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August 23, 2010

Registering Copyright for Beats and Instrumentals

Dear Rich: I saw your video on registering song copyrights and I have a few questions to ask. I'm a music producer and I'm trying to get my beats/instrumentals copyrighted. 1. What form should I fill out SR or PA? 2.The form has a section where it asks for a serial Issue (ISSN) is this needed or optional? 3. I'm trying to copyright a set of beats, I heard that you can fill it out as a collection so that you are paying for the price of one instead of separate, so where on the form do I verify that it is a collection and not one beat? 4. Besides the CO form, money, and a CD of my beats, is there anything else I'm supposed to send or is that it? Hope you can answer my questions and I might have more questions to ask you in the future.  We know you're busy constructing those inverted snares and sub-auditory bass notes, so okay, maybe you didn't have time to check out the video in its entirety (where most of the answers can be found). In any case, we'll walk you through it here. 
Beats as compositions. The video explains how to register a musical composition. Do your beats qualify as musical compositions? Although there have been some cases in which the basic copyrightability of bass patterns or drum patterns has been questioned, we're going to operate under the principle that your "beats/instrumentals" are protected as musical compositions (and you should, too). So you would choose "performing arts work" in Section 1, Work Being Registered. 
SR or PA? Form SR is a paper form for sound recordings. Form PA is a paper form for musical compositions. As the video explains, you can learn about the difference here. As the video also explains, we recommend use of the FORM CO instead of either SR or PA forms, as Form CO costs less to file and is easier to use than the old paper forms. You can also save money by filing electronically using the eCo system. 
ISSN? As the video also explains, the ISSN is not relevant to musical compositions. Leave it (Section 1c) blank. 
Collections of beats/instrumentals. Under certain conditions, you can register a collection of your compositions. They must be unpublished (you haven't distributed them to the public) and they must meet the following conditions: the tracks are assembled in an orderly fashion on your CD, the CD has a single title identifying the collection as a whole (for example, "My Miraculous Beats"), and one person (you) is claiming copyright in all the compositions (or, if they are by different authors, at least one of the authors (again, you) has co-written all of the stuff. If all of these elements are met, and they probably are if you created all of the compositions yourself and you haven't sold them yet, simply include additional title(s) by clicking the "additional title" button as you enter each composition into the form.
What else? Yes, you only need submit your CD, the copyright form and the fee. If you file electronically using the eCo system, the fee and form are all submitted electronically. In some cases, you can upload your deposit materials; in other cases, you must mail it in. Each form explains the rules and procedures. Thanks for watching the video ... or at least for mentioning it in your letter.


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Posted In: copyright , music , registration

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July 9, 2010

What qualifies as song copyright deposit?

sheet-music.pngDear Rich: When you copyright a song (not a recording) what materials do you really need? Does an audio recording of the song qualify or do you need a lyric sheet/sheet music in written form or any combination of the aforementioned? We assume you're asking about the materials you must deposit when you are registering a musical work (or "song") copyright. The answer can be found in Circular 50, Copyright Registration for Musical Compositions. If your song was never reduced to sheet music (probably the case for 90% of the songs written these days), then a CD is fine. (Alas, the Dear Rich Staff is so old that we remember when the rules were different -- yes, a time before CDs and computers -- when we had to pay a music student at the Indiana University School of Music to reduce our songs to sheet music.)  

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Posted In: copyright , music , registration

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June 17, 2010

Should I file one TM app for two classes ... or two apps?

215px-Rearwindowposter.jpgDear Rich: Is it smart to enter separate trademark applications for different classes of products if I'm afraid one class might hold up another, that is, in terms of showing proof of use, or if I'm afraid one class may be rejected/objected? Also, can I submit separate applications under the same class, but for different products? For example, if I submit an application, class 16, calendars, then at some point realize I want to sell posters, can I submit another application, class 16, posters? If so, is there a waiting period? Coincidentally, the Dear Rich Staff was faced with a similar issue at work the other day and our advice in that particular situation was for the applicant to file two applications because we felt one of the classes was likely to be problematic. The other was likely to fly right through. As you know, there is no additional cost for filing two applications (versus one application in two classes). It's really your call but we see no disadvantage to filing separate apps.
Adding other goods in the same class. Yes, you can add other goods in the same class, later. That depends on your budget and the extent of your marketing. Often, it's not necessary if the goods are closely related (as the trademark examiner is likely to have your back). On the other hand, you can't always count on the USPTO and if the goods are a key to your company's success, it might be worth the money to cover your bases with a new application. As for the waiting period, the time between filing and publication is impossible to predict. Expect six to nine months minimum. We'd like to sputter on but something's come up and we need to grab the Bushnells.

