Trademarks as Membership Marks – Hells Angels, Fresno Bulldogs Reply

Trademarks are often used as membership insignia for various organizations, groups and fans… like the Hells Angels and the Fresno State Bulldogs football team.  In fact, one of the primary reasons why a trademark registration is so valuable is because it can create a clear link between brands and their members and fans.  Members and fans generally want to be associated with brands and will wear merchandise bearing their favorite brands.  (The exclusive rights granted to an owner of a trademark registered with the USPTO helps make this happen.  By granting an owner exclusive rights to use a trademark on particular goods or services, then it’s easier to avoid customer confusion as to the source of the goods and services. This in turn often strengthens brands by increasing brand awareness and public recognition).

Using trademarks as Membership Marks can raise some interesting situations regarding trademark use and infringement.  Here are two interesting situations raised by membership marks that are registered USPTO trademarks:

  • Hells Angels, Example #1: The Hells Angels motorcycle club owns registered USPTO Reg No. 1136494  trademarks which are valuable membership insignia and the Hells Angels, like all trademark owners, have the right to pursue folks and businesses who use their trademarks without permission (ie trademark infringers).  In a recent NY Times article, the trademark attorney for the Hells Angels addressed the issue of pursuing trademark infringers by stating that, “[t]he intent is not just to punish the infringers but to educate the public that the Hells Angels marques are well guarded and not generic and that they must not be infringed upon.”  This statement relates to a strategy for dealing with other folks or businesses who use the Hells Angels trademarks without permission or who use confusingly similar trademarks.
  • Fresno State Bulldogs, Example #2: Fresno State University in California owns registered trademarks featuring their bulldog mascot.  Wearing merchandise produced by the University featuring the bulldog mascot and team name displays allegiance to the team – ie “fan membership insignia.”  A recent NY Times arUSPTO Serial No. 86050169ticle reported that it’s not only wholesome football fans who are flocking to buy and wear jerseys, shirts, hats and other merchandise produced and sold by the University bearing the registered bulldog trademark… but that a violent street gang has also adopted the Fresno State Bulldogs trademark and apparel as a gang symbol.  Evidently, the gang is purchasing and using legitimate University shirts, jerseys and other merchandise bearing the registered Bulldogs trademark as a gang symbol indicating gang membership.  Buying legitimate University merchandise is obviously not trademark infringement; although, it will be interesting to see how the University develops a strategy for dealing with upholding its brand image.  Unfortunately, the University’s registered trademark is now playing a double “membership” role… indicating two drastically different types of membership.

These two situations highlight two vastly different circumstances involving membership marks that are registered USPTO trademarks.  Reading NY Times articles on both situations described above that were printed only 20 days apart inspired this blog post on trademarks that are used as membership insignia.

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

vk@kasterlegal.com

For more information see, USPTO Registration 1136494 for one of the Hells Angels’ trademark registrations; USPTO Serial Number 86050169 for one of Fresno State’s trademark applications;  Pride and Peril of a Logo, published in the NY Times on 11/9/13 by M. Wollan and Despite Outlaw Image, Hells Angels Sue Often, published in the NY Times on 11/29/13 by S.E. Kovaleski, and the USPTO Trademark Electronic Search System (TESS) which is a tool for searching the USPTO’s database of registered trademarks and prior pending applications at http://tess2.uspto.gov; @iplegalfreebies and www.kasterlegal.com.

Getting Paid for… Co-Creating awesome stuff like the game Twister and Superman Reply

Getting paid for creating wildly successful stuff can take many forms and is an important part of the creative process. Often stuff that becomes wildly successful (like the Superman comic and the game Twister) start out as humble creative endeavors created by two co-creators. For example: superman

  • SUPERMAN was created by Seigel and Schuster who created a comic book out of four weeks worth of comic strips that they couldn’t sell. They sold the comic book along with their rights to the creation for $130. (long-running litigation has ensued regarding the existence, validity and scope of an agreement transferring the rights to Superman).
  • TWISTER was created by Foley (a game designer) and Rabens (an artist) who were awarded a twisterUS Patent (No. 3,454,279) for their invention of an “apparatus for playing a game wherein the players constitute the game pieces.” Evidently Foley did not receive royalties for the game; however, he did negotiate a buyout and sold his rights. (According to a Mr. Foley’s obituary this past week, he accepted about $27,000 in a negotiated buyout).

