This sixth episode is about the worldwide fight over Budweiser trademarks, the new Canadian Trademark Act and Mr. Softee!

Please leave us your comments regarding this episode!

IP FRIDAYS

 

Co-Presenters:

Rolf Claessen and Kenneth Suzan

 

Episode 6 – July 11, 2014

 

RC = Rolf Claessen

KS = Kenneth Suzan

 

 

KS: Hello and welcome to this episode of IP Fridays. Our names are Ken Suzan and Rolf Claessen and this is THE podcast dedicated to intellectual property. It does not matter where you are from, in-house or private practice, novice or expert, we will help you stay up-to-date with current topics in the fields of trademarks, patents, design and copyright, discover useful tools and much more.

 

RC: Thank you very much for tuning in to another episode of IP Fridays. We are very glad that you have tuned in to this episode. First of all, if you are listening to this on an iOS device, please visit www.ipfridays.com/itunes to subscribe to the podcast if you haven’t already done so and give us a review. We would be really grateful if you could do that. Also, if you want to tweet about us, you can tweet easily by going to www.ipfridays.com/love. But now I will tell you what we have in store for you today. We will talk about the latest developments in the Budweiser fight. The worldwide fight over Budweiser trademarks between the Czech Republic and the U.S. and we will have the latest updates about the new Canadian Trademark Act and we will also tell you about Mister Softee and I can hear his ice [cream] truck already….

 

KEN SUZAN’S DISCUSSION REGARDING MISTER SOFTEE

 

KS: The familiar chimes of a Mister Softee truck are a delight to the ears of many. Mister Softee is a well-known ice cream truck business that licenses its various trademarks to franchisees, who then own and operate Mister Softee ice cream trucks using those trademarks. The marks are numerous: the name “Mister Softee” and its logo, the “Mister Softee” ice cream jingle, and the design of the Mister Softee trucks—white trucks with blue horizontal stripes and blue wheels, that include an ice cream cone head with a red bow tie and a blue jacket and various phrases promoting sundaes, shakes, and “the Very Best” ice cream products.

 

Dimitrios Tsirkos is a former Mister Softee franchisee, who operated sixteen Mister Softee trucks within New York City. Tsirkos eventually stopped paying royalties and following the terms of the Mister Softee franchise agreements, and the company decided to terminate his franchises. This didn’t stop Tsirkos from continuing his ice cream sales; he rebranded his trucks as “Master Softee” or “Soft King” trucks, retaining the color scheme, slogans, and similar ice cream cone head character as the official Mister Softee vehicles.

 

Mister Softee is now suing Tsirkos in federal court in the Southern District of New York, claiming that he is not only infringing on their trademarks, but also violating a non-compete provision preventing Tsirkos from competing with Mister Softee for two years after their franchise agreements were terminated.

 

Mister Softee was granted a preliminary injunction on June 5 preventing Tsirkos from operating his trucks within his former franchise territories, as well as any other franchise territory within a five mile radius. Judge Swain, applying an 8-factor test to determine whether the Tsirkos trucks could be confused with Mister Softee trucks, found that all eight factors were met: the Mister Softee logo and the trade dress create a “distinctive and arbitrary” mark, and the Tsirkos trucks were “strikingly similar” to the Mister Softee trucks by using the same color sc...

This episode is about the recent cancellation of the Redskins trademarks, an interview with Elizabeth King about non-traditional trademarks as well as Facebook drones.

Please leave us your comments regarding this episode!

IP FRIDAYS

 

Co-Presenters:

Rolf Claessen and Kenneth Suzan

 

Episode 5 – June 27, 2014

 

RC = Rolf Claessen

KS = Kenneth Suzan

EK = Elizabeth King, Partner at Conley Rose in Houston, TX

 

This is Elizabeth King of Conley Rose in Houston, TX and you are listening to IP Fridays.com.

 

KS: Hello and welcome to this episode of IP Fridays. Our names are Ken Suzan and Rolf Claessen and this is THE podcast dedicated to Intellectual Property. It does not matter where you are from, in-house or private practice, novice or expert, we will help you stay up-to-date with current topics in the fields of trademarks, patents, design and copyright, discover useful tools and much more.

 

RC: Thank you very much for tuning in to the 5th Episode of IP Fridays. We are very excited that we already have 1,000 downloads of MP3 files for our episodes. Thank you very much. We have exciting things to share today. We will hear about Facebook drones, we have an interview with Elizabeth King about nontraditional trademarks, and we will talk about the Redskins. We will talk about Redskins right now. Ken, can you tell us more about the Redskins?

