FAQ – Common law trademarks

FAQ – Common law trademarks

Am I protected with a common law trademark – without federal registration?Q&A: Common Law Trademarks

Q: I recently started selling a product in the US.  I registered the copyright for photos and designed some unique product packaging that included the brand name I came up with.  I think it pretty distinctive and I am not aware of anyone else selling a similar product by the same name.   Do I have to register my trademark to prevent others from using it?

A: Kenneth’s answer:  Since your mark is not registered you are limited to the common law trademark rights. Common Law Trademarks are generally limited in scope to the geographic area where the mark is known (think of a restaurant where everyone has heard of it in one town, but is unknown in another). Common law trademarks can be enforced (but not as well and as easily as registered marks) in both state and federal courts. In short, it depends on your long term business objectives.  While registration may not be required for everyone, deciding what’s right requires actual consultation with people knowledgeable about trademarks.

Trademark Law Links

10 Trademarks Just in Time for Halloween

10 Trademarks Just in Time for Halloween

While some folks might think trademarks can be a little scary, I know that they can also be a little fun.

10-Trademarks-Just-in-Time-for-Halloween-.jpgG&S: Processed cereal-based food to be used as a 10-Trademarks-Just-in-Time-for-Halloween-.jpgbreakfast food, snack food or ingredient for making other foods.Serial (no pun intended) 85120586 and 85120583 
G & S: Beer.10-Trademarks-Just-in-Time-for-Halloween-.jpgSerial: 86110135Yes – a stumbling disheveled guy is your image for beer – why didn’t this get rejected as merely descriptive?
G & S: Books in the field of children’s literature.10-Trademarks-Just-in-Time-for-Halloween-.jpgSerial: 86271191Whenever I put my child to bed, I always like to talk about monsters too – keeps her quiet when I tell her how she will get eaten-up if she asks for a glass of water.
10-Trademarks-Just-in-Time-for-Halloween-.jpgG & S: Parlour games.Serial: 86222077What the heck is a Haint you ask?  Well I had to look it up too – God bless American entrepreneurship.http://www.haintinabox.com/
G&S: Magazines featuring women modeling in horror-themed pictorials for entertainment purposes.10-Trademarks-Just-in-Time-for-Halloween-.jpgSerial: 86506372And Playboy decided to get out of the nudie business – perhaps they just weren’t putting enough dripping blood on them?
10-Trademarks-Just-in-Time-for-Halloween-.jpgG & S: Clothing, namely, short and long sleeve t-shirts, sweatshirts, jackets, baseball hats, and beanies.Serial: 85803000My first reaction was “How did this get by Major League Baseball??”, then I noticed that they have filed a pending cancellation action (http://ttabvue.uspto.gov/ttabvue/v?qs=85803000)
10-Trademarks-Just-in-Time-for-Halloween-.jpg86446861G & S: Sporting Goods, namely, skateboards.AAARRGGHHH – Happy Face Vampire
8639254210-Trademarks-Just-in-Time-for-Halloween-.jpgG & S: Repair of computers, cell phones, and tablets.I can live with that.  Sometimes my computer feels a little brain dead.
8639600210-Trademarks-Just-in-Time-for-Halloween-.jpgG & S: Firearms.I particularly like the description on this one.  “The mark consists of a vampire skull with bullet hole.”   Don’t they know it take stake to the heart – zombies need to be shot in the head.

See How to Kill A Vampire (http://www.gods-and-monsters.com/how-to-kill-a-vampire.html)

8633194410-Trademarks-Just-in-Time-for-Halloween-.jpgG & S: LED (light emitting diode) lighting fixtures.Really?  Shouldn’t the light be used for killing Vampires (see above)

Trump’s Trademark Issues

How long has Trump been planning this?

MAGAApparently Mr. Trump decided he liked the sound of “Make America Great Again” as  far back as 2012, when he first filed an application for the phrase with the Trademark Office (Serial 85783371).   However, in the application he seems to be  anticipating using it for a Political Action Committee, rather than for his own candidacy. The required list of services he listed were as follows:

  • Political action committee services, namely, promoting public awareness of political issues. (IC 035)
  • Fundraising in the field of politics. (CIC 036)

However he was apparently not ready to use it back then, as he did not finalize the registration until earlier this year – about a month before he formally announced.

