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BRANDING, INTELLECTUAL PROPERTY, TRADEMARKS

UNAUTHORIZED USE OF NCAA TRADEMARKS COULD HAVE YOU RIDING THE PINE

With the annual NCAA Basketball Tournaments just days away, many people are busy filling out their brackets and getting ready to watch their favorite teams compete for the big prize. You may have noticed in my opening that I didn’t use terms such as BIG DANCE®️, MARCH MADNESS®️ or FINAL FOUR®️. That is because those names are federally registered trademarks owned by the NCAA. The improper and/or unauthorized use of those names could result in you being called for a foul in the form of a cease and desist letter or even a lawsuit from the NCAA. So what are the rules? When can you use MARCH MADNESS®️ or one of the 70+ names, phrases and images that are registered trademarks associated with the famous basketball tournament?

As with many other legal questions, there is no simple yes or no answer to this question. Trademark infringement is defined as the unauthorized use of a trademark or service mark in connection with goods or services in a way that is likely to cause confusion in the minds of consumers about the source or sponsorship of the goods or services offered under the parties’ marks. It is the sponsorship aspect of infringement that is most likely to be at issue with regard to the use of BIG DANCE®️, MARCH MADNESS®️,or FINAL FOUR®️ and related marks in that the use of those marks may give the impression that the event, goods or services are somehow endorsed or approved by the NCAA. So technically, any use of such registered marks would constitute infringement.

However, Courts, as they often do, have recognized exceptions to this – the most notable of which is the “fair use” exception. The concept of free speech and nominative fair use falls under the fair use exception and allows for marks to be used for purposes of reporting, commentary, criticism, parody, and comparative advertising. That branch of the exception is what allows me to use these marks as a part of this blog.

Noncommercial use is also recognized as falling within the realm of fair use on the basis that the mark is not being used in connection with a good or service. Based on this exception, an individual hosting a watch party in his or her home for friends that are not being charged admission may use the marks on invitations and the like without infringing. On the other hand, commercial use by bars, restaurants and businesses that stand to make money off of the event, regardless of whether they charge admission, likely does not fall within the fair use exception and may subject the owners to a penalty for trademark infringement.

The 70+ Trademarks are valuable assets

The NCAA reported total revenue of $1.18 Billion associated with the NCAA tournament in 2019. Due to cancellation of the tournament in 2020 as a result of the COVID 19 pandemic, that figure was down to $519 million, which included a $270 million insurance payout for cancellation of the tournament. While the biggest portion of that revenue comes directly from broadcasting rights ($804 million in 2019), a significant portion of the revenue associated with the NCAA Tournament is derived from licensing fees for merchandise and authorized partners who pay fees to the NCAA to be the official this or that of the NCAA Tournament. Hundreds, if not thousands of businesses line up each year and pay fees to the NCAA to be “authorized” partners and use one or more of the 70+ trademarks associated with the NCAA Tournament.

The NCAA aggressively pursues infringers of its trademarks

With so much money on the line, it is no wonder the NCAA aggressively pursues those who use its trademarks without permission. For example, in 2017, the NCAA filed suit against a Las Vegas-based fantasy sports sweepstakes company that was using the phrases “Final 3” and “April Madness” in its events related to the NCAA Division I Men’s Basketball Championship. While the marks were not identical to the NCAA’s marks, the court concluded that they were “obviously similar” and that the defendants “planned to use the marks in connection with contests and events related to NCAA basketball games” indicating “willful infringement.” The defendants were permanently enjoined from using the Final 3 and April Madness phrases and any other variations thereof that would be confusingly similar to the NCAA marks and were ordered to recall all infringing products. The court further invited the NCAA to file a motion for attorney fees, suggesting that it may order defendants to pay the NCAA’s attorney fees as well. Since January, 2020, the NCAA has filed over 25 opposition/cancellation actions against other parties who have registered or have attempted to register trademarks with the U.S. Trademark Office that the NCAA believed were similar to it’s marks. Included in that list is was a petition to cancel a registered trademark for VASECTOMY MADNESS and a petition opposing registration of MARCH MODNESS.

Tips to avoid being called for a foul

Unless you are specifically authorized by the NCAA, the following are things that you should avoid if you don’t want to draw the attention of the attorneys for the NCAA:

Advertising for your products or services that refers to the NCAA, MARCH MADNESS or any of the other 70+ marks owned by the NCAA related to the NCAA Basketball Tournament. (Example: A car dealership adveristing “March Madness” pricing on new/used vehicles in the month of March).
Promoting an event, gathering, party or the like by making reference to the NCAA or its marks. (Example: A sports bar advertising in a magazine to “Come watch the BIG DANCE on our Big Screen TVs”).
Hosting contests, sweepstakes or giveaways that make reference to the NCAA or its marks. (Example: The “March Madness Sweepstakes”).
Placement of an advertisement for your product or services within an NCAA bracket. (See guidelines by clicking here).

