Recently in trademarks Category

March 9, 2010

Reselling Apple Products Redux

apple-logo.jpgDear Rich: I have a question about one of your posts, titled Reselling Apple Products from February of 2009. I am interested in opening an online store and selling Apple products. However, I am not interested in becoming an authorized reseller. Am I allowed to do that?  I emailed Apple (their reseller program) asking whether I can do that, and they emailed me back this morning: "Ben, you can only sell Apple products as an Apple Authorized Reseller." Are they right? Will I be acting illegally if I open my store and sell their products? Gee, was that really over a year ago that we wrote that post about reselling Apple stuff? Time sure flies when you have mutated DNA.  
Is Apple right? ... Since Apple's email has raised concerns, we reviewed our information. Conclusion: we're standing by our post. The Dear Rich Staff loves its Mac (and by extension that loves goes out to all Apple employees) and we can only assume that the Apple customer service rep who responded to you had a momentary lapse of judgment perhaps triggered by iPad hysteria. 
Hassling Nonauthorized Resellers? Apple cannot halt resales of legitimately acquired U.S. versions of its products. But it can enforce its copyright and trademark rights which means that they may go after unauthorized resellers who use the Apple logo or name to imply Apple's endorsement, or who lift advertising copy or images from the Apple site. On that basis, they pursued unauthorized iPod sellers in 2005 and pursued unauthorized Mac resellers back in 1998. They will also apparently pursue unauthorized resellers who induce authorized resellers to breach their reseller agreements whatever that means -- we haven't located a reseller agreement, so we're not sure.

Posted by Rich Stim | | Email This Post

Posted In: first sale , trademark fair use , trademarks

Bookmark: Bookmark Reselling%20Apple%20Products%20Redux at Google.com Bookmark Reselling%20Apple%20Products%20Redux at del.icio.us Digg Reselling%20Apple%20Products%20Redux at Digg.com Bookmark Reselling%20Apple%20Products%20Redux at Spurl.net Bookmark Reselling%20Apple%20Products%20Redux at Simpy.com Bookmark Reselling%20Apple%20Products%20Redux at NewsVine Blink this Reselling%20Apple%20Products%20Redux at blinklist.com Bookmark Reselling%20Apple%20Products%20Redux at Furl.net Bookmark Reselling%20Apple%20Products%20Redux at reddit.com Fark Reselling%20Apple%20Products%20Redux at Fark.com Bookmark Reselling%20Apple%20Products%20Redux at Yahoo! MyWeb
March 4, 2010

Claiming Rights to NBA Player Nickname

TM_onas_jerebko.jpgMy nephew has come up with a new nickname for the NBA player Jonas Jerebko from Sweden ("The Swedish Eagle"). He and his buddy have come to games with a self designed t-shirt that sports an eagle-like bird with a ball in the talons and the jersey number of the player, player's name on the back like a jersey and the player's country flag, as well as cardboard wings and have generated a little publicity for themselves and their concept. Pictures of them have been on a couple of websites, a newspaper, jumbotron at the arena and television coverage of the game. Jerebko also has signed the cardboard wings with his name and an "aka The Swedish Eagle." They are in the process of obtaining a trademark so they can sell t-shirts or other marketing kitsch. No one has the title yet. Can they print the shirts before getting trademark for "The Swedish Eagle" concept? Do they need Jerebko's permission? NBA permission? Can they use the shirts without his name? Do my nephew and friend need a partnership or can they register under both names? The Dear Rich Staff isn't very good at forecasting the future, but one thing we can predict with some certainty is that as soon as the NBA is aware of your nephew's sale of merchandise with the player's name and number, they'll get their lawyers to fire off a letter demanding that he halt the activity. We could be wrong -- and they may prefer to wait and see if it goes away itself. But if we were in your nephew's position, we wouldn't file that trademark application. As nice as the imagery and nickname may be, people are buying the merchandise because of its association with the player -- the use of his name and number cinches the association. The NBA, along with the various teams, controls the rights to exploit the player for merchandising purposes. So, he's stepping on those rights and the NBA usually doesn't like it. 
But we thought up the nick name ... As we've pointed out before, creating a trademark does not give you exclusive trademark rights. You get the rights if the mark qualifies and if you use it in commerce. Your nephew's application may be granted (or maybe not...)  but he'll have a hard time using it if he combines it with any insignia or text that identifies the NBA or its players. He'll also have an uphill battle trying to stop others from using the name in connection with Jerebko. If your nephew avoids any mention of the player name or number or other team identifier, he may be able to get away with his use and sale of merchandise ... it's a little bit like the recent situation in New Orleans. But the bigger his operation becomes, the more likely he'll be to run into trouble.

