INTELLECTUAL PROPERTY Archives - Page 5 of 6

ENTREPRENEUR, INNOVATION, INTELLECTUAL PROPERTY, PATENTS, START UP

PATENTED “WEED BREATHALYZER” COULD MAKE BILLIONS FOR CALIFORNIA COMPANY AS MORE STATES LEGALIZE THE USE OF MARIJUANA

Hound Labs, an Oakland, California company that was founded in 2014, has invented a breathalyzer machine that can detect recent use of marijuana by a person that may indicate that the person is impaired. With several states having already legalized or de-criminalized recreational use of marijuana, such a device would make our highways and roads safer by finding and punishing people who drive under the influence of marijuana in the same way as those who operate under the influence of alcohol. The availability of such a device may also lead to the rapid legalization of marijuana throughout the country.

The handheld device detects the presence of marijuana in a person’s lungs. Its operation is simple – for two minutes a person breathes into the handheld device, which is reportedly a billion times more sensitive than an alcohol breathalyzer. The breath that the handheld device collects in a cartridge is loaded into another machine for analysis. After about ten minutes, the machine will tell you whether there is marijuana in a person’s breath that would suggest that they have used marijuana recently. Testing the breath appears to be a far better indicator of whether someone is “high”, as it tests whether someone has used marijuana in the past two or three hours – the time that correlates with the greatest level of impairment. The device is also capable of detecting vaped or ingested cannabis.

Hound Labs has reportedly raised $65 million and has already secured nine U.S. Patents on its invention, with at least two more applications pending. The “weed breathalyzer” was recently featured in Newsweek and on The Today Show, where it was mentioned several times that the device will be expensive. But with law enforcement looking for better ways to keep the streets safe from impaired drivers, it’s a good bet that many will invest in the devices as marijuana use increases due to legalization. Assuming Hound Labs was able to secure relatively broad protection for the invention with its patents, it could be the sole supplier of “weed breathalyzers” to police departments across the country for the next 20 years! What a great example of how to use intellectual property to make money and grow a business while also providing a needed and valuable service to the community!

Do you have the next billion dollar idea? If so, you should consult with an attorney who specializes in intellectual property protection early in the process and develop a strategy to best protect your idea and business. We help clients do just that all the time. Contact us to see how we can help you.

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, COPYRIGHTS, INTELLECTUAL PROPERTY, SONGWRITERS

L.A. Jury Awards $2.8 Million to Christian Rap Artist

Because of the time and expense involved, it is rare for any intellectual property infringement action to be tried before a jury. Recently, a case against pop star Katy Perry did just that, and resulted in a $2.8 Million verdict against Perry and her producers. The ruling is part of a growing trend of claims against big time pop song artists and is causing a great deal of concern among musicians and songwriters who are concerned that the ruling stifles creativity.

The lawsuit concerned alleged similarities between Perry’s 2013 hit song “Dark Horse” and a 2008 Christian rap song “Joyful Noise,” by Marcus Gray aka Flame. The lawsuit alleged that Perry and her collaborators copied Joyful Noise’s hook. The case was filed in 2014 and concluded with a seven day jury trial in July 2019. As discussed in our March 2019 Blogpost, a copyright plaintiff must register his or her work with the U.S. Copyright Office prior to bringing suit in Federal Court, something that Gray did by securing Copyright Registration No. PA0001900321 for “Joyful Noise.” It is worth noting that Gray did not secure copyright registration until June 3, 2014 — seven years after creation of “Joyful Noise”, and presumably very shortly before filing suit against Perry. One has to wonder if the jury’s award would have been even bigger had Gray registered the work within three months of its publication which would have entitled him to statutory damages of $150,000 per infringement, plus attorney fees.

In order to prevail in his copyright infringement claim, Gray also had to prove that Perry and her collaborators “copied” his work. Theoretically, two works could be identical and there not be infringement if the second work was independently created without the author having knowledge of the previous work. Not surprisingly, Perry and her collaborators claimed that they had never heard of “Joyful Noise” before writing and recording “Dark Horse.” But since most artists don’t live the isolated life of a Buddhist monk at the Key Monastery, factors other than an artists claim to have independently created a work must be considered. Most often this is done be the copyright plaintiff showing that the alleged infringer had access to the copyrighted work and that the works are substantially similar. Gray did so in this case by claiming that “Joyful Noise” had been widely distributed (more than 2 million YouTube views) and that there was a good chance the Perry, who started her career as a Christian musician, or her collaborators could have heard the song before writing and recording “Dark Horse.” In finding for Gray, the jury apparently believed that Perry had access and that the two works were substantially similar.

