Dear Rich: Nolo’s Patent, Copyright & Trademark Blog

Dear Rich: I saw an article on your blog relating to permission to publish pictures of buildings. I'm currently designing a logo which is based on an iconic building in London. You probably need to know 'how much' it's based on the building, but what sort of ground am I on with regard to copyright? The short answer is that you may run into trademark problems (we're assuming your use for the logo is in the U.K,). Copyright is not likely to be an issue for you. The architecture for newer buildings is protected under U.K. copyright law (the life of the author/architect plus seventy years) but there is an exception  (see section 62) that permits graphic or photographic representations for publicly displayed architecture. The Dear Rich staff is more more concerned about your rights under trade mark law (it's two words in the U.K.) A logo is intended to establish an association with a product or service. If the building you are using is already associated with a commercial enterprise -- for example, the TransAmerica pyramid in foggy downtown San Francisco  -- then consumers may be confused by your use, or alternatively, a U.K. trade mark examiner, may reject your registration. A trade mark examiner may also reject the application if the use of the building implies royal patronage or if it is prohibited for statutory reasons. Since so much time and money is invested in a new logo (and particularly if you are creating the work for a client), it may be time to bring in the lawyers.

Dear Rich: I wrote a nonfiction book and it turns out that one of the chapters is the same title as a book on a similar subject. The person who wrote that book also has seminars and a DVD using the same title. I seem to remember that there's no copyright on titles -- but don't know how to make sure. Am I infringing? The short answer is 'No.' Copyright law definitely won't protect the book title. Trademark law (with rare exceptions) only protects book titles when used on a series of books. (The author could federally register the title for her seminars but she hasn't done so, yet.) Even if the author could prove she had trademark rights, she would have to show a likelihood that purchasers would be deceived, confused, or misled (yes, we know we could have said it with one word, but we're lawyers). Proving likelihood of confusion seems difficult since most consumers won't see your chapter heading until after they have purchased your book.  All that said, the author or publisher may still fire off a C&D letter should they learn of your chapter title (and may even dredge up claims of unfair competition). If you're concerned about getting hassled, the Dear Rich staff suggests that in the short term, avoid using the chapter heading in promotional materials for your book; and in the long term -- assuming you do a second printing of your book -- change the heading.

Dear Rich: I started a business with a partner, we didn't get along, and it folded after six months (we just dissolved the S corp). We didn't register any trademarks. Do you see any problem with using the same name for my new sole proprietorship business? The short answer to your question is that your ex-partner may object and may have the legal basis to prohibit your use. Your ex may also have another concern -- that your use of the same name may create the impression that the two of you are still in business. The legal rules are as follows: the business name -- regardless of whether it's registered -- is an asset of the business unless there's an agreement to the contrary. Normally, when a business closes, the assets are divided and distributed to the principals (or creditors). The Dear Rich Staff recommends that you look through the termination paperwork to see how it deals with intangible assets. If you're not sure what happened to the name and you're now on good terms with your ex-business partner, perhaps you can enter an agreement signing off on any rights to the name. Otherwise, (1) see an attorney to verify your use, or (2) go ahead with your use of the name and wait to see what happens -- your ex may not be able to afford (or may not care enough) to bring a lawsuit. As always we can't predict the likelihood of such a dispute happening (even when we ask our crystal ball).

Dear Rich: I registered a blog on Blogger in January, 2009, and at the bottom of the blog was a trademark notice as well as a copyright notice repeating the blog's name and stating "all rights reserved". The blog links to our website, which sells coastal- and beach-themed decor and similar items. It was our intent to make the blog a website of its own. Our first posting was on February 14, 2009. I recently learned a company registered the exact title of my blog with a dot.com extension on February 9, 2009 and it states "beach-inspired decor, lounging, and accessories" The site did not exist at the time I registered the blog or did a trademark search on TESS. Their site has no mention of a trademark or any copyrights. Since I claimed trademark for the name as well as copyright notice on my blog, I am wondering if I can send a cease and desist letter. I'm so glad you asked. The short answer is "maybe you should send a letter... or maybe not." We're sorry to hear about the misadventures of the competing website. However, the Dear Rich staff must point out that adding a trademark notice -- for example, the letters 'TM' -- doesn't mean much except that you think you have trademark rights (unlike a federally registered mark, which entitles you to use the 'R' in a circle). Starting a blog at a blogging website like Blogger also does not guarantee you rights; it merely reflects that you started a blog. (Note also that the date of the postings can be changed in blog software, so that fact by itself is not conclusive as to rights.)  

Dear Rich: I have a question. I would like to register a trademark. Does adding punctuation make the mark stronger? For example, is My:Business stronger than My Business? Hmm. Do you mean, does this exclamation point make my asterisk look fat? The short answer is "Probably not." Although some trademarks are known for their punctuation -- Yahoo!, E*Trade, Kool-Aid, and Guess? -- their strength is not a direct result of their punctuation. (Wait a second, has Guess abandoned the "?"?) 

