Category Archives: Trademark

Trademark: The Good, the Bad, and the Ugly

For those that have been following along, I’ve made the distinction between the significance of a Trademark and a Copyright. In shorthand, Trademarks protect the public’s “mental associations” with brands or brand recognition and Copyrights protect anything that can be formed, written, or recorded.

I’ve also briefly touched on the difference between a Good trademark and a Bad trademark. Good trademarks typically require a branding campaign to associate a random or fanciful word with its product (think “Google” in the early 1990s). A Bad trademark, by distinction, relies on a generic word to connect its services to its name: “Great Lawn Maintenance”. You can assume this company would do lawn work, and that they think it’s great, but they all think they’re great – so there’s no significance to the name and therefore no trademark protection. (They can’t stop everyone else from using that brand name in connection with law care.)

What I haven’t had the opportunity to talk about is the difference between a Good trademark lawsuit and the Bad trademark lawsuit. Fortunately, the Universe has aligned to provide me with an opportunity to demonstrate both! Thanks, Universe.

(And thanks to Techdirt  for the inspiration….
Tobacco Companies Using Trademark Claims To Try To Avoid Putting Warning Labels On Cigarettes & Cigars  from the your-health-is-less-important-than-someone’s-trademark dept)

First: The Good
Infringement lawsuits over trademarks are started because Company B is using a trademark that is confusingly similar (and thus would cause a “likeliness of confusion”) or even identical (“passing off”) to Company A’s trademark. As a bit of a background, Company A is has usually done a lot of work building a successful brand and has become nominally famous for what they do. This, then, makes it enticing for the people running Company B to try and bleed away some of that fame. They could either do this by working hard and competing, or by knocking off Company A’s logo so that consumers get confused when they see Company A and Company B side by side, and buy Company B’s product, thinking it is from Company A. So while we’d like for Company B to help stimulate the economy with some old fashioned competition, that wouldn’t make for a good trademark lawsuit example. Instead, we get the latter version of the story where Company A finds out about what Company B is doing, and they go through the Angry Letter (Cease and Desist) and Lawsuit (Infringement Lawsuit / Injunction) dance. Company B usually tries to prove it’s actually competing, and while in court the lawyers have to do market research (the only actual evidence of a consumer’s mental association) and it’s a whole, long song and dance. Welcome to good, old fashioned Trademark law.

I could also wax poetic about the new up-surgance in trademark law regarding pre-registration of other people’s domain names (or “cyber squatting”) so Company A has to pay you big money to get a website forwww.CompanyA.com – but the legal community at large knows about that stuff now. Even business people know that now, so much so that at the recent Firm Future conference I attended in Boston had seminar leaders mentioning that, even if you don’t have a web presence, you should buy www.YourName.comand register a Facebook, Twitter, and anything else your field uses.

So that’s old hat for bleeding edge Trademark law. Instead, what you want is International Trademark law that has global economy and treaties and foreign laws and all sorts of other nonsense to play with. Something like…

How Trademark Law Is Supposed To Work: Groupon Sues Australian Clone That Tried To Squat Groupon Name  from the likelihood-of-confusion dept

“Not only did it register Groupon.com.au, it also registered its company name as Groupon Pty Limited and applied for the trademark on Groupon in Australia. That seems like a clear case of a company trying to confuse the public into believing it’s the original Groupon, and a perfectly reasonable situation for using trademark law.”

Hooray for reasonableness! Now, hopefully for Groupon, the courts will agree. More than likely, though, is that Scoupon will stop infringing and settle out of court, so this may be the only thing we hear about it. If it isn’t, though, I’ll be sure to follow up with further developments.

Now: The Bad… 
When Bad trademark lawsuits appear, it’s usually someone trying to stretch a protection into a right. Case in point, some people can think that because they have “Company X” registered with the USPTO (US Patent and Trademark Office) that means that they also have a Right to www.CompanyX.com and can demand that Some Guy who has had it registered for years must give it to me for little or no charge. (This is also a reaction to the effects of cyber squatting laws making it seem okay to bully people out of their legit domains because some squatters quite successfully bullied legit companies out of money – and that was just wrong. So charging at all is now wrong, etc.)

A Bad trademark lawsuit can also appear, however, when people try to use their right to a Trademark (again, governmental protection and remedy given to maintain a mental association of a product and a source) to skirt or fight against other government regulations – this time with health warnings.

