Trademarkology: The Law of the Brand

Trademarkology: The Law of the Brand

Using Trademarks for Good!

Posted in Uncategorized

Monday is Martin Luther King Jr. Day, a national holiday marking the birthday and commemorating the life of one of our most venerated civil rights leaders.

The Corporation for National & Community Service (a federal agency that operates, promotes, and supports community service programs and activities) encourages everyone to honor Dr. King by marking the holiday with a day of service to others. Service projects may lead us closer to Dr. King’s vision of a “Beloved Community,” a just society achieved by using nonviolent direct action to address social problems. CNCS uses the following logo to promote its call to action:

MLK

Last year, CNCS filed several trademark applications to register marks associated with its community service programs. But CNCS did not seek to register the mark above. It may be that conflicting claims in the rights associated with Dr. King’s likeness make registration of the mark in the name of CNCS problematic.

Especially because federal registration of a mark requires use “in commerce,” it is easy to think of trademark protection as something confined to the world of for-profit businesses. But, as this example shows, that is not the case. Many of CNCS’s trademark applications seek protection of marks used in connection with the service of “promoting individual participation in national service, community service, and volunteer activities” in Class 35. Non-profit organizations, foundations, and government agencies may protect the goodwill associated with marks used to carry out their missions via trademark registration. Perhaps CNCS is considering protecting the tag line portion of the mark above “Make it a Day On, Not a Day Off” independently since it is catchy and motivating.

If you are inspired to engage a day of service in honor of the Martin Luther King, Jr. Day holiday, you can learn more about CNCS’s promotion and support of MLK Day projects and find volunteer opportunities near you here: https://www.nationalservice.gov/mlkday.

 

 

 

 

Top 10 Trademark “To-Do’s” for Good Business Health in 2017

Posted in Trademarks

Welcome to 2017!   With a new year, comes new resolutions – often promises of being healthier and generally vowing to be better. While I was on a plane on Monday, a millennial guy seated next to me was writing out his list of new year’s resolutions. One that caught my eye was a resolve to “do all my homework”. While this made me chuckle, it is good advice for entrepreneurs and seasoned businesses alike. Have you done all your homework to ensure you are in good business health?

Too often, businesses ramp up on a shoestring budget without a focus on protecting your brands and business names. Ideally, all the trademark homework should be completed before the business launches, but that isn’t always possible. Trademark protection is often relegated to the future if any when a business succeeds. But waiting until “later” may be too late to carve out the same level of protection that would have been available on the frontend. If budgetary or time constraints have you putting trademarks on your future “to-do” list, here is the top 10 list of trademark strategies for you. Calendar a specific date (and actually enter it into your calendar) when you will revisit your trademark strategy. Protect yourself to make sure you don’t experience a disaster like Mariah Carey’s New Year’s Eve debacle.

TOP 10 TRADEMARK TO-DO’S FOR 2017:

  1. Choose – carefully select a mark that will have some power and help you cut through the clutter if consumers search for you online. Choose marks that are distinctive. Common words and descriptive wording are going to be used by numerous third parties and are going to be difficult to protect. For best results, make up a word (i.e. GOOGLE), or use a word that is arbitrary and has no real significance to your industry (i.e. APPLE for computers). You can add a descriptive tagline if you need to tell consumers what you do, but try to avoid descriptive terms in your primary brand.
  2. Search – make sure your mark is protectable and no one else is already using a similar mark who could sue you for infringement or demand you change mid-stream. It is far less expensive to do this homework before you invest in letterhead and signage.
  3. Register – lock-in your nationwide rights to use your trademarks by federally registering them with the U.S. Patent and Trademark Office. This includes your company name as well as the names of your products or service offerings, your logo designs, and any taglines or slogans.
  4. Domain Names – register all of the domain names associated with your trademarks and make sure the registrations are owned in the name of your business – not the names of individual employees or your web designer.
  5. Think Global – register your trademarks in any foreign country where you have customers, manufacturing, or distributors.
  6. Website – Ensure your website conveys a consistent brand message with your registered trademarks, and ensure you have a contract that specifically says you own the website if designed by another person.
  7. Renew – trademark registrations must be renewed periodically or they will be automatically cancelled. Don’t miss these deadlines. Calendar them in your business calendars. For federal registrations, additional filings are due between the 5th and 6th anniversary of registration and at each 10 year anniversary.
  8. Become Incontestable – a federal registration gives you the opportunity to claim incontestability status once you have been registered for five years. Once granted, the registration may only be challenged on limited grounds.
  9. Police – periodically conduct at least an internet search to make sure no one else is using your brand.   You can order a clearance search at strategic intervals to
  10. Enforce – if you learn of anyone using your mark, you have a duty to protect it or can lose your trademark rights. Work with an attorney to send cease and desist letters or take other appropriate actions to protect your brands.If you aren’t willing to do your homework, then disaster may follow, Mariah Carey style. Another company who does take the steps to protect their brand could take over as the headlining act and force you to leave the stage and change your name.I don’t think Mariah Carey is going to change her name anytime soon, but the horrid performance will live in infamy. The Coyote mascot for the Spurs even joined in the mockery with a hilarious reenactment. Click here for the video.