If you are still in doubt, the NCAA provides additional direction and guidance on the proper use of its marks here. Or better yet, contact us for expert advice on whether your use is permitted.

BRANDING, ENTREPRENEUR, INTELLECTUAL PROPERTY, TRADEMARKS

BRANDING LESSON – Copying a famous mark could lead to an un-hoppy ending

Branding issues occur in almost every type of commercially available product or service. If you know me, you know that I am a HUGE fan of micro-brewed beers. Recently, I came across this one courtesy of my neighbors at High Score Saloon. Hop Tarts is a golden double IPA with a slight berry essence achieved by adding raspberries, blueberries & strawberries during fermentation. Sounds delicious, right? I hope to get a chance to try one soon!

Pop Tarts branding similar to Hop Tarts branding

U.S. Trademark No. 4,240,604

But I can’t help but wonder if DuClaw Brewing Co., which prides itself on “Taking Brewing Risks Since ’96” may have taken too big of a branding risk with this new brew. One look at the label on the hop tarts can brought back fond childhood memories of one of my favorite breakfast treats – Pop Tarts. Kellogg Corporation is the owner of several U.S. Trademarks associated with the Pop Tarts brand, including Regi stration No. 4,240,604 which is shown here. On it’s face, the Hop Tarts logo appears to be exactly the same as the registered Pop Tarts mark except that they substituted an “h” for the “p”.

Those of you that follow my blog may recall another post from a few months back – Damsel In Distress – How Choosing the Wrong Name Can Cost Your Company Big Time – about a similar situation where Maiden’s Brewery & Pub was accused of infringing on trademarks owned by the band Iron Maiden. (I know, another blog post about craft beer?) While there are certain similarities to that case, this situation raises some very different issues regarding trademark law.

Branding, Trademark Infringement and Likelihood of Confusion

Whether or not there is trademark infringement under U.S. law hinges on whether or not there is a “likelihood of confusion” as to the source of the products or services offered under the mark. The thirteen so-called DuPont factors determine whether there is a likelihood of confusion between marks and therefore infringement. Those factors are:

The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression.
The similarity or dissimilarity and nature of the goods . . . described in an application or registration or in connection with which a prior mark is in use.
The similarity or dissimilarity of established, likely-to-continue trade channels.
The conditions under which and buyers to whom sales are made, i.e. “impulse” vs. careful, sophisticated purchasing.
The fame of the prior mark.
The number and nature of similar marks in use on similar goods.
The nature and extent of any actual confusion.
The length of time during and the conditions under which there has been concurrent use without evidence of actual confusion.
The variety of goods on which a mark is or is not used.
The market interface between the applicant and the owner of a prior mark.
The extent to which applicant has a right to exclude others from use of its mark on its goods.
The extent of potential confusion.
Any other established fact probative of the effect of use.

The first two factors – the similarity of the marks and the similarity of the goods or services – generally carry the most weight making a determination of infringement. Looking at the Hop Tarts case, as referenced above, the marks appear to be very similar in appearance. Looking at the second DuPont factor, however, presents a different picture. The goods protected by the Pop Tarts mark (toaster pastries) are very different from the goods to which the Hop Tarts mark is applied (craft beer). The trade channels of those goods also appear to differ significantly. Given those factors, it may be difficult for Kellogg’s to make a strong case for trademark infringement here.

Dillution of Famous Marks

However, there is another concept in trademark law known as dillution. Trademark dillution is the use of a mark or trade name in commerce sufficiently similar to a famous mark that by association reduces, or is likely to reduce, the public’s perception that the famous mark signifies something unique, singular or particular. Dilution is comprised of two principal harms: blurring and tarnishment. Blurring occurs when the distinctiveness of a famous mark is impaired by association with another similar mark or trade name. Tarnishment occurs when the reputation of a famous mark is harmed through association with another similar mark or trade name.

A “famous mark” is one that evokes an immediate connection in the minds of the consumers with a specific product or service and the source of that product or service. Examples of famous trademarks include APPLE, COCA-COLA, GOOGLE, MCDONALD’S and WALMART. Famous trademarks enjoy a broad scope of legal protection because they are more likely to be associated and remembered in the public’s mind.