Some background:

Legal obstacles raised against plain cigarette packs
Mark Metherell HEALTH CORRESPONDENT

“IP (Intellectual Property) Australia has advised the federal government that the plain packaging measure ”may not be consistent with Australia’s intellectual property treaty obligations” … “One of the briefing documents said that implementation of plain packs in Australia raised controversial treaty and trade issues concerning the use of trademarks which could violate provisions dealing with ”unjustified encumbrances” and undermine a trader’s ability to distinguish their good or services from other products.” (Emphasis added.)

Okay, this makes sense. A plain package means, essentially, no Trademarks can be used to distinguish one source from another. If it passes, the article notes that the tobacco industry folks there then want to be compensated for a “taking” (or an Australian “acquisition”) like when the government wants to build a highway through your back yard and you get paid for the property as you are forced to move. But:

“Experts in intellectual property law have… pointed out that international agreements and trademark laws protect trademarks and prevent third parties using them – but don’t guarantee a right to their unlimited use.’

Remind you of anything? Maybe Companies feeling like they have a right to domain names? Trademarks are a funny thing to begin with, but they are something that the government acknowledges and protects – not something they government (ANY government) can’t overrule. If Australia wants to ban packaging as a way to eliminate the “last way for cigarette companies to advertise their products,” then I suspect they’re going to have their way – American treaties or not.

And then, The Ugly:
In similar news, it seems that the Australian tobacco companies are fighting a two front war with their Trademark as the main weapon. In this one, though, the Australian company (British American Tobacco) WON the right to pursue damages against an importer (Trojan) for trademark infringement because the health warning Trojan is required to put on the tobacco products “covering up” the BAT trademark.

Tobacco giant fuming over packets
The Daily Telegraph 

“World tobacco giant British American Tobacco has won permission to pursue damages in the Australian courts, accusing local importer Trojan of infringing its Captain Black cigar trademark by covering its labels with the mandatory health warnings.”

This is a Bad trademark lawsuit because they’re using the trademark as a way to attempt to get the vividly graphic health warning off of the packaging. (Arguably because the health warnings are so effective.) While there is something to be said for BAT about the right to have their Trademark visible, what damages are there really? Put the image on the back of the package? Unfortunately I don’t know enough about the Australian requirements – but with an educated guess I would suspect BAT is going to try to “protect” not only the Trademark in their logo, but their “Trade dress” as well. Trade dress being the color of the box, placement of lines, etc. If the warning has to be face-pout on shelves, then it’s a problem. But if it has to be on the front, with the logo, then maybe they have something?

With such a big warning required, so big in fact that the “only place to put it” is over the logo (arguably a Trojan defense), then how will anyone know what brand it is (BAT’s damages). If Trojan could have put it somewhere else, then fine, but if not- won’t it basically amount to the packaging looking like it’s just a plain box? Warning logo on one side, logo on the other? Not that Australia would do anything like that…

From my perspective as an IP attorney, I’m definitely curious to see what happens in this one.

As for this blog – now you’ve had the opportunity to see both a good and bad trademark lawsuit in action. Lucky you!

Pax,
Entertainer at Law, Esq.

 

(c) Nicole L. M. Jurkowski 2011

Leave a comment

Filed under Trademark

Trademark Resolution

So if you’re thinking about heading to the gym for a new years resolution, this might interest you:

‘Spinning’ Trademarked; Gyms Being Threatened For Holding Spinning Classes Sans License

* from the ride-that-bike dept

Who knew trademarks went to the gym?! Har har, the trademarks themselves don’t, but the people looking to turn a buck on a new fitness craze certainly would. And as far as the company “Mad Dogg” is concerned, they trademarked “Spinning” in 1992, created the mental association with stationary bikes and crazy popular routines, and now want to cash in… globally. From the article, it seems that gyms that get the cease & desist or license demand are just calling the classes “stationary bike classes” instead of paying up.

The other argument is that the term has become generic (or “genercide” – which is one of my favorite legal words, btw)… which is true, as far as the mental association is concerned. As I explained in my “Copymark my Traderight” post… trademarks are the legal protections for the mental association between a product and the company that makes that product. Companies like Xeros and Band Aid, which are arguably generic terms now, have huge marketing campaigns dedicated to protecting that trademark – thus “Xerox copies ” and “Band Aid brand adhesive bandages”. (Forgive the wiki-links, but I can’t find a link to their marketing materials, which I have seen in person.)  Without that kind of effort, you aren’t taking “reasonable” precautions to defend the mark, and you therefore loose the ability to sue people for using it and can’t force them to license it from you. Which makes what this company is doing is completely backwards…

I’ll be interested in seeing what kind of impact it has, and if the issue come up again. I can’t imagine them having the funds to sustain a global licensing campaign, especially when all the gyms “have” to do is change the name of their programs.

