How do I Establish and Protect a Trademark?

Monday, 13 February, 2012 05:26 Written by Aaron Thalwitzer 0 Comments

Don't let your trademark become a generic term like Aspirin. Pick and use your trademark correctly to ensure the best protection.

Trademarks are often thought of as just a logo or a name, but for a business, they’re much more valuable. A trademark is what separates (for us in Florida) Publix from Winn-Dixie. Without trademark and similar legal protections, there is little Subway can do to stop me from opening up a Subway of my own — without licensing their intellectual property or paying them a red cent. Trademarks are defined as any word, name, symbol or device or any combination thereof; as previously discussed, you can trademark sounds and even a color. Trademarks are often the most valuable asset a business can own; they are a business’ identity, without which the public would confuse you with your competitors.

So, how do you establish a trademark?

The best trademarks are simple and straightforward. It should be easily pronounceable, short, and not tough to spell. My firm, Zies Widerman & Malek, in Melbourne, Florida, is few of these things, but, as a the saying goes, you can pick your nose, but you can’t pick your name (that’s how it goes, right?). Anyway, if you’re in the pizza business, including pizza in your name is advisable. Naming your pizza business Anthony’s Pizza, not so much.. Every town has a multitude of Anthony’s Pizzas, so why create confusion and risk a lawsuit by using a diluted trademark? Be distinctive and unique. The more likely your name is to confusion your customers, the more likely you are to get involved in a trademark infringement lawsuit. Such lawsuits are lengthy and expensive — good for lawyers, bad for you. Selecting a strong trademark that is more fanciful and arbitrary (i.e. Best Buy), rather than descriptive (i.e. Healthcare Staffing) is easier to protect. The best trademark will be suggestive, rather than descriptive.

Next, search for your chosen name on TESS. If your name isn’t registered already, contact a trademark attorney to register it ASAP. A search report is valid only as of a given date. You can do it yourself, but as the proverb goes, a man who is his own lawyer has a fool for a client.

After registering your trademark, use it consistently and continuously. Careless use could cause the mark to fall into the public domain. It’s better to use your trademark as an adjective than a noun. “Use Aspirin medicine” is superior to “Use Aspirin”. Bayer famously lost their trademark describing acetylsalicylic acid due to such carelessness leading to genericization over time.

Trademark Infringement: One Name, Two Restaurants, Two Blocks Away

Monday, 23 January, 2012 05:29 Written by Aaron Thalwitzer 0 Comments

You are not alone!

I’m in Orlando, Florida, this weekend, visiting my family, and an old friend has asked me a question.

Question: I’ve owned and operated a restaurant under the name [JR's] for 20 years. A month ago a restaurant opened up less than a mile away with the exact same name, [JR's] [ed. note - names have been changed to protect the innocent]. They serve barbecue, we serve Tex-Mex. Both are casual, moderately-priced, serve beer, and are generally ‘fun’ places to eat. They stole my name, right?

Answer: You are alleging trademark infringement, which, once proved, could warrant an injunction, damages, or both. You have a good claim.

First, let’s again review the Lanham Act, which creates a cause of action against any person who, in connection with goods or services, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin … which (A) is likely to cause confusion, or to cause mistake, or to deceive as to the… connection … of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, [or] services… See 15 U.S.C. § 1125(a)(1).

The key for a plaintiff in proving infringement of its trademark is to show the likelihood of consumer confusion. See Restatement (Third) of Unfair Competition § 21 cmt. a (1995) (“The test for infringement is whether the actor’s use of a designation as a trademark … creates a likelihood of confusion ….”).

An injunction will force the new JR’s to stop using the mark “JR’s”. A party seeking a preliminary injunction must establish (1) irreparable harm and (2) either (a) a likelihood of success on the merits or (b) a sufficiently serious question going to the merits and a balance of hardships tipping decidedly in the moving party’s favor. See Jackson Dairy, Inc. v. H.P. Hood & Sons, Inc., 596 F.2d 70, 72 (2d Cir.1979) (per curiam). In a trademark infringement case, proof of a likelihood of confusion establishes both a likelihood of success on the merits and irreparable harm. See Hasbro, Inc. v. Lanard Toys, Ltd., 858 F.2d 70, 73 (2d Cir.1988).

Relief may be available under 15 U.S.C. §§ 1114 (imitation of registered mark) and 1125(a) (false designation of origin). To prevail on a claim of trademark infringement, a plaintiff must show, first, that its mark merits protection, and, second, that the defendant’s use of a similar mark is likely to cause consumer confusion. I will assume you have have validly registered your mark (if not please do so; a registered mark in continuous use for five consecutive years after registration, and still in use, becomes incontestable under 15 U.S.C. § 1065) and turn consider the pivotal question: the likelihood of confusion.