 

KEN SUZAN’S DISCUSSION REGARDING THE WASHINGTON REDSKINS

 

KS: Rolf, the Washington Redskins began as a professional football team in the very early days of football, in the year 1932. The team registered its “Redskins” name as a trademark in the 1960s, and continues to use the name to this day on official team merchandise. However, many consider the name to be a derogatory and offensive reference to Native Americans. In spite of public backlash, the owner of the Redskins, Dan Snyder, has publicly stated his unwillingness to consider a change to the team’s name. NFL Commissioner Roger Goodell, himself a childhood Redskins fan, has backed Snyder’s decision.

 

The team has also faced resistance to its trademark rights in the Redskins name. Section 2(a) of the U.S. Trademark Act (15 U.S.C. § 1052(a)) disallows the registration of trademarks that “disparage . . . persons . . . institutions, or beliefs[,]” or “bring[s] them into contempt, or disrepute.” Believing the Redskins name to be disparaging, a group of Native Americans in 1992 sought cancellation of the Redskins trademark in front of the Trademark Trial and Appeal Board (TTAB), the body of the Patent and Trademark Office (PTO) that handles trademark registration and challenges to trademarks. After seven years of litigation, TTAB found the trademark to be disparaging under the Trademark Act and cancelled its registration. A drawn-out appeals process followed, in which the challengers were eventually found to have delayed too long in bringing suit against the Redskins trademark.

 

Now, a second, younger group of Native American challengers has come forward, and the TTAB has once again decided the Redskins trademark should be canceled due to the disparaging nature of the “Redskins” term. The 81-page majority opinion, issued by TTAB on June 18, relied upon expert opinions and resolutions by Native American tribes to find that not only has the term “Redskins” retained its meaning as a name for a Native American individual, but that the “Redskins” name is collectively found disparaging and offensive by a “substantial composite” of Native Americans. The TTAB found the laches (delay) defense earlier relied upon by the Redskins to be inapplicable.

 

The Redskins can still continue to enforce their trademark pending appeal of the TTAB decision, which will likely be a lengthy process; the appeal of ...

This episode is about Project 72, a project aimed at proper copyright protection and royalties of music older than 1972. Also we have an interview with Jeremy Phillips, founder of the IPKat and Class 46. He will tell us about the history of these blogs. And we also have some information on a really useful tool in social media that we both use – Buffer.

Please leave us your comments regarding this episode!

IP FRIDAYS

 

Co-Presenters:

Rolf Claessen and Kenneth Suzan

 

Episode 4 – June 13, 2014

 

RC = Rolf Claessen

KS = Kenneth Suzan

JP = Jeremy Phillips, IPKat Blog

 

This is Elizabeth King of Conley Rose in Houston, TX and you are listening to IP Fridays.com.

 

KS: Hello and welcome to this episode of IP Fridays. Our names are Ken Suzan and Rolf Claessen and this is THE podcast dedicated to Intellectual Property. It does not matter where you are from, in-house or private practice, novice or expert, we will help you stay up-to-date with current topics in the fields of trademarks, patents, design and copyright, discover useful tools and much more.

 

RC: Thank you very much for tuning in to yet another episode of IP Fridays. We have 750 downloads of actual MP3 files up from 440 downloads two weeks ago for the third episode so we are growing exponentially so thank you very much dear listeners. If you want to subscribe to our podcast go to ipfridays.com/subscribe or if you want to go directly to the iTunes page or within iTunes go to www.ipfridays,.com/itunes on your iOS device or if you want to tweet about us, Twitter is really working very well for us, then you can go to ipfridays/love. Also, our dear listener Bob Rees sent us a really cool picture with his patented foam technology depicting IP Fridays so if you want to go to the show notes at www.ipfridays.com/4 then you can see the cool picture from Bob.

 

So what do we have in store for you today? We have some good news and recent developments for copyright holders of music from before 1972…then we have an interview with Jeremy Phillips who is also known as the IPKat or the IPKat as the team calls him. He will tell us about the history of the IPKat and also the history of the blog Class 46. Also we want to tell you about a really cool tool for you and, as a matter of fact, we will do that right now.

 

KS: Rolf, I’m sure that many of our listeners are actively involved with social media as part of their daily marketing routines. One particular App and Website that I have been using frequently is called Buffer. What I like about Buffer is that you can load some tweets that you would like to go out at various times during the day. You can then also see how many people are clicking on the particular tweets that you are sending out and it is a great way to manage your feed that goes out under your name on Twitter. I think getting the statistics is a great thing so you can see what is the reach of your particular message. Is it important to tweet in the morning or the afternoon or at night? If there is a particular country that you would like to target, obviously, if people are sleeping they are not likely to be reading your tweets but if you figure out what a good time is to tweet out to the people in Europe or Asia, Buffer can help you. It is a great way to get your message out to many people and can be a great thing for you to integrate into your social media practice. You can get more information through their faq that is available at bufferapp.com/faq. The Website is available at www.bufferapp.com. Happy tweeting!

