Johnny Football vs Juanito Futbal Trademark Likelihood of Consumer Confusion

Texas A&M University football star and Heisman Trophy winner Johnny Manziel is a couple of quarters into legal battles over the trademark “Johnny Football.”   Part 1 of this post focuses on the battle at the court-house against defendant Eric Vaughan for selling unauthorized “Johnny Football” t-shirts.

This post focuses on the initially refusal from the US Patent and Trademark Office for the mark JOHNNY FOOTBALL.  Johnny Manziel and his entity JMAN2 Enterprises, LLC filed an application on February 2, 2013 as joint owners of a trademark application for JOHNNY FOOTBALL for clothing items as well as motivational speaking.  

On May 22, 2013 the application was initially refused on several grounds.  We’ll focus on the two big ones: 1) the mark is not functioning as a trademark; and 2) likelihood of consumer confusion with trademark applications for JUANITO FUTBAL and JOHNNY BASKETBALL and JOHNNY BASEBALL.

1) The mark is not functioning as a trademark — The only sample submitted to the Trademark Office of how the trademark is being used on clothing was the t-shirt image above.  The trademark examiner argues the large, over-sized placement of the words JOHNNY FOOTBALL  is “merely a decorative or ornamental feature of applicant’s clothing; and does not function as a trademark to indicate the source of applicant’s clothing and to identify and distinguish applicant’s clothing from others.”  I would have to say I agree with the examining attorney.  Amazingly enough to most folks, the smaller the mark, the more likely it functions as a brand identifier.  As an example, even if you purchase a shirt with the word NIKE across the front, it also has the trademark NIKE in the inside neck of the shirt as well as a hang-tag on the shirt.  

2) There is a likelihood of consumer confusion with trademark applications for JUANITO FUTBAL, JOHNNY BASKETBALL and JOHNNY BASEBALL –  Trademark applications are pending for JUANITO FUTBAL, JOHNNY BASKETBALL and JOHNNY BASEBALL. 

The Spanish to English translation of JUANITO FUTBAL is, you guessed it, JOHNNY FOOTBALL.   When the translation is similar or identical, the foreign language registration can be barrier to registration because of the concern a consumer would believe the two products are from the same source.  Also notice the use of the trademark on the product packaging.  It is placed on the plastic surrounding the shirt as well as on box for shipping.  This is the appropriate use of a trademark on clothing.

Already, LLC in Euless, Texas applied for trademark registrations for JOHNNY BASKETBALL  and JOHNNY BASEBALL. Those applications are pending and baring any third-party opposition to their registration, should be approved in the next few months.  Already, LLC is in the athletic apparel  business and I’ve blogged about their case with NIKE here.  They also have pending applications for JOHNNY HOCKEY, JOHNNY GOLF and several other JOHNNY marks.  I do not believe there was any intentional connection to Johnny Manziel.

Manziel may need a “Hail Mary” to overcome these initial refusals at the US Patent and Trademark Office.

JCP Seeks Dec Action of Trademark Non-Infringement

Plano, Texas-based retailer, JC Penney Corporation, Inc., asked a judge in Texas federal court to find JCP’s use of the name Aspen to describe a pair of winter boots is not infringing of Aspen Licensing International, Inc’s “Aspen” trademark for footwear.

By filing a declaratory judgment action, JCP kept the case in the Eastern District of Texas requiring Aspen Licensing, a Florida entity, to come to JCP’s home court.  According to court documents, Aspen sent several demand letters to JCP and made phone calls threatening litigation if JCP did not make a monetary settlement.

J. C. Penney Corporation, Inc. v. Aspen Licensing International Inc., 4:13-cv-00066-RAS-DDB (E.D. Tex. filed Feb. 8, 2013).

Top 10 Entertainment Law Cases/Disputes/Fun Facts of 2012

Join LA film attorney Gordon Firemark and Texas music lawyer Tamera Bennett as they highlight the top legal issues in 2012 faced by the entertainment industry.

Click here for the Entertainment Law Update Podcast.

Trademark Basics Part 1: Selecting A Trademark

by:  Tamera H. Bennett

Every year we need a refresher course in trademark basics.  You may also be interested in Part 2 “Selection to Application,” Part 3 “Intent to Use,” and Part 4 “Post Registration.”

Q:  What is a trademark or service mark?

A:  A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.  A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. Throughout this post, the terms “trademark” and “mark” refer to both trademarks and service marks.