According to Wikipedia, the Pop Tarts brand was introduced by Kellogg’s in 1964 and is one of their most popular brands with millions of units sold each year. In my opinion, Kellogg’s has a strong argument that it’s Pop Tarts mark qualifies as a “famous mark” and is subject to a higher level of protection than an ordinary mark. While some may consider use of their mark in connection with craft beer to be a tarnishment (not anyone that I would associate with, but there may be some out there), the stronger argument for Kellogg’s would be blurring – that their Pop Tarts mark is somehow impaired by association with the Hop Tarts brand. If Kellogg’s were to prevail in a suit against DuClaw for trademark dillution, they would be entitled to an injunction preventing DuClaw from further use of the Hop Tarts brand.

Do you have a new product or service that you are branding and want to ensure that you don’t make the same mistake? Before you hop to it, let us conduct a trademark clearance search to determine if there are any trademark issues with your brand. Contact us about your branding and trademark concerns before you hop into launching your new brand.

BRANDING, INTELLECTUAL PROPERTY, TRADE DRESS, TRADEMARKS

BRANDING MISTAKES – A JUICY TALE

A new seafood and sushi restaurant, The Juicy Crab in Owensboro, Kentucky made a big branding mistake in choosing its name when it opened for business recently.

BRANDING MISTAKES MAY LAND YOU IN BOILING WATER

According to an Owensboro Times article, almost immediately Facebook users were confused as to whether this Juicy Crab was affiliated with a chain of Juicy Crab restaurants based out of Duluth, Georgia. The owner of the Owensboro Juicy Crab apparently relied upon the availability of the name for registration with the Kentucky Secretary of State and the advice of a lawyer (presumably not one that specializes in Intellectual Property and Trademark Law) in adopting the name. Within days of opening, Juicy Crab Owensboro received a cease and desist letter from Juicy Crab Duluth alleging infringement of their U.S. Trademark Registration No. 5,139,205 for THE JUICY CRAB which is registered for use in connection with seafood restaurants.

TRADEMARK INFRINGEMENT AND BRANDING

The owner of a U.S. Trademark has the exclusive right to use the registered name in connection with the goods or services that it is registered for, and for goods or services that are the same or similar. Trademark infringement occurs when there is a liklihood of confusion as to the source of goods or services. Several factors affect whether there is a liklihood of confusion. The two primary factors are the similarity of the marks themselves and the similarity of the goods or services. In the case of Juicy Crab, the two names are identical and the services provide (seafood restaurants) are also identical. In addition, there appears to be actual confusion already and the Owensboro restaurant has only been open a short time. These factors point to an almost certain finding of infringement.

HOW TO AVOID BRANDING TRAPS

So what should a restaurant owner, or anyone opening a new business, do before choosing a name for their business? You should perform a trademark clearance search before registering the name with the state. The clearance search will help to ensure that the name is available for use as you intend to use it. You should engage a professional familiar with the resources needed to find all potentially blocking marks for the search. An experienced trademark attorney should render an opinion based on the search results. Had Juicy Crab Owensboro followed this path, the registration for Juicy Crab Duluth would almost certainly have been found. Knowing this, Juicy Crab Owensboro could have chosen a different name and avoided the conflict. No business owner wants to have to change their brand after the business is up and running. Customers may be confused by the name change and re-branding, which involves new designs, logos, signage, etc. can be expensive. It’s far better to properly vet a name BEFORE you hire someone to design your logo and branding. While there is a cost to doing so, it may just save you money, and your business, in the long run!

MARTIN IP CAN HELP

Are you thinking of starting a business or have started a business and want to ensure that you don’t make the same mistake? Before you spend money on a logo or designs, let us conduct a trademark clearance search to determine if there are any trademark issues with your business name. To protect your juicy brand and to avoid getting a crabby cease and desist letter, contact us to help with choosing, protecting and registering your brand.

BRANDING

ANOTHER REASON TO HATE TOM BRADY – HE’S PROACTIVE ABOUT PROTECTING HIS BRAND!

Tom Brady – He’s the most hated player in the NFL, and possibly in all sports. A Google search for “hate Tom Brady” turns up a plethora of hits such as Which States Hate Tom Brady the Most?, 40 Reasons Why We Hate Tom Brady, and A Psychology Professor’s Analysis of Why People Hate Tom Brady to name just a few. There is even a Hate Tom Brady Club Facebook Group!