Now we apply the multi-factor test, which requires analysis of several non-exclusive factors, including: (1) the strength of the mark, (2) the degree of similarity between the two marks, (3) the competitive proximity of the products, (4) actual confusion, (5) the likelihood the plaintiff will bridge the gap, (6) the defendant’s good faith in adopting its mark, (7) the quality of the defendant’s products, and (8) the sophistication of the purchasers. This will give us a good idea of the likelihood of confusion, but the court is not limited to these factors, and all must be viewed in the context of whether the consumer will be confused as to the source of the product.

I’ll go factor by factor.

(1) Your restaurant has been around for 30 years, so I will assume you have a strong mark. (2) The marks are identical. (3) You are directly competing geographically (6) and in terms of markets and could walk from one location to the other. (7) Good faith is impossible to determine without additional facts, but it may be inferred that the new JR’s is aware of your mark. (7) I don’t know anything about the quality of Defendant’s products. (8) I’ll assume the purchasers are an average sampling of the population, since the prices are moderate and you both serve beer.

There is an additional factor. The mark, “JR’s” probably derives from someone’s proper name. If both restaurants have proprietors named “JR”, things get mucked up. “[C]ourts generally are hesitant to afford strong protection to proper names, since to do so preempts others with the same name from trading on their own reputation. ‘To prevent all use of [a man's personal name] is to take away his identity; without it he cannot make known who he is to those who may wish to deal with him; and that is so grievous an injury that courts will avoid imposing it, if they possibly can.’” Brennan’s Inc. v. Brennan’s Restaurant, L.L.C., 360 F. 3d 125 (2d. Cir. 2004). The name of a person, therefore, like other descriptive marks, is protectible only if it has acquired secondary meaning.

The ultimate answer will depend on the overall impression of the name. I believe, on these facts, that you would probably prevail on an infringement claim. However, if the new JR’s added “BBQ” to their name, you would have an uphill battle. You will have to show that consumers will be confused by the names. Given the extreme proximity of the restaurants, one can envision two people meeting at disparate JR’s if an address wasn’t specified. You may want to consider hiring a trademark attorney. There are other claims and options beyond the scope of this article.

Can I use a comic book trademark in my business?

Monday, 02 January, 2012 05:44 Written by Aaron Thalwitzer 0 Comments

I’ve been noticing something a lot lately.

Maybe it’s because I’m a fan of superhero stuff and/or because I practice intellectual property law. Maybe due to all the superhero movies, and the fact that people not only don’t mind being associated with comics, they would LOVE some of that comics mojo to rub off on their business.

Sometimes, a company taking an item from an existing comic and using it to market their business. For example, a new mom and pop pizza chain near my house recently distributed a promotional flyer using Superman, Batman, Spider-Man, and some other superheroes all enjoying their pizza. You can bet they didn’t have a license for those trademarks. That’s a one-off that realistically caused little if harm and probably won’t be noticed. But I’ve also noticed other companies utilizing what familiar comic book-related names. For example, there’s Wayne Enterprises, which has nothing to do with Bruce Wayne. Then there’s Stark Industries, which doesn’t make flying robotic armored suits (although they do manufacture “seismic gun compressed air supply systems”). There are lots of LexCorps out there. I’m not saying they infringe (most of them probably don’t). But when does this cross the line and become infringement under the Lanham Act?

This has been litigated before. For example, in a highly publicized 2004 case, DC Comics sued Kryptonite Corp. (KC), a bike locks and accessories manufacturer alleging, among other things, trademark infringement and dilution. KC countered that DC’s trademark registration should be cancelled. DC and KC had licensing agreements over the word “Kryptonite“, but KC was prohibited from using the word “super” and other things associated with the Superman universe, in marketing its products.

For the trademark infringement claims, the plaintiff must demonstrate (1) that it has a valid mark that is entitled to protection under the Act and (2) that there exits a likelihood of confusion that consumers will be misled or confused as to the source of the goods in question.

1. Ownership of a valid mark

KC argued that DC Comics’ use of Kryptonite does not qualify for protection under the Lanham Act because DC Comics has not used Kryptonite as a brand name or trademarkto indicate the source of its goods. KC argued that DC Comics does not own the trademark in Kryptonite because DC Comicshas never used the mark in commerce the only evidence of use is as a story element. KC argues that Kryptonite is simply a fictitious substance that appears in the Superman story for narrative—not source identifying purposes. According to KC, Kryptonite is one small part of the overall content of a comic book story used in the story to describe a fictitious substance and enhance the story -not to identify or designate the source of a real product or service. KC contends that the word “Kryptonite” (except as a name for KC’s locks and other products) has no commercial meaning identifying the source of goods or services.