In the mean while: as a fun little game – see how you do with this little web-test for genericized trademarks!

Can you name the brand names that are synonymous with these products?

http://www.sporcle.com/games/Saulmeister/synonymousbrands

(I got 33 out of 44.)

Pax,

“Entertainer at Law”, Esq.

(Trademark as of yet unregistered, but slowly building recognition as a secondary trademark for educational and legal services rendered. Just sayin.)

 

(c) Nicole L. M. Jurkowski 2010

Leave a comment

Filed under Trademark

Value

Hello all. With 32 days until the wedding, I’m finding it harder and harder to get time to myself, or time to find my latin books, but at least I’m making an effort. However, yesterday I went on a trip to my first Red Sox game with my soon-to-be husband and I was inspired…

So to make a long story short, while viewing the game we were approached by a woman in a branded “Fanfoto” t-shirt with a very nice camera that offered to take our photo – “with no commitment”. Usually when these kind of photos get taken the people are very obnoxious about it, either forcing you to pose (Boston Aquarium, I’m looking at you) or hassling you as you come into the park (Six Flags, etc.). This lady was nice, and Kil liked the idea, so we posed. She gave us a business card with the fanfoto logo and a picture number so we could get prints if we wanted when we left the park.

Awesome, I thought. We could go online and order prints. That way, the business saved money by cutting out wasteful overhead, and I got to pick what I wanted from the site. What a great, eco-friendly business model!

Then, the guy behind me piped in with a bit of unsettling news. To buy the picture digitally from their site, it was $60.

It felt like someone had ripped the needle off the record. Where was the value in that? Where did *they*, as a company, place the value? As my lawyer brain started spinning, I went back to watching the game. The sum of it was simple, this was another company who didn’t understand where their consumers put value – or quite frankly, they were really just trying to milk us for an insane amount of money because we were at Fenway Park watching a Red Sox game, and Obviously We Have Money. (We were in the cheap seats, come on!)

So we went back to watching the game…

And then it happened. The woman reappeared back on the scene with an insane amount of the overhead that I thought they were doing without. Not only did she have a fancy framed picture (which was very nice, mind you), but she also had merchandise, and a four photo print out. All of this for $25. At first I thought she said $45, but she did in fact say $25. Okay, so now I know where your value is. The company wanted to have sales NOW because they feared the retention of customers back to their own computer was little to none. (And if you wanted a picture, you had to *really* want that picture for $60, or have it put into their own branding so you couldn’t make copies for yourself.)

But dear gods, the company’s practice of printing the photos out was so wasteful! I wouldn’t want to buy from them now, simply because they were wasting a hell of a lot of paper (there are about 25,000 seats in fenway) printing photos for people who likely did not want to get them. But beyond that, I don’t think I saw them sell a single one of those packets, which should tell the company something: their value is highly misplaced.

In a culture of people who bring their own high-quality cameras (for free) to a game, the value in having someone take your picture at an event like Fenway, or The Aquarium, or Six flags is lost. In order to restructure your business to maintain profitability, you have to provide extra value – not just for yourself, but for your potential consumers. While the value you place on being able to get an impulse buy from fans by presenting them with their product, that value is lost on the consumer. They’re being made to decide imminently if they want to part with money they’d likely still spend on food or other consumables throughout the game.

As a consumer, I place value on wanting to be able to access that photo online, after the game. If it was my camera that I took with me, then I have my own version of that photo, and I’m not going to buy any at all. However, there is definitely value in someone Else being able to get Their Own copy of a photo without having to wait for me, so having a third party take it and provide access to it can be good.

In addition, I also place value on their somewhat hokey branding / decorating of photos, because I’m silly like that and it was my first time there. Now that I’ve visited their site to confirm the $60 download, I can tell you that Fanfoto works like Cafepress.com, you can order many different types of product, all with the one photo on it, for relatively cheap. This is good because most educated consumers know that the price of making those is not high. But to put an outrageous price tag on just the photo itself, especially when many consumers won’t want the hokey branding, is just unintelligent.

The value for the company is in selling their own versions, and preventing fans from making their own merchandise. But the value for consumers is just having the picture, a picture they can very well take on their own, with the help of a kind stranger that won’t come harass you to buy copies of that picture later in the game.

… *sigh* This very problem is what inspired one of the other academic papers that I posted on this blog when I started. Appropriately placed value is a major key to rebuilding a faltering business model, and the companies that realize this are the ones raking in the cash right now. (Another key is having a green company (or at least one that is at least making an effort to be green), and working under a business model that takes into account that some people will be more likely to buy if they trust the business is being intelligent about not being wasteful.)