It’s interesting to compare these deals. Did the creators have any idea that their creations would become iconic? Probably not. At least not in the case of Superman. If Superman’s co-creators had known how famous their creation would become, they probably would have negotiated a higher price, residual rights, royalties and possibly reserved merchandising rights.

Personally, I am a big fan of both Superman and Twister! I am in awe of the creative minds who created these gems… and I encourage folks to negotiate creative deals to maximize revenue from their creations. You never know…. your creation could become a cultural icon.

For more information on the ongoing Superman litigation, see also, http://dockets.justia.com/docket/california/cacdce/2:2004cv08400/166317/; http://robot6.comicbookresources.com/2013/03/superman-legal-battle-isnt-over-yet-siegels-try-a-new-strategy/; http://www.businessweek.com/articles/2013-06-13/marc-toberoff-supermans-lawyer; @iplegalfreebies and www.kasterlegal.com.

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

vk@kasterlegal.com

Keep Calm and Carry On (#$&!@!) a Trademark Dispute 4

A trademark dispute is brewing around the phrase “Keep Calm and Carry On.” Contrary to the intention of the phrase… kc01Thumbnailfolks in the UK are fighting over the exclusive right to own the phrase as a registered EU trademark.

The phrase originated as part of a government propaganda campaign in the UK during World War II (not very popular at the time) and has morphed into a marketing phenomenon within the last decade. Evidently, a long-forgotten propaganda poster was rediscovered by a bookshop owner in England thirteen years ago. Upon discovery, the bookshop owner framed and hung the poster in his shop, Barter Books… and customers began noticing the catchy phrase on the poster… and the bookshop owner began creating and selling merchandise. Then along came another Englishman who trademarked the phrase within the EU and began creating and selling more merchandise. (See Application No. 010494441). Hence the brouhaha begins.

Barter Books has challenged the EU trademark registration of the phrase “Keep Calm and Carry On”… claiming that the trademark registration is an unjust monopoly over a piece of history. The legal opposition to cancel the trademark registration should be decided soon. In the meantime… please remember to heed the warning to Keep Calm and Carry On.

For more information: Check out Barter Books at www.barterbooks.co.uk and www.keepcalmhome.com; EU Community trademarks can be searched at:http://oami.europa.eu; @iplegalfreebies and www.kasterlegal.com.

BY: Vanessa Kaster, Esq. LL.M

vk@kasterlegal.com

Are you ready for the launch of new internet domains (gTLDs)? Reply

The internet as we know it is poised to change drastically with the launch of new generic Top-Level Domains (gTLDs). Currently, there are roughly two dozen gTLDs in use (.com, .net, .gov… etc); however, over 1,800 applications have been submitted for new gTLDs. The first 27 are scheduled to launch and go live this month. These first 27 new gTLDs appear to all be in non-Latin scripts such as Arabic, Japanese and Chinese. Later this year, many other new gTLDs are scheduled to go live. Among the applied for gTLDs are well known brands and also generic terms. For example, .apple (applied for by Apple Inc.); .coach (applied for by Coach Inc.); .fedex (applied for by Federal Express Corp.); .tires (applied for by Goodyear); .fashion (applied for by 4 entities) and .books (applied for by 9 entities including Amazon).

The launch of these new gTLDs could impact brand owners because of the possibility of abuse and misuse of trademarks in the new domains.

It is uncertain how these new gTLDs will impact the Internet. However, if you are a brand owner your defense mechanism against possible abuse and misuse of your marks in the new domains will be your USPTO trademark registrations (or trademark registrations in other countries). A legitimate concern for brand owners could be the use of their brand within a new gTLDs without permission. Web-traffic could be diverted and adversely impact brands. This is a valid concern for all brand owners, as well as creators, businesses, blogs, municipalities and many others.