Whether you love him or hate him (like I do), he has recently discovered the value of branding. Starting in late 2016, Brady began filing trademark applications with the United States Patent and Trademark Office to register the mark TB12 for a variety of goods and services. As of the writing of this article, Brady owns twenty-two registered marks and four pending applications for TB12. In an effort to further leverage his brand (and feed his ego), in 2019 Brady filed applications to register TOM TERRIFIC for t-shirts and sports memorabilia. Thankfully Brady abandoned his effort to register TOM TERRIFIC after the USPTO received a protest letter from Hall of Fame pitcher Tom Seaver.

Undeterred by the rejection, which I’m sure he’s not used to – especially from NFL officials, after recently signing with the Tampa Bay Buccaneers, Brady (TEB Capital Management) has filed new applications to register TAMPA BRADY and TOMPA BAY for clothing, headwear and footwear. In addition, on the same day that Brady signed with the Bucs, his Los Angeles based agent Yee & Dubin filed a similar application to register TB x TB. Those applications should be acted on sometime this summer, well in advance of the start of the 2020 NFL season.

With billions of dollars spent each year on NFL merchandise and his career in it’s twilight years (hopefully), it’s not surprising that Brady is looking for additional revenue streams. For the first time since 2015, Brady is not expected to top the list of merchandise sellers in the NFL. According to CNBC, the NFL Players Association was expecting retail sales of NFL merchandise to gross around US$1.7 billion for 2019. About $100 million of that revenue is shared among NFL players. Those figures include only officially licensed NFL merchandise and would not include merchandise sold under marks such as TB x TB, TOMPA BAY and TAMPA BRADY. As the owner of those marks, Brady would be entitled to ALL proceeds of sales for clothing bearing those marks without other NFL marks.

While many people may despise him, Brady is a smart man (he did graduate from The University of Michigan) who recognizes the importance of protecting his brand. As a business owner (Brady owns TEB Capital Management), maintaining control over branding is vital to success. Federal registration of a trademark provides several advantages when it comes to brand protection. First, registration of a trademark with the USPTO protects the owner from infringement by granting them the exclusive right to use the mark in connection with certain goods/services in all fifty states of the United States. Also, in the case of t-shirts, hats and other goods that can be cheaply manufactured overseas, federal registration allows the owner to use of the U.S. Customs Service to seize and impound infringing goods at the border.

Does your business have brands worth protecting? Contact us to see how we can assist you with registering and monitoring your brands.

BRANDING, INTELLECTUAL PROPERTY, TRADEMARKS, Uncategorized

DELTA SUES MARRIOTT FOR TRADEMARK INFRINGEMENT OVER DELTA HOTELS

Atlanta, GA – Earlier this month (March 2020), Delta Airlines filed suit against Marriott International for trademark infringement and dilution over Marriott’s use of DELTA trademarks as part of its U.S. expansion of it’s Canadian Delta Hotel chain. In court documents, Delta claims that “Marriott has embarked upon a calculated strategy of not only gratuitously using the name DELTA for its DELTA HOTELS chain of hotels in the United States, but also has adopted a sans-serif font and dark blue color scheme for its DELTA HOTELS business that closely mimics the font and color scheme used by Delta” (see photo). Delta further claims that Marriott has opened numerous “airport hotels” under the Delta Hotels name and is marketing that brand to airline travelers leading consumers to believe that the hotel chain is somehow associated with Delta Airlines.

Delta claims to be the leading airline in the world by total revenue, serving 200 million people every day. Delta also claims to be a leader in related travel services such as hotel bookings, credit card rewards programs, and hospitality services. Delta also partners with other companies in virtually every industry, including hotels, credit card providers, entertainment venues and stadiums, sports teams and charitable organizations. According to Kantar, in its 2020 BrandZ report on the Top 100 Most Valuable US Brands, Delta’ Airlines’ DELTA brand is among the 100 most valuable brands in the United States. In its complaint, Delta frames the dispute broadly as one involving the “travel industry” as opposed to airlines and hotels.

Marriott acquired the Delta Hotel chain, which had previously operated only in Canada, in 2015. After the purchase, Marriott began expanding the Delta Hotel chain into the United States. Marriott also made significant changes to the design of it’s logos – adopting a sans serf font, dispensing with a stylized, curling “D” design in favor of a straight “D” design, and changing to a darker blue color. Delta claims that all of these changes were intentionally designed to make the Delta Hotel marks much closer to the Delta Airlines marks, almost guaranteeing confusion when the Delta Hotels began operating in the United States. Since the purchase in 2015, Marriott has also opposed registration of several DELTA marks filed by Delta Airlines with the United States Trademark Office. Those oppositions continue to work their way through the system. Marriott has also filed over 70 applications around the world to register “DELTA” as a trademark on its own. All of this indicates that Marriott is taking a very aggressive approach to expansion of what to most in the United States is probably a previously unknown hotel chain brand.