Q:  What is the difference between a trademark and a copyright?

A:  A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others. Examples of well-known trademarks include NIKE, CHANEL and ZYRTEC.

A copyright is an original work of authorship fixed in a tangible medium of expression; such as a song, book, or sound recording.

Q:   What should I consider in selecting a trademark?

A:  Trademarks are subject to varying degrees of protection. The stronger the mark, the greater protection it will receive.

Resist the temptation to select a mark that describes the goods or services. It is difficult, if not impossible, to protect a mark that is descriptive.  The trademark examiner, when reviewing your trademark application, will categorize a mark in one of four general categories:

• generic
• descriptive
• suggestive
• arbitrary and fanciful

On a scale of 1 to 5, a generic mark is a 1 and an arbitrary mark is a 5. A mark that is a 4 or 5 on the scale has the greatest level of protection and is either suggestive of the goods or service offered or has no connection to the goods, i.e., arbitrary.  A mark that is a 1 on the scale has no trademark protection. A mark that is a 2 on the scale, has limited protection. A mark that is a 3 on the scale is usually a suggestive mark and is protected.

Here is an example to consider in selecting a mark:

If you decided to create a magazine about mountain climbing you might select names such as the “Mt. Climbing Magazine,” the “Climber’s Journal,” “Reaching Peaks,” or even something arbitrary such as “Orion.”  “Mt. Climbing Magazine” is descriptive of the magazine, where as “Climber’s Journal,” “Reaching Peaks,” and “Orion,” will fall somewhere between descriptive and arbitrary.

Take the time to analyze your market and the goods/services you plan to offer.  Remember the strongest marks have little or no connection to the underlying product that is being sold.

The U.S. Trademark Office website is very helpful as to the procedure for filing an application and can be found here.  If you are ready to learn more about trademark attorney Tamera Bennett’s 5 Steps to Filing a Trademark Application, click here.

Copyright Lawyer Tamera Bennett Speaks at TIPLA

Dallas-based copyright attorney Tamera H. Bennett is honored to speak at the Tennessee Intellectual Property Law Association (TIPLA) Conference on Friday, May 4, 2012.

Here are links to many of the Copyright Law Update topics Tamera will discuss — with a few bonus links as well.

The conference provides a full day of CLE on patent, trademark and copyright topics.

Deals and Trends at MIDEM 2011

MIDEM 2011 wrapped in January, but the deals that were signed and forecasts given will have a long-term impact on the music publishing business.  Thank you to my legal intern Abby Kweller for assisting with research on this project.

Partial Listing of Deals:

• The Harry Fox Agency (HFA)  announced the renewal of a licensing agreement with DMI Music & Media Networks.
• HFA has partnered with Ricall to develop a synchronization licensing/clearance service.  HFA has issued sync licenses in the past, but stepped away from that side of the music licensing business several years ago.
• Hypebot has info on deals signed here, here and here.

Trends from MIDEM 2011:

It really seems like MIDEM 2011 was less about signing deals and more about how the music business and delivery of music continues to change moving forward.   A key take-away is that the music business is about successful delivery of content.  Here’s a look at the future of the music business and the MIDEM conference….

• Techy folks attending MIDEM are out numbering the more traditional record labels and music publishers.  This year’s MIDEM was focused on content delivery and the technology to deliver the content may seem more important than the the actual content.  Overall, it seems as if content will be streamed with a flat-fee charged to the consumer.
• Licensing is the biggest hurtle that all the parties face. With the technology in place or on the cusp of release, the tech companies and the music labels/music publishers need to come to terms on how the content owners will be compensated.
• Is delivery of content via the Cloud the future of the music business?
• Read this fantastic White Paper from the MIDEM conference on “Ten Lessons From the MIDEM Conference.”
• There are great resources on trends in the music business on the MIDEM website.

The “Big Game” of Trademark Infringements?

With Super Bowl XLV a few short days away, and less than 30 miles from my office, trademark and copyright infringement of the Super Bowl trademark, and the teams’ trademarks and copyrights are top on my mind.

If the “Clean Zones” I blogged about here do not slow down the infringers, the the weather here in North Texas will discourage many infring-e-preneurs from setting up shop.

The Fort Worth Star Telegram alludes to the NFL having already secured John Doe Temporary Restraining Orders to enforce the NFL’s rights in the registered trademarks of Super Bowl and NFL.  The teams each own their individual trademarks in the team names and logos.

