Hard to believe Prince died without a Will Reply

Prince created a remarkable legacy of music. It’s hard to believe that Prince may not haveScreen Shot 2016-04-28 at 11.43.30 AM executed a will to protect and distribute his legacy, music archive, property and estate. According to a recent N.Y. Times article, Prince negotiated control of his valuable music copyrights & publishing catalog recently. Additionally, Prince likely has unreleased recordings. The value of these combined assets (current royalty earnings, music catalog, unreleased recordings and the copyright ownership of his music) is huge.

By executing a will, an individual states their intention for distribution of their assets. For example, who will own and manage a music catalog, copyrights, and unreleased recordings (along with other property and assets). With the amount of time and energy Prince spent creating his legacy, it’s hard to image that he did not have an intention for how his legacy would live on.

For any individual, it’s advantageous to have a will and avoid having one’s estate administered without it.

BY: Vanessa Kaster, Esq., LL.M.

For personalized legal services you are welcome to contact me at vk@kasterlegal.com

See also: a New York Times news article titled, Prince Died Without a Will, According to Court Documents Filed by His Sister by B. Sisario at http://www.nytimes.com/2016/04/27/arts/music/prince-died-without-a-will-according-to-court-documents.html?smprod=nytcore-iphone&smid=nytcore-iphone-share&_r=0; @iplegalfreebies and www.kasterlegal.com

Are you confused if KENTUCKY is used by both a moonshiner & a university? Reply

The KENTUCKY MIST MOONSHINE distillery has been challenged by the UNIVERSITY OF IMG_2933KENTUCKY over use of the state name in a trademark.  Not surprisingly the moonshiner has spunk and is fighting the challenge.

The Issue: The University has an issue with KENTUCKY MIST MOONSHINE seeking USPTO trademark registration of their trademark for t-shirts because the University also sells t-shirts using their registered trademark UNIVERSITY OF KENTUCKY. Evidently, the University feels the moonshiner’s use of the state name KENTUCKY in their trademark (when used to sell t-shirts) infringes the University’s registered trademark for t-shirts.

The test for trademark infringement:  The test of trademark infringement is “likelihood of confusion” – meaning will consumers be confused as to the source of the goods and services. In this instance, will University of Kentucky sports fans and moonshine drinkers be confused and think that the University is making moonshine if the moonshiner uses the KENTUCKY MIST MOONSHINE trademark (which includes the state name) to sell t-shirts?

Seems unlikely to me. Team loyalty generally runs deep with sports fans.  Sports fans seem quite capable at distinguishing their sports team from the brewery or distillery who makes their libation of choice. (Even if both sell shirts that use the state name KENTUCKY in their trademark)

As an aside, this moonshine distillery isn’t the first alcohol to be proudly made in the state of Kentucky and use the state name in their trademark.

(KENTUCKY BOURBON TRAIL CRAFT TOUR is also a registered trademark that uses the state name KENTUCKY and sells t-shirts. Reg. No. 4338130, owned by Kentucky Distillers’ Association)

BY: Vanessa Kaster, Esq., LL.M.

For personalized legal services you are welcome to contact me at vk@kasterlegal.com

See also: USPTO record for KENTUCKY MIST MOONSHINE Serial No. 86924049; USPTO record for UNIVERSITY OF KENTUCKY Registration No. 2110576; earlier posts on trademarks at https://iplegalfreebies.wordpress.com/category/t-r-a-d-e-m-a-r-k/; a New York Times news article titled, (Legal) Moonshiner and University Battle Over Rights to ‘Kentucky’ by S. Stolberg at http://www.nytimes.com/2016/04/10/us/-legal-moonshiner-and-university-battle-over-rights-to-kentucky.html?_r=0; USPTO (U.S. Patent & Trademark Office) resources at www.uspto.gov; @iplegalfreebies and www.kasterlegal.com

Trademark – in a stylized font Reply

A trademark or logo can include an original font.ImageAgentProxyFor example, COCA-COLA (in a stylized font) is a famous registered trademark that includes an original font. Note that the COCA-COLA Company has registered COCA-COLA as a trademark with and without the stylized font. There are legal advantages to having registrations for a word trademark with and without a stylized font.

  • An advantage to registering the COCA-COLA trademark with a stylized font is that copycat brands can be prevented from using the typeface in a trademark to sell goods and services.
  • An advantage to registering the COCA-COLA trademark without a stylized font is that the trademark owner is granted rights to protect the text element of the trademark in any font.  Another advantage to registering a trademark without a stylized font is that it grants a level of domain protection.

A key to including a font or stylized lettering in a trademark is originality of the font or stylized lettering.  In addition to originality, other factors to consider when assessing whether to apply for USPTO registration of a trademark in a specific font or stylized letter are:

  • How instrumental the font or stylized lettering is to the brand, andIMG_2903
  • How long the specific font or stylized lettering will be used.  Back to the example of COCA-COLA, the famous trademark in stylized script has been used by the company as a trademark since 1886. (U.S. Reg. No. 0022406).