Without the benefit of seeing Marriott’s answer to the complaint (it’s not due yet), it is difficult to understand what Marriott is thinking with its rapid and aggressive expansion of the Delta Hotel brand. With a multitude of other hotel brands under its umbrella, from Ritz Carlton and St. Regis to Fairfield and Townplace Suites, surely there is an existing U.S. branded hotel that aligns with the level of service provided by Delta Hotels in Canada. Marriott will almost certainly spend tens of thousands of dollars in attorney fees defending this suit, and if it loses, it could be rebrand, pay damages and possibly attorney fees to Delta. It will be interesting to see how Delta responds to the complaint.

Has someone misappropriated your brand? Are you starting out with a new business, venture, product or service and want to have some assurances that you won’t have to rebrand later due to an unseen infringement? We are here to help. Contact us to see how we can give you the peace of mind you deserve before you move forward.

BRANDING, ENTREPRENEUR, TRADEMARKS

A LESSON IN BRANDING FROM THE ROCKET CITY TRASH PANDAS

In our September 2018 blogpost we raised concerns about potential trademark issues regarding the newly selected name and proposed logos for Madison, Alabama’s new AA baseball team dubbed the “Rocket City Trash Pandas”. The concern was that the proposed branding could conflict with trademark and copyright registrations held by Marvel Characters, Inc. for Guardians of the Galaxy®️ movie character Rocket Raccoon®️. Shortly after our post, a report indicated that those concerns were echoed by the Madison City Council. In response, Trash Pandas’ owner assured the Council that they had “dotted our I’s and crossed our T’s on the trademark searches”

The resulting Trash Panda logos and branding that were unveiled on October 27, 2018 reflected a decisive pivot away from the mock logo that first appeared on Facebook and that was featured in our previous post. Gone was the snarling, snarky flak-jacket wearing raccoon Rocket. In its place is a smiling, rocket fin adorned trash can wearing raccoon Sprocket. The marked difference in design is almost certainly attributable to the Trash Pandas’ desire to avoid a trademark dispute with Marvel. A good move on their part.

Maybe even a great move. In only thirteen months after the branding release, the Trash Pandas surpassed the $2 million mark in merchandise sales. But for their late start on the 2019 season, the Trash Pandas almost certainly would have cracked the Top 25 in merchandise sales among minor league baseball teams. Keep an eye out for them when the numbers for 2019 are released in July. Given that the average merchandise sales for all 160 minor league teams is less than $500,000 per team, their $2 million should put them squarely in the top 25 when the figures are released this summer.

Another thing that the Trash Pandas did right was to seek early registration of their mark. As we reported in September 2018, Trash Pandas owner BallCorps filed two applications with the U.S. Trademark Office for registration of the name TRASH PANDAS in July 2018. On December 3, 2019 they were granted U.S. Trademark Registration No. 5,927,921 for use in connection with paper goods and printed matter, namely, autograph books, binders, bookmarks, bumper stickers, calendars, catalogs in the field of baseball, decals, merchandise bags, newsletters in the field of baseball, note pads, paper containers, paper pennants, paper game schedules for sporting events, pens, pencils, postcards, posters, printed awards, printed game tickets for sporting events, printed guides in the field of baseball, reference books in the field of baseball, score books, score cards, score sheets, stationery, stickers, sticker albums, and sports trading cards, and clothing, namely, aprons, athletic uniforms, bandanas, boxer shorts, caps being headwear, cloth baby bibs, coats, golf shirts, gym shorts, hats, jackets, jerseys, knit shirts, pajamas, polo shirts, ponchos, pullovers, rain coats, rainwear, sweaters, sweat pants, sweat shirts, socks, sport shirts, t-shirts, tank tops, ties, visors being headwear, wind resistant jackets, and wristbands as clothing. The other application, which seeks registration for entertainment services in the nature of baseball games and exhibitions, should issue before opening day on April 15, 2020.

Selecting a brand for your business can be daunting. It’s important to ensure that you don’t infringe on the rights of others and to properly protect your interest in the potential millions in revenue that a good brand can create. We are pleased to see that Trash Pandas owner BallCorp did branding right! If you need someone to help you navigate the legal issues associated with branding, we are here to help. Contact us to see how we can help you leverage your brand!