    san anti

It’s Like That: RUN-D.M.C. Sues Amazon and Wal-Mart for Trademark Infringement

Posted in Trademarks

It was December 29th in NYC in the court
When I see a complaint filed because defendants purport
To be selling lots of products and using remarks
That are infringing, oh my God, the RUN-D.M.C. trademark.

If you grew up in the ’80s, your favorite Christmas song just might be Christmas in Hollis. This year, Run-D.M.C. made a holiday appearance for a reason other than just on the radio. Run-D.M.C. filed a lawsuit, alleging that Amazon and Wal-Mart, among others, sold clothing and accessories bearing the mark RUN-D.M.C. without authorization. The complaint alleges that the defendants are advertising, selling, manufacturing, promoting and distributing products claiming to be “RUN-DMC styled products,” and are also selling products that directly infringe the rap group’s allegedly famous mark. Specifically, Run-D.M.C. takes issue with the use of its mark in advertising titles, as shown below:

RUN-DMC glasses

 

Run-D.M.C. also objects to use of its mark directly on products, such as on this shirt:

YYHU run dmc

 

The complaint claims that these uses of the RUN-D.M.C. mark constitute trademark infringement, dilution, and unfair competition. Will the claims stick? It’s tricky. For starters, Run-D.M.C. relied on the Federal Trademark Dilution Act for its dilution claims, which was replaced in 2006 by the Trademark Dilution Revision Act. Additionally, Run-D.M.C. claims that it has suffered $50,000,000 in harm as a result of the infringement and dilution. Run-D.M.C. might have hard times proving that the actions of the defendants resulted in $50,000,000 in damages. However, Run-DMC claims its trademark products have earned the artists over $100 million throughout the years, including a $1.6 million endorsement deal with Adidas. Thus far, Amazon and Wal-Mart have declined to comment and have yet to file a responsive pleading. It will be interesting to see how the defendants respond to Run-D.M.C. raising hell through their trademark infringement and dilution allegations.

What Do You Want for Christmas?

Posted in Trademarks

Getting tapped to post on Trademarkology the week before Christmas is quite an honor.  It’s almost as good as being asked by Santa, “What do you want for Christmas?”

Speaking of Santa, I was surprised to see just how popular SANTA is in the world of trademarks.  Did you know there are more than 2,000 active registrations and applications at the United States Patent & Trademark Office (USPTO) where SANTA is all or part of the mark? (Now you do.)

One can find lots of registrations and applications which evoke the more traditional notions of Dear St. Nick such as the following:

DEAR SANTA

SANTA

 

 

 

HERE COMES SANTA

SANTA CLAUS IS COMING TO TOWN

ASK SANTA

SANTA

SANTA’S LITTLE HELPER

OFFICIAL NORTH POLE STYLE SANTA’S LITTLE HELPER

NORTH POLE

 

 

 

(For all you trademark lawyers out there: no, this was not registered as a certification mark.)