By: Vanessa Kaster, Esq. LL.M.

For personalized legal services you are welcome to contact me at vk@kasterlegal.com

See also: Blog posts on use the TM & SM symbols on unregistered trademarks at: https://iplegalfreebies.wordpress.com/category/t-r-a-d-e-m-a-r-k/trademarks-tm-sm; USPTO (U.S. Patent & Trademark Office) resources at www.uspto.gov; @iplegalfreebies and www.kasterlegal.com

 

 

User Generated Content (love & hate) Reply

Star wars

Seeing and using the Star Wars Crawl Creator (available for free at http://www.starwars.com) is an interesting example of a shift in the approach to user generated content.  Here the content owner is giving fans an easy tool for creating a Star Wars Crawl… according to the Terms on the starwars.com website and via a sharable link to starwars.com.  This seems like a win, win, win — giving fans access to a use the famous crawl in a way that links back to the content owners website and subject to the content owners rules.

For the music and the full crawl: http://www.starwars.com/games-apps/star-wars-crawl-creator?cid=56f1b130e4b06eec3bba29e9 (AND to create your own: http://www.starwars.com/games-apps/star-wars-crawl-creator)

BY: Vanessa Kaster, Esq., LL.M.

For personalized legal services you are welcome to contact me at vk@kasterlegal.com

See also: earlier posts on website Terms Of Use at https://iplegalfreebies.wordpress.com/category/website-terms-of-use/; @iplegalfreebies and www.kasterlegal.com.

 

Photo Release for a Horse (of course) Reply

Photo releases are a useful tool for obtaining permission to photograph models (of all photo releasetypes and species) and to use the photos of the model for specific purposes.  While we may all think of beautiful people as models, horses and other animals can be models too.  A photo release may be needed from a horse’s owner to take and use photographs of a horse for specific purposes including publication, printing, selling, distribution and commercial use.

I recently read that the owner of horse-photobomber (featured in the prize winning photograph above) has demanded some of the prize money won by the folks who took the photograph and entered it into a contest.  While the photobombing probably wasn’t planned, obtaining a photo release before taking, using or entering the photograph in the contest would likely have avoided the dispute that has developed over the prize money.  The horse’s “smile” does add to the photograph.

BY: Vanessa Kaster, Esq., LL.M.

For personalized legal services you are welcome to contact me at vk@kasterlegal.com

See also: earlier posts on photo releases at https://iplegalfreebies.wordpress.com/category/photo-releases; a news article on the dispute: Photobomb Horse Owner Demands Share of £2000 Selfie-Prize at www.theguardian.com/uk-news/2016/feb/02/owner-photobomb-horse-demands-share-2000-selfie-prize?CMP=fb_gu; @iplegalfreebies and www.kasterlegal.com.

Famous Trademarks Have Broad Protection (royal treatment) Reply

Famous trademarks are treated like trademark royalty and have broad protection against Screen Shot 2016-02-17 at 5.40.07 PMsimilar trademarks used on both related and unrelated goods and services.

For example, a winery applied for USPTO trademark registration of the term “PINK FLOYD” for wine and was refused registration because:

the applied-for mark consists of or includes matter which may falsely suggest a connection with PINK FLOYD the music group.  Although PINK FLOYD is not connected with the goods and/or services provided by applicant under the applied-for mark, PINK FLOYD is so famous that consumers would presume a connection.

The USPTO’s refusal to register the applied-for PINK FLOYD trademark for wine includes a four-part test used to evaluate the existence of a false connection:

The following is required for a showing of false connection under the Trademark Act Section 2(a)[in the U.S.]:

  1. The mark sought to be registered is the same as, or a close approximation of, the name or identity previously used by another person or institution;
  2. The mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution;
  3. The person or institution identified in the mark is not connected with the goods sold or services performed by applicant under the mark; and
  4. The fame or reputation of the named person or institution is of such a nature that a connection with such person or institution would be presumed when applicant’s mark is used on its goods and/or services.

This is one example of the broad protection granted to famous trademarks.  (Find another way to pay tribute to a favorite band or music group).

BY: Vanessa Kaster, Esq., LL.M.    crown

For personalized legal services you are welcome to contact me at vk@kasterlegal.com

See also: a copy of the USPTO’s final office action for the PINK FLOYD application above [Serial No.77588367]; an earlier post on new business trademarks at http://wp.me/p10nNq-B; an INTA fact sheet on Famous and Well-Known Marks at www.inta.org; earlier posts on trademarks at https://iplegalfreebies.wordpress.com/category/t-r-a-d-e-m-a-r-k/; a link to U.S. Federal Trademark Law at www.uspto.gov; @iplegalfreebies and www.kasterlegal.com.

