Super Bowl, Harbowl and Kaepernicking – Trademark Update

The NFL is more than diligent in protecting its SUPER BOWL brand, along with the  SUPER SUNDAY brand.  With the amount of money spent on the brand, I often say more power to the NFL in protecting their rights and protecting consumers from inferior infringing products.

The NFL has stepped up their protection efforts to block trademark registrations filed a year ago by football fan Roy Fox for “Harbowl” and “Harbaugh Bowl.”   Roy was planning on a head-to-head match of brothers and coaches  Jim Harbaugh and  John Harbaugh.  Roy’s goal was pure and simple:  profit off someone’s name. This is where the trademark laws do work.  While I’m not sure the NFL was the correct party to oppose Ray’s trademark filings, either Harbaugh brother had grounds to stop a registration from being issued.  In my mind consumers would believe that either or both brothers had consented to the use of their names and/or endorsed the products that would be sold.    Both trademark applications have been abandoned.

Colin Kaepernick, the San Francisco 49ers quarterback filed trademark applications for KAEPERNICKING, KAEPERNICK7,  KAP, KAP7, KAEPERNICK CK7, COLIN KAEPERNICK all in Class 025 for clothing items.  None of the marks have actually been used by Kaepernick on any clothing items.   It will be interesting to see if Colin uses the marks, or has filed the applications as a blocking mechanism so that he doesn’t have to defend his name in the event a third-party were to seek a registration.

Trademark practice pointers:

1) Before the USPTO approves an application that references a living individual, consent to registration must be on file.  If an entity or individual other the  Colin Kaepernick had signed the trademark application, an additional document confirming he is a living individual and he consents to his name being used as part of a trademark must be filed.  To save your client money – file that form with your application so you don’t have to respond to an office action down the road.

2) Every item in which Colin’s applications listed were found in the TEAS Plus application at the USPTO.  The filing fee for a TEAS Plus application is $275 per class as compared to the $325 filing fee for using a TEAS application.  Not only does using the TEAS Plus form save money; it also expedites the review process by the examiner.

Protecting The Brand- Trademark 101

A brand or trademark is the way one business distinguishes its products or services from other businesses’ products or services.  It might be a word, a phrase, a logo, or even a combination of any or all those things. Developing a strong trademark is key to protecting the value of the brand.

Examples of well-known trademarks include NIKE, CHANEL and COKE.  The name of your product or service doesn’t have to be famous to be protected by trademark law. But, not every name is protected as a trademark.

In selecting a trademark, resist the temptation to pick a mark that is generic or describes the goods or services. Generic names cannot be protected and it is difficult, if not impossible, to protect a mark that is descriptive.  Trademarks are subject to varying degrees of protection. The stronger the mark, the greater protection it will receive.

While we may all have a box of facial tissues in our office, some of us will have Kleenex(r) brand and others may have Puffs(r) brand.  Facial tissue is an example of a generic term.

Guiding clients through the process of selecting a strong product name can be challenging.  Here’s an example we often discuss with clients to highlight the difference in a generic/weak trademark and a fanciful/strong trademark.  If you open a men’s clothing store and name it “Men’s Clothing,” you cannot secure trademark protection for the name. If you open a place to cut men’s hair and call it the “Barber Shop” you cannot have a trademark.  In both examples the name of the store is generic for the product or service sold inside. But, consider a men’s clothing store where you have barber chairs as props and a barber pole at the front door.  In that case, “Barber Shop” for a men’s clothing store is not generic or descriptive.  It might just be a very strong brand name because it does not describe the product sold in the store.

After identifying a strong brand name, the next step is a trademark search to determine if anyone else is using a similar name for the same products/services or for related items. These searches are performed at the United State Patent and Trademark Office, the Internet and other third-party search services.  Trademark law is designed as a consumer protection act, not a business owner protection act.  The key of the search is determining if this new mark might be so similar to an existing brand in the marketplace that there is a likelihood of consumer confusion as to the source of the product or service.  Likelihood of consumer confusion is the standard used to determine trademark infringement.

A trademark is protected by common law from the moment the mark is attached to a product that is sold or to a service that is provided.  While no registration is required to be protected, there are benefits to registration including presumptions of ownership and dates of first use.  A state law application can be filed as soon as the brand name is used within the state.  A newly revised Texas Trademark law grants statutory trademark protection for 5 years from the time the application is approved and may be renewed for consecutive 5 year periods.

