Recently in trademarks Category

September 2, 2010

Dueling School Mascots on T-Shirts: Yea or Nay?

iStock_000006726783XSmall.jpgDear Rich: I have an idea for a T-shirt that would involve caricatures of two rival school's (universities - domestic, i.e., USA) team's mascots. Each mascot would, in turn, be wearing paraphernalia that identifies the respective school (possibly obscured, but arguably recognizable). Would I have to get both schools' permission (i.e., trademark licenses) in order to put such marks on such T-shirts (if, ultimately, I were to sell them)? That might be hard if one of the schools is shown in a lesser light than the other. Any thoughts? Thoughts? The Dear Rich Staff has so many thoughts it's like an ant farm inside our collective brains. But we'll try and focus on your question or we'll be late for dinner and you know how that goes. 
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).

Posted by Rich Stim | | Email This Post

Posted In: fair use , trademarks

Bookmark and Share
August 16, 2010

Praise Wii the Lord

steeple.jpgDear Rich: I am a children's minister and try to keep my programming up to date with what the kids are excited about. This fall I wanted to call our program WiiConnect. Would this be a copyright infringement? I might put out a few promotional items but because it is for a church there is no charge for any of it. It's not copyright infringement, but your use of the Wii terminology might violate trademark laws if it creates the impression that Nintendo endorses or is associated with the program you are offering. Even if your use does not violate traditional trademark infringement rules -- after all you and Nintendo are not competing -- it may violate trademark dilution rules. 
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.

Posted by Rich Stim | | Email This Post

Posted In: trademarks

Bookmark and Share
August 9, 2010

"Our" (or "My") Frugal Adventure: Who owns blog title?

FrugalAdventuresButton1.pngDear Rich: I have a quick question for you. In June of 2010, I began a blog called "Fun Frugal Family of Five". After a few weeks, I realized that was an obnoxious name and changed it to "Our Frugal Adventures," hired a blog designer and went about my quest to gain readership as all bloggers do! Yesterday, it was brought to my attention by a Twitter follower that my blog's name is very similar to another blog "My Frugal Adventures."I was shocked and immediately sent the owner of "My Frugal Adventures an email letting her know and asking her thoughts. While our sites do have similar content, I do write more family oriented posts as well. My question to you is, does she have a case against me and do I need to change my name? You mentioned this was a "quick question." The Dear Rich Staff would warn against the use of that term as it is grammatically tenuous, the popular meaning is not flattering to the user, and in any case, we find it kind of sad that readers believe our carefully crafted, thoughtful responses can be conjured up with alacrity. 
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.

Posted by Rich Stim | | Email This Post

Posted In: trademarks

Bookmark and Share
August 2, 2010

Wippees or Wipees? Something Smells Funkee

Wippee2.jpgDear Rich: After reading your online advice and answering questions from crafters, I thought I was in the clear with something I've made...but now I'm wondering if I'm in violation of some law, rule or provision. Okay. I've taken something (let's just say for this particular example) that it's kid's anti-bacterial wippees...it isn't but crafters read your blog and they ever see this, I can't give my idea away (see how paranoid us crafters can be!?! ha) Anyway, I've placed a "little toy" at the bottom of the box and have written a story that is is attached to the box. It's professionally packaged and the story ties in brilliantly with the "wippees" and encourages the little ones to use the anti-bacterial wipes in order to empty the bottle and get a the toy. (There are rules in the "Note to Parents" saying they can't waste the wippees and they can't have the toy until the wippees are all gone.) I have copyrighted the story so I know I'm protected there. However, on my craft, I have left the brand name on the front where it was originally placed and below it is I have placed a label of my own that ties in with the product and the story. So, it would look something like this: Soft & Fresh (fictitious brand name) "Little Wippee's Surprise". Since I'm using the brand name box, leaving their label affixed, can I get into any trouble for making such a craft. I mean, we're allowed to place a wrap around a Hershey bar without any legal consequences, completely covering up the Hershey name, and on my crafts, I'm sharing their name and making it a part of my craft. I suppose I could make them from scratch (in a sense) by buying OFF BRAND wippees, removing them from their container, putting them in another type of container that costs me a dollar down at the local Dollar Tree, add my label and I'd have no one to answer to, and just sell them that way. But I feel like their name brand label above mine, makes my craft more attractive, tried and true. I'll bet this sounds like I want my cake and eat it too, huh? I guess I look at it as they win with my cute story enhancement and I win with their popular brand name. We're going to assume you mean "wipees." Spoiler Alert!! -- they're for wiping a baby. (On an FYI level, the Dear Rich Staff has a problem with colloquialisms that use the "ee" sound like hottie or veggie (or veggie hotties!!).)  
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. 