The question of substantial similarity in this case also raises significant concerns for songwriters. Western music is made up of only 12 notes, which means that there are nearly 9 trillion different combinations that can be made. A copyright plaintiff does not have to show that the works are identical, only that they are substantially similar. So if the combination of a series of notes are not identical, but close, infringement can still be found. My more experienced readers may recall the case of alleged copying by Vanilla Ice in his song “Ice, Ice Baby” of the bass line from Queen/David Bowie’s “Under Pressure.” Notwithstanding Ice’s infamous claim that his song was different because he added a beat between notes, the case was settled out of court and Queen/Bowie received songwriting credit. More recently, in 2015 Robin Thicke’s “Blurred Lines” was found to have infringed Marvin Gaye’s 1977 “Got to Give it Up,” resulting in a $7.3 Million verdict.
Many in the music industry claim that the musical elements at issue in the Perry/Gray dispute are generic. Perry’s attorney went so far as to claim that “they’re trying to own basic building blocks of music, the alphabet of music that should be available to everyone.” They argued further that the beats found in the songs are so common they can be found in tunes as standard as “Mary Had a Little Lamb.” One concern expressed is that such rulings will lead to increased litigation which they worry will stifle creativity. The concern appears to be well founded given the consistent rise in copyright infringement cases since the “Blurred Lines” ruling in 2015.

What do you think? Are the two songs “substantially similar”? Are the musical elements at issue generic? Check them out – Joyful Noise – and post your opinion!

INTELLECTUAL PROPERTY

LET FREEDOM (OF SPEECH) RING!

As we approach Independence Day 2019, it’s nice to find a story that involves both freedom and intellectual property. In a unanimous decision on Monday, June 24^th, the Supreme Court ruled that the USPTO cannot reject trademarks that it deems immoral or scandalous. This follows a similar decision from 2017 where the Court upheld the right of the Washington Redskins to register their name despite the provisions of the disparagement clause of the Lanham Act which authorized the PTO to refuse registration to, or even cancel a trademark if it disparages a substantial percentage of a distinct group of people, be it a racial, ethnic, religious or political group.

This case involved clothing designer Erik Brunetti who sought to register FUCT which he claimed was an acronym for Friends U Can’t Trust. Brunetti’s business, which includes street wear clothing with FUCT prominently displayed, was started in 1990. He sought to register the mark so that he could pursue action against counterfeiters who were costing him money. Despite several attempts over the years, Brunetti’s efforts to register his mark were rebuffed by the Trademark Office based on the provisions of the Lanham Act that bars trademark protection for immoral, shocking, offensive and scandalous words.

During oral arguments in April, the justices were very careful to avoid saying FUCT out loud, with Justice Elena Kagan, who wrote the majority opinion, commenting that “[t]he First Amendment does not allow the government to penalize views just because many people, whether rightly or wrongly, see them as offensive.” The justices unanimously held that the provisions of the Lanham Act banning “immoral” trademarks was overly broad in that it allowed the government to deny trademark registrations to messages that it did not approve.

However, on the “scandalous” provision, the justices were divided. The majority, led by Justice Kagan, found that the “scandalous” provision of the Lanham Act also violated the First Amendment guarantee to freedom of speech by disfavoring certain ideas. In so doing, Kagan pointed to a couple of instances where messages similar to those that had been approved were denied based on the ideas conveyed: “Say No To Drugs” granted protection, while “You Can’t Spell Healthcare Without THC” denied; “Praise The Lord” and “Jesus Died For You” granted, while “Bong Hits for Jesus” denied. The dissenters — Justices Roberts, Breyer and Sotomayor — would have upheld the statute by interpreting it narrowly to ban profane, vulgar and obscene messages from being registered as trademarks.

It is expected that the decision will result in a flood of new trademark applications for profane, racist and offensive messages. Even though the decision opens up the floodgates for a whole category of words that had previously been unregisterable, such words still cannot be registered in connection with goods or services that are associated with the common meaning of the mark. Such marks are considered to be generic and not registerable.

Have you been denied registration of your mark because it was considered to be “immoral” or “scandalous”? Or have you not pursued registration of a brand name because you feared that it would be denied in these grounds? If so, the time is now to file your application for registration. Contact us to see how we can help.