Posted by Rich Stim | | Email This Post

Posted In: right of publicity , sports , t-shirts , trademarks

Bookmark: Bookmark Claiming%20Rights%20to%20NBA%20Player%20Nickname at Google.com Bookmark Claiming%20Rights%20to%20NBA%20Player%20Nickname at del.icio.us Digg Claiming%20Rights%20to%20NBA%20Player%20Nickname at Digg.com Bookmark Claiming%20Rights%20to%20NBA%20Player%20Nickname at Spurl.net Bookmark Claiming%20Rights%20to%20NBA%20Player%20Nickname at Simpy.com Bookmark Claiming%20Rights%20to%20NBA%20Player%20Nickname at NewsVine Blink this Claiming%20Rights%20to%20NBA%20Player%20Nickname at blinklist.com Bookmark Claiming%20Rights%20to%20NBA%20Player%20Nickname at Furl.net Bookmark Claiming%20Rights%20to%20NBA%20Player%20Nickname at reddit.com Fark Claiming%20Rights%20to%20NBA%20Player%20Nickname at Fark.com Bookmark Claiming%20Rights%20to%20NBA%20Player%20Nickname at Yahoo! MyWeb
February 22, 2010

Cracker Jack and Other Roller Derby Names

whip-it-tiff-1.jpgDear Rich: I'm trying to find my roller derby name. Being a sci-fi geek, I'm leaning towards the name of a character in a sci-fi novel that would fit me perfectly. Seeing that Frito-Lay has been suing a skater for use of the name "Crackerjack," I'm a bit concerned about infringement on any copyrights/trademarks. Would using the name of a character from a novel amount to infringement? I can't seem to answer this myself! No, using a name from a novel as a your roller derby name shouldn't cause a problem unless perhaps that name is used as the title of a movie or is so popular that people sell merchandise with the name -- for example, Skywalker or Mr. Spock. As you can guess, the more obscure the choice, the less hassle you will have. (Speaking of sci-fi, didn't you love that new Sam Rockwell DVD?)
That Cracker Jack Thing. Not to put too fine a point on it, Frito Lay didn't actually file a lawsuit over the use of the name; they filed an opposition to Ms. Bell's application for federal registration for CRACKERJACK. (This kind of thing is usually handled by paperwork filed with the Trademark Trial and Appeal Board, whose decisions are thoroughly explained here.) That filing is the kind of action that trademark owners feel they have to take if they want to preserve their rights in the future. (Not that it matters, the company didn't even devise the name, it's believed to have come from a customer who thought the foodstuff was "crackerjack.") 
The Dear Rich Staff would hazard a guess that if it had it not been for her quest for registration, our Frito-munching buddies in Texas would have left Ms. Bell alone. Still, it makes us kind of glad we chucked our Cracker Jack toy collection (even though by the 1980s there were hardly any actual toys, it was all these dopey liability-proof paper things. As always, blame it on the lawyers.)

Posted by Rich Stim | | Email This Post

Posted In: trademarks

Bookmark: Bookmark Cracker%20Jack%20and%20Other%20Roller%20Derby%20Names at Google.com Bookmark Cracker%20Jack%20and%20Other%20Roller%20Derby%20Names at del.icio.us Digg Cracker%20Jack%20and%20Other%20Roller%20Derby%20Names at Digg.com Bookmark Cracker%20Jack%20and%20Other%20Roller%20Derby%20Names at Spurl.net Bookmark Cracker%20Jack%20and%20Other%20Roller%20Derby%20Names at Simpy.com Bookmark Cracker%20Jack%20and%20Other%20Roller%20Derby%20Names at NewsVine Blink this Cracker%20Jack%20and%20Other%20Roller%20Derby%20Names at blinklist.com Bookmark Cracker%20Jack%20and%20Other%20Roller%20Derby%20Names at Furl.net Bookmark Cracker%20Jack%20and%20Other%20Roller%20Derby%20Names at reddit.com Fark Cracker%20Jack%20and%20Other%20Roller%20Derby%20Names at Fark.com Bookmark Cracker%20Jack%20and%20Other%20Roller%20Derby%20Names at Yahoo! MyWeb
February 16, 2010