Posted by Rich Stim | | Email This Post

Posted In: trademarks

Bookmark and Share
July 28, 2010

Great Grandpa's Termination: Patents (and Copyrights)

Calculator.jpgDear Rich: I have recently come across a patent filed by my Great Grandfather, and believe that the device may still be in use. How can I find out if I am owed royalties on the sale of this tool. Let's see, we start with the rule that patents granted before June 8, 1995 terminate 17 years from the date of issue; those filed on or after June 8, 1995 terminate 20 years after the filing date.
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.

Posted by Rich Stim | | Email This Post

Posted In: copyright , trade secrets , trademarks

Bookmark and Share
July 27, 2010

Sniffing out dog treat logo trademark

dog logo.jpg

Dear Rich: I have a question about a logo for my business. I just started a dog treat business and loved a public domain clip art picture of a dog. I flipped the picture, changed the color, added some shading on his ear, added hearts above his head and grass under his feet. I added my logo, too. I found the original image on the WP Clipart web site. I emailed the site author with a copy of my changes and asked if since it was public domain, could I use it commercially. He said yes. I am now wanting to trademark or copyright my logo. If so which one do I do: a trademark or copyright? The Dear Rich Staff -- who is wondering why we're getting so many dog-related questions these days -- reports that if you want to preserve the exclusive right to use this image with your dog treats, you'll need to (1) start using it in connection with the sale of your treats (that is, on the packaging or in the advertising) and then, if you have the  budget, you should file a federal trademark registration. Assuming the image is truly public domain (and it looks that way from the source website), then the coast is clear. Keep in mind that anyone else can use the same dog as their trademark, as long as it is does not compete with you in the field of pet food and dog treats. As for copyright, you have a copyright in the version of the dog you created although anyone else is free to use the original without infringing your dog. By the way (insert FTC disclaimer), our employer is one of the few websites to offer help for dog owners and trademark owners. 

Posted by Rich Stim | | Email This Post

Posted In: copyright , trademarks

Bookmark and Share
July 26, 2010

Will copyright protect my imaginary friend?

beagle_dog.jpgDear Rich: I am writing a children's book based on the imaginary and not so imaginary friends my children had growing up...my daughter's imaginary friend and my son's stuffed dog. The stuffed dog had a name embroidered on it but my son never referred to the dog by that name. He gave it a different name. So in my book I refer to the dog using the name my son used. I had drawn a picture of the dog years ago and had it framed in my son's room when he was young (he's 38 now). I want to give the illustrator that picture so he can use it as a guide for drawing this dog in the book. Would that be any kind of copyright infringement? I wondered if I could have the name tag show the name my son used for his dog rather than the real one. Actually this stuffed dog looked pretty much like Snoopy but in different colors. I assume there was no copyright or patent problem since both of these stuffed animals are sold in stores. The one I'm using was not sold for many years but has recently been re-introduced online. I would not be using a photo of this stuffed dog. The illustration in the book will be modeled after my drawing of this dog. You can probably go ahead with your plans. You might run into a problem if you copied Snoopy and Snoopy's owner saw your book and thought your dog drawings were rip-offs. But that presumes a lot of things, including the fact that the stuffed dog is Snoopy or whether it is instead one of hundreds of other stuffed dogs that may or may not be copyrightable. In any case, whatever you can do to distinguish your drawings from the stuffed dog will help -- remember not every cartoon beagle is Snoopy and not every cartoon mouse is Mickey. As for swapping the names, that's more of a trademark than a copyright issue, but it depends on a similar question -- are consumers likely to be confused between the two dogs?
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'.

Posted by Rich Stim | | Email This Post

Posted In: copyright , trademarks

Bookmark and Share
July 22, 2010

Risky Business? Sole Proprietorship Owns Trademark

personal liability.jpgDear Rich: I am starting a small business but have not yet incorporated. I want to register a trademark for the business name as it is available but I eventually want the business to own the mark. I have heard there may be liability issues if the company is sued in the future if the trademark was originally registered by an individual (I.e., the individual may also be sued personally along with the corporation) even if ownership of the trademark is transferred to the business. Is it advisable to initially own the trademark as an individual? Typically, when a sole proprietor converts to a corporation, all debts and obligations of the business are assumed by the corporation and that shields the previous owner. Of course, that's a simple take and in reality someone who sues you can name everybody reasonably related to the problem and force them to prove they're not liable. There's no way to prevent being named in the lawsuit; what matters is the ease with which your attorney can personally extricate you. 
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.  

Posted by Rich Stim | | Email This Post

Posted In: trademarks

Bookmark and Share
July 20, 2010

Can We Use Best Western in Cambodia?

logo-bestwestern.gifDear Rich: We are Australians and are taking over the management of a guesthouse in Siem Reap, Cambodia. We would like to call our guesthouse BEST WESTERN GUESTHOUSE because we want to attract the western visitors and volunteers who come to stay in Siem Reap. We are concerned, however, that there is an international hotel chain called Best Western Hotels and that they may try to stop us calling the guesthouse the name we want. We are thinking because it has the word "guesthouse" in the name, and the other has the word "hotel" that there should not be a problem. I have looked on business names register and I cannot find another Best Western Guesthouse. The Dear Rich Staff is fond of Australia, (having once worked at the now-defunct Farmer's Department store). So, we wish we had good news for you ... but our suggestion is to ditch the name. In case you're not aware Best Western has hotels in Vietnam and Cambodia. So, assuming the chain learns of your use, you'll be repainting your sign faster than you can say "cease and desist." As for the use of "guest house" instead of hotel, keep in mind that the company has registered the mark "Best Western" for hotel, motel and resort services. Modifying the words that precede or follow the mark will have little value, especially if you're competing in the same field. You should probably forget about Best Eastern as well.