Here are a few details about the new gTLDs:

  • PRICE: $185,000 to apply for a new gTLD (plus ongoing maintenance and other fees).
  • ICANN is the not-for-profit entity reviewing and approving applications.
  • ICANN is an acronym for “Internet Corporation for Assigned Names and Numbers”
  • PURPOSE: to increase competition and choice in the internet domain space (as stated by ICANN).
  • OPEN & CLOSED DOMAINS: The new gTLDs will be a mix of open and closed domains. As the name implies, the closed domains will be controlled by the owner of the gTLD (including control of all content). Open gTLDs, on the other hand will be open domains, with broader access.
  • Link to search the new gTLDs which have been applied for: https://gtldresult.icann.org/application-result/applicationstatus

Stay tuned for future posts as the gTLDs launch and this new technology exposes new legal issues.

See also, ICANN website for more information at: http://newgtlds.icann.org/en/about/program; @iplegalfreebies and www.kasterlegal.com.

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

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

 

Do you have a right to use your own name as a Trademark? Reply

Are you seeing your name in lights? …or preceding the coveted “®” symbol for registered trademark? Using your own name as a trademark in business used to be a sacred, absolute right. Although, over time exceptions to the “absolute right” to use your own name as a business trademark increased and broadened (perhaps mirroring a rise in shady, dishonest business deals aimed at deceiving the public). Due to the public’s possible confusion as to the source of branded goods and services, the sacred and absolute right to use your own name as a trademark in business has been watered down… and melted away. Today the right to our your own name as a business trademark depends on what your name is… and who else is already using it in business as a trademark.

McDonald, Ralph Lauren, Marilyn Monroe, Macy and Seinfeld are a few famous names already being used as business trademarks… and even if you have the same name by birth… you may not have any luck using your own name as a trademark for your business.

The USPTO records show that an application for the trademark CHERRY SEINFELD (Serial No. 78163627 for “fruit smoothies and vegetable juices”) was rejected because of possible confusion and presumed association with JERRY SEINFELD. The USPTO rejection states that, “Jerry Seinfeld is so famous that a connection with the goods will be presumed. In this case, the name Jerry Seinfeld points uniquely and unmistakably to Jerry Seinfeld’ s personality.

(I’ve never heard of anyone checking the USPTO records for trademark availability before naming a child… although if you have a hunch that your offspring is going to hit it big and be a superstar… it might be worth a quick search at www.uspto.gov. I’m kidding… although it couldn’t hurt).

See also, Jerry Seinfeld’s USPTO trademarks Registration Numbers: 3526927, 3526926, 2524199, www.uspto.gov; @iplegalfreebies and www.kasterlegal.com.

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

vk@kasterlegal.com

 

 

Looking back at the top posts on IP Legal Freebies Reply

As we kick off a new year, let’s take a look at the top posts on IP LEGAL FREEBIES:

  1. Copyright Law: Using quotes from someone else in your book, blog or website Using Dr. Martin Luther King Junior’s famous ‘I Have a Dream’ speech as an example of a copyrighted work filled with famous quotes… we take a look at the fair use doctrine and how evaluations are made regarding use of copyrighted content.
  2. Music Royalties will start being paid for plays on YouTubeIn 2012 YouTube started paying royalties for plays on their website.
  3. How to write a © copyright notice and why to use itWriting a copyright notice on your original work is free and easy to do. (if you aren’t already in the habit of doing this, make it a new years resolution!)
  4. Copyright Law: Using quotes from someone else in your book, blog or website (part two)Remember that the HEART of a work is heavily protected by copyright law.
  5. Copyright is valuable – ‘The Birthday Song’ earns $2 Million a year in royaltiesWe all know it… it’s only eight measures long, spans an octave and was written for children …but it’s a big money maker.
  6. Understand How You’re Getting Paid – ROYALTIES on GROSS vs NET REVENUE and an ADVANCESeeing these words in a contract or agreement will impact payment… become familiar with the meaning of these terms.
  7. ‘NAME Brand’ – Using your name as a brand and trademarkPaul Revere may have been the first American entrepreneur to use his name to brand his products. Are you considering it too?