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.

ENTREPRENEUR, INNOVATION, INTELLECTUAL PROPERTY, PATENTS, START UP

ENERGY AND SUSTAINABILITY INNOVATIONS THAT ARE MAKING AN IMPACT

Being named an Edison Award winner is one of the highest honors a company can receive in the area of innovation. On April 5, 2019, Edison Universe announced the 2019 winners of the awards for game-changing innovations in fifteen separate categories. In recognition the 49th anniversary of Earth Day on April 22, 2019, we have decided to feature some of the Edison Award winning ideas in the area of Energy & Sustainability.

AGT Hybrid Greenhouse by Ancon Development Corporation

Ancon Development Corporation’s patent-pending Hybrid Greenhouse Design uses the cool air drawn from the earth to naturally cool and moderate the greenhouse temperature. This can significantly reduce energy consumption and bills by up to 80%. For new greenhouse constructions, this means a vastly reduced carbon footprint for cities.

LG DUAL Inverter Smart wi-fi Enabled Window Air Conditioner

LG Electronics is the first to offer variable-speed compressor room air conditioners in the US. These models constantly adjust speed, maintaining desired temperature and greater energy efficiency of 25 to 40 percent, depending on the model. LG is the first to earn the 2018 ENERGY STAR®Emerging Technology Award for the product.

View Dynamic Glass

Natural light is needed to live a healthy and productive life, but the ordinary window is not optimized to provide it. View’s smart glass windows let in natural light and views, and enhance mental and physical well-being by reducing headaches, eyestrain, and drowsiness. They also reduce glare and heat, improving the energy efficiency by up to 20 percent.

ENGAGE™ PV Polyolefin Elastomers

The Dow Chemical Company’s ENGAGE™ PV Polyolefin Elastomers (POEs) are high performance resins designed for photovoltaic (PV) encapsulant films. ENGAGE™ PV POEs have superior electrical resistivity and weathering stability that enable affordable renewable energy by increasing the reliability and lifetime of PV systems.

These winners of the Edison Award have looked at problems within the community and have come up with innovative solutions. Do you know of an innovation that is worthy of recognition? Nominations for the 2020 Edison Awards will open August 1, 2019 and close in late November. Winners are announced at the Edison Awards Gala in New York, NY in April 2020.

Before getting too far down the road, it’s important to identify and protect any intellectual property (patents, trademarks, copyrights and/or trade secrets) associated with your student’s innovative product or service. Contact us today to see how we can help you identify and protect these valuable assets.

ARTISTS, AUTHORS, COPYRIGHTS, INTELLECTUAL PROPERTY, SONGWRITERS

ARTISTS, AUTHORS, SONGWRITERS AND OTHER CREATIVE PEOPLE TAKE NOTE – SCOTUS ISSUES TWO DECISIONS THAT AFFECT THE RIGHTS IN YOUR WORKS

In our January 2018 blogpost, we reported to you that the U.S. Supreme Court was considering whether to hear a case that would resolve a spilt between circuit courts in different parts of the country as to when a copyright owner could file suit for infringement. On March 4th, in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, the Supreme Court did just that, holding that a copyright owner could not file suit against a potential infringer until the Copyright Office has acted on the owner’s application for registration. This effectively overruled the practice in the Fifth Circuit (Texas, Louisiana, Mississippi) and Ninth Circuit (California, Arizona, Nevada, Oregon, Washington, Idaho, Montana) of permitting plaintiffs to file actions for copyright infringement once their application for registration was filed with the Copyright Office.