BRANDING, INTELLECTUAL PROPERTY, TRADEMARKS

UNAUTHORIZED USE OF SUPER BOWL®️ MAY RESULT IN A PENALTY

With the “Big Game” between those football teams from Kansas City and San Francisco just days away, many people are gearing up to host or attend watch parties to celebrate the NFL championship game. You may have noticed in my opening that I didn’t use terms such as SUPER BOWL®️, CHIEFS®️, or 49ERS®️. That is because those names are federally registered trademarks. The improper and/or unauthorized use of those names could result in you being flagged for a penalty in the form of a cease and desist letter from the NFL, the Kansas City CHIEFS®️, or the San Francisco 49ERS®️ organizations. So what are the rules? When can I use SUPER BOWL®️, CHIEFS®️, 49ERS®️ and the plethora of other related words, phrases and images that are registered trademarks of these organizations?

As with many other legal questions, there is no simple yes or no answer to this question. Trademark infringement is defined as the unauthorized use of a trademark or service mark in connection with goods or services in a way that is likely to cause confusion in the minds of consumers about the source or sponsorship of the goods or services offered under the parties’ marks. It is the sponsorship aspect of infringement that is most likely to be at issue with regard to the use of SUPER BOWL®️ and related marks in that the use of those marks may give the impression that the event, goods or services are somehow endorsed or approved by the NFL. So technically, any use of such registered marks would constitute infringement.

However, Courts, as they often do, have recognized exceptions to this – the most notable of which is the “fair use” exception. The concept of free speech and nominative fair use falls under the fair use exception and allows for marks to be used for purposes of reporting, commentary, criticism, parody, and comparative advertising. That branch of the exception is what allows me to use these marks as a part of this blog.

Noncommercial use is also recognized as falling within the realm of fair use on the basis that the mark is not being used in connection with a good or service. Based on this exception, an individual hosting a watch party in his or her home for friends that are not being charged admission may use the marks on invitations and the like without infringing. On the other hand, commercial use by bars, restaurants and businesses that stand to make money off of the event, regardless of whether they charge admission, likely does not fall within the fair use exception and may subject the owners to a penalty for trademark infringement.

Over the years, the NFL has aggressively pursued infringers in this category by sending out cease and desist letters to those commercial establishments who are using the marks without authorization. This stands to reason since many other commercial enterprises pay big money for the right to use the marks in connection with their products and services. For example, Anheuser-Busch InBev reportedly pays in the neighborhood of $250 million a year to the NFL for Bud Light to be the official beer of the NFL. This deal includes rights to use NFL trademarks, including those related to the SUPER BOWL®️.

A gray area also exists between those two extremes – private and/or not for profit entities that wish to host their own SUPER BOWL®️ party. In 2007, John D. Newland of Fall Creek Baptist Church in Indianapolis received a cease and desist letter from the NFL after promoting a church sponsored event where they planned to show the game on big screen TVs and charge $3.00 for admission. Newland ended up cancelling the party to avoid further entanglement. Arguably, notwithstanding copyright issues involved with the rebroadcasting of the game on big screen TVs, had Fall Creek not charged admission for the party, the fair use exception would likely have applied.

Whether you are a CHIEFS®️fan, 49ERS®️ fan (or a PATRIOTS®️fan licking your wounds this year), we hope that you enjoy the game with family and friends safely wherever you are and without issues of trademark infringement. If you have questions about trademarking a name for a product or service, or if you are concerned that your use of a name, symbol or phrase may infringe on the trademark rights of someone else, contact us to discuss how we can help you avoid being penalized or sacked and score a touchdown for your team!

BRANDING, ENTREPRENEUR, INTELLECTUAL PROPERTY, START UP, TRADEMARKS

DAMSEL IN DISTRESS – HOW CHOOSING THE WRONG NAME CAN COST YOUR COMPANY BIG TIME

Toward the end of last month, Maiden’s Brewery & Pub in Evansville quietly changed its name to Damsel Brew Pub. It was reported by River City Weekend that the change was made in response to a demand from the legendary rock band, Iron Maiden, giving Maiden’s Brewery & Pub until the end of 2019 to change the name of its establishment and beer products.

My first reaction upon hearing this news was disbelief. How could someone confuse a simple brewery and pub in Evansville, Indiana with a legendary rock band, or somehow be lead to believe that the brew pub was somehow affiliated with or endorsed by the rock band? Impossible! But after doing just a little bit of research, it appears that Iron Maiden’s demand is most definitely legitimate.