I also blogged about the trademark issues surrounding the World Series here.

 

 

 

 

 

 

Recording Artist and Songwriter Income Streams

Sometimes we need to step-back and have a music business 101 post. 

This link will take you to a summary on the four primary royalty streams in music publishing: mechanical, print, synchronization and performance royalties.

This link is to a chart on the income flow related to a recording artist.

Both documents cover the basics and are a good place to get started.  Be looking for Texas music lawyer Tamera Bennett’s subsequent post on the basic flow of record label/artist royalties when an independent record label uses a digital aggregator to make tracks available from retailers such as iTunes and Amazon.

Do I Need A Music Lawyer?

Some of the best advice to give a person/band desiring a career in the music business is to hire a music lawyer.

After that advice, the next question is “when.” When do I need to hire the music attorney?

Before you call a music lawyer, Tamera recommends you read one or more books related to your career in the music business.  Click here for Tamera’s recommended reading selection.

After you finish your reading homework, when to visit and/or hire a music lawyer really does vary from situation to situation.

I am a Songwriter:

1. If you are a songwriter, you probably do not need an attorney until you have a contract from someone wanting you to assign your copyright or to license your song.
2. Music lawyer Tamera Bennett typically is retained when a collaboration agreement, copyright assignment, single song agreement,  exclusive songwriter agreement, or synchronization license has been presented to a songwriter or music publisher.

I am a Recording Artist, Band, Producer:

1. If you are a recording artist, band or producer you probably do not need an attorney until you are playing frequent gigs and have a “buzz.”
2. As with songwriters, Tamera has found she can best assist artists/bands/producers when a contract is already on the table.  It may be time to call in a music attorney when you are presented with a management agreement, a shopping agreement, a production agreement, or record deal.
3. Keep in mind that a band should typically seek legal advice early on so that a band agreement, partnership agreement and/or formal business entity can be established to spell-out the rights and obligations of the band members.

Can you Pitch my songs?
Most music business books recommend artists and songwriters hire a lawyer to pitch their demos to help secure a songwriter’s agreement or a record deal.  That is great advice, but you really want to make sure the attorney you use has the contacts you need in your specific genre.  As an example, an attorney with contacts in the country market may not be the best fit for a Rap artist.  Tamera’s practice is focused on guiding clients through the music business legal maze so at this time she does not provide pitching as part of her client services.

I want to know how to get started in the music business and protect my songs?
Tamera is often contacted by musicians and artists with questions on how to get started in a music business career, what mistakes to avoid, and how to protect songs, beats, master recordings.  Tamera has found musicians/songwriters receive a greater benefit by reading Tamera’s blog post here for links and information on how to get started in the music business than by scheduling a consultation too early in their career.  Tamera also highly recommends you read at least one of the music business books listed here before you contact a music lawyer.

What if I get sued?
If you think you need to sue somebody or you have been sued, you need to immediately contact a litigation attorney that is familiar with music business issues.  You typically want to hire a litigator that is located in the county where the lawsuit is filed, or an adjacent county.  Tamera helps clients with transactional/contractual matters, but she will provide you names of litigation attorneys that may be of assistance.

Is there a Consultation Fee?
Different attorneys and law firms have varying policies on the fee that may be charged for a consultation.  Whether or not a consultation is charged may also depend on the region of the country where you are located and is typically a business management determination made by the law firm.  A lawyer having or not having a consult fee is not a reflection on the quality of services you will receive.  At this time the Bennett Law Office firm policy is to charge a reasonable consultation fee.

 

Texassports.org: University of Texas Lost Bad Faith UDRP Action

The University of Texas was unsuccessful in a bad faith domain name action to acquire http://www.texassports.org.

The University is the owner of www.texassports.com and registered trademarks for:  TEXAS, UNIVERSITY OF TEXAS, TEXAS LONGHORNS, and LONGHORNS.  In particular, TEXAS is registered for “Entertainment services, namely, providing college athletic and sporting events.”

In the UDRP action, the University asserted http://www.texassports.org was registered in bad faith, that the registrant had no legitimate rights to the name, and the use of the domain may cause confusion with the University’s http://www.texassports.com domain.  The domain http://www.texassports.org was used as  “parking” website for information related to University of Texas sports and sporting events.

To be successful the University needed to prove:

the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

the Respondent has no rights or legitimate interests in respect of the domain name; and

the domain name has been registered and is being used in bad faith.