Register your Work Early for the Best Protection.
In a unanimous opinion authored by Justice Ruth Bader Ginsburg, the Supreme Court held that the language “no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made” enumerated in 18 U.S.C. 411(a) means precisely what it says, and that no suit for infringement may be filed until the work is registered. In so holding, the Court pointed to language in the very next sentence of Section 411(a) providing an exception to the registration requirement in cases where “registration has been refused”, in support of it’s reasoning that the mere filing of an application for registration is not sufficient to satisfy the statute. In the later case, where registration has been refused, the plaintiff must also serve a copy of the complaint on the Register of Copyrights, who may, at his or her option become a party to the action on the issue of registerability of the copyright claim.
So what is the impact of this decision on authors, songwriters, artists the other people who create copyrightable work? Because the creator of a work must now wait until a decision is made on his or her application for registration, we expect to see a substantial increase in requests for “special handling” of applications from those parts of the county where a mere application had been sufficient to allow suit to be filed. “Special Handling” with regard to a copyright registration is a process where, for an extra fee ($800.00), an applicant is effectively bumped to the front of the line and a decision on registration is made within five (5) business days instead of the normal six to eight months. The normal fee to file an application for registration is $55.00, so the extra $800 fee per claim can be significant for those who create a number of works they wish to protect, or for “starving artists” with limited financial resources. In addition, when you consider that for registrations filed within three months of the work’s publication or before the infringement occurs a copyright owner is eligible for statutory damages of up to $150,000 per infringement, plus attorneys’ fees, the case for registering works sooner rather than later is even more compelling.
The best strategy for the average author, artist or songwriter is to file their application for registration with the Copyright Office early – within three (3) months of publication, or sooner to preserve the potential recovery of statutory damages and attorney fees and to give the application time to be processed before infringement occurs. In contrast, a person who waits until infringement occurs will need to either pay an additional $800 for “special handling” or wait 6-8 months before suit can be filed. Add to that the potential forfeiture of statutory damages and attorney fees, and the case for early registration makes perfect sense.

Don’t expect Hot Dogs with your Ticket Plan.
The ability to maximize a damages award under Section 504 which includes statutory damages and attorney fees discussed above is even more critical now that the Supreme Court has limited what a prevailing claimant can recover as costs in a successful lawsuit. In Rimini Street Inc. v. Oracle USA Inc., another March 4th unanimous Supreme Court opinion, the Court narrowly construed what “costs” could be recovered under Section 505 of the Copyright Act which states that a prevailing party may, in the discretion of the court, recover “full costs”. The Supreme Court struck down the Ninth Circuit’s expansive interpretation of the term “full costs” to mean something more than the “costs” typically awarded in other statutes and governed by 28 U.S.C. 1821 and 1920. Writing for the majority, Justice Kavanaugh quipped that “‘A ‘full moon’ means the moon, not Mars. A ‘full breakfast’ means breakfast, not lunch. A ‘full season ticket plan’ means tickets, not hot dogs. So too, the term ‘full costs’ means costs, not other expenses.”

Recommended Actions.
In response to these two decisions, we think that copyright owners should take the following steps to best protect their creative works:
Take action early. If at all possible, file an application for registration of your work within 3 months of the first publication of your work, and before a dispute arises. This puts you in the best position to act when infringement does occur, and puts you in a position to maximize the potential damages available if you prevail.
Request Special Handling. If infringement is already occurring, or is imminent, you should request expedited handling of your application for registration. While the $800 filing fee may seem excessive, it is far better than having to wait 6-8 months for the Copyright Office to act while your valuable work is being pirated by others.
Don’t expect hot dogs with your ticket. Litigation is expensive, time consuming and emotionally draining. Don’t expect a court to fully compensate you for your loss by awarding you “full costs” for all of your out-of-pocket expenses. If you followed our advice under bullet point one above, you may be able to recover statutory damages which can help ease the sting.
Don’t go it alone. While fling your own application for copyright registration may initially seem easy and fun (if you are a masochist), those unfamiliar with the process can make errors that may delay the application or result in a refusal which places the owner in a much less-desirable position. The attorneys at Martin IP Law Group are experienced in applying for and obtaining copyright registrations for clients involving all types of creative works. Contact Us today to see how we can help you protect your most important creations.

BRANDING, INTELLECTUAL PROPERTY, TRADEMARKS

THE GENERICIDE OF A BRAND – TRADEMARK OWNERS WHO FAIL TO ENFORCE THEIR MARKS COULD SEE THEIR RIGHTS “BANDERSNATCHED”

Genericide is the act or process whereby a trademark term becomes so commonplace for the goods or services associated with it that the owner’s rights are diminished or lost as a result. Examples of once robust trademarks that fell victim to genericide include ASPIRIN (originally a trademark of Bayer declared generic in the U.S.), ESCALATOR (originally trademarked by Otis Elevator Company), THERMOS (declared generic in the U.S. in 1963) and LINOLEUM (declared generic following a lawsuit for trademark infringement in 1878). Genericide can be devastating to a brand that a company has spent significant time and money to develop.