Trademark Issue #1

Subsequently, on August 13th two new filings  (86724115 , 86724213were made by him for the phrase and include an exhaustive list of such items as  

  • Bumper stickers; decorative decals for vehicle windows; stickers; advertising signs of papers; advertising signs of cardboard; placards and banners of paper or cardboard; printed publications, namely, pamphlets providing information regarding Donald J. Trump as a political candidate; posters; pens
  • Clothing, namely,sweatshirts, T-shirts, tank tops, long sleeve shirts; headwear, namely, caps and hats; baby clothing, namely, one piece garments; children’s clothing, namely, t-shirts
  • Campaign buttons, and
  • interestingly a series of items referencing “Political campaign services”.

This last items underscores an interesting question. Why include this if he already had the rights for “Political action committee services” –  while I won’t pretend to know, the answer may lie in the fact that a Political Action Committee recently popped up using the same name which begs the question that if the trademark is Trump’s – he is either coordinating with the PAC, or  he needs to police it and demand they change the name in order to preserve his rights.

Trademark Issue #2

On August 5, 2015, a another party filed an application for “Make America Great Again” for 

  • All purpose sport bags; Backpacks; Duffel bags; Knapsacks; Tote bags; Umbrellas and
  • Footwear; Hats; Jackets; Pants; Shirts; Short-sleeved or long-sleeved t-shirts; Shorts; Socks; Sweat shirts; Swim wear

This application was filed as an intent to use application, while Trump’s August 13 application alleged prior usage as of 4/12/2015.   Trump’s second August 13 application however, listed the identical items “All purpose sport bags; Backpacks; Duffel bags; Knapsacks; Tote bags; Umbrellas” as being as intent to use.  So what? – you might ask. Strictly speaking, this would normally mean that the other filer would have priority over any claim has on exclusive rights to the phrase for the purposes of items like these., but the fact that he has now filed an application for identical goods hints that he will oppose the issuance of other applicant.

I also think it is safe to say that Mr. Trump plans to use this application to try and stop anyone from using the phrase on any merchandise from now on.  Ebay is Awash in items already . The real question will be if he can be successful in enforcing the mark for these items (See trademarking a phrase for tee-shirts).

 

 

Color-only Trademarks

What do UPS, Tiffany and Co., and Owens Corning have in common?  The mere sight of the color of their product (Pullman Brown, Robin’s Egg Blue, and Pink) brings to mind who they are without ever having to place a logo or word on their products.   These marks demonstrate how real people shop for goods and services and how trademarks are about providing a potential consumer resources to identify the source of the goods and services they are purchasing – while preventing others from using those identifiers to create consumer confusion.

Color Trademarks

Color TrademarksThe leading case involving color as a trademark is  Qualitex Co. V. Jacobson Prods. Co. (514 U.S. 159, 161, 163, 115 S. Ct. 1300, 131 L.Ed. 2d 248 (1995)), which noted that a color can sometimes serve as a trademark by itself  “when that color has attained ‘secondary meaning’ and therefore identifies and distinguishes a particular brand (and thus indicates its ‘source’).”   The Court went on to provide that if the color serves a “function” then it by definition is not protected by trademark law.  Function is broken out into “utilitarian” and “aesthetic” functionality – this is largely a nod to the availability of other areas of intellectual property such as patents (dealing in realm of utility), and copyright (entwined with issues of aesthetics) which are designed for these  uses.  What is left is color used as a source identifier – clearly within the scope of trademarks.

Courts, however, recognize that such use is limited and has potential to be damaging to many industries if overused, and as a result have taken the position that color by itself is not inherently distinctive, and as a result most color-only marks will have had to acquire distinctiveness through actual use.   This means that new users of a color, wishing to register color-only marks are limited to filing applications on the supplemental register until such time that they can show the mark has acquired distinctiveness.

Call 612-414-3113 to discuss how I can help you with your trademark and copyright related matters.

Additional Resources

 

I have a great idea for a tee-shirt!!!

Tee-Shirt Trademarks

I have a great idea for a tee-shirt – can I register it as a trademark???

Short answer – probably not.  The main issue with whether a slogan or word  operates as trademark is how it is used.   This is especially true of tee-shirts.

If the mark / slogan is just printed on a shirt – no protection – the Trademark Office deems that as being “merely ornamental” (there is an exception when the mark is also used for other products or business name).  However if the mark / slogan is also used to identify the tee-shirt company, it may serve as a trademark and be registered (i.e. it is a “source identifier”) – the only caveat is that you would need to show it being used in that manner rather than just emblazoned on the front.  Showing the mark this way can be done be showing the phrase on things like the name of an online store, packaging, an inside-tag, or a hang-tag.