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Posted In: registration , trademarks

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May 14, 2010

Is new TM application needed for new goods?

Dear Rich: I obtained a trademark on my company logo. Does this mean that every product that bears my company logo I now have to register with the trademark office to put it in commerce? Thanks for keeping your question short. Brevity is much appreciated even if it means a lack of clarity. We think what you're asking is whether you need to file a new trademark application for every product that is not listed in your trademark registration. The short answer is, "that depends." Obviously you don't need to do it if you're not concerned about someone using a similar mark on those types of goods. Otherwise, the Dear Rich Staff wonders if you need to spend the money, especially if the products are the kind that might be anticipated by your registration. For example, if your registration is for silverware, it's likely you might expand into another products, for example kitchen knives, knife block sets, or possibly, even dinner plates or bowls. Your mark secures you protection -- at least to the extent that the USPTO will be unlikely to grant a registration to another company -- for a gray area of products that are related to your goods, generally considered similar to consumers, and to which your business might potentially expand. 
How do you tell? A lot of factors are used to determine which related goods should be protected by your mark including its distinctiveness, your marketing channels, consumer sophistication, and the international classes in which the goods fall. Sometimes, the USPTO's decision on these issues doesn't always make sense. For example, one would think that automobiles and automobile tires are always considered to be closely-related goods. Not so. Probably a prudent course would be to file a new trademark registration if you expand into a completely new international class of goods or services, or if one of your products becomes an especially strong seller for your company. 
The video? This is part of Nolo's new website video promo series. 

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Posted In: registration , trademarks

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March 23, 2010

Why pay more for an intent-to-use application?

The_French_Laundry.jpgDear Rich: I'm starting a business and the domain has been registered. I'm looking into registering the trademark and thought about using an intent to use application (ITU) to reserve the name until we are up and running. I realized it costs more for ITU then regular registration. What is the benefit of ITU? We were going to say that an ITU application is like having a dinner reservation at The French Laundry but then we remembered that our analogies usually suck.
Right, you had a question. ITUs are relatively new on the trademark scene--debuting back in the late eighties. Before that you could only file if you were actually using the mark. With an ITU, you can now file if you have a bona fide intention to use the mark within six months of the date the mark is approved for registration by the USPTO. If you are unable to put the mark into use within that period, you can purchase additional six-month extensions, one at a time until three years have passed (provided you are able to convince the USPTO that the reasons for the delays are legitimate).
The advantage of filing an intent-to-use application. Besides the fact that you get to reserve a mark, your filing date will serve as the date of your first use of the mark--assuming you go on to put the mark in actual use and take the other steps necessary to get the mark placed on the federal trademark register. This first-use date can be very important in the event a conflict develops with another mark--in the USPTO or in the marketplace. 
Ready to go? Once you decide to file on this basis and you are certain that you intend to use the mark, you should file as quickly as possible, to obtain the earliest possible date of first use. As you mentioned, the intent-to-use approach is more expensive than filing an actual use application--at least $100 more expensive, plus $150 for each additional six-month extension that is needed. Therefore, it is most appropriate to use the intent-to-use application when you have come up with a truly distinctive mark or you plan to spend big bucks "tooling up" to use your mark and you don't want to prepare branding materials, etc., until you know that the mark will be yours. 
Don't do ITU if ... The Dear RIch Staff recommends against using the ITU process for a mark that is legally weak--for instance, it uses common words in a common way or is descriptive of the products or services. In those cases, you will have little choice but to wait until you have put the mark into use and can demonstrate that the public associates the mark with your product or service. Keep in mind that the USPTO will only okay an ITU application for a mark that is distinctive. (By the way, the "French Laundry" is inherently distinctive for restaurant services. The photo  is by Peter Merholz).

