News & Politics » Letters

Legal Eagle

by

comment

[Re: "A Bone to Pick," October 6]

Dear editors:

Not content to butcher the state of patent law (Reader, Vol. 29, No. 50, Leader, "Pipe Dreams"), as commented upon in letters to the editor (Reader, Vol. 30, No. 1, page 3), you have repeated the process with several inaccuracies regarding the trademark law. The following quotes, apparently not independently researched, contain howlers that have brought smiles to my colleagues' faces.

(a) Doing "a trademark search" is an art. It is not enough to search the U.S. Patent and Trademark Office (USPTO) records for a federal trademark registration and call that a trademark search. All state and local sources, including telephone books, restaurant guides, and other possible uses of a mark should be searched before use of a mark could be given general approval.

(b) "Consulted with the Federal Trade Office"--There is no such animal. The U.S. Trademark Office, or more precisely the U.S. Patent and Trademark Office, makes their records available to the public for searches (see www.USPTO.gov), but no consultation with anyone at the USPTO will provide the "right" to use a mark. In fact, USPTO employees are prohibited from providing any opinion regarding who has the right to use a mark.

(c) "Federal Trademark Reservation"--Again, no such animal. One can file an "Intent to Use" Trademark Registration Application, before one actually uses the mark, but the registration only issues after examination of the issues by the PTO of whether the mark is inherently registerable and does not conflict with other U.S. Trademark Registrations. Only if no one else opposes registration and the mark is actually used with the goods or services for which the registration is sought, will the mark be registered.

In this case, the mark was sought by the Einhorns' attorney on behalf of their 551 Ogden Inc. Corporation, see attached Abstract of Application Serial No. 75/466,496 (publicly available on the USPTO Web site), but the registration will not issue until the commencement of actual use of the mark with the restaurant service for which the registration is sought.

Incidentally, the mark "Bone Daddy" for restaurant services is not unique to the Einhorns, see attached listing of "Bone Daddy" applications and registrations. A Saint Louis corporation has previously sought but then abandoned an application for registration of the "Bone Daddy" mark for restaurant services, see attached.

Coincidentally, the Einhorns' application for "Bone Daddy" has been allowed by the PTO as of September 26, 2000, see attached status report on their application, also publicly available on the USPTO Web site.

If it is considered beneficial to the credibility of the Reader to have edited any future drafts of articles touching on intellectual property law (including patent, trademark, copyright, trade secret, and unfair competition issues), please let me make my services available. As an avid reader for over 25 years, I consider the Reader a source of valuable information, and would like to think that your other articles are not as rife with misleading inaccuracies.

Very truly yours,

Vangelis Economou

Ladas & Parry

Law Offices

Steve Dolinsky replies:

Mitch Einhorn told me he had gone so far as to seek a "Federal Trademark Reservation"--apparently shorthand for an "Intent to Use" Trademark Registration Application. Since Mr. Einhorn is not an attorney, and this was his understanding of the "Intent" application, I should have double-checked with his attorney for the exact nomenclature of both the application and its status. Thank you for spotting this error.

Add a comment