Overzealous Zazzler Zeeks TM advice


iStock_000000466708XSmall.jpgDear Rich: I'm a Zazzle entrepreneur and like many others at Zazzle am often subject to overzealous abuse of erroneous trademark and copyright violation reports. From my understanding a registered trademark is a pretty specific thing (I could be wrong). So for example if you get a trademark for the words "First Kiss", the trademark would specify the font in which the words would be written, the colors if any other than black as well as whatever else you specify to make your trademark original and how it will be used. "First Kiss" is now your registered trademark...woohoo! Now for the questions: (1) You come across someone who uses the words "First Kiss" in a graffiti styled design with all sort of frills and embellishments and plasters it on a t-shirt, mug etc. Now although the words used are the same they are written in completely different style (font), it looks nothing like the trademarked words and would never be confused as having anything to do with the company/individual that registered the trademark....is that a trademark violation? (2) "First Kiss" are pretty common words and are used frequently. You come across someone who has used those words in a sentence and plastered in on a t-shirt, mug, etc. "Remembering our very first kiss" ...is that a trademark violation? You're starting with some incorrect information; we need to back up a few steps.
Square One Dept. A trademark registration for a name or text is usually not limited to a specific font; if that were the case, Nike, Gucci and Coca-Cola would have problems stopping ripoffs. Even if someone registers the word-mark in connection with a design, courts won't limit protection to the design. They will apply common sense to determine whether someone is trading off the mark unfairly and consumers are likely to be confused. So changing colors and fonts doesn't get you off the hook for infringement.
As for your questions ... Assuming someone registered FIRST KISS for t-shirts and cups, they would have priority over subsequent users on similar merchandise and could stop them regardless of the font. You claim that customers "would never be confused." If you can prove that in court, you might be able to get off the hook for infringement, but the The Dear Rich Staff believes that the chances of proving an identical word mark on identical goods does not infringe is little bit like Dr. Richard Kimble finding the one-armed killer.
Trademark fair use. Your second question is a little more complex and relies on interpreting the rules for trademark fair use which we discussed in a previous blog entry. As a general rule, descriptive use of terms is permissible. Again, common sense prevails here since a competitor's repetitive use of a descriptive term may be an  illegal attempt to siphon customers.

Posted by Rich Stim | | Email This Post

Posted In: trademark fair use , trademarks

Bookmark: Bookmark Overzealous%20Zazzler%20Zeeks%20TM%20advice at Google.com Bookmark Overzealous%20Zazzler%20Zeeks%20TM%20advice at del.icio.us Digg Overzealous%20Zazzler%20Zeeks%20TM%20advice at Digg.com Bookmark Overzealous%20Zazzler%20Zeeks%20TM%20advice at Spurl.net Bookmark Overzealous%20Zazzler%20Zeeks%20TM%20advice at Simpy.com Bookmark Overzealous%20Zazzler%20Zeeks%20TM%20advice at NewsVine Blink this Overzealous%20Zazzler%20Zeeks%20TM%20advice at blinklist.com Bookmark Overzealous%20Zazzler%20Zeeks%20TM%20advice at Furl.net Bookmark Overzealous%20Zazzler%20Zeeks%20TM%20advice at reddit.com Fark Overzealous%20Zazzler%20Zeeks%20TM%20advice at Fark.com Bookmark Overzealous%20Zazzler%20Zeeks%20TM%20advice at Yahoo! MyWeb
February 15, 2010

Can Monopoly Come After Me?

MonopolySpongeBobSquarePantsEdition_billboard_1.jpgDear Rich: A few years ago, I came up with my own version of Monopoly to use in high schools as a fun way to teach a topic. The game became so fun and popular that a local science center wanted to play it and open it up as a free competition between schools. I didn't have a problem with that, but was starting to get a little worried about legal issues. I tried several times to contact Hasbro to ask permission, but they never responded. I told the schools that unless they intended on backing me up if any legal issues arrose, that I would not allow the game to be played. No one wanted to back me up, so I decided that I would change the game sufficiently as to make it very different from a Monopoly-like game. I did that and the game looks great and still fun (I'm pretty sure that I changed it enough.). Now, I'm uncertain. Did I change it enough? Really, the only thing that remains similar is that you can purchase property (but they're not houses or hotels) and pay rent? Because I am not selling it, am I safe? If I do decide to turn it into a classroom-type game, how difficult would that be and is the fact that the game was originally based on MONOPOLY going to cause problems? Should I go see a lawyer? Is it worth going through all of the trouble of patenting my idea and/or selling it? How many board game ideas out there really make it (I'm assuming that it is very little)? Can I protect my idea and distribute the game for free (just get organizations to give me cash to produce and distribute for free in schools)?  I'm hoping that you can help. The Dear Rich Staff would like to help but we're pretty exhausted from reading all your questions. Wait a second while we hook up a caffeinated IV drip. 
1. We don't know if you changed the game enough but if people play it and say things like, 'this seems a lot like Monopoly,' the answer is probably, 'No.' 
2. If the only thing the games have in common is the idea of purchasing property, then you're not likely to be infringing.
3. If the game infringes, you will be liable for selling, distributing or licensing. You don't have to make a profit to be an infringer.
4.  If it's not similar to Monopoly it won't infringe even if you were originally inspired by Monopoly.
5. We don't know if you should go see a lawyer. We happen to like lawyers and think they're an interesting group of people. But that's just us. Also, when we speak to lawyers, the meter is usually not running. We would suggest holding off on the legal visits and learning as much as you can by yourself.
6. You may be able to patent your game--possibly with either a utility or design patent--but we wouldn't recommend it as a strategy for board games (which kind of fits in with the whole twisted legal history of Monopoly). In any case, copyright and trademark law should do just fine for you.
7. The Dear Rich Staff used to do a lot of toy licensing and our experience from that was that board game licenses were exceptionally rare. You will have a hard time getting in to see the two or three companies that still make board games, and without major distribution, it will likely become a money-losing venture. Even if you do license it, the chances of breaking through the existing pack of popular and classic board games is slim. (Sorry to be so negative but we're glass-half-empty folks).
8. If your game isn't substantially similar to an existing game and doesn't use a similar trademark, you're legally entitled to do what you want. 