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Posted In: registration , trademarks

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February 8, 2010

Transferring TMs to New Corporation

00000105.jpgDear Rich: I have two trademarks registered to a corporation and will be transferring the rights to use these trademarks to a new corporation. Do I have to notify the Patent and Trademark Office and how would I do that? Also I notice that someone asked about renewing a patent. Is that also necessary for trademarks? First of all, the Dear Rich Staff wants to acknowledge that the person who asked this question also happens to be the same person who comes by and fixes our mother's computer so we say thanks for all that great service over the years -- and BTW, we messed with the ethernet cords and wifi last time we were in town. Ooops!
As for your question, you need to do two things, (1) assign the marks to your corporation (see below); and (2) file that assignment along with a Trademark Assignment Recordation Coversheet, at the USPTO website.
What about renewal? You must file a renewal and declaration of continued use between the ninth and tenth anniversary of registration and you should file a declaration of continied use and (optional but recommended) a statement of incontestability between the fifth and sixth years of registration. The failure to file the declaration of continued use will result in the loss of the registration.


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Posted In: registration , trademarks

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January 27, 2010

Will My Trademark Graduate to the Principal Register?

iStock_000001332366XSmall.jpgDear Rich: My mark has been registered on the Supplemental Register for five years and continuously used during that time. Does it now qualify automatically for registration on the Principal Register? "Automatically" may not be the correct word but you should be able to "graduate" to the Principal Register without much problem. 
Supplemental v. Principal Registers. As you probably know one distinction between the two Registers is that all marks on the Principal Register are considered to be distinctive. Some were born distinctive -- think 'Google' -- while other more descriptive marks-- think 'Lean Cuisine' -- acquired distinctiveness via marketing and continued use (known as "secondary meaning"). When you apply for registration on the Principal Register -- yes, you must apply -- the examiner starts with the presumption that after five years of continued, exclusive use, the mark has acquired secondary meaning and is distinctive. (In legal terms, the five years of use amount to prima facie proof.) However, the Dear Rich Staff notes that despite this presumption, a trademark examiner, if doubtful of your mark's strength, can always require additional proof of distinctiveness. If we were a betting blog, we'd bet that your mark will soon make it on to the Principal Register.

To learn more about trademark registration, check out my book with Stephen Elias, Trademark: Legal Care for Your Business & Product Name.
To apply for a trademark, use Nolo's Online Trademark Application.

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Posted In: registration , trademarks

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January 4, 2010

Will Online Registration Services Steal My Trademark?

DSCN0357_2.JPGDear Rich: I would like to register a trademark, but how can I be sure that someone from the site won't steal my business idea? Are online registration services trustworthy? Aside from Nolo's trademark registration service (Insert FTC Disclaimer here), we cannot attest to other online site's trustworthiness (although they would have difficulty staying in business if they ripped off customers). In any case, as helpful as these services may be, you can probably bypass them and file directly at the USPTO website without much hassle. The Dear Rich Staff believes that you can trust the USPTO (and if you have doubts about trusting government agencies, you're best off not going into business at all). Some other things to keep in mind:
  • Unless your business idea consists solely of the name or logo (we're talking "Pet Rock"), there's not much to be "stolen" from a trademark registration. In any case, within days of your application filing, the information in the application will appear at the USPTO website where the public can see it. 
  • Business success requires more than trademark creativity. Even if your trademark application discloses a very creative trademark/product combination, it's rare that a creative trademark, by itself, guarantees success. You need marketable products and services, and usually, you must invest lots of effort and money into marketing those goods and services in order to popularize the mark.
  • Use it or lose it. Finally, in case you're unaware, the Dear Rich Staff advises that you won't acquire a federal registration unless you use the mark in commerce. (And if you're already using it in commerce, then the public would already be aware of your business idea.) 
The bird? We spotted it on Tugboat Ed's houseboat last week. 

To find out more about trademarks, check out my book with Stephen Elias, Trademark: Legal Care for Your Business & Product Name.