The UDRP panel found http://www.texassports.org defense persuasive:

“Texas sports” is geographically descriptive and not protected by trademark.  The University does not have the exclusive rights to “Texas” and “Sports.”  The University does not have a registered trademark for “Texas Sports.”  There is no likelihood of consumer confusion.

The University did not prove “bad faith.”  Again, common, geographic terms are not typically going to rise to the level of a bad faith acquisition.

More about the UDRP decision may be found here.

Registration Now Open for Entertainment Law Institute, Austin October 7-8

The 20th Annual Entertainment Law Institute will be held October 7-8, 2010 at the Radisson Hotel & Suites, Austin.

Tamera H. Bennett, Esq. will be presenting on:

• Protecting an Artist’s Legacy Through Estate Planning, Probate and Post-Death Administration of an Artist’s Rights

• Be Careful What You Tweet:  Social Networking Legal Issues

More information about the conference and registration is available here.

Tamera H. Bennett to speak at Tennessee IP Law Association Conference

Trademark, copyright and entertainment lawyer Tamera H. Bennett will speak July 16, 2010 at the Tennessee Intellectual Property Law Association’s Summer 2010 ©LE Semina® in Nashville, Tennessee.

Tamera’s  presentation will focus on recent developments in trademark law.

More information about the conference can be found here.

Michael Douglas’ Ex-Wife Sues For “Spinoff”: Wall Street 2

As Michael Douglas’ new film “Wall Street 2″ is set to release later this year, his ex-wife Diandre Douglas has filed suit seeking half of Douglas’ earnings for the film.

The original “Wall Street” film was released in 1987, during the time of Douglas’ 23 year marriage to Diandre.   The couple subsequently divorced  in 2000 and Michael Douglas has since remarried.

At issue is the language of the couple’s divorce decree, which reportedly entitles his ex-wife to receive half of Douglas’ income for any “spinoffs” from work created during the marriage.  But is “Wall Street 2″ a true “spinoff” or a “sequel,” as it continues the storyline of “Wall Street” twenty years later?

The suit is a good reminder to define terms in agreements- “spinoff,” “derivatives,” “presequel,” and “sequel.”

More information about the case can be found here.

Music Pubishing and The Value of “Glee”

Older pop hits are finding new life on the Fox TV series “Glee.“

Broadway show tunes, Journey, Madonna, and others are finding both “Glee” covers and originals of their songs selling at the top of  iTunes charts.   As of April 2010, three “Glee” cast albums were in the top 10 of iTunes charts and have sold more than one million units.

Music publishers’ interest in “Glee” was skeptical at first (publishes for Bryan Adams and Coldplay both initially said no), but many are now seeing the potential exposure and monetary value of licensing to the hit show.

In the case of a show such as “Glee,” a synchronization license would be negotiated between the music publisher and the producers of the show for the use.  On-camera performance, featured vocal performance, and beginning/end credits, are licensed for a higher fee than background uses.  With “Glee,” there is often no need to secure master recording rights, as the songs are being re-recorded and performed by the “Glee” cast.  Publishers also receive public performance royalties as tracked by ASCAP, BMI, or SESAC for each airing in the U.S. (and by the related performance society in foreign countries).

Critics of the show have said “Glee” ignores music clearance in its story-lines.  In the real world, so long as the glee club is practicing and performing in class, there is an exemption of a public performance license for classroom instruction.  But, if the Glee club/band/chorus are putting on shows, they do need to get licenses. If it is a dramatic work, the schools should secure a license to put on the play, for musical performances, many times there is a purchase or rental of the sheet music.

Entertainment Law Update Podcast: Episode 11

Episode 11 of the Entertainment Law Update podcast is now available.

Topics in this episode include:

In this Episode:

• Ethics and the non-practicing attorney… a long tail
• Zorro draws its sword against M&M candies
• “Free Scooter!” cries Justin Bieber.
• Dramatic vs. Non-Dramatic rights in musical works
• Ride-along producer : Ride-along defendant?
• Bryant v. Media Right, Orchard
• Arista v. Lime Group
• Hot News Misappropriation

For more information or to listen to this episode, click here.

Tamera H. Bennett to speak at Tennessee IP Law Association Conference

UPDATE:  The Tennessee Intellectual Property Law Association ©LE Semina®  has been rescheduled to July 16, 2010.