As we learned as children, Santa knows when we have been naughty or nice, so this mark seems applicable:

PSYCHIC SANTA

And speaking of “naughty and nice” – not all the SANTA marks are nice. For example, check out these marks which are on the naughty side:

BAD SANTA

DAMN SANTA

DIRTY SANTA

SANTA’S FAVORITE HO

Sometimes, trademark applications can be inspired by current events. Remember all the attention Mall of America received this season when it hired its first black Santa? Twitter and Facebook lit up like a Christmas tree with tweets and posts – and fake news – about the event.

The USPTO now has 13 active applications to register BLACK SANTA. And how would you like to be the lucky owner of the only registration for BLACK SANTA? Buh Buh Island, LLC applied for the mark back in 2013 and just saw its registration issue earlier this month. Talk about great timing.

And, if you have had enough of Christmas carols at the malls and are in Santa overload, perhaps you will be relieved to know there is always:

SANTA CLAUS ANONYMOUS

 

NHL Team Trademark Gets Iced

Posted in Trademarks

The National Hockey League is adding a new expansion team in Las Vegas that will play its home games in the impressive new T-Mobile Arena located on the strip.  The new team is scheduled to start playing in the 2017-2018 NHL season.  So, this new team will need a new team name and—you guessed it—trademarks!

Like any new business, the team has been working hard at the task of picking a new team name and trying to secure trademark protection. Interestingly, when asked about the team name, General Manager George McPhee said they wanted “a unique identity.”  To see a short video about the name selection click here.  The Vegas franchise focused on names that involved Knights.

The franchise is owned by Black Knight Sports and Entertainment LLC, run by Bill Foley. Mr. Foley’s interest in Knights apparently stems from his time attending West Point military academy.  West Point’s sports teams are known as the Black Knights.   Foley initially wanted to call the new hockey team the Black Knights but received push back from West Point, according to the Army Times.  Knights also appear in other Army teams – the U.S. Army Parachute Team is called the Golden Knights, and it appears Mr. Foley next moved his choice for a team name to the Golden Knights.

On August 23, 2016, the team filed 16 different trademark registration applications with the United States Patent and Trademark Office to cover various designs and logos for six potential options for team names based on “Knights”:

jlk 1-6

If budgets allow, you too can file multiple alternative trademark applications and see which marks get approved before you ultimately select your final name for a new business or product. Although it usually only takes the Trademark Office 3-4 months to complete the initial phase of examination, the team didn’t wait.  On November 22, the team unveiled its chosen new name – the VEGAS GOLDEN KNIGHTS.

twitter

Two weeks later, the Trademark Office issued a preliminary refusal to register VEGAS GOLDEN KNIGHTS, as well as several of the other alternative marks based on the potential to cause confusion with other collegiate sports teams who were already using KNIGHTS, GOLDEN KNIGHTS, or SILVER KNIGHTS. Apparently, athletic Knights aren’t actually all that unique. And, it is unclear whether the U.S. Army Parachute Team will object.  The Army doesn’t own a formal trademark registration for GOLDEN KNIGHTS, so the Trademark Office cannot use the parachute team name as a reason to refuse the NHL federal registration.  However, the Army has the right to oppose registration based on its unregistered rights acquired through decades of use by the parachute team.

The NHL team is undeterred and plans to file a response, arguing in part that because they are using GOLDEN KNIGHTS for a professional team, there shouldn’t be any confusion with anyone else using GOLDEN KNIGHTS for a college team. Their response is due to be filed by June 7, 2017.  It remains to be seen whether they will only be pursing the applications for VEGAS GOLDEN KNIGHTS at this point or will present similar arguments for the other applications pending for their alternative team names.

Use It (in Commerce) or Lose It!

Posted in Trademarks

Before a U.S. application filed on an in-use or intent-to-use basis may proceed to registration, the applicant must show that the mark has been used in commerce.  Being right about whether the mark has been used in commerce is important. In fact, the validity of the resulting registration may depend on it. Using a mark in commerce means using it in commerce Congress may regulate. Generally, this means using the mark in interstate commerce, foreign commerce, or commerce with Native American tribes. If you want more detail and citations to the statute, you can read this article.