Posted by Rich Stim | | Email This Post

Posted In: copyright , game , patents , trademarks

Bookmark: Bookmark Can%20Monopoly%20Come%20After%20Me%3F at Google.com Bookmark Can%20Monopoly%20Come%20After%20Me%3F at del.icio.us Digg Can%20Monopoly%20Come%20After%20Me%3F at Digg.com Bookmark Can%20Monopoly%20Come%20After%20Me%3F at Spurl.net Bookmark Can%20Monopoly%20Come%20After%20Me%3F at Simpy.com Bookmark Can%20Monopoly%20Come%20After%20Me%3F at NewsVine Blink this Can%20Monopoly%20Come%20After%20Me%3F at blinklist.com Bookmark Can%20Monopoly%20Come%20After%20Me%3F at Furl.net Bookmark Can%20Monopoly%20Come%20After%20Me%3F at reddit.com Fark Can%20Monopoly%20Come%20After%20Me%3F at Fark.com Bookmark Can%20Monopoly%20Come%20After%20Me%3F at Yahoo! MyWeb
February 12, 2010

Pillow Talk

BjonPhone.jpgDear Rich: I want to market a craft that I make. Online I have found numerous other people making the same pillows, in various shapes and forms. I have found one that has a copyright for a shape that goes around the neck. Others may possibly exist but I cannot find the images to determine if the shape and size of mine are the same or different. Mine are a simple square and rectangle, of which there are many versions on-line. What distinguishes mine is my marketing idea -- I want to give it sex appeal, quite different from others. For that reason I am applying for a trademark for my logo and name. But regarding the copyright, would I infringe on anyone's copyright if mine is square or rectangle? No, a useful article cannot receive copyright protection. However, the expressive elements that can be "separated" from the pillow can get protection such as the fabric design or images, or in some cases, the text. Traditional (square, round, etc.) and functional shapes (for example, around-the-neck) shapes of a pillow are not protected by copyright.
Getting a trademark. Seeking trademark protection for your logo and name is probably a good idea if you want to stop someone from using similar content. Of course, the Dear Rich Staff reminds you that to obtain that protection you must have used the marks prior to competitors. 
The young woman in the photo -- my sister, BJ -- grew up to run a thriving crafts business -- Barbini. She's since switched to cell phones. 

Posted by Rich Stim | | Email This Post

Posted In: copyright , crafts , trademarks

Bookmark: Bookmark Pillow%20Talk at Google.com Bookmark Pillow%20Talk at del.icio.us Digg Pillow%20Talk at Digg.com Bookmark Pillow%20Talk at Spurl.net Bookmark Pillow%20Talk at Simpy.com Bookmark Pillow%20Talk at NewsVine Blink this Pillow%20Talk at blinklist.com Bookmark Pillow%20Talk at Furl.net Bookmark Pillow%20Talk at reddit.com Fark Pillow%20Talk at Fark.com Bookmark Pillow%20Talk at Yahoo! MyWeb
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.