So “Peanuts for Everyone” emblazoned on the front of a shirt – likely not a trademark.  PEANUTS FOR EVERYONE brand tee shirts, with slogans like “Peanuts for Everyone” on the front – trademark.

With that said, if “Peanuts for Everyone” is included in a design on the shirt; that particular design may have copyright protection, but the phrase by itself is unlikely to retain the protection.

 

Pied Piper’s Trademark Problems

On a recent episode of HBO’s new show Silicon Valley, the hapless coders find themselves in a bind when they realize that the “placeholder” company name “Pied Piper, Inc.” was already in use by Pied Piper Irrigation, another California company. The problem is that they received a check from a venture capitalist in the name of the Pied Piper Inc. – humorous situations then ensue as the protagonist tries solve the problem – and then, I began ranting at the television to the chagrin of my wife.

Why, you might ask, does this drive me crazy? Not because it is a common and overused plot point, but more notable because it gets both state registration laws and trademark laws completely wrong by muddling the laws of business registrations and trademarks.

Someone already registered my business’ trade name – what do I? A trade name is the name used to identify the business. States have varying restrictions on registration of similar names when forming a new business – primarily, they need to see that the name (along with the designated business form – inc, corporation, limited liability, etc) is not already in use. This means that while an exact match of something like “Pied Piper, Inc.” will not be allowed, other variations might be. So in some states “Pied Piper, Corp”, “Pied Piper Holdings, Inc”, or even “Pied Piper 2, Inc. will likely be acceptable for registration of a different business. Some states even allow it to go as far as “Pied Piper Inc.” vs “Pied Piper Incorporated”. As an example, there is currently an active company registered in California with the name Pied Piper, Inc.” – there is also “The Pied Piper Exterminators, Inc.”, “Pied Piper Players, Inc.”, and “Pied Piper Play Center” – there are also suspended businesses using similar variation on the theme. Simply put, the standard of what variation of name is acceptable is not that high and the problem for the boys in Silicon Valley aren’t real in regard to the business trade name. In the TV show the issue came up because the protagonists had received a check made out in the name they had been using as a placeholder; the reality is that most banks aren’t concerned with minor variations in the corporate name and “Pied Piper IP Holding Company”, will most likely be able to cash a check made out simply to Pied Piper, Inc.

But that other company is using my trademark. On Silicon Valley, the episode moves forward to discover that the company trademark PIED PIPER is the company name of a nearby irrigation company. My response — so what? Trademarks are not simply the name associated with any business, but rather a name associated with specific goods or services. Is there any likelihood that someone buying software using the mystery algorithm that is the core of the tech companies’ product is going to confuse that it originated from the irrigation company services? – not likely. Both companies can simultaneously use the mark PIED PIPER without any concern of trademark infringement, because there is little likelihood of confusion by consumers.

But my trademark has to be the same as my trade name. Nope – not true – while the two are often related, there is no rule that says they have to be the same. The best example for this is Doctor’s Association, Inc. Who is Doctor’s Association? – well you probably know them better by their SUBWAY trademark. What this means is that our newly minted entrepreneurs can register whatever business name they want, and still operate under the trademark PIED PIPER, and there is no need for them to go and purchase the name from the cranky irrigation company owner.

So what is the take away here? – don’t take legal advice from TV sitcoms – then again I hope you already knew that. By the way, it is a funny show.

Top 10 Lists

Trademark top tensI was recently asked by an attorney friend about using the phrase “The Top Ten Reasons…” in relation to a top ten list (á la David Letterman) that she was planning on using in a marketing piece.  This wasn’t a comic work meant to mimic the David Letterman version, but rather a serious piece meant to provide useful information regarding estate planning strategies.  So the question to me was whether she could use the “Top Ten List” format without running afoul of Letterman’s intellectual property.

My response was that there was a very low probability of risk – the term “Top Ten List” is descriptive and therefore not generally protected by trademark unless it has acquired such distinctiveness that the term is pretty much only associated by one source.  While, in certain contexts it is undoubtedly a very famous list, it is hardly the only place in which you can find people putting together lists of things in quantities of 10.