Fanfoto aside, the sad thing about most business models working with digital media is that they remain hung up on the idea that consumers want product, and that in order to make that product valuable, you have to also retain it with an iron fist. What I’ve seen, both as a consumer and a lawyer, is that while the business models remain the same, consumers are finding ways to get what they want where they can get value from it. Most of the time, the value now is in not spending the money on the product. When companies can create value that makes these same consumers shell out money, then they’ll have it right.

So the moral of the story is that I really liked the photo, and I would have loved to buy it, but I have at least 10 of the same kind and same quality on my own phone that they’re not getting my money. Or other people’s money, for that matter. Their value is completely misplaced, and my own values have moved beyond their business model. Until the two synch up… It will continue to forever be Camera :1, Business: 0.

Pax,

Photo Genic, Esq.

 

(c) Nicole L. M. Jurkowski 2010

Leave a comment

Filed under Trademark

Copymark my Traderight

Today’s post is a very special one, close to my heart. Why? Well… usually, I’m very good about not “lawerying-out” on my friends or other non Intellectual Property lawyers. I don’t want to subject them to the full spectrum of why such and such is the law, and why things are they way they are. My friends didn’t go to law school and the non-IP lawyers didn’t study it for years like I did. I respect everyone’s right to bitch about the way things are or appear to be.

However.

Any time anyone says “I really need to Trademark my poetry”, I can’t help myself. Instead of launching into some nice explanation, I just say “Copyright” in response. They say “Huh?”, and I come back with “You want to copyright your poetry.” At which point they indulge me and Miss Lawyer Pants explains herself.

So having done it more times than I can count – here’s the break down:

TRADEMARK:

(First I start with the technical mumbo-jumbo.)

Technically speaking, a trademark is protection given by the US government over the mental association that a consumer has with the source of a product.

(My friends are generally smart enough to latch onto a few of those phrases, thankfully.)

So anything that creates a mental association with a product is considered a trademark.

(Then I launch into examples.)

Anything that you would consider a logo, a motto, or associated with a marketing / branding campaign is likely to be trademarked.

(Most people are nodding their heads by now, or offering examples of famous trademarks at this point – which is very good.)

COPYRIGHT:

(Now for the more difficult one.)

A copyright is protection over any type of artwork which can be and has been recored in some permanent medium.

(OR “Original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.” But you know, that’s “lawyering out” a little too hard. We had a whole class in law school dissecting that one.)

It protects novels, songs, sculptures, choreography, and anything else you could think of creating.

(Then for the fun stuff.)

Under the Copyright Act, your rights attach whenever you create something: write it down, video tape it, write choreography notes for it, etc. But in order to actualize those rights…

(again, my friends are smart)

…you have to register the copyright with the Copyright Office. Basically, you give them a copy when you make it so that they have something for the Library of Congress (Cool!) and you have a registration that proves you wrote it.

(At this point, someone usually asks me about the validity of mailing yourself a copy of your work, and I sigh.)

The so-called “poor man’s copyright” is not a way to go about registering your copyright. The best it will do for you is act as one piece of evidence in a court case where you’re arguing that you wrote something first. Even if they stole the – let’s say, novel – from you verbatim, if they registered it they have what’s called “prima facie” evidence against you.

(Half the time, I then launch into the latin meaning of “prima facie”… but I won’t do it here. Lucky you, that’s for another whole caliber of posts!)

That means that the court will assume that their registration is valid, and it’s your (heavy) burden to prove otherwise.

(And at that point, you’ll wish you had just paid the $45 registration fee, because we lawyers don’t come cheap!)

So… getting back on point (yes, I am prone to tangents), A copyright is something that you have when you create a work of art, and it’s something you get a registration for to ensure that you have all the rights guaranteed to you for creating it.

(Those being: Reproduction, Derivative Works, Distribution, Public Performance, and Public Display)

And there my tangent usually ends, because they’ve gotten the point. And honestly, of all the lawyerly-ness that I can keep out of normal conversation, it doesn’t surprise me in the least that I can’t keep this quiet. I’m an educator. I learned all of this law stuff so that I could educate myself and other artists about what it means to have the law protect their work – and it is my end-goal to end up in a position where I do this for a living. This very conversation – except I’ll be doing it to many people at a time at conferences, or with particular clients who want to use that law for their own benefit.

That’s what I do. Or as I say about my own art, that’s what I can’t not do.

So, my friends, now you know that one copyrights their novel – and trademarks their band logo. Simple as that!

Pax,
Miss Understood, Esq.

(c) Nicole L. M. Jurkowski 2010

Leave a comment

Filed under Copyright, Guide, Trademark