Posted by Rich Stim | | Email This Post

Posted In: registration , trademarks

Bookmark: Bookmark Transferring%20TMs%20to%20New%20Corporation at Google.com Bookmark Transferring%20TMs%20to%20New%20Corporation at del.icio.us Digg Transferring%20TMs%20to%20New%20Corporation at Digg.com Bookmark Transferring%20TMs%20to%20New%20Corporation at Spurl.net Bookmark Transferring%20TMs%20to%20New%20Corporation at Simpy.com Bookmark Transferring%20TMs%20to%20New%20Corporation at NewsVine Blink this Transferring%20TMs%20to%20New%20Corporation at blinklist.com Bookmark Transferring%20TMs%20to%20New%20Corporation at Furl.net Bookmark Transferring%20TMs%20to%20New%20Corporation at reddit.com Fark Transferring%20TMs%20to%20New%20Corporation at Fark.com Bookmark Transferring%20TMs%20to%20New%20Corporation at Yahoo! MyWeb
February 2, 2010

But Her Mark is Hundreds of Miles Away

iStock_000002938934XSmall.jpgDear Rich: I was just contacted via email by a woman in another state. She asked me to cease and desist using my trademark if I wanted to "avoid further legal action." My website's domain name is not the same as her trademark. My company provides very similar services but I only operate in Central Florida, hundreds of miles from her business and I have no plans to go beyond my small world. Any advice. There's an old Russian saying, 'Small potatoes but my potatoes.' Actually we're not sure if it's Russian. We think we first heard it in this movie. In any case, we can relate to your problem. Unfortunately, the short answer is that you're not in a good position and would probably be required to change your name.
The registered user. The registered mark has been in use since June 2002 and has been registered since November, 2009 which would give the registered user a presumption of nationwide priority. If you've been using the name since before 2002, you may have limited rights to continue using it in your geographic area but that argument is muddied quite a bit by the fact that both of you are reaching a nationwide audience with your websites. The marks are identical and as you acknowledge, the services are the same. So, if we were a betting blog, we'd bet pretty heavily that the registered user could stop your use.
What should you do? The Dear Rich Staff thinks that the path of least resistance is to change your service mark and to notify the registered user that you are doing so. You can probably continue using the name for your LLC if you're just using it to sign contracts, write checks or for tax filings.

Questions about trademark law? Check out my book with Stephen Elias, Trademark: Legal Care for Your Business & Product Name.
Want to apply for a trademark? Use Nolo's Online Trademark Application.

Posted by Rich Stim | | Email This Post

Posted In: trademarks

Bookmark: Bookmark But%20Her%20Mark%20is%20Hundreds%20of%20Miles%20Away at Google.com Bookmark But%20Her%20Mark%20is%20Hundreds%20of%20Miles%20Away at del.icio.us Digg But%20Her%20Mark%20is%20Hundreds%20of%20Miles%20Away at Digg.com Bookmark But%20Her%20Mark%20is%20Hundreds%20of%20Miles%20Away at Spurl.net Bookmark But%20Her%20Mark%20is%20Hundreds%20of%20Miles%20Away at Simpy.com Bookmark But%20Her%20Mark%20is%20Hundreds%20of%20Miles%20Away at NewsVine Blink this But%20Her%20Mark%20is%20Hundreds%20of%20Miles%20Away at blinklist.com Bookmark But%20Her%20Mark%20is%20Hundreds%20of%20Miles%20Away at Furl.net Bookmark But%20Her%20Mark%20is%20Hundreds%20of%20Miles%20Away at reddit.com Fark But%20Her%20Mark%20is%20Hundreds%20of%20Miles%20Away at Fark.com Bookmark But%20Her%20Mark%20is%20Hundreds%20of%20Miles%20Away at Yahoo! MyWeb
February 1, 2010

Does My Girlfriend Own My Trademark?