If you believe you will use your mark in interstate commerce, that means in more than one state, you may file a federal application based upon intent to use the mark.  If you are already using your mark on a product or service in more than one state, you can file a federal application based upon use.  Once the mark is in use and proper filings are made with the USPTO, a federal registration lasts for ten years from the date of registration and may be renewed for consecutive ten year periods.  But, it’s very important to know certain maintenance filings are due between the fifth and sixth year after registration in order to keep the registration active.

Ask any business owner and they will tell you the importance of their brand name.  Helping those business owners navigate the trademark selection, search and registration process is key to protecting this asset.

Super Bowl “Clean Zones” to Protect Sponsors/Trademarks in New Orleans

The City of New Orleans will enforce “clean zones” from January 28 to February 5 to comply with NFL policies to thwart ambush marketing.

Read more about the City of New Orleans efforts.

Read more about how ambush marketing can de-value a costly sponsorship.

Bikram Yoga Protected by Trademark NOT Copyright – It’s Hot!

Get Hot — The US Copyright Office issued a ruling in June 2012 that yoga sequences are not protected by copyright.  Studios offering “hot yoga” should now be in the clear from lawsuits brought by Yogi  Bikram Choudhury so long as the name BIKRAM is not used.

Yogi Bikram Choudhury developed the “Bikram” style of hot yoga and according to records at the US Patent and Trademark Office has been using the brand name “Bikram” since 1971 in offering his yoga classes and instructional materials.  The craze of “hot yoga” (which even as a yoga student, I do not understand), has taken the US by storm.

Choudhury, diligent about licensing his rights to the BIKRAM trademark and instructional method, sues yoga studios offering “traditional hot yoga”  even if the name BIKRAM  is not used to describe the course.  Choudhury has multiple copyright registrations for his yoga instructional videos and materials.  He is claiming a copyright in the sequence which is a  compilation of 26 poses and two breathing techniques.

Two very different results were reached in recent court cases filed by Choudhury.  In the Central District of California (Western District), Choudhury sued the  studio Yoga To The People claiming copyright infringement of the sequence.  The suit, after discovery and mediation, settled in November 2012 with the defendant agreeing not to offer “hot yoga” at his studio.  Perhaps the defendant should have stuck it out with the case a bit longer as a different result was reached in a very similar case.

Choudhury sued Evolation Yoga, LLC also alleging copyright infringement of the Bikram sequence.  In a motion for summary judgment ruling, The Central District of California held:

There are two reasons why the Sequence is not copyrighted: 1) Choudhury’s copyrights cover his literary and audiovisual works—but only his expression of the facts and ideas contained within, and not the facts and ideas themselves; and 2) even though Choudhury’s works describe the Sequence (and teach one how to do it), a compilation of exercises or yoga poses itself does not fall into any of the copyrightable categories under 17 U.S.C. § 102(a) and is not copyrightable under § 102(b) because it is a system or procedure.

The Evolation Yoga case (Bikram’s Yoga Coll. of India, L.P. v. Evolation Yoga, LLC, 2012 WL 6548505 (C.D. Cal. Dec. 14, 2012))  continues with other issues not resolved by the Motion for Summary Judgment ruling.

Read more here and here.

 

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.

Be Thankful: Trademarks on the Table Thanksgiving Day

Sometimes it’s so hard to separate work from home — even Thanksgiving Day is filed with trademarks and brand management.

Here are a few brands you might see:

OCEAN SPRAY w design. Date of first use 1964. Registration No. 1960131.

MACY’S THANKSGIVING DAY PARADE  Date of first use 1924. Registration No. 2206890.

PEPPERIDGE FARM Date of first use 1937.  Registration No. 0360512.

BUTTERBALL w design. Date of first use 1962.  Registration No. 1151836.

 

FOOD NETWORK Date of first use 1996. Registration No. 2771532.

Entertainment Law Update Podcast: Faulkner, Einstein and Superman

Join music lawyer and music mediator Tamera Bennett and film/tv/theatre lawyer Gordon Firemark for Episode 36 of the Entertainment Law Update Podcast.  It’s the podcast by entertainment lawyers for entertainment lawyers.

 

Mediating the Band Partnership Dispute

Scenario:  Band members are “in love” and all is rocking along.  Money is starting to be made and then it happens — the honeymoon is over and a band member leaves voluntarily or is forced out.   A lawsuit is filed and it starts to get ugly.

Even a written Band Partnership Agreement or LLC Membership Agreement may not be sufficient to resolve the dispute between the parties.  A third-party neutral, i.e., mediator, might be necessary to hear all sides of the dispute and help guide the band members to a workable solution.