Determining when and how to claim that a mark has been used in commerce is sometimes easy. When someone has shipped goods bearing the mark across state lines, there is use of the mark in commerce. But sometimes deciding whether use of a mark rises to the level of use in commerce is not so easy, especially when sales occur within a single state. Recently, the Federal Circuit issued an opinion that makes this a little easier for mark owners seeking to prove use of a mark in commerce.

In Christian Faith Fellowship Church v Adidas AG, Case No. 2016-1296 (Fed. Cir. Nov. 14, 2016), the U.S. Court of Appeals for the Federal Circuit held that the in-state sale of two hats bearing the mark to an individual who resided in another state and traveled to the mark owner’s bookstore to make the purchase counts as use of the mark in commerce.

churchhat

Christian Faith Fellowship Church (the “Church”) serves a congregation comprised of Illinois and Wisconsin residents. It began selling clothing bearing the phrase ADD A ZERO in its bookstore in January 2005 as part of a fundraising campaign.

shirt

The Church applied to register the mark in standard character and stylized forms for use in connection with clothing. The applications were based on use in commerce. Shortly after the applications proceeded to registration, Adidas AG sought to cancel the registrations because they had been cited as obstacles to registration of Adidas’ application for ADIZERO for use with clothing.

The Trademark Trial and Appeal Board (the “TTAB”) granted Adidas’ petition for cancellation on the grounds that the Church had failed to use the marks in commerce prior to filing the in-use applications to register ADD A ZERO. The Church argued that it had made use of the mark in commerce, as evidenced by the sale of two hats to a Wisconsin resident. The evidence supporting this defense consisted of a canceled check dated February, 2005 and cross reference to the bookstore’s sales register.

The TTAB concluded that the sale of two hats bearing the mark at minimal cost within a state to an out-of-state resident was too de minimis to affect commerce Congress may regulate and therefore did not constitute use in commerce.

The Federal Circuit disagreed. With its decision, the Court emphasized that when Congress regulates a class of activities, the courts cannot exempt individual instances of such activities as too trivial to qualify. The Court took care not to define the outer parameters of Congress’s commerce clause power. The aggregation of sales of goods to out-of-state residents would have a substantial effect on interstate commerce and therefore a single sale to an out-of-state resident qualifies as use in commerce under the Lanham Act.

This result will be good news for smaller mark owners. The decision means that mark owners that sell only within a state will have to amass less evidence to support a claim to use of the mark in commerce.

Writing Off Your Rights

Posted in Brands, Copyright, Trademarks

 

I have twins.  Yes, we have two of most everything.  No, it doesn’t make it easier.  The twins don’t always remember who owns what or whether the object was traded.  I hear a lot of, “That’s mine!”  Somehow, that familiar childhood fight doesn’t seem to change as we grow up, and many of my clients suffer from the same dilemma.  Two people think they have rights to the same thing.  I haven’t found a magic bullet to end my kids’ disputes, but it is an easy fix for business clients – put it in writing.

contract

 

 

 

 

Is someone else involved?

Many times, this comes up because a client fails to get a written, complete contract signed by someone they have hired to do something for them:

  • Creator of a website, artwork, or marketing materials
  • Host of your website
  • Photographer or videographer
  • Manufacturer or supplier
  • Printer or publisher
  • Distributor or supplier

If you don’t have a contract, there is likely to be a disagreement about what each party can do – a disagreement which usually arises after the relationship has soured and neither party has an incentive to cooperate to work out a reasonable solution. A few legal dollars spent early in the relationship clarifies rights and roles and is far less expensive than the cost of handling a legal dispute.  You know the saying… an ounce of prevention, and all that jazz.  Think of the legal spend as insurance.  If you have a clear contract that defines usage rights and the actions each party can take, it also helps prevent a dispute about what you otherwise assumed would happen down the road.

Make sure the contract actually talks about ownership.

If you have a contract, make sure it describes more than just price. An incomplete contract is just as bad as no contract at all.  You need to specify which party owns any trademarks and copyrights that might be involved and clarify what the other party’s right to use those trademarks and copyrights entail.  You also need to address what each party can and cannot do if the relationship ends.  Too often, the contract doesn’t say anything about ownership or usage rights and is ultimately the root cause of the dispute.

