September 2, 2010
Short answer dept: (1) It's unlikely a school is going to consent to your t-shirt licensing proposals - most already have exclusive arrangements with manufacturers. (2) It's super-unlikely that a school will consent to sharing a co-brand arrangement with a rival. (3) It is super-super unlikely a school will authorize use of their trademark for an unflattering portrait or will permit alterations of their logos and/or mascots. You can always ask -- and maybe we're wrong -- but we don't think your use will be authorized. So that leaves you with the unauthorized route. As for parody, fair use and all that, you can give it a shot though these schools don't mess around when it comes to licensing revenue. If they find out about your use, you'll have to be well-heeled to take on the fight (or else just quickly raise the white flag).
August 16, 2010
Would Nintendo care? You might think that a tech company would want to avoid the publicity associated with sending C&D letters to a man of the cloth but as the God Squad/Geek Squad brouhaha shows, you can't predict the corporate benevolence factor.
Bottom line. We know that gambling is not on your church's to-do list, but if we were a betting blog, we think your kids program will probably be able to get by using the terminology -- provided it's only for a few months, and it's a low profile event (not part of a national campaign). (Part of the God Squad issue was that the use has continued for years.) It wouldn't hurt to include a subtitle to your program that will serve as a sort of a disclaimer. For example, "WiiConnect: The crossroads between gaming and spirituality," or some statement that highlights that you are using the Wii in an informational, non commercial manner.
August 9, 2010
Right, you had a (quick) question. The short answer is that if the other blog owner has been using "frugal adventures" as her blog title for longer than you (and that looks to be the case) then she's in a better position to stop your use. It's not likely to matter whether "frugal adventures" is prefaced by "my" or "our" (nor will it matter much that your blog is more family oriented). What's important is that both blogs have similar titles and deal with personal finance and saving money.
Will the other blog owner prevail? This isn't to say that the other blog owner will prevail against you in a legal battle. (Here are some of the trademark rules.) The other blog would have to prove that "frugal adventure" is protectable as a trademark -- that is, it's not descriptive of the services. If it is descriptive she will have to demonstrate consumers associate her name with those services. That may not be hard for her to do -- based on Google rankings, her blog appears to be more popular -- but even if she does prove it, she will also need to prove that there is a likelihood consumers will be confused between the two of you. Apparently neither of you has registered the mark with the USPTO.
Should you change? Like we said, assuming she was first, things look better for her than for you. If she has a lot invested in her blog's success, she may hire an attorney to keep her domain control. In that case, you'd have to decide whether you want the expense and hassle of dealing with it even if you did prevail. If your readers are regulars, it won't matter much if you change the title (or re-direct the domain name). Should you decide to change, we recommend searching out any future names to prevent such conflicts.
August 2, 2010
Right, you had a question. We think your question is, "Can I re-sell a brand name product if I open it and repackage it with additional material?" Reselling Hershey Bars wrapped in ribbons is fine because you're not opening the package. Every trademark owner has an obligation to ensure the quality and the consistency of the product and they can't do that if you're tampering with the goods. You're not likely to run into a problem selling a basket composed of your storybook and some unopened wipees as long as you avoid making people think that the famous brand endorses or is partnering with you.
[Blogspot]
July 28, 2010
How old is great grand-dad? Okay, here's where the Dear Rich Staff needs to get out its calculator. If you're old enough to write us a letter, we're going to guess, you're at least 20, which means you were born by 1990. We'll guess your parents were at least 20 when they had you (so they were born at the earliest, around 1970). That puts your grandparents birth at 1950 and your great-grandparents at the earliest at 1930. (Of course, if much of this kind of supposing is silly since these estimations are also tied to child bearing ages and of course, that differs dramatically for men and women). Okay, so if your great grandfather was born as late as 1930, it's possible that if he invented something in his sixties (say after 1992), it might still have patent protection. More likely, everybody in your family is older than our lowball estimate and Great Grandpa's patent terminated long ago.
Does patent termination mean you don't get royalties? A license agreement for a patent should not extend beyond the life of the patent. However, it is sometimes possible to continue to receive royalties for non-patent license purposes--for example, to license a trademark or perhaps certain trade secrets associated with the invention. (Note, even these agreements are sometimes not enforced.) We're guessing this is all very hypothetical in your case and it's unlikely you are owed anything, but you will need to see the original agreements to confirm or deny that possibility.
Speaking of terminations. We keep waiting for someone to ask us a question about copyright termination so that we can link to this copyright termination calculator created by one of our readers. Check it out if you're attempting to evaluate the status of copyright termination rights.