Dear Rich: Can you acquire trademark rights for a blog? If so, what category would it be in? We're doing a service mark amendment for Category 41. Originally we asked for seminars, but there was a "likelihood of confusion" there. I'm so glad you asked. You can acquire trademark rights for a blog title. In your application, you would describe your services as, "An online journal, namely a blog featuring commentary and information in the field of [state your blog's field]." Unfortunately, the class of services in which you would seek to register your blog is still most likely going to be Class 41 --  the class for which you were previously denied registration. If the examiner found a substantially similar mark in that class, you face an uphill battle even if switching from "seminars" to "blog." In order to acquire the registration you'll need to show, using several factors, that your mark is not likely to confuse consumers of the other service. If you cannot do that, you must forfeit your application fee and start over. The Dear Rich staff feels your pain... and your letter did prompt us to file an application for our moniker (see above).

P.S. Don't forget, you can find lots of other helpful free trademark application information in Nolo's Guide to Trademark Applications (download it on this page).

Dear 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: I'm thinking of directly importing coffee from farms in Mexico. What do I do I need to do to use trademarks like fair trade, shadegrown, and organic (and also trademarks that verify where the coffee comes from, like '100% Mexican Coffee')? Also, we're transporting the coffee in a green way. Can I set up my own trademark for this? I'm so glad you asked. The trademarks you describe are certification marks, a special type of mark that informs consumers that the goods meet certain standards or are from a certain region. Certification marks are different than standard trademarks in that competing companies can display them (assuming they meet the standards of the certifying group). You can find appropriate certification marks and some contact information by searching at the USPTO. Click "Trademark," then "Search," then "Structured Form Search" and indicate "certification mark" as the search term and "Type of Mark" as the field, then change the default "OR" dropdown to "AND" (that's important!). Then type in your search term (for example, "coffee") and choose "Goods and Services" for the next field. (See our tiny hard-to-read screenshot, below). Most certifying agencies charge a fee for the use of their marks and, of course, you must meet their certification standards. 

We received a couple of responses to yesterday's blog about naming a beer after a city (even though the beer isn't made in that city). One of the comments, from our friends at property,intangible raises an interesting point and we'd like to answer it while the topic remains close to everyone's cerebral cortex. Dear Rich! You only talked about registration. What about use? Isn't it my first amendment right to use any darn name I please? Absolutely. The Dear Rich staff loves free speech. In fact, if it weren't for the two-page indemnity provision we signed in order to write this blog, we might actually exhibit some free speech here. Err... back to your comment... Yes, you are free to use a geographically misdescriptive mark. Along with that freedom comes a few limitations. As noted, you can't register the mark -- which means you can't claim any of the benefits of federal registration on the principal register, including constructive notice of nationwide priority and a presumption of validity. And federal registration extends the owners remedies to any goods or services with which the mark is likely to cause confusion. (Kansas City Beer Nuts, anyone?) You also will have trouble stopping an imitator since a court is unlikely to enforce a geographically misdescriptive mark. And if you want to sell your beer company, your intangible property may be difficult to valuate (and even more difficult to transfer... speaking of indemnity provisions). So if you're on an L-7 business trajectory, the inability to deliver that little 'R' in the circle-bug could put a damper on your dreams. Nevertheless, if you're looking for a temporal statement -- you're only going to be selling a limited stock and you're not concerned about chasing others -- yes, your geographically misdescriptive mark awaits you.

Dear Rich: What is the rule about using the name of one city for products made in another city. Can we call our beer 'Kansas City,' even if it's not made in Kansas City? I'm so glad you asked. The short answer is, "Probably not." If the USPTO thinks your brand is geographically misdescriptive, you won't be able to register it. When a trademark identifies a place other than the place from which the goods or services originate, and if consumers are likely to believe that the goods originate from that place, it is geographically misdescriptive and unprotectible. For example, Maid in Paris was considered misdescriptive of a perfume that is not from Paris. Durango was considered misdescriptive of chewing tobacco since it was not from Durango, the city in Mexico that produces tobacco products.

Dear Rich: A company has a trademark for my domain name that was registered two years ago. I plan on using my domain as the name of my company with the intent of selling a product of an entirely different nature. I am really surprised they did not register it earlier. What do you think? The Dear Rich staff thinks you should look at yesterday's blog.