Iron Maiden Holdings Limited is the owner of at least six (6) U.S. Trademark Registrations for the name “Iron Maiden” as both standard character marks and in stylized forms. The earliest registrations date back to September 1984 and include the words “Iron Maiden” in the stylized form as shown below. Compare that to the stylized wording used by Maiden’s Brewery & Pub, and we begin to see the basis of the rock band’s complaint

U.S. Trademark Registration owned by Iron Maiden Holdings

Maiden’s Brewery & Pub Logo

The font used by Maiden’s Brewery & Pub appears to be nearly identical to the distinctive font in the “Maiden” portion of Iron Maiden’s registered mark. The 1984 trademark registrations were for entertainment services, namely live musical entertainment performances (Registration No. 1,308,370), clothing, namely T-shirts, jerseys, sweat-shirts, hats, jackets and leather wrist bands (Registration No. 1,307,146), and posters, souvenir concert programs, stickers, calendars, photographs and decals (Registration No. 1,306,972).

When determining trademark infringement, the penultimate question is whether there would be a likelihood of confusion as to the source of the product. In other words, would the consumer of beer and related products (such as koozies) sold by Maiden’s Brewery & Pub likely think that those products were somehow produced by, or sold with the authority of the band Iron Maiden. Given the striking similarity of the very distinctive font used in both instances, in our opinion, Iron Maiden did in fact have a strong claim that confusion was likely.

You might be asking yourself at this point why Maiden’s didn’t just drop the stylized font and keep the name Maidens for its brewery, beer and related products. Surely just the mere use of the word “Maidens” without the distinctive Iron Maiden font would not lead to confusion given the products covered by the three trademark registrations. If those were the only registered trademarks for the name Iron Maiden owned by the band, Maiden’s may well have been able to do just that. However, in 2010, Iron Maiden Holdings was granted U.S. Trademark Registration No. 3,840,031 for Iron Maiden (standard characters) in connection with a number of products and services, including beverage ware, bottle openers, portable beverage coolers, barware and coasters. Then, in 2014, Iron Maiden Holdings was further granted U.S. Trademark Registration No 4,848,431 for Iron Maiden (standard characters) for use in connection with beers and alcoholic beverages.

The owner of a federally registered U.S. Trademark has the exclusive right to use the mark in association with the goods or services for which it is registered and with any other goods or services that may create confusion as to the source of the product or service. For trademarks which are considered to be famous (one could argue that IRON MAIDEN falls within this category), infringing use may occur where the use occurs in relation to products or services which are not the same as or similar to the products or services in relation to which the owner’s mark is registered.

Maiden’s plight is an all too common occurrence. Many fledgling businesses either don’t know the risks associated with choosing a name or simply decide not to spend the money up front to properly vet the name before adopting and using it. This strategy is penny wise, but pound foolish. The business that chooses not to invest hundreds of dollars to ensure the name they want to use is available may end up spending thousand or more in damages for trademark infringement not to mention the costs of starting over with branding after Wasted Years building a brand that they may be forced to abandon.

Are you thinking of starting a business or have started a business and want to ensure that you don’t make the same mistake? Before you Run to the Hills, let us conduct a trademark clearance search to determine if there are any trademark issues with your business name. Contact us to iron out your trademark concerns before you become a damsel in distress.

BRANDING, ENTREPRENEUR, INTELLECTUAL PROPERTY, TRADEMARKS

FREE TACOS! LEBRON’S ATTEMPT TO TRADEMARK “TACO TUESDAY” FAILS

Here at Martin IP Law Group we love tacos so much that we celebrated Katlyn’s last day of work with our firm by hosting a taco bar, on a Tuesday no less! Thanks to the U.S. Trademark Office, we were able to use the name “Taco Tuesday” without fear of stepping on LeBron’s rather large feet.

In August, LBJ Trademarks, LLC, owned by LA Laker’s superstar LeBron James filed a U.S. Trademark Application attempting to register the phrase “Taco Tuesday” for a number of goods and services including downloadable audio/visual works, advertising and marketing services, podcasting services, and online entertainment services. On September 11, 2019, the USPTO rejected LeBron’s application to register “Taco Tuesday” on two separate grounds.