One way to avoid genericide of a trademark is to timely obect to other’s generic misuse of the mark. Generally, this is done through the sending of cease and desist letters, and, sometimes through litigation to enjoin such misuse. Last month, Netflix released a new interactive narrative program entitled “Black Mirror: Bandersnatch” where the viewer makes decisions for the main character. In Bandersnatch, the decisions the viewer makes range from the mundane, such as whether to listen to Thompson Twins or Now 2, to more difficult decisions, such as whether to chop up a body or bury it. Bandersnatch is set in 1984 and revolves around a young video game programmer’s development of a video game based on the interactive narrative book “Bandersnatch” that lets the user make choices that affect the outcome of the game (much like the show itself).
In one early scene in the show, the main character refers to the Bandersnatch book as a “choose your own adventure book.” Chooseco, a small publishing company based in Vermont, is the owner of several U.S. Trademark registrations for CHOOSE YOUR OWN ADVENTURE which relate to it’s interactive narrative series of books for young adults. Last month, Chooseco filed suit against Netflix seeking $25 million dollars in damage for unauthorized use and disparagement of its registered trademarks. Chooseco effectively had no choice (no pun intended) but to take action against Netflix. If it would have ignored the alleged misuse, their mark would almost certainly be sliding down that slippery slope toward genericide. However, as Bayer AG discovered in 1922, bringing suit carries risks as well. Netflix will almost certainly raise the defense of genericism to the alleged infringement. So, ultimately, the court may decree the mark to be generic despite Chooseco’s attempts to avoid genericide by filing the action in the first place.

So, other than objecting to the misuse of the mark by others, how does the owner of a trademark or service mark prevent their mark from becoming generic? Wherever possible, the mark owner should give proper notice that the mark is registered. This is typically done through use of the ® symbol for marks registered with the U.S. Trademark Office or ™️ for marks protected by common law. The mark owner should never use, nor permit others to use, the mark as a noun (Kleenex instead of KLEENEX tissue) or verb (i.e. “Google it” instead of perform an internet search using the GOOGLE search engine), and it’s always best to use the mark in connection with the generic term (i.e. BAND-AID adhesive bandages). The mark should also always be displayed in all capital letters or a distinctive font which differentiates it from the surrounding text. In addition, unless the mark is already in the plural form, it should never be made plural (i.e. not two Cokes, but two COKE beverages). Lastly, if the mark is in danger of falling prey to genericide, the owner may want to educate the public as to their rights and the proper usage. One such clever campaign conducted by Xerox advised consumers that “you can’t Xerox a Xerox on a Xerox. But we don’t mind at all if you copy a copy on a Xerox®️ copier.”

While it’s a great thing for a mark to be well known and widely used, don’t let your mark get so well known and widely used that it becomes the generic or common name for a particular product or service. If you follow these guidelines from the start, it is unlikely that your mark will fall victim to genericide.

We are always here ready to help you acquire, protect and enforce your trademark rights. If you need to register a brand name, or if your brand is in danger of becoming generic, contact us to find out how to best protect your valuable asset.

BRANDING, COPYRIGHTS, INTELLECTUAL PROPERTY, TRADEMARKS

Rocket City Trash Pandas – A baseball team in Northern Alabama or a Guardian of the Galaxy?

After several months of consideration and public polling, on September 5, 2018 the town of Madison, Alabama (a suburb of Huntsville, nicknamed “The Rocket City” for its close association with U.S. space missions) and team owner BallCorps, LLC announced the name of its new AA baseball team, which will be known as the “Rocket City Trash Pandas.” For those of you unfamiliar with the modern slang terminology, “trash panda” is a commonly used term for a raccoon. The name makes sense, right? Rocket City for the region where the team will be based and Trash Pandas for an animal (commonly used as mascots for many sports teams) that is indigenous to the region. The name is fun, catchy and creative and perfectly suitable for use in connection with a baseball team in this universe. But, for a moment, let’s consider the Marvel Universe®.

Marvel Characters, Inc. currently holds, or is pursuing federal trademark registrations on almost 1,500 different marks and has been granted almost 10,000 federal copyright registrations. Included in that mix are trademark and copyright registrations to the Guardians of the Galaxy®️ movie and characters, including Rocket Raccoon®️, depicted in the second photo. When compared to the first photo that accompanied the Rocket City Trash Pandas announcement, we think you will see why we have concerns. Will a company that spends millions (perhaps billions) of dollars creating, developing and marketing its characters sit idly by while a AA baseball team in Northern Alabama uses images of an armor-clad Rocket Raccoon®️ to brand its new baseball team called the Rocket City Trash Pandas? We would be surprised if they do – Marvel even has a page on its website for people to report suspected infringement.