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Posted In: federal agencies , registration , trademarks

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December 30, 2009

Terrible Towel Satire? Uh ... not really.

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Dear Rich: We would like to spoof the Pittsburgh Steelers 'Terrible Towel' with a "We ARE Terrible Towel" for the Detroit Lions. It would be white with no logos. Satires can't infringe copyrights can they? Thoughts? If you're making one towel to hold up for the TV cameras, you're probably okay. But if you're thinking of making more than one, the Dear Rich Staff would advise against it. First of all -- it's not a copyright issue as copyright doesn't protect short phrases or individual words. 
It's a trademark issue. The term "Terrible Towel" was created by Pittsburgh sportscaster Myron Cope who acquired trademark rights and then assigned the registered trademark to a charity, the Allegheny Valley School, an institution for the disabled. Considering that licensing revenues from the towel have earned the school over $3 million, the school and the Steelers (who acknowledge that the towel is one of the most popular merchandise concepts in football history) both have a vested interest in preventing others from making and selling Terrible Towels. It could infringe and dilute a world-famous mark (and one that is carried to the far corners of the earth.)
Does satire matter? We must clarify one thing: you stated that satires can't infringe copyrights. That's not correct. A parody may be excused as a fair use under some circumstances. The same is not always true for satires. Here's a lawyerly explanation of the distinction. In any case, your use does not seem to qualify as either a satire or a parody, does it? Bottom line: sales and distribution of your towel will likely trigger a cease and desist letter.

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Posted In: licenses , registration , sports , trademarks

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December 8, 2009

"Trademark Pending" Status? Not!

TrademarkAttorneyRocks.jpgDear Rich: I plan on registering my trademark even though I have not begun using it. When does the mark I'm registering show as "pending?" There's no official status for a "pending" trademark registration; you either have a federal registration or you don't. (The Dear Rich Staff thinks that you may be confusing trademarks with patents. There is a "patent pending" status, available to filers of patent applications and provisional patent applications). 
Intent to Use Marks. When you file an intent-to-use application, your mark may be examined and approved for publication, but registration is not granted until you file a document with the USPTO establishing that you've begun using the mark. So, in practical terms, you have no trademark rights until you start selling goods and services associated with the mark. Or as they say, 'no trade; no trademark.'
(Note: If you are asking, when does the mark show up within the USPTO trademark registration system (TARR), that happens fairly quickly, usually within a week or two of when the USPTO receives the application.)

To learn more about trademark registration, see my book with Stephen Elias Trademark: Legal Care for Your Business & Product Name.

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Posted In: registration , trademarks

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November 19, 2009

How Do You Copyright an Educational CD?

disk.jpgDear Rich: A friend of mine has a CD with educational material (not school-related) but some type of teaching program she has put together and wants to copyright. Do you have any suggestions? Start with the principle that your friend already owns a copyright for her work. It's automatic. She should include a copyright notice on the CD, packaging and on the materials that appear on the user's screen. The notice should be something such as "Copyright 2009 [Your Friend's Name]" and if she is including recordings on the disk, there should also be a "P" in a circle followed by similar information -- "2009 [Your Friend's Name]." 
Should she apply for copyright registration? According to the Dear Rich Staff there are benefits for registration but it is not required for copyright protection and is usually only needed if you're going after someone who ripped you off. We're guessing that since the program is on a CD, it contains various media -- text, music, photos, or some combination. In that case, there's a Nolo book that explains the process for multimedia registrations. If it's only text, this book will explain what to do. The easiest approach is to go straight to the Copyright Office for assistance. Here's a circular for registering multimedia works; here's one for registering text works.