The primary grounds for refusal was that the phrase is a commonplace message that cannot function as a trademark or service mark to indicate the source of LBJ’s goods or services and differentiate them from the goods and services of others. The trademark examiner cited a variety of sources where “Taco Tuesday” was used to convey an “ordinary, familiar, well-recognized concept or sentiment.” Among the sources cited were several restaurants that used the phrase, and numerous newspaper articles showing wide usage of the phrase Taco Tuesday by various parties to express enthusiasm for tacos. In the end, the examiner concluded, correctly in my opinion, that Taco Tuesday conveys an informational message and would not be perceived by consumers as representing a particular party’s goods or services.

Registration was also refused based on the likelihood of confusion with U.S. Trademark Registration No. 5,505,122 for TECHNO TACO TUESDAY. In the refusal, the examiner referred to the two primary considerations for likelihood of confusion – the similarity of the marks and the similarity of the goods/services. Other than the omission of the word “Techno”, the marks are identical. The examiner concluded that, notwithstanding this difference, LBJ’s mark was “highly similar to the registered mark.” Further, the registered mark TECHNO TACO TUESDAY is registered for use in connection with a number of services including “advertising, marketing and promotion services”. As with the mark itself, the good/services need not be identical to find a likelihood of confusion. They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that the goods or services emanate from the same source.” Here, the examiner concluded that LBJ’s services are “highly similar” to the registrant’s services.

It’s also interesting to note that US Trademark Registration No. 1,572,589 for TACO TUESDAY used in connection with restaurant services was issued in 1989 to Taco John’s and is still a registered mark today. One has to wonder if, given the comments of the examiner in LBJ’s trademark application, that registration has succumbed to genericide (see our X/x/x blog post for further description on that issue).

The ball is now in LeBron’s court. He has until March 11, 2020 to respond to the refusal to register Taco Tuesday. Maybe if he spent a little more time on the court, rather than looking for ways to get into court, he could lead the talented Lakers to another NBA title.

Do you have a phrase or slogan that is of value to you or your company? If so, it might be registrable as a federal trademark which gives you several competitive advantages. Contact us to see if your phrase or slogan is appropriate for protection.

ARTISTS, AUTHORS, BRANDING, COPYRIGHTS, INNOVATION, INTELLECTUAL PROPERTY

USE OF AN UNAUTHORIZED IMAGE MAY COST YOU THOUSANDS OF DOLLARS

Nearly everyone if familiar with the old adage “a picture is worth a thousand words”. It refers to the notion that a picture often times can convey a message better than a written description, That adage is particularly true when it comes to creating your company’s image and brand, both through traditional means and online through websites, blogs, Facebook and other social media platforms and the like. But beware, the unauthorized use of “free” downloaded images may end up costing you thousands of dollars.

The creator of a photograph or other image has the exclusive right under the law to display, publish or distribute copies of their work and to authorize (or not authorize) others to do the same. The use of a copyrighted image without permission could result in a statutory damage award of between $750 (minimum amount by law) and $150,000 (maximum award for willful infringement). Statutory damages are available to the copyright owner even if they cannot prove that they suffered any actual damages as a result of the infringement!

The availability of statutory damages has, in part, contributed to the existence of copyright trolls – lawyers who scour the web for copyright infringement and then take a cut from defendants who pay a settlement to avoid being sued. These trolls utilize sophisticated computer programs that scour the web 24/7 for unauthorized copies of protected images, so it’s not a matter of “if” an infringing image will be detected, it’s a matter of “when”.

How to avoid paying a toll to the trolls

The simple solution is to create your own images and avoid downloading and using any images from the web. There are a number of graphics software available for download, either paid or free, that can accomplish this task if you have some design skills. Alternatively, you could pay for downloaded images from a site such as Getty Images or Adobe Stock, or reputable free sites such as Pixabay, Unsplash or Dreamstime. When going with one of these options, particularly with the free downloads, make sure to check the “License Information” page of the website to make sure that the license for the image you are downloading covers your particular use. Also, if the download requests or requires credit be given (see image above), make sure to add the appropriate credits to or near the image.

What if I receive a letter from a troll?

If you have already received a letter from a copyright troll demanding payment for an alleged copyright infringement, you should contact an attorney experienced in handling copyright matters immediately. Depending on your particular circumstances, there may be legitimate defenses to the allegations. Even if you are in the wrong, often times a skilled attorney can negotiate a lower settlement payment and potentially save you thousands, if not tens-of-thousands of dollars.

The attorneys at Martin IP Law Group are experienced in representing clients in copyright matters including allegations of infringement for all types of creative works, including images used on websites, social media and blogs. Contact us today for advice on how to avoid paying tolls to trolls, or negotiating a reduction in the toll so you can go about your business.