iStock_000010127769XSmall.jpgDear Rich: I am starting a fashion design company with my girlfriend. She is the designer and I am handling business/legal issues. She designed the company logo and created the business name. We are going to apply for a trademark for the logo and the name and the question has come up as to whether (i) she should own the trademark alone or (ii) we should be joint owners (we are not seeking to register the trademark in the name of the business to avoid the trademark becoming part of the company's bankruptcy estate upon a bankruptcy). My concern is that, if she owns the mark alone, she can walk away from the table on any given day and take the real value of the brand that we hope to create together. On the other hand, she did design the logo and it seems fair that she should be able to keep the rights to her artwork. Is it common for an entrepreneur to insist on owning a trademark alone or would it be typical to share the trademark among equal business partners even though only one person designed it? Of course, we hope that everything works out perfectly between us and the ownership of the trademark never becomes relevant but, things don't always play out so peachy. Any insight that you could give would be appreciated. We're not sure whether you wanted the insight for keeping things peachy with your girlfriend or about your trademark ownership so we'll address both issues (since they are equally important). 
Keeping things peachy with your girlfriend. There are three elements required for a successful long-term relationship with your girlfriend: (1) personal hygiene -- we can't stress how important this is, whether it's individual cleanliness, bathroom orderliness, or sanitary kitchen habits, (2) social deportment -- here we're talking about that sense of respect that comes from good table manners, interpersonal restraint and general cordiality, even in the face of overwhelming despair and doom, and (3) lots of laughs - without lots of yuks (hopefully not derived from the misfortune of others), most relationships are doomed. Okay, so that should establish a long term union for your business. Now about your trademark.
Creating a trademark does not create trademark rights. It's true that you will need permission from the artist to use copyrightable artwork in a trademark but you won't need permission to use the name (as that is not copyrightable). Even so, creating the artwork doesn't create trademark rights. Those rights are earned by your use of the mark in commerce. If you're operating as a business--we assume you're a partnership--it would make the most sense to create a partnership agreement and for the partnership to own the marks. Your partnership agreement should address what happens to these assets if the partnership breaks up or if one partner wants to buy out the other. Nolo, our employer (insert FTC disclaimer here) has books that can help you do that.
Your bankruptcy plan. We're not clear about your plan to retain ownership of the trademark to avoid bankruptcy. Your fashion business (or whoever owned the marks) would have to license the marks to the business. So, wouldn't the license become part of the bankruptcy plan? The Dear Rich Staff are not experts on that stuff but we wouldn't count on your approach. (And anyway if the company went into the bankruptcy, doesn't that mean that the brand has failed? So what would be the value of the mark?) Anyway, let's think positive even though we know that's usually not a good idea.

Posted by Rich Stim | | Email This Post

Posted In: trademarks

Bookmark: Bookmark Does%20My%20Girlfriend%20Own%20My%20Trademark%3F at Google.com Bookmark Does%20My%20Girlfriend%20Own%20My%20Trademark%3F at del.icio.us Digg Does%20My%20Girlfriend%20Own%20My%20Trademark%3F at Digg.com Bookmark Does%20My%20Girlfriend%20Own%20My%20Trademark%3F at Spurl.net Bookmark Does%20My%20Girlfriend%20Own%20My%20Trademark%3F at Simpy.com Bookmark Does%20My%20Girlfriend%20Own%20My%20Trademark%3F at NewsVine Blink this Does%20My%20Girlfriend%20Own%20My%20Trademark%3F at blinklist.com Bookmark Does%20My%20Girlfriend%20Own%20My%20Trademark%3F at Furl.net Bookmark Does%20My%20Girlfriend%20Own%20My%20Trademark%3F at reddit.com Fark Does%20My%20Girlfriend%20Own%20My%20Trademark%3F at Fark.com Bookmark Does%20My%20Girlfriend%20Own%20My%20Trademark%3F at Yahoo! MyWeb
January 28, 2010

Who Dat Trademark?

fleurdelis.jpgDear Rich: Recently several small shops here in New Orleans, Louisiana have received cease and desist letters from the NFL regarding either the Fleur de Lis symbol or the Who Dat slogan and the Saints. This has been put on merchandise for years by local merchants and never been challenged before. Because we win now all of a sudden people are breaking the law? Do you know anything about this? Is it copyright infringement or trademark issue and which is it the Gold and Black Fleur de Lis or the words Who Dat? Can you explain this to me? I think with all that this city has gone through the NFL should be ashamed. The Dear Rich Staff is not sure whether NFL Enterprises LLC can feel shame. They're a limited liability corporation, not a person. Oh. wait a second, the Supreme Court reported this week that corporations are people, so maybe we're wrong. 
Anyway, as for your question ... This is a trademark issue and apparently it has been a hot topic in NOLA for the past few weeks. As everybody seems to acknowledge:  (1) the NFL has not registered the 'Who Dat,' mark (although several other companies and individuals are trying for registration or claim to own rights) and (2) the NFL/New Orleans Saints owns two fleur de lis design registrations (No. 3135839 and No. 3210572 -- shown above). Our research indicates that the C&D letters that are going out are for efforts that combine the two elements -  the phrase and fleur de lis. The basis for this claim would be that consumers are confused into believing that this merchandise is associated with the NFL. Certainly, the NFL would be hard pressed to pursue vendors selling only "Who Dat" merchandise. So far we haven't found any lawsuits and we assume some PR-savvy NOLA trademark attorneys will jump on the issue (as so many others have) should it head to court. In any case, for now it appears as if it's a Mexican standoff.
Must See Dept. As readers know the staff here doesn't care about football but we'll make an exception for the best football movie since Burt Reynolds scored in The Longest Yard. 