Common battle grounds include:

Who gets to use the band name?
Who owns the master recording copyrights?
Who owns the song copyrights?
Who owns the physical product or merchandise?
Can the band keep using the leaving band member’s name and likeness?

Here are some on-going band disputes where mediation, also known as alternative dispute resolution, could be used as a vehicle to resolve the dispute by the parties rather than by a judge or jury:

Boston v. Tom Sholz (former Boston guitar player)
LIVE – mediation occurred on November 1, 2012
Ariel Pink’s Haunted Graffiti
J Geils Band
En Vogue – lawsuit settled via arbitration
Chris Daughtry sued by Absent Element

To learn more about Music Attorney Tamera Bennett’s mediation practice click here.

Copyright First Sale Doctrine Before Supreme Court

The US Supreme Court will decide in Kirtsaeng v. John Wiley & Sons, Inc.  if importing and re-selling copyrighted works originally intended only for sale in a  foreign territory is protected by the “First Sale Doctrine” or constitutes copyright infringement.

If the importation of what are deemed “gray market goods” and their resale  is protected by the “First Sale Doctrine,” book publishers, music owners, and other content owners argue the economic impact on the US market will be devastating. It will under-cut content owners’ ability to offer content for different price points in foreign countries, ie, books/music/films might be sold for a cheaper price in a foreign country than in the US.

Supap Kirtsaeng, a Thai national and former Cornell University student, had family members purchase authorized copies of textbooks in Thailand which he resold on eBay in the US for a profit. Evidence at trial suggests Kirtsaeng had a million dollar operation.  John Wiley & Sons, Inc. sued Kirtsaeng for copyright infringement and won at trial and the Second Court of Appeals upheld a $600,000 damage award.

Kirtsaeng argues his actions were not copyright infringement but protected by the first sale doctrine which provides an individual who knowingly purchases a copy of a copyrighted work from the copyright holder receives the right to sell, display or otherwise dispose of that particular copy.   See 17 U.S.C. § 109(a) & (c).

John Wiley & Sons argues unauthorized importation of the books constitutes copyright infringement in violation of the copyright owners’ distribution rights.  See 17 U.S.C.§ 602(a)(1).  Content owners argue such “gray market” goods or unauthorized imports are not lawfully made under the Copyright Act and the resale constitutes copyright infringement.

The case is ripe for Supreme Court review as the 2nd and 9th Circuits say the “first sale doctrine” does not apply and the 3rd Circuit says it does.

Music lawyer Tamera Bennett and film lawyer Gordon Firemark discussed the Kirtsaeng appellate court ruling on Episode 23 of the Entertainment Law Update podcast.

Texas Trademark Laws Change: Five Years of Protection

The following changes impact trademark applications filed or pending as of September 1, 2012.

• Term of registration reduced from 10 years to 5 years.
• Change to time-frame for filing renewals.
• Likelihood of confusion review expanded to include federally registered marks.
• Multiple class applications permissible, but additional fee for each additional class.
• Licenses, security interests, & mortgages may be recorded.

1. Changes made to application requirements:
   • Applicant must sign and verify application. (notarization)
   • Must provide 3 specimens of use.
   • Applicant may register two or more classes for additional fee.
   • SOS may require an applicant to provide any additional pertinent information, such as any prior or pending registrations with United States Patent & Trademark Office (USPTO).
2. Changes made to renewal application requirements:
   • Renewals must be signed and verified.
   • Renewals must include a specimen showing that the mark is still in use.
   • The time-frame for renewing a registered mark has changed.

Please review additional information on the new Trademark Act.
Please review additional information on new Trademark Administrative Rules (PDF).

I Can’t Remember The Alamo Trademark Dispute

Qwerky, Ltd., the owner of Swig Martini Bar in San Antonio, Texas is facing the big guns of Texas in a dispute over the trademark “I Can’t Remember The Alamo” for drinking glasses, t-shirts and restaurant/bar services.

The State of Texas, by the General Land Office, owns several registrations for “The Alamo” for museum services and gift shop services.   The Great State of Texas also claims common law trademark rights in the phrase “Remember The Alamo.”  The State of Texas filed an opposition with the Trademark Trial and Appeals Board to block the federal registration of “I Can’t Remember The Alamo” claiming  the restaurant’s use of the mark conveys a false suggestion or connection with The Alamo and is likely to confuse consumers.

Qwerky’s response to the Opposition is due September 25, 2012.

This isn’t the first trademark battle fought by “The Almo” — read more here.

Qwerky/Swig has had a little experience with trademark battles, too — read more here.