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Posted In: copyright , how-to , registration , software

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November 10, 2009

Responding to Trademark Rejections and Objections

obj.jpgDear Rich: Is there a free online resource to find examples or forms of an answer that I can file in response to an objection filed against a trademark application at the USPTO? Yes, you have online access to hundreds (maybe thousands) of real-life responses to trademark objections via the USPTO's Trademark Document Retrieval (TDR) system, or alternatively via Trademark Applications and Registrations Retrieval (TARR). You can get to both from the USPTO homepage. To find these documents plug the appropriate serial number into TDR -- for example, try your own serial number and you'll see a list of all the filed documents. Click on any title and you will see the document (or check the box and download a PDF). 
Use the TTABlog for the Tricky Part.  As you can see, accessing the documents isn't difficult. The challenge is finding those trademark applications that match your situations so that you crib from the right docs. In other words you want to piggyback on the work of another applicant who succeeded with similar facts. One way to find cases similar to yours is at the TTABlog which covers the proceedings of Trademark Trial and Appeals Board (TTAB). We recommend searching the blog for terms similar to the ones in your objection -- for example if your mark is alleged to be "geographically descriptive," search for that term and copy the relevant serial numbers for the trademarks in dispute.Check the responses in those TDR files. 
Objections and Objections. BTW, you indicated you wanted to file a response to an objection against a trademark application. We're not sure which type of "objection" you're referring to but we're going to assume you want to respond to an examiner's Office Action refusing or rejecting your application. (Here's a helpful system for responding.) The public (including competitors) can also file objections to your trademark application during a thirty day period following publication of your mark in the Official Gazette. That requires different formalities, though it may involve similar language and legal arguments.
Thinking Like an Examiner. Finally, the Dear Rich Staff recommends that if you're curious as to the starting point for examiner objections, you should review section 1200 of the Trademark Manual of Examining Procedure. It's available online and is searchable by topic.
This just in ... MR, one of our readers, followed up with this helpful tidbit: TTAB opinions and docs never show up in the TDR, but can be obtained at TTABVUE, if you type in the application or registration number, proceeding number, or other identifying material. The most the Trademark Office databases will do is post a notice in the TARR status database, noting that an opposition has been filed. There is a very handy database maintained at TTAB Across the Board, which allows you to type in phrases like "geographical descriptiveness" in the Search Documents box, and get a list of TTAB cases where that shows up, and clickable access to the specific documents.

Have more questions about trademarks? Check out my book with Stephen Elias, Trademark: Legal Care for Your Business & Product Name.

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Posted In: registration , trademarks

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July 8, 2009

Service Mark Dispute: Tween vs Radio Syndicator

JenniRadio.jpgDear Rich: I am 12 and I have a radio program that uses the service mark "For Kids ... By Kids." I have been using it since 2005. I have an application in process for the service mark for use in Internet radio. I am affiliated with a radio consultant who is talking to radio stations about licensing my format. In March 2009 a radio network released a new program format that uses my service mark. I sent them a C&D letter and they would not comply as I am not a station in their market. But they do stream on the Internet and use the same service mark and I am a direct competitor, I would say, as I have streamed at JENNiRADIO.com since 2005! My lawyer and their lawyers have already talked and they said no, they will continue to use my SM. What should I do now? Wow! First of all, the Dear Rich Staff is impressed. You're 12 and you have your own radio show, you've been to CES (like 4 times), you've interviewed Mitchel Musso (more than once), you can send cease and desist letters, and you know the difference between a service mark and a trademark. (BTW, we're going to refer to trademarks and service marks interchangeably).  
Okay, the short answer to your question is that the only way you're likely to stop the other company's use is to file a lawsuit and win. Since we're not sure about the outcome of that suit and since a lawsuit could cost more than buying a house, the smart thing to do would be to wait to see what happens with your trademark application. If your registration is granted, you'll have a better foundation for your lawsuit. The big question you will need to ask yourself before walking into any court is whether the competitor is hurting your business. Are your fans really likely to be confused? 
What Trademark Rights Do You Have? 
It's possible that your competitor may be waiting to see what happens with your application or may even file papers to oppose the registration. Not all applications are approved. For example, an examiner may object that your trademark describes some aspect of the services (it's considered a non-distinctive or "descriptive" mark). If the examiner objects, you'll need to demonstrate that consumers associate that mark with your services. The examiner will also research other uses of the mark and confusingly similar variations (like BY KIDS ... FOR KIDS) to make sure you have exclusive rights in your field. You're probably aware for example, that PBS uses a similar tag for Zoom. And WBGH owns a federal registration for BY KIDS FOR KIDS for entertainment services (Reg. No. 2691810). There's also a website that uses the acronym BKFK ("By Kids for Kids") and they have a federal registration as well (Reg. No. 3472214). (And there's also a pretty funny parody using the phrase.) We're not sure what all that means for your application, but it's a reminder that getting a registration is not always a sure thing. (You can read more about the trademark application process in this guide prepared by the Dear Rich Staff)  If the application is rejected, your competitor may feel more confident about its use. Without the registration you may still have rights and the geographic location of your uses -- locally, or perhaps over the Internet -- may affect the outcome of any court battles. 
What Trademark Rights Can You Afford? 
Let's say your registration is granted. Great! You will have exclusive rights for broadcasting and streaming over the Internet. But you will also have to take time and money to go after others. And if you win, you may not get back a huge judgment or your attorney fees. That's why we urge you to go slowly. If the competitor doesn't really affect your current or future income and your fans aren't confused, you should probably hold off on doing anything. Whatever you do, don't file the lawsuit just because the competitor makes you mad. As Frank Sinatra once said, "The best revenge is massive success." 
PS If you need help understanding any of the legal words used in this answer, check out Nolo's free Law Dictionary iPhone app. 