Find out more about trademark law and copyright infringement with my book Patent, Copyright & Trademark: An Intellectual Property Desk Reference.

Posted by Rich Stim | | Email This Post

Posted In: sports , trademarks

Bookmark: Bookmark Who%20Dat%20Trademark%3F%20 at Google.com Bookmark Who%20Dat%20Trademark%3F%20 at del.icio.us Digg Who%20Dat%20Trademark%3F%20 at Digg.com Bookmark Who%20Dat%20Trademark%3F%20 at Spurl.net Bookmark Who%20Dat%20Trademark%3F%20 at Simpy.com Bookmark Who%20Dat%20Trademark%3F%20 at NewsVine Blink this Who%20Dat%20Trademark%3F%20 at blinklist.com Bookmark Who%20Dat%20Trademark%3F%20 at Furl.net Bookmark Who%20Dat%20Trademark%3F%20 at reddit.com Fark Who%20Dat%20Trademark%3F%20 at Fark.com Bookmark Who%20Dat%20Trademark%3F%20 at Yahoo! MyWeb
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.

Posted by Rich Stim | | Email This Post

Posted In: registration , trademarks

Bookmark: Bookmark Will%20My%20Trademark%20Graduate%20to%20the%20Principal%20Register%3F at Google.com Bookmark Will%20My%20Trademark%20Graduate%20to%20the%20Principal%20Register%3F at del.icio.us Digg Will%20My%20Trademark%20Graduate%20to%20the%20Principal%20Register%3F at Digg.com Bookmark Will%20My%20Trademark%20Graduate%20to%20the%20Principal%20Register%3F at Spurl.net Bookmark Will%20My%20Trademark%20Graduate%20to%20the%20Principal%20Register%3F at Simpy.com Bookmark Will%20My%20Trademark%20Graduate%20to%20the%20Principal%20Register%3F at NewsVine Blink this Will%20My%20Trademark%20Graduate%20to%20the%20Principal%20Register%3F at blinklist.com Bookmark Will%20My%20Trademark%20Graduate%20to%20the%20Principal%20Register%3F at Furl.net Bookmark Will%20My%20Trademark%20Graduate%20to%20the%20Principal%20Register%3F at reddit.com Fark Will%20My%20Trademark%20Graduate%20to%20the%20Principal%20Register%3F at Fark.com Bookmark Will%20My%20Trademark%20Graduate%20to%20the%20Principal%20Register%3F at Yahoo! MyWeb
January 11, 2010

No Soup For You

iStock_000010423295XSmall.jpgDear Rich: I work for a law firm that advertises on BART. We're preparing some new ads and we want to use the phrase NO SOUP FOR YOU (which you may recognize from a series of Seinfeld episodes). Our research shows that there are no live registrations at the USPTO for the phrase. We found a domain name using the phrase, "Nosoupforyou.com," which appears to be a Gainesville, Florida local restaurant web-guide. And according to the Dear Rich blog, copyright laws disfavor protection for short phrases. Are we correct to conclude that we're safe to use this phrase in our ads as long as we don't use it in connection with Seinfeld images. Absent any other Seinfeld connection in the ad, you should be good to go. Nobody appears to be exploiting "No Soup for You," as a trademark for legal services (and it's hard to imagine that anyone would). As you indicated, applications were made for restaurant services but both applicants never filed a statement of use indicating that they were actually using the mark. You are correct as to short phrase protection as well. It's possible that the Seinfeld creators could object under principles of unfair competition, arguing that your use confuses consumers as to Seinfeld's association with the law firm--a long shot that seems extremely unlikely. 
Bonus Question: Can 'Soup Nazi' be registered? Some readers may wonder if the fictional source of the phrase -- the infamous 'Soup Nazi,' can be registered as trademark. The answer is no. The USPTO won't register marks with the word 'Nazi' unless it is a historical reference that requires the term such as "VICTIMS OF NAZI PERSECUTION RESTITUTION TRUST." Otherwise, "NAZI" marks are rejected under Section 2(a) as being immoral or scandalous. 
Disclaimer: The Dear Rich Staff is flattered that a law firm is asking us for advice, however we must provide our special law firm disclaimer: (1) we don't carry malpractice insurance (and we hope you do), (2) answering your question doesn't create an attorney-attorney relationship, and (3) nothing we tell you is confidential (even if we say it is). 

For more information about getting permission, check out my book Getting Permission: How to License & Clear Copyrighted Materials Online & Off.