DC Comics,countered that it has made significant use of Kryptonite as a trademark on products other than comic products and motion picture products. For example, DC Comics argues it has used Kryptonite with merchandise such as toys, apparel, books, calendars, games, greeting cards, novelty items, and video games. In addition, DC Comics argues that it owns two trademark registrations for the use of Kryptonite on t-shirts which are incontestable.

This was not a close call. The Court held that DC Comics owned a trademark in Kryptonite. The law holds that:

where the product sold by plaintiff is ‘entertainment’ in one form or another, then not only the advertising of the product but also an ingredient of the product itself can amount to a trademark protectable under § 43(a) because the ingredient can come to symbolize the plaintiff or its product in the public mind.

DC Comics, Inc. v. Filmation Associates, 486 F.Supp. 1273, 1277 (S.D.N.Y.1980).

Protectable “ingredients” include the names and nicknames of entertainment characters (“bionic” man and woman), as well as their physical appearances and costumes, but not their physical abilities or personality traits.

For example, in an earlier case, DC Comics, Inc. v. Powers, which is directly on point, an infringer attempted to publish a magazine under name “The Daily Planet”—the same name as the fictitious newspaper that employs Superman’s alter ego, Clark Kent. Apparently, the Court did not find that DC Comics had used “The Daily Planet” on a product in the traditional trademark sense. Still, the Court found that, because over time there had grown such a close association between the “The Daily Planet” and Superman, that DC Comics Owned protectable rights in “The Daily Planet.”

The same goes for Kryptonite. The Court held, “Kryptonite is an ingredient of an entertainment property (Superman) and is a protectable symbol under the Lanham Act. Kryptonite is closely associated with Superman resulting from DC Comics’ 60 years of use of Kryptonite with Superman . . . For example, several recurring characters created by DC Comics are based entirely around Kryptonite: the Kryptonite Kid, the Kryptonite Man, and Metallo (a villain powered by Kryptonite).” The Court found that DC Comics had, for many decades, used Kryptonite to sell all manner of schlock, thereby strengthening its claim on the trademark.

Therefore, because Kryptonite, is so intimately associated Superman, it serves to identify DC Comics’ products. Kryptonite, its green glowing appearance, and other related indicia thus represent trademarks of DC Comics.

2. Likelihood of Confusion

KC argue there is not a likelihood of confusion as to the origin of the goods. The question is whether, as a result of KC’s mark being in the marketplace, numerous ordinary purchasers are likely to be misled or confused as to the source of the product in question. Factors to consider in determining whether a likelihood of confusion exists:

the strength of DC Comics’ mark;
the similarity of the DC Comics’ mark;
the competitive proximity of the products;
the likelihood that the DC Comics will “bridge the gap” by entering KC’s market;
actual confusion between the products;
good faith on KC’s part;
the quality of KC’s product; and
sophistication of buyers.

The Court held that there were triable issues. In cases with this many intent-based factors, summary judgment is generally unlikely, and trial (or, more realistically, settlement via a licensing agreement) more likely. Be careful using comic trademarks. The best advice is to talk to a lawyer first. You don’t want to build up a brand, and then have to change everything midstream — or, worse, get involved in costly litigation with a deep pockets plaintiff.

TRADEMARK LITIGATION OR UNIFORM DOMAIN NAME DISPUTE RESOLUTION

Tuesday, 20 December, 2011 18:34 Written by danieldavidson 1 Comment

By Daniel Davidson

In an era where the world is connected through the internet and domain names have sold for hundreds of millions of dollars, there rests a question that calls for the ol’ pros and cons table. When a large company, or a famous individual, builds the goodwill of their trademark, they, in most cases, will spend a significant amount of money in protecting that goodwill.

Sometimes, someone comes along and feels that they will go ahead and bank off the goodwill, which has already gained notoriety, and register a domain name that is very similar, or uses a significant portion of a trademark owner’s name, and offer similar services thereon. For example, Coca-Cola Company owns the domain www.coca-cola.com. In an attempt to trade off the goodwill of Coca-Cola, someone may register the domain name www.cocacolasodas.com, and offer a dark-colored, fizzy drink to the public.

In the Coca-Cola’s example, Coca-Cola would have a few options. I am not saying that there are only two options, but these are two ways that most domain name disputes can be resolved. One, you can file a lawsuit against the infringer (after weeks of trying to obtain the name and address of the Registrant because they probably use a whois privacy company, and then on top of that, use a P.O. Box), and attempt to obtain a judgment. Once the judgment is entered, you can forward a copy to the Registrar, who will then cancel the registration of the domain name.