 

 

How Shoe Princesses Lost Their Brand: Sigerson Morrison

Imagine that one day shoes you designed are gobbled up by Reese Witherspoon, Sarah Jessica Parker and Naomi Campbell.  The next day you are fired from your namesake business with no control over a brand that is your name.

Shoe designers and fashion industry darlings Kari Sigerson and Miranda Morrison learned a lesson similar to Steve Jobs when he was fired by APPLE — if you take the investors’ money, you might be giving up a lot of control.

Sigerson and Morrison went into business together in 1991 and had a wonderful run.  In 2006, looking for an infusion of cash, they made a deal with Marc Fisher Footwear for$2.6 million to acquire Sigerson Morrison and the intellectual-property rights to the name.  Sigerson and Morrison each retained a 10% interest and a salary.

About a year ago Sigerson and Morrison were fired and litigation has been ongoing.

Clearly the trademark of Sigerson Morrison has a huge value.  But, will the company be able to fill the shoes of the two namesake designers?

J. Geils sues J. Geils Band for Trademark Infringement

No “freeze frame” for John Geils, Jr “J. Geils” or members of the J. Geils band that announced a tour this year without their name sake.  J. Geils and the band are battling it out at the trademark office and the court-house for who owns the name.

John Geils, Jr. through a company I am assuming he has partial ownership in, filed and received a trademark registration of J. GEILS BAND in 2009 for clothing and live performances.  The application shows use dating back to 1967.  The trademark examiner seemed to fully vet the application and required the consent of J. Geils as he is a living individual.

Fast forward to April 2012 when a company named T & A Research & Development Corp. filed a trademark application for “The J. Geils Band” claiming a date of first use in 1969.  Again, the trademark examiner fully vetted the application and issued an initial refusal requiring the applicant to submit a consent from J. Geils and further requiring the applicant to explain its association to the band.  The response is not yet due.

In May 2012, Geils Unlimited, LLC  filed a trademark  cancellation proceeding seeking to cancel the “J GEILS BAND” registration.  The petition for cancellation alleges Geils and other band members entered into a written shareholders’ agreement that restricted Geils use of the name J. GEILS BAND.

One more litigious twist – J. Geil’s company filed a trademark infringement suit on August 1 in district court.

Be watching for updates on the blog and a discussion on Entertainment Law Update Podcast.

Newsboys v. New Boyz Band Name Trademark Dispute

Christian rockers Newsboys have 28 No. 1 singles and have been together for 26 years.  They are just a little upset over possible consumer confusion with the rapper duo New Boyz.

New Boyz, around since 2009, just released a direct to DVD movie and is currently on a European tour.

With the continued consolidation of the record business, the overlap of genres on terrestrial radio and especially on services such as Pandora and Last.FM,  Newsboys may have more than a blush of a claim that a music consumer could be confused between the two band names.  The test in trademark infringement is whether or not a consumer is likely to be confused that a song or records released by one band was actually released by the other band.  If you saw a New Boyz CD you might think it was the Newsboys.

There is a trademark registration with the US Patent & Trademark Office for NEWSBOYS for entertainment services; namely, live musical performances of a religious nature rendered by a group.  The registration is incontestable and issued on March 29, 1994.  Interesting side note — the owner of the mark is Wes Campbell, the manager of the Newsboys (that tidbit is a topic of discussion for another day on what a band should never do).

I did not find any trademark filings for New Boys.

Musicians and the Olympics – Who Does The Relationship Benefit?

The last Olympic metal awarded in the category of music was 1952.  That’s right, 1952 ended forty years of Olympic Sporting Arts.  Even without a metal event, music continues to impact the culture of the Olympic games.  From the opening and closing ceremony’s, to the television broadcasts, to the live performances occurring at official Olympic events around London — Music is key to capturing the Olympic spirit.

While Paul McCartney can afford to play the Olympics for one pound in compensation, many other working musicians and artists simply can’t afford such a generous donation to the games.  The question that musicians, the music unions and trade magazines are asking, is should the working musician have to donate their time?  In fact, news reports state the British Musician’s Union reached a deal regarding the headliners at the Opening and Closing ceremony’s playing for free and requiring compensation for other professional musicians.

So you’re thinking – “The musicians should play for all the free publicity.”  In fact, many bands perform free shows for that reason.  Not so with the Olympics.  The musicians are restricted in promoting their “Olympic” gig and are not allowed to sell their own merch at the show.  Pride of country can only feed you so many meals….

Here’s a round-up of conversations on the topic.

