13 E42  The McSleep Inn case Enforcing a trademark outside of your direct competitors.

In season 13, episode 15, I talked about how I found three companies all using the same trademarks in three different product categories, a moving company, an automotive parts company, and an electric cooperative selling electricity. 

Clients often come to me when they see a company using a name similar to theirs and want to know if it is trademark infringement.

In this episode I discuss the 8 trademark infringement factors and how they played out in a case between McDonalds and Quality Inns
(1)     Strength or Weakness of the Plaintiff’s Mark.  
(2)       Defendant’s Use of the Mark.  If the defendant and plaintiff use their trademarks on the same, related, or complementary kinds of goods there may be a greater likelihood of confusion about the source of the goods than otherwise. 
(3)       Similarity of Plaintiff’s and Defendant’s Marks. 
(4)       Actual Confusion.  
(5)       Defendant’s Intent.   
(6)       Marketing/Advertising Channels.   
(7)       Consumer’s Degree of Care.   
(8)       Product Line Expansion. 

McSleep Inn Case

Quality Inns Intern., Inc. v. McDonald's Corp., 695 F. Supp. 198 - Dist. Court, D. Maryland 1988

Synopsis

• Quality Inns announced McSleep Inn hotels
• McDonalds Corp sent Cease and desist 3 days later
• Quality Inns sued for declaratory judgement

    

CEO of Quality Inns presented the following to his Board of Directors:
The marketing promise of McSleep is "a consistent, convenient, quality product at a low price."

The marketing hook is the name "McSleep;" not McSleep Motor Inn or McSleep Motel — just "McSleep." The name McSleep should help consumers instantly identify the product for what it is — a consistently clean, quality product at a low price.
* * * * * *
McSleep is aimed at the entire travel market. Like McDonald's, it is acceptable for the upscale traveler who wants only a good night's sleep and for the economy traveler who wants to save money.

Holding of the District Court:
(1) McDonald's is entitled to enforce its family of marks that are characterized by the combination of the prefix "Mc" with a generic word; 
(2) the name McSleep Inn is likely to cause an appreciable number of the public to be confused by believing that McSleep Inn is sponsored, associated, affiliated, connected, or endorsed by McDonald's; and 
(3) the adoption and use by Quality International of the name McSleep Inn was a deliberate attempt to benefit by the good will and reputation of McDonald's.

BIO: Wayne Carroll is a highly experienced intellectual property lawyer with over 15 years of experience. He holds a Juris Doctor degree with a concentration in Intellectual Property Law from Suffolk University Law School, as well as an undergraduate degree in Electronic Engineering Technology from DeVry University. Wayne is the CEO and Attorney at Inspired Idea Solutions, LLC, a firm he founded in 2013, where he specializes in patent strategy, patent prosecution, trademark strategy and registration, and copyright litigation.

In addition to his legal work, Wayne is an Eagle Scout and actively volunteers with the Boy Scouts of America. He is also a proud father of six children and enjoys playing pickleball. Wayne's extensive experience and expertise in intellectual property law make him a highly respected attorney and a valuable asset to clients seeking protection for their intellectual property rights. Wayne can be reached at 480-741-2440 or Wayne@inspiredideasolutions.com. You can also connect with Wayne on LinkedIn.  

Schedule an appointment with Wayne Carroll for a strategy session on protecting and leveraging your intellectual property.


S13 E43 The Escalator Trademark story How to lose a trademark

​“Escalator” was once a brand, but it is now a generic term. Learn how a company lost its trademark and how to prevent it from happening to your brand.

Trademark genericide occurs when a brand name becomes so commonly used that it transforms into a generic term.  The example of "Escalator" illustrates this phenomenon. Originally, it was a trademarked brand name for a moving staircase, exclusively associated with the Otis Elevator Company. However, over time, the term became so widely used that it lost its trademark status and turned into a generic term used by people to refer to any moving staircase, regardless of the manufacturer.

As a small business owner, you must take proactive steps to prevent your trademark from suffering the same fate:

1. Educate yourself: Understand the concept of trademark genericide and its potential consequences for your brand. Recognize that even the most successful and iconic brands can fall victim to genericide if not properly managed.
2. Choose a distinctive mark: Select a unique and memorable trademark that stands out from generic or descriptive terms. A strong and distinctive mark is less likely to become generic over time.
3. Properly use your trademark: Use your trademark consistently and correctly as an identifier of your brand and its offerings. Promote your mark as a brand name rather than as a generic term. 
4. Monitor and enforce your trademark: Keep a close eye on how your mark is being used in the marketplace. Take swift action against any unauthorized or improper use of your trademark to prevent it from becoming diluted or genericized.
5. Public awareness and education: Proactively communicate the association between your brand and your trademark. Educate the public about the distinction between your brand and the generic term for the product or service. Use marketing and advertising campaigns to reinforce the unique identity of your mark.
6. Consult with a trademark attorney: Seek guidance from a trademark attorney who can assist you in registering your mark, navigating legal complexities, and developing a comprehensive trademark protection strategy. They can help you understand the risks of genericide and advise on proactive measures to safeguard your brand.