 

 

 

Copycat Cookie = Trademark Lawsuit Reply

Last month, Pepperidge Farm sued Trader Joe’s over copycat cookies. Screen Shot 2016-01-11 at 1.57.56 PMPepperidge Farm claims the copycat cookies look too similar to its popular Milano cookies (and feature a similar “fluted paper cup” on their packaging). See the photo to the right. Pepperidge Farm claims these similarities damage its goodwill, confuse consumers and infringe its registered trademark. Interestingly, the Milano cookie shape is a registered trademark [U.S. Registration No. 3,852,499].

A few interesting details:

  • Milano cookies are famous cookies that Pepperidge Farm started selling in 1956.
  • Pepperidge Farm is a successful company, makes lots of money selling Milano cookies and can afford this litigation. (Trader Joe’s can likely afford this too).
  • The packaging of Trader Joe’s cookie features a picture of its cookies displayed in fluted paper cups (which is how Milano cookies are sold); however, the interior packaging is actually a plastic tray.
  • The two cookies are not the exact same shape. Trader Joe’s cookies are more rectangular.

This last point may be difficult to overcome. The court may be Screen Shot 2016-01-11 at 1.46.06 PMreluctant to enforce a product design trademark for a sandwich cookie when the allegedly infringing cookie is not the same shape.  It will be interesting to follow this case and see what happens next.

BY: Vanessa Kaster, Esq., LL.M.

For personalized legal services you are welcome to contact me at vk@kasterlegal.com

See also: a copy of the Complaint filed in December at http://ia601509.us.archive.org/4/items/gov.uscourts.ctd.110383/gov.uscourts.ctd.110383.1.0.pdf; earlier posts on trademarks at https://iplegalfreebies.wordpress.com/category/t-r-a-d-e-m-a-r-k/; a Reuters news article on the lawsuit: Pepperidge Farm sues Trader Joe’s over Milano cookie at http://www.reuters.com/article/us-traderjoes-pepperidgefarm-lawsuit-idUSKBN0TN1X020151205; @iplegalfreebies and www.kasterlegal.com.

Fans say YES after LEGO says NO (& refuses to fulfill an order for artist Ai Weiwei) Reply

Reading excerpts from a rejection-letter from the LEGO toymaker to the Australian National Gallery in response to a bulk legoorder for an upcoming instillation by the famous, artist Ai Weiwei… is a cautionary reminder of how quickly viral backlash can unfurl.

In addition to refusing to fulfill a bulk order for toy bricks placed by the museum, the LEGO toymaker evidently requested the following in their rejection-letter:

  1. The LEGO trademark cannot be used commercially in any way to promote, or name, the artwork; and
  2. It must be clear to the public that the LEGO Group has not sponsored or endorsed the artwork/project.

In response to the LEGO toymaker’s rejection-letter, collection points have been established around the world for LEGO brick donations to support the art project and the artist has decided to make a new work defending freedom of speech and political art.  (I’d say it’s pretty clear to the public that the LEGO Group has not sponsored or endorsed the art project).

The Brooklyn Museum is accepting LEGO brick donations – donations can be placed in the sunroof of a car parked in front of the museum or can be sent by mail –> https://www.brooklynmuseum.org/exhibitions/ai_weiwei_lego_collection_point

BY: Vanessa Kaster, Esq., LL.M.

For personalized legal services you are welcome to contact me at vk@kasterlegal.com

See also: earlier posts on trademarks at https://iplegalfreebies.wordpress.com/category/t-r-a-d-e-m-a-r-k/; a BBC News article titled, “Australia gallery collects Lego for Ai Weiwei at http://www.bbc.com/news/world-australia-34664262; @iplegalfreebies and www.kasterlegal.com.

Wholesome image…. An Apple A Day Reply

While apple picking recently, I noticed the phrase “An Apple A Day” printed on my apple-picking bag.  AppleSeeing this phrase made me curious as to the origin of the longer, common phrase, “an apple a day keeps the doctor away.”  To me this common phrase is a marketing win, win, win; because, it invokes the following three qualities: 1) Health, 2) Wholesomeness, and 3) Daily Use.  I suspect it is no coincidence that APPLE Inc. selected a word-trademark bearing these qualities.

While I love apples… I do not eat one everyday.  However, I do use my APPLE laptop and iPhone daily.  (What would Johnny Appleseed think?)

BY: Vanessa Kaster, Esq., LL.M.

For personalized legal services you are welcome to contact me at vk@kasterlegal.com

See also: earlier posts on trademarks at https://iplegalfreebies.wordpress.com/category/t-r-a-d-e-m-a-r-k/; a Smithsonian Article on Johnny Appleseed titled, “The Real Johnny Appleseed brought apples and booze to the American frontier” by N. Geiling at http://www.smithsonianmag.com/arts-culture/real-johnny-appleseed-brought-applesand-booze-american-frontier-180953263/?no-ist; Washington Post article: “History behind ‘An apple a day’″ by M. Ely at http://wpo.st/C94j0; @iplegalfreebies and www.kasterlegal.com.