Billboard – Dispute Between London Olympics …

LA Times – Are Organizers Not Willing To Pay…

Link to petition for musicians to be paid

More from the Musicians’ Union

Ambush Marketing London 2012 & McDonald’s Exclusive Right to French Fries

Here’s a look at more press on Ambush Marketing surrounding the 2012 Olympic Games:

Australia’s Olympic Committee, enforcing a 30 day ban on none approved ads, required the industry lobby group, Australian Mining – This Is Our Story, to pull a television and online ad featuring the 10-time world champion and Olympic gold and silver medalist Ann Meares.  Meares, unaware of the launch of the campaign, appears in the video in cycling gear branded with her sponsor BHP Billiton’s logo as she talks about her campaign to win gold in London.

Meares has also been required to remove a TOSHIBA logo from her racing clothes.  And the Australian Olympic Committee is actively monitoring consumer electronic companies for any engagements in ambush marketing.

While not ambush marketing, McDonald’s has the exclusive right to serve French Fries at the Games, unless of course its “fish and chips.”   Maybe a cleaver ambush marketing team could show up dressed in french fry or “chips” costumes to an event?  Or, what if folks decided to not order any fries at McDonald’s?  Could McDonald’s exclusive rights back-fire?

Read more from Part 1 on Ambush Marketing.

Ambush Marketing & Social Networking at London Olympics 2012 Part 1

Every great sporting event brings out ambush marketers.  From the Super Bowl to the World Series to the Olympics, brands jockey for news coverage and exposure.  Ambush marketing is the act of a product or service trying to attach itself to a big event without being an official sponsor of the event — and without paying the big bucks of sponsorship.

While VISA® “Is Everywhere,” some brands only shine during their moments of ambush.  As consumers we expect a certain quality of product from the official sponsors.  The official sponsors invest a lot of money, energy and time in hopefully delivering a quality product or service.

Here’s a round-up of articles on ambush marketing popping up a few weeks prior to the 2012 Games:

• The London Organising Committee of the Olympic Games and Paralympic Games Limited (LOCOG) says it will be “vigilant in protecting our rights.”  But, some creative fringe marketing by Red Bull® might be okay.

• Bloggers at the London games have been warned that “Participants and other accredited persons are not permitted to promote any brand, product or service within a posting, blog or tweet or otherwise on any social media platforms or on any websites,” the IOC said.

• Twitter is working directly with the LOCOG to control ambush marketing.

• 11 Ambush Marketing Stunts That Worked in the Past.

Arlington,Texas Company in Trademark Dispute with Nike at Supreme Court

Updated 1/15/2013

On January 9, 2013 the US Supreme Court agreed with NIKE, Inc.  holding  a covenant not to sue rendered the ongoing litigation moot.

____________________________

Updated 11/8/2012

The US Supreme Court is hearing oral arguments today.

____________________________

Arlington, Texas based Already LLC dba YUM is in a trademark legal tangle with NIKE  over the similarity of the YUM brand “Soulja Boy” and “Sugar” shoes  and the NIKE brand “Air Force 1.”

NIKE filed suit against YUM in 2009 arguing a likelihood of consumer confusion between NIKE brand registered trademark for the Air Force 1 shoe and the YUM brand shoes.   YUM responded with a trademark cancellation proceeding against NIKE.  Risking cancellation of the “Air Force 1″ mark, after a year in the court system, NIKE agreed to withdraw the suit and provided a “covenant not to sue” to YUM.  YUM appealed the case to the Supreme Court.  The Supreme Court is not that interested in sneakers, but more interested in a split of the circuits regarding the use and implication of “covenants not to sue.”

Already, LLC phrased its “Question Presented” to the Supreme Court as:

“Whether a federal district court is divested of Article III jurisdiction over a party’s challenge to the validity of a federally registered trademark if the registrant promises not to assert its mark against the party’s then-existing commercial activities.”

Nike Inc. styled its question a bit differently:

“Whether respondent’s covenant not to sue petitioner was worded in a fashion that resolved the ‘actual controversy’ in this declaratory judgment suit.”

Read more here and here.

Dallas USPTO Office Does Not Impact Trademark Practice

Dallas was selected as one of three expansion locations by the U.S. Patent and Trademark Office.  The expansion offices are being implemented to assist with work-load in processing patent applications.  While new jobs will be available for patent examiners, patent attorneys, and supporting staff, there will be no direct benefit to the  trademark application process.

I welcome the expansion to the Dallas area and I know my patent attorney colleagues are excited.

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.