Happy New Year! Thank you for reading. Wishing you all the best with your creative and entrepreneurial endeavors.

For the latest post see: https://iplegalfreebies.wordpress.com and www.kasterlegal.com; @iplegalfreebies and www.kasterlegal.com.

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

vk@kasterlegal.com

 

‘GI BILL’ trademarked to shield veterans from fraud Reply

This fall the Department of Veteran Affairs trademarked the term ‘GI BILL’ to gain control over how the term is used by universities to solicit and recruit veterans. Evidently, an investigation by the Senate and Government Accountability Office found that some for-profit colleges and universities have been using the term GI BILL to recruit veterans without full disclosure of costs, loans and dropout rates.

ImageAgentProxyBy registering the trademark GI BILL (USPTO Reg No. 4225784), the Department of Veteran Affairs will be the owner of the trademark and gain exclusive control over how the trademark is used which means they should have the power to prevent deceptive and fraudulent uses of the term. The Department of Veteran Affairs plans to issue terms of use for the ‘GI BILL’ trademark within the next few months and has already obtained rights to the GIBILL.com domain.

By registering the GI BILL trademark, the Department of Veteran Affairs will continue to support Servicemembers, Veterans and their families in their educational pursuits and is taking proactive steps to stop fraudulent and deceptive uses of the term.

For more information: http://www.va.gov/opa/pressrel/pressrelease.cfm?id=2408, www.uspto.gov and www.kasterlegal.com

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

vk@kasterlegal.com

Turkey trademarks – don’t run a-fowl of descriptiveness Reply

We all know and love many popular TURKEY trademarks… like WILD TURKEY and TURKEY HILL… and notice that these TURKEY marks are used on products that have nothing to do with turkeys. For example:

  • WILD TURKEY is trademarked for whiskey, distilled spirits, and liqueur
  • TURKEY HILL is trademarked for ice cream cones and other frozen confections

By comparison, popular trademarks that are used to sell turkeys don’t use the word ‘turkey’ in their mark. For example: BUTTERBALL, HONEYSUCKLE WHITE… and my personal favorite CAJUN GROCER (that sells delicious turducken – http://www.cajungrocer.com).

THE SECRET? Words that describe the goods and services that they sell are descriptive and are weak trademarks. In fact, it can be difficult and sometimes impossible to register a descriptive mark with the USPTO for trademark protection. (There is a sliding scale for measuring descriptiveness. Some terms are more descriptive than others. This example of trademarking the word TURKEY (as a brand for turkey products) is a highly descriptive use of the word that overlaps with it’s dictionary definition). The reason behind blocking trademark registration for descriptive terms is logical. Since trademark registration grants exclusive use to the owner… and dictionary words are free for us all to use…. USPTO trademarks are not registered for descriptive terms because this would block words from being used in commerce (by competitors) to describe common goods and services.

Back to the trademarks listed above, the popular WILD TURKEY trademark has a fairly strong monopoly on using the word TURKEY to sell whisky and other alcohol products. Similarly, TURKEY HILL is a popular trademark with a fairly strong monopoly on using the word TURKEY to sell ice cream.

When creating brands for your business and registering trademarks… remember not to run a-fowl of trademark descriptiveness. Enjoy your Thanksgiving!

See also www.uspto.gov; @iplegalfreebies and www.kasterlegal.com.

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

vk@kasterlegal.com

 

Recording and posting concert clips: what’s legal… what’s not 6

Just because it is easy to use your phone to record a clip at concert doesn’t give you the right to do very much with the recorded clip. There are multiple sets of legal rights at play in every concert performance which include:

  • Copyright in the music compositions and lyrics (often controlled by the publisher or sometimes the artist)
  • Copyright in the performance (often controlled by the label)
  • Trademarks of the band, club or venue
  • Band’s right of publicity
  • Contractual rights granting you the privilege to attend the performance (often on the ticket stub, or posted signs at the venue, or the terms and conditions of a website)
  • License granted by ASCAP or other rights manager to the club or venue for the performance.