Further, there would need to be a showing that her use was so similar, that consumers were likely to be confused as to the source – i.e. people looking to enjoy a late night comedy show routine, were somehow distracted by her “Top Ten Reasons” and were confused as to the source of the information thinking it came from David Letterman. While it’s always important to make sure that you aren’t infringing other’s IP rights, it’s equally important to not let the use of descriptive terms by others prevent you from describing your own goods and services and sharing what you have with the world.
Linsane Trademarks

Linsane Trademarks

Speicman Fail - A speciman of a mark in actual use is required for trademark applicaitons, but this one only shows the mark superimposed on the goods.

Since February 7th the Trademark office has received eight trademark applications for the term LINSANITY.   The products identified in applications range from clothing, jewelry, and sport drinks, to eyeglasses and cell phone covers.  The only problem is only one of these applications is on behalf of the Knick’s Jeremy Lin (Serial 85541426); and it is a basic premise of trademark law that you can not register the name of a living person without that person’s written consent.  Perhaps more concerning, however, is the attempt of people who know him to cash in on his name – one of the applications is by Roger Montgomery for the purpose of “Business management of sports people” (Serial 85542514) and who the Washington Post identifies  as Lin’s own agent.

While some of the applicants may try to argue that it is purely coincidental that they want to register the name in the middle of Mr. Lin’s hot streak (“by Linsanity, I mean LENS -Anity for eyeglass lens – really I did!”), presumably, the trademark examiners will call them out on this blatant attempt to cash in on Mr. Lin’s new found celebrity; but if they don’t, Mr. Lin’s attorney will be able to oppose the registration on his behalf.

Limitation on Color Trademarks in the Fashion Industry

In 1992, shoemaker Christian Louboutin began using red lacquer soles on some of its shoes.  In 2008, the red soles were registered as mark in the US Patent and Trademark Office, and on January 1, 2008, number 3, 361,597, the “red sole mark” came to life.

In 2012 Louboutin sued Yves St. Laurent (“YSL”).  They were seeing red  (pun intended) over the recent Yves St. Laurent 2011 Resort collection, which included red-soled shoes, the Louboutin signature brand detail.  Louboutin filed a trademark action against YSL, which YSL prominently countered with a counter-suit seeking cancellation of the Louboutin trademark registration.  Louboutin responded with a request for a  preliminary injunction temporarily preventing YSL from selling the shoes until the dispute was settled.  The district court initially denied Loboutin’s request largely on the basis that . . .”in the fashion industry color serves ornamental and aesthetic functions vital to robust competition  . . . However, “Color alone “ sometimes ” may be protectable as a trademark, “where that color has attained ‘secondary meaning’ and therefore identifies and distinguishes a particular brand (and thus indicates its ‘source’).” Conversely, color may not be protectable where it is “functional,” meaning that the color is essential to the use or purpose of the product, or affects the cost or quality of the product.”

Affirming in part and reversing in part, the 2nd circuit stated that

We conclude that the District Court’s holding that a single color can never serve as a trademark in the fashion industry, Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., 778 F.Supp.2d 445, 451, 457 (S.D.N.Y.2011) (“Louboutin”), is inconsistent with the Supreme Court’s decision in Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 162, 115 S.Ct. 1300, 131 L.Ed.2d 248 (1995) (“Qualitex ”), and that the District Court therefore erred by resting its denial of Louboutin’s preliminary injunction motion on that ground. We further conclude that Louboutin’s trademark, which covers the red, lacquered outsole of a woman’s high fashion shoe, has acquired limited “secondary meaning” as a distinctive symbol that identifies the Louboutin brand. As explained below, pursuant to Section 37 of the Lanham Act, 15 U.S.C. § 1119, we limit the trademark to uses in which the red outsole contrasts with the remainder of the shoe (known as the “upper”). We conclude that the trademark, as thus modified, is entitled to trademark protection. Finally, we conclude that, because the monochrome design employed by YSL is not a use of Louboutin’s modified trademark, we need not, and indeed should not, address whether YSL’s use of a red outsole risks consumer confusion or whether the Louboutin mark, as modified, is “functional.” 

In short, the Circuit Court rejected the District courts argument that that clothes are inherently aesthetic, and that the addition of an aesthetic feature like the color is merely a function of the design and therefore not protectable as a trademark, however found that the use of the color in this context has to be fairly limited.

While the red sole has become synonymous with Louboutin, with women paying  $595- $1000 for a pair of these status symbol shoes, the ability to take an entire color off of the pallet of future designers would be far reaching and stifle the creativity contained in future catalogs and runways.

Thanks to Sara Harrison for her assistance with this post.

Edited 10/27/14

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