Top 5 Cautionary Examples:

  1. Domains – if someone else registers a domain name for you, make sure the registration is in your name and that your contract specifies that the domain is your property. Domain names often include or become your trademark.
  2. Websites – similarly, if someone else hosts or creates website content for you, make sure your contract specifies whether you own that material and whether you can end the contract and take your site to another vendor. Technically, this really falls under copyright ownership, but the website content is usually focused on your branding and is a primary trademark branding vehicle.
  3. Photographs/Videos – just because you pay for it, doesn’t mean you own it. Actually, the person who creates it is usually the owner unless there is a contract assigning the rights to the customer.  If you want to later discuss owning the photograph or video, it is going to cost more than you probably would have paid if you clearly defined that you are purchasing ownership rights and not just a right to use the work.  Again, this really is copyright ownership, but the artwork might be used on your product labeling or other marketing materials that are crucial to your brand.
  4. Distributors – if you give anyone else permission to sell products for you, you need to clearly articulate that you are the owner of the product’s trademarks. Distributors and suppliers have separately registered trademarks and have gotten into disputes with the would-be trademark owner about who really owns the mark.  You also need to spell out whether the distributors can use your trademark as part of their own business names or whether they can have their own websites that use your trademark in their domains or web address.  These are much harder to get back after you terminate a relationship and can result in a website that uses your trademark in connection with the promotion or sale of a competing product.
  5. Manufacturers/Printers – if someone else is making products for you that have your mark on them, then your contract needs to specify that you own the mark and spell out what rights the manufacturer has to make anything that includes your mark.

 

The bottom line is – get out of court and get it in writing!

 

 

Hitman Glass Hit With Default Judgment

Posted in Uncategorized

Hitman Glass is in hot water with Starbucks over use of a nearly identical version of Starbucks’ famous logos on a line of glass bongs, t-shirts, and pins. Things really heated up for Hitman Glass when Starbucks was granted a default judgment against the company. Starbucks filed its complaint last June, alleging trademark infringement and false designation of origin, but received no answer.

starbucks
Starbucks filed a motion for default judgment and sought a permanent injunction for this blazing infringement, as well as compensatory damages, actual relief, and attorneys’ fees. Surprisingly, products bearing the infringing marks (likely not the t-shirts and pins) sold for up to $8,000.

The court found the damages sought by Starbucks to be reasonable and granted Starbucks $410,580 in damages and attorneys’ fees.

Since Hitman Glass failed to even respond to the complaint, it’s likely this case is cooked. However, it is likely that the defendants’ products were intended to be a parody. Regardless, owners of famous marks feel obligated to protect even parody versions of their marks.

Starbucks is no stranger to parody cases. In 2001, Starbucks brought an action for dilution by starbucks charbucksblurring against Wolfe’s Borough Coffee, Inc., to enjoin use of the marks MISTER CHARBUCKS, MR. CHARBUCKS, and CHARBUCKS BLEND. Ultimately, the Court of Appeals found these marks to fall under parody protection. Had Hitman Glass defended itself, it might have followed the line of reasoning that Wolfe’s did. However, the result might have been different.

This is the Spinal Tap Lawsuit

Posted in Trademarks

“This is Spinal Tap,” with its eminent quotability, is a cultural touchstone. I had heard of it, but not seen the movie until last year, when my husband sat down to watch it with me as part of his Sisyphean task of filling in the gaps in my pop culture knowledge.

In comedy, timing is everything. Perhaps I just saw “This is Spinal Tap” too late in life, or after seeing too many other movies that bore its influence, to appreciate the novelty in the same way my husband did. The two of us spent the evening together watching it, one of us laughing hysterically (often in anticipation) and the other listening attentively for the punchline (often long past it).