Posted by Rich Stim | | Email This Post

Posted In: advertising , permission , trademarks

Bookmark: Bookmark No%20Soup%20For%20You at Google.com Bookmark No%20Soup%20For%20You at del.icio.us Digg No%20Soup%20For%20You at Digg.com Bookmark No%20Soup%20For%20You at Spurl.net Bookmark No%20Soup%20For%20You at Simpy.com Bookmark No%20Soup%20For%20You at NewsVine Blink this No%20Soup%20For%20You at blinklist.com Bookmark No%20Soup%20For%20You at Furl.net Bookmark No%20Soup%20For%20You at reddit.com Fark No%20Soup%20For%20You at Fark.com Bookmark No%20Soup%20For%20You at Yahoo! MyWeb
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.

Posted by Rich Stim | | Email This Post

Posted In: federal agencies , registration , trademarks

Bookmark: Bookmark Will%20Online%20Registration%20Services%20Steal%20My%20Trademark%3F at Google.com Bookmark Will%20Online%20Registration%20Services%20Steal%20My%20Trademark%3F at del.icio.us Digg Will%20Online%20Registration%20Services%20Steal%20My%20Trademark%3F at Digg.com Bookmark Will%20Online%20Registration%20Services%20Steal%20My%20Trademark%3F at Spurl.net Bookmark Will%20Online%20Registration%20Services%20Steal%20My%20Trademark%3F at Simpy.com Bookmark Will%20Online%20Registration%20Services%20Steal%20My%20Trademark%3F at NewsVine Blink this Will%20Online%20Registration%20Services%20Steal%20My%20Trademark%3F at blinklist.com Bookmark Will%20Online%20Registration%20Services%20Steal%20My%20Trademark%3F at Furl.net Bookmark Will%20Online%20Registration%20Services%20Steal%20My%20Trademark%3F at reddit.com Fark Will%20Online%20Registration%20Services%20Steal%20My%20Trademark%3F at Fark.com Bookmark Will%20Online%20Registration%20Services%20Steal%20My%20Trademark%3F at Yahoo! MyWeb
December 30, 2009

Terrible Towel Satire? Uh ... not really.

103641-1.jpg
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.

Posted by Rich Stim | | Email This Post

Posted In: licenses , registration , sports , trademarks

Bookmark: Bookmark Terrible%20Towel%20Satire%3F%20Uh%20...%20not%20really. at Google.com Bookmark Terrible%20Towel%20Satire%3F%20Uh%20...%20not%20really. at del.icio.us Digg Terrible%20Towel%20Satire%3F%20Uh%20...%20not%20really. at Digg.com Bookmark Terrible%20Towel%20Satire%3F%20Uh%20...%20not%20really. at Spurl.net Bookmark Terrible%20Towel%20Satire%3F%20Uh%20...%20not%20really. at Simpy.com Bookmark Terrible%20Towel%20Satire%3F%20Uh%20...%20not%20really. at NewsVine Blink this Terrible%20Towel%20Satire%3F%20Uh%20...%20not%20really. at blinklist.com Bookmark Terrible%20Towel%20Satire%3F%20Uh%20...%20not%20really. at Furl.net Bookmark Terrible%20Towel%20Satire%3F%20Uh%20...%20not%20really. at reddit.com Fark Terrible%20Towel%20Satire%3F%20Uh%20...%20not%20really. at Fark.com Bookmark Terrible%20Towel%20Satire%3F%20Uh%20...%20not%20really. at Yahoo! MyWeb
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.

Posted by Rich Stim | | Email This Post

Posted In: registration , trademarks

Bookmark: Bookmark %22Trademark%20Pending%22%20Status%3F%20Not%21 at Google.com Bookmark %22Trademark%20Pending%22%20Status%3F%20Not%21 at del.icio.us Digg %22Trademark%20Pending%22%20Status%3F%20Not%21 at Digg.com Bookmark %22Trademark%20Pending%22%20Status%3F%20Not%21 at Spurl.net Bookmark %22Trademark%20Pending%22%20Status%3F%20Not%21 at Simpy.com Bookmark %22Trademark%20Pending%22%20Status%3F%20Not%21 at NewsVine Blink this %22Trademark%20Pending%22%20Status%3F%20Not%21 at blinklist.com Bookmark %22Trademark%20Pending%22%20Status%3F%20Not%21 at Furl.net Bookmark %22Trademark%20Pending%22%20Status%3F%20Not%21 at reddit.com Fark %22Trademark%20Pending%22%20Status%3F%20Not%21 at Fark.com Bookmark %22Trademark%20Pending%22%20Status%3F%20Not%21 at Yahoo! MyWeb