In the Trademark Universe, the owner of a mark may be provided with protection for a character’s name, physical appearance and distinctive designs and perhaps other qualities. Famous marks, which invoke an immediate connection in the minds of the consumers with a specific product or service and the source of that product or service, are given a broader scope of protection than ordinary marks. Examples of famous trademarks are APPLE, GOOGLE, MICKEY MOUSE and MAGIC KINGDOM. Acquiring famous mark status “often requires a very distinct mark, enormous advertising investments and a product of lasting value.” It is more than plausible that Marvel could make a case that its Guardians of the Galaxy®️ and Rocket Raccoon®️ marks have achieved “famous mark” status.

Even in the absence of a likelihood of confusion, the owner of a famous mark can bring an action for trademark dilution, which allows the owner of a famous trademark to forbid others from using that mark in a way that would lessen its uniqueness. In most cases, trademark dilution involves an unauthorized use of another’s trademark on products or services that do not compete with, and have little connection with, those of the trademark owner. So it is not inconceivable that a famous trademark used by Marvel to refer to a comic book character might be diluted if another company began using a similar mark to refer to a baseball team.

In some ways the Copyright Universe presents a parallel universe. Under federal copyright law, it is well settled that stock characters are free for anyone to use. However, characters that are depicted graphically or visually, such as in comic books, television, or film are more likely to be extended copyright protection. Thus, a stock picture or graphic of a raccoon as part of the Trash Pandas logo would not likely constitute an infringement. However, as we can see from the second photo, the Rocket Raccoon character is not a “stock” character. Rather, there are elements to the character that render it protectable under copyright law – the particular look and features of the character’s face and the clothing are a few examples. Comparing the two photos above raises some serious issues of copyright infringement should BallCorps use the proposed logo design or one similar to it. Use of a stock image of a raccoon, or one that doesn’t look so strikingly similar to the Rocket Raccoon®️ character would diminish the potential for copyright infringement significantly, but may not be enough to avoid allegations of infringment which can be very expensive to defend.

Apparently BallCorps is not totally oblivious to issues of intellectual property regarding the naming of its team. On July 26, 2018 it filed two applications with the U.S. Trademark Office for registration of the name TRASH PANDAS. If the mark passes muster with the trademark examiner, it will be published for opposition for 30 days in the Official Gazette. It would not surprise us in the least to see Marvel oppose registration of this mark on the basis of potential dilution of its marks. We will continue to monitor the status of these applications as they progress and provide updates along the way.

What lessons can we take from this situation? When starting a new business and branding for that business, file early and often. The US Trademark Office allows an applicant to file an application for registration based on “intent to use” the mark, so actual use is not required. Thus, it may be possible to obtain approval of the mark before you even begin using the name/mark. The applications should also cover any and all goods AND services you intend to offer under the mark. You should also register your logo, slogans and other branding associated with your products and services. A clearance search and opinion from an experienced intellectual property attorney can also give you insight into the rights of others who may have similar marks, which could avoid costly litigation in the future. If you are starting a new business, launching a new product, or re-branding an existing company or product, contact us to ensure your path is clear and your assets are protected.

BRANDING, ENTREPRENEUR, INTELLECTUAL PROPERTY, START UP, TRADEMARKS

RESPONDING TO A REFUSAL TO REGISTER A TRADEMARK BASED ON DESCRIPTIVENESS

Even if the mark you are attempting to register is different enough from other registered marks such that there is not a likelihood of confusion between your applied for mark and a registered mark, registration may be refused if the mark is not distinctive. Distinctiveness of a mark generally lies on a spectrum, with inherently distinctive marks (registerable) on one end of the spectrum, and generic marks (unregisterable) on the other end. Inherently distinctive marks include those marks that are fanciful (made up terms such as EXXON, GOOGLE, ADIDAS), arbitrary (words that have no relation to the product or service such as APPLE for computers), or suggestive (words that provide a hint to a particular quality or feature of the product or service). Inherently distinctive marks are registrable without proof of acquired distinctiveness. Generic marks ( such APPLE for the fruit) are those words that are commonly used to identify the product or service, and as such are not registerable. Somewhere in between lie descriptive marks – those marks that describe a characteristic of the goods or services. Descriptive marks are only registrable if they have acquired distinctiveness or secondary meaning.