Do this now! Assess your current trademark usage and strategy. Schedule a consultation with the Host of this Podcast, Wayne Carroll to ensure your mark is distinctive, develop a strong protection plan, and take steps to avoid the risk of genericide. By actively managing your trademark, you can maintain its distinctiveness, protect your brand's identity, and secure a strong position in the marketplace.



BIO: Wayne Carroll is a highly experienced intellectual property lawyer with over 15 years of experience. He holds a Juris Doctor degree with a concentration in Intellectual Property Law from Suffolk University Law School, as well as an undergraduate degree in Electronic Engineering Technology from DeVry University. Wayne is the CEO and Attorney at Inspired Idea Solutions, LLC, a firm he founded in 2013, where he specializes in patent strategy, patent prosecution, trademark strategy and registration, and copyright litigation.

In addition to his legal work, Wayne is an Eagle Scout and actively volunteers with the Boy Scouts of America. He is also a proud father of six children and enjoys playing pickleball. Wayne's extensive experience and expertise in intellectual property law make him a highly respected attorney and a valuable asset to clients seeking protection for their intellectual property rights. Wayne can be reached at 480-741-2440 or Wayne@inspiredideasolutions.com. You can also connect with Wayne on LinkedIn.  

Schedule an appointment with Wayne Carroll for a strategy session on protecting and leveraging your intellectual property.

S13 E44 Adidas Trademark strategy - sue early and often

Adidas 3 stripe logo is an example of how a logo can be used to establish a brand, and how litigation can keep the brand strong. 

The Adidas 3 stripe logo serves as an example of the significance of protecting and enforcing intellectual property rights to maintain a distinct brand identity and prevent unauthorized use by competitors.
The Adidas 3 stripe logo is one of the most recognizable and iconic brand marks in the sportswear industry. Over the years, Adidas has actively enforced its trademark rights associated with the logo through numerous lawsuits against companies infringing upon its design.

Adidas has successfully argued that the 3 stripe logo is a distinctive symbol associated with their brand and products, and any unauthorized use or imitation can cause confusion among consumers and dilute the brand's reputation.

As a small business owner, consider the following steps to protect your brand and intellectual property:

1. Understand trademark law: Familiarize yourself with the basics of trademark law, including the requirements for distinctiveness, consumer confusion, and the potential consequences of infringement. 
2. Conduct a clearance search: Before finalizing your brand logo, conduct a thorough search to ensure that it does not infringe upon any existing trademarks or bear resemblance to well-known logos in your industry. This helps mitigate the risk of legal disputes and potential infringement claims.
3. Register your trademark: If your logo qualifies for trademark protection, consider registering it with the appropriate intellectual property office. This step provides you with legal rights and helps deter others from using similar logos.
4. Monitor the market: Continuously monitor the marketplace to identify any unauthorized use or infringement of your logo. Regularly search online platforms, industry publications, and relevant marketplaces to spot potential infringers.
5. Enforce your rights: If you discover any instances of infringement, consult with a trademark attorney to understand your options for enforcement. This may include sending cease-and-desist letters, pursuing legal action, or negotiating settlements to protect your brand and intellectual property rights.

Do this now! Evaluate your current brand logo and assess its uniqueness and potential for trademark protection. If necessary, conduct a clearance search to ensure no conflicts exist. Consider consulting with a trademark attorney to guide you through the registration process and develop an enforcement strategy. By proactively protecting your brand's logo, you can safeguard your intellectual property rights and maintain a distinctive identity in the marketplace.


Schedule a consultation with Wayne Carroll to discuss your trademark strategy.


BIO: Wayne Carroll founded Inspired Idea Solutions Law Firm in 2013, an IP boutique law firm focused on helping small businesses with intellectual property. At Inspired Idea Solutions, we use a proven process for obtaining IP rights that focuses on aligning the business strategy of small business clients with their IP strategy. We help small businesses implement a strategy to ensure they own and leverage their intellectual property. We also have clear expectations with zero hidden fees.  

In addition to his legal work, Wayne is an Eagle Scout and actively volunteers with the Boy Scouts of America. He is also a proud father of six children and enjoys playing pickleball. Wayne's extensive experience and expertise in intellectual property law make him a highly respected attorney and a valuable asset to clients seeking protection for their intellectual property rights. Wayne can be reached at 480-741-2440 or Wayne@inspiredideasolutions.com. You can also connect with Wayne on LinkedIn.  

Schedule an appointment with Wayne Carroll for a strategy session on protecting and leveraging your intellectual property.

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