July 27, 2010
July 26, 2010
In conclusion. All in all, the meter is leaning in your favor on all of the above. Re: your statement, "I assume there was no copyright or patent problem since both of these stuffed animals sold in stores." We're not sure what you meant exactly, but buying something doesn't give you a right to copy it. You probably knew that but just sayin'.
July 22, 2010
Keep it Kool. Make sure that when you incorporate, that the corporation assumes all your sole proprietor debts and obligations, that the corporation is sufficiently capitalized, and that you abide by corporate rules. If you don't take corporate responsibilities seriously -- for example, you mix corporate and personal funds and don't keep records of meetings and shareholders -- a judge may strip away the asset protection feature of the corporation. It's called "piercing the veil."
And don't forget ... There are two other simple ways to avoid personal risk for trademarks. One is to buy insurance -- perhaps a wiser investment than incorporating. A typical Comprehensive General Liability Insurance (CGL) policy may provide the coverage you need. Many courts have held that the advertising injury provision included in many CGL policies covers trademark infringement claims. However, not all CGL policies provide such coverage. You should ask your insurance broker whether your policy provides this coverage. If your CGL policy doesn't cover infringement claims, you may be able to obtain such coverage by purchasing a rider to your policy. A second method of lowering your risk is to ... lower your risk. Don't begin using your trademark until you've engaged in a thorough search. Federal registration will also help lower risk by creating the presumption of trademark rights.
LLC or corporation. By the way, before incorporating, consider an LLC. Your tax advisor can distinguish the benefits. Nolo -- insert FTC disclaimer -- our employer, offers assistance in forming both types of entities.
July 20, 2010
July 7, 2010
Dear Rich: Let's say I came up with the brilliant slogan "A Penny Saved Is A Penny Earned" instead of Ben Franklin and titled one of my blog entries with this and discussed various ways to be frugal. That day an executive at XYZ bank reads my blog, likes the slogan, and decides to file for a trademark. The next day I determine that I want to file for a trademark to sell T-shirts or whatever. I know the slogan isn't protected by copyright, but does the fact that I was the one who published the slogan first help me to get the trademark even though I filed later? The Dear Rich Staff really doesn't like hypothetical questions but since it's Speed Dating Day, here goes: The only thing that gets you the trademark is if you use it first in commerce (or if you first filed an intent to use application and then used it in commerce). You couldn't get the mark for using it on one blog entry ... you need to use it as the title of your blog or newspaper column or whatever. And in any case, you would only get trademark rights in connection with your blog, whereas the executive may obtain rights for the same mark for banking services. PS. We understand the need for austerity, but does anybody save pennies anymore ... we mean except for collectors?
Dear Rich: I'm putting together a website for my sign business. I'd like to publish photos of some signs I've done. Do I have to get permission from my customers to do that? If there was some copyrightable aspect to the signs like an illustration -- something other than a unique layout or type font -- then you should seek permission. If it's basically words on a sign, no. You might want to add a disclaimer: "Display of signs does not imply endorsement." In the future, add a statement to your invoice that you reserve the right to reproduce signs at your website as an example of your work.
Dear Rich: I wonder, in general, if an older copyright takes precedence over a more recent trademark as it relates to a design and title of the design on knitwear?
We're not exactly sure what you mean. If someone has a trademark for the title of knitwear products but does not claim copyright (most likely scenario), you can copy the designs but you can't sell them using a substantially similar trademark. If someone has a copyright on a knitwear design then you can't copy it regardless of the status of the mark. It's unlikely someone has trade dress rights to a knitwear design. If they do, you can't copy that.
Dear Rich: Just as a hypothetical, suppose I write a fantastic song, post a video to YouTube, and it becomes an overnight sensation, racking up tens of millions of views in its first few weeks. Let's say that I then somehow manage to profit from the song's popularity, selling millions of digital downloads through my website. Given the situation, I'm sure majors might come calling, and I'm wondering what kind of a deal I would be able to negotiate. A joint venture where all profits are split? A one-off album deal? Ownership of masters? What points would you recommend shooting for in this instance? We're still not comfortable with hypotheticals but okay, let's say you become a YouTube phenom and a record label comes knocking. Question: why do you need the label? What exactly will they do for you that you couldn't do on your own or with the aid of a savvy manager and/or lawyer? If you're a songwriter, we could see affiliating with a music publisher because that might get you some licensing and other revenue. Really though, we couldn't tell you what kind of leverage you get from being a YouTube phenom, hopefully something nice that will make your parents and your girlfriend proud. DING! We're sad and happy to report that our time is up.