 

RC: If you want to learn more about this, go to www.ipfridays.com/buffer.

 

This episode is about the recent Petrella Case decided by the US Supreme Court, the second part of the interview with John L. Welch of the TTABlog, where he talks about the recent important cases of the TTAB, and the latest about generic toplevel domains.

Please leave us your comments regarding this episode!

IP FRIDAYS

 

Co-Presenters:

Rolf Claessen and Kenneth Suzan

 

Episode 3 – May 30, 2014

 

RC = Rolf Claessen

KS = Kenneth Suzan

GF = Gordon Firemark, Entertainment Law Update Podcast

JW = John Welch, Author of the TTAB Blog

 

This is Elizabeth King of Conley Rose in Houston, Texas and you are listening to IP Fridays.com.

 

KS: Hello and welcome to this episode of IP Fridays. Our names are Ken Suzan and Rolf Claessen and this is THE podcast dedicated to Intellectual Property. It does not matter where you are from, in-house or private practice, novice or expert, we will help you stay up-to-date with current topics in the fields of trademarks, patents, design and copyright, discover useful tools and much more.

 

RC: First of all we are really happy that we get lots of feedback. One feedback comes from Gordon Firemark in Los Angeles.

 

GF: Hi guys. This is Gordon Firemark from the Entertainment Law Update Podcast at EntertainmentLawUpdate.com. I want to congratulate you on getting your new IP Fridays podcast up and running. I am looking forward to being a loyal listener. I also wanted to ask you about possibly interviewing you both about the experience of getting your podcast set up. I teach a course called Power Podcasting for Lawyers in which I teach lawyers all about the reasons why they should podcast and how to get set up and I think your experiences with your new show would be very instructive so I wonder if you would contact me. I am sending you my email address and if you would like to get in touch, I would love to record an interview over Skype one of these days. Thanks.

 

RC: Also, Ed Timberlake in Carrboro, North Carolina. He is a passionate trademark prosecutor who wants to be on the show. He will be on one of the next shows. And we got some really funny feedback from Bob Rees. Unfortunately it is a picture. He has patented some foam and bubble technology and he made a really nice picture “Thank God It’s Friday” with his bubble technology and you can have a look at it at www.ipfridays.com/rees.

 

We didn’t even start a month ago and we already have 444 downloads, that means 444 times people downloaded our shows and listened to them. That is really great given that we are in a very small niche of intellectual property. Most people come from the U.S., Germany and the U.K. We also already have 125 email subscribers. Thank you so much. If you want to tweet about us go to www.ipfridays.com/love and it will prepopulate a tweet where you can tell all your Twitter followers. You can also like us on Facebook at www.ipfridays.com/like and, of course, we are also on LinkedIn at www.ipfridays.com/linkedin.

 

I heard about a recent case decided by the U.S. Supreme Court. It is referred to as the Petrella case. It is a copyright case and it is about the doctrine of laches and since I am not really the copyright guy, Ken can you tell us about this case?

 

KS: Rolf, the United States Supreme Court recently issued an important decision with respect to the laches defense. The case is Petrella v. Metro-Goldwyn-Mayer, Inc.

 

Giacobbe “Jake” LaMotta is a formal professional boxer and World Middleweight Champion known for his several bouts against the legendary Sugar Ray Robinson. Later in life, LaMotta,

RC = Rolf Claessen

KS = Kenneth Suzan

JW = John Welch, Author of the TTAB Blog

BD = Dr. Brian Dorn from Barnes & Thornburg LLP

KS: Hello and welcome to this episode of IP Fridays. Our names are Ken Suzan and Rolf Claessen and this is THE podcast dedicated to intellectual property. It does not matter where you are from, in-house or private practice, novice or expert, we will help you stay up-to-date with current topics in the fields of trademarks, patents, design and copyright, discover useful tools and much more.

RC: The first thing we want to talk about is fee reductions at the USPTO. Ken, can you fill in our listeners on this?

KS: Rolf, there may be some good news for practitioners to report to their clients in the coming months. That’s in connection with a proposed rulemaking that the USPTO issued on May 9, 2014. The USPTO is proposing to reduce certain trademark fees and

also to promote efficiency for their customers. They are talking about reducing the application filing fee by $50 where the current filing fee is $325 to $275 per class. They are also looking at lowering the TEAS Plus option by $50 where that would be lowered from $275 to $225 per class. There will also be some fee reductions for renewals. That definitely is indeed good news which may come down the pike if everything goes forward at the USPTO with their rule making. One quote I thought was of interest is from the Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO, Michelle K. Lee. Ms. Lee states, “The proposed fee reductions advance the USPTO’s core mission of serving the public in the most efficient and cost effective manner possible.” She goes on to say, “Lower fees will lessen the burden for entrepreneurs to obtain the crucial trademark protection they

need to grow their businesses, while increased electronic processing improves agency

efficiency.” Rolf, comments are due to the USPTO by June 23rd and people can go

online to [email protected] for submitting their electronic comments. We will

put a link to that email on ipfridays.com.