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Posted In: infringement , registration , trademarks , websites

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May 14, 2009

When is a trademark "in commerce"?

InCommerce.jpgDear Rich #1: I have had a business installing and maintaining equipment for a number of years. I now want to register my trademark, but I do not know if I meet the "in commerce" requirement. I am in a first state and have a number of customers located in a second state, but the work I do for them is all on customer property located in the first state. Am I "in commerce"? I also do some work on  American Indian land. Is this work in commerce?
Dear Rich #2: I have a website that offers custom in-home computer services -- I'm like a geek squad business -- but so far, only in one state. If I register my trademark can I say it is used in interstate commerce? I'm so glad you asked. Short answer: "Yes, you are both in commerce." The fact that you are regularly entering into contracts (doing business) across state lines should qualify your trademark as being "in commerce" for purposes of federal registration. The same is likely true for a website offering services in one state since, according to one court, "the services are available to a national audience who must use interstate telephone lines to access the site." By the way, the "use in commerce" requirement refers to "all commerce which may lawfully be regulated by Congress," not just interstate commerce. So, for example, since the federal government regulates television transmissions, a TV station that broadcasts in only one state could qualify for registration.

The Dear Rich staff can't say positutely, whether performing services on an American Indian reservation constitutes commerce regulated by Congress (we think it does; readers, any comments?). BTW, you can find lots of other helpful free trademark information in Nolo's Online Guide to Trademark Applications (download it here).

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Posted In: Richard Stim , registration , trademarks , websites

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May 12, 2009

Sending sculpture photos to foundry

sculptor.jpgDear Rich: I am a long-time artist, but never serious until now. I took up clay with lost wax in mind, and am now at the point of contacting a foundry to begin the process. What do I need to do and/or know prior to actually sending them any photos? I'm so glad you asked. The short answer to your question is "That depends..." The Dear Rich staff presumes you're concerned about either (1) the foundry ripping off your work, or (2) that the foundry will make some claim of co-authorship. As for being ripped off, as our Dear Rich readers know, you have a copyright in the photos (and any resulting sculpture) without doing anything. You can file a copyright application if you like (we recommend the new Form CO) and that will provide additional rights in the event of an infringement. You could also have the foundry sign an agreement (PDF) not to disclose or reproduce your work. That agreement could also deal with your second issue by having the foundry acknowledge that it acquires no rights in the resulting sculpture (and any rights it does acquire are assigned to you). (This site has helpful information about dealing with foundries.) Our guess is that the foundry is used to artists raising such issues and may even have such an agreement available. If they don't (and the agreement cited above doesn't work), you can put together an informal agreement yourself, or get one from one of Nolo's independent contractor books. All of these suggestions are based on the assumption the foundry is in the U.S. If it's in a foreign nation, you'll have a harder time enforcing agreements and copyright.

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Posted In: art , copyright , joint ownership , registration , sculpture

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