master of arts
St. Mary's University of San Antonio, Texas
As a trademark attorney, José M. Gómez utilizes a diverse skill set and broad range of experience in graphic design, law, business administration, information technology, healthcare, and education to engage in intelligent collaboration with our clients. José represents clients nationwide in trademark and copyright matters before the U.S. Patent & Trademark Office and the U.S. Copyright Office. We have reduced our trademark, copyright, and logo design service fees as part of an effort to accommodate budgetary constraints. We hope that you find this website informative. Please contact us with any questions. You can also tawk.to us. Thanks for visiting!
about José M. Gómez
St. Mary's University of San Antonio, Texas
A to Z Sign Company
The Gomez Law Firm, PLC
Oak Park, Michigan
District of Columbia Court of Appeals
United States District Court for
the Eastern District of Michigan
West Coast School of Law
non-traditional legal education recognized under D.C. Court of Appeals Rule 46(c)(4)
New York, New York
New York, New York
Thomas A. Edison State University
Trenton, New Jersey
A to Z Sign Company
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You can also learn about the differences between the different requirements for
trademark, trade dress, and copyright registration.
Please note that each case is different and that no specific result can be guaranteed.
Marks like LYTLE may qualify for trademark registration when they are in a style of lettering distinctly different from the other portion of the trade name and is of such nature and prominence that they create a separate and independent impression." In re Lytle Eng'g & Mfg. Co., 125 USPQ 308 (TTAB 1960).
Excellent examples of these types of marks are DISNEY, UNIVERSAL, FOX, and PARAMOUNT, especially because they each create a separate and independent impression in the film industry.
DISNEY, UNIVERSAL, FOX, and PARAMOUNT logos are registered trademarks.
Imagine the following scenario:
If Walt Disney would have abandoned his efforts in creating the DISNEY characters or animated films we know and recognize so well today, it is likely that DISNEY would only be considered a trade name and would not qualify for trademark registration.
Thoughts to Ponder....
Why trademark and copyright? Consider the following scenario: You start a business or launch a product line, only to discover that another business has been using a similar name or logo to promote its own business or product line.
You receive a cease and desist letter from an attorney demanding that you stop marketing your product or business because they have been using a name or logo that is similar to yours.
What now? Do you stop marketing efforts? Do you select a different name for your business or product line? How much will starting over with a different name cost? The following slides discuss significant trademark and copyright cases that provide guidance on how to deal with scenarios of this kind.
In an interesting twist, the Supreme Court in Star Athletica, LLC v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017),
recently extended copyright protection to works of art affixed to cheerleading uniforms.
The Court's concluded that the aesthetic elements of the uniforms in question qualified as copyrightable graphic works. In its decision, it determined, based on an earlier ruling in Mazer v. Stein, 347 U. S. 201, 214 (1954), that the graphic work incorporated into the uniforms could "be identified separately from” and is “capable of existing independently of” “the utilitarian aspects” of the uniforms.
The Court's reasoning closely resembles the principles laid out in the Traffix Devices case (see previous slide) that the item in question must be merely ornamental and not functional in nature to qualify for trade dress protection.
For some in the clothing industry, this case may be cause for celebration. For others, it may be cause to worry. Moving forward, only the most eloquent arguments for, or against, copyright protection in the clothing context will prevail.
For those who watched the first season of Star Trek: Discovery, the title of the third episode rings true: Context Is for Kings.
As an apprentice in graphic design, I learned that the first impression is usually the last impression.
A wise man in the sign industry taught me that an effective design should be like an "appetizer" that encourages diners to order the main course. An effective design should take into account important factors like visibility, noticeability, and recognizability.
Visibility: If they can't see you, do they know you're there?
Noticeability: Even if they can see you, do they notice you?
Recognizability: Even if they notice you, do they know who you are?
Because we recognize the unpredictability of hourly fees and budget constraints that businesses often encounter for the development and implementation of each project, every effort is made to ensure that our clients receive a flat-fee quote for services.
To get started on your application or logo design, please provide us with a description of your project. We will contact you via email to discuss your fee options for services following receipt of your project description.
If you are seeking to submit several designs or works for trademark or copyright registration, please contact us for a custom flat-fee quote.
If you require specific services, such as a consultation, an application review,
or an opinion letter, please contact us for a quote.
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Please contact us with any questions.
This blog discusses recent trademark and copyright cases that inform our practice of trademark and copyright law.
"Live and Let Live"
The TTAB ruling also explained that a denial is also warranted if the term in question describes one significant attribute, function or property of the applicant's goods or services.**
Thus, when a trademark application is denied on "descriptive" grounds, the "Live and Let Live" principle applies; and while the applicant may continue to use the term, other businesses may use the term, as well.-JMG
"A Shoe By Any Other Name?"
To our more "fashion-oriented" readers, we mean no offense when we say that shoes are generally bought on impulse. Shoes in this sense only are a "dime a dozen." Thus, the level of sophistication involved in the purchase of shoes such as these is much lower, and the likelihood of confusion would be consequently be much greater.
The fifth factor of the duPont test considers the fame of the prior mark.
Van's website shows that the mark has been used since the 1970s and has been sold via mail-order, retail, and, more recently, via online channels, such as Amazon and its own website.
The sixth factor considers the number and nature of similar marks in use on similar goods.
A Google search shows various brands of skate shoes with none appearing similar to the design of the Van's shoe. While the author recognizes that Google is at most a persuasive "authority," it nevertheless generally portrays the various types of shoes are marketed as skate shoes.
The seventh "duPont" factor of the considers the nature and extent of any actual confusion.
If consumers begin, for example, to refer to the Camella Lace-up Sneaker as a "Fake Van's Shoe," this may be considered evidence of actual confusion, or potential confusion at the very least.
The eighth factor considers the length of time during and conditions under which there has been concurrent use without evidence of actual confusion.
It appears that the length of time that both brands of shoes have been marketed is insufficient to determine whether actual confusion exists.
The ninth factor considers the variety of goods on which a mark is or is not used (house mark, `family' mark, product mark).
A Google search shows various brands of skate shoes with marks appearing on most marketed skate shoes.
The tenth "duPont" factor considers the market interface between the products.
Considering that both products are sold in retail outlets and through online channels, the degree of marketing interface between the two products is higher.
The eleventh factor considers the extent to which the owner of the earlier design has a right to exclude others from use of its mark on its goods.
Although the owner of the Van's Old Skool Skate Shoe did not register its design, it nevertheless holds trademark rights based on case law, rather than the Lanham Act, which provides for greater protection. Given the decades-long history of the Old Skool Skate Shoe, Van's would certainly be able to preclude others from using the shoe design or name.
The twelfth factor considers the extent of potential confusion, whether minimal or substantial, between the two products.
The potential for one shoe would be mistaken for the other may be minimal due their distinct features.
The thirteenth "duPont" factor considers any other established fact probative of the effect of use.
Perhaps, the Camella Lace Up Sneaker is just a shoe by any other name. It is important to note that neither the term or design of the "Old Skool Skate Shoe" is a registered trademark.
This case illustrates the importance of trademark / "trade dress" registration is an important first step in product design.
In addition to providing a design with an increased level of protection, the the issues of 'trademarkability' and 'infringement' are determined during the trademark registration process, as opposed to during a more costly litigation process, which can take years to resolve.
*Vans, Inc.; VF Outdoor, LLC, vs. Target Corporation; Farylrobin, LLC, 8:18-cv-02258 (C.D.Cal.).
**Traffix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 32 (2001).
***In re E.I. duPont DeNemours & Co., 476 F.2d 1357, 1361 (1973)
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