Second, you can file a complaint with the ICANN using the Uniform Domain Name Dispute Resolution Policy. In this form of domain name resolution, it is much like filing a lawsuit and obtaining a judgment, only you are not filing in a Federal Court. In some cases, it would be more cost effective using the ICANN UDRP in obtaining a judgment, because like I mentioned, it is sometimes very difficult obtaining the information necessary to track down a Defendant.

The process consists of a Complaint filed against the domain name infringer. The infringe,r or Respondent, will then have to file a Response to the Complaint. Upon receiving the Response, the parties can file additional statements and documents within five (5) days after the Response was received. Once all the pertinent information is in, the parties will then decide whether they prefer three panelist, or one, to decide their matter. Electing to go with one panelist will warrant you a significant reimbursement of the approximately $3,000 (not including attorney’s fees) you pay to file the Complaint. The elements which need to be alleged in the Complaint are:

a. the manner in which the domain name is identical or confusingly similar to a trademark;

b. why the infringer/Respondent has no rights or legitimate interest in the domain name; and

c. how the infringer/Respondent is using the domain name in bad faith.

If the panel finds all the elements in a trademark holder’s favor, a judgment will be entered and will be forwarded to the Registrar of the domain name. Cheers.

Disney Goes After Pixar Petroleum for Trademark Infringement

Friday, 09 December, 2011 09:38 Written by Mark Malek 1 Comment

By: Mark R. Malek

If you have read my articles in the past, you may have figured out that I frequent the Disney Theme Parks often, and I watch most all of the Pixar movies (see my most recent article about Disney here). I would like to blame that on my kids but, in all honesty, I was a Disney season passholder and a fan of the Pixar movies long before I had kids. I do like most of the Pixar movies (with exception to Wall-E) and, since Steve Jobs was a majority stakeholder in Pixar, I was somewhat saddened by his passing last month.

I came across a story last week in the Wall Street Journal that caught my eye. As it turns out, an oil and gas company in Calgary, Alberta announced that it would organize its oil sands and carbonate bitumen interests into a subsidiary called Pixar Petroleum Corp. Even more interesting, however, is the name of Pixar Petroleum’s parent company – Paramount Resources Ltd. The article went on to note that Paramount Resources Ltd. also has a subsidiary named Fox Drilling Inc., and maintains an interest in MGM Energy Corp.

It seems to me that this is just a group that gets a kick out of choosing names for their companies that are similar to those of the movie industry. Who knows, maybe these folks are big movie fans. It is not as though the names are not famous. Most everyone has seen a movie made by one of these companies in the past few years. Disney Enterprises, Inc. owns a slew of trademarks on the Pixar name. There are several different variations, each directed to the different movies that Pixar has created. It is amazing to me that nobody at Pixar Petroleum stopped for a second and thought, “maybe Disney is not going to like this so much.” Besides Google and probably GE, is there another company that has deeper pockets that you are looking to pick a fight with? Probably not.

I understand that the argument for Pixar Petroleum to attempt to make is that there is no likelihood of confusion between the entertainment industry that Disney is involved in with the petroleum industry that Pixar Petroleum is involved in. The analysis does not end there. There is a trademark dilution issue that has to be addressed. Rene Dial has posted some articles on trademark dilution (see here and here). The Wall Street Journal article cited attorney Gloria Phares who noted that “just because you have a mark in one area, like in animation, doesn’t mean you have a monopoly on a mark.” Gloria’s analysis is correct, but I really hate the use of the word monopoly when referring to intellectual property.

Technically speaking, intellectual property rights do not provide a monopoly to the owner. Instead, it provides the owner with the right to exclude others from using their intellectual property. I know that you are now saying “what’s the difference?” The difference, especially in patent law, is that intellectual property does not give you the right to make and sell whatever you have protected – it merely gives you the right to exclude others from doing so. It is a subtle difference, but it is a difference nonetheless. Over time, however, it seems as though intellectual property owners have tried to over force and over interpret the rights that they have. This behavior is, in my opinion, improper, and is the driving force for much opposition to intellectual property rights. This discussion has to be saved for another article – possibly a series of articles.

Back to the issue at hand – perhaps, as indicated in the Wall Street Journal Article, this was a jab at Disney and Pixar for their recent jabs at big oil. The plot of Cars 2 (which I saw in the theater with my kids…twice) revolved around big oil trying to destroy a new company that was introducing alternative fuel. Yes, it was a bit difficult for the kids to follow, but all is forgiven when Mater does something funny.

Posts Tagged ‘trademark infringement’

How do I Establish and Protect a Trademark?

Trademark Infringement: One Name, Two Restaurants, Two Blocks Away

Can I use a comic book trademark in my business?

TRADEMARK LITIGATION OR UNIFORM DOMAIN NAME DISPUTE RESOLUTION

Disney Goes After Pixar Petroleum for Trademark Infringement

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