So why would I choose this topic for a blog post? It’s all in the timing.

spinal

A few days ago, Harry Shearer sued Vivendi (and related entities), accusing the media company of cheating him and the other co-creators of “This is Spinal Tap” out of millions of dollars in profits from the movie, the soundtrack, and related merchandise sales through breach of contract and unfair business practices.

vivendiman

 

 

 

 

 

 

Mr. Shearer launched a website to persuade the public of his case:  http://www.fairnessrocks.com/. While much of the suit has to do with breach of contract and fraud claims, trademarks play a role too. The website timeline explains that in the last four years Mr. Shearer has been frustrated by Vivendi’s unwillingness to pursue trademark infringements that he brought to their attention, suggesting that this inattention diminishes the value of the reward he could otherwise expect to receive. The complaint includes a declaratory judgment claim for non-infringement of trademark rights.

In general, it looks like Mr. Shearer plans to show Vivendi how it could have been a better steward of the intellectual property assets associated with the movie, soundtrack, and related merchandise. Central to this effort is his exercise of termination rights with respect to the copyright assignments, which would cause any copyrights arising out of the works that he had previously assigned to revert to him. Through his company, Century of Progress Productions, he has also filed intent-to-use trademark applications to register SPINAL TAP and DEREK SMALLS for use with entertainment services, printed matter, and clothing. (But no figurines??)

stonehenge

Photoshop credit: my husband

The complaint asserts that Vivendi attempted to selectively enforce the Spinal Tap-related trademark rights against Mr. Shearer by interfering with his efforts to use the marks without a license from them (even though they and their subsidiaries allowed multiple Spinal Tap-related trademark applications and registrations to go abandoned or be canceled and did not enforce the marks against others in recent years). The complaint argues that this controversy supports his request for a declaratory judgment that his use of SPINAL TAP and DEREK SMALLS in connection with the goods and services set forth in the applications does not infringe Vivendi’s allegedly abandoned trademark rights.

Whether Mr. Shearer’s claims against Vivendi or his own efforts to commercialize the intellectual property assets related to “This is Spinal Tap” will succeed remain to be seen. But Mr. Shearer’s instinct that the trademark rights are a critical piece of the puzzle are supported by the movie’s persistent popularity over time and the marketing opportunity that seems inherent in such popularity. While superhero and children’s movies seem to make the most of licensing, the Star Wars series demonstrates that beloved cultural icons may have the most success long term. Clearly there is a market for fans of pop culture classics like “This is Spinal Tap.”

If Mr. Shearer has the chance to pursue his project, perhaps the next time we go to the store we will see amps that go to eleven.

Supreme Court to Hear “Offensive” Trademark Case.

Posted in Copyright, Trademarks

Fall is finally here and football season is well underway.  It appears that the clash between free speech and trademark protection is headed to the Super Bowl, but it won’t be the Washington Redskins on the field.

The Washington Redskins are still using their same mascots and images despite a court ruling cancelling several trademark registrations on the basis that the term REDSKINS is disparaging to Native Americans.  The team has an appeal pending at the Fourth Circuit Court of Appeals but pulled a Hail Mary by asking the Supreme Court to leapfrog the Fourth Circuit and review its case (read our prior blog here).  The Supremes declined to hear the Washington Redskins’ case out of turn but will hear another case that could have an impact – Lee v. Tam, a case deciding whether an Asian American rock band called THE SLANTS should be permitted to register their band name.  The Slants chose their name to reclaim the term and pay tribute to their Asian heritage since they tout themselves as the only all Asian-American rock dance band in the world.

The Slants case challenges the constitutionality of the portion of the trademark law (the “Lanham Act”) that prohibits the registration of marks that are disparaging, which is the same provision under which the REDSKINS registrations were cancelled.  The U.S. Patent and Trademark Office refused registration of the mark THE SLANTS, finding it disparaging to Asian Americans (read our prior blog here).  On appeal, the Federal Circuit invalidated the anti-disparagement clause of the Lanham Act as an unconstitutional violation of the free speech guarantees of the First Amendment.  Key issues were whether the test for what rose to the level of an unregistrable disparaging mark was vague and whether it restricted speech.  Registration is a separate benefit and does not necessarily determine a party’s right to use a mark.

What do you think?  Should marks that are offensive to a large number of people be permitted to be federally registered at the United States Patent and Trademark Office?