Posted by Rich Stim | | Email This Post

Posted In: trademarks

Bookmark and Share
July 7, 2010

Speed Dating for Copyrights and Trademarks

speedating.jpgToday we'll see how many questions we can answer in less than 20 minutes. Ding! 
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.

Posted by Rich Stim | | Email This Post

Posted In: permission , trademarks

Bookmark and Share
July 5, 2010

Selling Trademarks Online

trademarksale2.jpgDear Rich: I would like to put my trademark up for sale. What internet site would be the best place for this in your opinion? We saved this question for today because it's a legal holiday (and presumably a lower than usual readership) and we're feeling very inadequate because we don't have any suggestions for you. As the Internet developed, we've watched auction sites and bartering sites for intellectual property come and go (with the emphasis on the "go"). We tracked a few that are currently operating such as this one and this one and tried to research them to assess their legitimacy ... but we had little luck finding info. We're not sure why we're so wary of sites such as these ... could it be the web design? 
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.

Posted by Rich Stim | | Email This Post

Posted In: trademarks

Bookmark and Share
June 30, 2010

Pippi for Pops? Perhaps!

Pippi_Langstrumpf_Pippi_Longstocking.jpgDear Rich: I'm about to launch my very small handmade frozen fruit pop business. The name we all like best for the product is PippiPops. I've done an online search through USPTO and although "Pippi Longstocking" is a federally registered trademark, "Pippi" is listed as "dead" and abandoned. Can a name like "Pippi" be used as a trademark? Do I risk infringing although my business has nothing to do with the books or other goods? We're big fans of Pippi Longstocking and it's not just because we've finally finished the Steig Larsson trilogy and we're convinced that the resourceful Lisbeth Salander is Pippi's distant Swedish relative (Steig once characterized Lisbeth as a "gone wrong version" of Pippi). No, the Dear RIch Staff goes way back to Pippi-land. We recall a mild mid-80s addiction to Mr. Nilsson and the re-runs of the Euro TV series  (BTW, Pippi's first name is actually Pippilotta). 
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). 
Pippi and food trademarks. Thumbnail image for pippi.jpg
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.

Posted by Rich Stim | | Email This Post

Posted In: trademarks

Bookmark and Share
June 23, 2010

Keeping Monuments Safe From Photography

Mount_Rushmore_National_Memorial,_merged.jpgDear Rich: I have been looking for ways to protect a monument from people taking pictures of it and selling the images. The icon is owned by a non-profit and is very distinguishable. Is there a way to protect "images" of the icon? The logo and name will be protected by a trademark but we would like to protect licensing of the image and monument through an application process, similar to a sports team at a university. We're not positive what type of work you're trying to 'protect.' You refer to it as both a monument -- which is a structure created to honor a person or event -- and an icon -- which is an enduring image or symbol. (Is it like maybe a statue honoring Michael Jackson?)
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

Posted by Rich Stim | | Email This Post

Posted In: permission , trademarks

Bookmark and Share
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.

Posted by Rich Stim | | Email This Post

Posted In: registration , trademarks

Bookmark and Share
June 9, 2010

Should we gamble on using band belt buckle?

RGambling.jpgDear Rich: I work for an art publishing company and a question arose recently. We'd like to publish a photo of a girl playing a fiddle and she is wearing a belt buckle that says the name of her band. Should we remove the band name or is it safe to publish as-is? This issue came up in another instance. We publish the work of an artist who paints farm scenes and he has several brand-specific tractors in his paintings (John Deere, etc.). If he removes the tractor name is he in the clear? Or would the colors need to be changed as well so the imagery doesn't "suggest" John Deere? And is he free to publish prints of a barn image with the "Chew Mail Pouch Tobacco" advertisement painted on the side? I'm always uneasy making a call on these issues. I see you have a couple books, I might have to check them out! We hope you check out our books because from the looks of it, the Dear Rich Staff isn't having much luck at the slots. We included this photo just to let you know that we're not worried about reproducing trademarks in our photos. That's because editorial uses (yeah, that's us - ed) of trademarks don't require permission. Of course, we're not clear if your company is making editorial or commercial use. If you're publishing art books it's probably editorial; if you're publishing prints, it's more likely to be commercial. 
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.

Posted by Rich Stim | | Email This Post

Posted In: trademarks

Bookmark and Share