Bad Girl trademark saga

I rolled my eyes when I heard that Jenny McCarthy has a new TV show (I've always found her unfunny, rude, and arrogant) entitled The Bad Girl's Guide , however it appears that a company in San Diego is rolling their eyes a little bit more. According to Trademark licensee sues author over use of 'Bad Girl,' Platypus Wear Inc. has been making and licensing clothing under the "Bad Girl" name and mark since 1989. Cameron Tuttle authored a series of books called "Bad Girls Guide," such as "The Bad Girl's Social Whirl" and "The Bad Girl's Guide to the Open Road" (first published in 1999.)

Platypus was OK with this initial trademark usage, as books are quite different than clothes. Platypus has not allowed Ms. Tuttle to obtain a registered trademark of her own, and has raised a stink each time Ms. Tuttle has tried to apply again or use the mark on clothing. According to the article:

Tuttle sought to trademark her "Bad Girl Swirl" name in 2001, but was denied after Platypus protested, according to the suit. A subsequent appeal was denied, and Tuttle has tried unsuccessfully to trademark the name six other times.

Platypus was OK with this other trademark usage, and it would appear to anyone that books and clothing are different goods- and the marks are different. However, now that UPN has picked up the show, Ms. Tuttle is again selling shirts with "Bad Girl's Guide" on them. It should not come as a shock to her that Platypus is unhappy, and rightly so. The two sides have a 6 year history of Platypus trumping the trademark rights and use of Ms. Tuttle, except books.

Platypus earns approximately $50 million per year licensing this mark. If I were Ms. Tuttle, I would settle with Platypus ASAP, because this could be a long drawn out (EXPENSIVE) fight that she will have a really tough time winning.

Google TrustRank trademark

There's a bunch of posts online discussing Google's new trademark application for the mark "TRUSTRANK." While most of the articles and information are very insightful, there is one glaring issue that most commentators have ignored. Almost everyone is referring to Google having a "registered trademark." One site muses:

TrustRank appears to be a bit different, because trademarks actually have to be used in order to be maintained. I've heard the argument made that Google must plan to use TrustRank if they've registered a trademark.

This is a little off the mark. Trademarks can be filed using several different manners- the most popular are "intent-to-use" and "use-based." With a "use-based" trademark application, you provide the first dates of use, and your trademark rights can extend back to that date. If you've been using the mark continually for at least 5 years, you can get a stronger trademark. The "intent-to-use" mark is just that: you have a bona fide intent to use the mark. For a trademark application to proceed to registration, it can be as fast as 1 1/2 years. It is often longer, and sometimes you can delay the application. To obtain a registered trademark from an "intent-to-use" trademark application, you have to prove that you are using the mark in commerce. If not, you can delay for up to 3 years having the mark proceed to registration (then the mark has to be in use or the application withdrawn.).

If you are planning on launching a new product or service, it is recommended to file an "intent-to-use" trademark application well in advance. You can point to your application filing date as a constructive "first use" date, and tie any trademark rights to that date. Trademark rights go whoever uses the mark first. You do not want to lose your mark because you neglected to file a trademark ahead of time.

So it looks like Google is just preparing to use the mark. They can start using it at any time. It's a good thing that Google is filing ahead of time, as in the past they used marks like "gmail" without checking to see if someone else had trademark rights for the mark.

The status of Google's application is online at the USPTO here.

IP disputes out of control?

It always pays to search around and read the fun news articles. Apple Computer is being sued for their new operating system, called Tiger. Tiger Direct is not happy, claiming trademark infringement. This article offers an interesting idea. Bob Young, a guy big into Linux, and owner of the Ontario Tiger-Cats, has offered Apple the rights to the Tiger name. His team has been around for 136 years, which should give some nice rights to the term "Tiger." The article states:

Young said the press release was a way to “have fun” with the situation, but it also raises an issue crucial to the IT sector, that of intellectual property (IP) rights. Young figures IP disputes in the tech industry are out of hand.

“Tiger the operating system and TigerDirect the mail order company, there’s no possibility for confusion on the consumer’s part,” he said, pointing out that trademark laws are supposed keep consumers from getting confused as to who made a product, what it does, etc.

But in this case, the product isn’t the problem, Young said. “It’s the word at issue. Going after Apple for using ‘Tiger’ is going after them for using a common word, not for trademark. It’s a great example of how out of control the IP claims are in our industry.”

Mr. Young does raise some interesting points. The question boils down to whether consumers will confuse the two tigers. Such a generic name can indeed be trademarked, and it is actually stronger than a more descriptive term, such as Windows (which describes the layout of the folders on the screen). The more imaginative the trademark, the more protection it obtains. Thus the term Kodak, which was invented by the company, is quite strong. There has to be some sort of imaginative leap to get a strong trademark, and making up a name results in a strong trademark. "George's 15 minute oil change" does not requires almost no imagination at all, and is thus considered a weak trademark. Using the term "tiger" for a shipping business or an operating system could be considered an imaginative use, because tigers have nothing to do with either industry or service. It will be a tough fight for both sides. I hope they settle, as I see this case going either way.

As for Mr. Young, he has trademark rights to the term Tiger-Cats, and that's not what Apple calls their operating system. He'd need the rights to just the term Tiger, which is a baseball team in Detroit (among other locations). I'm also not sure if the rights for a baseball team would apply well in this case. While Tiger Direct is not producing operating systems, they are involved with computers and the Internet- a much closer connection to Apple's use.

Stay tuned...

MDPD (TM)

The Miami-Dade Police Department, in an attempt to reign in use of their name and shield, is considering filing trademarks (so says Local6.com). The article reports that with the increased popularity of the Miami-Dade PD, in such shows as CSI: Miami, the department would like to have control over their image/representation. This is follows other police departments, such as the New York Police Department and the Los Angeles Police Department that have pending applications and/or registrations to protect their likeness. They're currently protecting their logos, but I wonder if their names are soon behind. Buy those "NYPD" and "FDNY" t-shirts now, soon the price may go up