Trademark, copyright and entertainment lawyer Tamera H. Bennett will speak May 7, 2010 at the Tennessee Intellectual Property Law Association’s Spring 2010 ©LE Semina® in Nashville, Tennessee.

Tamera’s  presentation will focus on recent developments in trademark law.

More information about the conference can be found here.

April 23: UNESCO World Book and Copyright Day

What is the significance of April 23, 1616?

Literary greats Cervantes, Shakespeare and Inca Garcilasco de la Vega all died on this date.  Also born on April 23, are authors Maurice Druon, K.Laxness, Vladimir Nabokov, Josep Pla and Manuel Mejía Vallejo.

April 23 has been designated by United Nations Educational Scientific and Cultural Organization (UNESCO’s),  as World Book and Copyright Day. Through World Copyright Day, UNESCO seeks to promote reading, publishing, and the protection of intellectual property copyrights.

How The Black Eyed Peas Became Sweethearts of Sponsors

Great article in the Wall Street Journal on the branding behind the band “The Black Eyed Peas.”

NX35 Music Makers Mixer Interview with KERA

Denton, TX – More than 100 people attended the Music Makers Mixer shattering NX35 kickoff attendance records at Dan’s Silver Leaf.  The event was sponsored by the Recording Academy® Texas Chapter and featured Grammy® Texas Board of Governors Tamera H. Bennett, Bennett Law Office/Farm to Market Music; Monique Headley, Launch Media & Entertainment and Paul “Pappy” Middleton, Palmyra Studios.

The networking mixer was a kick off event for the 2010 NX35 Music Conferette that ran Thursday, March 11 through Sunday, March 14 in Denton, Texas.

“This mixer is one way we as industry professionals and GRAMMY board members can strengthen, support, and be a part of building a new music hub in Texas,” said attorney Bennett who specializes in entertainment, trademark and copyright law.

NX35 Panel Coordinator Michael Seman said he was pleased to generate national recognition for the Denton music scene. “It speaks to the quality of the town and initiative its musicians possess … We are all about educating and helping the next level of musicians.”

“Everybody there was so inquisitive,” agreed Middleton. “There was real interest. Everybody was working on their career and about finding another great part of what they needed to do to move ahead in the business,” said the highly acclaimed audio engineer.

“Like the Denton music scene, Oklahoma offers its own brand of distinct, well-established communities of music,” said Headley, industry consultant and Grammy nominated songwriter. “Most artists are in search of information, education and access to enhanced opportunities. The networking partnership with NX35 and the Recording Academy® Texas Chapter provided a mutually beneficial outlet.”

Next year at NX35, said Mojica, he looks forward to repeat the success of the Academy mixer. “More people came out than we had last year.” Mojica said he estimated up to three times more people were in attendance than previous NX35 kickoff events at Dan’s Silver Leaf.

Music Makers Mixers are held several times a year in Texas and Oklahoma as networking opportunities for music biz professionals including artists, producers, engineers, songwriters, attorneys, accountants, managers, booking agents and Academy members.

Trademark Dispute: Rib City Grill v. Rib City Alehouse

Rib City Group, Inc. d/b/a Rib City Grill of Fort Meyers, FL filed suit against RCC Restaurant Corp. d/b/a Rib City Ale House of Port Jefferson Station, NY, seeking damages for alleged trademark infringement, unfair competition, trademark dilution, cyber-piracy, misappropriation of trade secrets, and breach of contract.

Rib City Grill is a franchised concept, with 12 locations in Florida and operations in an additional seven states.  Rib City Group, Inc.  is the owner of USPTO  trademark registrations for “Rib City,” “Rib City Grill,” “Rib City Barbeque,” and “Rib City Real BBQ & Great Ribs.”

At the heart of the suit are the alleged actions of Frank Ryan, the former general manager of the East Naples Rib City Grill location.  Ryan resigned as general manager in April 2007, and entered into a separation agreement in June 2007, stating he received confidential information during the course of his employment, and would not disclose or utilize this information for a period of 10 years.

In January 2009, Ryan opened Rib City Ale House of Port Jefferson, NY, allegedly using features of the Rib City Grill trademark, trade dress, and identical or similar menu items.  While Ryan believes his restaurant is a different concept than Rib City Grill, he has closed his restaurant due to the economy.

Ryan stated, “I would certainly know Rib City Grill is a protected name, but I wouldn’t know Rib City Ale House was.”

To view a copy of the complaint, click here.

Click here for more information about the suit.