RC: If you want to know more about this, please enter www.ipfridays.com/usptofees.

Next up is an interview with John Welch, author of the TTAB blog.

INTERVIEW BETWEEN ROLF AND JOHN WELCH, AUTHOR OF THE TTAB BLOG

RC: I am happy to meet John Welch today at the INTA meeting in Hong Kong. He is the author of the TTAB blog, a very famous blog and probably one of the most popular blogs in the IP world. Thank you very much for being here today.

JW: Thank you for inviting me Rolf.

RC: Why don’t you tell our listeners a little bit more about yourself?

JW: Ok. I am glad you invited me today because I think after a couple of months from now you might not be talking to me after the United States knocks Germany out of the World Cup. But that remains to be seen.

I am an attorney who practices law in Cambridge, Massachusetts. I have been practicing law for nigh on four decades of both patent law and trademark law. But in recent years, I focused more on trademarks. About ten years ago, I started up the TTAB blog. It is about to reach, as I say, its tenth anniversary. I try to keep track of the Trademark Trial and Appeal Board, both for my own edification but also because I like to write about it and I like to blog about it and that’s how it came about.

RC: So John, why don’t you tell us more about the TTAB. Most of our listeners may not be familiar with the TTAB.

JW: Sure, let me just preface it by saying, for people who are not familiar with the Trademark Trial and Appeal Board (TTAB), it’s the body in the Federal Government in the USPTO that hears appeals both from e...

This episode is about an interesting trademark case Candy Crush, a patent litigation case Marvell, new treatment of black & white trademarks in Europe as well as a useful tool to do a free similarity search on trademarks.

ROLF: Welcome to the very first episode of IP Fridays, the new podcast on intellectual property matters such as trademarks, patents, designs, copyright and any other issues in that field.  Your hosts are Ken Suzan, Hi Ken.  You are on the phone with me?

KEN:   Yes, hello Rolf.

ROLF: Very nice to have you as a co-host. I am Rolf Claessen from Cologne, Germany.  I am partner with patent attorneys Freischem.  We are a medium-sized IP firm mostly handling domestic clients in the field of patent and trademarks. How about you, Ken?

KEN:   I am of counsel here at Barnes & Thornburg in the Minneapolis office.  I practice primarily trademark, copyright and Internet law.  I have been practicing since 1997; first in New York, then Buffalo, and then I joined Barnes & Thornburg in 2012.

ROLF: So what do you think is our goal with this podcast?  What do you want to accomplish with it?

KEN:   I think it is important to help our listeners stay on top of the late-breaking news and information and learn about tools on how they can increase the productivity of their practice, ways to get information on the Internet.  There are so many sources these days for getting information and staying on top of things.  Hopefully, we will be able to guide our listeners in finding the best tools to make sense of all this material, text and information that you can find primarily on the Internet.

ROLF: Right and maybe we can even have some extra tips that our listeners didn’t know about before.  We absolutely hope so.

KEN:   Oh sure, definitely.

ROLF: So why don’t we just jump in and start with some current issues.  I heard about the Candy Crush Saga case.  Did you hear about this?  This was a trademark case in the U.S.  Maybe you are the guy to talk about that?

KEN:   Yes, well that is definitely something that has been hitting the news lately.  We all know about Candy Crush.  That was an interesting case in the sense that the people who were trying to trademark the word “Candy” — they ran into the people who had owned a trademark for a “Candy Swiper” and they ended up abandoning their application for “Candy” and now they obtained rights to a trademark called “Candy Crusher” adding the letters “er” after crush.  So that is one case in which that particular trademark owner King.com is dealing with one entity.

Then they also have at the same time the issue of the word “Saga”.  They were involved with a dispute with The Banner Saga.  There is a company called Stoic and they were able to resolve that matter as well.  So, in essence, you’ve got these situations where games and apps all are out there competing for a limited number of words and names and this is an important case at least to look at and see how these things are being resolved.

ROLF: Right, and my understanding is that Stoic had the earlier trademark and then Candy Crush tried to trademark their name “Candy Crush” and then “Candy Crusher”.  That is correct?

KEN:   Well, in this case there are two different companies.

ROLF: Oh, right.

KEN:   You’ve got the company that owned “Candy Swiper”.  They went out and opposed when the “Candy Crush” people tried to get the word “Candy” and then that ended up with them abandoning their trademark for “Candy” and then moving forward after they acquired rights to “Candy Crusher” which goes back to 2004 according to a use date listed in their trademark application file...