Each of these rights gives the holder a monopoly to do certain things or exclude others from doing certain things. Excluding others (ie you with the recording device) can be taken seriously by all the rights holders. For example, club or venue owners can exclude others from recording on their premises. This means they can confiscate your phone until the end of the performance or ask you to leave if you are caught recording a clip of the concert.

Technically speaking, recording a clip of a concert for your own personal use is probably considered fair use. If you post the recoded clip to a website, chances are that one of the rights holders listed above will contact the website and request that the clip be taken down. If this happens, the clip will come down and you may forfeit your right to access or use the website where you posted the infringing clip.

Rights holders generally try to maintain a balance when it comes to enforcing their rights; since, they don’t want to alienate their fans and patrons. Although, given the history of how aggressively the music industry went after folks who were targeted for illegally downloading music… this could change.

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

vk@kasterlegal.com

See also: Other posts on music copyright at https://iplegalfreebies.wordpress.com/category/c-o-p-y-r-i-g-h-t/copyright-music-copyright/; Music Law 101: Legal Issues Surrounding the Recording and Posting of Concerts, by R. Friedberg; @iplegalfreebies and www.kasterlegal.com.

Haunted House movie raises a ghostly trademark dispute – WINCHESTER MYSTERY HOUSE Reply

The spooky and haunted WINCHESTER MYSTERY HOUSE is the source of a trademark dispute. Last week, a California appellate court affirmed a grant of summary judgment against Winchester Mystery House, which had claimed that a movie production company had infringed its trademark by making a film, “Haunting of Winchester House,” based on the haunted tourist attraction.

QUESTIONS: Does the movie title, “Haunting of Winchester House,” infringe the trademark “WINCHESTER MYSTERY HOUSE”? Does the use of a sketch of a fictional representation of the Victorian-style mansion on the DVD cover infringe the design trademark of the house?

The court held that there is no infringement. Here is an excerpt from the court’s holding:

Here the plaintiff’s marks identify not only a world famous tourist attraction, but also the property of its former eccentric owner. There was an actual Sarah Winchester, who, according to legend, created a Victorian-style mansion to fend off ghosts. A film that is based on a “true” story will inevitably have a more powerful impact on those who enjoy ghost or horror films. Thus, defendant has used “Winchester House” in its title and a Victorian-style mansion on its DVD cover, which are similar to plaintiff’s marks, and created a fictional work based on the historical figure Sarah Winchester and her allegedly haunted mansion. In our view, where marks have historical significance and similar marks are used in the title of an artistic work or advertising, the Rogers test adequately ensures protection of both the public interest in avoiding consumer confusion and the public interest of free expression.

The Rogers test is a two prong test, applied by the court in this case, to test trademark infringement. The first prong requires that the title of the film have artistic relevance to the content of the film (low threshold of minimal artist relevance). Here in this case, both the Victorian-style mansion on the DVD (which is not the actual Winchester House) and the title “Haunting of Winchester House” have some artistic relevance to the film. The second prong of the test requires that the title and cover of the DVD do not “explicitly mislead as to the source or content of the work.” Here in this case, since there is no suggestion that the film was endorsed, authorized or produced by the plaintiff (Winchester Mystery House or Winchester Mystery House, LLC) there is no misleading nor misrepresentation as to the source or content of the film.

Happy Halloween! Read more about the spooky legend of the Winchester Mystery House –> http://www.winchestermysteryhouse.com/

See also: the holding for the California Court of Appeal, 6th Cir; USPTO trademark registrations 85294333 and 3749783; and www.kasterlegal.com; @iplegalfreebies and www.kasterlegal.com.

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

vk@kasterlegal.com