July 5, 2010
How these sites operate. Trademarks-for-sale sites usually operate by allowing you to buy advertising, by obtaining a broker fee (usually a percentage of the sale), or by a combination of ads and fees (the eBay model). Sites that deal only in advertising (and don't take a cut) seem preferable unless the site is performing some legal overview (unlikely). Typically, these sites don't deal in the paperwork for the assignment and sale and even if they do, it might be wise to have an attorney review the docs to make sure that both the trademarks and the associated goodwill are being transferred.
What also might work. Trademark speculators may be attracted to these sites but we wonder whether anyone else is seeking them out. It's not unusual for business owners seeking a trademark to research trademark ownership at the USPTO and then solicit the owner directly. As for sellers, we wonder if they might be better off with industry-specific advertising. For example, if you have a coffee-related trademark, perhaps you would have better luck advertising in the Tea & Coffee Trade Journal or Fresh Cup. Speaking of coffee, we think we should go get another coffee to get over our post-Wolfman nightmares.
PS. By the way, we don't have the same skepticism for domain name sales websites. Most of these sites -- although you should still check them out -- seemed to have nailed down the procedures (including online escrows) that can legitimately facilitate the sale and purchase of domain names.
June 30, 2010
Right, you had a question. The estate of Astrid Lindgren has registered the "Pippi Longstocking" trademark in the U.S. for audio-visual goods and printed matter as well as for games, educational services, and for clothing. A year before the latter registration issued, the trademarks for Pippi Wear (t-shirts) and Pippi Tails (hair bows) were registered by a California enterprise that doesn't appear to have any official connection with the Swedish author (yet conjures up the Pippi character in their advertising -- P.S. Beware the Cyndi Lauper audio).
Ennyway, we're not sure what's up with all that and we're hesitant to presume anything about the various uses. Most importantly, there is no indication that either the Swedish trademark owners or the California owners are planning to expand into food products and as far as we can tell, nobody is using Pippi as a federally registered trademark for food products. Therefore, we don't see any reason why you shouldn't proceed with the registration (though there is no such thing as a "guaranteed" registration). And yes, you are wise to avoid any references to the literary character in your advertising and packaging. FTC Disclaimer -- You may find some helpful resources in the trademark section of Nolo's website.June 23, 2010
Is it bigger than a bread box? In any case, we'll start by assuming that you're talking about something made by humans, not a tree, or a waterfall, and that it is publicly viewable. Assuming that's the case, here are the rules.
Copyright. If the monument is a creative work like a statue and it's not that old -- pictures of it weren't published before 1923 -- then the person who created it (or the person who hired the creator) has copyright and can control reproductions of the work. So, if the non profit is the copyright owner, you may be in luck. Note, fair use is a possible defense when works are publicly viewable -- it all depends on context (is the work the heart of the picture) and use (is it transformative)?
Trademark. The monument can serve as your non-profit's trademark but that doesn't mean you can stop others from selling pictures of it. Your rights to the mark are limited to the classes of goods or services offered by your non-profit and most likely you would probably need to demonstrate that consumers associate the appearance of the monument with your organization. So, for example, Liberty Mutual was once able to stop others from using the Statue of Liberty to sell insurance (the mark has expired), and Paris Accessories can claim exclusive rights to use the Eiffel Tower to sell handkerchiefs. But courts have been reluctant to claim that the owner of a trademark of a distinctive building for example, can stop photographers. As one court noted, such photos don't confuse consumers as to the source of goods, they're just perceived as a photo of a well-known and accessible public landmark. So, we think your course of action is an uphill battle that will require consultation with a trademark attorney.
P.S. The lovely photo of the well-known and accessible Mt. Rushmore is by Kimon Berlin
June 17, 2010
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.
June 9, 2010
Okay, so if your use is commercial ... Things can get a little murky when trademarks are included in commercially reproduced artwork. (By the way, we're assuming you have permission of the copyright holder of the photographs.) One court recently ruled that the use of a university's trademarks was okay in a painting of a former football player. The court concluded that "the depiction of the uniforms in the paintings is incidental to the purpose and expression of the paintings." In other words, the artist's first amendment rights trumped the trademark issues. We think you're in the same ballpark. In the case of the fiddle player, we think you're okay not just because it's incidental to the photo but also because it's difficult to imagine that the band would object to the use. (A lawsuit seems like bad PR for the band.) As for the tractor photos, that also seems fine. Removing the trademarks seems more objectionable from John Deere's POV.
Finally ... If we were a betting blog, we'd also bet that you're also okay with your use of "Chew Mail Pouch Tobacco" because it's tough to imagine a lawsuit (especially since so many similar images are already available). BTW, that really reminds us of Episode 12, Season 1 of the Real McCoys when Grandpa and Luke kind of screwed up Kate's chances at being part of some church thing when they let some huckster advertise on their barn. Spoiler Alert: Turns out the same huckster tricked the local reverend, too.