Dear Rich: My wife sells hand-made jewelry and recently started putting it up for sale in a local shop and asked me to help her get an e-mail address. Knowing a bit or two about the Internet I decided the best way to do this was to register a domain name and then setup a Google Apps account to host the mail. Everything was set up and fine and then last week I received an  e-mail from a law firm saying that the domain I had registered was an "infringing domain" and that the use of such a domain name that incorporates their trademark yadda yadda. Now they say that I have 7 days to respond and transfer the domain name to them and provide a sworn affidavit attesting that I ceased selling any goods that infringe on their trademark. If my wife's little side business is not related to anything that the other company sells, do they have any right to order me to turn over my domain name etc.? I didn't think that anyone could come after you for just requesting a domain name. I'm so glad you asked. The short answer to your question is "More information is needed." You're correct about the basic trademark principles -- if you're not likely to confuse consumers, then there's no trademark infringement. That's why, for example, different companies can use Arrow as a trademark for shirts and staplers and electronics (although only one company can have the domain name, www.arrow.com). Under another theory (dilution), a company with a  famous trademark can stop you from using a similar trademark even if the goods or services are not related -- for example, Microsoft could stop a company from selling Microsoft Vista dog food.

Dear Rich: I have a registered trademark for my music business. The registration is in Classes 9 and 16 (for recordings and sheet music). I would like to begin a line of promotional merchandise (mugs, T-shirts, etc.). Would I need to add a new class to my trademark to do this? Congratulations on acquiring federal trademark registrations. The short answer to your question is, 'yes' (or maybe 'no'). Yes, if you wanted the benefits of federal trademark registration, you would need to apply in multiple classes -- for example Class 25 (t-shirts), Class 21 (coffee mugs), and Class 28 (teddy bears). To accomplish this online, you would begin an application using the TEAS system. When you are asked to "Add Goods/Services" enter the search terms for the various merchandise you want to register and check the appropriate boxes (see below) and when done, click "Insert Checked Entries." All of the checked classes will be entered for your goods or services. (If you are selling t-shirts now and intend to sell teddy bears in the future, then follow the online instructions to indicate the different filing basis for each class of goods.)

[Note to readers: This is day #4 of anti-celebrity week and the Dear Rich staff is currently pondering more celebrity issues including: (1) Are celebrities bad for children?,  and (2) Do celebrities make better diet wafflles? More next week ....]

Dear Rich: Can you legally have a business name in Minnesota, USA that is the same as another company's name in Europe? They are both a similar industry (holistic health advocacy products and services, and creative arts services and products including writing, art, inventing, verses, music, poetry, and homeopathy). Does it also matter if both companies are the same type of business entity (limited liability company)? How can I find out if the other company has an international trademark (as I might like to get a U.S./international trademark)? I'm so glad you asked. The answer to your questions (in order of difficulty) are: No, it doesn't matter if both companies are LLCs. Yes, a U.S. company can have the same business name and/or trademark as a foreign company. There will be no conflicts if the services or products are unrelated. If the services or products are related, there will be no problem if each company operates within its geographical region and doesn't compete against the other in the other party's region.

Although you maintain that both companies offer the same products and services, your description of the services is so broad it's impossible to tell whether there really would be a conflict. There is no such thing as an international trademark. There is a centralized trademark application system for citizens of countries that participate in the Madrid Arrangement on International Registration of Trademarks. You can learn about the system, here, and about how U.S. citizens can participate, here. You can find out more about the other side's trademarks either at the U.S. trademark records at the USPTO or at foreign trademark office websites (here's a directory). By the way, have we mentioned that Nolo recently unleashed its online trademark registration application?

To our readers: This is the first day of our celebrity-free week, during which we will not be answering any questions about whether you can copy celebrity pictures, names, life stories, odors, hairstyles, or DNA. (And in our daily life, we will attempt to think celebrity-free thoughts.) We are not anti-celebrity, but in our continuing quest for personal authenticity, we urge you (and our fellow bloggers) to achieve some perspective on the issue by taking the one-week celebrity-celibacy vow. Okay, back to our regularly scheduled programming...

Dear Rich: I offer software development services through my website. I applied  for a federal trademark registration for my service mark and I uploaded a specimen which was an image of the trademark taken from my homepage that included the words "custom software design and support services." The trademark examiner said it wasn't acceptable because it "does not show the applied-for mark in actual use in commerce in the sale or advertising of the services." What did I do wrong and how can I fix this? I'm so glad you asked. A specimen for a service mark must identify the applicant's services -- which you did -- and it must indicate their source -- which you apparently failed to do. The Dear Rich staff reviewed your specimen (a screen capture) and noted that it lacked evidence that it was from your website.You should submit a substitute specimen showing the mark in the context of the webpage, preferably with the URL and a displayed method of contacting you -- for example, a "contact us" button.  In addition, you must file a declaration that states: "The substitute specimen was in use in commerce at least as early as the filing date of the application." By the way, as a service mark owner, you can submit a non-website specimen instead -- for example, you can submit letterhead, an invoice, or a business card -- provided it displays the mark, describes the services, and demonstrates a method of contacting you. The USPTO offers more information about service mark specimens. And speaking of services, Nolo now offers online assistance for those who wish to apply for federal trademark registration.