One of the more common grounds for rejection of an application for registration of a trademark is that the mark is “merely descriptive” of the trademark owner’s goods or services. In response to an initial (first office action) descriptiveness refusal issued against an application, the trademark owner has four options: (1) file a response to the office action arguing that the mark is inherently distinctive, (2) accept that the trademark is descriptive and provide evidence that it has “acquired distinctiveness”, (3) accept registration on the Supplemental Register, or (4) abandon the application. The decision on which of these options is best depends on the descriptiveness of the trademark, the length of use, the past sales and marketing, and the trademark owner’s budget. However, each of these has its hidden weaknesses that a trademark owner should discuss with an experienced trademark attorney before making their decision.

Filing a Response to the Office Action Arguing the Mark is Inherently Distinctive

The line between descriptive marks and suggestive marks is often blurry and an experienced trademark attorney can assist you in determining (and arguing to the Trademark Office on your behalf) on which side of the line your mark falls. There are a number of decisions out there where Federal Courts and/or the Trademark Trial and Appeal Board (TTAB) have established guidance as to where that line should be drawn in certain situations. An experienced trademark attorney can apply that law to the facts of your application and, in some cases, can make an effective argument that your mark is suggestive (registerable) rather that descriptive (not registerable). If there is a possibility of overcoming the rejection, this option should always be on the table and included in a response to the office action.

Submitting Evidence of Acquired Distinctiveness

Another option in responding to a rejection based on alleged descriptiveness is to submit actual evidence that the applied-for mark has acquired distinctiveness in connection with your goods or services. This can be done alone, or in combination with a response arguing that the mark is inherently distinctive. Acceptable evidence of use can include:

advertising and promotional materials that specifically show or promote the applied-for mark in use as a trademark and source-identifier;
dollar figures for advertising devoted to such promotion;
dealer and consumer statements indicating recognition of the applied-for mark as a trademark;
other evidence that shows consumer recognition of the applied-for mark as a trademark for applicant’s goods.

Unless your mark is extremely descriptive, if it has been in use for five years or more, the trademark office will generally allow trademark owner to claim acquired distinctiveness under the Lanham Act’s five-year presumption by filing an affidavit attesting to five years use with no additional evidence. If the trademark is extremely descriptive or if it hasn’t been in use for five years, the trademark owner can provide evidence of customer affidavits, sales, advertising, earned media and more to show that it has met this threshold.

Registering on the Supplemental Register

Another option would be to accept the trademark examiner’s assertion that the mark is merely descriptive, but amend the application to seek registration on the Supplemental Register. However, marks registered on the Supplemental Register do not receive all the protections given to those registered on the Principal Register. Specifically, placement on the Supplemental Register does not provide constructive notice of ownership or a presumption of ownership in the event of infringement litigation, does not support a later claim of incontestable status, does not imply the right to exclusive use of the mark, nor does it allow the mark owner to request exclusion of imports by the Bureau of Customs. It does allow the registrant to use the federal registration symbol ® and it serves as a bar to subsequent registrations that would create a likelihood of confusion.

Abandoning the Application

While this may seem obvious, it is important to note that a trademark application may be withdrawn without prejudice at any time before it is adjudicated before the TTAB in an appeal. This means that a trademark owner may abandon its trademark application for any reason and file it again sometime in the future. This approach has a few clear drawbacks: the trademark owner will have no federal protection for their trademark and will have to rely on their common-law rights, which apply to the geographic area where a trademark owner can show it has trademark recognition of its mark. This will make enforcement of the trademark difficult and potentially expensive. There will also be a public record that the application was abandoned. This will not be a legal admission of any kind, but could provide an opposing party with additional ammunition in a legal dispute.

There any many factors to consider when deciding the best way to deal with a descriptiveness refusal. If a trademark is truly descriptive (i.e. there little to no chance of winning on an appeal), then providing evidence of acquired distinctiveness (if possible) or amending to the supplemental register may be the only way to gain any federal rights in the descriptive mark. However, for a company faced with this decision, it is always important to consider the long-term consequences. Remember that every huge company was once a startup facing similar decisions about their trademarks and a trademark registration is only as valuable as its owner’s ability to enforce it against potential infringers. A trademark owner should consider all of the options before making a decision that could affect the long-term strength and scope of their trademark.